Minarik v. S7G-USA - Complaint

Case 2:17-cv-07368 Document 1 Filed 10/09/17 Page 1 of 37 Page ID #:1
1
Roland J. Tong CSB #216836
2 Law Offices of Roland Tong, PC
7700 Irvine Center Drive Suite 800
3
Irvine, CA 92618
4 Phone: (949) 298-4081
5
roland@rtlawoffices.com
6
Attorney for Plaintiff
7 Marc E. Minarik d/b/a MINARIK GUITARS
8
9
UNITED STATES DISTRICT COURT
10
FOR THE CENTRAL DISTRICT OF CALIFORNIA
11
Case No.:
12
) COMPLAINT REQUESTING:
13
) MONETARY RELIEF FOR
) VIOLATION OF:
) (1) TRADEMARK
14 Marc E. Minarik d/b/a MINARIK ) INFRINGEMENT OF A
15 GUITARS, a California individual ) REGISTERED MARK
) UNDER THE LANHAM ACT;
16
) (2) MISREPRESENTATION,
Plaintiff, ) FALSE DESIGNATION OF
17
) ORIGIN, FALSE
) ADVERTISING, AND
18
) UNFAIR COMPETITION
) UNDER THE LANHAM ACT
19
) (3) PATENT INFRINGEMENT
vs. ) UNDER 35 U.S.C. 101
20
) (4) COMMON LAW FALSE
) ADVERTISING AND
21
) UNFAIR COMPETITION
) (5) INJURY TO BUSINESS
22
) REPUTATION AND
S7G-USA, LLC d/b/a STRICTLY 7 ) DILUTION UNDER CAL.
) BUS. & PROF. CODE 14330
23 GUITARS, an Ohio Limited Liability ) (6) UNFAIR COMPETITION
24
Company, and JAMES LEWIS, an ) UNFAIR COMPETITION
Ohio individual ) UNDER CAL. BUS. & PROF.
25
) CODE 17200 AND THE
Defendants ) COMMON LAW
26
) (7) UNJUST ENRICHMENT
) (8) TORTIOUS INTERFERENCE
27
) WITH PROSPECTIVE
ECONOMIC ADVANTAGE
28
(DEMAND FOR JURY TRIAL)
1
2
Plaintiff, MARC E. MINARIK, d/b/a MINARIK GUITARS (hereinafter
3
Plaintiff or Minarik), by its attorneys, as and for its Complaint against
4
5 Defendants S7G USA, LLC d/b/a STRICTLY 7 GUITARS and JAMES LEWIS
6
(hereinafter referred to as Defendants) alleges as follows:
7
9
I. INTRODUCTION
10
11
1. Plaintiff is the exclusive owner and licensor of the trademark and
12 other intellectual property rights associated with the MEDUSA Mark for
13
musical instruments, namely acoustic guitars, base guitars, electric guitars and
14
15 guitar pick-ups.
16
2. Plaintiff owns exclusive rights in the designs claimed in United States
17
18 Design Patent No. D481,412, titled Front of a Guitar Body (the Minarik
19
Patent).
20
3. Given the resultant marketplace confusion and harm resulting from
21
22 Defendants marketing and distribution of guitars under the MEDUSA Mark as

23
alleged more fully below, Plaintiff seeks injunctive and monetary relief, including,
24
25 but not limited to disgorgement of profits, from Defendants for trademark

26
infringement, patent infringement, false designation of origin, unfair competition
27
28
and unjust enrichment.
2
2
II. THE PARTIES
3
4 4. At all times material hereto, Marc E. Minarik d/b/a is and has been a
5
sole proprietorship with its principal place of business at 413 Ross Street,
6
7 Glendale, CA 91207.
8
5. Upon information and belief, Defendant Strictly 7 is and has been
9
10
limited liability
11 company existing under and by virtue of the laws of the State of Ohio with its
12
principal place of business located at 650 West Smith Road, C-16, Medina, OH
13
14 44256. Upon information and belief Defendant James Lewis is an Ohio individual
15
residing at 897 Cornell Court, Medina, OH 44256.
16
17
18
19
III. JURISDICTION AND VENUE
20
21 6. This Court has subject matter jurisdiction over Plaintiffs trademark

22
infringement claims pursuant to the Lanham Act, Title 15 of the United States
23
24 Code 1114-1118 and 1125.

25
7. This action further arises under the patent laws of the United States, Title
26
27
35, United States Code. This Court has subject matter jurisdiction over this action
28 pursuant to 28 U.S.C. 1331 and 1338.

