UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

TELEBRANDS CORP.,
Plaintiff,
TV DIRECT LLC,
Defendant.
14 CV
597
Civil Action No
JUDGE FAILLA
>:
COMPLAINT
Plaintiff Telebrands Corp. ("Telebrands
LLC ("TV Direct"), alleges as follows:
THE
1. Plaintiff Telebrands is a corporation org^ized and
New Jersey, having a place of business at 79Tv^cj Bridges
2. Upon information and belief, defendant TlV Direct
under the laws of the State of New York and hiving
Avenue, Suite 1100, New York, New York 10016 Upon
business within the State of New York and in this! Judicial
Complaint against Defendant TVDiiect'
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is a corporation organized and existing
principal place of business at 347 Fifth
information and belief, TV Direct is doing
District.
NATURE OF CLAIMS. JURISDICTION AND VENUE
3. This action arises under the Patent Laws of the Uhited States (35 U.S.C. 1 et seq.), the
United States (15 U.S.C. 1051 et seq.), and the
3n. Bus. I|.aw 360).
15U.S.CJ 1121,28 U.S.C. 1331,1332(a)(1),
oftfoisC^urt under 28 U.S.C. 1367. The matter
Trademark and Unfair Competition Laws of the
statutory and common law of New York (N. Y.
4. Jurisdiction of this Court is founded upoh
1338(a) and (b), and the supplemental jurisdiction <
in controversy exceeds $75,000, exclusive of irjtejrest and^osts, andthere is complete diversity of
citizenship between the parties.
5. Venue is proper within this Judicial Distrifc
1400 (b).
:t under 28 U.S.C. Sections 1391(b) and (c), and
FACTS COMMON TO ALL CLAIMS FOR RELIEF
6. Telebrands is a direct marketing company
of marketing and selling a wide variety of
principally through direct response advertising
of the recognized leaders in the direct response
based in part by expending a large amount of
response orders. The television advertising
the product among consumers who then purch
Telebrands' AERO
;ind,:since|
prbd
through
tildvision
money
a heig
the prod
KNIFE
1987, has been engaged in the business
consular products in this Judicial District and elsewhere,
and national retail stores. Telebrands is one
marketing industry. Telebrands' success is
advertising products on television for direct
ht^nedbrandawareness andrecognition of
ttct in retail stores.
Product.
;create
ase
7. Telebrands markets and sells a product under the trademark AERO KNIFE. The AERO
KNIFE product is a knife product that has a uni<jjub anddistinctive product configuration andtrade
dress which is characterized, in part, by a blaqe
distinctive configuration, namely, in the order
followed by a quadrilateral, followed by two
shortest side at the other opposing lower
arrangement and combination of these elements
and constitutes valid trade dress. Telebrands is
that has five polygonal shapes in a unique and
df a triangle on one upper corner of the blade,
parallelograms, followed by a pentagon with the
blade ("Product Trade Dress"). The
non-fundtional, arbitraryandfanciful, distinctive
owner of all right, title and interest in and to this
Was adopted to give the AERO KNIFE product a
Photographs of the AERO KNIFE product are
corner of the
is
the
Product Trade Dress. The Product Trade Dress
distinctive appearance and to indicate source,
attached as Exhibit A.
8. Telebrands' new, non-obvious and ornalm^ntal
"Knife,"
design of the AERO KNIFE product is the
which issued on May 6, 2014 ("Design
Tel&brarjds isowner ofallright, title and interest
subject of U.S. Design Patent No. D704,010 for
Patent"), a copy of which is attached as Exhibit
in and to the Design Patent.
9. Telebrands rolled out the AERO KN
B
IFE product in early 2013, and sales grew rapidly,
gh direct response channels to the general
within this Judicial District. Telebrands also
Telebrands sells the AERO KNIFE product
consuming public throughout the United States
sells theAERO KNIFE product toconsumers th|rc|ugh majc-r retailers throughout theUnited States
and within this Judicial District.
;h:ou
and
his 10. Telebrands has expended millions of do
product on television and on the Internet, most
Dress. As aresult ofthese substantial advertising land prorriotional efforts, Telebrands' sales ofthe
of
advertising and promoting the AERO KNIFE
which emphasizes the distinctive Product Trade
AERO KNIFE product have been significant. jSifice its roll-out, Telebrands has sold a substantial
number oftheAERO KNIFE product intheUni^ejl States, totaling millions insales, since rolling out
the product in early 2013.
11. As a result of its extensive advertising
distinctive Product Trade Dress, and further as a
Trade Dress has become well and favorably kndw)n
as indicating the sourceor originof the AEROKK
12. The Product Trade Dress is non-functibrial
represents substantial goodwill of Telebrands i
District.
