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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.


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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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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

48. Plaintiff repeats and re-alleges each of the allegations contained in paragraphs 1

through 38, as if fully set forth herein.

49. 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.

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.

56. As a result, there is an actual and judiciable controversy between Plaintiff and

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

58. Plaintiff repeats and re-alleges each of the allegations contained in paragraphs 1

through 38, as if fully set forth herein.

59. 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.

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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63. As a result, there is an actual and judiciable controversy between Plaintiff and

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

65. Plaintiff repeats and re-alleges each of the allegations contained in paragraphs 1

through 38, as if fully set forth herein.

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)

75. Plaintiff repeats and re-alleges each of the allegations contained in paragraphs 1

through 38, as if fully set forth herein.

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)

80. Plaintiff repeats and re-alleges each of the allegations contained in paragraphs 1

through 38, as if fully set forth herein.

81. 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, 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.

84. As a result, there is an actual and judiciable controversy between Plaintiff and

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

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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.

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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.

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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

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