3
1
8. This Court has supplemental jurisdiction over Plaintiffs pendent state
2
law claims arising out of Californias Business and Professions Code 17200
3
4 et seq. and California Common law, pursuant to 28 U.S.C. 1367, in that the
5
state claims are integrally interrelated with Plaintiffs federal claims and arise
6
7 from a common nucleus of operative facts such that the administration of

8
Plaintiffs state law claims with its federal claims furthers the interest of
9
10
judicial economy.
11 9. This Court has personal jurisdiction over Defendants by virtue of

12
Defendants
13
14 transacting and doing business in this District and also by virtue of Defendants
15
committing a tort in or directed at this District.
16
17 10. Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)

18
because a substantial part of the events or omissions giving rise to the claims
19
occurred in this District, and/or a substantial part of property that is the subject
20
21 of the action is situated in this District.

22
23
24 IV. FACTS COMMON TO ALL CAUSES OF ACTION

25
A. Minarik and its Intellectual Property
26
27
11. Plaintiff, is an inventor, designer, and distributor of musical instruments,
28 namely acoustic guitars, base guitars, electric guitars and guitar pick-ups. Since at
4
1
least as early as 2006, Plaintiff has distributed marketed signature guitars under the
2
MEDUSA Trademark.
3
4 12. Plaintiff has engaged in extensive marketing and promotion of his

5
signature guitars under the MEDUSA Trademark and had enjoyed significant
6
7 sales of the MEDUSA guitars.

8
13. Plaintiff has been promoting its signature guitars under the MEDUSA
9
10
Trademark since at least as early as 2006, and has acquired broad common-law
11 rights in this trademark.

12
14. Plaintiff filed for U.S. federal trademark registration on December 29,
13
14 2006 for the MEDUSA Mark as used in connection with musical instruments,
15
namely acoustic guitars, base guitars, electric guitars and guitar pick-ups. The
16
17 application for the MEDUSA Mark was assigned Serial No. 77/073664.
18
15. On January 8, 2008, Plaintiff was granted Registration No. 3,364,446
19
for its MEDUSA Mark for musical instruments, namely acoustic guitars, base
20
21 guitars, electric guitars and guitar pick-ups by the United States Patent and
22
Trademark Office (USPTO) (See true and accurate copy of Plaintiffs
23
24 Trademark Registration Certificate attached hereto as Exhibit A).

25
16. The trademark registration set forth above is valid, unrevoked and
26
27
uncancelled. The registration of this mark constitutes prima facie evidence of its
28
5
1
validity and conclusive evidence of the Plaintiffs exclusive right to use the
2
MEDUSA Trademark in commerce.
3
4 17. Plaintiffs MEDUSA Trademark has reached incontestable status

5
pursuant to 15 U.S.C. 1065.
6
7 18. Plaintiff is the sole and exclusive owner of the MEDUSA Trademark
8
as used in connection with musical instruments, namely acoustic guitars, base
9
10
guitars, electric guitars and guitar pick-ups and of all of the goodwill associated
11 therewith.
12
19. The registration of the MEDUSA Trademark was duly and lawfully
13
14 issued, and since its date of grant has been valid and subsisting, in full force and
15
effect, uncancelled and unrevoked.
16
17 20. Plaintiff has additionally spent many years designing and developing
18
novel guitar designs, including the Tone Tail, which Plaintiff has sought to protect.
19
Relevant to this dispute, Minarik owns all right, title and interest and has the right
20
21 to sue to recover for past, present and future infringement of United States Design
22
Patent No. D481,412 titled Front of a Guitar Body. (See a true and accurate copy
23
24 of Plaintiffs Design Patent Registration attached hereto as Exhibit B).

25
21.Minariks Patent is presumed valid.
26
27
28
6
1
B. The Defendants Unlawful Activities
2
22. Defendants manufacture and distribute assorted guitar models under
3
4 the STRICTLY 7 GUITARS name. Defendants have introduced several brands of

5
stylized guitars.
6
7 23. Upon information and belief, Defendants began marketing and selling
8
a Medusa line of guitars at least as early as 2016 (hereinafter S7G Medusa).
9
10
(A true and accurate copy of Defendants website showing the product with the
11 infringing mark is attached hereto as Exhibit C).

12
24. Upon information and belief, Plaintiff alleges that at all relevant
13
14 times, Defendants were aware of Plaintiffs proprietary interest in the trademark

15
associated with Plaintiffs successful MEDUSA line of guitars and willfully and
16
17 intentionally infringed upon Plaintiffs valuable intellectual property.

18
25. Upon information and belief, Plaintiff and Defendants both purchased
19
and merchandised exhibit space at the annual National Association of Music
20
21 Merchant Show (NAMM Show) in 2015, 2016 and 2017.

22
26. Upon information and belief, the NAMM Show is the pre-eminent
23
24 trade-only event in the American music products industry.

