Haru Holding Co v. Harusaki Inc. - Trademark Complaint EDNY PDF

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 1 of 21 PageID #: 200
IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF NEW YORK
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HARU HOLDING CORP., a Delaware corporation,
Civil Action No.: 14-cv-4365 (JS) (AKT)
Plaintiff,
FIRST AMENDED COMPLAINT
-againstHARUSAKI INC., a New York corporation,

ALVIN ZHENG, an individual,
NEW HARU SAKI JAPANESE, INC., a New York
Corporation, and XUE QING CHEN, an individual,
JURY TRIAL DEMANDED
Defendants.
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Plaintiff, HARU HOLDING CORP., a Delaware corporation, by and through its
undersigned counsel, files this amended complaint against Defendants HARUSAKI INC., a
New York corporation, ALVIN ZHENG, an individual, NEW HARU SAKI JAPANESE, INC.,
a New York corporation, and XUE QING CHEN, an individual, and in support of its claims
alleges as follows:
THE PARTIES
1.
Plaintiff Haru Holding Corp. (Plaintiff or HHC) is a Delaware corporation
with a business address of 8750 NW 36th Street, Suite 300, Doral, Florida 33178.
2.
Upon information and belief, Defendant Harusaki Inc. (Harusaki) is an active
New York corporation with a business address of 282 Merrick Road, Rockville Centre, New
York 11570.
3.
Defendant Alvin Zheng (Zheng) is an individual residing at 48-33 Colden
Street, Flushing, NY 11355.

4.
Upon information and belief, Zheng is a shareholder and officer of Harusaki.
5.
Upon information and belief, Zheng is now, and has always been, the sole
shareholder and officer of Harusaki.

6.
Upon information and belief, Zheng and Harusaki have done business under the
names HARUSAKI INC., HARUSAKI, HARUSAKI JAPANESE RESTAURANT, and

HARUSAKI.US.
7.
Upon information and belief, Defendant New Haru Saki Japanese, Inc. (New
Haru) is an active New York corporation with a business address of 282-284 Merrick Road,
Rockville Centre, New York 11570.
Upon information and belief, New Haru does business
under the names HARUSAKI, HARUSAKI JAPANESE FINE CUISINE & SUSHI BISTRO,
NEW HARU SAKI JAPANESE, INC., HARUSAKI BAR & GRILL, HARUSAKI JAPANESE
RESTAURANT, and HARUSAKISUSHI.COM.
8.
Upon information and belief, Defendant Xue Qing Chen (Chen), is the Chief
Executive Officer of New Haru.

9.
Upon information and belief, Chen is now, and has always been, the sole
shareholder and officer of New Haru.
Harusaki, Zheng, New Haru and Chen may be
individually or collectively referred to as Defendants.

10.
Upon information and belief, Defendants currently (and/or at a prior time) own,
operate, and/or promote, individually and/or collectively, at least one restaurant, located at 282
Merrick Road (sometimes addressed as 282-284 Merrick Road), Rockville Centre, New York
11570 (the Restaurant).
11.
Upon information and belief, Defendants currently (and/or at a prior time), use the
trademarks, trade names and domain names, HARUSAKI INC., HARUSAKI, HARUSAKI
JAPANESE RESTAURANT, HARUSAKI JAPANESE FINE CUISINE & SUSHI BISTRO,
NEW HARU SAKI JAPANESE, INC., HARUSAKI BAR & GRILL, HARUSAKI JAPANESE
RESTAURANT, HARUSAKI.US, and HARUSAKISUSHI.COM, to advertise and promote the
Restaurant, to advertise and promote restaurant and catering services, and to sell food
(individually and/or collectively the Infringing Marks).
STATEMENT OF CASE
12.
This is a civil action seeking declaratory and injunctive relief, Defendants profits,
damages sustained by Plaintiff, treble damages, statutory damages, and costs of this action,
including, without limitation, attorneys fees, among other relief for: (i) infringement of federally
registered trademarks in violation of 32 of the Federal Trademark Act of 1946, also known as
the Lanham Act, codified at 15 U.S.C. 1114, et seq.; (ii) false designation of origin and unfair
competition in violation of 43(a) of the Lanham Act, codified as 15 U.S.C. 1125(a), et seq.;
(iii) cybersquatting under the Anti-Cybersquatting Consumer Protection Act, codified at 15
U.S.C. 1125(d)), et seq.; and (iv) trademark infringement in violation of N.Y.G.B.L. 360-K;
and (v) unfair competition and unfair trade practices in violation of common law.
13.
Plaintiff brings this action due to Defendants continued and willful infringement
of Plaintiffs federally-registered HARU Trademarks (as later defined), and Defendants use of
trademarks, trade names, and domain names, consisting of the HARU Trademarks and/or
marks confusingly similar to the HARU Trademarks, and/or Defendants use directly and/or
indirectly in concert with others, of the HARU Trademarks and trademarks, trade names, and
domain names including the word HARU, in connection with the advertising and promotion of
competing restaurant services. Defendants use of the confusingly similar Infringing Marks are
likely to bring to mind of consumers, Plaintiffs distinctive HARU Trademarks, create
consumer confusion, and create a false association between Plaintiff and Defendants.
14.
As set forth below, Defendants acts constitute federal and state trademark
infringement, false designation of origin, false description, unfair competition, cybersquatting,

