Case 0:13-cv-61303-RSR Document 18 Entered on FLSD Docket 08/12/2013 Page 1 of 16

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA FORT LAUDERDALE CASE NO. 0:13-cv-61303-ROSENBAUM ) ) ) ) Plaintiff, ) ) v. ) ) TSIPILATES, LLC, a FLORIDA limited ) liability company, ) ) Defendant. _________________________________________) SHASHI, LLC, a FLORIDA limited liability company, DEFENDANT TSIPILATE, LLCS MOTION TO DISMISS COUNTS I VIII AND MEMORANDUM OF LAW Defendant, Tsipilates, LLC, (hereafter Tsipilates), moves this Court, pursuant to Fed. R. Civ. P. 12(b)(6) to Dismiss Plaintiff Shashis, LLCs (hereafter Plaintiff) Complaint for failure to state a claim upon which relief can be granted and states as follows: I. INTRODUCTION Plaintiffs Counts I - VIII of the Complaint must be dismissed under Fed. R. Civ. P. 12(b)(6) failure to state a claim. Regarding Count I, Plaintiff has failed to identify which statute Defendant is allegedly infringing upon. In addition, Plaintiffs allegations of infringement are vague and conclusory. Regarding Counts II, III, V, and VI, Plaintiff has failed to (1) identify the specific elements that comprise its alleged trade dress; (2) allege specific facts that that would support finding that its alleged trade dress is non-functional; and (3) allege specific facts that would support a finding that its alleged trade dress has acquired secondary meaning.

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Moreover, Plaintiffs Complaint does not identify precisely (1) what proprietary line of fitness socks [DE 1 7] is being referenced; and (2) what combination of elements of that nameless proprietary line comprises the overall design of the product that Plaintiff seeks to protect as trade dress. Rather, Plaintiff has described its alleged trade dress in such general terms that it is impossible to identify the specific trade dress for which Plaintiff seeks protection. Further, the Complaint does not allege facts that would enable a trier of fact to find that the alleged trade dress is confusingly similar, non-function, and distinctive, i.e., obtained secondary meaning. Regarding Counts IV and VII, Plaintiff has failed to allege any facts that show similarities between its trademark and Defendants trade name, trademark and advertising. Plaintiff has not alleged actual confusion, nor does Plaintiff explain how Defendants use of SOXSI might create a similar impression to Plaintiffs mark. Regarding Count VIII, Plaintiff has failed to identify the specific elements that comprise deceptive and unfair trade practices. Instead, Plaintiff merely provides a threadbare recital of the elements of the cause of action for Florida Deceptive and Unfair Trade Practices Act (hereafter FDUTPA). Moreover, Plaintiff lacks standing to bring a claim under FDUTPA. Accordingly, Plaintiffs Counts I-VIII must be dismissed under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief may be granted. II. RELEVANT FACTUAL BACKGROUND Since 2010, Plaintiff states that it has been in the business of selling a proprietary line of fitness socks that are particularly suited, i.e., have a particular function, for use during Pilates, yoga, and barre workouts. [DE 1 7]. The socks are sold under the registered trademark

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SHASHI. Id. In addition, Plaintiffs socks have a functional mesh top panel and functional slip-resistant grip dots on the bottom of the sock. [DE 1 8]. Plaintiff filed its Complaint on June 12, 2013. [DE 1]. The Complaint alleges eight counts against Tsipilates. The Complaint purports to state claims for design patent infringement, trade dress infringement, trademark infringement and FDUTPA. It does not. Rather, the

Complaint describes each of the counts in vague and inconsistent ways, including the following (emphasis added): 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 [functional element]; (2) has an ankle length [functional element]; (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 [functional element]; (4) has a non-slip pattern along the bottom surface or sole of the sock [functional element]; and (5) has a logo element on the upper elastic potion of the sock (all collectively hereafter Plaintiffs Product Trade Dress). [Id. 11]. 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 [functional]; (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 [functional]. . . . [Id. 12]. 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. [Id. 19]. III. RELEVANT PLEADING REQUIREMENTS A court must dismiss a complaint that fails to state a claim upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). A fatally defective complaint is one that fails to provide the defendant notice of a legally cognizable claim and the grounds upon which it rests. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). In order to survive a motion Page 3 of 16

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to dismiss under Fed. R. Civ. P. 12(b)(6), a complaint must contain sufficient factual matter to state a claim to relief that is plausible on its face. Ashcroft v. Iqbal, 556 U.S. 662, 663 (2009). Moreover, a complaint must be dismissed when it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief. Conley v. Gibson, 355 U.S. 41, 45-46 (1957) (internal quotations and citations omitted). When evaluating a complaint under Fed. R. Civ. P. 12(b)(6), plaintiffs obligation to provide the grounds of his entitle to relief requires more than labels and conclusions. Twombly, 550 U.S. at 555 (citation omitted). [A] formulaic recitation of the elements of a cause of action will not due. Id. Nor will an unadorned, thedefendant-unlawfully-harmed-me accusation. Ashcroft, 556 U.S. at 678. In addition, this Court has stated that naked assertion[s] bereft of further factual enhancement do not suffice. Hosler v. Alcon Labs., Inc., 2012 U.S. Dist. LEXIS 145176 (quoting Twombly, 550 U.S. at 555, 557). The pleading requirement asks for more than a sheer possibility that a defendant has acted. Ashcroft, 556 U.S. at 678; see Brain Pharma, LLC v. Scalini, 858 F. Supp. 2d 1349, 1352 (S.D. Fla. 2012). Additionally, threadbare recitals of the elements of a cause of action, supported by mere conclusory statements do not suffice. Ashcroft, 556 U.S. at 678. (emphasis added). A dismissal is warranted when the facts do not permit more than the mere possibility of misconduct. Id. at 679. A complaint will be dismissed as insufficient where the allegations it contains are vague and conclusory. Fullman v. Graddick, 739 F.2d 553, 556-557 (11th Cir. 1984).

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Moreover, it is not proper to assume facts that are not alleged or laws that have not been alleged. Associated Gen. Contractors of Calif., Inc. v. California State Council of Carpenters, 459 U.S. 519 (1983). IV. COUNT I DESIGN PATENT INFRINGEMENT Plaintiff has alleged in Count I that Tsipilates has infringed upon U.S. Design Patent No. D664,349 (hereafter the 349 patent) pursuant to 35 U.S.C. 101 et seq. but has not alleged any other particular statute Tsipilates is infringing. As a result, Plaintiff has failed to notify this Court or the Defendant of what statute it seeks relief under. It is essential for a Defendant opposing a claim of patent infringement to know which statutory authority the pleader is proceeding under. Furthermore, Plaintiff has alleged that Defendant . . . [is] in violation of Plaintiffs rights under 35 U.S.C. 101 et seq [DE 1 p. 17]; see also [DE 1 1]. Et seq. is defined as and the following ones. Blacks Law Dictionary 633 (9th ed. 2011) (emphasis added) (indicating that Defendant is violating 101 in addition to other sections). Pursuant to 35 U.S.C. 101, [w]hoever invents or discovers any new and useful improvement thereof, may obtain a patent thereof, subject to the conditions and requirements of this title. Compare 35 U.S.C. 101 with 35 U.S.C. 271 (where 271 states that whoever invents any new, original, ornamental design for an article of manufacture may obtain a patent.) (emphasis added). It is only possible to allege infringement of a patent pursuant to 35 U.S.C. 101 if the invention is useful i.e., if the invention has utility. See Application of Lorraine FINCH and Morris Branch, 535 F.2d 70, 7172 (1976) (stating that 35 U.S.C. 101 is not applicable to design patents). However, the 349 patent protects only the ornamental design elements.

