UNITED STATES DISTRICT COURT MIAMI DIVISION JDJ vs....

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

MIAMI DIVISION

CASE NO. ______ _

DR. G'S FRANCHISING COMPANIES, LLC, a Florida limited company, and JDJ OF MIAMI, INC., a Florida corporation,

Plaintiff,

vs.

ALEXIA ECHEVARRIA, an individual, MARYSOL PATTON, an individual, DAVID BURSTYN, an individual, and JUDAH BURSTYN, an individual, and DC 1 OF CORAL GABLES, LLC d/b/a DR. GREGGS WEIGHTLOSS CENTERS, a Florida limited liability company, and JOHN DOES,

Defendants.

Jury Trial Demanded

COMPLAINT FOR DAMAGES, PRELIMINARY AND PERMANENT INJUNCTIVE RELIEF

Plaintiffs, DR. G'S FRANCHISING COMPANIES, LLC ("Dr. G's") and JDJ OF

MIAMI, INC. (hereinafter collectively referred to as "Plaintiffs"), by and through undersigned

counsel, hereby sues Defendants, ALEXIA ECHEVARRIA, MARYSOL PATTON, DAVID

BURSTYN, JUDAH BURSTYN, and DC 1 OF CORAL GABLES, LLC d/b/a DR. GREGGS

WEIGHTLOSS CENTERS (collectively, "Defendants"), for damages and preliminary and

permanent injunctive relief, and state as follows:

ZARCO EINHORN SALKOWSKI & BRITO ~IIMlI TOWER, 100 S.B. 2:>:]) STREET, 27Tl1 FLOOR, HIAH!. FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

I. NATURE OF ACTION

1. This is an action by Plaintiffs against Defendants for unfair and deceptive trade

practices, unfair competition, trade mark infringement, false advertising, and other violations of

the Lanham Act and common law.

2. Defendants David Burstyn, Judah Burstyn, (David and Judah Burstyn are

collectively referred to as the "Burstyn's"), Alexia Echevarria ("Echevarria"), Marysol Patton

("Patton"), DC 1 OF CORAL GABLES, LLC d/b/a "DR. GREGGS WEIGHTLOSS

CENTERS" ("DC 1") and JOHN DOES have engaged in a scheme and plan to hijack and

convert for their own use the reputation and goodwill associated with Plaintiffs "Dr. G's Weight

Loss and Wellness Centers." Specifically, Defendants have duplicated and created an imitation

to Dr. G's weight loss business which operates under the name "Dr. Gregg's Weight Loss

Centers." Since filching Plaintiff s business concept, Defendants have engaged and continue to

engage, in ongoing and escalating efforts to unlawfully mislead, confuse, and deceive both the

general public and patients of Dr. G's Weight Loss clinics. Defendants' scheme is intended to

wrongfully misappropriate and profit from the name, reputation, business and trademark rights of

Plaintiffs, as well as the distinctive elements that have made the Dr. G's Weight Loss clinics a

success. As more fully explained below, Defendants have engaged in a confusingly similar

business in concerted effort to falsely pass off their fictitious business persona "Dr. Gregg"

falsely as if it was the real Dr. G.

3. Defendants' wrongful conduct includes, among many other things: (a) creating

the fictitious business name "Dr. Gregg's Weight Loss Centers" in order to fraudulently and

deceptively suggest that Dr. Gregg's is either the real Dr. G, or is somehow affiliated, connected,

sponsored or licensed by Dr. G's; (b) fraudulently advertising and promoting the Dr. Gregg's

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ZARCO EINHORN SALKOWSKI & BRITO ML\JVlI TOWER, 100 S.E. 2 Xll STREET, 27TH FLOOR, }<flAMI, FLORIDA 33131 (S05) 374-5418 F.AX (S05) 374-5428

brand and diet system as its own, when really it was purloined from Plaintiff; (c) engaging in

other intentionally misleading, confusing, false and deceptive promotional and advertising

activities; (d) unlawfully misappropriating the intellectual property of Dr. G's; (e) engaging in

illegal fee splitting, and (f) violating the Fictitious Name Registration Act based on the failure to

register their fictitious name and maintain a current mailing address with the Division of

Corporations.

4. Defendants' ongoing wrongful conduct leaves Plaintiffs with no choice but to

commence this legal proceeding in order to protect its vital business interests, as well as its name

and reputation. By this Action, Plaintiffs seek to temporarily and permanently enjoin Defendants

from such wrongful and illegal conduct and to recover damages resulting from their unlawful

actions.

II. PARTIES

5. Plaintiff, DR. G'S FRANCHISING COMPANIES, LLC is a limited liability

company organized under the laws of the State of Florida, with its principal place of business in

Broward County, Florida.

6. Plaintiff, JDJ OF MIAMI, INC. is a corporation organized under the laws of the

State of Florida, with its principal place of business in Aventura, Florida.

7. Defendant, ALEXIA ECHEVARRIA ("Echevarria") is an individual over the age

of eighteen (18), is sui juris, and resides in Miami-Dade County Florida. As alleged herein,

Echevarria is directly engaged in unfair competition and deceptive trade practices and has

actively and knowingly caused the trademark infringement alleged herein.