Defendant's Ac
and promotional activities which emphasize the
result of its substantial sales, the distinctive Product
to the purchasing public and widely recognized
IFE product.
, fanciful, distinctive and well-recognized and
thlrolughout the United States, including inthis Judicial
Of infringement
13. On information and belief, TV Direct jn^rkets and sells a knife product under the name
elsw,here. Tjhe "Infinity Knife" product imitates the
The "Infinity Knife" product incorporates the
Dress arid embodies the invention claimed in the
"Infinity Knife" in this Judicial District and
design of Telebrands' AERO KNIFE product
elements of Telebrands' distinctive Product Trade
Design Patent. Photographs of TV Direct's
Telebrands' AERO KNIFE product, are attached
14. The"InfinityKnife"product is competitive
information and belief, is sold to consumers thrbii
15. Upon information and belief, TV Direct
Patent, as well as its adoption and use of a copy Or
Infinity Knife" product, shown together with
as Exhibit C.
with Te
gh retail
adoption
ebrands' AERO KNIFE product and, on
outlets.
of the invention claimed in the Design
colorable imitation of the Product Trade Dress is
deliberate and intentional and with full knowledgee of Telebrands' rights.
the Design Patent and use of a copy or
vias and is without Telebrands' authorization and
16. TV Direct's adoption of the invention bl&imbd in
colorable imitation of the Product Trade Dress
consent.
17. Upon information and belief, TV Direct
of the Product Trade Dress was and is with th^ Intent and
deceiving the public, and unfairly capitalizing on
18. By adopting and using Telebrands'
valuable goodwill, TV Direct has caused and is
purchasers and potential purchasers as to the
to the existence of an association, connection, dr
19. TV Direct's acts as recited herein have bpe|n
with Telebrands.
20. TV Direct's actions have damaged anq aire
goodwill of Telebrands.
21. Telebrands is being irreparably injured
Telebrands has no adequate remedy at law.
COUNT 1 - PATENT INFRINGEMENT OF U.S. D704.010
22. Telebrands repeats and realleges the allegations set fforth inparagraphs 1-21 above, as though
fully set forth herein.
23. This cause of action arises under Section 35 of thfe Patent Laws of the United States, 35
adoption
likely
and use of a copy or colorable imitation
purpose of confusing, misleading and
Telebrarids' initiative and goodwill.
Pnj>dtict Trade^ Dress, and by trading on Telebrands'
lively to cahse confusion, mistake anddeception of
sourceor originof the "InfinityKnife"productandas
relationship between TV Direct and Telebrands.
undertaken in bad faith so as to compete unfairly
to damage the superior reputation and
and monetarily damaged by TV Direct's acts.
U.S.C. 271 and 289.
24. The Design Patent is valid and enforceable
25. By the acts alleged above, TV Direct
into the United States, and on information and bUJef, still ate
hS
and/or importing into theUnited States, product^
through contributory and/or induced i
Telebrands' authorization or consent
made,
, still
having a
infringe|ment, the
used, offered to sell, sold and/or imported
making, using, offering to sell, selling,
designthat infringesdirectlyor indirectly
claim of the Design Patent, without
26. On information and belief, TV Direct's infringement: has been intentional and willful, making
this an exceptional case.
27. TV Direct will, on information and
under 271 and/or 289 of the Patent Act, unless
has been and is likely to continue to be irreparab
has no adequate remedy at law.
COUNT 2 -INFRINGEMENT! OF PRODUCT TRADE DRESS
belief, continue
and until
injured unless
to infringe upon Telebrands' rights
it is enjoined by this Court. Telebrands
TV Direct is enjoined. Telebrands
28. Telebrands repeats and realleges the illlegations set forth in paragraphs 1-27 above, as
though fully set forth herein.
29. This cause of action isforunfair competition andarises under Section 43(a) of theLanham
Act, 15 U.S.C. 1125(a).
30. By the acts alleged above, TV Direct has
goods, false designations of origin and false descriptions
nature, characteristics and qualities of those go(j)dJ5, in violation
uped in interstate commerce in connection with its
and representations which misrepresent the
of 15 U.S.C. 1125(a).
31. TV Direct's unauthorized distribution and
product, bearing a copy, counterfeit or colorable?