and injury to business reputation, all in violation of 15 U.S.C. 1114 and 1125(a) and (d) and
New York General Business Law 360-K, 360-L, and unfair competition and unfair trade
practices in violation of New York common law.
JURISDICTION AND VENUE
15.
This action arises under the Lanham Act, 15 U.S.C. 1114, 1125(a), 1125(d),
and New York General Business Law 360-K, 360-L.

16.
This Court has original federal question subject matter jurisdiction over this
action pursuant to 28 U.S.C. 1331 and 1338 and 15 U.S.C. 1121.
This Court has
supplemental subject matter jurisdiction over Plaintiffs remaining state and common laws
claims under 28 U.S.C. 1367.
17.
This Court has personal jurisdiction over Defendants because Defendants have
substantial contacts with, are incorporated in (as to Harusaki and New Haru), and transact
business in, the State of New York and in this District. Among other things, Defendants
maintain a place of business at 282 Merrick Road (and/or 282-284 Merrick Road), Rockville
Centre, New York 11570 and advertise and promote restaurant services for the Restaurant
located at 282 Merrick Road, Rockville Centre, NY 11570. Defendants purposefully avail
themselves of the benefits and protections of New York law by regularly conducting business in
this State and District.
This Court also has personal jurisdiction over Defendants because
Defendants have committed willful acts in this State and District that are the subjects of the
claims set forth herein.
18.
Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c) because
each of the Defendants reside in this District, Defendants operate and do significant business in
this District, and because a substantial part of the events giving rise to the claims alleged herein
occurred in this District.
FACTS COMMON TO ALL COUNTS
THE INCONTESTABLE HARU TRADEMARKS
19.
Plaintiff operates several high profile restaurants in New York and Boston which
prominently use and display one or more of the federally-registered and state-registered
HARU trademarks and other common law trademarks, domain names and corporate names
consisting of the HARU trademark (collectively, the HARU Trademarks).
20.
Plaintiffs HARU restaurants serve traditional Japanese and inventive Japanese-
fusion cuisine in a trendy ambiance. Plaintiff also provides delivery and catering services,
private rooms and lounges, outdoor dining spaces and a vibrant bar scene.
21.
Plaintiff has continuously and extensively used the HARU Trademarks in
interstate commerce since as early as 1999 in connection with its restaurant, catering, and related
services.
22.
Plaintiffs goods/services have been highly publicized in connection with the
HARU Trademarks and by virtue of its promotion, advertising, and continuous use, Plaintiff
has acquired notoriety and a valuable reputation connected with the HARU brand.
23.
Plaintiff is the owner of the following federal trademark registrations for its
HARU Trademarks (individually and collectively referred to as the HARU Registrations),

including, without limitation, the following:
Trademark
HARU
Registration No.
Goods/Services
Incontestable
2,546,193
Restaurant services (Class 043).
Yes
2,709,147
Restaurant services (Class 043).
Yes
4,125,100
Restaurant, bar, and

services (Class 043).
catering
True and accurate copies of the above-referenced HARU Registrations are attached hereto as
Exhibit 1. Each of the HARU Registrations is valid, subsisting, and in full force and effect
and therefore, confers a nationwide right of exclusive use of the trademark in connection with the
goods/services applied for in the registrations pursuant to 15 U.S.C. 1057(c).
24.
Two of the HARU Registrations are incontestable, including the word mark
HARU, and thereby constitute conclusive evidence of Plaintiffs ownership and its exclusive
right to use the marks in connection with restaurant services in accordance with 15 U.S.C.
1065. In addition, the registrations are proof of the inherent distinctiveness of the HARU
Trademarks.
25.
Plaintiff is also the owner of the New York Trademark Registration No. S20853
for the mark HARU and Design, registered in connection with restaurant services in Class 042
(individually, the HARU New York Registration and collectively, as part of the HARU
Registrations). A true and correct copy of the New York Registration is attached as Exhibit 2.
THE GOODWILL IN THE HARU TRADEMARKS

