Case 2:11-cv-01098-BCW Document 2

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Todd E. Zenger (UB# 5238) KIRTON & McCONKIE 1800 Eagle Gate Tower 60 East South Temple P.O. Box 45120 Salt Lake City, Utah 84145-0120 Telephone: (801) 328-3600 Email: tzenger@kmclaw.com Attorney for Plaintiff IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH

GLOVEABLES, INC., a California corporation, Plaintiff, vs. GRANDWAY HONDURAS, LLC, a Utah entity,

Civil Action No.: 2:11-cv-1098 BCW Magistrate Judge Brooke C. Wells

COMPLAINT Defendant. and JURY DEMAND

Plaintiff Gloveables, Inc. alleges and avers as follows: Introduction Plaintiff is the owner of glove and apron products. Plaintiff owns design patents, trademarks, product designs and trade dress related to glove, apron and other associated products. Defendant continues to make and market Plaintiffs glove and apron designs without authorization thereby infringing on Plaintiffs design patent, trademarks and trade dress. Defendant is also in breach of contract. Plaintiff seeks monetary damages and injunctive relief.

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Parties, Jurisdiction and Venue 1. Gloveables, Inc., is a California corporation, having its principal place of business

in Los Angeles, CA (Gloveables, Inc. or plaintiff), and is a designer and owner of various shapes and designs of glove, apron and associated products. 2. Defendant Grandway Honduras, LLC (Grandway or defendant), is a Utah entity

and has its principal place of business at 12218 Lone Peak Parkway Draper UT 84020, and markets, manufactures, sells and distributes various lines of household consumer products, and actively participated and/or participates in or induced or induces the distribution or sale of the various shapes and designs of glove, apron and other products in this district and throughout the United States and foreign countries. 3. This Court has subject matter jurisdiction of Gloveables claims for relief under 28

U.S.C. 1331 (federal question), 1332 (diversity), 1338 (Lanham Act) and 1367 (supplemental), and original jurisdiction over disputes as to trademarks. 15 U.S.C. 1114, 1121 and 1125. Venue is properly placed in this Court under the provisions of 28 U.S.C. 1391. Factual Background Product Development and Product Rights of Plaintiff 4. Gloveables has organized business operations to include the creation, invention,

design, development, manufacture, marketing, promotion, sales and distribution of glove, apron and associated products designs for many years. 5. Gloveables sought and obtained trademark registration for distinctive ornate designs

in connection with garden gloves and gloves for household and general purpose use including U.S. Trademark Reg. No. 3,913,054 and gloves with a bow U.S. Trademark Reg. Nos. 4,024,193 and 3,895,723. 6. By assignment, Gloveables is the licensee of the Design Patents and Trademark

Reg. No. 3,821,656.

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7.

Since as early as September 2002, Gloveables has marketed and sold distinctive

gloves covered by the Design Patents and bearing the marks protected by U.S. Trademark Reg. Nos. 3,821,656, and 3,913,054. 8. Gloveables also has other United States trademark registrations for other word and

design trademarks including United States Trademark Registration Nos. 3,224,702 for LINDYLOUS, 3,575,373 for GLOVEABLES; 2,702,157 for GLOVEABLES THEYRE LOVEABLE and design. 9. Gloveables also has pending trademark applications for word and design trademarks

including United States Trademark Application Serial Nos. 85/001071 for GLOVEABLES, 85/369427 FOR GLOVEABLES THE GLOVE WITH A BOW and design, 85/277761 for GLOVEABLES, and 85/383596 for a glove design with a bow. 10. The product design, presentation and packaging of the distinctive gloves covered by

the Design Patents and bearing the marks protected by U.S. Trademark Reg. Nos. 3,821,656, 4,024,193, 3,895,723 and 3,913,054 are valuable trade dress of Gloveables. 11. Since as early as 2002, Gloveables has established common law trademark and trade

dress rights through use in commerce including customer recognition. 12. The Design Patents, trademarks, associated product designs and trade dress of

Gloveables create a family of marks, product designs and trade dress (Gloveables Product Rights) under which Gloveables has marketed, promoted, sold and distributed products. Uses and Unauthorized, Infringing Uses by Defendant 13. Before September 2005, Defendant began negotiating certain manufacturing and

distribution rights for products embodying Gloveables Product Rights. 14. During negotiations, Defendant made promises of production, distribution and

royalties to induce Gloveables to enter into a license agreement. 15. Gloveables, Inc., and Grandway entered into a license agreement dated September 28,

2005 to make and sell products embodying Gloveables Product Rights.

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16.

