Professional Documents
Culture Documents
Harris A. Wolin
Myers Wolin, LLC
225 Broadway Suite 2400
New York, New York 10007
Email: harris.wolin@myerswolin.com
Attorneys for Plaintiff
Sea Star Beachwear, LLC
v. Civil Action
COMPLAINT,
TARYN ROSE INTERNATIONAL INC. DESIGNATION OF TRIAL COUNSEL
AND JURY DEMAND
Defendant. Document Electronically Filed
Plaintiff Sea Star Beachwear, LLC (herein after “Sea Star”) by way of Complaint for
Damages against Defendant Taryn Rose International Inc. (“Taryn Rose”), allege as follows:
1. This is an action by Sea Star for infringement of United States Patent Nos.
D799,176S and D784,664S (collectively the “Sea Star Patents”). A copy of the Sea Star Patents
2. Sea Star seeks to collect damages from Defendant as a result of the infringement.
4. In addition, Plaintiff seeks damages caused by each claim, including but not
THE PARTIES
5. Sea Star is a Delaware corporation with its principal place of business of business
7. This action arises under the Patent Laws of the United States, Title 35, United
8. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a)
and 2201(a).
9. This Court has personal jurisdiction over Taryn Rose because Taryn Rose
regularly transacts business in this District, inter alia, selling and offering for sale one or more
10. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400.
BACKGROUND
11. Sea Star is shoe and bag design company headquartered in New York City. Sea
Star brings products to the marketplace through online sales and through retail stores.
12. Sea Star has developed many unique shoe and bag designs, launching in 2015.
Specifically, Sea Star’s products are water friendly and allow the wearer to transition from
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 3 of 32
swimming to rocky beaches to city pavement. The Sea Star products are comfortable and keep
13. On October 10, 2017, U.S. Patent No. D799,176S (“‘176 Patent”) entitled “Shoe”
was duly and legally issued by the U.S. Patent Office. All rights, title and interest in the patent
14. A design patent application disclosing this shoe was filed on April 7, 2017, and
assigned Application No.: 29/599,963 (the “‘963 Application”). The Application issued as the
‘176 Patent.
15. Sea Star is marketing and selling its shoe covered by the '176 Patent under the
16. On information and belief, prior to the release of the Seafarer Slingback product,
17. On information and belief, after Sea Star released its Seafarer Slingback, Taryn
Rose used the Seafarer Slingback product as the basis for designing its own competing product.
18. On information and belief, Taryn Rose’s derivative product was released as early
as January 2019, under the style name QUIN (“the QUIN Shoe”). The QUIN Shoe style number
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 4 of 32
19. On January 21, 2019, Sea Star sent a cease and demand notice (the “Notice”) to
Taryn Rose. A true and correct copy of the Notice is attached hereto as Exhibit C.
20. On April 25, 2017, U.S. Patent No. D784,664S entitled “Shoe” was duly and
legally issued by the U.S. Patent Office. All rights, title and interest in the patent was assigned by
21. A design patent application disclosing this shoe was filed on March 11, 2016, and
assigned Application No.: 29/557,755, (the “Application”). The Application issued as the ‘664
Patent.
22. Sea Star began offering for sale its shoe which is marketed and sold under the
product is below:
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 5 of 32
23. On information and belief, prior to the release of the Beachcomber Espadrille®
24. On information and belief, after Sea Star released its Beachcomber Espadrille®,
Taryn Rose used the Beachcomber Espadrille® product as the basis for designing its own
competing product.
25. On information and belief, Taryn Rose’s derivative product was released as early
as March 26, 2019, under the Quincy Shiny SCUBA brand. The Quincy Shiny SCUBA style
26. At all times relevant hereto, the ‘176 Patent and ‘664 Patent were listed on the Sea
Star website providing notice to the public that these shoe designs are protected by United States
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 6 of 32
27. Sea Star repeats and re-alleges Paragraphs 1-26 hereof as if fully set forth herein.
28. Taryn Rose has infringed and continues to infringe the claims of the ‘176 Patent
by making using, and/or marketing products, including, but not limited to, its QUIN Shoe style
number 90875.
29. Taryn Rose received actual notice of the ‘176 Patent through the receipt of the
Notice.
30. On information and belief, any continuing infringement of the ‘176 Patent by
Taryn Rose despite knowledge of the ‘176 Patent is and continues to be willful and deliberate.
31. As a result of Taryn Rose’s infringement, Sea Star has suffered monetary
damages in an amount not yet determined, and will continue to suffer damages in the future.
