Meowingtons V Zimmerman

Case 0:17-cv-60521-XXXX Document 1 Entered on FLSD Docket 03/13/2017 Page 1 of 24
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA
FORT LAUDERDALE DIVISION
CASE NO:
MEOWINGTONS, LLC,
a Florida limited liability company,
Plaintiff,
vs.
JOEL ZIMMERMAN p/k/a DEADMAU5,

an individual; PROF. MEOWINGTONS,
LTD.; and RONICA HOLDINGS LTD.,
Defendant.
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COMPLAINT
Plaintiff, MEOWINGTONS, LLC (hereinafter Plaintiff), brings this action, by and
through the undersigned attorneys, against Defendants, JOEL ZIMMERMAN p/k/a
DEADMAU5, PROF. MEOWINGTONS LTD. and RONICA HOLDINGS LTD. (hereinafter
Defendants), for injunctive relief, declaratory relief and damages, and in support thereof
alleges that:
PARTIES
1. Plaintiff is a Florida Limited Liability Company with a principal place of
business at 5231 NE 33rd Avenue Fort Lauderdale, Florida 33308.
2. Upon information and belief, Defendant, JOEL ZIMMERMAN p/k/a
DEADMAU5 (ZIMMERMAN) is an individual who resides at 8160 Twiss Road Milton,
Ontario L0P 1B0.