8. Defendant, MARYSOL PATTON ("Patton") is an individual over the age of

eighteen (18), is sui juris, and resides in Miami-Dade County Florida. As alleged herein, Patton

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ZARCO EINHORN SALKOWSKI & BRITO

1-IL\}\lI TOWER, 100 S.E. 2:>n STREET, 27TH FLOOR, ML'0lI, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

is directly engaged in unfair competition and deceptive trade practices and has actively and

knowingly caused the trademark infringement alleged herein.

9. Defendant, DAVID BURSTYN is an individual over the age of eighteen (18), is

sui juris, and upon information and belief resides in Miami-Dade County Florida. As alleged

herein, David Burstyn is directly engaged in unfair competition and deceptive trade practices and

has actively and knowingly caused the trademark infringement alleged herein.

10. Defendant, JUDAH BURSTYN is an individual over the age of eighteen (18), is

sui juris, and upon information and belief resides in Miami-Dade County Florida. As alleged

herein, Judah Burstyn is directly engaged in unfair competition and deceptive trade practices and

has actively and knowingly caused the trademark infringement alleged herein.

11. Defendant, DC 1 OF CORAL GABLES, LLC d/b/a DR. GREGGS

WEIGHTLOSS CENTERS is a Florida limited liability company. The owner of DC 1 OF

CORAL GABLES is DC 1 Management, Inc., a Florida corporation. DAVID BURSTYN

is the Officer and Director of DC 1 Management, Inc. As alleged herein, DC 1 OF CORAL

GABLES, LLC is the owner of the fictitious business "DR. GREGGS WEIGHTLOSS

CENTERS."

12. The identities of defendants, various JOHN DOES, are not presently known and

this Complaint will be amended to include the names of such individuals and entities when

identified. Upon information and belief, additional unknown JOHN DOES have participated and

conspired with the known Defendants in the wrongful conduct alleged herein. Such JOHN

DOES will be subject to this Court's jurisdiction.

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ZARCO EINHORN SALKOWSKI & BRITO HI.AHI TOWER, 100 S.E. Z!'>[) STREET, 27Tl1 FLOOR, 1-'1I.AMI, FLORIDA 33131 (S05) 374-5418 F.AX (S05) 374-5428

III. JURISDICTION AND VENUE

13. This Court has jurisdiction over the subject matter of this lawsuit under the

Lanham Act, 15 U.S.C. §1116(a), which gives Plaintiffs civil remedies for Defendants'

violations. Thus, this Court has original federal question jurisdiction pursuant to 28 U.S.C.

§ 1331. This Court also has original jurisdiction over Plaintiffs' claims of unfair competition

pursuant to 28 U.S.C. §1338, as such claims are joined in this action with substantial and related

claims under the trademark laws.

14. This Court may exercise supplemental jurisdiction over all related state law

claims under 28 U.S.C. § 1367.

15. Venue is proper pursuant to 28 U.S.C. §1391 because a substantial part of the

events or omissions giving rise to the claims herein occurred in this district and because

Defendants reside in this district.

16. Defendants are subject to personal jurisdiction in this Court under Fla. Stat.

§§48.193(1)(a), 48.191(1)(b), and 48.193(2) because they (i) operate, conduct, engage in, or

carry on businesses or business ventures within the State of Florida; (2) have committed tortious

acts within the State of Florida as alleged herein, and (iii) engage in substantial and not isolated

activity within the State of Florida.

IV. GENERAL ALLEGATIONS The True Dr. G and Dr. G's Marks and System

17. The Dr. G's Weight Loss & Wellness program was created in 1994 by Dr.

Charles Goldsmith and since then, has helped more than 70,000 patients lose over 1,000,000

pounds.

5 ZARCO EINHORN SALKOWSKI & BRITO

MIAH! TOWER, 100 S.E. 2 XD STREET, 27TH FLOOR, }IIAHI, FLORIDA 33131 (S05) 374-5418 FAX (305) 374·-5428

18. Dr. Goldsmith is commonly referred to as "Dr. G" by the public and

members of the relevant trade. I This name has developed a secondary meaning in the

marketplace associated with weight loss. Indeed, Dr. Goldsmith is the true Dr. G and represents

the face of the Company.

19. In 2010, Dr. Goldsmith joined forces with Plaintiff, Dr. G's Franchising

Companies, LLC, in order to offer franchises for the use of "Dr. G's" trademarks, trade names,

service marks, logos ("Marks"), and franchise system in the operation of "Dr. G's Weight Loss

clinics." The Dr. G's franchise is operated under a business format, which was developed by Dr.

Goldsmith, Dr. G's Franchising Companies, LLC, and its affiliates, over a considerable period of

time, and includes trade secrets, training methods, standards, designs, methods of trademark

usage, marketing programs, and research and development connected with the operation and

promotion of Dr. G's Weight Loss clinics (the "Dr. G's System"). Indeed, each Dr. G's Weight

Loss clinic offers a comprehensive, medically supervised, weight loss and wellness treatment,

based upon individualized diagnosis and testing and individualized programs, which may include

but not be limited to the prescription of medications, vitamins, dietary plans and/or

products/exercise regimens in a professional medical environment ("Weight Loss Services").