25
27. On or about April 20, 2017, after learning of Defendants marketing
26
27
of a line of guitars bearing Plaintiffs MEDUSA Mark, Plaintiff demanded that
28
7
1
Defendants immediately cease and desist from its the marketing and distribution of
2
the S7G Medusa guitar line as it infringed upon Plaintiffs MEDUSA mark.
3
4 28. Defendants have, at this time, removed its S7G Medusa line of guitars
5
from its US website, but has refused to disgorge the profits made by the
6
7 Defendants as a result of the brand recognition and goodwill inherent in Plaintiffs

8
MEDUSA Mark.
9
10
29. Defendants continue to manufacture and market guitars under the
11 MEDUSA for sales overseas and has provided Plaintiff no assurance that it has
12
permanently ceased and desisted from its use of the MEDUSA Mark.
13
14 30. Defendants infringement has likely caused consumer confusion and

15
lost sales for Plaintiff.
16
17 31. The conduct of Defendants was deliberate and intentional and

18
specifically intended to enrich Defendants, while causing harm and damage to the
19
Plaintiff.
20
21 32. On information and belief, without Minariks authorization,

22
Defendants made, used, offered for sale, and/or sold, guitars utilizing Plaintiffs
23
24 Tone Tail design in violation of Minariks United States Design Patent No.
25
D481,412 (hereafter, the Infringing Guitar).
26
27
28
8
1
33. The Infringing Guitar includes products identified by the model
2
names: Rattler, Raven and Medusa, as well as S7G guitars bearing the same or
3
4 substantially similar infringing designs, regardless of model name.

5
34. Upon information and belief, the overall appearance of the designs of
6
7 Minariks United States Design Patent No. D481,412 (hereinafter, 412 Patent) and
8
the corresponding designs of Defendants Infringing Guitars are substantially the
9
10
same.
11 35. On information and belief, an ordinary observer will perceive the

12
overall appearance of the designs of the guitar in the 412 Patent and the
13
14 corresponding designs of Defendants Infringing Guitar to be substantially the

15
same.
16
17 36. The following table illustrates Defendants infringement by

18
comparing figures from the 412 Patent with exemplary imaging of the Infringing
19
Guitar.
20
21
22
23
24
25
26
27
28
9
1
Comparison of Plaintiffs D481,412 Patent with Exemplary Infringing Guitars
2
10
11
12
13
14
15
16
17
18
19
20
21
22
23 FIRST CLAIM FOR RELIEF

Infringement of a Registered Trademark Under
24
Section 32(a) of the Lanham Act,
25 15 U.S.C. 1114(1)(a)
26
37. Plaintiff hereby incorporates by reference each and every allegation
27
28 contained in the paragraphs above as if fully stated herein.

10
1
38. Defendant has used in commerce, without Plaintiffs consent, the
2
MEDUSA Mark that it is likely to cause confusion with respect to the source and
3
4 origin of Defendants products and business and is likely to cause confusion or

5
mistake and to deceive consumers as to the affiliation, connection, or association
6
7 of Plaintiff with Defendants and/or the marketing or sale of its products.

8
39. Defendants acts constitute willful infringement of Plaintiffs
9
10
MEDUSA Mark, in violation of the Lanham Act and the common law.
11 40. Defendants acts as aforesaid were committed with knowledge their

12
use of the MEDUSA Mark was intended to cause confusion, mistake or to
13
14 deceive.
15
41. As a direct and proximate result of Defendants wrongful acts,
16
17 Plaintiff has suffered and continues to suffer and/or is likely to suffer damage to its
18
business reputation and goodwill. Defendants will continue, unless restrained, to
19
use marks confusingly similar to Plaintiffs MEDUSA signature guitars and have
20
21 and will cause irreparable damage to Plaintiff. Plaintiff has no adequate remedy at
22
law.
23
24 42. Plaintiff is entitled to injunctive relief under 15 USC 1116 against

25
Defendants, their officers, agents, and employees, and all persons acting in concert
26
27
with Defendants, from engaging in further acts of trademark infringement. Such
28
11
1
harm will continue and increase until Defendants are preliminarily and
2
permanently enjoined from their unlawful conduct.
3
4 43. Plaintiff is further entitled to the recovery of damages from

5
Defendants jointly and severally pursuant to 15 USC 1117, as Defendants
6
7 infringing actions are willful. Damages recoverable include (1) defendants profits,
8
(2) up to three times the actual damages sustained by the plaintiff and (3) the costs
9
10
of the action. Plaintiff is presently unable to ascertain the full extent of its actual
11 monetary damages, but they are in excess of $75,000, that it has suffered and/or is
12
likely to suffer by reason of Defendants acts of trademark infringement. Plaintiff
13
14 is also presently unable to ascertain the full extent of the gains, profits, and
15
advantages that Defendants have realized by reason of its acts of trademark
16
17 infringement, but they are in excess of $75,000.