3. Upon information and belief, Defendant, PROF. MEOWINGTONS LTD. (PM
LTD) is a Canadian corporation with a principal place of business at 16000 Ventura Boulevard,
Suite 600, Encino, California 91436. Defendant PM LTD is wholly-owned and controlled by
Defendant ZIMMERMAN.
4. Upon information and belief, Defendant, RONICA HOLDINGS LTD.
(RONICA) is a private company limited by shares legally organized under the laws of the
British Virgin Islands with a principal place of business at 16000 Ventura Boulevard, Suite 600,
Encino, California 91436. Defendant RONICA is believed to be wholly-owned and controlled
by Defendant ZIMMERMAN, either directly or indirectly.
JURISDICTION
5. This Court has subject matter jurisdiction over this action under 15 U.S.C.
1119, 1121 and 28 U.S.C. 1338 (a), because this case arises under the Federal Trademark Act
of 1946, as amended, 15 U.S.C. 1051, et seq. and under 28 U.S.C. 2201 and 2202 because
this case also arises under the Federal Declaratory Judgment Act.
6. This Court also has subject matter jurisdiction over this action under 28 U.S.C.
1332, as there is complete diversity of citizenship between Plaintiff and Defendants. In addition,
the amount in controversy, exclusive of interest and costs, exceeds the sum of seventy-five
thousand dollars ($75,000.00).
7. The exercise of personal jurisdiction over Defendants in the State of Florida, and
venue in this judicial district is just and proper for several reasons. Defendants directly or
indirectly own, operate, maintain, or control interactive websites and social media profiles,
accessible from this judicial district, and have advertised goods and services to this judicial
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Santucci Priore, P.L. 200 S. Andrews Avenue, Suite 100, Fort Lauderdale, Florida 33301
district. Through their applications for United States Trademark Registration, Defendants have
alleged that they have used, or intend to use the subject trademark in United States and interstate
commerce. Furthermore, given Plaintiffs domicile in this judicial district, the harm from the
complained of acts were suffered and felt by Plaintiff in this judicial district. Moreover,
Defendant ZIMMERMAN regularly performs in the State of Florida, particularly in the
Southern District of Florida, and otherwise has continuous and systematic contacts with Florida-
based businesses and individuals.
GENERAL ALLEGATIONS APPLICABLE TO ALL CAUSES OF ACTION
a) Plaintiffs Trademark Rights
8. Plaintiff is a leading producer of trendy cat themed products in the United States.
Plaintiff produces and sells a variety of cat themed products, namely, clothing, apparel, jewelry,
watches, bags, pet products and provides online retail store services featuring the same
(Plaintiffs Goods and Services). Plaintiffs online retail store is located at
www.meowingtons.com.
9. Plaintiff has used the mark MEOWINGTONS, and similar variations, in
connection with the production, manufacturing, offering for sale and sale of Plaintiffs Goods
and Services throughout the State of Florida, the United States and various other countries since
at least April 1, 2014 (Plaintiffs Mark).
10. Plaintiffs founder Emma Bassiri is a young entrepreneur who, in or about 2013
saw massive opportunities in businesses that target the underserved demographic of cat owners
and cat enthusiasts. Bassiri envisioned a brand that would represent the source of a variety of
products for cats and their humans counterparts. For many months, she worked on a visual
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presentation to make to her supervisors at the jewelry company that employed her, and to its
investors. They were thrilled with her market research and vision. She then took various diligent
steps prior to, and upon launching her Meowingtons business such as conducting trademark,
domain name and corporate name searches. She found her first choice of brand names available
for registration.
11. On February 11, 2014, Bassiri, on behalf of Plaintiff, registered the domain name
www.meowingtons.com without objection or complaint from Defendants or anyone.
12. On or about July 15, 2014, Plaintiff applied for registration of the word mark
MEOWINGTONS with the United States Patent and Trademark Office (USPTO) to its
Principal Register. The application was published for third parties to oppose during the
Opposition Period. Neither Defendant, nor anyone else opposed Plaintiffs application.
13. On March 31, 2015, Plaintiffs trademark was granted and Registration No:
4,711,265 issued to the Principal Register, directed to the mark MEOWINGTONS for:
Retail store and online retail store services for men and women featuring cat themed
accessories and clothing, namely, T-Shirts, tank tops, crop tops, sweatshirts, hooded
sweatshirts, bathing suits, cardigans, blouses, dresses, pants, pyjamas [sic], shorts, skirts,
rompers, panties, bras, thongs, jumpers, leggings, sweatpants, knitted woven or knitted
underwear, lingerie, jackets, scarves, baseball hats, five panel hats, caps, socks,
stockings, pantyhose, rings, necklaces, earrings, bracelets, purses, handbags, shoulder
bags, clutch bags, tote bags, wallets, slippers, shoes, sandals, flats, boots, running shoes,
ties, bows, bandanas, headbands, gloves, sunglasses, belts, watches in International Class
35.
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(Reg. No. 4,711,265). A true and correct copy of the Certificate of Registration is attached
hereto as Exhibit A hereto.
14. Plaintiffs Reg. No. 4,711,265 is valid, subsisting, and in full force and effect,
