UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA CASE NO.

SHASHI, LLC, a Florida limited liability company, ) ) ) Plaintiff, ) ) vs. ) ) TSIPILATES, LLC, a Florida ) limited liability company, ) ) ) Defendant. ) ___________________________________) COMPLAINT Plaintiff, Shashi, LLC (Plaintiff), hereby files it

Complaint against Defendant, Tsipilates, LLC (Defendant) and alleges as follows: JURISDICTION AND VENUE 1. This is an action for injunctive and other relief under

the patent laws of the United States, 35 U.S.C. 101, et seq., for design patent infringement. This is also an action for injunctive and other relief under the Federal Trademark Act, 15 U.S.C. 1051, et seq. (Lanham Act), particularly 15 U.S.C. 1114 and 1125(a), for trade dress infringement, trademark infringement, false

designation of origin, false description or representation, and unfair competition. Plaintiff also asserts claims in accordance with common law rights, Fla. Stat. 495.161, for trade dress infringement, trademark infringement and unfair competition and for violations of the Florida Deceptive and Unfair Trade Practices Act,

Fla. Stat. 501. 201, et seq. 2. 28 U.S.C. This Court has jurisdiction over this action pursuant to 1331, 1338(a) and 1338(b). This Court also has

jurisdiction pursuant to 15 U.S.C. 1121 and the doctrine of supplemental jurisdiction, as set forth in 28 U.S.C. 1367. 3. Venue is proper under 28 U.S.C. 1391(b) and 1391(c) in

that Defendant resides in the Southern District of Florida and/or the wrongful acts committed by Defendant occurred in and originated from the Southern District of Florida, and a substantial part of the events or omissions giving rise to the claim occurred therein, or a substantial part of the property that is the subject of the action is situated therein. 4. that: a. Defendant has operated, conducted, engaged in, or Upon information and belief, jurisdiction is proper in

carried on a business venture in this State, and the Southern District of Florida, from which this action

arises, within the meaning of Fla. Stat. 48.193(1)(a); or b. Defendant has committed tortious acts within this

State, and the Southern District of Florida, including the infringement set forth herein, within the meaning of Fla. Stat. 48.193(1)(b); or c. Defendant has engaged in substantial and not isolated 2

activity within this state, and the Southern District of Florida, within the meaning of Fla. Stat. 48.193(2). THE PARTIES 5. Plaintiff is a limited liability corporation organized

and existing under the laws of the State of Florida, and having an address at 6926 Royal Orchid Circle, Delray Beach, Florida 33446. 6. Upon information and belief, Defendant is a limited

liability company organized and existing under the laws of Florida with an address of 571 Stonemont Drive, Weston, Florida 33326. FACTUAL BACKGROUND 7. Since approximately November, 2010, Plaintiff has been in

the business of designing, causing to be manufactured, marketing, promoting, offering for sale, distributing and selling fitness apparel, namely a proprietary line of fitness socks that are particularly suited for use during Pilates, yoga, and barre

workouts sold under the registered trademark SHASHI. 8. The SHASHI socks have a unique mesh top panel and a

novel arrangement of slip-resistant grip dots on the bottom of the sock. 9. Plaintiff has invested considerable time, creative

effort, and resources to create its exclusive and innovative socks, and develop goodwill in the SHASHI mark. PLAINTIFFS PATENT AND TRADE DRESS RIGHTS 10. Plaintiff is the owner of U.S. Design Patent No. D664,349 3

(the 349 Patent) which was duly and lawfully issued on or about July 31, 2012, for the ornamental design for its innovative sock, as shown and described therein (the patented design). See Exhibit A hereto. 11. Plaintiffs unique patented design and appearance in and

of the SHASHI socks is recognizable as the style and work and trade dress of Plaintiff. Plaintiffs trade dress consists of an overall look or commercial impression resulting from the arbitrary selection and combination of certain non-functional features, namely a sock that: (1) covers the toe, sides and bottom of the foot; (2) has an ankle length; (3) has a cut-out disposed along the top of the sock or foot along which a mesh panel which is secured that rises slightly onto the ankle; (4) has a non-slip pattern along the bottom surface or sole of the sock; and (5) has a logo element on the upper elastic potion of the sock (all collectively hereafter Plaintiffs Product Trade Dress). Examples of

