Case 2:14-cv-00398 Document 1 Filed 01/17/14 Page 1 of 8 Page ID #:1

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Marvin H. Kleinberg (State Bar No. 24,953) mkleinberg@kleinberglerner.com Michael Hurey (State Bar No. 139,550) Email: mhurey@kleinberglerner.com Bradford E. Mattes (State Bar No. 159,004) bemattes@kleinberglerner.com KLEINBERG & LERNER, LLP 1875 Century Park East, Suite 1150 Los Angeles, California 90067-2501 Telephone: 310- 557-1511 Facsimile: 310- 557-1540 Attorneys for Plaintiff, ETS EXPRESS, INC. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA-WESTERN DIVISION ETS EXPRESS, INC., a California corporation ) ) ) Plaintiff, ) ) v. ) ) KAISER GROUP INCORPORATED, a ) Minnesota corporation ) ) ) Defendant Case No.: COMPLAINT FOR DECLARATORY JUDGMENT RE PATENT, TRADEMARK AND TRADE DRESS

DEMAND FOR JURY TRIAL

COMES NOW the Plaintiff, ETS EXPRESS, INC. ("ETS") and for its Complaint against the Defendant states as follows: Nature of the Complaint 1. This is an action at law and in equity for a declaratory judgment holding that plaintiff has not infringed U.S. Design Patent Number D693,176 S. (" '176 patent") assigned to Defendant KAISER GROUP INCORPORATED ("KAISER") and has not
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COMPLAINT FOR DECLARATORY JUDGMENT RE PATENT, TRADEMARK AND TRADE DRESS

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infringed KAISER'S VINO2GO trade mark, Reg; No.4,299,343 nor KAISER'S VINO2GO trade dress or, in the alternative that the '176 patent is invalid and that Reg. No. 4,299,343 should be cancelled under the provisions of 15 U.S.C. 1064 (Lanham Act 14. Parties, Jurisdiction, and Venue 2. 3. Plaintiff ETS Express, Inc. is a California Corporation having a principal place of business at 420 South Lombard Street, Oxnard, California 93030. Upon information and belief, Defendant KAISER GROUP INCORPORATED. is a Minnesota Corporation with an address of 5021 Vernon Avenue, #243, Edina, MN 55436. 4. Pursuant to 28 U.S.C. 2201 and 2202, this Court may declare the rights and other legal relationships of the parties and may order such other relief as may be necessary. This Court has subject matter jurisdiction of the design patent declaratory relief claims under 28 U.S.C. 1331 and under 28 U.S.C. 1338, in that, this case arises under the Patent Laws of the United States, 35 U.S.C. l et seq. 5. This Court also has subject matter jurisdiction of the trade mark and trade dress declaratory relief actions under 28 U.S.C. 1331 and under 28 U.S.C. 1338, in that, this case also arises under the Trademark Laws of the United States 15 U.S.C. 1121(a). 6. Antonio Papageorgiou, counsel for Defendant KAISER, sent a letter dated January 8, 2013 to Plaintiff's president alleging infringement of Design Patent No. D693,176 S, trade mark VINO2GO, Reg. No. 4,299,343 and of Defendant's alleged VINO2GO trade dress as a violation of Defendant's rights under Lanham Act 32 (15 U.S.C. 1114). That letter demanded, among other things, that "ETS ... cease and desist from offering for sale or selling all unauthorized versions of tumblers featuring a wine glass within a clear container (hereinafter "Unauthorized Tumblers"), including without limitation the Infringing Products;" The letter further demanded that ETS recall all

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Unauthorized Tumblers and Infringing Products "without waiver or prejudice of Kaiser Group rights, claims and remedies...". A copy of that letter is attached as Exhibit 1. 7. When a reply was sent to the January 8 letter, Defendant's lawyer's response included the statement: "...we consider all offers to sell the accused tumbler at the tradeshow acts of willful infringement." 8. 9. An actual case and controversy exists between ETS and Defendant KAISER Defendant KAISER is subject to the personal jurisdiction of this Court as a result of Defendant's accusations of patent, trade mark and trade dress infringement. because KAISER has offered products for sale and/or sold products in the Central District of California. This court also has personal jurisdiction over Defendant by virtue of the fact that, upon information and belief, Defendant regularly solicits business and/or derives substantial revenue from goods used or consumed in this state. 10. California. Facts 11. Plaintiff markets and sells a line of double-wall drinkware under the "VINI" mark. Plaintiff's VINI drinkware is offered and sold to the promotional products market rather than the general consumer market. The interior shape of Plaintiff's VINI drinkware is distinctive in that it has the overall shape of a pointed bullet. This differs from the interior shape of Defendant's asserted patent and trade dress that has the appearance of a wine glass and has round, curved walls. The interior shape of Plaintiff's VINI drinkware also lacks any stem and instead has a substantial open space between the apex of the pointed bullet and the base of the exterior container. The asserted '176 patent has an integral stem that extends almost to the base of the exterior container to simulate the long stem of a traditional glass wine glass. Moreover, the exterior shape of Plaintiff's VINI drinkware has a distinctive slightly curved cylindrical Upon information and belief, venue is proper under 28 U.S.C. 1391(b) because acts giving rise to the claims asserted herein occurred in the Central District of