AND THE FINE REPUTATION OF PLAINTIFF
26.
The HARU restaurants are popular among teppanyaki, Japanese fusion cuisine
and sushi enthusiasts alike and have received a great number of positive reviews on various
online websites like Yelp.com, Zagat.com, and Tripadvisor.com. Since opening the doors,
Plaintiff has continuously expended substantial resources to market, advertise, and promote its
HARU Trademarks in a variety of national media including without limitation, through print
and electronic media (e.g. harusushi.com, Facebook, and YouTube), television, and radio.
27.
As a result of extensive advertising and promotion, the HARU Trademarks
have acquired enormous value and have become distinctive and well-known to the consuming
public and the trade as identifying and distinguishing Plaintiffs goods/services.
28.
Due to the substantial success of Plaintiffs restaurants, the HARU Trademarks
have received extensive unsolicited publicity and media coverage.
Over the past decade,
HARU restaurants have become premier dining establishments.

29.
Plaintiffs registered and common law rights in its HARU Trademarks were
established long before any date of first use on which Defendants may rely.
HISTORY OF THE PARTIES
30.
On April 7, 2014, Plaintiff, by and through undersigned counsel, sent
correspondence to Defendants Zheng and Harusaki advising them of Plaintiffs objection to

Defendants use of the HARU Trademarks in connection with their restaurant located at 282
Merrick Road, Rockville Centre, New York 11570.
31.
Having received no response, Plaintiff, by and through undersigned counsel, sent
additional correspondence to Defendants Zheng and Harusaki on May 6, 2014.
32.
As of the initial filing of this action on July 18, 2014, Defendants Zheng and
Harusaki had not responded to Plaintiffs correspondence.

DEFENDANTS VIOLATIONS OF THE HARU TRADEMARKS
33.
Upon information and belief, on April 20, 2007, New Haru was incorporated with
the New York Department of State, Division of Corporations.

34.
Upon information and belief, Defendant Chen is the Chief Executive Officer of
New Haru.
35.
Upon information and belief, on September 28, 2011, Defendant Zheng registered
the domain name HARUSAKI.US. Further, upon information and belief, Defendant Zheng
designed the webpages which have appeared and/or are currently appearing at the
HARUSAKI.US domain name which Zheng posted and made accessible to the public. The
webpages currently appearing at the HARUSAKI.US domain name promote the Restaurant and
advertise and promote Defendants restaurant services at 282 Merrick Road, Rockville Centre,
New York 11570.
36.
On or about December 8, 2011, Defendants Zheng and Harusaki attempted to
secure a liquor license for the Restaurant located at 282-284 Merrick Road, Rockville Centre,
NY 11570.
37.
On or about March 2013, Defendant New Haru began to use the domain name
HARUSAKISUSHI.COM to advertise and promote Defendants restaurant services located at

282 Merrick Road, Rockville Centre, New York 11570.
38.
On or about November 2013, Defendant New Haru secured a liquor license from
the New York State Liquor Authority for the restaurant located at 282-284 Merrick Road,
Rockville Centre, New York 11570
39.
Defendants had knowledge of Plaintiffs superior rights to and interest in the
HARU Trademarks prior to purchasing and/or commencing use and/or registration of the
Infringing Marks. As a matter of law, Defendants were at least on constructive notice of
Plaintiffs HARU Trademarks due to the issuance by the United States Patent and Trademark
Office of the HARU Registrations prior to purchasing, and/or commencing their use and
registration of the Infringing Marks.
40.
Defendants also received notice of Plaintiffs rights to the HARU Trademarks
through Plaintiffs correspondence with Defendants, but nonetheless have continued to use the
Infringing Marks or marks confusingly similar to Plaintiffs registered marks.
THE LIKELIHOOD OF CONFUSION BETWEEN THE HARU TRADEMARKS AND
DEFENDANTS INFRINGING USES
41.
Defendants use and registration of the confusingly similar Infringing Marks as
part of their trade names, trademarks, and domain names to identify competing restaurant, bar,
restaurant take-out, and related services creates confusion and deception as to the source or
origin of Defendants (and/or their affiliates or business partners) goods/services and through
this use, Defendants are unfairly trading on the valuable reputation and goodwill embodied in the
HARU Trademarks.
42.
The sight, sound, and overall commercial impression conveyed by Defendants
Infringing Marks are confusingly similar to the HARU Trademarks.