Dress for its AERO KNIFE product, is likely to 0a|use
and potential purchasers as to the origin, spo|nsjorship, c-r
Telebrands.
interstate commerce of its "Infinity Knife"
of Telebrands' distinctive Product Trade
sale) in i
ijnitation
confusion, mistake or deception of purchasers
approval of TV Direct's product by
32. TV Direct's unauthorized distribution aid commerce of its "Infinity Knife" product
likely to cause confusion, mistake, or
sale in
iuct and falsely designates the origin of TV Direct's
deception about the origin of TV Direct's good
33. By using such trade dress, TV Direct has
Knife" product it is selling and offering for
Telebrands.
prod i 1,3
falsely anq misleadingly described that its "Infinity
emanate^ from or is sponsored or approved by sale
infringement has been intentional and willful
, continue
43(a) of theLanham Act unless anduntil it is enjoined by
likely to continue to be injured unless TV Direct's acts arej enjoined. Telebrands has no adequate
remedy at law
COUNT 3 - INJURY TO BUSINESS
34. On information and belief, TV Direct's
35. TV Direct will, on information and belief t:o infringe upon Telebrands' rights under
this Court. Telebrands has been and is
REPUTATION UNDER GBL 360
36. Telebrands repeats and realleges the allegations set forth inparagraphs 1-35 above, as though
fully set forth herein.
37. This cause ofaction arises under Sectioji $60-1 ofthe General Business Lawofthe State of
New York.
38. TV Direct's acts are likely to injure the
who are dissatisfied with the quality of TV Ditebt's
dissatisfaction to Telebrands.
business reputationof Telebrands and consumers,
Infinity Knife" product, will attribute their
39. TV Direct will, on information and betlipf, continue to impair Telebrands' rights under
and until it is enjoined by this Court. Telebrands
uiilessTVDirect's acts are enjoined. Telebrandshas
Section 360-1 of the General Business Law unless
has been and is likely to continue to be injured
no adequate remedy at law.
COUNT 4 - NEW YORK COMMON LAW
40. Telebrands repeats and realleges theallegations set forth inparagraphs 1-39 above, as though
fully set forth herein.
41. This cause of action isforunfair competition andarises under thecommon lawoftheState of
New York.
42. By the acts alleged above, TV Direct has
adversely affected Telebrands' business by the
specifically designed to capitalize on the initiatjivle
common law of the State of New York.
ijnpaired
use of
and goodwill
UNFAIR COMPETITION
Telebrands' goodwill and has otherwise
unfair and improper business practices
of Telebrands in violation of the
43. TV Direct will, on information and belief, continue
until it is enjoined by this Court. Telebrands has Dieen and
TVDirect's acts are enjoined. Telebrands has i|io adequate
to impair Telebrands' rights unless and
::s likely to continue to be injured unless
remedy at law.
WHEREFORE, Plaintiff demands judMentj
a. Adjudging and decreeing that tM Direct
infringed and/or induced infringement of Telebrands' Desji
dress rights and unfairly competed with Telebrands
b. Preliminarily and permanently
employees and attorneys and all those in active
1. From infringing U.S. Patbrit No. D704
2. from importing, distributing, advertjsin
sale a product substantially slnjiilar to the
3. from importing, distributjinjg, advertjsin
sale a product that incorporate^
Telebrands' AERO KNIFE
4. from otherwise unfairly
5. from falsely representing
offers for sale is genuine, or
from otherwise falsely advertising, repifesentin:
with Telebrands, unless TV Dilrect's prdd
en
has unlawfully infringed, contriburoily
gn Patent, infringed Telebrands' trade
oinmg TV Direct, its officers, agents, servants,
concert or participation with any of them:
,010;
ing, promoting, selling, or offering for
Design Patent;
g, promoting, selling or offering for
or colorably imitates the trade dress of , copies,
p|rdduct;
competing with Telebrands in any manner; and
suggesting that the product TV Direct sells or
authorized by or emanates from Telebrands, or
cr
is
g or suggesting any connection
uct is genuine AERO KNIFE product
and emanates from or is auth|oi)ized byTelebrands
any
gement
Direct's
c. Requiring TV Direct to pay Telebrands
out of and/or as a result of TV Direct's patent intfrtn
Direct's profits and/or reasonable royalties for TV
damages Telebrands has suffered arising
, including Telebrands' lost profits, TV
patent infringement, and any other relief
provided for in 35 U.S.C. 284 and 289;
d. Requiring TV Direct to pay its
Telebrands as a result of TV Direct's acts, and
profiits to
ebrands' Te]
Telebiiands
Telebrands, any damages sustained by
costs for the action, and attorneys' fees,
three times the amount of Telebrands'
pursuant to 15 U.S.C. 1117(a);
e. Requiring TV Direct to pay to
actual damages because of the exceptional natufe
U.S.C. 1117(a);
f. Imposing costs and reasonable
exceptional nature of this case, pursuant to 35
other damages recoverable under any other statute
g. Requiring that all products,
receptacles, and advertisements of TV Direct
reproduction, counterfeit, copy, or colorable
other means of making the same, be delivered
U.S.C. 1118; and
of this case, pursuant to 35 U.S.C. 285 and/or 15
attorneys' [fees against TV Direct because of the
C. 28} and/or 15 U.S.C. 1117(a) and/or any
alleged in this Complaint;
pjojluct labels, signs, prints, packages, wrappers,
tteking Telbbrands' Product Trade Dress, and any
iirhtkioiJL theijeof, and all plates, molds, matrices and
dp to Telebrands for destruction, pursuant to 15
U.S
Granting such other and further :-e. ief as this Court deems just and proper.