and therefore confers prima facie evidence of a nationwide right of exclusive use of the mark
MEOWINGTONS and all confusingly similar marks used in connection with the above goods
and/or services specified in the registration, pursuant to 15 U.S.C. 1057(b), and in connection
with related goods and services.
b) Defendants Wrongful Acts
15. Upon discovering Plaintiffs brand, merchandise and business, ZIMMERMAN
and the other Defendants sought to capitalize on Bassiris vision, after the fact. They did so with
a negative media campaign intended to disparage Plaintiff and Emma Bassiri, by claiming prior
use of the marks MEOWINGTONS, PROFESSOR MEOWINGTONS, PROF.
MEOWINGTONS and PROF. MEOWINGTONS, PHD. (Defendants Marks) in the
United States and elsewhere, by filing one or more applications to register the mark PROF.
MEOWINGTONS and by filing a Petition for Cancellation with the USPTOs Trademark Trial
and Appeal Board seeking to have Plaintiffs Reg. No. 4,711,265 cancelled (Petition for
Cancellation).
16. On or about August 8, 2015, through an off-shore entity, namely, Defendant,
RONICA, Defendants caused Application Serial No. 86719048 (App. No. 86719048) directed
to the standard character word mark PROF. MEOWINGTONS to be filed for an unusually
broad range of goods and/or services in eight (8) international classes, namely, International
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Class 009, 016, 018, 021, 024, 025, 028 and 041. A copy of the Defendants suspended
application is attached as Exhibit B hereto.
17. On or about August 8, 2015, Defendant RONICAs authorized representative
submitted a statement to the UPSTO wherein Defendant, RONICA stated that Defendant,
RONICA was the owner of the applied-for mark and that no other person had the right to use
the mark in commerce.
18. These statements were false when made because, inter alia, RONICA is not the
owner of the mark PROF. MEOWINGTONS and on information and belief, RONICA had
actual knowledge of Plaintiff and of Plaintiffs use of the mark MEOWINGTONS in
connection with Plaintiffs Goods and Services. Furthermore, Defendants had constructive
knowledge of Plaintiffs Mark based on the MEOWINGTONS Reg. No. 4,711,265 as of the
date of filing on July 15, 2014.
19. Defendants App. No. 86719048 was filed as, and still is, what is known as an
Intent-To-Use application under Section 1(b) of the U.S. Trademark Act. Such applications
do not create any substantive rights by themselves, but permit applicants to attempt to reserve
trademarks for later use, but only upon making a declaration under penalty of perjury that the
applicant has a bona fide intent to use sometime in the near future. Defendants did not file the
application under Section 1(a) of the Trademark Act, which requires proof of actual use in
United States commerce upon the initial filing.
20. Sometime between January 15, 2016 and February 4, 2016, Defendants recorded
a Trademark Assignment document with the USPTO, retroactively dated back to, and with an
effective date of August 8, 2015. Through and with this document, Defendants sought to
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assign Defendants App. No. 86719048, for the PROF. MEOWINGTONS mark and the
underlying goodwill from Defendant RONICA to Defendant PM LTD. The assignment is
invalid, null and void and destroys any trademark rights Defendants might have otherwise had
or acquired in Defendants Marks. On January 5, 2017, the USPTO suspended further action
on Defendants App. No. 86719048 because the attempted assignment is pending before the
USPTO or International Bureau.
21. Despite Plaintiffs thriving business, federally registered trademark and prior
common law use of the MEOWINGTONS mark, Defendant PM LTD filed another application
to register the trademark PROF. MEOWINGTONS in Canada on February 8, 2016.
22. On May 19, 2016, the USPTO refused registration of Defendants App. No.
86719048 directed to the mark PROF. MEOWINGTONS citing Plaintiffs prior Registration
No. 4,711,265 for the mark MEOWINGTONS.
23. It was not until August 17, 2016 that Defendants reached out to Plaintiff to
communicate in any way. Defendants first contact with Plaintiff about the subject trademark,
or for any other reason, was in an August 17, 2016 email from Defendants counsel to Emma
Bassiri.
24. Shortly thereafter, despite the USPTOs refusal to register Defendants mark, and
despite Defendants undeniable, actual knowledge of the Plaintiff and its mark, Defendant
RONICA filed an additional application to register the mark PROF. MEOWINGTONS in the
European Union on September 14, 2016. Defendant RONICA filed this European application
while Defendants were collectively leading Plaintiff and Ms. Bassiri to believe that they were
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negotiating a resolution of the matter in good faith. The European application was filed while
the parties were exchanging possible settlement terms.
25. Because of the similarity between Plaintiffs Mark and Defendants Marks and
the similar goods and/or services: (i) prospective consumers are likely to be deceived, mistaken,
or confused as to the source or origin of the respective goods and/or services of the parties; (ii)
the distinctiveness of Plaintiffs Mark is being diluted; and/or (iii) Defendants have caused the
likelihood of direct consumer confusion, initial interest confusion, reverse confusion and/or
forward looking confusion.
26. Upon information and belief, and by virtue of Plaintiffs registration for the
MEOWINGTONS mark and the commercial availability of Plaintiffs Goods and Services,
