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ROBERT A. KASHFI AN, ESQ. (SBN: 263173)
r ober t@kashfianlaw.com
RYAN D.KASHFI AN, ESQ. (SBN: 265293)
r yan@kashfianlaw .com
GEORGE E.AKWO, ESQ. (SBN: 164670)
geor ge@kashfianlaw.com
KASHFI AN & KASHFI AN LLP
1875 CENTURYPARKEAST, SUI TE1340
CENTURYCI TY, CALI FORNI A90067- 2514
(310) 751- 7578 I Telephone
(310) 751- 7579 I Facsimile
OPHI RJ . BI TTON, ESQ. (SBN: 204310)
ophir @bittonlaw.com
BI TTON &ASSOCI ATES
12080 VENTURAPLACE,SUI TED
STUDI OCI TY, CALI FORNI A91604- 2634
(818) 524 - 1223 I TELEPHONE
(818) 524 - 1224 I FACSI MI LE
Attorneys for Plaintiff, SOLI D 21, I NC.
UNI TED STATES DI STRI CT COURT
CENTRAL DI STRI CT OF CALI FORNI A
SOLI D 21, I NC., a Nevada Cor por ation
headquar ter ed I n Los Angeles,
Califor nia,
Plaintiff,
vs.
HUBLOT OF AMERI CA, a Flor ida
Cor por ation; LVMH MOET
HENNESSY LOUI S VUI TTTON,
I NC., a Delawar e Cor por ation; LVMH
WATCH &J EWELRY USA, I NC., a
Delawar e Cor por ation; LVMH MOET
HENNESSY LOUI S VUI TTON S.A., a
Fr ench Cor por ation; and DOES 1- 10,
inclusive,
Defendants.
CASENo: 2: 11- CV- 00468- DMG- J C
[Assigned to Judge Dolly M Gee in
Courtroom 7 J
DED
COMPLAI NT FOR:
1) TRADEMARK
I NFRI NGEMENT;
2) UNFAI R COMPETI TI ON;
3) FALSE DESCRI PTI ON;
4) I NJ UNCTI VE RELI EF;
5) DECLARATORY RELI EF
DEMAND FOR J URY TRI AL
[PROPOSED] FI RST AMENDED COMPLAI NT
FOR TRADEMARK I NFRI NGEMENT
-1-
CASENo.2: I l- CV - 00468- DMG- J C
UNI TED STATES DI STRI CT COURT
CENTRAL DI STRI CT OF CALI FORNI A
XXXXXXXXX






FILED
CLERK, U.S. DISTRICT COURT





CENTRAL DISTRICT OF CALIFORNIA

BY: ___________________ DEPUTY
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 1 of 18 Page ID #:1723
Jan. 13, 2014
KTI
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Plaintiff SOLI D 21 I NC. (her einafter "Plaintiff' and/or "SOLI D 21"), a
Nevada Cor por ation with its pr incipal place of business in Los Angeles, Califor nia,
by and thr ough its under signed attor neys, alleges for its Fir st Amended Complaint
against defendants HUBLOT OF AMERI CA, aFlor ida Cor por ation; LVMH MOET
HENNESSY LOUI S VUI TTTON, I NC., a Delawar e Cor por ation; LVMH WATCH
& J EWELRY USA, I NC., a Delawar e Cor por ation; their par ent company LVMH
MOET HENNESSY LOUI S VUI TTON S.A., a Fr ench Cor por ation; and DOES 1-
10, inclusive, (collectively, "DEFENDANTS") as follows:
I. NATURE OF THE ACTION
1. This is a complaint for Tr ademar k I nfr ingement, Unfair Competition,
and False Descr iption ar ising in Common law and under §§ 32 and 43 of the
Lanham Act, 15 U.S.c. §§ 1114(1) (Tr ademar k I nfr ingement) and 1125(a) and (c)
(Unfair Competition and False Descr iption), for Unfair Business Pr actice ar ising
under Califor nia Business and Pr ofessions Code §§ 14245 et seq. and 17200 et seq.,
and for declar ator y r elief (see, 15U.S.C. § 1065).