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35 U.S.C. 101 provides rights to functional patents. Design patents do not protect the functional aspects of a design. By alleging injunctive and other relief under 35 U.S.C. 101, (1) Plaintiffs 349 Patent is invalid because Plaintiff thereby admits that the invention has utility and is functional;1 or (2) Plaintiff brought Count I under the wrong statute because 35 U.S.C. 101 does not apply to design patents. As a result, Count I must be dismissed for failure to state a claim for which relief may be granted under Fed. R. Civ. P. 12(b)(6). Vague and Inconsistent Allegations In paragraphs 37-41 of Count I, Plaintiff alleged that Tsipilates has engaged in design patent infringement and references each and every allegation set forth in paragraphs 1 through 36. [DE 1] (emphasis added). Defendant is confused how the majority of paragraphs 1 through 36 relates to the claim of design patent infringement. Id. For example, paragraphs 16 through 21 relate only to the trademark SHASHI. Id. For at least these reasons, Count I should be dismissed with prejudice. V. COUNTS II III - TRADE DRESS INFRINGEMENT Section 43(a) of the Lanham Act extends to trade dress. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Trade dress is defined as the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques. John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983). In order to prevail on a claim for trade dress infringement, plaintiff must prove (1) two products are confusingly similar; (2) the features of the trade dress are primarily nonfunctional; and (3) the trade dress has acquired secondary meaning. Id. at 980; Black & Decker Mfg. Co. v. Ever-Ready Appliance Mfg. Co., 518 F. Supp. 607, 616 (E.D. Mo. 1981). In

By alleging 35 U.S.C. 101, Plaintiff also cannot not allege product trade dress infringement because Plaintiff explicitly admits that the product is functional.

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addition, courts require a precise expression of the character and scope of the claimed trade dress. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir. 1997). The Supreme Court has held that an action for infringement of unregistered trade dress is permissible only upon a showing of secondary meaning. Wal-mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 216 (2000). Based on these standards, Defendant will discuss product trade dress and packing trade dress individually in the subsections A and B below. A. Count II - Product Trade Dress Infringement Consumers are aware of the reality that, almost invariably, even the most unusual of product designssuch as a cocktail shaker shaped like a penguinis intended not to identify the source, but to render the product itself more useful or more appealing. Id. at 213. For this reason, courts apply particular caution before extending trade dress protection to product designs. Yurman Design, Inc. v. Paj, Inc., 262 F.3d 101, 114 (2d Cir. 2001). A plaintiff asserting trade dress rights in the design of a product is therefore required to surmount additional hurdles. Id. at 115. Plaintiff has not described or identified the elements that make up the alleged trade dress including how any of those elements are confusingly similar, primarily non-function, and acquired secondary meaning. Confusingly Similar Plaintiff has alleged that Defendant was well aware of Plaintiffs product and Defendants product is a copy or colorable imitation. Not so. Plaintiff has not identified beyond its threadbare recital how Defendants socks are confusingly similar to Plaintiffs socks. [DE 1 25, 29]. Plaintiffs vague statements do not describe the alleged trade dress with enough particularity to state a claim for product trade dress infringement.

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Plaintiff has not Adequately Identified The Non-Function Elements Of The Product Trade Dress A product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001). (Internal citations and quotations omitted). Plaintiff has not presented a scantilion of evidence as to which elements are primarily nonfunctional. Oppositely, Plaintiff admits that the its sock functions to (1) cover the toe, sides and bottom of the foot; (2) extend to cover a persons ankle; (3) provide a mesh panel for greater aeration; and (4) provide a non-slip bottom surface for stability and traction. [DE 1 11]; see also Young v. Bernice Cmty. Rehab. Hosp., 870 So. 2d 467, 472 (La.App. 2 Cir. Apr. 7, 2004) (That court found no doubt . . . [that] non-slip footwear serves to protect the wearer from slip and fall type injuries (emphasis added)). In other words, the court in Young explicitly held nonslip footwear is a functional design element. Furthermore, Plaintiff has submitted Exhibit G which provides a postcard of SOXSIs socks including product features: Specially Designed For Pilates/Yoga & Indoor workouts. Revolutionary mesh technology for [flexability] & breathability. Rubber grip nubs for maximum grip capacity.

See [DE 1-9 p. 3].2 If "the exhibits contradict the general and conclusory allegations of the pleading, the exhibits govern." Crenshaw v. Lister, 556 F.3d 1283, 1292 (11th Cir. 2009) (citations and internal quotation marks omitted); Drew Estate Holding Co., LLC v. Fantasia Distrib., 2012 U.S. Dist. LEXIS 7910, 10 (S.D. Fla. Jan. 24, 2012). A fair reading of the Exhibits presented in the Complaint drawing all reasonable inferences in favor of Plaintiff can only be interpreted as functional design elements.
2

The word for is a preposition that links nouns to their function. In this case, the word socks are linked to the function of indoor workouts. The word mesh is linked to the function of flexibility and breathability. The word rubber grip numbs are linked to the function of maximum grip capacity.

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Furthermore, the elements that Plaintiff has listed as elements of its sock are primarily functional, particularly in light of the fact that Pilates, Yoga, and the like, are practiced on wood floors that become particularly slippery as the wearer of the socks begin to sweat. Plaintiff Has Not Adequately Alleged That Secondary Meaning Exists The secondary meaning attributed to a particular product name or product dress depends on, among other things, (1) the length and manner of use; (2) the nature and extent of advertising and promotion; (3) the efforts made by plaintiff to promote a conscious connection with the public's mind between the name and plaintiff's product; and (4) the extent to which the public actually identifies the name with plaintiff's product. MILLER'S ALE HOUSE v. Boynton Carolina Ale House, 745 F. Supp. 2d 1359, 1375 (S.D. Fla. 2010). While Plaintiff has stated that since 2010, it has been in the business of selling socks, Plaintiff has not stated that the line of socks has remained unchanged since its inception. See [DE 1 7]. Furthermore, Plaintiff alleges significant advertising, without identifying a single way or extent in which the product trade dress has been advertised. See [DE 1 14]. Plaintiff also has not informed Tsipilates of the efforts to promote conscious connection with the trade dress or the extent to which the public identifies the name with the Plaintiffs socks. Plaintiff merely states that by virtue of their unique style and continuous widespread use . . . Plaintiffs Products and Packaging Trade Dress has developed secondary meaning. [DE 1 15]. Plaintiff fails to identify how such unique style and continuous widespread use have caused or are likely to cause consumers to associate the alleged trade dress with Plaintiff. Plaintiff relies upon conclusory statements unsupported by a single shred of evidence. Such conclusory statements are insufficient to state a claim for product trade dress infringement. Instead, Plaintiffs conclusory statements are unwarranted deductions of facts masquerading as facts. See Hosler v. Alcon Labs., Inc., 2012 U.S. Dist. LEXIS 145176, 7 (S.D. Fla. Oct. 9, 2012). Such statements do not prevent dismissal. Id. Page 9 of 16

