Bath & Body Works Brand Management v. Tri-Coastal Design Group

8/3/2019 Bath & Body Works Brand Management v. Tri-Coastal Design Group

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IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF NEW JERSEYBATH & BODY WORKS BRANDMANAGEMENT, INC.,

Plaintiff, C1ML ACTIONNO.__________V.

TRI-COASTAL DESIGN GROUP, INC.,Defendant.

COMPLAINT AND DEMAND FOR JURY TRIALPlaintiff, Bath & Body Works Brand Management, Inc. (BBW), by and through its

attorneys, alleges on knowledge as to its own acts and otherwise on information and belief asfollows:

NATURE OF THE ACTION1. This is an action for design patent infringement, t rade dress infringement, trademark

infringement, unfair competition, and unjust enrichment in violation of the laws of the UnitedStates and the State of New Jersey. BBW seeks an injunction, damages, and related relief.

JURISDICTION AND VENUE2. The Cour t has jurisdiction over this matter pursuant to 35 U.S.C. 1 et seq., 15

U.S.C. 1121, and 28 U.S.C. 1331, 1338, and 1367. BBWs claims arise under the PatentAct, 35 U.S.C. 1 et seq., under the Lanham Trademark Act of 1946, as amended, 15 U.S.C. 1051, et seq., and related claims under the statutory and common law of the state of New Jersey.

3. Venue in th e United States District Court f or the District of New Jersey is properpursuant to 28 U.S.C. 1391(b) or (c) and 1400(b). Defendant has committed acts ofinfringement in this District and has a regular and established place of business in Wharton,


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New Jersey.

THE PARTIES4. BBW is a Delaware corporation with a place of business at 5 Limited Parkway East,

Reynoldsburg, Ohio 43068.5. Defendant is a New Jersey corporation with a place of business at 20 Harry Shupe,

Wharton, New Jersey 07885.

BACKGROUNDBBWs Business and Its Patent and Trade Dress Rights inIts Shower Gel and Hand Soap Products

6. BBW is a leading retailer of personal care products such as shower gels, liquid handsoaps, and lotions. BBW sells its products only through its BATH & BODY WORKS retailstores.

7. BBW is the owner of U.S. Design Patent No. D6 15,415 (the 415 Patent), entitledBottle. A true and correct copy of the 415 Patent is attached hereto as Exhibit A. Th e 415Patent covers an ornamental design for a bottle. Figure 1 of the 415 Patent is reproduced here:

Fia. 1 of BBWs 415 Patent

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8. BBW is a lso the owner of U.S. Design Patent No . D623,532 (the 532 Patent),entitled Bottle. A true and correct copy of the 532 Patent is attached hereto as Exhibit B.

Th e 532 Patent covers an ornamental design for a bottle. Figure 1 of the 532 patent is shownhere:

Fig. 1 of BBWs 532 Patent

9. BBW is also the owner of protected trade dress in the appearance of its shower geland liquid hand soap product packaging.

10. BBW s protected trade dress in the appearance of its shower gel product packaging(the Shower Ge l Trade Dress) includes a transparent hourglass shape bottle withornamental side fluting, a contoured front label with stylized photographic images suggestingthe source products scent, a metallic screw-on cap, and text on a transparent background o n th eback of the bottle.

11. BBW has used the Shower Ge l Trade Dress in commerce. The Shower Ge l TradeDress is non-functional, inherently distinctive, and has acquired secondary meaning in themarketplace.

12. An example of BBWs Shower Gel Trade Dress is shown here:

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13. BBWs protected trade dress in the appearance of its liquid hand soap productpackaging (the Liquid Hand Soap Trade Dress) includes a transparent, tapered trapezoidbottle, a contoured front label with stylized photographic images suggesting the products scent,and text on a transparent background on the back of the bottle.

14. BBW has used the Liquid Hand Soap Trade Dress in commerce. Th e Liquid HandSoap Trade Dress is non-functional, inherently distinctive, and has acquired secondary meaningin the marketplace.

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15. An example of BBWs Liquid Hand Soap Trade Dress is shown here:

16. BBW is a lso the owner of U.S. Trademark Registration No . 2,574,220 for the markSWEET PEA for use in association with personal care products, namely, shower gel, showercream, body lotion, body cream, fragrant body mist, bath oil powder, hand cream, nail cream,skin exfoliating cream, hand soap, face soap and body soap.

17. The SWEET PEA registration has achieved incontestable status pursuant to 15U.S.C. 1065, and constitutes prima facie evidence of the marks validity and conclusiveevidence of BBWs exclusive right to use the SWEET PEA mark in connection with thegoods identified in the registration and other commercial goods.