2. SOLI D 21 is the owner of the r egister ed and incontestable tr ademar k
RED GOLD® for , inter alia, finejewelr y and watches made fr om a special alloying
of gold with a distinct color made into fine jewelr y in connection with the
manufactur e, mar keting and adver tising of watches, necklaces, br acelets, r ings,
anklets, cuff links, or namental hair pins, belt buckles of pr ecious metal, tie clips and
pegs and ear r ings known as "RED GOLD®." The tr ademar k is capsulated in the
following tr ademar k infor mation and in the tr ademar k cer tificate attached her eto as
Exhibit 1and incor por ated her ein as though fully set for th:
U.S. Tr ademar k Registr ation No. 2,793,987
Mar k: RED GOLD(R)
Register ed: December 16, 2003
-2-
CASENo. 2: 1l- CV- 00468- DMG- J C [pROPOSED] FI RST AMENDED COMPLAI NT
FOR TRADEMARK I NFRI NGEMENT UNI TED STATES DI STRI CT COURT
CENTRAL DI STRI CT OF CALI FORNI A
138003-I _ AmendedComplainC010013
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 2 of 18 Page ID #:1724
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1 Owner : SOLI D 21 I ncor por ated
2 I n addition, on August 21, 2009, the Commissioner of Tr ademar ks, United
3 States Patent and Tr ademar k Office issued the following Notice of Use and
4 I ncontestability in r egar ds to Plaintiffs RED GOLD® tr ademar k (a tr ue and cor r ect
5 copy of said Notice of I ncontestability is attached her eto as Exhibit 2 and
6 I ncor por ated her ein as though fully set for th):
"The combined declar ation of use and incontestability filed in
connection with the r egistr ation identified below meets the
r equir ements of Sections 8 and 15 of the Tr ademar k Act, 15 U.S.C.
§§1058 and 1065. The combined declar ation is accepted and
acknowledged. The r egistr ation r emains in for ce.
REG NUMBER: 2793987
MARK: RED GOLD®
OWNER: Solid 21 I ncor por ated
3. SOLI D 21 seeks equitable r elief, as well as compensator y and monetar y
damages, costs and disbur sements. (15 U.S.C. §§ 1116 and 1117.) Plaintiff also
br ings this action for monetar y damages it has suffer ed and disgor gement of
DEFENDANTS' pr ofits as a r esult of DEFENDANTS' unfair competition and
intentional violation of Section 43(a) of the Lanham Act, 15U.S.C. § 1125(a).
I I . J URI SDI CTI ON ANDVENUE
4. This Cour t has or iginal subject- matter jur isdiction over this action
pur suant to 15 U.S.C. § 1121 and 28 U.S.c. §§ 1331, 1338(a) and 1338(b) because
this action involves substantial claims ar ising under the United States Tr ademar k
Act of 1946, as amended, 15 U.S.C. 1051, et seq., including claims Tr ademar k
I nfr ingement, Unfair Competition, and False Descr iption ar ising under §§ 32 and 43
of the Lanham Act, 15 U.S.C. §§ 1114(1) (Tr ademar k I nfr ingement) and 1125(a)
28 (Unfair Competition and False Descr iption), for Unfair Business Pr actice ar ising
- 3-
CASENo. 2: 1l- CV- 00468- DMG- J C [PROPOSED] FI RST AMENDED COMPLAI NT
FOR TRADEMARK I NFRI NGEMENT
UNI TED STATES DI STRI CT COURT
CENTRAL DI STRI CT OF CALI FORNI A
138003-I _ AmendedComplaint_ Ol0613
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 3 of 18 Page ID #:1725
13
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1 under Califor nia Business and Pr ofessions Code § 17200 et seq., and for injur y to
2 business r eputation. This Cour t also has supplemental jur isdiction over r elated state
3 dilution and unfair competition in violation of the laws of the State of Califor nia
4 pur suant to 28 U.S.C. §§ 1338(b), 1367 and the doctr ine of supplemental
5 jur isdiction, because such state law claims ar e so r elated to the claims within the
6 Cour t's or iginal jur isdiction that they for mpar t of the same case and contr over sy.
7 5. This Cour t has per sonal jur isdiction over the defendants because they
8 have per sonally availed themselves by doing substantial business in Califor nia.
9 6. Venue is pr oper in this distr ict under 28 U.S.C. §1391(b) and (c)
10 because a substantial par t of the events or omissions giving r ise to the claims
11 occur r ed in this distr ict, and a substantial par t of the pr oper ty that is the subject of
12 the action is situated inthis distr ict.
