UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WISCONSIN GREEN BAY DIVISION ________________________________________________________________________ GLUE DOTS INTERNATIONAL, LLC

5515 South Westridge Drive New Berlin, WI 53151, Plaintiff, v. MEGA BRANDS AMERICA, INC. d/b/a Rose Art Industries, L.L.C. 3 Ada, Ste. # 200 Irvine, CA 92618 Defendant. ________________________________________________________________________ COMPLAINT ________________________________________________________________________ Plaintiff, Glue Dots International, LLC ("Glue Dots"), by its attorneys Reinhart Boerner Van Deuren s.c., for its complaint against Defendant MEGA Brands America, Inc., d/b/a Rose Art Industries, L.L.C. ("Rose Art"), alleges as follows:; NATURE OF THE ACTION 1. This is an action for patent infringement under the patent laws of the Case No.

United States, 35 U.S.C. 1 et seq., and trademark infringement under the United States Lanham Act 43(a), 15 U.S.C. 1125(a). PARTIES 2. Plaintiff, Glue Dots, is a limited liability company organized and existing

under the laws of the State of Wisconsin, with its principal place of business located at 5515 South Westridge Drive, New Berlin, Wisconsin 53151.

3.

Upon information and belief, Rose Art is a corporation organized and

existing under the laws of the State of New Jersey, with its principal place of business located at 3 Ada, Ste. #200, Irvine, California 92618. Its registered agent for service of process is Michael Cerillo, 215 Deininger Circle, Corona, California 92880. JURISDICTION AND VENUE 4. This Court has original jurisdiction of this action pursuant to 28 U.S.C.

1331 and 1338(a). 5. Venue in this district is proper pursuant to 28 U.S.C. 1391(b) and

1400(b) because Rose Art does substantial and not isolated business within this district and, therefore, resides here. FACTUAL BACKGROUND A. Glue Dots' Patents 6. On August 10, 1999, United States Patent No. 5,935,670 (the "'670

Patent"), to inventor John P. Downs, entitled "Thermoplastic Adhesive Dispensing Method and Apparatus," was duly and legally issued to Downs' assignee, All-Pak Sales, Inc. On or about September 1, 1999, All-Pak Sales, Inc. assigned the '670 Patent to AP Acquisition, LLC. AP Acquisition, LLC changed its name to All-Pak Sales, LLC, which later changed its name to Glue Dots International, LLC ("Glue Dots"). Glue Dots is the current owner of all right, title, and interest in and to the '670 Patent, including the right to sue for all past and present infringement of the '670 Patent. A true and correct copy of the '670 Patent is attached to this Complaint as Exhibit A and is incorporated herein. 7. On February 3, 2004, United States Patent No. 6,686,016 (the "'016

Patent"), to inventor John P. Downs, entitled "Thermoplastic Adhesive Dispensing

Method and Apparatus," was duly and legally issued to Downs' assignee, Glue Dots. Glue Dots is the current owner of all right, title, and interest in and to the '016 Patent, including the right to sue for all past and present infringement of the '016 Patent. A true and correct copy of the '016 Patent is attached to this Complaint as Exhibit B and is incorporated herein. 8. Patents. B. Glue Dots' Trademarks 9. Glue Dots owns several federally registered trademarks for GLUE DOTS, Glue Dots sells products practicing and embodying the '670 and '016

including U.S. Federal Trademark Registration No. 3,160,843 and incontestable Registration Nos. 2,514,151; 2,781,785; and 2,810,154. Copies of the registration certificates for these registrations are attached hereto as Exhibit C. 10. Glue Dots has established substantial goodwill and reputation for products

that bear the GLUE DOTS mark, and incurs considerable expense to actively enforce its rights in and to the GLUE DOTS mark. 11. Through Glue Dots' extensive use, the GLUE DOTS name and mark have

become famous, and Glue Dots has become a trusted brand. 12. Glue Dots has not authorized Rose Art to use Glue Dots' trademarks, and

Glue Dots has not sponsored or approved any of Rose Art's products. C. Rose Art's Unauthorized and Infringing Conduct 13. Rose Art has been and is importing, using, selling, or offering for sale

thermoplastic hot melt adhesive segments or disks on release carrier tape (the "Infringing

Products") that infringe one or more claims of the '016 Patent and the '670 Patent under 35 U.S.C. 271. 14. Dots. 15. Rose Art competes with Glue Dots. Upon information and belief, Rose The Infringing Products include a product identified as Rose Art Sticky