18. BBW has been using the SWEET PEA mark in commerce for more than tenyears.

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Defendants Business and Its Infrinin2 Acts19. Defendant is headquartered in New Jer sey. L ike BBW, Defendant sells personal

care products such as shower gels and liquid hand soap. Defendant is a direct competitor ofBBW.

20. Defendant, without BBW s authority, is offering for sale within the United Statescertain shower gel and liquid hand soap products that appropriate the designs protected by the415 and 532 Patents, by the BBW Shower Ge l Trade Dress, and by the Liquid Hand SoapTrade Dress. Defendant is also offering for sale certain products that infringe BBW s SWEETPEA mark. Defendant provides the infringing products under the name Simple Pleasures.

21. One of Defendants accused Simple Pleasures shower gel products is shown here,along with a corresponding figure f rom the 415 Patent:

415 Patent, Figure 1

22. In the eyes of the ordinary observer familiar with the relevant prior art, giving suchattention as a purchaser usually gives, the design claimed in the 415 Patent and DefendantsSimple Pleasures shower gel bottle is substantially the same.

Det hr I Bottle

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23. In addition, the appearance of Defendants accused Simple Pleasures shower gelbottle is likely to cause confusion with BBWs Shower Ge l Trade Dress.

24. Furthermore, Defendants Simple Pleasures shower gel, shown above, includesBBWs SWEET PEA mark on its label.

25. A photograph of one of Defendants Simple Pleasures hand soap products isshown here along with the corresponding figure from the 532 Patent:

26. In the eyes of the ordinary observer familiar with the relevant prior art, giving suchattention as a purchaser usually gives, the design claimed i n th e 532 Patent and DefendantsSimple Pleasures hand soap bott le is substantially the same.

27. In addition, the appearance of Defendants accused Simple Pleasures hand soapbottle is likely to cause confusion with BBWs Liquid Hand Soap Trade Dress.

28. At all relevant times, Defendant has had knowledge of the 415 and 532 Patents,and its offer for sale and sale of the Simple Pleasures shower gel and hand soap productsconstitutes willful, deliberate infringing activity.

29. Defendants use of the BBW Trade Dress is no t limited to a single product. Rather,

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Defendant has copied the BBW Trade Dress across its entire line of liquid hand soap products.For example, Defendant has adopted the following product names in an effort to usurp BBWs

goodwill:BBWs Product Defendants Product

Sweet Pea Hdrangea Sweet PeaCoconut Lime Verbena Coconut Lime

Peach Bellini Peach Mango

FreshMarket Apple Harvest Apple

30. Defendants actions establish that it has engaged in an intentional campaign toduplicate the product packaging, trade dress, and registered trade marks of an entire line ofBB W products in an effort to usurp the significant goodwill associated with BBWs brands, asshown below.

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FIRST CLAIM FOR RELIEFINFRINGEMENT OF THE 415 PATENT

31. BBW repeats and realleges each of the allegations of the foregoing paragraphs.32. On information and belief, Defendant, alone or in concert with others, has made,

used, offered for sale, sold, or imported in this District and elsewhere in the United States,products, including shower gel products, the bottles of which infringe the claim of the 415Patent.

33. By its actions, Defendant has violated 35 U.S.C. 271.34. On information and belief, Defendants infringement will continue unless enjoined

by this Court .35. BBW is being damaged by Defendants infringement of the 415 Patent and will

continue to be irreparably damaged unless this Court enjoins Defendants infringement. BBWdoes not have an adequate remedy at law.

36. On information and belief , Defendants infringement of the 415 Patent is and hasbeen willful and BBW is entitled to an award ofmultiple damages and attorney fees.

SECOND CLAIM FOR RELIEFINFRINGEMENT OF THE 532 PATENT

37. BBW repeats and realleges each of the allegations of the foregoing paragraphs.38. On information and belief, Defendant, alone or in concert with others, has made,

used, offered for sale, sold, or imported in this District and elsewhere in the United States,products, including liquid hand soap products, the bottles of which infringe the claim of the532 Patent.

39. By its actions, Defendant has violated 35 U.S.C. 271.

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40. On information and belief, Defendants infringement will continue unless enjoinedby this Court.

41. BBW is being damaged by Defendants infringement of the 532 Patent and willcontinue to be irreparably damaged unless this Court enjoins Defendants infringement. BBWdoes not have an adequate remedy at law.

42. On information and belief, Defendants infringement of the 532 Patent is and hasbeen willful and BBW is entitled to an award ofmultiple damages and attorney fees.

THIRD CLAIM FOR RELIEFINFRINGEMENT OF BBWS SHOWER GEL TRADE DRESS

43. BBW repeats and realleges the allegations contained in the preceding paragraphs ofthe Complaint as if the same were fully rewritten herein.