43.
The type of goods/services being offered by Defendants in connection with the
Infringing Marks are identical to the type of goods/services being offered by Plaintiff in
connection with the HARU Trademarks.
44.
Defendants use of, and connection to the ownership of, and registration of a
domain name incorporating, the Infringing Marks are likely to cause consumers to mistakenly
believe that Defendants (and/or their affiliates or business partners) goods/services are
approved, endorsed, sponsored by, or affiliated with Plaintiff, or that Plaintiff is a source of
Defendants (and/or their affiliates or business partners) goods/services, or that those
goods/services are in some other way associated with Plaintiff, all to Plaintiffs injury and harm.
45.
Plaintiff has not granted any right, assignment or license to use its HARU
Trademarks to Defendants (and/or their affiliates or business partners) for any purpose
whatsoever.
46.
Defendants conduct not only infringes Plaintiffs rights in and to the HARU
Trademarks; it trades upon Plaintiffs goodwill and reputation; dilutes the distinctiveness of the
HARU Trademarks; causes a likelihood of confusion; and unfairly competes with Plaintiff.
47.
Defendants conduct has damaged, and continues to damage, Plaintiff.
To the
extent that Defendants (and/or their affiliates or business partners) goods/services are offered
improperly in connection with the HARU Trademarks, and do not conform to Plaintiffs
quality standards, such non-conformity has injured or is likely to injure Plaintiffs reputation and
goodwill.
COUNT 1: INFRINGEMENT OF A REGISTERED TRADEMARK
(15 U.S.C. 1114)
48.
Plaintiff hereby repeats and incorporates the allegations contained in Paragraphs 1
through 47 as if fully set forth herein.

49.
This claim is brought under 15 U.S.C. 1114.
50.
Plaintiff has continuously and extensively used the HARU Trademarks since as
early as 1999 and has not abandoned the marks.

51.
The HARU Registrations are valid and enforceable, and two of the
registrations, including the word mark for HARU, are incontestable.
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52.
Plaintiffs use and registration of the HARU Trademarks in the United States
for restaurant services predates the use of the Infringing Marks by Defendants.
53.
Defendants control, use, registration, and/or renewal of the Infringing Marks in
commerce, in connection with the sale, offering for sale, distribution, or advertising of
competing goods and/or services are likely to cause confusion, mistake, or deception with regard
to the origin of Defendants goods/services and to confuse, mislead, and deceive members of the
public into believing that Plaintiff has allowed, sponsored, approved, or licensed Defendants
(and/or their affiliates or business partners) to provide competing goods/services, or in some way
Defendants (and/or their affiliates or business partners) are connected to or affiliated with
Plaintiff, when Defendants are not.
54.
Any such confusion would result in injury or have a direct impact on Plaintiffs
reputation and its ability to market its own goods/services under the HARU Trademarks.
Furthermore, any defect, objection, or fault found with Defendants (and/or their affiliates or
business partners) goods/services would negatively impact and seriously injure the reputation
Plaintiff has established for the goods/services it sells under the HARU Trademarks.
55.
Upon information and belief, Defendants aforementioned infringing acts and
conduct were carried out willfully and with the intent and purpose of appropriating and trading
upon the goodwill and reputation of Plaintiff and the HARU Trademarks and to pass off
Defendants goods/services as Plaintiffs goods/services, or as having been sponsored or
approved by Plaintiff.
56.
Defendants control, use, registration, and/or renewal of the Infringing Marks was
without Plaintiffs permission, license, or consent. Defendants are not connected with Plaintiff
or the HARU Trademarks.
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57.
Plaintiff has objected to Defendants use, attempt to register, and/or registration of
the Infringing Marks and Defendants have intentionally ignored such demands and continue the
infringing conduct, intending to trade on the goodwill associated with the HARU trademarks.
58.
Defendants acts constitute willful and deliberate infringement of the federally-
registered HARU Trademarks in violation of 15 U.S.C. 1114.