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Vague and Inconsistent Allegations In addition, Plaintiff has alleged in paragraphs 42-47 of Count II that Tsipilates has engaged in product trade dress infringement and references each and every allegation set forth in paragraphs 1 through 36. [DE 1] (emphasis added). Defendant is confused how the majority of paragraphs 1 through 36 relates to the claim of product trade dress infringement. Id. For example, paragraph 10 relates to Design Patent No. D664,349. Id. For at least these reasons, Count II must be dismissed for failure to state a claim upon which relief may be granted pursuant to Fed. R. Civ. P. 12(b)(6). B. Count III - Package Trade Dress Infringement The same principles should apply to protection of packaging trade dress that applies to trademarks. Chevron Chemical Co. v. Voluntary Purchasing Groups, 659 F.2d 695 (5th Cir. 1981). Trade dress elements are not examined piecemeal; "it is `the combination of elements and the total impression that the dress gives to the observer that should be the focus of a court's analysis of distinctiveness.'" MILLER'S ALE HOUSE v. Boynton Carolina Ale House, 745 F. Supp. 2d 1359, 1375 (S.D. Fla. 2010) (quoting Carillon Importers Ltd. v. Frank Pesce Group, Inc., 913 F.Supp. 1559, 1563 (S.D.Fla.1996)). Total Impression In order for Plaintiff to properly allege that the packaging trade dress of Tsipilates is confusingly similar to Plaintiff, Plaintiff must allege the total impression i.e., the overall design is confusingly similar. MILLER'S ALE HOUSE, 745 F. Supp. 2d at 1375. However, Plaintiff only introduced the front side of both Plaintiffs and Defendants packaging, marked as Exhibits C and F. [DE 1-5 and 1-8]. Having submitted only half of the packaging of both

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Plaintiffs and Defendants packaging, Plaintiff cannot prove beyond doubt that the total impression of the alleged packaging trade dress has been infringed.3 Vague and Inconsistent Allegations In addition, Plaintiff has alleged in paragraphs 48-52 of Count III that Tsipilates has engaged in package trade dress infringement and references each and every allegation set forth in paragraphs 1 through 36. [DE 1] (emphasis added). Defendant is confused how the majority of paragraphs 1 through 36 relates to the claim of packaging trade dress infringement. Id. For example, paragraph 10 relates to Design Patent No. D664,349. Id. For at least these reasons, Count III must be dismissed for failure to state a claim upon which relief may be granted pursuant to Fed. R. Civ. P. 12(b)(6). VI. COUNT IV - TRADEMARK INFRINGEMENT In order to prevail on a claim for trademark infringement, the plaintiff must demonstrate that (1) its mark has priority; (2) defendant used its mark in commerce without consent; and (3) defendants use of the mark is likely to cause consumer confusion, or to cause mistake, or to deceive. Louis Vuitton Malletier SA v. 100Wholesale. COM, No. 12-21778-CIV-

SEITZ/SIMONTON (S.D. Fla. Mar. 28, 2013); see Two Pesos, 505 U.S. at 783; see Brain Pharma, 858 F.Supp.2d at 1353. In determining whether the parties' marks are similar [and likely to confuse], the Court must compare the marks' appearances, sounds, meanings, and the manner in which the marks are used. Popular Bank of Florida v. Banco Popular de Puerto Rico, 9 F. Supp. 2d 1347, 1359 (S.D. Fla. 1998). Likelihood of confusion means probable confusion rather than mere possible

Notably, it is believed that Plaintiff has not have provided the back of the packages because the back of SHASHIs package admits that the mesh top, shape of the sock, and no slip grips are primarily functional, destroying SHASHIs product trade dress allegations.

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confusion. Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261, 1265 (S.D. Fla. 1999). Applying this test, the marks are not similar to each other. Compare [DE 1-8] (marked Ex. F) with [DE 1-5] (Marked Ex. C). First, Tsipilates mark has a specific meaningit is meant to denote sexy socks by combining the two words together to create the word Soxsi. Id. The word Shashi is likely to imply either an individuals name or a location and does not connote any meaning related to socks or attractiveness. Id. Second, the visual designs of the marks are clearly different. Id. Tsipilatess mark has unique lettering consisting of a prominent X, designed to look like a person and containing the colors green and orange. Id. Plaintiffs mark is made up of an entirely different font, in all capital letters, with grey shading except for the lowercase i with a blue dot. Id. Visually, each mark is dramatically different. Id. Finally, the words do not even convey the same sound when said aloud. Id. Instead of applying this standard, Plaintiffs makes the threadbare recital that the allegedly infringing mark is designed and calculated and is likely to cause confusion. [DE 1 33]. Yet Plaintiff has not identified what-so-ever how the marks are in any way confusingly similar. As a result, Plaintiff has not alleged sufficient facts to support that the mark could be likely to cause consumer confusion. Vague and Inconsistent Allegations In addition, Plaintiff has alleged in paragraphs 54-59 of Count IV that Tsipilates has engaged in trademark infringement and references each and every allegation set forth in paragraphs 1 through 36. [DE 1] (emphasis added). Defendant is confused how the majority of paragraphs 1 through 36 relates to the claim of trademark infringement. Id. For example, paragraph 10 relates to Design Patent No. D664,349. Id.

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For at least these reasons, Count IV must be dismissed for failure to state a claim upon which relief may be granted pursuant to Fed. R. Civ. P. 12(b)(6). VII. COUNTS V VII COMMON LAW TRADEMARK
AND

TRADE DRESS

INFRINGEMENT The legal standard for federal trademark and unfair competition, and for common law trademark infringement, are essentially the same. Monsanto Co. v. Campuzano, 206 F. Supp. 2d 1252 (S.D. Fla. 2002); Rain Bird Corp. v. Taylor, 665 F. Supp. 2d 1258 (N.D. Fla. 2009). For this reason, Tsipilates asserts the same arguments presented for Counts II IV, discussed at Sec. V-VI, supra, to Counts V-VII, respectively. Vague and Inconsistent Allegations In addition, Plaintiff has alleged in paragraphs 60-73 of Counts V - VIII that Tsipilates has engaged in common trademark and trade dress infringement and references each and every allegation set forth in paragraphs 1 through 36. [DE 1] (emphasis added). Defendant is confused how the majority of paragraphs 1 through 36 relates to the claim of common law trade dress and trademark infringement. Id. For example, paragraph 10 relates to Design Patent No. D664,349. Id. For at least the reasons presented for Counts II-VII, this Court must dismiss Counts II VIII for failure to state a claim upon which relief may be granted pursuant to Fed. R. Civ. P. 12(b)(6). VIII. COUNT VIII - DECEPTIVE AND UNFAIR TRADE PRACTICES In order to prevail on a claim for FDUPTA under Fla. Stat. 501.201 et seq. a party must plead and prove that the conduct complained of was unfair and deceptive and that he or she was aggrieved by such acts. Ordonez v. ICON SKY HOLDINGS LLC, No. 10-60156-CIV-

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SEITZ/SIMONTON (S.D. Fla. Aug. 30, 2011). A deceptive act is an act that is likely to mislead consumers. Id. An unfair practice is one that offends established public policy and that is immoral, unethical, oppressive, unscrupulous, or substantially injurious to consumers. Id. (emphasis added). Here again, Plaintiff merely alleges a threadbare recital of the elements necessary to prove FDUTP. Plaintiffs assertion of FDUTP falls woefully short. Plaintiff states that

Tsipilates directly solicited Plaintiffs authorized retailers (not consumers) listed on Plaintiffs website and sent them unsolicited, complementary pairs of SOXSI socks. [DE 1 35].