Art advertises and sells the Infringing Products throughout the United States, including the State of Wisconsin and the Eastern District of Wisconsin, including at retail locations such as Target. In addition, Rose Art sells the Infringing Products through a worldwide web site. A copy of Rose Art's web site allowing consumers to shop online is attached as Exhibit D. 16. Rose Art is not now, and never has been, licensed or otherwise authorized

by Glue Dots to import, use, sell, or offer for sale products covered by the '016 Patent or the '670 Patent. 17. In addition to infringement of Glue Dots' patents, Rose Art is using the

GLUE DOTS trademark in connection with the sale of adhesive products, including in connection with the sale of the Infringing Products. 18. Upon information and belief, Rose Art's use of the GLUE DOTS mark is

willful and intentional, done expressly for the purpose of trading upon the valuable goodwill and public recognition built up by Glue Dots and in the GLUE DOTS trademark. 19. Upon information and belief, Rose Art has engaged in, and continues to

engage in, the above acts willfully and with actual knowledge of Glue Dots' ownership

rights, and has done so for its own commercial gain through use of Glue Dots' valuable goodwill and business reputation in violation of the rights of Glue Dots. 20. Glue Dots has not granted consent, either written or otherwise, to Rose Art

to distribute, sell, or offer products or services bearing the GLUE DOTS trademark. COUNT I ('670 PATENT INFRINGEMENT) 21. Glue Dots repeats and realleges the allegations contained in paragraphs 1

through 20 above as if fully set forth herein. 22. At all relevant times, Rose Art and the public in general have had notice of

the '670 Patent because Glue Dots has marked the packaging of its products embodying the '670 Patent in accordance with 35 U.S.C. 287. 23. Rose Art has infringed and is still infringing one or more claims of the

'670 Patent by importing, using, selling, or offering for sale the Infringing Products. 24. As a result of the infringement of the '670 Patent by Rose Art, Glue Dots

has been and will continue to be irreparably injured unless enjoined by the Court, for which injury Glue Dots has no adequate remedy at law. 25. Glue Dots also has suffered and continues to suffer damages as a result of

Rose Art's infringement. COUNT II ('016 PATENT INFRINGEMENT) 26. Glue Dots repeats and realleges the allegations contained in paragraphs 1

through 25 above as if fully set forth herein. 27. Rose Art has infringed and is still infringing one or more claims of the

'016 Patent by importing, using, selling, or offering for sale the Infringing Products.

28.

At all relevant times, Rose Art and the public in general have had notice of

the '016 Patent because Glue Dots has marked the packaging of its products embodying the '016 Patent in accordance with 35 U.S.C. 287. 29. As a result of that infringement of the '016 Patent by Rose Art, Glue Dots

has been and will continue to be irreparably injured unless enjoined by the Court, for which injury Glue Dots has no adequate remedy at law. 30. Glue Dots also has suffered and will continue to suffer damages as a result

of Rose Art's infringement. COUNT III (TRADEMARK INFRINGEMENT, FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION IN VIOLATION OF THE LANHAM ACT, 15 U.S.C. 1125(a)) 31. Glue Dots repeats and realleges the allegations contained in paragraphs 1

through 30 above as if fully set forth herein. 32. 33. Glue Dots owns a protectable interest in its GLUE DOTS trademarks. Rose Art's use of Glue Dots' trademarks and property as described above

constitutes trademark infringement, false designation of origin, or false or misleading description of fact which is likely to cause confusion among relevant consumers, or to cause mistake, or to deceive as to the affiliation, connection or association of Rose Art with Glue Dots, or as to the origin, sponsorship, or approval of Rose Art's goods and services in commercial activities by Glue Dots, in violation of section 43(a) of the Lanham Trademark Act of 1946, as amended, 15 U.S.C. 1125(a). 34. As a result of Rose Art's conduct as alleged above, Glue Dots has suffered

and will continue to suffer damage and injury to its business, reputation, and goodwill.

35.

Unless this Court enjoins Rose Art's conduct, Glue Dots will continue to

suffer damage and injury to its business, reputation, and goodwill, all to the irreparable harm of Glue Dots. Glue Dots has no adequate remedy at law for Rose Art's ongoing conduct, in the absence of injunctive relief. COUNT IV (TRADEMARK DILUTION) 36. Glue Dots repeats and realleges the allegations contained in paragraphs 1

through 35 above as if fully set forth herein. 37. The GLUE DOTS mark is distinctive and famous and is entitled to

protection against dilution by blurring or tarnishment. 38. Rose Art commenced use of the GLUE DOTS mark in commerce after the

mark had become famous and distinctive. 39. Rose Art's use in commerce of the GLUE DOTS mark in connection with

the sale of adhesive products has caused dilution of the distinctive quality of the GLUE DOTS mark, and infringes Glue Dots' rights to its famous mark, in violation of 15 U.S.C. 1125(c). 40. As a result of Rose Art's dilution of the GLUE DOTS mark, Glue Dots has

suffered substantial damages, as well as the continuing loss of the goodwill and reputation established by Glue Dots in its marks. This continuing loss of goodwill cannot be properly calculated and thus constitutes irreparable harm and an injury for which Glue Dots has no adequate remedy at law. Glue Dots will continue to suffer irreparable harm unless this Court enjoins Rose Art's conduct.