59.
Defendants willful and callous misconduct makes this an exceptional case,
entitling Plaintiff to have any monetary remedies increased, up to three times such amount, and
to recover its attorneys fees under 15 U.S.C. 1117.
60.
Plaintiff has been and will continue to be irreparably injured by Defendants
conduct. Plaintiff cannot be adequately compensated for these injuries by monetary remedies
alone, and Plaintiff has no adequate remedy at law for Defendants infringement of its rights.
Plaintiff is therefore entitled to injunctive relief against Defendants, and, after trial, to recover
any damages proven to have been caused, or any profits of Defendants that have been earned
unjustly, by reason of Defendants acts of infringement.
COUNT 2: FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
(15 U.S.C. 1125(a))
61.

62.
This claim is brought under 15 U.S.C. 1125(a).
63.
The HARU Trademarks are valid and enforceable, and two of the federal
registrations, including the word mark for HARU, are incontestable.

64.
Defendants unauthorized use of the HARU Trademarks in their trade names,
trademarks, corporate names, and domain names, in commerce, in connection with the sale,
offering for sale, distribution, or advertising of goods/services, unfairly competes with Plaintiff,
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constitutes a false designation of origin and false description, and falsely represents to the public
that the goods/services advertised, sold, or offered for sale by Defendants (and/or their affiliates
or business partners) emanate from the same source or origin as Plaintiffs goods/services, or that
Plaintiff authorizes, endorses, sponsors, or otherwise approves those goods/services, when
Plaintiff does not.
65.
Defendants, with knowledge of such falsity, directly and/or indirectly, offered or
caused to be offered, advertised, and sold goods/services in connection with trademarks, trade
names, and domain names that are confusingly similar to the HARU Trademarks.
66.
Defendants use, ownership and registration of the Infringing Marks are all
Plaintiff has objected to Defendants use, ownership, and/or
registration of the Infringing Marks and Defendants have intentionally ignored such demands
and continue to use the Infringing Marks, intending to trade on the goodwill associated with the
HARU Trademarks.
67.
Defendants acts constitute false designation of origin, false suggestion and false
connection with the HARU Trademarks and unfair competition in violation of 15 U.S.C.
1125(a).
68.
Defendants willful and callous misconduct make this an exceptional case,
entitling Plaintiff to have any monetary remedies increased up to treble damages, and to recover
its attorneys fees under 15 U.S.C. 1117.
69.
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unjustly, by reason of Defendants acts of infringement and unfair competition.
COUNT 3: VIOLATION OF THE ANTI-CYBERSQUATTING
CONSUMER PROTECTION ACT
(15 U.S.C. 1125(d))
70.
Plaintiff hereby repeats incorporates the allegations contained in Paragraphs 1

71.
This claim is brought under 15 U.S.C. 1125(d).
72.
On information and belief, Defendants control, owns and/or maintains the
HARUSAKI.US domain name and HARUSAKISUSHI.COM (Domain Names), which are

confusingly similar to Plaintiffs distinctive HARU Trademarks, and are using the said
Domain Names with bad faith intent to profit from Plaintiffs distinctive the HARU
Trademarks.
73.
Defendants use the Domain Names in connection with advertising and promoting
at least one restaurant located at 282 Merrick Road, Rockville Centre, New York 11570.
74.
Defendants unauthorized use of the HARU Trademarks in their Infringing
Marks, including, without limitation, in the use of the Domain Names is likely to cause
confusion, mistake, or deception with regard to the origin of Defendants goods/services and to
confuse, mislead, and deceive members of the public into believing that Plaintiff has allowed,
sponsored, approved, or licensed Defendants to provide the same goods/services, or in some way
Defendants are connected to or affiliated with Plaintiff, when they are not.
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75.
This is particularly true since the Domain Names consist of and/or incorporate the
HARU Trademarks and is nearly identical and confusingly similar to Plaintiffs HARU
Trademarks.
76.
Defendants
use
and
continue
to
use
the
HARUSAKI.US
and
HARUSAKISUSHI.COM Domain Names in bad faith, long after Defendants had constructive
and actual notice of Plaintiffs federally registered HARU Trademarks. Defendants lack any
rights and do not have any legitimate interest in and to the Infringing Marks.
77.
Defendants acts constitute cybersquatting in violation of 15 U.S.C. 1125(d).
78.
unjustly, by reason of Defendants acts of infringement and cybersquatting.
79.
By reason of the foregoing, Plaintiff is entitled to a transfer of the Domain Names
and to an award of statutory damages of $100,000 per Domain Name. Defendants willful
misconduct makes this an exceptional case, entitling Plaintiff to recover its attorneys fees
pursuant to 15 U.S.C. 1117.
COUNT 4: TRADEMARK INFRINGEMENT IN VIOLATION OF N.Y.G.B.L. 360-K
AS TO HARU TRADEMARKS
80.
Plaintiff hereby repeats incorporates the allegations contained in Paragraphs 1