Defendants had actual knowledge of Plaintiffs Mark and of Plaintiffs prior use of Plaintiffs
Mark when they sought to register the PROF. MEOWINGTONS mark.
27. On or about December 28, 2016, Defendant PM LTD filed a Petition for
Cancellation of Plaintiffs Reg. No. 4,711,265 which purported to assert claims for likelihood
of confusion under Section 2(d) of the Lanham Act, False Association under Section 2(a) of the
Lanham Act, and Fraudulent Procurement of Plaintiffs Reg. No. 4,711,265, literally accusing
Emma Bassiri and Plaintiff of fraud.
28. Defendant PM LTDs allegations contained in its Petition for Cancellation
contradict the statements made in Defendants own App. No. 86719048. To wit, Defendants
claim they had merely a bona fide intent to use the PROF. MEOWINGTONS mark both on
August 8, 2015, and then again on January 15, 2016. Yet, in the Petition for Cancellation,
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Defendant PM LTD alleged that: [t]he first sale of such merchandise bearing the
MEOWINGTONS mark was at least as early as August 2011. 47, Petition for Cancellation.
29. Defendants have also made contradictory, harmful and malicious statements in
and to the media such as that Plaintiffs founder Emma Bassiri is a long-time fan of Defendant
ZIMMERMAN, that she follows him on social media, and that she and Plaintiff intended to
copy Defendants and profit from Defendants goodwill. These statements are false, and further
damage Bassiris and Plaintiffs reputation, business and goodwill.
30. It appears from Defendant ZIMMERMANs Twitter posts, statements to the
media and his Petition for Cancellation that Defendant ZIMMERMANs pet cat is reported to
be named Meowingtons or Professor Meowingtons. It also appears that one or more of the
Defendants have drawn attention to ZIMMERMANs cat in connection with his music
performances and tours to promote his music. However, as indicated in Defendants App. No.
86719048, filed on August 8, 2015, Defendant had nothing more than a bona fide intention to
establish his cats name as a brand name and trademark for any products or services at some
point in the future i.e., long after Bassiri had already established Plaintiff MEOWINGTONS,
LLC, registered the relevant domain names and trademark, and invested time, effort and money
into the company in the United States and internationally.
31. All public references made to his cats name prior to Plaintiffs use and
registration of the MEOWINGTONS mark by Defendants have been in a merely decorative,
or merely ornamental fashion, or in ways that are incidental to the promotion of
ZIMMERMANs music and performances, such as the cartoonish images of his cat put on
concert t-shirts and the humorous Meowingtons Headphones for Cats, which, upon
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information and belief, are no longer for actual sale to the public, if they ever were. The
trademark laws of the United States do not recognize such, merely ornamental, merely
decorative, humorous or promotional uses of names or trademarks as sufficient to establish any
trademark rights.
32. At all times material hereto, Defendants acted by and through their principals,
agents, employees, management, contractors and servants, have acted in concert with them and
have intentionally engaged in the complained of acts directly, indirectly, vicariously, have
induced, participated in or contributed to same and/or have done so with knowledge that others
would use Defendants goods and/or services to engage in the complained of acts.
33. Defendants acts described herein were done willfully and knowingly, and with
the specific intent to imitate Plaintiff, damage Plaintiffs reputation and goodwill, and/or
misappropriate, misuse and palm-off the goodwill, distinctiveness, fame and recognition
Plaintiff enjoys.
34. Defendants continued use of Plaintiffs Mark, confusingly similar marks and
other uses of the term Meowingtons, including Defendants associated domain names and
social media names in connection with Plaintiffs Goods and Services, have and will continue
to cause great and irreparable harm and damage to Plaintiff, its goodwill and to the
distinctiveness of its trademark and brand which have been, or are likely to be impaired, blurred,
disparaged, tarnished and diluted as a direct and proximate result of Defendants acts.
35. Defendant, ZIMMERMAN is the conscious, moving, dominant and active force
behind the wrongful acts complained of herein and behind the wrongful acts performed by
Defendants, PM LTD and RONICA. With full knowledge of Plaintiffs MEOWINGTONS
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name and mark, Defendant ZIMMERMAN supervised, directed, participated in and/or approved
of the acts of Defendants PM LTD and RONICA knowing that the complained of acts violated
Plaintiffs rights in the MEOWINGTONS mark.
36. Plaintiff has no adequate remedy at law relative to the continued and future harm
expected to be suffered from Defendants continued conduct. The balance of any harms
resulting from the injunctive relief requested herein weigh in favor of granting injunctive relief
to Plaintiff. The public interest would be served by the injunctive relief requested herein as it
will reduce or prevent consumer confusion.
37. All prerequisites to filing suit have been satisfied, have occurred or have been
waived.
38. As a direct and proximate result of the Defendants acts complained of herein,
Plaintiff has been forced to retain the undersigned firm, and has agreed to pay said firm a
reasonable fee for its services.
COUNT I
DECLARATORY JUDGMENT AS TO OWNERSHIP AND PRIORITY OF RIGHT