Plaintiffs own allegedly factual background indicates that Tsipilates did not engage in deceptive trade practices that are likely to mislead consumers but instead permissibly marketed to Pilates and yoga studios by sending complementary socks, whereby said studios are not consumers. [DE 1 35]. Lack of Standing Because Pilates and Yoga Studios Are Not Consumers FDUTPA was enacted to protect the consuming public and legitimate business enterprises from those who engage in unfair methods of competition, or unconscionable, deceptive or unfair acts or practices in the conduct of any trade or commerce. 501.202, Fla. Stat. The Plaintiff lacks standing to bring a FDUPTA claim. The Plaintiff has not alleged a consumer transaction of Defendants products has resulted in misleading consumers. H&H Restuarants, LLC, 2001 WL 1850888, at *9 (S.D. Fla. 2001) (stating that FDUTPA has no application to entities complaining of conduct which is not the result of a consumer transaction.); see Pinecrest Consortium, Inc. v. Mercedes-Benz USA, LLC.,1:13-cv-20803-FAM ([DE 19] Order Granting Defendants Motion for Judgment on the Pleadings). Instead, Plaintiff alleges Defendant provided complementary socks in an effort to entice Pilates and Yoga studios (not

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consumers) to sell Defendants product. [DE 1 35]. Therefore, Plaintiff lacks standing because Plaintiff has not alleged that Defendants marketing by sending complementary socks has resulted in misleading consumers. Vague and Inconsistent Allegations In addition, Plaintiff has alleged in paragraphs 74-76 of Counts VI - VIII that Tsipilates has engaged in deceptive and unfair trade practices and references each and every allegation set forth in paragraphs 1 through 36. [DE 1] (emphasis added). Defendant is confused how the majority of paragraphs 1 through 36 relates to the claim of FDUTPA. Id. For example, paragraph 10 relates to Design Patent No. D664,349. Id. For at least the reasons presented, this Court must dismiss Count VIII.

WHEREFORE, 1. Defendant respectfully requests this Honorable Court to dismiss Plaintiffs

Complaint in its entirety pursuant to Fed. R. Civ. P. 12(b)(6). 2. Defendant respectfully requests fees and costs as this court deems appropriate.

Respectfully submitted, By: /s/ Matthew Sean Tucker Matthew Sean Tucker TUCKER LAW, P.A. d/b/a TUCKER IP Florida Bar No. 90047 2515 Marina Bay Drive West, No. 202 Fort Lauderdale, FL 33312 mtucker@tuckeriplaw.com www.tuckeriplaw.com Telephone: (954) 204-0444 Attorney for Defendant

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CERTIFICATE OF SERVICE I hereby certify that on August 12, 2013, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF and that service was perfected on all counsel of record and interested parties through this system. By: /s/ Matthew Sean Tucker

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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA CASE NO. 13-CV-61303-RSR SHASHI, LLC, a Florida limited liability company, Plaintiff, vs. TSIPILATES, LLC, a Florida limited liability company, ) ) ) ) ) ) ) ) ) ) ) )

Defendant. _____________________________)

PLAINTIFFS RESPONSE IN OPPOSITON TO DEFENDANTS MOTION TO DISMISS COMPLAINT Plaintiff, Shashi, LLC (Plaintiff), by and through undersigned counsel, hereby files its response in opposition to Defendants Motion to Dismiss Complaint (DE #18) as follows: I. INTRODUCTION. Plaintiff brought the instant action against Defendant, its former-customer-turned-competitor, for marketing and selling copy-cat socks that infringe Plaintiffs design patent, product and packaging trade dress, and trademark. Defendants blatant copying of all of Plaintiffs intellectual property demonstrates Defendants bad faith and intent to copy Plaintiffs innovative socks and trade off of Plaintiffs reputation and goodwill. Plaintiffs Complaint includes the following claims: (1) Design Patent Infringement (Count I); (2) Federal Unfair Competition and Product Trade Dress Infringement under 15 U.S.C. 1125(a) (Count II); (3) Federal Unfair Competition and Packaging Trade Dress Infringement under 15 U.S.C. 1125(a) (Count III); (4) Federal Trademark

Infringement (Count IV); (5) Common Law Unfair Competition and Product Trade Dress 1

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Infringement (Count V); (6) Common Law Unfair Competition and Packaging Trade Dress Infringement (Count VI); (7) Common Law Trademark Infringement (Count VII); and (8) Violation of Florida Deceptive and Unfair Trade Practices Act (Fla. Stat. 501.201 et seq.) (Count VIII). Plaintiff alleges all the requisite elements for each Count asserted in its Complaint. Despite Plaintiffs well-pled claims, Defendant has filed the instant Motion to Dismiss which attempts to extend the pleading requirements beyond the basic legal elements necessary to establish the various claims. For example, Defendant asserts the following meritless arguments for dismissal of Plaintiffs Complaint: (1) Count I - Plaintiff has failed to identify the specific patent statute under which Defendant is infringing; (2) Counts II, III, V and VI - Plaintiff has failed to adequately identify the specific elements that comprise its trade dress; and has failed to allege specific facts to support that its trade dress is nonfunctional and has acquired secondary meaning; (3) Counts IV and VII Plaintiff has failed to allege any facts that show similarities between the parties marks and advertising and has not alleged actual confusion; and (4) Count VIII - Plaintiff has failed to identify the specific elements that comprise deceptive and unfair trade practices and that Plaintiff lacks standing to bring a FDUTPA claim. Defendant also asserts numerous arguments that are not proper at the motion to dismiss stage such as that Plaintiff has not proved or provided evidence regarding certain elements of Plaintiffs claims. Contrary to Defendants assertions, Plaintiff is not required to prove any elements of its claims in its Complaint or submit evidence with its Complaint. As shown more fully below, none of the arguments raised by Defendant warrant the dismissal of any counts in the Complaint. Plaintiff has pleaded sufficient facts to place Defendant on notice as to the claims it must defend. See Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007). Accordingly, Defendants Motion to Dismiss should be denied in its entirety. 2

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II.

MOTION TO DISMISS STANDARD. A motion to dismiss tests the legal sufficiency of a complaint; it does not decide the merits of

the case. Twombly, 550 U.S. at 555; Wein v. American Huts, Inc., 313 F. Supp. 2d 1356, 1359 (S.D. Fla. 2004). Under Eleventh Circuit law, it is well established that for purposes of satisfying the pleading requirements of Rule 8(a), [f]actual allegations in a complaint need not be detailed but must be enough to raise a right to relief above the speculative level on the assumption that all the allegations in the complaint are true (even if doubtful in fact). Sinaltrainal v. Coca-Cola Co., 578 F.3d 1252, 1261 (11th Cir. 2009) (quoting Twombly, 550 U.S. at 555)). The Eleventh Circuit has noted that "the threshold of sufficiency that a complaint must meet to survive a motion to dismiss for failure to state a claim is exceedingly low." In re Southeast Banking Corp., 69 F.3d 1539, 1551 (11th Cir. 1995). Although the complaint must include plausible factual allegations concerning all elements of the claim, "the pleading standard Rule 8 announces does not require detailed factual allegations." Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 194950, 173 L. Ed. 2d 868 (2009). Specific facts are not necessary; the statement need only "give the defendant fair notice of what the . . . claim is and the grounds upon which it rests." Twombly, 550 U.S. at 555. When reviewing a motion to dismiss, the Court must accept the plaintiff's allegations as true and evaluate all plausible inferences derived from those facts in favor of the plaintiff. See LaTele TV C.A. v. Telemundo Communs. Group, LLC, 2013 U.S. Dist. LEXIS 43488106 * 14, U.S.P.Q.2D (BNA) 1906; Chaparro v. Carnival Corp., 693 F.3d 1333, 1337 (11th Cir. 2012). III. ARGUMENT. A. Count I of Plaintiffs Complaint States a Claim for Design Patent Infringement.