81.
Plaintiff has continuously and extensively used the HARU Trademarks since as
early as 1999 in the State of New York and has not abandoned the marks.
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82.
Plaintiff owns New York Registration No. S20853 for the mark HARU in
connection with restaurant services in International Class 042.

83.
Defendants are using, without Plaintiffs consent, a reproduction, counterfeit,
copy or colorable imitation of the HARU mark in connection with the sale, distribution,
offering for sale, or advertising of Defendants restaurant services and such use is likely to cause
confusion or mistake or to deceive as to the source of origin of such goods/services.
84.
Defendants acts constitute trademark infringement in violation of N.Y. Gen. Bus.
Law 360-K.
85.
By reason of Defendants acts alleged herein, Plaintiff has suffered and, unless
Defendants conduct is restrained, will continue to suffer serious and irreparable harm for which
there is no adequate remedy at law.
COUNT 5: INJURY TO BUSINESS REPUTATION (NEW YORK)
N.Y.G.B.L. 360-L
86.

87.
Since as early as 1999, Plaintiff has continuously, extensively, and exclusively
used the HARU Trademarks in the State of New York to advertise, promote, and offer
restaurant, catering, takeout and related services.
88.
As a result of Plaintiffs use, the HARU Trademarks have become well-known,
distinctive and famous --- particularly in the State of New York.

89.
Defendants are using, without Plaintiffs consent, a reproduction, counterfeit,
copy or colorable imitation of the HARU mark in connection with the sale, distribution,
offering for sale, or advertising of Defendants restaurant services and such use is likely to cause
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injury to Plaintiffs business reputation and the goodwill embodied in the HARU Trademarks
and dilutes the distinctive quality of the marks.
90.
Upon information and belief, Defendants conduct was done with the intent and
purpose of appropriating and trading upon the goodwill and reputation embodied in the HARU
Trademarks, and of passing off Defendants goods/services as those of Plaintiff.
91.
The acts complained of have diluted, blurred and tarnished the strong and positive
association between Plaintiff and the HARU Trademarks by causing the HARU Trademarks
to be associated with goods/services not controlled, approved, or authorized by Plaintiff. Such
conduct is in violation of New York Gen. Bus. Law 360-L.
92.
By reason of Defendants acts alleged herein, Plaintiff has suffered and, unless
Defendants conduct is restrained, will continue to suffer serious and irreparable harm for which
there is no adequate remedy at law.
COUNT 6: COMMON LAW UNFAIR COMPETITION
AND UNFAIR TRADE PRACTICES
93.

94.
This is a claim for common law unfair competition and unfair trade practices
arising under the common law of the Commonwealth of New York.

95.
Defendants unauthorized use of the HARU Trademarks in their trade names,
trademarks, corporate names, and/or domain names in commerce, in connection with the sale,
offering for sale, distribution, or advertising of goods or services, unfairly competes with
Plaintiff, constitutes a false designation of origin and false description, and falsely represents to
the public that the goods/services advertised, sold, or offered for sale by Defendants (and/or their
affiliates or business partners) emanate from the same source or origin as Plaintiffs
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goods/services, or that Plaintiff authorizes, endorses, sponsors, or otherwise approves those

goods/services, when Plaintiff does not.
96.
Defendants, with knowledge of such falsity, directly and/or indirectly, offered or
caused to be offered, advertised, and sold goods/services in connection with trademarks, trade
names, and/or domain names that are confusingly similar to the HARU Trademarks.
97.
Defendants use, ownership and registration of the Infringing Marks are all
Plaintiff has objected to Defendants use, ownership, and/or
registration of the Infringing Marks and Defendants have intentionally ignored such demands
and continue to use the Infringing Marks, intending to trade on the goodwill associated with the
HARU Trademarks.
98.
Defendants actions constitute common law unfair competition and unfair trade
practices in violation of the common law of New York.