20. The Dr. G's System includes recognizable and unique characteristics relating to

the equipment, uniforms, interior design, floor plans, its website, as well as its proprietary

Weight Loss Services, as used in the operation of Dr. G's Weight Loss clinics. This compilation

of processes and techniques was developed over time and amounts to a treasury of detail, know

how, skill and technique which is all associated with the Dr. G's brand.

Attached hereto as Exhibit "A" is a true and correct copy of Dr. Goldsmith's biography, referring to Dr. Goldsmith as Dr. G, found on Dr. G's website.

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HL\HI TOWER, 100 S.E. 2 Xll STREET, 27TH FLOOR, HIA}-II. l~LORIDA 33131 (305) 374-5418 F.AX (305) 374-5428

21. There are currently thirteen (13) Dr. G's franchised Weight Loss clinics operating

in the United States. Twelve of these clinics are located within the State of Florida. Moreover,

there are currently four (4) Dr. G's clinics operating in international markets.

22. Based upon a significant expenditure of research, time, monies and resources, Dr.

G's has acquired experience and skill in the development and operation of its weight loss clinics.

The reputation of Dr. G's in the marketplace is a valuable draw to the public and is also a source

of repeat business from existing patients.

Dr. G's Right to Protect Its Marks and Intellectual Property

23. Plaintiff, JDJ of Miami, Inc.,. an affiliate of Dr. G's, owns the federally registered

"Dr. G's" trademark, (Registration No. 3702378), and has granted Dr. G's the exclusive right in

the United States of America and elsewhere to use and license the Dr. G's trademark in the

operation of the Dr. G's business and franchise system.

24. Applications to register the following trademarks are also on file at the U.S.

Patent and Trademark Office:

SERIAL FILING MARK NUMBER DATE

Dr.Gs 851135,580 September 22, 2010

Wei9~J,~R?~ Lose it. Love It. 851177,482 November 16,2010

25. The registered Dr. G's trademark is utilized in interstate commerce.

26. The registered Dr. G's trademark constitutes prima facie evidence of its validity

and conclusive evidence of Dr. G's exclusive right to use it in connection with the services

identified therein and other commercial goods and services.

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ZARCO EINHORN SALKOWSKI & BRITO MIAMI TOWER. 100 S.B. 2ND STREET, 27TH FLOOR, MIAHI. FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

27. This registration also provides constructive notice to Defendants of Plaintiffs'

ownership and exclusive rights in the Dr. G's trademark.

28. The registered Dr. G's Mark has always been and continues in full force and

effect.

29. All of Dr. G's Marks are distinctive, unique and serve to identify the source,

origin, and sponsorship of Dr. G's Weight Loss clinics, the products and services they offer, and

distinguish Dr. G's Weight Loss clinics from other businesses offering similar services.

30. Dr. G's Franchising Companies, LLC and its authorized franchisees have

advertised and extensively promoted the Dr. G's Marks, as well as the products and services

offered thereunder. As a result of such extensive advertising and promotional efforts, and the

amount of money spent in connection therewith, the products and services offered under the Dr.

G's Marks have established demand and goodwill among consumers. The public has come to

know and recognize the Dr. G's Marks, as well as the Dr. G's System, and associate both the

Marks and the System exclusively with the weight loss services and products offered by Dr. G's.

Defendants' Deceptive and Infringing Conduct

31. Defendants have engaged in a course of conduct specifically geared towards

unfairly capitalizing and profiting on the reputation and popularity of Dr. G's Weight Loss

clinics, the Dr. G's brand, and the Dr. G's Marks.

32. Defendant David Burstyn is a former patient of Dr. Goldsmith and participated in

the Dr. G's weight loss program between the years 2004 and 2009. Upon information and belief,

David Burstyn's mother was also a patient of Dr. Goldsmith, as was Defendant, Judah Burstyn,

and Judah Burstyn's ex-wife.

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ZARCO EINHORN SALKOWSKI & BRITO HIAHI TOWEH, 100 S,E. 2~u STREET, 27TH FLOOR, MIAMI, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

33. As Dr. Goldsmith's patients, the Burstyn's learned about Dr. Goldsmith's

proprietary Dr. G's weight loss program and the success of the Dr. G's System.

34. The Burstyn's recognized the financial success of the Dr. G's business and

callously devised a scheme to "rip off' Dr. G's brand. As part of their devious plan, Defendant

David Burstyn even attended Discovery Dar to leam about the Dr. G's franchise concept, even

though he had no intentions of purchasing a Dr. G's franchise. Rather, the Burstyn's were

scheming to gather additional information about Dr. G's in furtherance of their plan to rip off the

concept.

35. Instead of purchasing a franchise, the Burstyn's engaged in a scheme and plan to

compete unlawfully with Dr. G's by misappropriating the name, reputation, trade secrets,

intellectual property and ultimately the business system and identity of Dr. G. To accomplish

this wrongful goal, DC I and the Burstyn's named their new competing business "Dr. Gregg's

Weightloss Centers." Defendants have no prior experience owning or operating a weight loss

center. In addition, there is no doctor or other individual employed by Defendants with the name

"Dr. Gregg."