Plaintiffs Product Trade Dress are shown in Exhibit B. 12. Plaintiff also has acquired trade dress rights in and to

its distinctive packaging of its SHASHI socks which consists of an overall look or commercial impression resulting from the arbitrary selection and combination of certain non-functional features, namely: (1) a see-thru mesh bag; (2) with a decorative horizontal ribbon in the upper portion of the bag; and (3) a header card attached to the top of the mesh bag (all collectively hereafter 4

Plaintiffs Packaging

Trade Dress).

Examples of

Plaintiffs

Packaging Trade Dress are shown in Exhibit C. 13. Prior to the acts of Defendant complained of herein,

Plaintiff adopted and used in commerce its distinctive Product and Packaging Trade Dress for its SHASHI socks. Such use has been continuous since its inception. 14. Since prior to the infringing acts of Defendant

complained of herein, Plaintiff has achieved significant commercial success and substantial sales, advertising, and promotion of its socks utilizing Plaintiffs Product and Packaging Trade Dress, throughout the State of Florida and the United States, including the Southern District of Florida. 15. By virtue of their unique style and continuous and

widespread use, and since prior to the infringing acts of Defendant complained of herein, Plaintiffs Product and Packaging Trade Dress has developed a secondary meaning and significance, and have been readily recognizable by the public and the trade as identifying Plaintiff as the exclusive source and distinguishing Plaintiffs goods and packaging from the goods and packaging of others. PLAINTIFFS TRADEMARK RIGHTS 16. Since long prior to the acts of Defendant complained of

herein, Plaintiff adopted and used the inherently distinctive designation and trademark SHASHI for use in connection with socks (Plaintiffs SHASHI Mark). 5

17.

Since its adoption, Plaintiff has continuously used its

SHASHI Mark in interstate commerce for and in connection with such goods and has not abandoned this mark. 18. Plaintiff has obtained U.S. Trademark Registration No.

4,256,950 for its SHASHI Mark for use in connection with socks in International Class 025 (Plaintiffs SHASHI Registration). See Exhibit D hereto. 19. Since long prior to the acts of Defendant complained of

herein, Plaintiff has expended much money, time, and effort in advertising, promoting, and marketing the goods sold under the SHASHI Mark. 20. Since long prior to the acts of Defendant complained of

herein, the Plaintiffs SHASHI Mark has been readily recognizable by the public as associated exclusively with Plaintiff and has achieved a secondary meaning to the consuming public. 21. The Plaintiffs SHASHI Mark has been in continuous use

in U.S. commerce since its adoption and first use in the U.S. commerce. DEFENDANTS INFRINGING ACTIVITY 22. purchased Defendant was a regular customer of Plaintiff, who had hundreds of pairs of SHASHI socks from Plaintiff

embodying the patented design, Plaintiffs Product Trade Dress, and Plaintiffs Packaging Trade Dress, at both the retail and wholesale level from December, 2010 through February, 2013. 6

23. upon

After it began purchasing SHASHI socks from Plaintiff, and belief, Defendant began manufacturing,

information

marketing, and selling competing and infringing socks under the infringing mark SOXSI designed for the Pilates, yoga, and barre industry. 24. Upon and information, Defendant began selling its

infringing SOXSI socks in March, 2013 - one month after it suddenly stopped purchasing SHASHI socks from Plaintiff. 25. Defendant is well aware and, since long prior to the acts

of Defendant complained of herein, has been well aware of the goodwill represented and symbolized by Plaintiffs Product and Packaging Trade Dress and SHASHI Mark and that Plaintiffs Product and Packaging Trade Dress and SHASHI Mark are widely recognized and relied upon by the public and the trade as identifying

Plaintiff and its goods and distinguishing said goods from the goods of others. 26. Notwithstanding Defendants knowledge of Plaintiffs