III. INTRADISTRICT ASSIGNMENT
7. This is atr ademar k case subject to distr ict- wide assignment under Local
16 Rule 3- 2(c).
17
18 IV. THE PARTIES
19 8. SOLI D 21 is acor por ation or ganized and existing under the laws of the
20 State of Nevada with its pr incipal place of business at 22287 Mulholland Highway
21 Suite 82, Calabasas, CA 91302.
22 9. SOLI D 21 is infor med and believes and on this basis alleges that
23 defendants HUBLOT OF AMERI CA, a Flor ida Cor por ation; LVMH MOET
24 HENNESSY LOUI S VUI TTTON, I NC., a Delawar e Cor por ation; LVMH WATCH
25 & J EWELRY USA, I NC., a Delawar e Cor por ation, ar e all wholly owned
26 subsidiar ies or agents of LVMH MOET HENNESSY LOUI S VUI TTON S.A., a
27 Fr ench Cor por ation, and together they infr inge SOLI D 21's tr ademar k thr ough the
28 following wholly- owned subsidiar ylbr and name: HUB LOT and LOUI S VUI TTON.
-4-
CASENo. 2: 11- CV- 00468- DMG- J C [PROPOSED] FI RST AMENDED COMPLAI NT
FOR TRADEMARK I NFRI NGEMENT UNITED STATES DISTRICT COURT
CENTRAL DI STRI CT OF CALI FORNI A
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 4 of 18 Page ID #:1726
1 SOLI D 21 is infor med and believes and on this basis alleges that defendant LVMH
2 MOET HENNESSY LOUI S VUI TTON is a cor por ation or ganized and existing
3 under the laws of Fr ance. They ar e infr inging Plaintiffs tr ademar k thr ough the
4 following wholly- owned subsidiar y/br and name: HUBLOT and LOUI S VUI TTON.
5 10. Defendants DOES 1 to 10, inclusive ar e now, and/or at all times
6 mentioned in this Complaint wer e individuals and/or ar e licensed to do business
7 and/or actually doing business in the United States. Plaintiffs do not know the tr ue
8 names and capacities, whether individual, par tner or cor por ate, of DOES 1 to 10,
9 inclusive and for that r eason DOES 1 to 10 ar e sued under such fictitious names
1° pur suant to Feder al Rules of Civil Pr ocedur e Section 19- 1 and feder al case law.
11 SOLI D 21 will seek leave of cour t to amend this Complaint to allege such names
12 and capacities as soon as they ar e ascer tained. Defendants, and each of them, ar e
13 now and/or at all times mentioned in this Complaint wer e in some manner legally
14 r esponsible for the events, happening and cir cumstances alleged in this Complaint.
15 Defendants, and each of them, pr oximately subjected Plaintiffs to the unlawful
16 pr actices, wr ongs, complaints, injur ies and/or damages alleged in this Complaint.
17 Defendants, and each of them, ar e now and/or at all times mentioned in this
18 Complaint wer e the agents, ser vants and/or employees of some or all other
19 Defendants, and vice- ver sa, and in doing the things alleged in this Complaint,
20 Defendants ar e now and/or at all times mentioned in this Complaint wer e acting
21 within the cour se and scope of that agency, ser vitude and/or employment.
22 Defendants, and each of them, ar e now and/or at all times mentioned in this
23 Complaint wer e member s of and/or engaged in a joint ventur e, par tner ship and
24 common enter pr ise, and wer e acting within the cour se and scope of, and in
25 pur suance of said joint ventur e, par tner ship and common enter pr ise. Defendants, and
26 each of them, at all times mentioned in this Complaint concur r ed and contr ibuted to
27 the var ious acts and omissions of each and ever y one of the other Defendants in
28 pr oximately causing the complaints, mjunes and/or damages alleged in this
- 5-
[PROPOSED] FI RST AMENDED COMPLAI NT
FOR TRADEMARK I NFRI NGEMENT
CASENo. 2: 11- CV- 00468- DMG- J C
UNITED STATES DISTRICT COURT
CENTRAL DI STRI CT OF CALI FORNI A
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 5 of 18 Page ID #:1727
8
9
11.
SOLI D 21 is the owner of aUnited States tr ademar k r egistr ation as it
1 Complaint.Defendants, and each of them, at all times mentioned inthis Complaint
2 appr oved of, condoned and/or other wise r atified each and ever y one of the acts
3 and/or omissions alleged in this Complaint. Defendants, and each of them, at all
4 times mentioned inthis Complaint aidedand abettedtheacts and omissions of each
5 and ever y one of the other Defendants ther eby pr oximately causing the damages
6 allegedinthis Complaint.
7
v. FACTS COMMON TO ALL ALLEGATI ONS
10 r elates to finejewelr y, watches, and r elated goods and ser vices using its famous
11 RED GOLD®mar k, including Reg. No. 2,793,987 (r efer r ed to her einafter as the
12 "RED GOLD®Registr ations") (seeExhibit 1her eto).