36. In order to illegally trade off the name and reputation of Dr. G's and to divert

customers from Plaintiffs to themselves, the Burstyn' s purposefully chose the confusingly

similar fictitious name "Dr. Gregg's Weight Loss Centers" for their new company. Indeed, such

actions, as described above, are further evidence of Burstyn's intent to capitalize on the success

of Dr. G's and their decision to steal the Dr. G's Mark, its reputation and the Dr. G's System in

order to unlawfully acquire the business and economic value of the Dr. G's name and brand.

2 Discovery day is an event set up by the franchise company for potential franchisees to learn more about the franchise opportunity and where material information about the business is shared only with those who attend and have expressed an interest in buying a Dr. G's franchise.

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ZARCO EINHORN SALKOWSKI & BRITO HIMlI TOWER, 100 S.E. 2 XD STREET, 27Tl! FLOOR, MIAlvII, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

37. To that end, in further completing their unlawful goals, the Burstyn's created a

fictitious business, "Dr. Gregg's Weight Loss Centers," which offers weight loss services

substantially similar to those offered by Dr. G's.

38. In order to keep their scheme confidential and conceal their identities, the

Defendants purposefully failed to register their fictitious business name with the Florida

Department of Corporations, in violation of the Fictitious Name Registration Act, which requires

an individual or company to register its fictitious name and maintain a current mailing address

with the Division of Corporations. The purpose of this statute is to require that any person

operating a business under a fictitious name disclose to the public the true names of the owners

of that business. Defendants' failure to do so is further evidence of the fact that the Dr. Gregg's

business was purposely created to avoid the identification of its true owners by the public, which

is also consistent with Defendants' apparent unlawful goals of infringing Dr. G's intellectual

property rights and copying its System.3

39. Defendants designed their new business to unlawfully profit and capitalize on the

success of Dr. G's by creating consumer confusion. In approximately December 2011 or

January 2012, Defendants opened "Dr. Gregg's Weightloss Centers" in Aventura and Dadeland.

Each center was purposefully situated by Defendants in close proximity to a Dr. G's Weight

Loss clinic, and Defendants proceeded to unfairly trade on the Dr. G' s name, reputation and

client experience accordingly.

40. At around this same time, Echevarria and Patton joined forces with the Burstyn's

as the "official spokespersons" for the Dr. Gregg's brand. In doing so, Echevarria and Patton

3 Only recently, after receiving a Demand Letter from Plaintiffs counsel, a copy of which is attached hereto as Exhibit "B," did Defendants finally register their fictitious business name with the Florida Department of Corporations. Indeed, as of February 10,2012, "Dr. Gregg's Weightloss Centers" did not appear as a registered fictitious name on the Florida Department of Corporations.

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ZARCO EINHORN SALKOWSKI & BRITO :MIAHI TOWER, 100 S.B. 2~U STREET, 27T!I FLOOR, 1-11A1>1I, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

conspired with the other Defendants to pirate the mark and reputation of Dr. G's in order to

unlawfully acquire the goodwill and economic value associated with the Dr. G's clinics and

brand.

41. Defendants sought to further their plan and scheme to capitalize on the success of

Dr. G's by creating and relying on false advertising and consumer confusion.

42. Defendants have promoted and publicized their competing business through

online advertising. Defendants have also announced and publicized the "Dream Diet" being

offered at their Dr. Gregg's Weight Loss Centers under the infringing domain name

www.drgreggsweightloss.com.4 Tellingly, even the "Dream Diet" appears to be a total

fabrication, just as its purported creator "Dr. Gregg."

43. In addition, in approximately January or early February 2012, Defendants offered

a promotion to the general public through the online retailer LivingSocial. Pursuant to this

promotion, a consumer could spend just Ninety Nine Dollars ($99.00) for a four week weight

loss program at Dr. Gregg's. Indeed, according to the LivingSocial web page, Defendants sold a

total of Three Hundred and Four (304) packages.5

44. In addition to unlawfully trading off of Dr. G's name and reputation, this

LivingSocial promotion is in violation of Florida's Medical Practice Fee Splitting Laws. Any

fee split arrangement, in any form, where a medical professional shares a portion of patient fees

with a lay entity is unlawful.

45. Through the LivingSocial promotion, as well as other false advertising and

communications presented to the general public, Defendants have devised a fictional persona

4 True and correct copies of Defendants' DR. GREGG'S promotional materials, including web pages from YELP .com and YellowPages.com, as well as pages from its own website, which is identified by the domain name www.drgreggsweightloss.com. are attached as Composite Exhibit "C."

A true and correct copy of Dr. Gregg's LivingSocial promotion is attached hereto as Exhibit "D."

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HIANI TOWER, 100 S.E. 2~!l STREET, 27TH FLOOR, MIMII, FLORIDA 33131 (305) 374-5418 F .. AX (S05) 374-5428

named "Dr. Gregg" in order to illegally trade off of the Dr. G's name and reputation.

Prospective patients of the real Dr. G's Weight Loss clinics can reasonably be misled into

believing that the fictitious Dr. Gregg is actually Dr. G and that the imposter Dr. Gregg's Weight

Loss clinic is actually an authentic Dr. G's Weight Loss clinic or affiliated with a Dr. G's clinic.