PRAYER FOR RELIEF WHEREFORE, Glue Dots respectfully requests that the Court enter a judgment against Rose Art as follows: A. Adjudging that Rose Art has infringed United States Patent No. 6,686,016

and United States Patent No. 5,935,670; B. Pursuant to 35 U.S.C. 283, preliminarily and permanently enjoining

Rose Art and its officers, agents, servants, employees, attorneys, and all persons in active concert or participation with any of them, from any further acts of infringement of the '016 Patent and/or the '670 Patent; C. Pursuant to 35 U.S.C. 284, awarding Glue Dots any compensatory

damages, including increased damages, proven at trial and deemed appropriate by the Court; D. Preliminarily and permanently enjoining and restraining Rose Art, its

employees, agents and representatives, and all persons acting in concert or in participation with Rose Art, from using on or in connection with any business, service, or the sale, or offering for sale, distribution, advertising, promotion, labeling or packaging, of any services or any goods, or from using for any commercial purpose whatsoever, Plaintiff's federally registered GLUE DOTS trademark or any other word or thing calculated or likely to cause confusion or mistake to the public mind or to deceive the public into the belief that Rose Art or Rose Art's products or services are related, endorsed or sponsored in any way to or by Glue Dots or its services; and any other false designation or false description or representation or any other thing calculated or likely to

injure the business reputation of Glue Dots or to harm or dilute the distinctive quality of Glue Dots' protectable trademark rights; E. Directing Rose Art to notify all of its customers that Rose Art is not

affiliated with Glue Dots and is not entitled to use the GLUE DOTS trademark; F. Requiring Rose Art to deliver to the Court for destruction, or to show

proof (upon the oath of Rose Art's authorized agent) of such destruction, or sufficient modification to eliminate the infringing matter, of any and all products, displays, labels, signs, circulars, kits, wrappers, packaging, letterheads, business cards, advertisements, promotional items, literature, sales aids, or other material in the possession, custody or under the control of Rose Art or Rose Art's agents or distributors, including any materials posted on any website(s) controlled or owned by, developed or maintained on behalf of Rose Art, which bear or depict in any manner Glue Dots' trademarks, including but not limited to the GLUE DOTS trademark and designation; G. Directing Rose Art to recall from any and all channels of distribution any

products, advertising and promotional materials distributed by Rose Art, or Rose Art's agents or distributors, bearing the GLUE DOTS trademark or any other matter or materials in violation of any injunction entered herein; H. Directing Rose Art to account to Glue Dots for Rose Art's profits and

ordering that Glue Dots shall recover from Rose Art all of its damages and costs arising from the foregoing acts of intentional infringement and unfair competition, and at a sum equal to three times the damages and costs pursuant to 15 U.S.C. 1117; I. Awarding to Glue Dots its reasonable attorney's fees incurred as a result of

this action, in accordance with applicable law, including 15 U.S.C. 1117;

J.

Awarding to Glue Dots the costs of this action, including expert witness

fees, in accordance with applicable law; K. Awarding to Glue Dots pre-judgment and post-judgment interest on any

monetary award according to the maximum allowable legal rate; and L. Requiring Rose Art to file with this Court and to serve on Glue Dots,

within thirty (30) days after service of any injunction, a report in writing and under oath setting forth in detail the manner and form in which Rose Art has complied with the injunction; M. Awarding to Glue Dots any such further award or relief as the Court

deems just and proper, including pre-judgment interest, post-judgment interest, attorneys' fees, costs, and disbursements of this action. DEMAND FOR JURY Plaintiff, Glue Dots International, LLC, hereby demands a jury trial of all matters so triable. Dated this 11th day of February, 2013. Reinhart Boerner Van Deuren s.c. 1000 North Water Street, Suite 2100 Milwaukee, WI 53202-3186 414-298-1000 Mailing Address: P.O. Box 2965 Milwaukee, WI 53201-2965 Paul J. Stockhausen WI State Bar ID No. 1034225 Thomas M. Burnett WI State Bar ID No. 1076010 BY s/ Thomas M. Burnett Attorneys for Plaintiff, Glue Dots International, LLC

9482971

10