True Brands v. Promo Crunch - Complaint

Case 2:17-cv-03553-HRH Document 1 Filed 10/05/17 Page 1 of 30
1 BEUS GILBERT PLLC

ATTORNEYS AT LAW
2 701 NORTH 44TH STREET
PHOENIX, ARIZONA 85008-6504
3 TELEPHONE (480) 429-3000
4 L. Richard Williams/010524/rwilliams@beusgilbert.com
K. Reed Willis/028060/kwillis@beusgilbert.com
5
6 THORPE NORTH & WESTERN LLP
ATTORNEYS AT LAW
7 175 S. MAIN STREET, SUITE 900
SALT LAKE CITY, UT 84111
8 TELEPHONE (801) 566-6633
FACSIMILE: (801) 566-0750
9
Mark M. Bettilyon (Pending Pro Hac Vice)/mark.bettilyon@tnw.com
10 Peter M. de Jonge (Pending Pro Hac Vice)/dejonge@tnw.com
Jed H. Hansen (Pending Pro Hac Vice)/Hansen@tnw.com
11
12 Attorneys for Plaintiff True Brands Limited
13
14 UNITED STATES DISTRICT COURT
15 FOR THE DISTRICT OF ARIZONA
16
TRUE BRANDS LIMITED, Case No.:
17
18 Plaintiff, COMPLAINT
19 vs.
20
PROMO CRUNCH D/B/A PROMO
21 MOTIVE PROMOTIONAL PRODUCTS,
JOHN GRAHAM, VIRTUAL WEB
22
TRADE SHOW, BRIAN BROWN,
23 SHOPIFY INC., AND JOHN DOES I & II,
24 Defendants.
25
26 Plaintiff True Brands Limited (True Brands) files this Complaint with Jury Demand
27
against Defendants Promo Crunch d/b/a Promo Motive Promotional Products, John Graham,
28
BGD-#217218-v1-Complaint.DOCX
1 Virtual Web Trade Show, Brian Brown, Shopify Inc., and John Does I & II (collectively
2 Defendants). True Brands complains and alleges as follows:
3
I. PARTIES, JURISDICTION, AND VENUE
4
5 1. True Brands is a foreign company located in the United Kingdom having a
6 principal place of business at Unit 2, The GP Centre, Yeomans Road, Ringwood, BH24-3FF,
7
United Kingdom.
8
2. Upon information and belief, Defendant Promo Motive Promotional Products
9
10 (Promo Motive) is an Arizona entity operating out of Scottsdale, Arizona. By Promo
11 Motives own admission, Promo Motives head company is Promo Crunch. Promo Crunch
12
is an Arizona entity with a principal place of business at 31002 42nd Place, Cave Creek,
13
14 Arizona 85331. By Promo Motives own admission, it owns a major stake in two electronics
15 factories in Shenzhen, China.