18
19
20
SECOND CLAIM FOR RELIEF
21 Misrepresentation, False Designation of Origin, False Advertising, and Unfair
22 Competition Under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)
Against All Defendants
23
24 43. Plaintiff hereby incorporates by reference each and every allegation

25
contained in the
26
27 paragraphs above as if fully stated herein.

28
12
1
44.Defendants actions as alleged herein constitute a false designation of
2
origin in
3
4 violation of 15 U.S.C. 1125(a) in that they have, on or in connection with

5
Defendants goods or services, used MEDUSA Mark which represents a false
6
7 designation of origin, false or misleading description and/or a misrepresentation of

8
fact likely to cause confusion, mistake or deceive as to whether Plaintiff had
9
10
anything to do with the origin, sponsorship, or approval of the goods, services or
11 commercial activities of Defendants.

12
45. Defendants have similarly violated 15 USC 1125(a) in that their
13
14 commercial advertising or promotion using MEDUSA Mark misrepresents the

15
nature, characteristics, qualities, and/ or geographic origin of their goods, services
16
17 or commercial activities.
18
46. As a direct and proximate result of Defendants willful and wrongful
19
acts, Plaintiff has suffered and continues to suffer and/or is likely to suffer damage
20
21 to its business reputation and goodwill. Defendants will continue, unless

22
restrained, to use a mark confusingly similar to Plaintiffs MEDUSA Trademark
23
24 and will cause irreparable damage to Plaintiff. Plaintiff has no adequate remedy at
25
law.
26
27
47. Plaintiff is entitled to injunctive relief under 15 USC 1116 against
28 Defendants, their officers, agents, and employees, and all persons acting in concert
13
1
with Defendants, from engaging in further acts of trademark infringement. Such
2
harm will continue and increase until Defendants are preliminarily and
3
4 permanently enjoined from their unlawful conduct.

5
48. Plaintiff is further entitled to the recovery of damages from Defendants
6
7 jointly and severally pursuant to 15 USC 1117, as Defendants infringing actions

8
are willful. Damages recoverable include (1) defendants profits, (2) up to three
9
10
times the actual damages sustained by the plaintiff and (3) the costs of the action.
11 Plaintiff is presently unable to ascertain the full extent of its actual monetary
12
damages, but they are in excess of $75,000, that it has suffered and/or is likely to
13
14 suffer by reason of Defendants acts of trademark infringement. Plaintiff is also

15
presently unable to ascertain the full extent of the gains, profits, and advantages
16
17 that Defendants have realized by reason of its acts of trademark infringement, but
18
they are in excess of $75,000.
19
20
21 THIRD CLAIM FOR RELIEF

22
Patent Infringement Under 35 U.S.C. 101
23 49. Plaintiff hereby incorporates by reference each and every allegation
24
contained in the paragraphs above as if fully stated herein.
25
26
27
28
14
1
50. Defendants, without authorization from Minarik, have made, used,
2
offered for sale, and/or sold, and continues to make, use, offer for sale, and/or sell
3
4 guitars having designs that infringe the 412 Patent.

5
51. Plaintiff has been and will continue to be irreparably harmed by
6
7 Defendants infringements of the 412 Patent.

8
10 FOURTH CLAIM FOR RELIEF

Common Law False Advertising and Unfair Competition
11
Against All Defendants
12
13
52. Defendants use of the MEDUSA Mark constitutes material false
14
15
statements of fact concerning Defendants affiliation, connection with, and
16 sponsorship by Plaintiff.
17
53. Defendants knew or should have known that their use of MEDUSA
18
19 Mark is likely to mislead or confuse consumers.

20
54. Defendants use of a design identical/substantially similar to the 412
21
22 Patent on the Infringing Guitars constitutes material false statements of fact

23
concerning Defendants affiliation, connection with, and sponsorship by Plaintiff.
24
55. Defendants knew of should have known that their use of a design
25
26 identical/substantially similar to the 412 Patent on the Infringing Guitars was

27
likely to mislead or confuse consumers.
28
15
1
56. Defendants false statements have likely deceived numerous third
2
parties or have a tendency to deceive a substantial portion of the marketplace.
3
4 57. Defendants deception is material because it causes, or tends to cause

5
the consuming public to wrongfully believe that Defendants are affiliated,
6
7 connected, or sponsored by Plaintiff when it is not.

8
58. Through their advertising and signage, Defendants have caused false
9
10
statements to enter interstate commerce.
11 59. Defendants false advertising violates the common law.

12
60. Plaintiff has been damaged by Defendant willful misconduct in an
13
14 amount according to proof.

