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IN THE UNITED STATES DISTRICT COURT

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FOR THE CENTRAL DISTRICT OF CALIFORNIA

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WESTERN DIVISION
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13 Party A Ltd, t/a/ PARTY A AND
14 XYZ, a Party A and corporation
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Plaintiff,

16 v.
17 J. PARTY B, d/b/a S XYZ, an

individual residing in this

18 District,
19 Defendant.
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J. PARTY B, d/b/a S XYZ, an

individual

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22 Counterclaimant, v.
23 Party A Ltd, t/a/ PARTY A AND
24 XYZ, a Party A and corporation
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Counterdefendant.

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AMENDED COUNTERCLAIMS - 1

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Case No.:
AMENDED COUNTERCLAIMS
AGAINST PLAINTIFF FOR: (1)
COMMON LAW UNFAIR
COMPETITION; (2)
DECLARATORY RELIEF; AND (3)
FALSE DESIGNATION OF
ORIGIN
DEMAND FOR JURY TRIAL

Defendant and Counterclaimant J. Party B, d/b/a S XYZ (Party B

2 or Defendant or Counterclaimant) alleges the following against Party A

3 Ltd, t/a/ Party A and XYZ (Party A and XYZ or Plaintiff

rCounterdefendant) on personal knowledge as to its own acts and on

information and belief as to
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others:

FACTUAL BACKGROUND

1. XYZ was a German car manufacturer that is currently not

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conducting business and has abandoned its registered trademarks.

2. Plaintiff registered XYZwerks abandoned trademarks as its own with

10 the United States Patent & Trademark Office through Federal Registration

Nos.
11 9999,99999 (XYZ Marks).
12 3. The reputation and goodwill of XYZwerk still exist and there is still a
13 market for authentic XYZwerk car, parts, and car accessories in
14 the United States. Party A and XYZ did not receive an assignment of any

rights,
15 reputation, goodwill, or otherwise from XYZwerk.
16 4. Party B believes that the original German XYZwerk company conveyed
17 its intellectual property rights and other rights to XYZ Only, a separate non-

party
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19 5. Party B resells authentic XYZwerk items to the public.
20 6. Party B has suffered an injury-in-fact due to the Party A and XYZs

actions.
21 Some customers who purchase Party A and XYZ products under the mistaken

belief
22 that Party A and XYZ is the original XYZwerk company, may otherwise buy

from
23 Party B company, S XYZ. Party A and XYZs misleading use of the XYZ
24 mark is also likely to cause injury to S XYZ in the future. XYZ brand
25 customers may purchase from Party A and XYZ because their use of the

mark

26 eludes a relationship with the original German XYZwerk company.

Those
27 customers may believe that they are buying a product from the original
company
28 that started XYZ, when in fact they can buy the same resold, rebuilt
products

AMENDED COUNTERCLAIMS - 2

Case Page ID #:153

1 from S XYZ. The business reputation of S XYZ has been damaged as a

2 result of Party A and XYZs use and registration of the XYZ mark. Party A

and
3 XYZ seeks to establish exclusive use of the XYZ mark. However, car
4 companies, like S XYZ need to use the XYZ mark in order to designate and
5 properly label their goods. Should S XYZ be prohibited from continued use
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of the XYZ mark, S XYZ will continue to lose customers and sales.

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FIRST CAUSE OF ACTION

(Common Law Unfair Competition)

10 7. Party B re-alleges and incorporates by reference paragraphs 1 through 6 of

11 its Counterclaim.
12 8. XYZwerk, or its successor or assignee, established and maintains
13 valuable goodwill and reputation in the XYZ Marks, despite the fact that the
14 company no longer operates.
15 9. Party B alleges that Party A and XYZ has traded upon the XYZwerks
16 goodwill, and has caused confusion and the likelihood of confusion to the public as
17 to the source or origin of its goods and services.
18 10. Party B alleges that Party A and XYZ is in the future likely to cause
19 confusion as to the source or origin of its goods and services.
20 11. Party B uses the XYZ Marks as appropriate and necessary in his
21 business.
22 12. Party B seeks an award of damages resulting from Party A and XYZs
23 conduct, constituting unfair competition. As a result of Party A and XYZ attempting
24 to enforce its alleged rights against Party B, business has declined. Party A and XYZ
25 had Party Bts business website removed based on its federal registrations. As a
26 result, Party B is losing business reputation, goodwill, customers and money as a
27 result. Damages are calculated by the decrease in sales in S XYZ products
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AMENDED COUNTERCLAIMS - 3

CasePage 4 of 7 Page ID #:154

1 since the end of 2013. Accordingly, Party Bs loss is currently estimated

at
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$18,016.00.
13. Party B seeks injunctive relief to prevent Party A and XYZ from further
capitalizing on the goodwill of XYZwerk by confusing consumers.