16
3. Upon information and belief, Defendant John Graham is a resident of
17
18 Scottsdale, Arizona and is the Chief Executive Officer of Defendant Promo Motive.
19 4. Upon information and belief, Defendant Virtual Web Trade Show is an entity
20
located in Florida with a principal place of business at 1211 Citrus Isle, Fort Lauderdale,
21
Florida 33315.
22
23 5. Upon information and belief, Defendant Brian Brown is a resident of Fort
24 Lauderdale, Florida and is the President of Defendant Virtual Web Trade Show.
25
6. Upon information and belief, Defendant Shopify Inc. (Shopify) is a
26
27 Canadian corporation with a headquarters at 150 Elgin Street, 8th Floor, Ottawa, Ontario,
28
2
1 Canada K2P 1L4. Shopifys office in the United States is located at 33 New Montgomery
2 St. Ste. 750, San Francisco, California 94105.
3
7. Upon information and belief, Defendants John Does I & II are Chinese
4
5 manufacturing and/or corporate entities associated with Promo Motive.
6 8. This is a civil action for patent and trademark infringement and for
7
Defendants counterfeiting of True Brands valid trademark arising under the patent and
8
9 trademark laws of the United States of America, Titles 15 and 35, United States Code.
10 9. This court has original jurisdiction pursuant to 28 U.S.C. 1331 and 1338, 15
11
U.S.C. 1114(1)(a), and 35 U.S.C. 279.
12
10. Upon information and belief, Promo Motive is in the business of
13
14 manufacturing, offering to sell, and selling a FIXER 20-in-1 Multi-tool through the
15 guidance and direction of its CEO John Graham. Virtual Web Trade Show is in the business
16
of directing customers from its website to other websites, via promotional offers to sell,
17
18 where the customers can buy promotional products, including Promo Motive and its FIXER
19 20-in-1 Multi-tool, through the guidance and direction of its CEO Brian Brown. Shopify is
20
in the business of providing web hosting services, including server support, for websites to
21
22 sell products, including Promo Motive and its FIXER 20-in-1 Multi-tool. All the
23 Defendants help publish, promote, and offer to sell the FIXER 20-in-1 Multi-tool via
24
Promo Motive to customers throughout the United States, including users within the District
25
of Arizona.
26
27 11. Upon information and belief, through its contractual and business relationships
28 between the Defendants, Defendants have substantial, continuous contacts within the state of
3
1 Arizona. Accordingly, this Court has general personal jurisdiction over Defendants pursuant
2 to Ariz. R. Civ. P. 4.2.
3
12. Venue is proper in this judicial district, pursuant to 28 U.S.C. 1391, because
4
5 Defendants conduct business in this district directly related to the trademark and related
6 issues in this case, are subject to the courts personal jurisdiction in this case, and a
7
substantial part of the activity giving rise to the causes of action occurred in this judicial
8
9 district.
10 13. Venue is proper in this district, pursuant to 28 U.S.C. 1400(b), because

11
Defendants Promo Motive and Graham are residents of Arizona and/or Promo Motive has
12
committed acts of infringement in this district and has a regular and established place of
13
14 business in this state. John Does I & II are not residents of the United States and, thus, may
15 be sued in any judicial district pursuant to 28 U.S.C. 1391(c)(3).
16
II. FACTUAL BACKGROUND
17
18 A. True Brands Patent Rights
19 14. True Brands designs and manufactures small, original, and useful tools made
20 of high quality materials including, but not limited to, pocket tools, multi-tools, flashlights,
21
lighters, and knives. One such product is the 20 tools in 1 product marked under the brand
22
23 name FIXR. True Brands has sold, both through its related company True Utility and
24 through authorized distributors, its FIXR products across the world, including in the United
25
States.
26
15. True Brands is the owner and/or assignee of United States Design Patent
27
28 D773,274 S (D274 Patent) issued on December 6, 2016 and titled Hand Tool which
4
1 protects parts of the design of the FIXR 20 tools in 1 multi-tool. Attached as Exhibit A
2 is a true and correct copy of the D274 Patent.
3
B. True Brands Trademark Rights
4
5 16. True Brands is the owner of a trademark of FIXR (FIXR Trademark)
6 registered with the United States Patent and Trademark Office on September 13, 2016. The
7
trademark was issued for a Multi-function hand tool comprised of carabineer, measuring
8
ruler, bottle opener, wire cutters, wire stripper, knife, screwdrivers, wrenches, nail cleaner,
9
10 cutting blade, pry bar, file, and box opener. Attached as Exhibit B is a true and correct copy
11 of the FIXR Trademark.
12
17. True Brands uses the above mark to identify its FIXR 20 tools in 1 multi-
13
14 tool and to indicate the high quality product a customer will receive when purchase a True
15 Brands multi-tool.
16
18. In addition to specific holiday promotional events (e.g., Fathers Day
17
18 promotions), the FIXR multi-tool is promoted online through social media, scores of online
19 videos, in printed catalogs, and through nationwide e-mail campaigns sent to hundreds of
20
thousands of consumers. The FIXR multi-tool is also the subject of individual sales calls
21
from a team of hundreds of individual sales persons. As a result, True Brands has
22
23 established itself and the FIXR multi-tool as a high quality company and tool. The FIXR
24 multi-tool and its associated brand is, and has been, an asset of enormous value to True
25
Brands.
26
27 19. The FIXR multi-tool is sold online through multiple channels and through
28 hundreds of hardware and big box retail outlets across the United States.
5
1 20. Since its introduction into the U.S., sales of the FIXR multi-tool have
2 expanded rapidly. True Brands has sold hundreds of thousands of the FIXR multi-tools in
3
the United States. Customers purchasing the FIXR multi-tools include Ace Hardware,
4
5 Kohls, Dicks Sporting Goods, Dillards, and Cracker Barrel.
6 21. The FIXR multi-tool is currently sold online at True Brands website for
7
$16.87.
8
9 C. Defendants Unlawful Acts
10 22. On information and belief, Promo Motive is a distributor of promotional