The parties entered into an addendum to the license agreement. The license

agreement and the addendum shall be collectively referred to as the License Agreement. 17. agreement. 18. Grandway repeatedly breached the License Agreement by failing to meets its For certain periods of time, Grandway met its obligations under the License

obligations under the license agreement including, for example, failure to pay the required royalties, failing to properly use Plaintiffs trademarks on licensed products, violation of non-competition provision, failure to add new products presented by Gloveables, failure to timely review new products presented by Gloveables, and interfering with the completion of an audit. 19. 20. 21. Grandway has failed to cure its breaches. Plaintiff terminated the License Agreement. Grandway has passed off and continues to pass off products and product designs of

Gloveables as products and product designs of Grandway by using the GLOVEABLES trademark to trade on Gloveables goodwill and pass off certain other products as GLOVEABLES products, in particular, oven mitts and hot pad sets displayed on Licensee's website at

www.grandwayhonduras.com and using the GLOVEABLES trademark to materially mislead consumers as to the nature of the relationship between the parties, in particular, using the phrase "GLOVEABLES, a division of Grandway Honduras" on packaging, using "Home of GLOVEABLES" on Licensee's Website while also displaying certain items that are not related to Gloveables, using both the GRANDWAY and GLOVEABLES trademarks on labels sewn onto aprons that say GRANDWAY on the front and GLOVEABLES on the reverse, and printing the term "Grandway" or causing it to be printed into the printed pattern of fabric used to make GLOVEABLES gloves. 22. Without authorization from Plaintiff, Defendant continued and continues to

manufacture, promote, offer for sale, sell and distribute products embodying Gloveables Product Rights.

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23.

Without authorization from Plaintiff, Defendant has sold and sells, and has distributed

and does distribute products having the same or confusingly similar features, designs and shapes of Gloveables Product Rights in commerce in Utah and in interstate commerce in the United States. I. FIRST CLAIM FOR RELIEF (INFRINGEMENT OF A U.S. DESIGN PATENTS, 35 U.S.C. 100 et seq.) 24. Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1

through 23 above. 25. Defendants continued manufacture, importation, and Internet offers for sale of

products embodying the gloves protected by U.S. Patent No. D462,825 and/or D475,505 constitutes patent infringement. 26. 27. 28. 29. Such infringement is in violation of 35 U.S.C. 271 and 289. Defendants infringement has caused Gloveables damages. Defendants infringement has been and continues to be knowing and willful. Without appropriate immediate and permanent injunctive relief and/or seizure,

Gloveables will continue to be irreparably harmed and damaged by Defendants continued knowing and willful infringement. II. SECOND CLAIM FOR RELIEF (INFRINGEMENT OF A REGISTERED MARK, 15 U.S.C. 1114) 30. Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1

through 29 above. 31. Defendants manufacture, promotion, distribution and sale in commerce of products

embodying Gloveables Product Rights are mimicking or imitating one or more registered trademarks of Plaintiff, including U.S Trademark Reg. Nos. Nos. 3,821,656, 4,024,193, 3,895,723, 3,575,373 and 3,913,054. 32. Such uses by Defendant constitutes a violation of the Lanham Act, 15 U.S.C. 1114. -5-

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33. 34. willful. 35.

Defendants violations of the Lanham Act have caused Gloveables damages. Defendants violations of the Lanham Act have been and continue to be knowing and

Without appropriate immediate and permanent injunctive relief and/or seizure,

Gloveables will continue to be irreparably harmed and damaged by Defendants continued knowing and willful violations. III. THIRD CLAIM FOR RELIEF (UNFAIR COMPETITION, 15 U.S.C. 1125) 36. Plaintiff hereby incorporates by reference the allegations contained in paragraphs 1

through 35 above. 37. Defendants manufacture, promotion, distribution and sale in commerce of products

embodying Gloveables Product Rights are mimicking or imitating one or more trademarks or trade dress of Plaintiff. 38. Defendants manufacture, promotion, distribution and sale in commerce of products

embodying Gloveables Product Rights are mimicking, imitating or passing off one or more of Plaintiffs products and/or product designs as if they were products and product designs of Defendant. 39. Such uses by Defendant constitutes unfair competition and are likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants products with products lawfully embodying Gloveables Product Rights as to origin, sponsorship, or approval of Defendants products in violation of the Lanham Act, 15 U.S.C. 1125. 40. 41. willful. Defendants violations of the Lanham Act have caused Plaintiffs damages. Defendants violations of the Lanham Act have been and continue to be knowing and

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42.

Without appropriate immediate and permanent injunctive relief and/or seizure,

Plaintiff will continue to be irreparably harmed and damaged by Defendants continued knowing and willful violations.