Product and Packaging Trade Dress, SHASHI Mark, and/or the 349 Patent, and indeed by reason of such knowledge, Defendant has engaged in, and it is believed will continue to engage in a deliberate and willful scheme to trade upon and to misappropriate for itself the vast goodwill represented and symbolized by the Plaintiffs Product and Packaging Trade Dress and SHASHI Mark and to infringe upon and utilize the design shown in the 349 Patent, 7

all without Plaintiffs consent thereof. 27. The acts of Defendant complained of herein constitute

willful and intentional infringement of Plaintiffs Product and Packaging Trade Dress and SHASHI Mark and rights in and to the 349 Patent, and are in total disregard of Plaintiffs rights, and were commenced and it is believed will continue in spite of the Defendants knowledge that its use of the infringing design was and is in direct contravention of Plaintiffs rights. 28. Upon information and belief, subsequent to the issuance

of the 349 Patent, and the original sales of goods by or on behalf of Plaintiff embodying Plaintiffs patented design, Defendant

commenced and has continued making, importing, using, selling, and/or offering for sale, within the Southern District of Florida and elsewhere, unauthorized socks utilizing and embodying the patented design described and claimed in the 349 Patent (the Infringing Socks). Sample photographs of the Infringing Socks are attached as Composite Exhibit E. 29. These Infringing Socks further incorporate a copy or

colorable imitation of Plaintiffs Product Trade Dress. 30. In addition, Defendant is selling, advertising and/or

offering for sale, within the Southern District of Florida and elsewhere, competing socks under the infringing SOXSI mark (the Infringing Mark). 31. Upon information and belief, subsequent to the original 8

sales of goods by or on behalf of Plaintiff of its SHASHI socks in packaging embodying Plaintiffs Packaging Trade Dress, Defendant commenced and has continued using, selling, and/or offering for sale, within the Southern District of Florida and elsewhere, unauthorized socks utilizing Plaintiffs Packaging Trade Dress (the Infringing Packaging). A photograph of the Infringing Packaging is attached as Exhibit F. 32. Defendants unauthorized sales of the Infringing Socks

utilizing the Infringing Mark and Infringing Packaging and related marketing activities commenced long after substantial and sales in commerce of authorized goods by Plaintiff embodying Plaintiffs patented design, Plaintiffs Product and Packaging Trade Dress, and Plaintiffs SHASHI Mark and subsequent to the acquisition of rights and secondary meaning in Plaintiffs Product and Packaging Trade Dress and Plaintiffs SHASHI Mark accruing to Plaintiff. 33. Defendants Packaging aforesaid and use of the is Infringing designed Socks, and is

Infringing

Infringing

Mark

calculated and is likely to cause confusion, to cause mistake, and to deceive customers and prospective customers as to the origin or sponsorship of Defendants goods and to falsely cause the consuming public to believe that Defendants goods are the goods of

Plaintiff, or are sponsored, licensed, authorized, or approved by Plaintiff, all to the detriment of Plaintiff, the trade, and the public. 9

34.

Defendant has and continues to market and sell the

Infringing Socks utilizing the Infringing Mark and Infringing Packaging to the Pilates, yoga and barre industry, including directly to Plaintiffs customers. 35. Specifically, Defendant has directly solicited

Plaintiffs authorized retailers that are listed on Plaintiffs website and has sent them unsolicited, complementary pairs of its Infringing Socks utilizing the Infringing Mark and Infringing Packaging. Attached as Exhibit G is an example of a postcard

advertising the Infringing Socks that Defendant sent to one of Plaintiffs authorized retailers along with a complementary pair of Infringing Socks. 36. Defendant commenced its infringing activities described

herein without the consent of Plaintiff, in deliberate, knowing, and wanton disregard of the rights of Plaintiff and to Plaintiffs irreparable damage, unless restrained by this Court. COUNT I DESIGN PATENT INFRINGEMENT 37. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36 as if fully set forth herein. 38. Defendants aforesaid acts, including the unauthorized

manufacture, import, use, sales, and/or offering for sale of goods embodying the design shown in the 349 Patent, constitute

infringement of and/or inducement to infringe the 349 Patent, directly and/or under the doctrine of equivalents. 10

39.