44. By the acts and omissions set forth above, Defendant is violating Lanham Act 43(a),15 U.S.C. 1125(a) and infringing BBWs Shower Gel Trade Dress. Defendants u se incommerce of its Simple Pleasures shower gel as shown above constitutes a false designation oforigin, a false and misleading description of fact, and a false and misleading representation offact, which is likely to cause confusion, mistake, and to deceive by wrongly suggesting anaffiliation, connection, or association between the Defendants Simple Pleasures shower geland BBW and its products. Such use by Defendant is also likely to cause confusion, mistake,and to deceive as to the origin, sponsorship, or approval of the Defendants Simple Pleasuresshower gel by BBW.

45. Such use by Defendant of its Simple Pleasures shower gel constitutes trade dressinfringement in violation of the Lanham Act 43(a), 15 U.S.C. 1125(a).

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46. Defendant has acted with knowledge of BBWs ownership rights in the BBW ShowerGel Trade Dress and with deliberate intention or willful blindness to unfairly benefit from theincalculable goodwill symbolized thereby.

47. Defendant has made and will continue to make substantial profits and gains to whichit is not, in law or equity, entitled.

48. Defendant intends to continue its infringing acts unless retrained by this Court .49. Defendants acts have damaged and wil l continue to damage BBW, and BBW has no

adequate remedy at law.FOURTH CLAIM FOR RELIEF

INFRINGEMENT OF BBWS LIOUID HAND SOAP TRADE DRESS50. BBW repeats and realleges the allegations contained in the preceding paragraphs of

the Complaint as if the same were fully rewritten herein.51. By the acts and omissions set forth above, Defendant is violating Lanham Act 43(a),

15 U.S.C. 1125(a) and infringing BBWs Liquid Hand Soap Trade Dress. Defendants use incommerce of its Simple Pleasures liquid hand soap as shown above constitutes a falsedesignation of origin, a false and misleading description of fact, and a false and misleadingrepresentation of fact, which is likely to cause confusion, mistake, and to deceive by wronglysuggesting an affiliation, connection, or association between the Defendants Simple Pleasuresliquid hand soap and BBW and its products. Such use by Defendant is also likely to causeconfusion, mistake, and to deceive as to th e origin, sponsorship, or approval of the DefendantsSimple Pleasures liquid hand soap by BBW.

52. Such use by Defendant of its Simple Pleasures liquid hand soap constitutes tradedress infringement in violation of the Lanham Act 43(a), 15 U.S.C. 1125(a).

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53. Defendant has acted with knowledge of BBWs ownership rights in the BBW LiquidHand Soap Trade Dress and with deliberate intention or willful blindness to unfairly benefit fromthe incalculable goodwill symbolized thereby.

54 . Defendant has made and wi ll continue to make substantial profits and gains to whichit is not, in law or equity, entitled.

55. Defendant intends to continue its infringing acts unless retrained by this Court.56. Defendants acts have damaged and wil l continue to damage BBW, and BBW has no

adequate remedy at law.FIFTH CLAIM FOR RELIEF

INFRINGEMENT OF BBWS REGISTERED SWEET PEA MARK57. BBW repeats and realleges the allegations contained in the preceding paragraphs of

the Complaint as if the same were fully rewritten herein.58 . By the acts and omissions set forth above, Defendant is violating Lanham Act 32,

15 U.S.C. 1114 is infringement of a registered mark and infringing BBWs rights in itsregistered SWEET PEA mark. Defendants use in commerce of BBWs SWEET PEA markconstitutes infringement of registered rights, which is likely to cause confusion, mistake, and todeceive by wrongly suggesting some affiliation, connection, or association between theDefendants products and BBW and its products. Such use by Defendant is also likely to causeconfusion, mistake, and to deceive as to the origin, sponsorship, or approval of the Defendantsproducts by BBW.

59. Defendants acts have damaged and wil l continue to damage BBW, and BBW has noadequate remedy at law.

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SIXTH CLAIM FOR RELIEFUNFAIR COMPETITION UNDER N.J. STAT. ANN. 56:4-1

60. BBW repeats and realleges the allegations contained in the preceding paragraphs ofthe Complaint as if th e s ame were fully rewritten herein.

61. The foregoing acts of Defendant are a misappropriation of BBW s brand, trademark,trade dress, reputation and goodwill, including, without limitation, BBWs Liquid Hand SoapTrade Dress, its Shower Ge l Trade Dress, and it s SWEET PEA mark.

62. Defendants acts constitute unfair competition in violation of N.J. Sta t. Ann. 56:4-1.63. On information and belief, Defendant has made and will continue to make substantial

profits and gains to which they are not in law or equity entitled.64. On information and belief, Defendants activities are unfair and willful.65. Because of Defendants conduct, BBW has and will continue to sustain substantial

damages and irreparable injury, for which there is no adequate remedy at law.66. Defendant is liable to BBW for all damages, whether direct or indirect, for the

misappropriation of BBWs name, brand, trademark, trade dress, reputation and goodwill , andthose damages are subject to trebling.