15
16
17 FOURTH CAUSE OF ACTION

Injury to Business Reputation and Dilution under Cal. Bus. & Prof. Code
18
14330
19
20

22
62. The use by Defendant of the mark in California: (a) dilutes or is likely
23
24 to dilute the distinctive quality of Plaintiffs registered MEDUSA Mark; (b)

25
reduces or is likely to reduce the value of Plaintiffs goodwill and business
26
27
reputation; and (c) destroys or is likely to destroy the exclusive association by the
28 public of Plaintiffs mark. Defendants wrongful acts constitute injury to business

16
1
reputation and dilution of the distinctive quality of Plaintiffs mark within the
2
meaning of Cal. Bus. & Prof. Code 14330.
3
4 63.As a direct and proximate result of Defendants' wrongful act, Plaintiff is

5
likely to
6
7 suffer, and/or has suffered, and is likely to continue to suffer, dilution of Plaintiffs
8
MEDUSA mark and damage to its business reputation and goodwill in an
9
10
amount subject to proof. Defendants will continue, unless restrained, to use the
11 mark, and will cause irreparable damage to Plaintiff. Plaintiff has no adequate
12
remedy at law. Plaintiff is entitled to an injunction
13
14 restraining Defendants, their officers, agents, and employees, and all persons
15
acting in concert with Defendants, from engaging in further acts of injury to
16
17 Plaintiffs business reputation and dilution of Plaintiffs mark. Such harm will
18
continue and increase until Defendants are preliminarily and permanently enjoined
19
from its unlawful conduct.
20
21
22
FIFTH CAUSE OF ACTION
23
Unfair Competition Under Cal. Bus. & Prof. Code 17200 and the
24 Common Law
25
26
27
contained in the paragraphs above as if fully stated herein.
28
17
1
65. Cal. Bus. & Prof. Code 17200, et seq., states that unfair competition
2
shall mean
3
4 and include any unlawful, unfair or fraudulent business act or practice.

5
66. Defendants actions as alleged herein constitute unlawful business
6
7 acts and/or
8
practices under Cal. Bus. & Prof. Code 17200, et seq. and the common law.
9
10
67. Defendants conduct constitutes unfair business acts and/or practices
11 because
12
Defendant has unfairly used and infringed Plaintiffs registered MEDUSA Mark
13
14 in contravention of the Lanham Act while engaging in a business practice.

15
68. Defendants conduct constitutes fraudulent business acts and practices
16
17 because
18
Defendants have deceptively and unfairly marketed, advertised, sold, and/or
19
distributed products under trademarks that are confusingly similar to Plaintiffs
20
21 registered MEDUSA Mark.

22
69. Defendants conduct constitutes fraudulent business acts and practices
23
24 because Defendants have deceptively and unfairly marketed, advertised, sold

25
and/or distributed products , identical/substantially similar to the 412 Patent.
26
27
70. As a direct and proximate result of Defendants wrongful acts,
28 Plaintiff is likely to suffer, and/or has suffered, and is likely to continue to suffer
18
1
damage to its business reputation and goodwill. Defendant will continue, unless
2
restrained, to use the mark, and to deceptively and unfairly market, advertise, and
3
4 promote their business. This will cause irreparable damage to Plaintiff. Plaintiff
5
has no adequate remedy at law. Plaintiff is entitled to an injunction restraining
6
7 Defendants, their officers, agents, and employees, and all persons acting in concert
8
with Defendants, from engaging in further acts of unfair competition. Such harm
9
10
will continue and increase until Defendants are preliminarily and permanently
11 enjoined from their unlawful conduct.

12
71. Plaintiff is further entitled to recover from Defendants the actual
13
14 damages that it has sustained and/or is likely to sustain as a result of Defendants

15
wrongful acts. Plaintiff is presently unable to ascertain the full extent of the
16
17 monetary damages that it has suffered and/or is likely to suffer by reason of

18
Defendants acts of unfair competition, but they are in excess of $75,000.
19
72. Plaintiff is further entitled to recover from Defendants the gains,
20
21 profits, and
22
advantages that Defendants have obtained as a result of its wrongful acts. Plaintiff
23
24 is presently unable to ascertain the full extent of the gains, profits, and advantages
25
that Defendants have realized by reason of its acts of unfair competition, but they
26
27
are in excess of $75,000.
28
19
1
73. Due of the willful nature of Defendants wrongful acts, Plaintiff is
2
entitled to an award of punitive damages.
3
5
SIXTH CAUSE OF ACTION
6
Unjust Enrichment Under Common Law
7
8

10
75. By virtue of the egregious and illegal acts of Defendants as described
11
12 above, Defendant has been unjustly enriched in an amount to proven at trial.

13
76. Defendants retention of monies gained through its deceptive business
14
15
practices and infringements would serve to unjustly enrich Defendants and would
16 be contrary to the interests of justice.