11 materials throughout the United States, including in the State of Arizona. One such product
12
is the FIXER 20-in-1 Multi-Tool. At times, Promo Motives website also lists the tool as a
13
14 FIXR 20-in-1 Multi-tool.
15 23. On September 6, 2017, representatives for True Brands received an email from
16
Defendant Virtual Web Trade Show, advertising the infringing and counterfeit Fixer 20-in-
17
18 1 Multi-tool. See Exhibit C.
19 24. When a consumer clicks on the advertisement from Defendant Virtual Web
20
Trade Show, the consumer is directed to the website www.promomotive.com which includes
21
advertisements for a FIXER product that is similar to True Brands FIXR product. Indeed, it
22
23 appears that whoever operates www.promomotive.com simply copied the images created by
24 True Brands and put them on their website. See Exhibit D.
25
25. Further, the Promo Motive website advertisement/article contains a
26
27 statement/web-link that other similar multi tools sell for as much as $25 USD. When a
28
6
1 consumer clicks on the web-link, the consumer is directed to the True Utility website
2 advertising the FIXR multi-tool for $16.79. See Exhibit E.
3
1. Patent Infringement
4
5 26. On information and belief, Promo Motive has manufactured, caused-to-be
6 manufactured, offered to sale, and/or sold, in the United States, its FIXER 20-in-1 Multi-
7
tool, which infringes the D274 Patent and continues to do so.
8
27. Promo Motives FIXER 20-in-1 Multi-tool has an overall appearance that is
9
10 confusingly similar and substantially the same as True Brands FIXR 20 tools in 1 multi-
11 tool in light of the prior art and in the eyes of an ordinary observer. A side by side
12
comparison of the two products is below with Promo Motives tool on the left, the patented
13
14 design in the middle, and True Brands tool on the right:
15 Promo Motives Product

True Brands Design True Brands Product Image
16 Image
17
18
19
20
21
22
28. In the eye of an ordinary observer, with as much attention as a purchaser of the
23
product normally gives, Promo Motives accused FIXER 20-in-1 Multi-tool and True
24
25 Brands FIXR 20 tools in 1 multi-tool are substantially the same, with the resemblance
26 strong enough to deceive the ordinary observer thereby inducing the ordinary observer to
27
purchase Promo Motives FIXER 20-in-1 Multi-tool believing it to be the True Brands
28
7
1 FIXR 20 tools in 1 multi-tool. In fact, Promo Motives FIXER 20-in-1 Multi-tool is