13 12. For over fiveyear s, SOLI D 21 has been continuously and exclusively
14 using and pr omoting its RED GOLD®tr ademar k in connection with the design,
15 manufactur e, mar keting and adver tising of finejewelr y, watches and r elated goods
16 andser vices.
17 13. The RED GOLD® Registr ation is valid, subsisting and pr ima facie
18 evidence of the validity of the mar k cover ed by the RED GOLD®Registr ation,
19 SOLI D21's owner shipof thismar k, andSOLI D21's exclusiver ight tousetheRED
20 GOLD®Registr ation incommer cenationwide. TheRED GOLD(R) mar k for Reg.
21 No.2,793,987hasbecomeincontestable.
22 14. SOLI D 21 has spent significant sums adver tising and pr omoting its
23 pr oducts and ser vices thr oughout the United States and expanding its business
24 offer inggoods andr elatedpr oducts andser vices under thedistinctiveRED GOLD®
25 mar k. Solid 21 has spent millions of dollar s in pr omotional effor ts to br and RED
26 GOLD(R)®, including dir ect adver tising, aggr essive public r elations effor t and
27 pr oduct placement. As par t of this effor t, Solid 21 has hosted sever al all- jewelr y
28 r unway shows highlighting RED GOLD®in cites such s New Yor k, Washington
-6-
[PROPOSED] FI RST AMENDED COMPLAI NT
FOR TRADEMARK I NFRI NGEMENT
CASENo. 2: 11- CV- 00468- DMG- J C
UNI TED STATES DI STRI CT COURT
CENTRAL DI STRI CT OF CALI FORNI A
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 6 of 18 Page ID #:1728
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DC, Los Angeles, Lagos, London and Las Vegas. Solid 21 has adver tised in sever al
jewelr y tr ade and consumer magazines and has been featur ed on sever al television
shows, both domestically and inter nationally. Solid 21 has pr omoted RED GOLD®
on sever al awar d shows such as the Academy Awar ds ("The Oscar s"), Billboar d
Awar ds, Video Music Awar ds. Solid 21's celebr ity clients have featur ed RED
GOLD® in their songs, music videos and movies. As a r esult of these effor ts and
continuous use, the RED GOLD® mar k has become famous and associated with the
finejewelr y designed, manufactur ed, mar keted and adver tised by SOLI D 21.
15. SOLI D 21 both adds to and r elies upon the value and goodwill of the
RED GOLD® Mar k to der ive income fr om its business activities in connection with
RED GOLD® and r elated goods and ser vices.
16. SOLI D 21 has developed watches and jewelr y items using its RED
GOLD® mar k, all of which have been successfully intr oduced into the mar ketplace.
17. DEFENDANTS ar e inter national watch manufactur er s and designer s.
18. Upon infor mation and belief, at var ious times after SOLI D 21,
DEFENDANTS began selling, mar keting and adver tising fine jewelr y utilizing the
RED GOLD® mar k. Upon infor mation and belief, DEFENDANTS adver tised the
manufactur e and sale of fine jewelr y and watches using the RED GOLD® mar k in
19 their br anding and mar keting mater ials.
20 19. SOLI D 21 is infor med and believes and on this basis alleges that
21 DEFENDANTS also allowed thir d par ties to pr omote their pr oduct lines of fine
22 jewelr y and watches under the RED GOLD® mar k.
23 20. DEFENDANTS ar e national and inter national watch manufactur er s.
24 SOLI D 21 is infor med and believes and on this basis alleges that DEFENDANTS
25 utilized the RED GOLD® mar k in their mar keting, adver tising and sales of their
26 pr oduct line of fine jewelr y with full knowledge of SOLI D 21 and SOLI D 21's use
27 of and pr ior r ights in the RED GOLD® mar k with r espect to the manufactur e,
28 mar keting, adver tising and sale of fine jewelr y, or in the alter native, in negligent
-7-
[PROPOSED] FI RST AMENDED COMPLAI NT
FORTRADEMARKI NFr uNGEMENT
CASENO.2: n- cv - 00468- DMG- J C
138003- LAmendedComplainl_010613
UNITED STATES DISTRICT COURT
CENTRAL DI STRI CT OF CALI FORNI A
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 7 of 18 Page ID #:1729
9
10
DEFENDANTS
(Tr ademar k I nfr ingement under Lanham Act, 15U.S.C. § 3231)
1 disr egar d for SOLI D 21's tr ademar k.