In order to plead a claim for design patent infringement, the plaintiff need only state sufficient facts to put the alleged infringer on notice. Phonometrics, Inc. v. Hospitality Franchise 3

Case 0:13-cv-61303-RSR Document 19 Entered on FLSD Docket 08/22/2013 Page 4 of 16

Sys., Inc., 203 F.3d 790, 794 (Fed. Cir. 2000). The Federal Circuit1 has explained the following allegations have been sufficient: the plaintiff's ownership of the patent; the names of each individual defendant; the patent that is ostensibly infringed; the means by which the defendants infringed the patent; and the specific sections of the patent law invoked. Gelsomino v. Horizon Unlimited, Inc., 2008 U.S. Dist. LEXIS 68907 *8 (S.D. Fla. Sept. 9, 2008); Phonometrics, 203 F.3d at 794. Defendant does not dispute that Plaintiff has properly alleged the following facts: Plaintiff's ownership of the 349 Patent (DE #1 at 10); the name of the individual defendant (DE #1); the patent that is infringed (DE #1 at 10); and the means by which the Defendant infringed the 349 Patent (DE #1 at 28). Rather, Defendants argument for dismissal of Count I, without citing any legal support, is that Plaintiff has alleged that Defendant has infringed upon U.S. Design Patent No. D664,349 pursuant to 35 U.S.C. 101 et seq., but has not alleged any other particular statute [Defendant] is infringing2. As a result, Plaintiff has failed to notify this Court or the Defendant of what statute it seeks relief under. DE #18 at p. 5. This alone is not grounds for dismissal. See Controlled Semiconductor, Inc. v. Control Systematization, 2007 U.S. Dist. LEXIS 92642 *4 (M.D. Fla. Dec. 18, 2007). In Controlled Semiconductor, the defendants counterclaim for patent infringement did not point explicitly to the specific sections of the patent law that were being invoked. However, the court concluded that this was a minor matter, which should not hamper the Plaintiff's ability to

In analyzing claims arising under the Patent Act, the Court is bound by decisions of the U.S. Court of Appeals for the Federal Circuit. See Gelsomino v. Horizon Unlimited, Inc., 2008 U.S. Dist. LEXIS 68907 *8 (S.D. Fla. Sept. 9, 2008); Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) (applying Federal Circuit law to patent issues but local circuit court law to procedural issues).
2

This argument is illogical as Defendant is infringing Plaintiffs 349 Patent, not a statute. 4

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respond to the counterclaim or the Court's ability to assess it. Id. (dismissing the counterclaim without prejudice not because the defendant did not explicitly state the patent law being invoked, but because it failed to adequately describe the means by which the plaintiffs infringed the patent). Similarly here, the allegation that the claim is being brought pursuant to 35 U.S.C. 101 et seq. (and the absence of the allegation that 35 U.S.C. 271 is being invoked) does not hamper Defendants ability to respond to the Complaint or the Court's ability to assess it. Indeed, Plaintiffs Complaint includes enough detail to put Defendant on notice that 35 U.S.C. 271, the provision of the patent law pertaining to patent infringement, is being invoked. First, 35 U.S.C. 271 does not distinguish between infringement of a utility patent under 35 U.S.C. 101 or a design patent under 35 U.S.C. 1713. 1-23 Chisum on Patents 23.05 (the general provisions of the Patent Act relating to infringement, including Section 271 on direct and contributory infringement, apply to design patents); See, e.g., Jazz Photo Corp. v. U.S. Int'l Trade Comm'n, 264 F.3d 1094, 1110, 59 USPQ2d 1907 (Fed. Cir. 2001). Second, as Defendant acknowledges in its Motion, 35 U.S.C. 271 is encompassed in the phrase 35 U.S.C 101 et seq. Third, Count I is entitled Design Patent Infringement. Fourth, the only patent asserted in the Complaint is U.S. Design Patent No. D664,349 and is also attached to the Complaint as Exhibit A. Indeed, in its Motion, Defendant was able to easily ascertain from the Complaint that the 349 Patent was a design patent as Defendant pointed out that the 349 Patent protects only ornamental designs. Therefore, there is no doubt that Count I of Plaintiffs Complaint is for design patent infringement under 35 U.S.C. 271. Moreover, for these same reasons, Defendants argument that

Defendant quotes 35 U.S.C. 171 (whoever invents any new, original, ornamental design for an article of manufacture may obtain a patent), although erroneously cites to 35 U.S.C. 271, which is the section of the patent laws pertaining to infringement.
3

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because Plaintiffs Complaint contains the phrase 35 U.S.C. 101 et seq., it is indicating that Defendant is violating 101 in addition to other sections lacks merit. Accordingly, Count I of Plaintiffs Complaint states a claim for design patent infringement and should not be dismissed under Fed.R.Civ.P. 12(b)(6). See Phonometrics, 203 F.3d at 794. Alternatively, should the Court determine that Plaintiffs allegation that Count I arises under 35 U.S.C. 101, et seq. is insufficient to put Defendant on notice of the specific section of the patent law being invoked, then Plaintiff seeks leave to amend Count I of its Complaint to allege that 35 U.S.C. 271 is being invoked. B. Counts II, III, V, and VI of Plaintiffs Complaint State a Claim for Infringement of Plaintiffs Product and Packaging Trade Dress.

The elements of a trade dress infringement claim are: (1) that the product or packaging is distinctive or has developed secondary meaning; (2) that the features in question are nonfunctional; and (3) that the similarity between the parties products is likely to cause confusion. See Niles Audio Corp. v. OEM Sys. Co., 174 F. Supp. 2d 1315, 1318 (S.D. Fla. 2001); Epic Metals Corp. v. Souliere, 99 F.3d 1034, 1038 (11th Cir. 1996). Plaintiff alleges in its Complaint all of the following requisite elements: (1) that its product and packaging has developed secondary meaning (DE #1 at 15); (2) that the features in question are nonfunctional (DE #1 at 11 and 12); and (3) that the similarity between the parties products is likely to cause confusion (DE #1 at 33, 43 and 49). However, Defendant argues that Plaintiffs Complaint should be dismissed because Plaintiff did not sufficiently identify the elements that comprise its trade dress, including how any of those elements are confusingly similar, primarily nonfunctional, and have acquired secondary meaning.

Case 0:13-cv-61303-RSR Document 19 Entered on FLSD Docket 08/22/2013 Page 7 of 16

Contrary to Defendants argument, Plaintiffs Complaint contains the following allegations which sufficiently identify the non-functional elements that make up its trade dress: 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. DE #1 at 11. 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 Plaintiffs Packaging Trade Dress). Examples of Plaintiffs Packaging Trade Dress are shown in Exhibit C. DE #1 at 12. Therefore, Defendants argument that Plaintiff did not sufficiently identify the non-functional elements that make up its trade dress lacks merit. 1. Functionality is a Question of Fact Which Cannot Be Resolved on a Motion to Dismiss.

