UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

TELEBRANDS CORP.,

Plaintiff,

TV DIRECT LLC,

Defendant.

14 CV597

Civil Action No

JUDGE FAILLA

>:

COMPLAINT

Plaintiff Telebrands Corp. ("Telebrands

LLC ("TV Direct"), alleges as follows:

THE

1. Plaintiff Telebrands is a corporation org^ized and

New Jersey, having a place ofbusiness at 79 Tv^cj Bridges

2. Upon information and belief, defendant TlV Direct

under the laws of the State of New York and hiving

Avenue, Suite 1100, New York, New York 10016 Upon

business within the State of New York and in this! Judicial

Complaint against Defendant TV Diiect'CO

CO c_

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o

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existing under the laws of the StateCO

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Road, Fairfield, New Jersey 07004.

is a corporation organized and existing

principal place of business at 347 Fifth

information and belief, TV Direct is doing

District.

NATURE OF CLAIMS. JURISDICTION AND VENUE

3. This action arises under the Patent Laws of the Uhited States (35 U.S.C. §1 et seq.), the

United States (15 U.S.C. § 1051 et seq.), and the

3£n. Bus. I|.aw § 360).

15 U.S.CJ § 1121,28 U.S.C. §§ 1331,1332(a)(1),

oftfoisC^urt under 28 U.S.C. § 1367. The matter

Trademark and Unfair Competition Laws of the

statutory and common law of New York (N.Y.

4. Jurisdiction of this Court is founded upoh

1338(a) and (b), and the supplemental jurisdiction <

in controversy exceeds $75,000, exclusive of irjtejrest and ^osts, andthere is complete diversity of

citizenship between the parties.

5. Venue is proper within this Judicial Distrifc

1400 (b).

:t under 28 U.S.C. Sections 1391(b) and (c), and

FACTS COMMON TO ALL CLAIMS FOR RELIEF

6. Telebrands is a direct marketing company

of marketing and selling a wide variety of

principally through direct response advertising

of the recognized leaders in the direct response

based in part by expending a large amount of

response orders. The television advertising

the product among consumers who then purch

Telebrands' AERO

;ind,:since|

prbd

through

tildvision

money

a heig

the prod

KNIFE

1987, has been engaged in the business

consular products in this Judicial District and elsewhere,

and national retail stores. Telebrands is one

marketing industry. Telebrands' success is

advertising products on television for direct

ht^nedbrandawareness andrecognition of

ttct in retail stores.

Product.

;create»

ase

7. Telebrands markets and sells a product under the trademark AERO KNIFE. The AERO

KNIFE product is a knife product thathas a uni<jjub anddistinctive product configuration andtrade

dress which is characterized, in part, by a blaqe

distinctive configuration, namely, in the order

followed by a quadrilateral, followed by two

shortest side at the other opposing lower

arrangement and combination of these elements

and constitutes valid trade dress. Telebrands is

that has five polygonal shapes in a unique and

df a triangle on one upper corner of the blade,

parallelograms, followed by a pentagon with the

blade ("Product Trade Dress"). The

non-fundtional, arbitraryand fanciful,distinctive

owner of all right, title and interest in and to this

Was adopted to give the AERO KNIFE product a

Photographs of the AERO KNIFE product are

corner of the

is

the

Product Trade Dress. The Product Trade Dress

distinctive appearance and to indicate source,

attached as Exhibit A.

8. Telebrands' new, non-obvious and ornalm^ntal

"Knife,"

design of the AERO KNIFE product is the

which issued on May 6, 2014 ("Design

Tel&brarjds isowner ofallright, title and interest

subject of U.S. Design Patent No. D704,010 for

Patent"), a copy of which is attached as Exhibit

in and to the Design Patent.

9. Telebrands rolled out the AERO KN

B

IFE product in early 2013, and sales grew rapidly,

gh direct response channels to the general

within this Judicial District. Telebrands also

Telebrands sells the AERO KNIFE product

consuming public throughout the United States

sells theAERO KNIFE product to consumers th|rc|ugh majc-r retailers throughout theUnited States

and within this Judicial District.

;h:ou

and

his10. Telebrands has expended millions of do

product on television and on the Internet, most

Dress. As aresult ofthese substantial advertising land prorriotional efforts, Telebrands' sales ofthe

of

advertising and promoting the AERO KNIFE

which emphasizes the distinctive Product Trade

AERO KNIFE product have been significant. jSifice its roll-out, Telebrands has sold a substantial

number oftheAERO KNIFE product intheUni^ejl States, totaling millions insales, since rolling out

the product in early 2013.