SEVENTH CLAIM FOR RELIEFCOMMON LAW UNFAIR COMPETITION

67. BBW repea ts and realleges the allegations contained in the foregoing paragraphs.68. Defendants willful acts of infringement of BBW s rights constitutes unfair

competition in violation of New Jersey common law.EIGHTH CLAIM FOR RELIEF

COMMON LAW TRADEMARK INFRINGEMENT69. BBW repeats and realleges the allegations contained in the foregoing paragraphs.

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70. BBW owns all rights, title, and interest in the Shower Gel Trade Dress, Liquid HandSoap Trade Dress, and SWEET PEA mark.

71. Defendant, without authorization from BBW, has used and is continuing to u se theShower Gel Trade Dress, Liquid Hand Soap Trade Dress, and SWEET PEA mark.

72. Defendants use in commerce of its Simple Pleasures shower gel and liquid handsoap, including, without limitation, the Sweet Pea variety of the same, is intended to cause, hascaused, and is likely to continue to cause confusion, mistake, and deception among consumers,the public, and the trade as to whether those products originate from, o r a re affiliated with,sponsored by, o r endorsed by BBW.

73. On information and belief , Defendant has acted with knowledge of BBWsownership of the Shower Ge l Trade Dress, Liquid Hand Soap Trade Dress, and SWEET PEAmark, and with deliberate intent or willful blindness to unfairly benefit from their goodwill.

74. Defendants acts constitute trademark infringement in violation of the common lawof the State of New Jersey.

75. On information and belief, Defendant has made and will continue to makesubstantial prof its and gains to which they are not in law or equity entitled.

76. On information and belief, Defendant intends to continue its infringing acts unlessenjoined from doing so by this Court.

77. Defendants acts have damaged and wil l continue to damage BBW, and BBW has noadequate remedy at law.

NINTH CLAIM FOR RELIEFCOMMON LAW UNJUST ENRICHMENT

78. BBW repeats and realleges the allegations contained in the foregoing paragraphs.

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79. Defendants acts set for th above constitute Defendants unjust enrichment at BBWsexpense, in violation of the common law of the State ofNew Jersey.

WHEREFORE, BBW respectfully requests that this Court enter judgment againstDefendant as follows:

A. enter judgment in favor of BBW and against Defendant for infringement of the 415Patent;

B. enter judgment in favor of BBW and against Defendant for infringement of the 532Patent;

C. enter judgment in favor of BBW and against Defendant for unfair competition in th enature of infringement of BBW s trade dress and SWEET PEA trademark in violation ofSections 32 and 43(a) of the Lanham Act, 15 U.S.C. 1114 and 1125(a), N.J . Sta t. Ann. 56:4-1, and the common law of New Jersey;

D. order the infringing goods be recalled and/or gathered by Defendant from all retail orwholesale outlets to which Defendant has sold or delivered the goods;

E. order the infringing goods be impounded and subsequently be destroyed;

F. enter an order directing Defendant to deliver to BBW for destruction alladvertisements, circulars, brochures or other promotional or advertising items or materials for itsinfringing goods;

G. award enhanced damages to BBW adequate to compensate for the infringement of the415 Patent, but in no event less than a reasonable royalty for the use made of the patented

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design by Defendant, together with interest and costs as fixed by the Court;

H. award enhanced damages to BBW adequate to compensate for the infringement of the532 Patent, bu t in no event less than a reasonable royalty for the use made of the patenteddesign, together with interest and costs fixed by the Court;

I. declare this to be an exceptional case and award BBW its attorneys fees and costsincurred in connection with bringing this action; and

J. award BBW such other and further relief as this Court deems just and equitable.Respectfully subrfii&d,

Christopher N. [email protected] SPAHR LLP210 Lake Drive East , Suite 200Cherry Hill , New Jersey 08002-1163(856) 761-3400Of counsel:Lynn E. Rzonca (pro hac vice admission to besought)BALLARD SPAHR LLP1735 Market Street, 51st FloorPhiladelphia, PA 19103(215) 665-8500Katrina M. Quicker (pro hac vice admission to besought)Richard W. Miller (pro hac vice admission to besought)BALLARD SPAHR LLP999 Peachtree Street, NEAtlanta, GA 30309(678) 420-9300Attorneys for Plaintiff Bath & Body Works BrandManagement, Inc.

Date: February 16, 2012

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CERTIFICATION PURSUANT TO LOCAL RULE 11.2The undersigned hereby certifies that the within matter in controversy is not the subject

of any other pending or contemplated action or of any pending arbitration or administrativeproceeding.

CHRISTOPHER N. TOMLINDated: February 16, 2012

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Bath & Body Works Brand Management v. Tri-Coastal Design Group

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