2 21. DEFENDANTS' use of RED GOLD® with r espect to their mar keting,
3 adver tising and sale of their own pr oduct line of finejewelr y is dir ectly competitive
4 with Plaintiffs use of RED GOLD® in the same mar ket and is likely to cause
5 confusion, r ever se confusion, mistake, and/or deception as to the sour ce of
6 DEFENDANTS' goods and ser vices.
7
8 VI. FIRST CLAIM FOR RELIEF (COUNT 1) AGAINST ALL
11 22. SOLI D 21 r epeats and r e- allege par agr aphs 1thr ough 21 as if fully set
12 for th her ein.
13 23. SOLI D 21 is the owner of all r ight, title and inter est in and to the RED
14 GOLD® Tr ademar k Registr ation.
15 24. DEFENDANTS' use of the RED GOLD® mar k to mar ket, adver tise
16 and sell their pr oduct line of fine jewelr y and watches is likely to cause confusion,
17 r ever se confusion, mistake and/or deception as to the sour ce, sponsor ship or
18 appr oval of DEFENDANTS' pr oduct line in the mistaken belief that SOLI D 21 has
19 somehow affiliated, connected or associated with DEFENDANTS.
20 25. DEFENDANTS' afor esaid acts constitute tr ademar k infr ingement of a
21 feder ally r egister ed tr ademar k inviolation of the Lanham Act, 15U.S.C. § 1114.
22 26. By r eason of DEFENDANTS' afor esaid acts, SOLI D 21 has suffer ed
23 and will continue to suffer damage and injur y to its business, r eputation and good
24 will, and will sustain loss of r evenue and pr ofits, while DEFENDANTS pr ofit by
25 their pr ohibited use.
26 27. Unless and until enjoined by this Cour t, DEFENDANTS will continue
27 to per for m the acts complained of her ein and cause said damages and injur y, all to
28 the immediate and ir r epar able har m of SOLI D 21.
- 8-
[PROPOSED] FI RST AMENDED COMPLAI NT
FORTRADEMARKI NFr uNGEMENT
CASENo. 2: I I - CV- 00468- DMG- J C
138003-1_ AmendedComplainl_ Ol0613
UNITED STATES DISTRICT COURT
CENTRAL DI STRI CT OF CALI FORNI A
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 8 of 18 Page ID #:1730
11
138003-lj,mendedComplainl_Ol0613
20 (Unfair Competition under the Lanham Act, 15U.S.C. § 1125(a))
1 VIII. SECOND CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
2 (Trademark Infringement under Lanham Act, 15U.S.C. § 4334)
3 28. SOLID 21repeats and re-alleges paragraphs 1through 27.
4 29. DEFENDANTS' use of the RED GOLD® mark to market, advertise and
5 sell their product line of fine jewelry is likely to cause confusion, reverse confusion,
6 mistake or deception as to the source, sponsorship or approval of DEFENDANTS'
7 product line in the mistaken belief that SOLID 21 has somehow affiliated, connected
8 or associated with DEFENDANTS.
9 30. DEFENDANTS' aforesaid acts constitute trademark infringement 10
10 violation of the Lanham Act, 15U.S.C. § 1125(a).
31. By reason of DEFENDANTS' aforesaid acts, SOLID 21 has suffered
12 and will continue to suffer damage and injury to their business, reputation and good
13 will, and has and will sustain loss of revenues and profits, while DEFENDANTS
14 profit by their prohibited use.
15 32. Unless and until enjoined by this Court, DEFENDANTS will continue to
16 perform the acts complained of herein and cause said damages and injury, all to the
17 immediate and irreparable harm of Plaintiffs.
18
19 X. THIRD CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
21 33. SOLID 21 repeats and re-alleges paragraphs 1through 32 as if fully set
22 forth herein.
23 34. Through extensive, continuous and exclusive use for over four years,
24 SOLID 21 is the owner of all rights, title and interest in and to, and has acquired
25 secondary meaning in, the distinctive RED GOLD® Mark for its manufacture,
26 marketing, advertising and sale of fine jewelry, watches, and related goods and
27 services. For the purpose of this cause of action, the mark being the words RED
28 GOLD® used in this order "RED GOLD®."
-9-
CASENo. 2:11-CV-00468-DMG-J C [PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 9 of 18 Page ID #:1731
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35. Through SOLID 21's ownership of the RED GOLD® Mark and
reliance on the value and goodwill of the RED GOLD®Mark, Plaintiff maintains a
financial interest in itsexclusive use of the REDGOLD®Marks.
36. DEFENDANTS' use of the RED GOLD®Mark to market, advertise
and sell their product line of finejewelry and watches is likely to cause confusion,
reverse confusion, mistake or deception asto the source, sponsorship or approval of
DEFENDANTS' product line in the mistaken belief that SOLID 21has somehow
affiliated, connected or associated withDEFENDANTS.