46. Defendants' attempts to confuse the public have been successful. Following

Defendants' launch of the LivingSociai promotion, Dr. G's received numerous phone calls and

visits from individuals requesting Dr. Gregg's LivingSocial promotion. Not surprisingly,

consumers were led to believe that Dr. G's and Dr. Gregg's were somehow connected, or

affiliated, with one another.

47. In addition, not only have Defendants employed a confusingly similar name, but

they have also attempted to knock-off the Dr. G's System. For example, Defendants' website

states that "You will consult with your Wellness Coach to monitor your progress." Defendants'

use of this term Wellness Coach is directly copied from Dr. G's weight loss program. Instead of

referring to this individual as a "Nutritionist," or "Weight Loss Counselor," or any other

potentially applicable reference, Defendants chose to use an identical term. Thus, Defendants'

use of Wellness Coach creates confusion and deception as to the source and origin of

Defendants' services, and through this use, Defendants are unfairly trading on the valuable

goodwill embodied in the Dr. G's Marks and the Dr. G's System.

48. Defendants' confusingly similar use of Dr. Gregg's, as well as their other actions

set forth above, create confusion as to the source and origin of Defendants' services and through

their use, Defendants are unfairly trading on the valuable goodwill embodied in the Dr. G's

Marks.

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MLU'lI TOWER, 100 S.E. 2 XD STREET, 27TH FLOOR, 1-ll.lv·n, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

49. Defendants undertook these infringing activities with the full knowledge of the

popularity of the Dr. G's Marks, and with full knowledge of Dr. G's exclusive rights to the Dr.

G's registered trademark, and in willful and intentional disregard thereof. Defendants have

engaged, and are engaging, in the above-described illegal infringing activities knowingly and

intentionally for the purpose of illegally trading on the goodwill and reputation of the Dr. G's

Marks and the Dr. G's System.

50. The activities of Defendants alleged herein were undertaken with the specific

intent to deceive and mislead consumers as to the sponsorship, source and origin of the weight

loss services offered by Defendants.

51. Defendants have no license, authority, or any other permission from Dr. G's to

use any of the Dr. G's Marks, or similar variations thereof, or the Dr. G's System in connection

with Defendants' competing services.

52. Defendants' activities, as described above, are likely to create a false impression

and deceive consumers, the public, and the trade into believing that there is a connection or

affiliation or association between Dr. Gregg's and Dr. G's. Specifically, as a result of

Defendants' false advertising, Defendants have created the false impression that Dr. G and Dr.

Gregg are affiliated or connected with one another. Prospective patients of Dr. G's Weight Loss

clinics have been, and will likely be, confused into believing that the fictitious Dr. Gregg is Dr.

G and that the imposter Dr. Gregg's clinic is an authentic Dr. G's clinic or associated with Dr.

G's.

53. Given the similarities, as described above, the public is likely to be confused or

deceived into believing that Dr. Gregg's is owned, licensed, franchised, sponsored, authorized or

otherwise approved by Dr. G's or is in some way connected or affiliated with Dr. G's.

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ZARCO EINHORN SALKOWSKI 8< BRITO MIAMI TOWER, 100 S.E. 2 XD STREET, 27T1T FLOOR, MIAMI, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

54. In addition, Defendants' continuing actions to confuse and deceive patients and

prospective patients and the public that Defendants' weight loss centers are affiliated or

associated with the Dr. G's clinics and to wrongfully associate the name and reputation of Dr. G

with the fictitious Dr. Gregg has culminated in the misappropriation and conversion of Dr. G's

valuable intellectual property and deprivation of the rights, benefits and value of that intellectual

property to Dr. G's. Defendants' actions to deceive and confuse the public and consumers, and

to misappropriate as their own the Dr. G's name, reputation, as well as the Dr. G's System,

constitutes an unlawful conversion to Defendants of the rights and benefits of ownership of the

Dr. G's brand and intellectual property, depriving Plaintiffs of those valuable rights and benefits.

55. Defendants' knowing and deliberate hijacking of Dr. G's Marks has caused, and

continues to cause, substantial and irreparable harm to Dr. G's goodwill and reputation.

56. Plaintiffs bring this action to protect its rights, to enjoin the continued de-

valuation of the Dr. G's brand, the continued wrongful use and benefit of the property of

Plaintiffs, and the unlawful deception and confusion of the public and the prospective patients of

Dr. G's and to obtain from Defendants the damages incurred.

V. CONDITIONS PRECEDENT; ATTORNEY'S FEES

57. All conditions precedent to the institution of this action have been waived,

performed, or have occurred.

58. Plaintiffs have retained the undersigned counsel to represent it in this action and is

obligated to pay counsel a reasonable fee for their services. Plaintiffs seek to recover its

reasonable attorneys' fees and costs from Defendants pursuant to applicable law.

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HLt\HI TOWER. 100 S.E. 2 Xll STREET, 27TH FLOOR, HlA.l.'.fI, FLORIDA 33131 (305) 374-54·18 FAX (305) 374-5428

VI. CAUSES OF ACTION

COUNT I Trademark Infringement, 15 U.S.C. §1114

(Against All Defendants)

59. Plaintiffs repeat and re-alleges the allegations set forth in Paragraphs I through

58, supra, as iffully set forth herein.