Defendants aforesaid acts have deprived Plaintiff of

sales that Plaintiff otherwise would have made. 40. Defendants aforesaid acts have caused and will cause

great and irreparable injury to Plaintiff, and unless said acts are restrained by this Court, they will be continued and Plaintiff will continue to suffer great and irreparable injury. 41. Plaintiff has no adequate remedy at law.

COUNT II - FALSE DESIGNATION, DESCRIPTION, AND REPRESENTATION UNDER THE LANHAM ACT, 15 U.S.C. 1125(a)- PRODUCT TRADE DRESS 42. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36 as if fully set forth herein. 43. Subsequent to Plaintiffs establishment of its rights in

Plaintiffs Product Trade Dress, Defendant intentionally commenced to use in commerce, and upon information and belief, will continue to use in commerce the Infringing Socks which are a reproduction, copy, and colorable imitation of the Plaintiffs Product Trade Dress, despite Plaintiffs prior use thereof and the public

recognition thereof, constituting use in commerce of a word, term, name, symbol, or device, or combination thereof, or a false designation of origin, false or misleading description of fact, or a false or misleading representation of fact that is likely to cause confusion, or to cause mistake, or to deceive as to

affiliation, connection, or association with Plaintiff, or origin, sponsorship, or approval of Defendants goods by Plaintiff.

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44. false

Defendants aforesaid acts constitute unfair competition, of origin, and/or false description or

designation

representation in violation of 43(a) of the Lanham Act, 15 U.S.C. 1125(a). 45. Defendants severely aforesaid damaged acts have harmed Plaintiffs and upon

reputation,

Plaintiffs

goodwill,

information and belief, have diverted sales from Plaintiff. 46. Defendants aforesaid acts have caused and will continue

to cause great and irreparable injury to Plaintiff, and unless said acts are restrained by this Court, they will be continued and Plaintiff will continue to suffer great and irreparable injury. 47. Plaintiff has no adequate remedy at law.

COUNT III - FALSE DESIGNATION, DESCRIPTION, AND REPRESENTATION UNDER THE LANHAM ACT, 15 U.S.C. 1125(a)- PACKAGING TRADE DRESS 48. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36 as if fully set forth herein. 49. Subsequent to Plaintiffs establishment of its rights in Packaging Trade Dress, Defendant intentionally

Plaintiffs

commenced to use in commerce, and upon information and belief, will continue to use in commerce the Infringing Packaging for its Infringing Socks which is a reproduction, copy, and colorable imitation of the Plaintiffs Packaging Trade Dress, despite

Plaintiffs prior use thereof and the public recognition thereof, constituting use in commerce of a word, term, name, symbol, or

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device, or combination thereof, or a false designation of origin, false or misleading description of fact, or a false or misleading representation of fact that is likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association with Plaintiff, or origin, sponsorship, or approval of Defendants goods by Plaintiff. 50. false Defendants aforesaid acts constitute unfair competition, of origin, and/or false description or

designation

representation in violation of 43(a) of the Lanham Act, 15 U.S.C. 1125(a). 51. Defendants severely aforesaid damaged acts have harmed Plaintiffs and upon

reputation,

Plaintiffs

goodwill,

information and belief, have diverted sales from Plaintiff. 52. Defendants aforesaid acts have caused and will continue

to cause great and irreparable injury to Plaintiff, and unless said acts are restrained by this Court, they will be continued and Plaintiff will continue to suffer great and irreparable injury. 53. Plaintiff has no adequate remedy at law.

COUNT IV FEDERAL TRADEMARK INFRINGEMENT, 15 U.S.C. 1114(1) 54. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36 as if fully set forth herein. 55. ownership With and full prior knowledge use of and awareness of Plaintiff's Mark and

Plaintiffs

SHASHI

13

Registration, Defendant has willfully used, is using, and will continue to use the Infringing Mark on identical or highly related goods for which Plaintiffs SHASHI Registration issued, in a manner that is likely to cause confusion, reverse confusion, or to cause mistake, or to deceive. 56. Defendants acts constitute infringement, use of a

confusingly similar mark, and use of a spurious mark which is identical with, or substantially indistinguishable from,