Defendant also attempts to argue as a basis for dismissal that Plaintiffs trade dress is functional. A functional characteristic is one that is "essential to the use or purpose of the article or [one that] affects the cost or quality of the article." Id. at 1039. "There is no bright line test for functionality." Id. The question of whether features are nonfunctional is one of fact. Epic Metals, 99 F.3d at 1038. Therefore, Defendants argument regarding functionality is not appropriate at the motion to dismiss stage. Furthermore, Defendant attempts to argue that Exhibit G to Plaintiffs Complaint, which is a marketing postcard used by the Defendant contradicts Plaintiffs allegations that its own trade dress 7

Case 0:13-cv-61303-RSR Document 19 Entered on FLSD Docket 08/22/2013 Page 8 of 16

is non-functional. Defendant has not articulated - nor can it - how the Defendants advertisement proves that Plaintiffs product or packaging is functional. Nevertheless, whether Exhibit G contradicts Plaintiffs allegations that its trade dress is nonfunctional is a factual issue which can only be resolved after a full record is presented to the Court and not at the motion to dismiss stage. See Niles, 174 F. Supp. 2d at 1318-19. In Niles, like here, defendants moved to dismiss the complaint on the basis that the plaintiffs trade dress was functional because it claimed that plaintiffs promotional brochures contradicted plaintiffs allegations of non-functionality. The court, however, declined to dismiss the plaintiffs complaint for trade dress infringement because a full record was necessary to make factual determinations on the issue of functionality. In so ruling, the court stated: Although Defendants argue that the promotional brochures negate these allegations [of nonfunctionality], the Court finds that it cannot determine -- at this time -whether [plaintiffs] statements in the promotional brochures actually contradict the allegations in the Complaint. The Court is not an expert in audio speakers. Therefore, it would be improper for the Court to assume that the language in the brochures, describing various features of the OS speakers, mandates a finding that those features are functional. Indeed, these are factual issues which can only be resolved after a full record is presented to the Court. Accordingly, Defendants functionality argument fails. Id. at 1318-19. Accordingly, the Defendants argument that Counts II, III, V, and VI of Plaintiffs Complaint should be dismissed also fails. 2. Secondary Meaning is a Question of Fact Which Cannot Be Resolved on a Motion to Dismiss.

Plaintiffs Complaint properly alleges the existence of secondary meaning of Plaintiffs product and packaging trade dress: 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 8

Case 0:13-cv-61303-RSR Document 19 Entered on FLSD Docket 08/22/2013 Page 9 of 16

the exclusive source and distinguishing Plaintiffs goods and packaging from the goods and packaging of others. DE # 1 at 15. Despite these allegations, Defendant challenges the sufficiency of Plaintiffs secondary meaning allegations for a variety of improper reasons. First, Defendant claims that Plaintiff has not alleged that its line of socks has remained unchanged since its inception. Although this is not a requisite element to state a claim for trade dress infringement, Plaintiff has alleged that [p]rior 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. DE #1 at 13. Next, Defendant complains that Plaintiff alleges significant advertising, without identifying a single way or extent in which the product trade dress has been advertised . . . . and has also not informed Tsipilates of the efforts to promote conscious connection with the trade dress or the extent to which the public identifies the name with the Plaintiffs socks. DE #18 at p. 9. Thus, Defendant improperly argues that Plaintiffs allegations of secondary meaning are not supported by a shred of evidence. In support of its argument, Defendant cites to Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 745 F. Supp. 2d 1359 (S.D. Fla. 2010). However, Millers Ale House does not support Defendants argument. Unlike here, the court in Miller's Ale House identified various types of evidence used to prove the existence of secondary meaning in the context of a motion for summary judgment - after the parties had an opportunity to conduct discovery and submitted record evidence and live testimony and thus not in the context of a motion to dismiss. Questions relating to secondary meaning just like questions relating to functionality are questions of fact. Niles, 174 F. Supp. 2d 1318; Brooks Shoe Manufacturing Co., Inc. v. Suave Shoe 9

Case 0:13-cv-61303-RSR Document 19 Entered on FLSD Docket 08/22/2013 Page 10 of 16

Corp., 716 F.2d 854, 860 (11th Cir. 1983). In Niles, as here, the plaintiff properly alleged that the features of its trade dress have acquired secondary meaning. Therefore, the court refused to dismiss the trade dress claim on the basis that plaintiffs trade dress did not have secondary meaning because the Court needed a full record to make such factual determinations. See id. Lastly, Defendant, citing to Millers Ale House, argues that in order to properly allege that Defendants packaging is confusingly similar to Plaintiffs packaging trade dress, it must allege the total impression, i.e., the overall design is confusingly similar. As stated supra, Millers Ale House was in the context of a motion for summary judgment and not a motion to dismiss, and the court did not make any findings regarding the necessary elements to plead a trade dress infringement claim. Nonetheless, Defendants argument that Plaintiff cannot prove beyond doubt4 that the total impression of the trade dress has been infringed because Plaintiff only introduced the front side of the Plaintiffs and Defendants packaging lacks merit. Samples of the Plaintiffs as well as Defendants packaging, which will include both the front and back sides, will be produced in discovery. Accordingly, Defendants Motion to Dismiss Counts II and III should be denied. See Niles, 174 F. Supp. 2d at 1318-19. C. Counts IV and VII of Plaintiffs Complaint State a Claim for Trademark Infringement.

To state a claim for trademark infringement under the Lanham Act, 15 U.S.C. 1114, the plaintiff must allege that the mark was used in commerce by the defendant without the plaintiff's consent and that the defendant's use of the mark was likely to cause consumer confusion. Gelsomino

The standard to prove trade dress infringement is preponderance of the evidence, not beyond doubt as Defendant asserts. See Florida Breckenridge v. Solvay Pharms., 1997 U.S. Dist. LEXIS 17574 *10, 43 U.S.P.Q.2D (BNA) 1878 (S.D. Fla. 1997). 10

Case 0:13-cv-61303-RSR Document 19 Entered on FLSD Docket 08/22/2013 Page 11 of 16

v. Horizon Unlimited, Inc., 2008 U.S. Dist. LEXIS 68907 *8 (S.D. Fla. Sept. 10, 2008)(citing Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1241 (11th Cir. 2007)). State and federal trademark infringement law apply the same standards. See Investacorp, Inc. v. Arabian Inv. Banking Corp., 931 F.2d 1519, 1521 (11th Cir. 1991)(holding that the analysis of the Florida statutory and common law claims of trademark infringement and unfair competition is the same as under the federal trademark infringement claim). Plaintiff has satisfied the pleading requirements by alleging in its Complaint that: (1) it owns a valid trademark (DE #1 at 16-18); (2) that the Defendant used its trademark in interstate commerce knowingly and without Plaintiff's consent (DE #1 at 30, 36, 55); (3) and that such use is likely to confuse or deceive consumers (DE #1 at 33 and 55). See Icon Health & Fitness, Inc. v. IFITNESS, Inc., 2012 U.S. Dist. LEXIS 46824 *7 (S.D. Fla. April 2, 2012). Despite these well-pled allegations, Defendant attempts to make improper factual arguments that the marks at issue are not similar and are therefore, not likely to cause confusion. The likelihood of consumer confusion is an issue of fact, not law, which is to be decided by the final fact-finder. Coach House Rest. Inc. v. Coach and Six Rest., Inc., 934 F.2d 1551, 1560-63, 1565 (11th Cir. 1991); see also 4 McCarthy on Trademarks and Unfair Competition 23:67 (4th ed. 1994). Therefore, under the standard of review in a motion to dismiss, the Court is required to accept as true the allegations in the Complaint (DE #1 at 33, 55 and 71) that the parties' marks are likely to cause consumer confusion, which are supported by plausible facts. See Icon, 2012 U.S. Dist. LEXIS 46824 at *9. In Icon, the court denied defendants motion to dismiss which argued that there was no likelihood of confusion because plaintiffs products were not sufficiently related. Specifically, the court held that: 11

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The Defendant's argument mischaracterizes the legal standard that ICON's infringement claims must meet to survive a motion to dismiss. At this stage, the plaintiff merely has to plead each element of a trademark infringement claim and support each element with plausible facts. ICON has done so, as has already been discussed. At a subsequent summary judgment stage, this court may make a determination as to whether ICON has carried its burden on the "likelihood of confusion" element and whether the products are sufficiently "related," but at this stage it is irrelevant and premature to analyze whether ICON has done so. This argument is more appropriately raised on the merits of the evidence at the summary judgment stage, after the discovery process has developed further facts regarding the products in dispute. Id. Similarly here, the Defendants argument that the marks at issue are not likely to cause confusion is premature and not appropriate at the motion to dismiss stage. Accordingly, Defendants Motion to Dismiss Counts IV and VII of Plaintiffs Complaint should be denied. See id. D. Count VIII of Plaintiffs Complaint States a Claim for Violation of FDUTPA.