60. This is an action for infringement of a federally registered trademark under 15

U.S.C. §1114(l).

61. Dr. G's is a registered trademark, owned by Plaintiff, JDJ of Miami, Inc. under

Registration No. 3702378. Plaintiff, Dr. G's Franchising Companies, LLC, has the exclusive

right in the United States of America and elsewhere to use and license the Dr. G's Registered

Mark in its operation of the Dr. G's franchise system.

62. Prior to Defendants' infringing use, no third party has used the Dr. G's registered

trademark or any confusingly similar marks. Indeed, this mark has always been and continues in

full force and effect.

63. The Dr. G's registered trademark represents a term used to identify and

distinguish the services of the Dr. G's Weight Loss clinics from the services of others.

64. Dr. G's has used the Dr. G's registered trademark in displays, signage, and

through other methods of advertising and promotion, including print and online media.

65. Defendants, without authorization from Dr. G's, have infringed and are

continuing to infringe the Dr. G's registered trademark through their use of the name Dr. Gregg's

to describe competing weight loss services. Moreover, Defendants' weight loss centers are

located in close geographic proximity to Plaintiff's weight loss clinics.

15

ZANCO EINHORN SALKOWSKI & BRITO

MIANI TOWER, 100 S.E. 2!'u STREET, 27T11 FLOOR. MIMH, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

66. Defendants' actions have caused a likelihood of confusion and actual confusion in

the marketplace due to the similarity of the marks and similarity of the services associated with

the marks. Defendants' acts are intended to cause, have caused and are likely to continue to

cause confusion, mistake, and deception among consumers, the public and the trade as to

whether Defendants' weight loss program originates from, or is affiliated with, sponsored by, or

endorsed by Dr. G's.

67. Indeed, Dr. G's Weight Loss clinics and Defendants compete for the same clients

in an identical industry.

68. Defendants have acted with knowledge of Plaintiffs' ownership rights to the Dr.

G's Marks and with deliberate intention or willful blindness to unfairly benefit from the

incalculable goodwill symbolized thereby.

69. Defendants' infringement has been willful and deliberate and designed

specifically to trade upon the goodwill associated with the Dr. G's trademark.

70. Defendants have made and will continue to make substantial profits and gains to

which they are not entitled to in law or in equity.

71. Defendants' infringement constitutes a violation of 15 U.S.C. §1l14 and will

continue unless enjoined by this Court.

72. Plaintiffs have no adequate remedy at law to protect its substantial business and

property rights. The damages from Defendants' activities are considerable and continuing and

are therefore not capable of ascertainment at this time.

73. Defendants' infringing acts have caused injury to Plaintiffs and as a direct and

proximate result of Defendants' infringing acts, Plaintiffs have incurred substantial and material

damages in an amount to be determined at trial.

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MI.ANI TOWER, 100 S.E. 2 s I) STREET, 27TH FLOOR, NIMH. FLORIDA 33131 (S05) 374-5418 FAX (S05) 374-54·28

74. Plaintiffs will continue to suffer irreparable injury unless Defendants are

permanently enjoined by this Court.

WHEREFORE, Plaintiffs, DR. G'S FRANCHISING COMPANIES, LLC and JDJ OF

MIAMI, INC., requests this Court enter judgment:

A. Temporarily and permanently enjoining Defendants, and all persons or entities in

active concert or participation with Defendants, from using, displaying, advertising, or selling its

services under, or otherwise doing business from using any name confusingly similar to the Dr.

G'sMarks;

B. Ordering Defendants to destroy and/or delete all documents and materials bearing

the name "Dr. Gregg," including all formative variations thereof, and immediately cease using

the infringing domain name www.drgreggsweightloss.com. including all related web-based

advertising, marketing materials;

C. Ordering Defendants to account for and pay all profits derived from, and all

damages suffered by Plaintiff by reason of Defendants' unlawful use of the Dr. G's Marks;

D. Ordering Defendants to pay treble damages, costs and attorneys' fees under 15

U.S.c. §1117 of this action; and

E. Ordering such other relief as the Court deems necessary, just and proper.

COUNT II False Association and Federal Unfair Competition Under 15 U.S.C. §1125(a)



58, supra, as if fully set forth herein.

76. Defendants' use of the name Dr. Gregg's, as well as the other schemes and false

advertising as alleged hereinabove, plus the copying of the Dr. G's System, constitute a false

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HL\NI TO"'ER, 100 S.B. 2~D STREET, 27Tll FLOOR, MI ... \.MI, FLORIDA 33131 (305) 374-5418 F.AX (305) 374-5428

designation of origin and/or a false representation, which is likely to deceive and mislead

consumers, and has actually deceived and misled consumers, into believing that the Defendants'

services originate with Plaintiffs, or are otherwise affiliated with, licensed or endorsed by

Plaintiffs.

77. Defendants' willful, intentional and unauthorized acts of copying Plaintiffs'

unique products and services and falsely describing the origins of their products and services

unfairly restrains Dr. G's from competing and is likely to deceive clients and prospective clients

into mistakenly believing that Defendants and their Dr. Gregg's Weight Loss Centers are, or are

associated with, Dr. G's clinics.