11. As a result of its extensive advertising

distinctive Product Trade Dress, and further as a

Trade Dress has become well and favorably kndw)n

as indicating the sourceor origin of the AEROKK

12. The Product Trade Dress is non-functibrial

represents substantial goodwill of Telebrands i

District.

Defendant's Ac

and promotional activities which emphasize the

result of its substantial sales, the distinctive Product

to the purchasing public and widely recognized

IFE product.

, fanciful, distinctive and well-recognized and

thlrolughout the United States, including inthis Judicial

Of infringement

13. On information and belief, TV Direct jn^rkets and sells a knife product under the name

els£w,here. Tjhe "Infinity Knife" product imitates the

The "Infinity Knife" product incorporates the

Dress arid embodies the invention claimed in the

"Infinity Knife" in this Judicial District and

design of Telebrands' AERO KNIFE product

elements of Telebrands' distinctive Product Trade

Design Patent. Photographs of TV Direct's

Telebrands' AERO KNIFE product, are attached

14. The"InfinityKnife"productis competitive

information and belief, is sold to consumers thrbii

15. Upon information and belief, TV Direct

Patent, as well as its adoption and use of a copy Or

Infinity Knife" product, shown together with

as Exhibit C.

with Te

gh retail

adoption

ebrands' AERO KNIFE product and, on

outlets.

of the invention claimed in the Design

colorable imitation of the Product Trade Dress is

deliberate and intentional and with full knowledgee of Telebrands' rights.

the Design Patent and use of a copy or

vias and is without Telebrands' authorization and

16. TV Direct's adoption of the invention bl&imbd in

colorable imitation of the Product Trade Dress

consent.

17. Upon information and belief, TV Direct

of the Product Trade Dress was and is with th^ Intent and

deceiving the public, and unfairly capitalizing on

18. By adopting and using Telebrands'

valuable goodwill, TV Direct has caused and is

purchasers and potential purchasers as to the

to the existence of an association, connection, dr

19. TV Direct's acts as recited herein have bpe|n

with Telebrands.

20. TV Direct's actions have damaged anq aire

goodwill of Telebrands.

21. Telebrands is being irreparably injured

Telebrands has no adequate remedy at law.

COUNT 1 - PATENT INFRINGEMENT OF U.S. D704.010

22. Telebrands repeats and realleges the allegations set fforth inparagraphs 1-21 above, as though

fully set forth herein.

23. This cause of action arises under Section 35 of thfe Patent Laws of the United States, 35

adoption

likely

and use of a copy or colorable imitation

purpose of confusing, misleading and

Telebrarids' initiative and goodwill.

Pnj>dtict Trade^ Dress, and by trading on Telebrands'

lively to cahse confusion, mistake anddeception of

sourceor originof the "InfinityKnife"productand as

relationship between TV Direct and Telebrands.

undertaken in bad faith so as to compete unfairly

to damage the superior reputation and

and monetarily damaged by TV Direct's acts.

U.S.C. §§271 and 289.

24. The Design Patent is valid and enforceable

25. By the acts alleged above, TV Direct

into the United States, and on information and bUJef, still ate

h£S

and/or importing into theUnited States, product^

through contributory and/or induced i

Telebrands' authorization or consent

made,

, still

having a

infringe|m ent, the

used, offered to sell, sold and/or imported

making, using, offering to sell, selling,

design that infringesdirectlyor indirectly

claim of the Design Patent, without

26. On information and belief, TV Direct's infringement: has been intentional and willful, making

this an exceptional case.

27. TV Direct will, on information and

under §§ 271 and/or 289 of the Patent Act, unless

has been and is likely to continue to be irreparab

has no adequate remedy at law.

COUNT 2 -INFRINGEMENT! OF PRODUCT TRADE DRESS

belief, continue

and until

injured unless

to infringe upon Telebrands' rights

it is enjoined by this Court. Telebrands

TV Direct is enjoined. Telebrands

28. Telebrands repeats and realleges the illlegations set forth in paragraphs 1-27 above, as

though fully set forth herein.

29. This cause of action is forunfair competition andarises under Section 43(a) of theLanham

Act, 15 U.S.C. § 1125(a).

30. By the acts alleged above, TV Direct has

goods, false designations of origin and false descriptions

nature, characteristics and qualities of those go(j)dJ5, in violation

uped in interstate commerce in connection with its

and representations which misrepresent the

of 15 U.S.C. § 1125(a).

31. TV Direct's unauthorized distribution and

product, bearing a copy, counterfeit or colorable?