IV. FOURTH CLAIM FOR RELIEF (VIOLATION OF UTAH TRADE LAWS, Utah Code 70-3a-101 et seq.) 43. 42 above. 44. Defendants distribution and sale in commerce of its imitation products are likely to Plaintiff incorporates by reference the allegations contained in paragraphs 1 through

cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendant with Plaintiff as to the origin, sponsorship, or approval of Defendants products in violation of the Utah Code Annotated, 70-3a-101 et seq. 45. For the same reasons previously stated, Defendants products imitating Gloveables

Product Rights constitutes unfair and/or deceptive trade practices under Utah Code Annotated 135-1 et seq. and/or Utah Code Annotated 13-11a-1 et seq. 46. to Plaintiff. 47. Defendants violations of Utah Code Annotated, 70-3a-101 et seq. have been and Defendants violations of Utah Code Annotated 70-3a-101 et seq. has caused damage

continue to be knowing and willful. 48. Without appropriate immediate and permanent injunctive relief and/or seizure,

Plaintiff will continue to be irreparably harmed and damaged by Defendants continued knowing and willful violations.

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V. FIFTH CLAIM FOR RELIEF (VIOLATION OF COMMON LAW TRADEMARK RIGHTS) 49. 47 above. 50. Defendants distribution and sale in commerce of products imitating Gloveables Plaintiff incorporates by reference the allegations contained in paragraphs 1 through

Product Rights and/or bearing similar brand names are likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendant with Gloveables as to the origin, sponsorship, or approval of Defendants products in violation of common law related to trademarks. 51. to Plaintiff. 52. willful. 53. Without appropriate immediate and permanent injunctive relief and/or seizure, Defendants violations of common law have been and continue to be knowing and Defendants violation of Plaintiffs common law trademark rights has caused damage

Plaintiff will continue to be irreparably harmed and damaged by Defendants continued knowing and willful violations. VI. SIXTH CLAIM FOR RELIEF (VIOLATION OF COMMON LAW TRADE DRESS RIGHTS) 54. 51 above. 55. Defendants distribution and sale in commerce of products imitating Gloveables Plaintiff incorporates by reference the allegations contained in paragraphs 1 through

Product Rights are likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendant with Gloveables as to the origin, sponsorship, or approval of Defendants products in violation of common law related to trade dress.

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56. Plaintiff. 57. willful. 58.

Defendants violations of Plaintiffs trade dress rights have caused damage to

Defendants violations of common law have been and continue to be knowing and

Without appropriate immediate and permanent injunctive relief and/or seizure,

Plaintiff will continue to be irreparably harmed and damaged by Defendants continued knowing and willful violations. VII. SEVENTH CLAIM FOR RELIEF (BREACH OF LICENSE AGREEMENT) 59. 55 above. 60. 61. 62. 63. 64. Defendant has failed to meet its obligations under the License Agreement. Defendants conduct constitutes breach of the License Agreement. Defendants breach of the License Agreement has caused damage to Plaintiff. Defendants breach has been and continues to be knowing and willful. Without appropriate immediate and permanent injunctive relief and/or seizure, Plaintiff incorporates by reference the allegations contained in paragraphs 1 through

Plaintiff will continue to be irreparably harmed and damaged by Defendants continued knowing and willful breach.

PRAYER FOR RELIEF WHEREFORE, Plaintiff requests the Court to find, conclude and order: a. Plaintiff is the senior user and owner of protectable product rights including

Gloveables Product Rights used in commerce; b. Defendant has infringed one or both of U.S. Patent Nos. D462,825 and/or D475,505; -9-

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c.

Defendant has infringed and continues to infringe one or more of U.S. Trademark

Registration Nos. 3,821,656, 3,913,054, 3,575,373, and/or 4,024,193; d. Defendant has infringed and continues to infringe one or more of Plaintiffs common

law trademarks. e. dress rights. f. Defendants infringement of Plaintiffs design patents, registered trademarks, Defendant has infringed and continues to infringe one or more of Plaintiffs trade

common law trademarks and trade dress rights has been and will continue to be willful; g. h. i. Defendants conduct has constituted unfair and deceptive trade practices; Defendants conduct constitutes breach of the License Agreement; Plaintiff has been and continues to be damaged in an amount of at least $75,000, a

greater amount to be determined at trial; j. infringement; k. Plaintiff is entitled to injunctive relief to ensure the discontinued use by Defendant of Plaintiff has been and continues to be irreparably harmed by Defendants

Gloveables Product Rights without authorization from Plaintiff. l. m. n. o. Plaintiff be awarded increased damages for willful infringement; Plaintiff be awarded punitive damages as permitted by law; Plaintiff be awarded attorneys fees. Plaintiff be awarded all other relief, costs or fees as the Court deems proper.

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DEMAND FOR JURY TRIAL Plaintiff hereby demands trial by jury. DATED: December 1 , 2011. KIRTON & McCONKIE By s/Todd E. Zenger Todd E. Zenger KIRTON & MCCONKIE Attorney for Plaintiff GLOVEABLES, INC.

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