37. DEFENDANTS' aforesaid acts constitute unfair competition with
SOLID21in violation ofthe LanhamAct, 15U.S.C. § 1125(a).
38. By reason of DEFENDANTS' aforesaid acts, SOLID 21has suffered
and will continue to suffer damage and injury to its business, reputation and good
will, and will sustain loss of revenues and profits, while DEFENDANTS profit by
their prohibited use.
39. Unless and until enjoined by this Court, DEFENDANTS' will continue
to perform the acts complained of herein and cause said damages and injury, all to
the immediate and irreparable harm of Plaintiffs.
XI. FIFTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(COMMONLAW TRADEMARK INFRINGEMENT)
40. SOLID21repeats and re-alleges paragraphs 1through 39as if fully set
22 forthherein.
23 41. Defendants acts alleged herein and specifically, without limitation,
24 Defendants' use of the RED GOLD® mark, infringe SOLID 21's exclusive
25 trademark rights in the REDGOLD®mark, in violation of the common law.
26 42. As a result of Defendants' acts as alleged above, SOLID 21 has
27 incurred damages in an amount to be proven at trial consisting of, among other
28 things, diminution in the value of the goodwill associated with the RED GOLD®
-10-
[PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT
CASENo. 2:II-CV-00468-DMG-J C
138003-I_ AmendedComplainl_ 010613
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 10 of 18 Page ID #:1732
1 mark.
2
3 XII. SIXTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
4 (Unfair Competition under California Business &Professions Code § 17200 et seq.)
5 43. SOLID 21 repeats and re-alleges paragraphs 1through 42 as if fully set
6 forth herein.
7 44. Through SOLID 21's ownership of the RED GOLD® Mark and
8 reliance on the value and goodwill of the RED GOLD® Mark, Plaintiff maintains a
9 financial interest in its exclusive use of the RED GOLD® Marks. For the purpose of
10 this cause of action, the mark being the words RED GOLD® used in this order
11 "RED GOLD®."
12 45. DEFENDANTS' use of the RED GOLD® mark to market, advertise
13 and sell their product line of fine jewelry is likely to cause confusion, reverse
14 confusion, mistake or deception as to the source, sponsorship or approval of
15 DEFENDANTS' product line in the mistaken belief that SOLID 21 has somehow
16 affiliated, connected or associated with DEFENDANTS.
17 46. DEFENDANTS' aforesaid acts constitute unfair competition with
18 Plaintiff within the meaning of California Business and Professions Code § 17200.
19 47. By reason of DEFENDANTS' aforesaid acts, SOLID 21 has suffered
20 and will continue to suffer damage and injury to their business, reputation and good
21 will, and will sustain loss of revenues and profits, while DEFENDANTS profit by
22 their prohibited use.
23 48. Pursuant to California Business &Professions Code § 17203, Cisco is
24 entitled to preliminary and permanent injunctive relief ordering DEFENDANTS and
25 each of them to cease this unfair competition, as well as disgorgement of all of
26 DEFENDANTS' profits associated with this unfair competition. Unless and until
27 enjoined by this Court, DEFENDANTS will continue to perform the acts
28 complained of herein and cause said damages and injury, all to the immediate and
-11-
[PROPOSED] FIRST AMENDED COMPLAINT
FORTRADEMARKINFruNGEMENT
CASENo. 2:II-CV-00468-DMG-J C
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 11 of 18 Page ID #:1733
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1 irreparable harm of SOLID 21.
2
3 XIII. SEVENTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
4 (Trademark Dilution under the Lanham Act, 15U.S.C. § 1125(c»
5 49. SOLID 21 repeats and re-allege paragraphs 1through 48 as if fully set
6 forth herein.
50. SOLID 21's RED GOLD® Mark and Registration is a distinctive mark
that has become famous, and/or alternatively the amber gold hue created and devised
by SOLID 21 is a distinctive mark that has become famous.
51. DEFENDANTS' commercial use of the RED GOLD® mark, in
whichever form, to market, advertise and sell their product line of luxury wrist
watches and fine jewelry is causing dilution of the distinctive quality of the RED
GOLD® Mark and Registration.
52. DEFENDANTS' aforesaid acts constitute trademark dilution In
violation of the Lanham Act, 15U.S.C. § 1125(c).
53. By reason of DEFENDANTS' aforesaid acts, SOLID 21 has suffered
and will continue to suffer damage and injury to its business, reputation and good
will, and will sustain loss of revenues and profits, while DEFENDANTS profit by
19 their prohibited use.