1(1
JURY DEMAND
Plaintiff Telebrands Corp. requests a tri al by jury in this matter.
Dated: July31, 2014
By:
Res pe ctfully submitted,
COOPERi & DUNHAM LLP
ptfiUdb T'7/laJj/yna^/fl.
Peter
Torjia
30
Ne\V
Tel
Fax
D. Murrajy
T
A
Eolckefeller
York,
C>12)278-
(212)391
(PM-6912)
Robeitt T. Maldonado (RM-7873)
(TS-7208)
Plaza
York 10112
0400
-0525
pmiiniay@cooperdunham.com
Sayour
New
rmald 3nado@cooperdunham.com
tsayour@cooperdunham.com
Attbnkeys for Plaintiff
TELEBRANDS CORP.
lui mil hi mi nnininmmhiihiiiii i n
US00D704010S
(12) United States Design Pate^
Shahani
) Psitent No.:
) Date of Patent:
US D704,010 S
May 6, 2014
(54) KNIFE
(71) Applicant: Raj oo M. Shahani, Fairlawn, NJ (US)
(72) Inventor: Kajon M. Shahani, Fairlawn, NJ (US)
(73) Assignee: Telebrands Corp., Fairfield, NJ (US)
(**) Term: 14 Years
(21) Appl.No.: 29/451,183
(22) Filed: Mar. 28,2013
(51) LOC(10)C1 07-03
(52) U.S. CI.
USPC D7/649
(58) Field of Classification Search
USPC D7/368, 393-395, 401.2, 642-646,
D7/649-654, 660-664, 669, 675-676, 683,
D7/688-692, 695-696; D8/5, 25, 83,
D8/98-99, 107, 303; D24/146-147;
30/115, 137, 141-143, 147-150,
30/322-327, 329, 335, 340, 342-348,
30/355; 416/70 R
Sec application file for complete search history.
(56) References Cited
U.S. PATENT DOCUMENTS
D177,743 S * 5/1956 Marx D7/650
0304,154 S * 10/1989 Osterhout D8/99
(4
**
12/1998 Kwok D7/401.2
4/2001 Juhlinetal.
5/2001 Balolia D8/99
10/2002 Richwineetal D8/5
7/2006 Fortetal D7/652
7/2007 Curtin D7/650
11/2007 Hood D7/650
7/2008 Curtin D7/649
12/2008 Epstein D7/401.2
12/2008 Epstein D7/401.2
9/2009 Miltneretal D7/649
8/2011 Hirai
8/2011 Hirai D7/649
citcHbyexaminer
Primary Examiner Ricky Pham
(74) Attorny, Agent, or FirmJeffrey L. Snow; Cooper &
Dunham, LtP
(57)
The ihiamdntal
FIG.
FIG.
FIG.
FIG.
FIG.
FIG.
FIG.
CLAIM
design for a knife, as shown and described.
DESCRIPTION
is a bottom perspective view thereof;
is a front view thereof;
$ isa rearview thereof;
is a right side view thereof;
is a 1aft side view thereof;
is a top side view thereof; and,
t is a bottom side view thereof.
1 Claim, 6 Drawing Sheets
U.S. Patent May 6,2014 US D704,010 S
U.S. Patent May 6, 2014 Slieet J of S US D704,010 S
FIG 2
=20
FIG. 3
U.S. Patent May 6,2014 Slieet:I of <> US D704,010 S
0
to
U.S. Patent May 6,2014 Slieet 4of(i US D704,010 S
U.S. Patent May 6,2014 Sheet :ii of 6 US D704,010 S
fr^-~
^\
FIG 6
U.S. Patent May 6,2014 Sheet MOfl)
US D704,010 S
\\
ll' m.7