Dress for its AERO KNIFE product, is likely to 0a|use

and potential purchasers as to the origin, spo|nsjorship, c-r

Telebrands.

interstate commerce of its "Infinity Knife"

of Telebrands' distinctive Product Trade

sale) in i

ijnitation

confusion, mistake or deception of purchasers

approval of TV Direct's product by

32. TV Direct's unauthorized distribution aid commerce of its "Infinity Knife" product

likely to cause confusion, mistake, or

sale in

iuct andfalsely designates the origin of TV Direct's

deception about the origin of TV Direct's good

33. By using such trade dress, TV Direct has

Knife" product it is selling and offering for

Telebrands.

prod i 1,3

falsely anq misleadingly described that its "Infinity

emanate^ from or is sponsored or approved bysale

infringement has been intentional and willful

, continue

§43(a) of the Lanham Actunless anduntil it is enjoined by

likely to continue to be injured unless TV Direct's acts arej enjoined. Telebrands has no adequate

remedy at law

COUNT 3 - INJURY TO BUSINESS

34. On information and belief, TV Direct's

35. TV Direct will, on information and belief t:o infringe upon Telebrands' rights under

this Court. Telebrands has been and is

REPUTATION UNDER GBL § 360

36. Telebrands repeats and realleges the allegations set forth inparagraphs 1-35 above, as though

fully set forth herein.

37. This cause ofaction arises under Sectioji $60-1 ofthe General Business Law ofthe State of

New York.

38. TV Direct's acts are likely to injure the

who are dissatisfied with the quality of TV Ditebt's

dissatisfaction to Telebrands.

business reputationof Telebrands and consumers,

Infinity Knife" product, will attribute their

39. TV Direct will, on information and betlipf, continue to impair Telebrands' rights under

and until it is enjoined by this Court. Telebrands

uiilessTV Direct's acts are enjoined. Telebrandshas

Section 360-1 of the General Business Law unless

has been and is likely to continue to be injured

no adequate remedy at law.

COUNT 4 - NEW YORK COMMON LAW

40. Telebrands repeats and realleges theallegations set forth inparagraphs 1-39 above, as though

fully set forth herein.

41. This cause ofaction is forunfair competition andarises under thecommon law oftheState of

New York.

42. By the acts alleged above, TV Direct has

adversely affected Telebrands' business by the

specifically designed to capitalize on the initiatjivle

common law of the State of New York.

ijnpaired

use of

and goodwill

UNFAIR COMPETITION

Telebrands' goodwill and has otherwise

unfair and improper business practices

of Telebrands in violation of the

43. TV Direct will, on information and belief, continue

until it is enjoined by this Court. Telebrands has Dieen and

TV Direct's acts are enjoined. Telebrands has i|io adequate

to impair Telebrands' rights unless and

::s likely to continue to be injured unless

remedy at law.

WHEREFORE, Plaintiff demands judMentj

a. Adjudging and decreeing that tM Direct

infringed and/or induced infringement of Telebrands' Desji

dress rights and unfairly competed with Telebrands

b. Preliminarily and permanently

employees and attorneys and all those in active

1. From infringing U.S. Patbrit No. D704

2. from importing, distributing, advertjsin

sale a product substantially slnjiilar to the

3. from importing, distributjinjg, advertjsin

sale a product that incorporate^

Telebrands' AERO KNIFE

4. from otherwise unfairly

5. from falsely representing

offers for sale is genuine, or

from otherwise falsely advertising, repifesentin:

with Telebrands, unless TV Dilrect's prdd

en

has unlawfully infringed, contriburoily

gn Patent, infringed Telebrands' trade

oinmg TV Direct, its officers, agents, servants,

concert or participation with any of them:

,010;

ing, promoting, selling, or offering for

Design Patent;

g, promoting, selling or offering for

or colorably imitates the trade dress of, copies,

p|rd»duct;

competing with Telebrands in any manner; and

suggesting that the product TV Direct sells or

authorized by or emanates from Telebrands, or

cr

is

g or suggesting any connection

uct is genuine AERO KNIFE product

and emanates from or is auth|oi)ized byTelebrands

any

gement

Direct's

c. Requiring TV Direct to pay Telebrands

out of and/or as a result of TV Direct's patent intfrtn

Direct's profits and/or reasonable royalties for TV

damages Telebrands has suffered arising

, including Telebrands' lost profits, TV

patent infringement, and any other relief

provided for in 35 U.S.C. §§ 284 and 289;

d. Requiring TV Direct to pay its

Telebrands as a result of TV Direct's acts, and

profiits to

ebrands'Te]