17
18
19
20
21 SEVENTH CLAIM FOR RELIEF

22 Tortious Interference with Prospective Economic
Advantage Against All Defendants
23
24
77. Plaintiff incorporates the preceding paragraphs as if fully set forth
25
herein.
26
27 78. With knowledge of Plaintiffs MEDUSA Mark, the 412 Patent and
28
related information, and the existence of relationships between customers and the
20
1
Plaintiff, Defendants have tortuously interfered with Plaintiffs prospective
2
economic advantage.
3
4 79. The Defendants have wrongfully used the Plaintiffs MEDUSA

5
Trademark, 412 Patent, reputation, and goodwill to unfairly compete, to interfere
6
7 with the Plaintiffs relationships with its customers and consumers, and to deprive
8
the Plaintiff of sales and business that would have been available to it.
9
10
80. These acts were committed with the intent to injure and Plaintiffs
11 current and future business expectancies with customers and consumers.

12
13
14
15
PRAYER FOR RELIEF
16
17 WHEREFORE, Plaintiff prays for judgment against the Defendants, and each of
18
them, as
19
follows:
20
21 1. For a judgment that Defendants infringed on Plaintiffs registered

22
MEDUSA Trademark.
23
24 2. For a judgement that Defendants infringed upon Plaintiffs Design

25
Patent No. D481,412.
26
27
3. For damages in an amount to be proven at trial for trademark
28 infringement under 15 U.S.C. 1114/Lanham Act 43(a);

21
1
4. For damages in an amount to be proven at trial for false designation of
2
origin under 15 U.S.C. 1125(a);
3
4 5. For damages to be proven at trial for common law unfair competition;

5
6. For damages in an amount to be proven at trial for unfair, fraudulent
6
7 and illegal
8
business practices under Cal. Bus. & Prof. Code 17200;
9
10
7. For disgorgement of Defendants profits under 15 U.S.C. 1117(a);
11 8. For injunctive relief barring Defendants and their agents, employees,

12
subsidiaries, licensees, successors, and assigns, and all other persons in active
13
14 concert, privity or participation with it, from doing, abiding, causing or abetting
15
any direct or indirect use of Plaintiffs MEDUSA mark, or any confusingly
16
17 similar trademarks in any way, including in advertising, promoting, or selling

18
Defendants products and services, which infringe upon Plaintiffs rights or
19
compete unfairly with Plaintiff, including but not limited to the use of the
20
21 MEDUSA Trademark;
22
9. For injunctive relief barring Defendants and their agents, employees,
23
24 subsidiaries, licensees, successors, and assigns, and all other persons in active
25
concert, privity or participation with it, from doing, abiding, causing or abetting
26
27
Defendants manufacture, distribution and/or sale of Defendants Infringing
28 Guitars;
22
1
10. For an order from the Court requiring that Defendants provide
2
complete accountings and for equitable relief, including that Defendants disgorge
3
4 and return or pay their ill-gotten gains obtained from the illegal transactions
5
entered into and or pay restitution, including the amount of monies that should
6
7 have been paid if Defendants complied with their legal obligations, or as equity
8
requires;
9
10
11. For an order from the Court that an asset freeze or constructive trust
11 be imposed over all monies and profits in Defendants possession which rightfully
12
belong to Plaintiff;
13
14 12. For destruction of the infringing articles in Defendants possession

15
under 15 U.S.C. 1118;
16
17 13. For damages in an amount to be proven at trial for unjust enrichment;

18
14. For all costs of suit; and
19
15. For such other and further relief as the Court may deem just and
20
21 equitable.
22
23
24 DEMAND FOR JURY TRIAL

25
Plaintiff respectfully demands a trial by jury in this action.
26
27
28 Dated this 6th day of October 2017

23
1
_/s/ Rolando J. Tong_________
2 Rolando J. Tong
State Bar No. 216836
3 Law Offices of Roland Tong, PC
7700 Irvine Center Drive Suite 800
4 Irvine, CA 92618
Tel. no. (949) 298-4081
5 Fax. no. (949) 419-0956
6
Email: roland@rtlawoffices.com
Attorney for Plaintiff
7
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
24
EXHIBIT A
25
Generated on: This page was generated by TSDR on 2017-10-06 18:15:29 EDT
Mark: MEDUSA
US Serial Number: 77073664 Application Filing Dec. 29, 2006

Date:
US Registration 3364446 Registration Date: Jan. 08, 2008
Number:
Register: Principal
Mark Type: Trademark
Status: The registration has been renewed.
Status Date: May 04, 2017
Publication Date: Oct. 23, 2007
Mark Information
Mark Literal MEDUSA
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Goods and Services

Note: The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;

Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: Musical Instruments namely, Acoustic guitars; Bass guitars; Electric guitars, Guitar pickups
International 015 - Primary Class U.S Class(es): 002, 021, 036
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Jan. 18, 2006 Use in Commerce: Jan. 18, 2006
Basis Information (Case Level)