20 54. Unless and until enjoined by this Court, DEFENDANTS will continue
21 to perform the acts complained of herein and cause said damages and injury, all to
22 the immediate and irreparable harm of SOLID 21.
23
24 XIV. EIGHTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
25 (False Description under the Lanham Act, 15U.S.C. § 1125(a»
26 55. SOLID 21 repeats and re-alleges paragraphs 1through 54 as if fully set
27 forth herein.
28 III
-12-
[PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT
CASENo.2: ll-CV -00468-DMG-J C
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 12 of 18 Page ID #:1734
11 58. SOLID 21 avers that DEFENDANTS' use of the term RED GOLD®
1 56. SOLID 21's RED GOLD® Mark and Registration is a distinctive mark
2 that has become famous, and/or alternatively the amber gold hue created and devised
3 by SOLID 21.
4 57. DEFENDANTS' commercial use of the RED GOLD® mark, in
5 whichever form, to market, advertise and sell their product line of fine jewelry
6 including watches is likely to create confusion, or to cause mistake, or to deceive
7 consumers as to the affiliation, connection or association of SOLID 21's products, or
8 to deceive consumers as to the origin, sponsorship or approval of SOLID 21's
9 products, all in dilution of the distinctive quality of the RED GOLD(R) Mark and
10 Registration.
12 comprises a false description or representation of such business or products under 15
13 V.S.C. § 1125(a) (Section 43(a) ofthe Lanham Act).
14 59. By reason of DEFENDANTS' aforesaid acts, SOLID 21 has suffered
15 and will continue to suffer damage and injury to its business, reputation and good
16 will, and will sustain loss of revenues and profits, while DEFENDANTS profit by
17 their prohibited use.
18
19 xv. NINTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
20 (Trademark Dilution under California Business and Professions Code 14330)
21 60. SOLID 21 repeats and realleges paragraphs 1through 59 as if fully set
22 forth herein.
23 61. SOLID 21 is the owner of the famous and distinctive RED GOLD®
24 Mark and Registration.
25 62. DEFENDANTS' commercial use of the RED GOLD® mark, in
26 whichever form, to market, advertise and sell their product line of fine jewelry is
27 causing likelihood of injury to business reputation or of dilution of the distinctive
28 quality of the RED GOLD® Mark and Registration.
-13-
[PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT
CASENo. 2:II-CV-00468-DMG-J C
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 13 of 18 Page ID #:1735
1 63. DEFENDANTS' aforesaid acts constitute trademark dilution In
2 violation of California Business and Professions Code 14330.
3 64. By reason of DEFENDANTS' aforesaid acts, SOLID 21 has suffered
4 and will continue to suffer damage and injury to its business, reputation and good
5 will, and will sustain loss of revenues and profits, while DEFENDANTS profit by
6 their prohibited use.
7 65. Unless and until enjoined by this Court, DEFENDANTS will continue
8 to perform the acts complained of herein and cause said damages and injury, all to
9 the immediate and irreparable harm of SOLID21.
10
11
12
13
XVI. TENTH CLAIM FOR RELIEF AGAINST ALL DEFENDANTS
(Declaratory Relief)
66. SOLID21repeats and realleges paragraphs 1through 65 as if fully set
14 forthherein.
15 67. An actual controversy has arisen and now exists relating to the rights
16 and duties of the parties herein in the RED GOLD® Mark for which judicial
17 determination isrequired.
18 68. SOLID 21is and has been, for over five years, the owner of the RED
19 GOLD® mark as evidenced by, among other things, the RED GOLD®
20 Registrations.
21 69. SOLID 21 has taken all necessary steps to perfect its RED GOLD®
22 Registrations and has filed all items necessary to make the RED GOLD® mark
23 incontestable.
24 70. DEFENDANTS and each of them have infringed upon SOLID 21's
25 rights by, among other things, using the "RED GOLD®" mark to describe and
26 market itsproducts.
27 71. As such a judicial determination is needed setting forth the respective
28 rights, interests, and dutiesof all partiesto this action. Specifically, SOLID21seeks
-14-
[PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT
CASENo. 2:II-CV-00468-DMG-J C
138003-I_ AmendedComplain1_ 010613
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 14 of 18 Page ID #:1736
XVII. PRAYER FOR RELIEF
WHEREFORE, SOLID 21prays that the Court award the following relief:
1. That DEFENDANTS, and their agents, officers, employees,
representatives, successors, assigns, attorneys and all other persons acting for, with,
by, through or under authority from DEFENDANTS, and each of them, be
preliminarily and permanently enjoined from:(a) using SOLID 21's trademark
depicted in Exhibit 1, or any colorable imitation thereof; (b) using any trademark
that imitates or is confusingly similar to or in anyway similar to SOLID 21's
trademark RED GOLD®, or that is likely to cause confusion, mistake, deception, or
public misunderstanding as to the origin of SOLID 21's products or their
connectedness to DEFENDANTS, and each of them.