32. Sea Star repeats and re-alleges Paragraphs 1-26 hereof as if fully set forth herein.
33. Taryn Rose has infringed and continues to infringe the claims of the ‘664 Patent
by making using, and/or marketing products, including, but not limited to, Quincy Shiny
34. Taryn Rose received notice of the ‘664 Patent through the Website Notice.
35. On information and belief, any continuing infringement of the ‘664 Patent by
Taryn Rose despite knowledge of the ‘664 Patent is and continues to be willful and deliberate.
36. As a result of Taryn Rose’s infringement, Sea Star has suffered monetary
damages in an amount not yet determined, and will continue to suffer damages in the future.
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 7 of 32
WHEREFORE, Sea Star prays for judgment and relief against Taryn Rose as follows:
A. Declaring that Taryn Rose has infringed one or more claims of the each of
B. Directing that Taryn Rose account for and pay to Sea Star all damages
arising out of Taryn Rose’s infringement of the Sea Star Patents, pursuant to 35 U.S.C. § 284, in
C. Declaring that Taryn Rose’s infringement of the Sea Star Patents has been,
infringement;
E. Directing Taryn Rose to pay Sea Star’s costs, expenses and reasonable
distributors, resellers, retailers and all other parties acting in active concert therewith from
infringement of the Sea Star Patents, or such other equitable relief the Court determines is
warranted; and
H. Granting Sea Star such other and further relief as the Court may deem just
and proper.
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 8 of 32
Sea Star hereby demands trial by jury on all issues in its Complaint.
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 9 of 32
Exhibit A
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 10 of 32
HATAKAMA ULOGAMA HINDU BA IT
USOOD799176S
(12 ) Leva
United
et al.
States Design Patent (10) Patent No.: US D799,176 S
(45 ) Date of Patent: * * Oct . 10 , 2017
***
AUREL
-
- — - SAL LES - .
*
*
AB *
*
-
-
-
FILE
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 11 of 32
US D799 ,176 S
Page 2
The broken lines in the drawings illustrate threading that D784 ,664 S * 4 /2017 Leva .............................. D2/923
D785, 296 S * 5 / 2017 Lucia D2/896
form no part of the claimed design . The dot- dash lines show D787, 165 S * 5 / 2017 Sassi ........... ............ 12/896
portions of the shoe and form no part of the claimed design .
1 Claim , 3 Drawing Sheets OTHER PUBLICATIONS
‘Noa ' Espadrille Sandal, posted at nordstrom .com , earliest date
reviewed : May 18 , 2016 , [online ], acquired on Jun . 20 , 2017 .
Available from Internet, < URL : http ://shop .nordstrom . com /s/toni
(56 ) References Cited pons-noa - espadrille-sandal-women /
4384608 ? origin = keywordsearch -personalizedsort
U . S . PATENT DOCUMENTS & fashioncolor= BLACK % 20FABRIC % F % 20BLACK
% 20SUEDE> *
D640 ,861 S * 7 / 2011 Wilkenfeld D2/896 “ Ter ’ Slingback Espadrille Sandal, posted at nordstrom .com , earliest
D649, 752 S * 12 / 2011 Kampff . D2/911
date reviewed : May 18, 2016 , [online], acquired on Jun. 20 , 2017 .
D650 ,973 S * 12/2011 Panariello ................... D2 /919 Available from Internet, < URL : http ://shop .nordstrom .com /s/toni
D653,841 S * 2 /2012 Menezes ..... D2/923
pons-ter- slingback - espadrille -sandal-women /
D719 , 325 S * 12 /2014 Sassi .... D2 /919 3970067 ? origin = keywordsearch - personalizedsort
D724 ,825 S * 3 / 2015 Kampff ... . ... ... .. D2 /929
D730 ,636 S * 6 / 2015 Della Valle .... ... .. . D2 /939 & fashioncolor =NAVY % 20LINEN > *
D738 ,599 S * 9 / 2015 Sassi ............... D2/929
D783 ,242 S * 4 /2017 Arzegar .................... D2 /923 * cited by examiner
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 12 of 32
*
**
men
KIURLIK -
--
---**
---
*
-
* *****
*
*
*
**
*
**
-
*-
****
*
*
**
*
--
*
**
*
-
.
-*
**
.
.
FIG . 1
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 13 of 32
*
* *
* ***** ** }
5 **
*
"
-"
-
*
- -- - - - - - - - 1)3
* * * * **
- -- - - -- - - -------- - - - -- - - - - -- - -- -- - - - - -
* * * * * * - -- - - - - - - - *- * - *- - * : : : : : : : : : : :: : : : : :
FIG. 2
.