Filed Use: Yes Currently Use: Yes Amended Use: No
Filed ITU: No Currently ITU: No Amended ITU: No
Filed 44D: No Currently 44D: No Amended 44D: No
Filed 44E: No Currently 44E: No Amended 44E: No
Filed 66A: No Currently 66A: No
Filed No Basis: No Currently No Basis: No
Current Owner(s) Information

Owner Name: Minarik, Marc E
Owner Address: 413 Ross st.
Glendale, CALIFORNIA 91207
UNITED STATES
Legal Entity Type: INDIVIDUAL Citizenship: UNITED STATES
26
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Roland J. Tong Docket Number: 21510050MM
Attorney Primary roland@rtlawoffices.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Roland J. Tong
Name/Address: Law Offices of Roland Tong PC
7700 Irvine Center Drive
Suite 800
Irvine, CALIFORNIA 92618
UNITED STATES
Phone: 9492984080
Correspondent e- roland@rtlawoffices.com niteghardian@aol.com Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
May 04, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
May 04, 2017 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 67723
May 04, 2017 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 67723
May 04, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67723
Mar. 09, 2017 TEAS SECTION 8 & 9 RECEIVED
Jan. 08, 2017 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Mar. 16, 2013 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Mar. 16, 2013 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 69934
Mar. 16, 2013 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 69934
Mar. 01, 2013 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Mar. 01, 2013 TEAS SECTION 8 & 15 RECEIVED
Jan. 08, 2008 REGISTERED-PRINCIPAL REGISTER
Oct. 23, 2007 PUBLISHED FOR OPPOSITION
Oct. 03, 2007 NOTICE OF PUBLICATION
Sep. 20, 2007 LAW OFFICE PUBLICATION REVIEW COMPLETED 73787
Sep. 20, 2007 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 19, 2007 AMENDMENT FROM APPLICANT ENTERED 73787
Sep. 19, 2007 CORRESPONDENCE RECEIVED IN LAW OFFICE 73787
Sep. 17, 2007 PAPER RECEIVED
Jun. 15, 2007 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Jun. 15, 2007 NON-FINAL ACTION E-MAILED 6325
Jun. 15, 2007 NON-FINAL ACTION WRITTEN 76487
May 24, 2007 AMENDMENT FROM APPLICANT ENTERED 73787
May 24, 2007 CORRESPONDENCE RECEIVED IN LAW OFFICE 73787
May 24, 2007 ASSIGNED TO LIE 73787
May 08, 2007 PAPER RECEIVED
Apr. 20, 2007 NON-FINAL ACTION E-MAILED 6325
Apr. 20, 2007 NON-FINAL ACTION WRITTEN 76487
Apr. 19, 2007 ASSIGNED TO EXAMINER 76487
Jan. 03, 2007 NEW APPLICATION ENTERED IN TRAM
Maintenance Filings or Post Registration Information

Affidavit of Section 8 - Accepted
Continued Use:
Affidavit of Section 15 - Accepted
27
Incontestability:
Renewal Date: Jan. 08, 2018
TM Staff and Location Information

TM Staff Information - None
File Location
Current Location: GENERIC WEB UPDATE Date in Location: May 04, 2017
28
29
EXHIBIT B
30
USOOD481412S
(12) United States Design Patent (10) Patent No.: US D481,412 S

Minarik (45) Date of Patent: : - Oct. 28, 2003
(54) FRONT OF A GUITAR BODY D383,481 S * 9/1997 Langdell ...................... D17/14
5,811,703 A 9/1998 Hoshino ...................... 84/267
(76) Inventor: Marc E. Minarik, 413 ROSS St., D420,694 S 2/2000 Rose ........................... D17/14
Glendale, CA (US) 91207 6,084,166 A 7/2000 Lee ............................. 84/313
s D457,911 S * 5/2002 Driskill, Jr. .................. D17/20
**) Term: 14 Y
(**) Term eaS * cited by examiner
(21) Appl. No. 29/172,116 Primary Examiner Ruth McInroy
(22) Filed: Dec.e 6,Vs 2002 (74) Attorney, Agent, or Firm-Richard C. Litman
(51) LOC (7) Cl. .................................................... 17-03 (57) CLAIM
(52) U.S. Cl. ........................................................ D17/20 The ornamental design for a front of a guitar body, as shown
(58) Field of Search ........................ D17/14-15, 1721, and described.
D17/99: D1/111, 106; D32/43; 84/267, DESCRIPTION
291-292, 293
FIG. 1 is a front perspective view of a front of a guitar body
(56) References Cited showing my new design;
U.S. PATENT DOCUMENTS FIG. 2 is a front elevational view thereof; and,
FIG. 3 is a front perspective view thereof.
D269,524 S 6/1983 Burge The broken line showing in FIG. 1 is for illustrative pur
D314,783 S 2/1991 Vandenberg et al. poses only and forms no part of the claimed design.
D337,125 S 7/1993 Rundell
D344,747 S * 3/1994 Harper ........................ D17/14
D362,265 S * 9/1995 DeCola ....................... D17/20 1 Claim, 3 Drawing Sheets
31
U.S. Patent Oct. 28, 2003 Sheet 1 of 3 US D481,412 S
32
Fig. 2
33
Fig. 3
34
EXHIBIT C
35
36
37