DEMAND FOR JURY TRIAL
Plaintiff respectfully requests a trial by jury in this action of all issues so triable.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Haru Holding Corp. respectfully prays for the following relief
against Defendants:
(a) An order declaring that Defendants unauthorized conduct violates the Lanham Act,
15 U.S.C. 1114, 1125(a), and 1125(d), and New York common law;
(b) An order requiring Defendants to provide an inventory list of all domain names and
all articles, materials and tangible things in Defendants possession, custody, or
control, consisting of any of the HARU Trademarks, or colorable imitations
thereof;
(c) An order declaring that Defendants unauthorized conduct violates New York Gen.
Bus. Law 360-K and 360-L;
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(d) An order permanently enjoining and restraining Defendants and those in active
concert and participation with Defendants from:
1. Further infringing and/or making any use of any of the HARU Trademarks,
the word HARU, or any colorable imitation thereof, using or registering any
trademark or domain name incorporating or confusingly similar to any of the
HARU Trademarks, using, registering or renewing any trademark or
domain name constituting or incorporating any of the Infringing Marks, any
corresponding trademarks, and/or any domain name or trademark confusingly
similar thereto to advertise, promote, display or sell any good/service;
2. Making any further use of the Infringing Marks or any domain name,
trademarks, corporate names, trade names, or designations consisting of, in
whole or in part, any of the HARU Trademarks, the term HARU, or any
colorable imitation thereof, and/or any domain name, trademark, corporate
name, trade name, or designation confusingly similar to the HARU
Trademarks;
3. Registering, renewing, purchasing, and/or acquiring any trademarks, domain
names, trade names, corporate names, and/or designations, consisting of, in
whole or in part, any of the HARU Trademarks, the term HARU, or any
colorable imitation thereof, or any domain name, trademark, corporate name,
trade name, or designation confusingly similar thereto;
4. Representing or suggesting to any third party that Defendants are affiliated
with, sponsored by, licensed by, or otherwise connected with Plaintiff and/or
the HARU Trademarks; and
5. Otherwise unfairly competing with Plaintiff;
(e) An order compelling Defendants to transfer registration to Plaintiff of any and all
rights it has in any of the Infringing Marks, including, without limitation, the
HARUSAKI. US and HARUSAKISUSHI.COM domain names and/or any other
trademarks, corporate names, trade names, and/or designations consisting of, in whole
or in part, any of the HARU Trademarks, the term HARU, or any colorable
imitation thereof, and/or any domain name, trademark, corporate name, trade name,
or designation confusingly similar thereto;
(f) An order compelling Defendants to remove all signs, and to recall all copies of print
or electronic media, press releases, promotions, or advertisements in Defendants
control bearing the HARU Trademarks or colorable imitations thereof and/or the
Infringing Marks, and all related goods/services and/or materials, articles or tangible
things, pursuant to 15 U.S.C. 1118;
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(g) An order directing any other relief that the Court may deem appropriate to prevent the
public from deriving any erroneous impression that any goods/services offered by
Defendants are authorized by Plaintiff or are in any way related to Plaintiff, Plaintiffs
goods/services, and/or the HARU Trademarks;
(h) An order directing an accounting and judgment be rendered against Defendants for:
1. Plaintiffs damages and Defendants profits from their infringement and
misuse of the HARU Trademarks as provided for in 15 U.S.C. 1117;
2. All profits received by Defendants and all damages sustained by Plaintiff on
account of Defendants unfair competition and false designation of origin
through the use of the HARU Trademarks under 15 U.S.C. 1117;
3. Damages to Plaintiff for Defendants wrongful conduct, including treble
damages for Defendants intentional and willful conduct pursuant to 15
U.S.C. 1117;
4. Plaintiffs damages and/or Defendants profits for unfair competition and/or
unfair trade practices under the common law, including punitive and
exemplary damages;
5. Plaintiffs reasonable costs and attorneys fees incurred in connection with
this lawsuit, pursuant to 15 U.S.C. 1117;
6. Pre-judgment and post-judgment interest and costs by virtue of Defendants
infringement of Plaintiffs HARU Trademarks, cybersquatting, unfair
competition and/or unfair trade practices;
7. All available remedies available to Plaintiff pursuant to New York Gen Bus.
Law 360-M including, an award of profits, damages, impoundment, and
reasonable attorneys fees; and
(i) Any other and further relief as this Court may deem just and proper.
Dated: November 25, 2014
BRAD M. BEHAR & ASSOCIATES, PLLC
By: /s/ Janet C. Moreira____________