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shape with a substantially planar base while the exterior shape of the asserted '176 patent is frusto-conical and has a base with a slight dome shape. 12. Plaintiff has adopted and has been using since 2004 a family of marks in which "2GO" is an integral element. These marks include "H2GO", "T2GO", "CUP2GO", "H2GO OMEGA" and "h2go bfree". Because of the prior use of its family of "2GO" marks, Plaintiff believes that the continued registration of the "VINO2GO" mark is likely to cause confusion, deception and mistake in the marketplace. 13. A recent search on the internet has revealed that the term "VINO2GO" is being used extensively to advertise and sell drinkware substantially in accordance with the '176 patent from various sources, none of them being the Defendant. To the extent that the term is used to identify the product, it has become generic. 14. Moreover, at least two organizations, "Thermo Steel" and "The Product Farm", claim to manufacture "VINO2GO". As a result there is confusion as to the source of the "VINO2GO wine sippy cup". FIRST CLAIM FOR RELIEF [Declaratory Judgment, under 28 U.S.C. 2201 and 2202 of No Patent Infringement Against Defendant] 15. 16. 17. Exhibit 3. 18. As is plainly evident, Plaintiff's VINI wine tumbler does not, in any way, infringe the design of the KAISER '176 patent. Defendant, however, has alleged that Plaintiffs VINI wine tumbler does infringe the 176 patent. Accordingly, a justiciable controversy exists between the parties. The preceding paragraphs are incorporated herein by reference. A copy of the '176 patent is attached hereto as Exhibit 2. A picture of Plaintiffs accused VINI" wine tumbler is attached hereto as

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SECOND CLAIM FOR RELIEF [Declaratory Judgment under 28 U.S.C. 2201 and 2202 of Invalidity and Unenforceability of Asserted Trade Mark Against Defendant] 19. 20. 21. The preceding paragraphs are incorporated herein by reference. A copy of Defendant's trademark registration is attached as Exhibit 4. A search of the internet reveals that at amazon.com, alone, at least 10

different merchants are offering a "Vino2Go ...insulated wine tumbler set". There are at least thirteen other offerings of "Vino2Go" "insulated wine tumblers", each with a plurality of vendors. In addition, several web sites offer the "Vino2Go wine sippy cup" including "www.thevino2go.com", "www.silkletter.com/Vino2Go", "www.funslurp.com", "www.giftedgrape.com", "www.givesimple.com/WineSippy Cup", "www.store.theproductfarm,com/Vino2Go" and "kegworks.com/Vino2Go". 22. Because of the widespread offering by many sources of a product identified as the "Vino2Go wine sippy cup", the term has become the generic identifier of the product and therefore the registration of "VINO2GO" is cancellable at any time under 15 U.S.C. 1064 (3) which provides: "A petition to cancel a registration of a mark ...may...be filed... (3) At any time if the registered mark becomes the generic name for the goods... for which it is registered, ... or if the registered mark is used by or with the permission of the registrant so as to misrepresent the source of the goods....on or in connection with which the mark is used...." 23. the public. THIRD CLAIM FOR RELIEF [Declaratory Judgment under 28 U.S.C. 2201 and 2202 of No Infringement of Asserted Trade Dress Against Defendant] 24. The preceding paragraphs are incorporated herein by reference. Alternatively, because of the plethora of sources advertising "Vino2Go wine sippy cups", the source of the goods is being actively misrepresented to the confusion of

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25. 26.

A picture of a VINO2GO wine sippy cup, which, it is presumed, embodies Plaintiff's VINI" wine tumbler does not, in any way infringe any rights

the KAISER TRADE DRESS, is attached as Exhibit 5. that Defendant KAISER may have in its so-called "VINO2GO TRADE DRESS" which has only been in use since May of 2012, a period much too short for KAISER to have acquired any enforceable trade dress rights. The VINO2GO TRADE DRESS is not inherently distinctive. 27 Defendant KAISER cannot claim any trade dress rights to the frusto-conical shape of the VINO2GO wine sippy cup exterior or the wine glass shape of the interior as they are functional. 28. The "double-wall" feature of the claimed trade dress is functional and, as such, cannot be appropriated by KAISER either under the Patent Laws or the Trade Mark Laws of the United States. 29. The frusto-conical shape of the VINO2GO wine sippy cup exterior is a common geometric shape and cannot be appropriated by KAISER under either the Patent Laws or the Trade Mark Laws of the United States. PRAYER FOR RELIEF WHEREFORE, PLAINTIFF ETS EXPRESS PRAYS for judgment against Defendant KAISER as follows:
1.

A declaration that ETS EXPRESS has not in any manner infringed, and is A declaration that ETS EXPRESS has not in any manner infringed, and is A declaration that ETS EXPRESS has not in any manner infringed, and is

not currently infringing, Defendant KAISER's '176 patent;

2.

not currently infringing, Trademark Reg. No. 4,299,343.

3.

not currently infringing any alleged Trade Dress of Defendant KAISER, including, but not limited to, the alleged KAISER VINO2GO Trade Dress.;
4.

Cancellation of Reg. No. 4,299,343 pursuant to 15 U.S.C. 1054.

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EXHIBIT 1

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Exhibit 1 Page 9

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Exhibit 1 Page 10

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EXHIBIT 2

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Exhibit 2 Page 11

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Exhibit 2 Page 12

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Exhibit 2 Page 13

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Exhibit 2 Page 14

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EXHIBIT 3

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Exhibit 3 Page 15

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EXHIBIT 4

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Exhibit 4 Page 16

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EXHIBIT 5

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Exhibit 5 Page 17