Minarik v. S7G-USA - Complaint

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Minarik v. S7G-USA - Complaint

Uploaded by

Copyright:

Available Formats

Case 2:17-cv-07368 Document 1 Filed 10/09/17 Page 1 of 37 Page ID #:1

22 Defendants marketing and distribution of guitars under the MEDUSA Mark as

25 but not limited to disgorgement of profits, from Defendants for trademark

21 6. This Court has subject matter jurisdiction over Plaintiffs trademark

24 Code 1114-1118 and 1125.

28 pursuant to 28 U.S.C. 1331 and 1338.

7 from a common nucleus of operative facts such that the administration of

11 9. This Court has personal jurisdiction over Defendants by virtue of

17 10. Venue is proper in this Court pursuant to 28 U.S.C. 1391(b)

21 of the action is situated in this District.

24 IV. FACTS COMMON TO ALL CAUSES OF ACTION

4 12. Plaintiff has engaged in extensive marketing and promotion of his

7 sales of the MEDUSA guitars.

11 rights in this trademark.

24 Trademark Registration Certificate attached hereto as Exhibit A).

4 17. Plaintiffs MEDUSA Trademark has reached incontestable status

24 of Plaintiffs Design Patent Registration attached hereto as Exhibit B).

4 the STRICTLY 7 GUITARS name. Defendants have introduced several brands of

11 infringing mark is attached hereto as Exhibit C).

14 times, Defendants were aware of Plaintiffs proprietary interest in the trademark

17 intentionally infringed upon Plaintiffs valuable intellectual property.

21 Merchant Show (NAMM Show) in 2015, 2016 and 2017.

24 trade-only event in the American music products industry.

7 Defendants as a result of the brand recognition and goodwill inherent in Plaintiffs

14 30. Defendants infringement has likely caused consumer confusion and

17 31. The conduct of Defendants was deliberate and intentional and

21 32. On information and belief, without Minariks authorization,

4 substantially similar infringing designs, regardless of model name.

11 35. On information and belief, an ordinary observer will perceive the

14 corresponding designs of Defendants Infringing Guitar to be substantially the

17 36. The following table illustrates Defendants infringement by

23 FIRST CLAIM FOR RELIEF

28 contained in the paragraphs above as if fully stated herein.

4 origin of Defendants products and business and is likely to cause confusion or

7 of Plaintiff with Defendants and/or the marketing or sale of its products.

11 40. Defendants acts as aforesaid were committed with knowledge their

24 42. Plaintiff is entitled to injunctive relief under 15 USC 1116 against

4 43. Plaintiff is further entitled to the recovery of damages from

17 infringement, but they are in excess of $75,000.

24 43. Plaintiff hereby incorporates by reference each and every allegation

27 paragraphs above as if fully stated herein.

4 violation of 15 U.S.C. 1125(a) in that they have, on or in connection with

7 designation of origin, false or misleading description and/or a misrepresentation of

11 commercial activities of Defendants.

14 commercial advertising or promotion using MEDUSA Mark misrepresents the

21 to its business reputation and goodwill. Defendants will continue, unless

4 permanently enjoined from their unlawful conduct.

7 jointly and severally pursuant to 15 USC 1117, as Defendants infringing actions

14 suffer by reason of Defendants acts of trademark infringement. Plaintiff is also

21 THIRD CLAIM FOR RELIEF

4 guitars having designs that infringe the 412 Patent.

7 Defendants infringements of the 412 Patent.

10 FOURTH CLAIM FOR RELIEF

19 Mark is likely to mislead or confuse consumers.

22 Patent on the Infringing Guitars constitutes material false statements of fact

26 identical/substantially similar to the 412 Patent on the Infringing Guitars was

4 57. Defendants deception is material because it causes, or tends to cause

7 connected, or sponsored by Plaintiff when it is not.

11 59. Defendants false advertising violates the common law.

14 amount according to proof.

17 FOURTH CAUSE OF ACTION

21 contained in the paragraphs above as if fully stated herein.

24 to dilute the distinctive quality of Plaintiffs registered MEDUSA Mark; (b)

28 public of Plaintiffs mark. Defendants wrongful acts constitute injury to business