WRIT OF MANDAMUS
39. Plaintiff repeats and re-alleges each of the allegations contained in paragraphs 1
through 38, as if fully set forth herein.
40. This claim arises under 28 U.S.C. 2201 and 2202 for a declaratory judgment,
and under the authority this Court has over trademark registrations and to otherwise rectify the
federal trademark register as stated in the Lanham Act, 15 U.S.C. 1119.
41. To the extent Defendants have used or are using any of Defendants Marks
including, without limitation, the designation PROF. MEOWINGTONS which is the subject
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of App. No. 86719048, Defendants have not continuously used Defendants Marks in a manner
that qualifies them for trademark protection at common law, or which qualifies them for a United
States trademark registration. Defendants have not and are not using such designations as
trademarks in United States commerce because Defendants use of the designations has been in
a merely ornamental and merely decorative fashion, or used for marketing purposes and for the
promotion of Defendant ZIMMERMANs music.
42. Plaintiff is the senior user of, and has nationwide priority of right over the mark
MEOWINGTONS in connection with Plaintiffs Goods and Services, as compared to
Defendants filing dates and their use, if any, of the PROF. MEOWINGTONS mark, as a
trademark in connection with the goods and services listed in Defendant Defendants App. No.
86719048.
43. To the extent Defendants have used or are using any of Defendants Marks
including, without limitation, that which is the subject of App. No. 86719048, in United States
commerce, such use by Defendants is without Plaintiffs authorization, and is in a manner such
that Defendants are misrepresenting the source of the goods and services.
44. Notwithstanding, Plaintiffs senior use and priority of right, Defendant RONICA
filed App. No. 86719048 directed to the mark PROF. MEOWINGTONS which is likely to be
confused with Plaintiffs Mark by consumers and the public.
45. As detailed herein, Defendants have not established trademark rights in the
United States in the mark PROF. MEOWINGTONS in connection with clothing, apparel,
jewelry, watches, bags, pet products or online retail store services featuring the same, yet,
Defendants claim they have in the media and in their Petition for Cancellation.
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46. As a result, there is an actual and judiciable controversy between Plaintiff and
Defendants as to priority of right to use and register marks containing the term Meowingtons,
including, without limitation, Plaintiffs MEOWINGTONS mark, Defendants Marks and
similar variations.
47. Therefore, Plaintiff is in need of and hereby requests a declaration from this Court
that Plaintiff is the senior user of the MEOWINGTONS mark in the United States and therefore
has priority of right, and that Plaintiffs Reg. No. 4,711,265 gives Plaintiff nationwide priority
of right in the mark, and confusingly similar marks, at least as to Plaintiffs Goods and Services
and other items within Plaintiffs reasonable zone of expansion. Plaintiff is also in need of a
certified order from this Court to the Director of Trademarks at the USPTO under 15 U.S.C.
1119 to permit Plaintiffs Reg. No. 4,711,265 to remain on the Principal Register, and to instruct
the USPTO to issue a final refusal of Defendants App. No. 86719048.
COUNT II
DECLARATORY JUDGMENT AS TO DEFENDANTS FRAUD ON THE USPTO
WRIT OF MANDAMUS
50. On or about August 8, 2015, Defendant, RONICA filed App. No. 86719048
directed to the standard character word mark PROF. MEOWINGTONS.
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51. On or about August 8, 2015, Defendant RONICAS authorized representative
submitted a statement to the UPSTO wherein Defendant, RONICA stated that Defendant,
RONICA was the owner of the applied-for mark and that no other person had the right to
use the mark in commerce. These statements were false when made because, inter alia,
RONICA is not the owner of the mark PROF. MEOWINGTONS and on information and
belief, RONICA had actual knowledge of Plaintiff and Plaintiffs use of the mark
MEOWINGTONS in connection with Plaintiffs Goods and Services.
52. On information and belief, the false statements made by Defendant, RONICA
were made knowingly and with an intent to deceive the USPTO.
53. Defendant, ZIMMERMAN has actively aided and abetted the fraudulent
activities described above by Defendant RONICA by supervising, directing, participating in
and/or approving Defendant RONICAs activity knowing that the complained of acts were done
with the intent to deceive the USPTO.
54. Defendant RONICA later attempted to assign App. No. 86719048 to Defendant
PM LTD.
55. Plaintiff has been, and believes it will continue to be damaged if the
aforementioned application matures into a United States trademark registration and that
Defendants will attempt to use any resulting registration to disparage, harass and unfairly
compete with Plaintiff.
Defendants as to whether App. No. 86719048 directed to the mark PROF. MEOWINGTONS
should be finally rejected and whether Defendants should be entitled to registration therefor.
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57. Therefore, Plaintiff is in need of, and hereby requests a declaratory judgment that
Defendants have committed fraud on the USPTO in the filing and maintenance of its App. No.
86719048. Plaintiff further requests and is in need of a certified order from this Court to the
Director of Trademarks under 15 U.S.C. 1119 directing the USPTO to issue a final refusal of
App. No. 86719048 for U.S. Trademark Registration directed to the mark PROF.
MEOWINGTONS because of Defendants fraud on the USPTO.
COUNT III
DECLARATORY JUDGMENT THAT PLAINTIFF