A claim under Florida's Deceptive and Unfair Trade Practices Act ("FDUTPA") requires a plaintiff to demonstrate that it was aggrieved by an act or practice that constitutes a "violation of this part" and that as a result it "suffered a loss." TracFone Wireless, Inc. v. Access Telecom, Inc., 642 F. Supp. 2d 1354, 1365 (S.D. Fla. 2009); Fla. Stat. 501.211(2). Engaging in trademark infringement is an unfair and deceptive trade practice that constitutes a "violation of this part." Id.; Pepsico, Inc. V. Distribuidora La Matagalpa, Inc., 510 F.Supp.2d 1110, 1114 (S.D. Fla. 2007). Therefore, a successful trademark infringement claim supports a claim for violation of FDUTPA. See Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1333 (11th Cir. 2008); Laboratories Roldan C. por A. v. Tex Int'l, 902 F. Supp. 1555, 1569-70 (S.D. Fla. 1995)(explaining that intentionally palming off or passing off products is the type of behavior which 12

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FDUTPA was meant to protect against); TracFone, 642 F. Supp. 2d at 1365 (denying motion to dismiss FDUTPA claim because the plaintiff alleged it was aggrieved by the trademark infringement by pleading that consumer confusion has been a threat to and undermined the reputation of its business and that it suffered a loss). As such, since Plaintiff has stated a claim for trademark infringement, as discussed in detail above, Plaintiff has also stated a claim for violation of FDUTPA. Defendants basis for dismissal of Count VIII is that its trade practices are not likely to mislead consumers but instead permissibly marketed [the infringing socks] to Pilates and yoga studios by sending complementary socks, whereby said studios are not consumers. DE #18 at p. 14. In addition, Defendant argues that Plaintiff does not have standing to bring a FDUTPA claim because it has not alleged a consumer transaction. Defendant offers no legal support for its conclusion that studios are not consumers. Since the statute was amended in 1993, FDUTPA protects both individual consumers and "legitimate business enterprises" from deceptive and unfair trade practices. Tampa Bay Storm, Inc. v. Arena Football League, 1998 U.S. Dist. LEXIS 5211, 1998 WL 182418, *7 (M.D. Fla. Mar. 19, 1998); Fla. Stat. 501.202(2) & 501.203(7) (2003). Since the statute was amended, courts have interpreted "consumer" to mean one engaged in the purchase of goods or services. S & B Invs., LLC v. Motiva Enters., LLC, 18 Fla. L. Weekly Fed. D 396 (S.D. Fla. 2004); Pinecrest Consortium, Inc. v. Mercedes-Benz USA, LLC, 2013 U.S. Dist. LEXIS 59558 *4 (S.D. Fla. April 25, 2013); N.G.L. Travel Assocs. v. Celebrity Cruises Inc., 764 So. 2d 672, 674 (Fla. 3d DCA 2000). Accordingly, the studios may be considered consumers since they purchase goods from Plaintiff. However, this determination should be a factual determination and should not be resolved at the motion to dismiss stage. Nevertheless, the determination of whether studios are consumers is not dispositive, 13

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because Plaintiff also alleges that 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. DE #1 at 34. Plaintiff also alleges that Defendant began selling competing and infringing socks under the infringing mark SOXSI. DE #1 at 23 and 30. Accordingly, Plaintiffs Complaint has properly alleged that Defendants unfair and deceptive acts have injured consumers as a result of a consumer transaction. Therefore, Defendants Motion to Dismiss Count VIII should be denied. E. Plaintiffs Complaint Does Not Contain Vague and Inconsistent Allegations.

Defendant also argues, without any legal support, that Count I should be dismissed (with prejudice no less) because these claims includes the allegation that it incorporates herein each and every allegation set forth in Paragraphs 1 through 36 as if fully set forth herein. Defendant claims to be confused how the majority of allegations 1 through 36 relate to design patent infringement, yet also readily identifies that paragraphs 16-21 relate only to the trademark SHASHI. Defendant makes the same argument with respect to Counts II- VIII claiming that it is confused how the majority of paragraphs 1 through 36 relate to trade dress or trademark infringement or violation of FDUTPA because, for example, paragraph 10 relates to the 349 Patent. Indeed, paragraphs 1 through 36 of Plaintiffs Complaint are organized under the following separate subheadings: JURISDICTION AND VENUE (paragraphs 1-4); THE PARTIES (paragraphs 5-6); FACTUAL BACKGROUND (paragraphs 6-9); PLAINTIFFS PATENT AND TRADE DRESS RIGHTS (paragraphs 10-15); PLAINTIFFS TRADEMARK RIGHTS (paragraphs 16-21); and DEFENDANTS INFRINGING ACTIVITY (paragraphs 22-36). Therefore, it is clear which 14

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allegations support each claim for relief. Accordingly, dismissal of Plaintiffs Complaint without prejudice is not warranted on this basis (and most certainly not with prejudice, as requested by Defendant). F. Defendants Claim for Fees and Costs Should be Denied.

In the Wherefore clause of its Motion, Defendant requests fees and costs. See DE # 18 at p. 15. Defendants request should be denied as Defendant has not cited nor can it cite any legal basis for same. See Allen v. Life Ins. Co. of N. Am., 267 F.R.D. 407, 416 (N.D. Ga. 2009) (denying a request for fees as being unwarranted in the defense of a motion to dismiss, and moreover for failure to specify a basis in the rules, a statute, or case law for such request). IV. CONCLUSION. For the reasons set forth above, Defendants Motion to Dismiss should be denied in its entirety, since the Plaintiffs Complaint contains sufficient facts to give Defendant fair notice of what the ... claim is and the grounds upon which it rests. Twombly, 550 U.S. at 555. In addition, the Defendants request for attorneys fees and costs should also be denied as Defendant has not alleged any legal basis for same. Alternatively, should the Court deem that any of the Counts asserted in Plaintiffs Complaint are insufficiently pled, Plaintiff requests leave to amend its Complaint. WHEREFORE, Plaintiff requests that Defendants Motion to Dismiss be denied in its entirety and such further and other relief as the Court deems just and proper. Respectfully submitted, Dated: August 22, 2013 Miami, Florida 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 15

Case 0:13-cv-61303-RSR Document 19 Entered on FLSD Docket 08/22/2013 Page 16 of 16

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

CERTIFICATE OF SERVICE I hereby certify that on August 22, 2013, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel of record or pro se parties identified on this Service List in the manner specified, either via transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to receive electronically Notice of Electronic Filing. s/Meredith Frank Mendez Meredith Frank Mendez