2. That DEFENDANTS, and each of them, be required to file with the
Court and serve on SOLID 21 within thirty (30) days after entry of the Injunction, a
report in writing under oath setting forth in detail the manner and form in which
DEFENDANTS, and each of them, have complied with the Injunction
3. That, pursuant to 15 U.S.C. § 1117, DEFENDANTS be held liable for
all damages suffered by SOLID 21resulting from the acts alleged herein;
4. That, pursuant to 15U.S.c. § 1117, DEFENDANTS, and each of them,
be compelled to account to SOLID 21, and that SOLID 21 be awarded, for any and
all profits, gains, and advantages derived by DEFENDANTS, and each of them,
26 from its illegal acts complained of herein;
28 deliver up for destruction product inventory (including watches and jewelry) all
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138003-I_ AmendedComplainC010613
1 the following declaratory relief: (1) that its RED GOLD® Registrations owned by
2 SOLID 21 be deemed incontestable in accordance with 15USC §1065; and (2) that
3 DEFENDANTS, each or some of them, acted in bad faith in their infringing use of
4 the RED GOLD® mark.
5
5. That DEFENDANTS be ordered pursuant to 15 U.S.c. § 1118 to
-15-
CASENO.2: n-cv-00468-DMG-J C [PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 15 of 18 Page ID #:1737
1 containers, labels, signs, prints, packages, wrappers, receptacles, advertising,
2 promotional material or the like in possession, custody or under the control of
3 DEFENDANTS bearing a trademark found to infringe SOLID 21's RED GOLD®
4 trademark rights, as well as all plates, matrices, and other means of making the
5 same;
6 That the Court declare this to be an exceptional case and award SOLID 6.
7 21 its full costs and reasonable attorneys' fees pursuant to 15V.S.C. §§ 1117(a) and
8 1125(c), and award SOLID 21 punitive and treble damages due to DEFENDANTS'
9 willful and intentional acts of trademark infringement, trademark dilution and unfair
10 competition;
11 7. Injunctive relief prohibiting DEFENDANTS, and each of them, from
12 engaging in the unlawful, unfair, deceptive, and misleading business practices
13 described herein;
14 8. Restoration of all money gained by DEFENDANTS, and each of them,
15 by wrongly using the unlawful, unfair, deceptive, and misleading business practices
16 described in this Complaint;
17 9. That it be determined that SOLID 21's RED GOLD® Registrations are
18 incontestable;
19 10. That it be determined that DEFENDANTS, each or some of them, acted
20 in bad faith in their infringing use of the RED GOLD® mark.
21 11. That the Court grant Plaintiff any other remedy to which it may be
22 entitled as provided for in 15V.S.C. §§ 1116 and 1117 or under state law;
23 12. Interest on the above-requested damages;
24
25
26 III
27 III
28 III
13. Costs of this action and,
14. For such and other further relief that the court deems just and proper.
-16-
[PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT
CASENo. 2:II-CV-00468-DMG-J C
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 16 of 18 Page ID #:1738
1 Respectfully Submitted,
2 this 6
th
day of J anuary, 2014
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-17-
[PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT
138003-I_ AmendedComplainl_ Ol0613
ROBE 'A. KASHF AN, ESQ.
RYAN D. KASHFIA ,ESQ.
GEORGE E. AKWO, SQ.
Attorneys for Plaintiff,
SOLID 21 INCORPORATED
CASENo. 2:II-CV-00468-DMG-J C
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 17 of 18 Page ID #:1739
4 demands atrial by jury.
5
6
Respectfully Submitted,
7
this 6
th
day of J anuary, 2014
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DEMAND FOR TRIAL BY J URY 1
2
3 Pursuant to Federal Rule of Civil Procedure §38(b) SOLID 21 hereby
ERT A. KASH AN, ESQ.
RYAN D. KASHFIA ESQ.
GEORGE E. AKWO, ESQ.
Attorneys for Plaintiff,
SOLID 21 INCORPORATED
-18-
CASE No. 2:11-CV-00468-DMG-J C [PROPOSED] FIRST AMENDED COMPLAINT
FOR TRADEMARK INFRINGEMENT UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Case 2:11-cv-00468-DMG-JC Document 76 Filed 01/13/14 Page 18 of 18 Page ID #:1740

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