DID NOT COMMITT FRAUD ON THE USPTO
WRIT OF MANDAMUS
60. Defendants have claimed in their Petition for Cancellation, and publicly, that
Plaintiff, and its founder Emma Bassiri have committed fraud on the USPTO in the filing of
Plaintiffs federal trademark application that resulted in U.S. Reg. No. 4,711,265 directed to the
mark MEOWINGTONS.
61. Plaintiff denies Defendants allegations of fraud.
62. Plaintiff has been damaged by Defendants allegations and statements, including
harm to its business reputation and its goodwill associated with the MEOWINGTONS mark
which have all been blurred, tarnished and otherwise damaged.
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Defendant as to whether Reg. No. 4,711,265 was procured by fraud and whether it should remain
on the USPTOs Principal Register.
64. Therefore, Plaintiff is in need of a declaratory judgment that it has not committed
fraud on the USPTO. Plaintiff is also in need and requests a certified order from this Court to
the Director of Trademarks directing the USPTO to permit Reg. No. 4,711,265 directed to the
mark MEOWINGTONS to remain on the USPTOs Principal Register because it was not
procured by fraud and because it is supported by Plaintiffs goodwill and qualifying prior use at
common law as compared to any such use by the Defendants.
COUNT IV
FEDERAL TRADEMARK INFRINGEMENT UNDER 15 U.S.C. 1114
66. Plaintiff is the owner of U.S. Trademark Registration No. 4,711,265 and the mark
MEOWINGTONS to which it is directed.
67. Plaintiff has been using Plaintiffs Mark in conjunction with Plaintiffs Goods
and Services in interstate commerce since at least as early as April 1, 2014 and has developed
substantial goodwill in the mark MEOWINGTONS in Plaintiffs common law territory, the
entire United States, and internationally, prior to Defendants adoption and use of their PROF.
MEOWINGTONS mark and similar variations, and prior to Defendants application to register
the mark (App. No. 86719048) which was refused and suspended by the USPTO in light of
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Plaintiffs prior registration, and in light of Defendants attempt to assign the PROF.
MEOWINGTONS mark and App. No. 86719048.
68. Defendants are not authorized to use Plaintiffs MEOWINGTONS mark or any
confusingly similar variation, or any mark that in any way represents or implies that Defendants
goods or services are in any way associated with Plaintiff.
69. Defendants actual and/or threatened contemporaneous use of the mark PROF.
MEOWINGTONS in connection with Plaintiffs Goods and Services and related goods or
services infringes on Plaintiffs exclusive rights in the mark MEOWINGTONS such use will
also have the effect of causing direct consumer confusion, initial interest confusion, forward
confusion, reverse confusion, mistake, or deception as to the source and origin of Defendants
goods and services and deceiving the public by passing off Defendants goods and services as
being rendered, sponsored, or otherwise approved by or connection with Plaintiff.
70. Defendants actual and/or threatened acts are likely to, or actually have damaged
Plaintiffs business reputation and, are likely to, or actually have impaired, blurred, tarnished
and diluted Plaintiffs goodwill in Plaintiffs Mark, and are likely to continue to do so.
71. Defendant ZIMMERMAN has actively aided and abetted any infringement by
Defendant PM LTD and RONICA by supervising, directing, participating in and/or approving
Defendant PM LTDs and RONICAs activity knowing that the complained of acts violate
Plaintiffs rights in the MEOWINGTONS mark. At all times material hereto, Defendant
ZIMMERMAN has been the moving force behind the infringement and other violations of
Plaintiffs rights.
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72. Defendants are intentionally and knowingly infringing upon Plaintiffs
trademark rights.
73. Defendants infringing activities are likely to cause Plaintiff to lose control of its
hard-earned reputation, to damage Plaintiffs reputation and goodwill among consumers, and to
divert profits and opportunities away from Plaintiff and to Defendants.
74. Defendants are therefore infringing on Plaintiffs exclusive rights in violation of
Section 32 of the Lanham Act of 1946, 15 U.S.C. 1114 and have caused damage to Plaintiff
in an amount to be determined at trial.
COUNT V
FEDERAL UNFAIR COMPETITION, FALSE ENDORSEMENT AND
FALSE DESIGNATION OF ORIGIN
15 U.S.C. 1125(a)
76. Plaintiff has been using Plaintiffs Mark in conjunction with Plaintiffs Goods
and Services in interstate commerce since at least as early as April 1, 2014 and has developed
substantial goodwill in its mark MEOWINGTONS in Plaintiffs common law territory, the
entire United States, and internationally, prior to Defendants adoption and use of their PROF.
MEOWINGTONS mark and similar variations, as a trademark, and prior to Defendants
application for registration of App. No. 86719048.
77. Plaintiffs Mark has become uniquely associated with only Plaintiff in Plaintiffs
common law territory, the entire United States, and internationally. Defendants have knowingly
caused its goods, services, advertisements, websites, social media profiles, promotional and
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marketing material to enter into interstate commerce with Plaintiffs Mark connected therewith
and/or have threatened to do so. These actual and/or threatened uses of Plaintiffs Mark by
Defendants constitute a false designation of origin which is likely to cause direct consumer
confusion, initial interest confusion, forward confusion, reverse confusion and mistake and to
deceive consumers as to a possible affiliation, connection or association of Defendants with
Plaintiff, and as to the origin, sponsorship or approval of goods and services by Plaintiff.
78. Defendant, ZIMMERMAN has actively aided and abetted Defendants PM LTD
and RONICAs unauthorized acts by supervising, directing, participating in and/or approving
Defendants PM LTD and RONICAs unauthorized activity knowing that the complained of acts
violate Plaintiffs rights in the MEOWINGTONS mark and Plaintiffs Mark. At all times
material hereto, Defendant ZIMMERMAN has been the moving force behind the unfair
competition and other violations of Plaintiffs rights.
79. Defendants are therefore engaged in unfair competition, have created a false
designation of origin in violation of 15 U.S.C. 1125(a) and have caused damage to Plaintiff in
an amount to be determined at trial.
COUNT VI
DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND
ABSENCE OF UNFAIR COMPETITION
(In the alternative to Counts I, IV and V above)
81. This claim arises under 28 U.S.C. 2201 and 2202 for a declaratory judgment
federal trademark register as stated in the Lanham Act, 15 U.S.C. 1119, relating to claims of
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trademark infringement and unfair competition asserted by Defendants in the media, directly to
Plaintiff and in Defendants Petition for Cancellation.
82. In Defendant, PM LTDs Petition for Cancellation of Plaintiffs Reg. No.
4,711,265, Defendant PM LTD alleged that Plaintiffs use of the term MEOWINGTONS is
likely to cause consumer confusion given Defendants alleged prior use of Defendants Marks.