Plaintiffs SHASHI Mark, in violation of and pursuant to 15 U.S.C. 1114. 57. Defendants acts have harmed Plaintiffs reputation,

severely damaged Plaintiffs goodwill, and upon information and belief, have and will continue to divert sales from Plaintiff, and create the impression that Plaintiff is an infringer when in fact Defendant is the infringer. 58. Defendants aforesaid acts have caused and will cause

great and irreparable injury to Plaintiff, and unless said acts are restrained by this Court, they will be continued and Plaintiff will continue to suffer great and irreparable injury. 59. Plaintiff has no adequate remedy at law. COUNT V - UNFAIR COMPETITION/COMMON LAW TRADE DRESS INFRINGEMENT OF PRODUCT TRADE DRESS 60. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36 as if fully set forth herein.

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61.

Defendants

aforesaid

acts

constitute

infringement,

misappropriation, and misuse of Plaintiffs Product Trade Dress, unfair competition, palming-off and passing-off against Plaintiff, and unjust enrichment of Defendant, all in violation of Plaintiffs rights at common law and under the law of the State of Florida in accordance with Fla. Stat. 495.161. 62. Defendants acts have harmed Plaintiffs reputation,

severely damaged Plaintiffs goodwill, and upon information and belief, have diverted sales from Plaintiff. 63. Defendants aforesaid acts have caused and will continue

to cause great and irreparable injury to Plaintiff, and unless said acts are restrained by this Court, they will be continued and Plaintiff will continue to suffer great and irreparable injury. 64. Plaintiff has no adequate remedy at law. COUNT VI - UNFAIR COMPETITION/COMMON LAW TRADE DRESS INFRINGEMENT OF PACKAGING TRADE DRESS 65. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36 as if fully set forth herein. 66. Defendants aforesaid acts constitute infringement,

misappropriation, and misuse of Plaintiffs Packaging Trade Dress, unfair competition, palming-off and passing-off against Plaintiff, and unjust enrichment of Defendant, all in violation of Plaintiffs rights at common law and under the law of the State of Florida in accordance with Fla. Stat. 495.161.

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67.

Defendants acts have harmed Plaintiffs reputation,

severely damaged Plaintiffs goodwill, and upon information and belief, have diverted sales from Plaintiff. 68. Defendants aforesaid acts have caused and will continue

to cause great and irreparable injury to Plaintiff, and unless said acts are restrained by this Court, they will be continued and Plaintiff will continue to suffer great and irreparable injury. 69. Plaintiff has no adequate remedy at law. COUNT VII COMMON LAW TRADEMARK INFRINGEMENT 70. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36, as if fully set forth herein. 71. Defendants aforesaid acts constitute false

designation(s) of origin, false or misleading description(s) of fact, or false or misleading representation(s) of fact, which are likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or association with Plaintiff, or origin, sponsorship, or approval of Defendants goods by Plaintiff. 72. Defendants aforesaid acts have caused and will continue

to cause substantial and irreparable injury to Plaintiff unless such acts are restrained by this Court. 73. Plaintiff has no adequate remedy at law.

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COUNT VIII- VIOLATION OF FLORIDA DECEPTIVE AND UNFAIR TRADE PRACTICES (FLA. STAT. 501.201, ET SEQ.) 74. Plaintiff incorporates herein each and every allegation

set forth in Paragraphs 1 through 36, as if fully set forth herein. 75. Defendants aforesaid acts constitute unfair methods of unconscionable acts or practices and unfair or

competition,

deceptive acts or practices in the conduct of trade in commerce in violation of the Florida Deceptive and Unfair Trade Practices, Fla. Stat. 501.201, et seq. 76. Defendants aforesaid acts have caused and will continue

to cause great and irreparable injury to Plaintiff, and unless restrained by this Court, they will be continued and Plaintiff will continue to suffer great and irreparable injury. WHEREFORE, Plaintiff prays: A. valid, That this Court will adjudge that the `349 Patent is enforceable, and has been infringed as a direct and

proximate result of the acts and/or inducement of Defendant as set forth herein, in violation of Plaintiffs rights under 35 U.S.C. 101, et seq. B. That Plaintiffs Product and Packaging Trade Dress has

been infringed as a direct and proximate result of the acts of Defendant as set forth herein, in violation of Plaintiff's rights under the Lanham Act, 15 U.S.C. 1051 et seq., and the common law and under the law of the State of Florida in accordance with Fla. 17