.
4. **
**
! * *
*** ??
24
“??? .
-
*
-
- * : ea - -- -
-
*
.
1
* *
-
-
*
{ " f - - -- - - - -
.. -- - - - * * * *
FIG. 3
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 14 of 32
.
-
.
-
*
-
-
-
Mida
. .
-
.
. .
* -
*
*
.
-
-
-
*
-
.
bermain -
.
-
DDD
FIG . 4
*
*
*
FIG . 5
FIG . 6
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 15 of 32
Exhibit B
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 16 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 17 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 18 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 19 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 20 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 21 of 32
Exhibit C
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 22 of 32
MYERS WOLIN, LLC
ATTORNEYS AT LAW
100 HEADQUARTERS PLAZA
WEST TOWER – 7TH FLOOR
MORRISTOWN, NJ 07960-6834
(PH) 973-828-1284
(FAX) 866-864-3947
HARRIS A. WOLIN
DIRECT DIAL: 973-828-1284
harris.wolin@myerswolin.com
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Taryn Rose
3040 East Ana Street
Rancho Dominguez, CA 90221
We are intellectual property counsel to Sea Star Beachwear, LLC (“Sea Star” or “our Client”). Our Client
is a globally-recognized designer and supplier of resort and summer water sport shoes and clothing for
men, women and children. Its products can be found at www.seastarbeachwear.com. The purpose of this
letter is to make you aware of our Client’s rights and to prevent you from infringing upon such rights in
the future.
Sea Star invests heavily in developing and protecting its valuable intellectual property assets, including
unique product designs for its products. One of such products is the Seafarer Slingback™ found at
https://www.seastarbeachwear.com/collections/womens/products/seafarer-slingback-womens-black:
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 23 of 32
Taryn Rose
January 21, 2019
Page 2
WITHOUT PREJUDICE
SUBJECT TO FRE 408
The Seafarer Slingback™ is covered by U.S. Patent D 799,176 (“the ‘176 Patent”) for a “Shoe.” A copy
of the ‘176 Patent is attached hereto as Exhibit A and incorporated herein, with a representative figure
shown below. The ‘176 Patent entitles Sea Star to prevent others from making, using or selling a shoe
with a similar design, and in particular a design that is likely to lead an ordinary consumer into believing
that both designs originate from the same source.
Our Client has become aware that you intend to start selling a shoe under the brand TARYN ROSE and
the style name QUIN (“the QUIN Shoe”), as shown from pictures obtained by our Client in the attached
Exhibit B and incorporated herein.
We believe that the QUIN Shoe, if sold in the US, will infringe the ‘176 Patent and will be an attempt to
compete with Sea Star using Sea Star’s patented design without right or license. Although Sea Star is
confident in its legal position, it believes that this matter should be resolved in a business-like manner,
and we would welcome an opportunity to engage in a dialogue. However, in the meantime, we must
request that you immediately:
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 24 of 32
Taryn Rose
January 21, 2019
Page 3
WITHOUT PREJUDICE
SUBJECT TO FRE 408
1. Cease and desist from making, using, selling, offering to sell, distributing, or importing
the QUIN Shoe into the US and any other shoe incorporating Sea Star’s patented design
and provide written confirmation of the same;
2. Remove the QUIN Shoe from all US-directed websites, catalogs and from any
marketing/advertising collateral;
4. Represent in writing that the QUIN Shoe has not and will not be sold into the US and that
any US-bound inventory will be held pending our client’s claim; and
5. If the QUIN Shoe has been sold in the US by any third parties, provide us with the
identity of all entities that have sold, offered for sale, or currently have unsold inventory
of all relevant QUIN Shoe product.
Please note that Sea Star prefers to settle matters like this on an amicable basis and is hopeful that any
future controversy can be avoided. However, while an amicable resolution is always preferable, Sea Star
will not hesitate to vigorously defend its intellectual property rights if it ultimately becomes necessary.
This letter is written without prejudice to our client’s rights and remedies, all of which are reserved.
We look forward to hearing from you no later than January 25, 2019.
Harris A. Wolin
Taryn Rose
January 21, 2019
Exhibit A
WITHOUT PREJUDICE
SUBJECT TO FRE 408
EXHIBIT A
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 26 of 32
Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
EXHIBIT B
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 27 of 32
Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 28 of 32
Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 29 of 32
Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 30 of 32
Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 31 of 32
Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 32 of 32
Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408