83. Defendants have also stated and alleged that Plaintiff is engaging in trademark
infringement and unfair competition as a result of its continued use of its MEOWINGTONS
mark. Plaintiff has denied all such claims.
Defendants as to whether Plaintiffs use and registration of the mark MEOWINGTONS is
likely to cause consumer confusion and whether such use would infringe, unfairly compete with,
or otherwise violate any right of the Defendants.
85. Plaintiff therefore requests an alternative declaration from this Court that Plaintiff
has not and is not infringing on any trademark rights of the Defendants in the term
MEOWINGTONS, and that Plaintiffs Reg. No. 4,711,265 directed to the mark
MEOWINGTONS should remain on the USPTOs Principal Register because the subject mark,
as used by Plaintiff on the goods and/or services recited in the registration and related goods and
services, is not likely to lead to consumer confusion.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for relief against Defendants as follows:
1. An order enjoining and restraining during the pendency of this action, and
thereafter permanently enjoining and restraining Defendants, their agents, servants, employees,
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attorneys, parents and subsidiaries, related companies, and all persons acting for, with, by,
through or under Defendants from directly or indirectly:
a. Using the marks MEOWINGTONS, PROF. MEOWINGTONS, PROFESSOR
MEOWINGTONS, PROF. MEOWINGTOS, PHD or any name, term or mark similar thereto
or any confusingly similar designation alone or in combination with other terms (the Subject
Marks), as trademarks, slogans, tag lines, trade name components or otherwise, as domain
names, sub-domains, directory names, email addresses or other such computer addresses, as the
name of Defendants websites, social media profiles and names or any webpage, as part of a
URL, metatag, hashtag, Ad Words, search term, or, in any other way to market, advertise, sell,
offer for sale or identify Plaintiffs Goods and Services or related goods and services;
b. Otherwise infringing Plaintiffs Mark employing the term MEOWINGTON therein
in connection with Plaintiffs Goods and Services or related goods or services;
c. Unfairly competing with Plaintiff in any manner whatsoever; and
d. Causing a likelihood of consumer confusion of any kind including, without limitation,
direct confusion, initial interest confusion, forward confusion, reverse confusion or other injury
to Plaintiffs business reputation, or dilution of the distinctive quality, of Plaintiffs Mark by any
unauthorized use, dilution, blurring, devaluing, disparaging or tarnishing of the same.
2. An order requiring Defendants to deliver and destroy all devices, websites, social
media profiles, computer hardware and software, files, menus, hard drives, servers, diskettes
and backups, literature, advertisements, packages, labels, signs, prints, wrappers, receptacles,
and all other materials and products in the possession of Defendants or under Defendants
_____________________________________________________________________________________
Page 21 of 24
control which have ever been used in connection with Plaintiffs Goods/Services or related
goods or services, bearing the Subject Marks, as a brand names or trademarks.
3. An order requiring Defendants to notify, in writing, and direct to their internet service
provider(s), web host(s) and all publishers of directories or lists, including Internet search
engines, in which the mark MEOWINGTONS or any of the Subject Marks appear or in which
the term MEOWINGTONS or any of the Subject Marks are employed or used in connection
with any of Plaintiffs Goods/Services or related goods or services, to delete all references to
said names and Subject Marks from their public databases, search engine directories, directory
assistance and from all future directories in which said names and Subject Marks are to appear,
and to delete all forwarding or cache memory or storage mechanisms referencing the subject
Marks as brand names or trademarks.
4. An order requiring all Defendants to file with the Court, and serve upon Plaintiffs
counsel, within thirty (30) days after entry of judgment, a report, in writing, and under oath,
setting forth, in detail, the manner and form in which Defendants have complied with the
requirements of the injunction and order.
5. An order requiring Defendants to account for and pay over to Plaintiff all damages
sustained by Plaintiff including damages by reason of Defendants unlawful acts alleged herein,
plus pre-judgment and post-judgment interest thereon, and that such damages be trebled, as
provided by law.
6. An order requiring Defendants to pay over to Plaintiff all profits realized directly or
indirectly by Defendants by reason of Defendants unlawful acts alleged herein, and that such
amounts be trebled pursuant to 15 U.S.C. 1117(a)(3) or as otherwise provided by law.
_____________________________________________________________________________________
Page 22 of 24
7. An enhancement of any monetary award based on profits which this Court, in its
discretion, finds just pursuant to 15 U.S.C. 1117, 1118 or as otherwise provided by law.
8. A declaratory judgment declaring that Plaintiff is the senior user of the
MEOWINGTONS mark in the United States and therefore has priority of right, and that
Plaintiffs Reg. No. 4,711,265 gives Plaintiff nationwide priority of right in the mark, and
confusingly similar marks, at least as to Plaintiffs Goods and Services and other related items
within Plaintiffs reasonable zone of expansion.
9. A declaratory judgment declaring that Plaintiff did not make any false
misrepresentations and/or statements to the USPTO and otherwise did not fraudulently procure
Reg. No. 4,711,265.
10. A declaratory judgment, writ of mandamus, certified order to the Director of
Trademarks at the USPTO, or other appropriate order to the USPTO declaring that Defendants
App. No. 86719048 directed to the standard character word mark PROF. MEOWINGTONS
should be finally rejected and that Defendants are otherwise not entitled to registration therefor.
11. A declaratory judgment, writ of mandamus, certified order to the Director of
Trademarks at the USPTO, or other appropriate order to the USPTO declaring that Plaintiffs
Reg. No. 4,711,265 directed to the standard character word mark MEOWINGTONS is valid
and should remain on the Principal Register.
12. An alternative declaratory judgment declaring that Plaintiff is not infringing on any
trademark rights of Defendants in the term MEOWINGTONS, and is not otherwise engaging
in unfair competition or creating a false designation of origin.
13. An award of Plaintiffs reasonable attorneys fees incurred in this litigation.
_____________________________________________________________________________________
Page 23 of 24
14. An award of Plaintiffs taxable costs and other costs, expenses and disbursements
incurred herein.
15. An award of prejudgment and post-judgment interest on all monetary awards.
16. All such other and further relief as the Court may deem just and appropriate.
DEMAND FOR JURY TRIAL
Plaintiff demands a trial by jury for all issues so triable.
Respectfully submitted,
SANTUCCI PRIORE, P.L.