Stat. 495.161. C. That this Court will adjudge that Plaintiffs SHASHI

Mark and Registration has been infringed as a direct and proximate result of the acts of Defendant as set forth in this Complaint, in violation of Plaintiffs rights under the Lanham Act, 15 U.S.C. 1051 et seq., and the common law. D. unfairly That this Court will adjudge that Defendant has competed with Plaintiff as set forth in this Complaint, in

violation of Plaintiffs rights under the Lanham Act, 15 U.S.C. 1125(a), and the common law. E. That Defendant, and all officers, directors, agents,

servants, employees, attorneys, successors, and assigns, and all persons in active enjoined concert and or participation from therewith, be

permanently

restrained

further

infringing

manufacture, use, sale, offer for sale and import of the Infringing Socks, and all other infringements of the 349 Patent. F. That Defendant, and all officers, directors, agents,

servants, employees, attorneys, successors, and assigns, and all persons in active enjoined concert and or participation from therewith, be

permanently

restrained

further

infringing

manufacture, use, sale, offer for sale and import of the Infringing Socks and Infringing Packaging, and all other designs and packaging likely to be confused with or infringe Plaintiffs Product and Packaging Trade Dress described herein. 18

G.

That Defendant be required to deliver up for destruction

all Infringing Socks, Infringing Packaging and other written or printed material in the possession or control of Defendant which embody or bear the Infringing Socks and/or Infringing Packaging, and all plates, molds, matrices, and other means from making the aforesaid items. H. That Defendant be directed to file with this Court and to

serve upon Plaintiff within ten (10) days after service of the injunction issued in this action, a written report, under oath, setting forth in detail the manner of compliance with the above. I. That Plaintiff recover damages adequate to compensate for

the Defendants patent infringement, but in no event less than a reasonable royalty for the use made of the patented design by Defendant, and in addition to the amount of actual damages found, such sums shall be in an amount three (3) times the amount of the actual damages found. J. That in addition thereto, Plaintiff have and recover the

profits of Defendant derived from the use of the infringing designs under the 349 Patent. K. That Plaintiff recover the Defendants profits and the

damages of Plaintiff arising from Defendants acts of trade dress infringement, trademark infringement and unfair competition, and that the Court, pursuant to 35 of the Lanham Act, 15 U.S.C. 1117, enter judgment, and that said sums be treble as authorized pursuant 19

to 15 U.S.C. 1117(b). L. That Plaintiff have and recover, pursuant to the laws of

the State of Florida, and common law, in addition to its actual damages, punitive damages in an amount which the Court deems just and proper. M. That Plaintiff have and recover both pre-judgment and

post-judgment interest on each and every damage award. N. That Plaintiff have and recover its reasonable attorney

fees incurred in this action, pursuant to 35 of the Lanham Act, 15 U.S.C. 1117, 35 U.S.C. 285, and Florida Statutes 501.2105, and as otherwise authorized. O. That Plaintiff have and recover its taxable costs and

disbursements herein, pursuant to 35 of the Lanham Act, 15 U.S.C. 1117, and as otherwise authorized. P. That Plaintiff have and recover such further relief as

the Court may deem just and proper. JURY DEMAND Plaintiff demands a trial by jury as to all issues triable of right by a jury. Respectfully submitted, Dated: June 12, 2013 Miami, Florida By:s/Meredith Frank Mendez John Cyril Malloy, III Florida Bar No. 964,220 jcmalloy@malloylaw.com Meredith Frank Mendez Florida Bar No. 502,235 mmendez@malloylaw.com 20

MALLOY & MALLOY, P.L. 2800 S.W. Third Avenue Miami, Florida 33129 Telephone (305) 858-8000 Facsimile (305) 858-0008 Attorneys Shashi, LLC for Plaintiff,

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