78. Defendants' unlawful actions constitute violations of 15 U.S.C. §1125(a).

79. Plaintiffs have no control over the nature and quality of the services offered by

Defendants, and any neglect by Defendants in providing their services reflects poorly on

Plaintiff, as the believed source or origin thereof. In effect, this hampers Plaintiffs' efforts to

continue to protect its brand and reputation and can ultimately result in a loss of sales or

irreparably taint Plaintiff s reputation.

80. As a direct and proximate result of Defendants' false association, false

designation and unfair competition, Plaintiffs have incurred substantial and material damages in

an amount to be determined at trial.


MIAMI, INC., request this Court enter judgment:



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ZARCO EINHORN SALKOWSKI & BRITO ML\J'.II TO'VER, 100 S.E. 2:->0 STREET, 27TH FLOOR, }'ll.A}1I, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428


G's Marks;







D. Ordering Defendants to pay treble damages, costs and attorneys' fees under IS

U.S.C. §1117 of this action; and


COUNT III False Advertising Under 15 U.S.C. §1125(a)


81. Plaintiffs repeat and re-allege the allegations set forth in Paragraphs I through 58,

supra, as if fully set forth herein.

82. Defendants are direct competitors to the Dr. G's Weight Loss Centers.

83. Defendants' advertisements and promotions are false and misleading.

84. The advertisements and promotions have deceived, or have the potential to

deceive, consumers.

85. The deception likely had or likely may have a material effect on purchasing

decisions by the general public. The Dr. G's Marks have been or will be weakened as a result of

clients, prospective clients, and the public seeing Dr. G's Marks as copies of Defendants, rather

than seeing Dr. G's Weight Loss as the unique, predominant and senior mark and brand.

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ZARCO EINHORN SALKOWSIIT & BRITO ~llAMI TOWER, 100 S.E. 2 XD STREET, 27TH FLOOR, HI..t\}.1I, FLORIDA 33131 (305) 374-5418 F.AX (305) 374-5428

86. Defendants' misrepresentations and false advertising affects interstate commerce.

87. Plaintiffs have been and will continue to be injured as a result of Defendants'

false advertising.

88. Defendants used and continue to use in commerce false or misleading

descriptions and representations of fact, which thereby misrepresent the nature, characteristics,

qualities or origin of Defendants' services.

89. Defendants' false advertising has caused Plaintiffs to lose patients and prospective

patients, and to incur increased promotional costs, as a result of Defendants' false and misleading

representations.




MIAMI, INC. request this Court enter judgment:




G's Marks;







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ZARCO EINHORN SALKOWSKI & BRITO l'rlL\l·n TOWER, 100 S.E. 2~u STREET, 27TH FLOOR, HIMlI. FLORIDA 33131 (305) 374-54·18 FAX (305) 374-5428

D. Ordering Defendants to pay treble damages, costs and attorneys' fees under IS

U.S.C. §1117 of this action; and


COUNT IV Common Law Tradename Infringement


91. Plaintiffs repeat and re-allege the allegations set forth in Paragraphs I through 58,

supra, as if fully set forth herein.

92. Plaintiffs have common law rights in connection with the Dr. G's tradename,

which rights are superior to any rights of which Defendants may claim therein.

93. Dr. G's has been a tradename associated in the minds of the public with Plaintiffs'

weight loss centers.

94. Defendants' use of the name Dr. Gregg's, and any other confusingly similar

variations thereof, to promote their weight loss centers is likely to, and has actually caused

confusion as to source or origin, and the public is likely to associate Defendants' services with,

or as originating from, Plaintiffs.

95. Defendants' infringing acts have damaged Plaintiffs and will to damage Plaintiffs

unless permanently enjoined by this Court.

96. As a direct and proximate result of Defendants' infringement, Plaintiffs have

incurred substantial and material damages in an amount to be determined at trial.

97. The wanton, willful, malicious and fraudulent nature of Defendants' conduct

entitles Plaintiffs to punitive damages.



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ZARCO EINHORN SALKOWSKI & BRITO MIMlI TOWER, 100 S.E. 2 Xll STREET, 27TH FLOOR, Ml.AHI, FLORIDA 33131 (305) 374-5418 F.AX (305) 374-5428




G's Marks;






damages suffered by Plaintiff by reason of Defendants' unlawful use ofthe Dr. G's Marks;

D. Ordering Defendants to pay the costs of this action;

E. Ordering Defendants to pay punitive damages under Fla. Stat. §768.72, and

F. Ordering such other relief as the Court deems necessary, just and proper.

COUNT V Common Law Unfair Competition by Passing Off



58, and 76 through 80, supra, as if fully set forth herein.

99. Defendants are direct competitors of Dr. G's.

100. Through Defendants' use of a highly, confusingly similar name in an identical

industry, and by copying all of the unique and distinctive elements of Dr. G's clinics, Defendants

sought to create the false impression that Defendants' weight loss centers are, or are associated

with, the Dr. G's clinics, that they so callously copied.