Attorneys for Plaintiff
200 South Andrews Avenue, Suite 100
Fort Lauderdale, Florida 33301
PH: 954.351.7474 / FX: 954.351.7475
/s/ Michael I. Santucci

Michael I. Santucci, Esq.
Florida Bar No. 105260
Email: mis@500law.com
_____________________________________________________________________________________
Page 24 of 24

Meowingtons V Zimmerman

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Case 0:17-cv-60521-XXXX Document 1 Entered on FLSD Docket 03/13/2017 Page 1 of 24

UNITED STATES DISTRICT COURT

JOEL ZIMMERMAN p/k/a DEADMAU5,

Plaintiff, MEOWINGTONS, LLC (hereinafter Plaintiff), brings this action, by and

through the undersigned attorneys, against Defendants, JOEL ZIMMERMAN p/k/a

DEADMAU5, PROF. MEOWINGTONS LTD. and RONICA HOLDINGS LTD. (hereinafter

1. Plaintiff is a Florida Limited Liability Company with a principal place of

business at 5231 NE 33rd Avenue Fort Lauderdale, Florida 33308.

2. Upon information and belief, Defendant, JOEL ZIMMERMAN p/k/a

DEADMAU5 (ZIMMERMAN) is an individual who resides at 8160 Twiss Road Milton,

Ontario L0P 1B0.

3. Upon information and belief, Defendant, PROF. MEOWINGTONS LTD. (PM

4. Upon information and belief, Defendant, RONICA HOLDINGS LTD.

Encino, California 91436. Defendant RONICA is believed to be wholly-owned and controlled

by Defendant ZIMMERMAN, either directly or indirectly.

thousand dollars ($75,000.00).

Defendant ZIMMERMAN regularly performs in the State of Florida, particularly in the

based businesses and individuals.

GENERAL ALLEGATIONS APPLICABLE TO ALL CAUSES OF ACTION

a) Plaintiffs Trademark Rights

(Plaintiffs Goods and Services). Plaintiffs online retail store is located at

9. Plaintiff has used the mark MEOWINGTONS, and similar variations, in

at least April 1, 2014 (Plaintiffs Mark).

www.meowingtons.com without objection or complaint from Defendants or anyone.

stockings, pantyhose, rings, necklaces, earrings, bracelets, purses, handbags, shoulder

hereto as Exhibit A hereto.

with related goods and services.

b) Defendants Wrongful Acts

15. Upon discovering Plaintiffs brand, merchandise and business, ZIMMERMAN

use of the marks MEOWINGTONS, PROFESSOR MEOWINGTONS, PROF.

MEOWINGTONS and PROF. MEOWINGTONS, PHD. (Defendants Marks) in the

16. On or about August 8, 2015, through an off-shore entity, namely, Defendant,

application is attached as Exhibit B hereto.

17. On or about August 8, 2015, Defendant RONICAs authorized representative

the mark in commerce.

actual knowledge of Plaintiff and of Plaintiffs use of the mark MEOWINGTONS in

date of filing on July 15, 2014.

United States commerce upon the initial filing.

underlying goodwill from Defendant RONICA to Defendant PM LTD. The assignment is

USPTO or International Bureau.

to register the trademark PROF. MEOWINGTONS in Canada on February 8, 2016.

No. 4,711,265 for the mark MEOWINGTONS.

the parties were exchanging possible settlement terms.

forward looking confusion.

Mark when they sought to register the PROF. MEOWINGTONS mark.

Emma Bassiri and Plaintiff of fraud.

28. Defendant PM LTDs allegations contained in its Petition for Cancellation

damage Bassiris and Plaintiffs reputation, business and goodwill.

30. It appears from Defendant ZIMMERMANs Twitter posts, statements to the

into the company in the United States and internationally.

registration of the MEOWINGTONS mark by Defendants have been in a merely decorative,

or merely ornamental fashion, or in ways that are incidental to the promotion of

decorative, humorous or promotional uses of names or trademarks as sufficient to establish any

Defendants, PM LTD and RONICA. With full knowledge of Plaintiffs MEOWINGTONS

Plaintiffs rights in the MEOWINGTONS mark.

will reduce or prevent consumer confusion.

reasonable fee for its services.

DECLARATORY JUDGMENT AS TO OWNERSHIP AND PRIORITY OF RIGHT

through 38, as if fully set forth herein.

federal trademark register as stated in the Lanham Act, 15 U.S.C. 1119.

promotion of Defendant ZIMMERMANs music.

MEOWINGTONS in connection with Plaintiffs Goods and Services, as compared to

confused with Plaintiffs Mark by consumers and the public.