Telebiiands

Telebrands, any damages sustained by

costs for the action, and attorneys' fees,

three times the amount of Telebrands'

pursuant to 15 U.S.C. § 1117(a);

e. Requiring TV Direct to pay to

actual damages because of the exceptional natufe

U.S.C. § 1117(a);

f. Imposing costs and reasonable

exceptional nature of this case, pursuant to 35

other damages recoverable under any other statute

g. Requiring that all products,

receptacles, and advertisements of TV Direct

reproduction, counterfeit, copy, or colorable

other means of making the same, be delivered

U.S.C.§ 1118; and

of this case, pursuant to 35 U.S.C. § 285 and/or 15

attorneys' [fees against TV Direct because of the

C. § 28} and/or 15 U.S.C. § 1117(a) and/or any

alleged in this Complaint;

pjojluct labels, signs, prints, packages, wrappers,

tteking Telbbrands' Product Trade Dress, and any

iirhtkioiJL theijeof, and all plates, molds, matrices and

dp to Telebrands for destruction, pursuant to 15

U.S

Granting such other and further :-e. ief as this Court deems just and proper.

1(1

JURY DEMAND

Plaintiff Telebrands Corp. requests a tri al by jury in this matter.

Dated: July31, 2014

By:

Res pe ctfully submitted,

COOPERi & DUNHAM LLP

ptfiUdb T'7/laJj/yna^/fl.Peter

Torjia30

Ne\V

Tel

Fax

D. MurrajyT

A

EolckefellerYork,

C>12)278-(212)391

(PM-6912)Robeitt T. Maldonado (RM-7873)

(TS-7208)

Plaza

York 10112

0400

-0525

pmiiniay@cooperdunham.com

Sayour

New

rmald 3nado@cooperdunham.comtsayour@cooperdunham.com

Attbnkeys for PlaintiffTELEBRANDS CORP.

lui mil hi minnininmmhiihiiiiii• nUS00D704010S

(12) United States Design Pate^Shahani

) Psitent No.:

) Date of Patent:

US D704,010 SMay 6, 2014

(54) KNIFE

(71) Applicant: Rajoo M. Shahani, Fairlawn, NJ (US)

(72) Inventor: Kajon M. Shahani, Fairlawn, NJ (US)

(73) Assignee: Telebrands Corp., Fairfield, NJ (US)

(**) Term: 14 Years

(21) Appl.No.: 29/451,183

(22) Filed: Mar. 28,2013

(51) LOC(10)C1 07-03(52) U.S. CI.

USPC D7/649

(58) Field of Classification SearchUSPC D7/368, 393-395, 401.2, 642-646,

D7/649-654, 660-664, 669, 675-676, 683,D7/688-692, 695-696; D8/5, 25, 83,

D8/98-99, 107, 303; D24/146-147;30/115, 137, 141-143, 147-150,

30/322-327, 329, 335, 340, 342-348,30/355; 416/70 R

Sec application file for complete search history.

(56) References Cited

U.S. PATENT DOCUMENTS

D177,743 S * 5/1956 Marx D7/6500304,154 S * 10/1989 Osterhout D8/99

(4 **

12/1998 Kwok D7/401.2

4/2001 Juhlinetal.

5/2001 Balolia D8/99

10/2002 Richwineetal D8/5

7/2006 Fortetal D7/652

7/2007 Curtin D7/65011/2007 Hood D7/6507/2008 Curtin D7/649

12/2008 Epstein D7/401.212/2008 Epstein D7/401.29/2009 Miltneretal D7/649

8/2011 Hirai

8/2011 Hirai D7/649

citcH by examiner

Primary Examiner — Ricky Pham(74) Attorn°y, Agent, or Firm — Jeffrey L. Snow; Cooper &Dunham, LtP

(57)The ihiamdntal

FIG.

FIG.

FIG.

FIG.

FIG.

FIG.

FIG.

CLAIM

design for a knife, as shown and described.

DESCRIPTION

is a bottom perspective view thereof;is a front view thereof;

$ isa rearview thereof;is a right side view thereof;is a 1aft side view thereof;is a top side view thereof; and,

t is a bottom side view thereof.

1 Claim, 6 Drawing Sheets

U.S. Patent May 6,2014 US D704,010 S

U.S. Patent May 6, 2014 Slieet J of S US D704,010 S

FIG 2

=20

FIG. 3

U.S. Patent May 6,2014 Slieet:I of <> US D704,010 S

0

to

U.S. Patent May 6,2014 Slieet 4of(i US D704,010 S

U.S. Patent May 6,2014 Sheet :ii of 6 US D704,010 S

fr^-~^\

FIG 6

U.S. Patent May 6,2014 Sheet MOfl) US D704,010 S

\\

ll' m.7