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SECOND CAUSE OF ACTION

(Declaratory Relief)

14. Party B re-alleges and incorporates by reference paragraphs 1 through 6 of

its Counterclaim.

10 15. A real and actual controversy exists between the parties as to the right of
11 each or either to use and/or register the XYZ Marks.
12 16. Party B contends that after XYZwerk abandoned its trademarks, many
13 parties and entities, including the parties hereto but also many others, commenced
14 use of the XYZ Marks.
15 17. The public and/or consumers of XYZwerk products and/or Party A and
16 XYZ still associate the XYZ Marks with XYZwerk.
17 18. Party A and XYZs use of the XYZ Marks is deceptive. It confuses
18 consumers by conveying a false connection of Party A and XYZs goods, services,
19 and business with XYZwerk. Party A and XYZs use of the XYZ Marks further
20 confuses consumers by conveying a false designation of origin of Party A and
21 XYZs goods and services.
22 19. Party B believes that the original German XYZwerk company conveyed
23 its intellectual property rights and other rights to XYZ Only. Therefore Party A and
24 XYZs registration would be improper and invalid.
25 20. Based on the foregoing, Party A and XYZs XYZ Marks should be
26 invalidated, cancelled, and Party A and XYZ should not have exclusive use of the
27 XYZ Marks.
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AMENDED COUNTERCLAIMS - 4

CasePage 5 of 7 Page ID #:155

THIRD CAUSE OF ACTION

(Federal False Designation of Origin Pursuant to 43(a) of the Lanham Act)

21. Party B re-alleges and incorporates by reference paragraphs 1 through 6

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of its Counterclaim.
22. Party A and XYZs acts have caused, and are likely to continue to cause,

confusion as to the origin of goods and services under the XYZ Marks.

Consumers are likely to believe the goods and services of Party A and XYZ

8 originate with the original XYZ manufacturer, XYZwerk, or its proper successor
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or assignee.

10 23. Party A and XYZ has engaged in acts that constitute false advertising and
11 false designation of origin pursuant to 43(a) of the Lanham Act.
12 24. Party B seeks injunctive relief and request damages. Party B seeks an award
13 of damages resulting from Party A and XYZs conduct. As a result of Party A

and
14 XYZ attempting to enforce its alleged rights against Party B, business has declined.
15 Party A and

XYZ had Party Bs business website removed base on its federal

16 registrations. As a result, Party B is losing business reputation, goodwill, customers

17 and money as a result. Damages are calculated by the decrease in sales in S
18 XYZ products since the end of 2013. Accordingly, Party Bs loss is currently
19 estimated at $18,016.00.
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21 PRAYER FOR RELIEF ON COUNTERCLAIMS
22 WHEREFORE, DEFENDANT-COUNTERCLAIMANT prays for judgment
23 against PLAINTIFF-CROSSDEFENDANT as follows:
24 1. For preliminary and permanent injunction, prohibiting PLAINTIFF25 CROSSDEFENDANT from actions of unfair competition, false designation
26 of origin and false advertising;
27 2. For declaratory relief invalidating and/or cancelling the XYZ Marks;
28 3. For attorneys fees as allowable by law;

AMENDED COUNTERCLAIMS - 5

CasePage 6 of 7 Page ID #:156

4. For costs associated with this litigation;

5. For such other and further relief as this Court deems just and appropriate.

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Respectfully Submitted,

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AMENDED COUNTERCLAIMS - 6

CasePage 7 of 7 Page ID #:157

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Pursuant

to F.R.C.P. Rule 38 and Local Rule 38-1, Defendant-

Counterclaimant request a trial by jury.

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Respectfully Submitted,

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AMENDED COUNTERCLAIMS - 7