SERVICE LIST

Matthew Sean Tucker TUCKER LAW, P.A. d/b/a TUCKER IP 2515 Marina Bay Drive West, No. 202 Fort Lauderdale, FL 33312 mtucker@tuckeriplaw.com Telephone: (954) 204-0444 Attorney for Defendant

16

Case 0:13-cv-61303-RSR Document 20 Entered on FLSD Docket 08/28/2013 Page 1 of 5

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA FORT LAUDERDALE CASE NO. 0:13-cv-61303-ROSENBAUM ) ) ) ) Plaintiff, ) ) v. ) ) TSIPILATES, LLC, a FLORIDA limited ) liability company, ) ) Defendant. _________________________________________) SHASHI, LLC, a FLORIDA limited liability company, DEFENDANTS REPLY BRIEF IN SUPPORT OF DEFENDANTS RULE 12(B)(6) MOTION TO DISMISS PLAINTIFFS COMPLAINT I. INTRODUCTION On August 12, 2013, Defendant, Tsipilates, LLC. filed its motion to dismiss under Fed. R. Civ. P. 12(b)(6). That motion details how Plaintiffs pleading offers a mere formulaic recitation of the elements for each cause of action. The Supreme Court held in Bell At. Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009) that plaintiff must plead factual content that allows the court to draw the reasonable inference that defendant is liable for the misconduct alleged. Iqbal, 556 U.S. at 678. It will not be enough to allege facts that merely raise the sheer possibility that a defendant has acted unlawfully. Id. Moreover, Plaintiffs [t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements are insufficient to state a claim for relief. Id. II. MOTION TO DISMISS STANDARD Plaintiff states in opposition that the the pleading standard Rule 8 announces does not
require detailed factual allegations . . . ." Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). But Plaintiff

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Case 0:13-cv-61303-RSR Document 20 Entered on FLSD Docket 08/28/2013 Page 2 of 5

ignores the sentences that followed. The Court goes on and states: . . . but it demands more than an unadorned, the-defendant-unlawfully harmed me accusation. Id. A pleading that offers labels and conclusions or a formulaic recitation of the elements of a cause of action will not due. Id. Nor does a complaint suffice if it tenders naked assertions devoid of further factual enhancement. Id. (internal quotations omitted). [I]f allegations are indeed more conclusory than factual, then the court does not have to assume their truth. Chaparro v. Carnival Corp., 693 F.3d 1333, 1337 (11th Cir. 1984).

III.

COUNT I DESIGN PATENT INFRINGEMENT Plaintiff claims that Controlled Semiconductor contradicts Defendants argument that

Count I should be dismissed. 2007 U.S. Dist. LEXIS 92642 *4 (M.D. Fla. Dec. 18, 2007). It does not, nor is relevant. In that case, the court held that the counterclaim alleging a utility patent which falls under 35 U.S.C. 101did not point to the specific sections of the patent law being invoked. That holding is different than the case here, where Plaintiff has positively alleged 35 U.S.C. 101designated for utility patentsfor alleging design patent infringement. The United States Court of Customs and Patent Appeals has made crystal clear: [a] comparison of 35 U.S.C. 101 with 35 U.S.C. 171 illustrates their parallel, but distinct, natures. They both set forth criteria for what may be patented, but the criteria differ for different classes of subject matter. The criteria in 35 U.S.C. 101 for processes, machines, manufactures, and compositions of matter, and improvements thereof, are that the invention be "new" and "useful." The criteria in 35 U.S.C. 171 for designs are that the invention be "new," "original," and "ornamental." The repetition in 35 U.S.C. 171 of "whoever invents," "any new," and "may obtain title" would have been superfluous if the criteria of 35 U.S.C. 101 in their entirety were applicable to designs. We cannot assume that Congress did a useless thing in deleting "useful" when it legislated with respect to designs. See Application of Lorraine FINCH and Morris Branch, 535 F.2d 70, 71-72 (1976) (emphasis added). Based on the parallel and distinct nature of 101 and 271, Plaintiff cannot allege that

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Case 0:13-cv-61303-RSR Document 20 Entered on FLSD Docket 08/28/2013 Page 3 of 5

101 provides notice under 271 for only one design patent. [DE 19, p. 5 lines 19 p. 6 lines 4]. In addition, Defendant asked this Court to dismiss of Count I with prejudice because, by alleging 35 U.S.C. 101, Plaintiff implicitly admits that the patent has utility and is not a valid design patent. Despite Defendants citations evidencing that 35 U.S.C 101 applies only to utility patents, Plaintiff still maintains that Defendant is violating 101 . . . . [DE 19, p. 6 line 2]. Accordingly, Defendant maintains its request to dismiss Count I with prejudice. IV. COUNTS II, III, V, AND VI PRODUCT AND PACKAGING TRADEDRESS Plaintiff argues that the standard to prove trade dress infringement is by a preponderance of the evidence. [DE 19 n. 4]. That is a red herring. Based on the pleadings, Plaintiff has not alleged facts showing that the total impression of the alleged packaging trade dress has been infringed. [DE 18 pp. 10-11]. Accordingly, Plaintiff has not stated a claim that is plausible on its face. More to the point, Plaintiff has not alleged the total impression is confusingly similar, and now directs this Court to certain non-functional features for support. [DE1 12]; [DE19] (emphasis added). The word certain is a pronoun that means some but not all.1 This further supports Defendants contention that Plaintiff has not alleged that the total impression of either the product or packaging is confusingly similar. As a result, Plaintiffs claims fall short of alleging facts that are plausible on their face. Moreover, Plaintiffs alleged non-functional features are more conclusory than factual. Therefore, this Court should not to assume their truth. V. COUNT VIII DECEPTIVE AND UNFAIR TRADE PRACTICES Plaintiff alleges that consumers and customers are one in the same. Defendant disagrees. A consumer is one who enjoys the benefit of the product. Adobe Bldg. Centers, Inc.

OED Online, Oxford University Press, 22nd of August 2013, http://oxforddictionaries.com/us/definition/american_english/certain?q=certain.

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v. Reynolds, 403 So. 2d 1033, 1035 (Fla. Dist. Ct. App. 1981) (Consumers connote a person or entity at the end of the stream of commerce and not merely passers-on within the chain of commerce). Plaintiff states that Defendant sold socks directly to Plaintiffs customers. [DE 1 34]. Plaintiff then states [s]pecifically, Defendant has directly solicited Plaintiffs authorized retailers. [DE 1 35]. Thus, Plaintiff specifically states that its customers are authorized retailers, i.e.. yoga studios, which merely pass the socks down the stream of commerce. Furthermore, Plaintiff has not alleged that its authorized retailers benefit from the use of product. Accordingly, Plaintiff does not have standing to bring a claim under FDUTPA. VI. CONCLUSION For the reasons set forth in Defendants Motion to Dismiss and hereinabove, Defendant respectfully requests that the Court dismiss Plaintiffs Complaint in its entirety.

August 28, 2013

Respectfully submitted, By: /s/ Matthew Sean Tucker Matthew Sean Tucker Tucker IP Patents|Trademarks|Civil Litigation Florida Bar No. 90047 2515 Marina Bay Drive West, No. 202 Fort Lauderdale, FL 33312 mtucker@tuckeriplaw.com www.tuckeriplaw.com Telephone: (954) 204-0444 Attorney for Defendant

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Case 0:13-cv-61303-RSR Document 20 Entered on FLSD Docket 08/28/2013 Page 5 of 5

CERTIFICATE OF SERVICE I hereby certify that on August 28, 2013, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF and that service was perfected on all counsel of record and interested parties through this system. By: /s/ Matthew Sean Tucker

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