EASTWEST
Intellectual Property & Business
660 South Figueroa Street, Suite 1200, Los Angeles, CA 90017
butp://www.ewpat.com; Telephone 213.387.3630; Facsimile 213.863.6332
June 1, 2017
VIA US Mail
Brian R. Coleman
Perkins Coie LLP
3150 Porter Drive
Palo Alto, CA 94304
Rl
Infringement of Spigen’s “Essential” Trademarks,
Our Matter No.: 7108BIZ256
Dear Mr. Coleman:
This firm represents Spigen, Inc. (“Spigen”). As you and your client, Essential
Products, Inc., are undoubtedly aware, Spigen is a leading manufacturer of cellular phone
accessories and is actively expanding its business to include other electronics, related
accessories, and home automation, among other things. Spigen has the exclusive right to
use its federally registered trademarks, including but not limited to ESSENTIAL and
SPIGEN ESSENTIAL (Reg. Nos. 5,014,095 and 5,147,290, respectively). Spigen further
has pending applications for ESSENTIAL and SPIGEN ESSENTIAL for other identified
goods or services (Ser. Nos. 86861193 and 86861819, respectively). Please see the
attachments.
It has recently come to Spigen’s attention that your client is infringing Spigen’s
intellectual property rights by selling, offering for sale, distributing, or advertising goods
under marks which are likely to cause confusion, cause mistake, or deceive consumers.
Specifically, we have discovered that, on behalf of your client, who was well aware of
Spigen’s ESSENTIAL marks, you filed numerous applications for marks that include the
term "Essential" and which have goods that are similar or related to the identified goods
for Spigen’s registered trademarks and applications. By way of example only, your
client's marks include applications for "ESSENTIAL" (Ser, No. 87278834) and
"ESSENTIAL PRODUCTS", both of which have received Section 2(d) refusals from the
United States Patent and Trademark Office for a likelihood of confusion with Spigen's
ESSENTIAL marks. A slew of applications were filed just last week despite the Section
2(d) refusals for "ESSENTIAL" and "ESSENTIAL PRODUCTS" based on a likelihood
of confusion with Spigen's ESSENTIAL marks, Your client then launched products and
began pre-orders for its Essential Phone on May 30, 2017 with full knowledge that its
"ESSENTIAL" marks infringe Spigen's ESSENTIAL marks.Federal Trademark laws provide numerous remedies for trademark infringement,
including compensation equal to your client's profits, injunctive relief, and where
intentional infringement is found, treble monetary damages.
‘Therefore, Spigen demands that your client immediately cease and desist from
any and all uses of marks including the term "Essential" and send us confirmation that
you have done so within 10 business days of the receipt of this letter
While Spigen is looking forward to an amicable resolution, please be advised that
if we have not received your affirmative response by June 15, 2017, we are prepared to
take any and all actions required to proteet Spigen’s marks.
This letter is sent without prejudice to any of Spigen’s rights and remedies which
are expressly reserved. Should you have any questions, please feel free to contact our
office. ‘Thank you in advance for your prompt attention to this matter.
Sincerely,
Js!_heedong chae
Heedong Chae, Esq.
East West Law Group, P.C,
hdchae@ewpat.com
Ene,