Brad M. Behar
94 Second Street
Mineola, NY 11501-3008
Tel: 516.741.6500
Fax: 516.741.6510
20
E-mail: bbehar@beharlawfirm.com
Janet C. Moreira
MAVEN INTELLECTUAL PROPERTY
333 S.E. 2nd, Ave., Suite 2000
Miami, FL 33131
Tel: 305.967.7450
Fax: 305.967.7450
E-mail: janet@maveniplaw.com
Attorneys for Plaintiff
HARU HOLDING CORP.
21

Haru Holding Co v. Harusaki Inc. - Trademark Complaint EDNY PDF

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Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 1 of 21 PageID #: 200

IN THE UNITED STATES DISTRICT COURT

-againstHARUSAKI INC., a New York corporation,

JURY TRIAL DEMANDED

Plaintiff Haru Holding Corp. (Plaintiff or HHC) is a Delaware corporation

Upon information and belief, Defendant Harusaki Inc. (Harusaki) is an active

Defendant Alvin Zheng (Zheng) is an individual residing at 48-33 Colden

Street, Flushing, NY 11355.

Upon information and belief, Zheng is a shareholder and officer of Harusaki.

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 2 of 21 PageID #: 201

shareholder and officer of Harusaki.

names HARUSAKI INC., HARUSAKI, HARUSAKI JAPANESE RESTAURANT, and

Upon information and belief, New Haru does business

Executive Officer of New Haru.

shareholder and officer of New Haru.

Harusaki, Zheng, New Haru and Chen may be

individually or collectively referred to as Defendants.

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 3 of 21 PageID #: 202

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 4 of 21 PageID #: 203

infringement, false designation of origin, false description, unfair competition, cybersquatting,

and New York General Business Law 360-K, 360-L.

action pursuant to 28 U.S.C. 1331 and 1338 and 15 U.S.C. 1121.

This Court has

This Court also has personal jurisdiction over Defendants because

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 5 of 21 PageID #: 204

Plaintiffs HARU restaurants serve traditional Japanese and inventive Japanese-

Plaintiff has continuously and extensively used the HARU Trademarks in

Plaintiffs goods/services have been highly publicized in connection with the

HARU Trademarks (individually and collectively referred to as the HARU Registrations),

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 6 of 21 PageID #: 205

Restaurant services (Class 043).

Restaurant services (Class 043).

Restaurant, bar, and

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 7 of 21 PageID #: 206

THE GOODWILL IN THE HARU TRADEMARKS

As a result of extensive advertising and promotion, the HARU Trademarks

Due to the substantial success of Plaintiffs restaurants, the HARU Trademarks

have received extensive unsolicited publicity and media coverage.

Over the past decade,

HARU restaurants have become premier dining establishments.

On April 7, 2014, Plaintiff, by and through undersigned counsel, sent

correspondence to Defendants Zheng and Harusaki advising them of Plaintiffs objection to

Having received no response, Plaintiff, by and through undersigned counsel, sent

additional correspondence to Defendants Zheng and Harusaki on May 6, 2014.

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 8 of 21 PageID #: 207

Harusaki had not responded to Plaintiffs correspondence.

the New York Department of State, Division of Corporations.

On or about December 8, 2011, Defendants Zheng and Harusaki attempted to

HARUSAKISUSHI.COM to advertise and promote Defendants restaurant services located at

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 9 of 21 PageID #: 208

Defendants had knowledge of Plaintiffs superior rights to and interest in the

Defendants also received notice of Plaintiffs rights to the HARU Trademarks

Defendants use and registration of the confusingly similar Infringing Marks as

The sight, sound, and overall commercial impression conveyed by Defendants

Infringing Marks are confusingly similar to the HARU Trademarks.

The type of goods/services being offered by Defendants in connection with the

Case 2:14-cv-04365-JS-AKT Document 31 Filed 11/25/14 Page 10 of 21 PageID #: 209

Defendants conduct has damaged, and continues to damage, Plaintiff.

Plaintiff hereby repeats and incorporates the allegations contained in Paragraphs 1

through 47 as if fully set forth herein.

This claim is brought under 15 U.S.C. 1114.

early as 1999 and has not abandoned the marks.