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ZARCO EINHORN SALKOWSKI & BRITO 1-llANI TOWER, 100 S.E. Z;';"u STREET, 27TH FLOOR, HI.Ai'iI, FLORIDA 33131 (S05) 374-5418 FAX (S05) 374-5428

101. The foregoing conduct and other deceptive, fraudulent and unlawful conduct

alleged hereinabove constitutes unfair competition in violation of the common law of Florida.

102. Defendants' unfair competition has been willfully performed with the actual and

constructive knowledge of Plaintiffs' prior rights and registration of the federally registered Dr.

G's trademark and other Dr. G's Marks.

103. Defendants' actions have caused or are likely to cause consumer confusion.



105. As a direct and proximate result of Defendants' unfair competition, Plaintiffs have

incurred substantial and material damages in an amount to be determined at trial.

106. Defendants' conduct alleged hereinabove will cause Plaintiffs severe and

irreparable harm for which it has no adequate remedy at law, in that the full extent of the harm

proximately caused by Defendants' conduct can never be ascertained.








G'sMarks;



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ZARCO EINHORN SALKOWSKI & BRITO ML\}.'II TOWER, 100 S.E. 2 XD STREET, 27TH FLOOR, HL\HI, FLORIDA 33131 (S05) 374-5418 FAX (S05) 374-5428








COUNT VI Common Law Unfair Competition (All Conduct)


108. Plaintiffs repeat and re-alleges the allegations set forth in Paragraphs 1 through

58, 93 through 94, 99 through 100, supra, as if fully set forth herein.

109. Defendants' conduct alleged hereinabove, including without limitation

misrepresentation, reverse passing off, passing off, false advertising constitute unfair competition

under the laws of Florida.

110. As a direct and proximate result of Defendants' acts of unfair competition, alleged

hereinabove, Plaintiffs have incurred, and will incur, substantially monetary damages in a sum as

yet unknown.

Ill. Defendants' conduct alleged hereinabove will cause Plaintiff severe and

irreparable harm for which it has no adequate remedy at law, in that the full extent of the harm

proximately caused by Defendants' conduct can never be ascertained.



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ZARCO EINHORN SALKOWSKI & BRITO MIAJvlI TOWER, 100 S.E. 2:-;D STREET, 27T!l FLOOR, JvIL\MI, FLORIDA 33131 (S05) 374-5418 F.AX (305) 374-5428






G's Marks;










COUNT VII Violation of Florida Deceptive and Unfair Trade Practices Act


113. Plaintiffs repeat and re-alleges the allegations set forth in Paragraphs 1 through

58, 93 through 94, 99 through 100, supra, as if fully set forth herein.

114. Defendants have engaged in such deceptive and unfair trade practices in violation

of Florida' s Deceptive and Unfair Trade Practices Act §501.201, et seq. ("FDUTPA").

115. Defendants' actions, as set forth above, offend established public policy, are

unscrupulous or substantially injurious to consumers, and/or are in violation of statutes

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ML\1vlI TOWER, 100 S,E. 2 S ]) STREET, 27TH FLOOR, ML:\HI. FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

proscribing unfair methods of competition, or unfair, deceptive or unconscionable acts or

practices, and Defendants' actions thus constitute deceptive acts or unfair practices.

116. Specifically, Defendants have violated the FDUTPA by engaging in unfair

methods of competition, unconscionable acts or practices and/or unfair or deceptive acts or

practices by, inter alia, operating a business that has used or is using concepts, service marks,

trademarks, proprietary products and methods of operation that were created by Plaintiff, have

been unlawfully misappropriated by Defendants from Plaintiff and are being used by Defendants

without Plaintiff s permission or authorization.

117. As a direct and proximate result of Defendants' deceptive and unfair trade

practices, Plaintiffs have also incurred substantial and material damages in an amount to be

determined at trial.







services under, or otherwise doing business from using any name confusingly similar to Dr. G's

Marks;

B. Ordering Defendants to account for and pay all profits derived from, and all

damages suffered by Plaintiff;

C. Ordering Defendants to pay all costs and attorneys' fees; and

D. Ordering such other relief as the Court deems necessary, just and proper.

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ZARCO EINHORN SALKOWSKI & BRITO ML\MI TOWER, 100 S.E. 2 XD STREET, 27Tll FLOOR, Ml.tu"II, FLORIDA 33131 (305) 374-5418 FAX (305) 374-5428

DEMAND FOR JURY TRIAL

Plaintiffs hereby demand a jury trial on all issues so triable.

Dated: February 17,2012 Respectfully submitted,

ZARCO EINHORN SALKOWSKI & BRITO, P.A. Counsel for Plaintifft Bank of America Tower 100 S.E. 2nd Street, 27th Floor Miami, Florida 33131 Telephone: (305) 374-5418 Facsimile: (305) 374-5428

By: /s/ Robert Einhorn ROBERT ZARCO Florida Bar No. 502138 ROBERT M. EINHORN Florida Bar No. 858188

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ZANCO EINHORN SALKOWSKI & BRITO MIANI TOWER, 100 S.E. 2 Xll STREET, 27Tl! FLOOR, ML\MI, FLORIDA 33131 (305) 374-5418 F.AX (305) 374-5428

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