2 virtually identical, if not identical, to True Brands patented design.
3
29. Promo Motive had many options in designing a multi-tool. However, Promo
4
5 Motive chose to knowingly infringe True Brands patented design, as evidenced by Promo
6 Motives use of marketing materials taken directly from True Utilitys website and
7
description of the FIXR 20 tools in 1 multi-tool.
8
9 30. On information and belief, Promo Motives infringing actions were
10 orchestrated and coordinated by its CEO, John Graham, the moving, conscious, and active
11
force behind the unlawful acts described herein.
12
31. On information and belief, Promo Motive and Mr. Graham engaged two
13
14 electronics factories in Shenzhen, China to manufacture the infringing product and/or
15 infringing components of the infringing product.
16
32. On information and belief, John Does I & II manufacture all of and/or material
17
18 parts of the infringing FIXER 20-in-1 Multi-Tool without True Brands license or consent.
19 Accordingly, John Does I & II aided, and continue to aid, in the infringement of the D274
20
Patent.
21
22 33. None of the Defendants have obtained permission from True Brands to
23 manufacture, use, offer to sell, or sell the design claimed in the D274 Patent.
24
2. Counterfeit and Trademark Infringement
25
34. In addition to the images that were copied from True
26
27 Brands, www.promomotive.com also copied True Brands promotional videos. See Exhibit
28 F.
8
1 35. John Graham also posted a video to YouTube titled Fixr 20 in 1 tool for
2 promotional product and b2b marketing. See Exhibit G.
3
36. Promo Motive also advertises its counterfeit product on its blog, using the
4
5 FIXR or FIXER trademarks in, at least, forty (40) different articles. See Exhibit H.
6 37. Further, Promo Motive also advertises its counterfeit product on Facebook.
7
See Exhibit I.
8
9 38. The product Promo Motive is selling using the FIXR and FIXER trademarks is
10 virtually identical to True Brands FIXR product. An ordinary consumer, looking at the two
11
different products and giving as much attention to these products as ordinary consumers
12
give, would be unable to ascertain the difference between the True Brands FIXR multi-tool
13
14 and the Defendants counterfeit product.
15 39. The Defendants offer customized placement of branding on its counterfeit
16
FIXER product. True Brands likewise offers personalized engraving on its FIXR product.
17
18 40. Defendants counterfeit product is directly competitive to True Brands FIXR
19 product. The same consumers that would be interested in purchasing the True Brands FIXR
20
multi-tool are the same consumers that would be interested in acquiring Defendants
21
22 counterfeit FIXR product.
23 41. The Defendants counterfeit FIXER product is marketed and sold for
24
approximately $2.98 per unit.
25
42. On information and belief, Promo Motives infringing actions and counterfeit
26
27 marks were developed, orchestrated, and coordinated by its CEO, John Graham.
28
9
1 a. Virtual Web Trade Show

2 43. On information and belief and without True Brands license or consent, Virtual
3
Web Trade Show used the FIXR Trademark to promote Promo Motives FIXER 20-in-1
4
5 Multi-tool through its own website and channeled traffic and sales of the counterfeit
6 products to Promo Motive and continues to do so.

7
44. On information and belief, Virtual Web Trade Shows infringing actions and
8
counterfeit marks were developed, orchestrated, and coordinated by its President, Brian
9
10 Brown.
11 b. Shopify
12
45. On information and belief and without True Brands license or consent,
13
Shopify, as a web host, supports and maintains the Promo Motive website. Specifically,
14
15 Shopify allowed Promo Motive and John Graham to create and continue to use an e-
16
commerce website through which customers can buy the infringing FIXER 20-in-1 Multi-
17
tool. Accordingly, Shopify aided, and continues to aid, in the use of the FIXR Trademark
18
19 to promote Promo Motives infringing FIXER 20-in-1 Multi-tool and sell counterfeit
20 products.
21
c. John Does I & II
22
46. On information and belief, John Does I & II manufacture all of and/or material
23
24 parts of the infringing FIXER 20-in-1 Multi-Tool without True Brands license or consent.
25 Accordingly, John Does I & II aided, and continue to aid, in the sale of counterfeit products.
26
27
28
10
1 3. Harm to True Brands

2 47. Defendants use of the FIXR Trademark to promote the FIXER 20-in-1
3
Multi-tool continues to violate the registered FIXR Trademark and confuses customers as to
4
5 the manufacturer and seller of the Multi-tool.
6 48. None of the Defendants have obtained permission from True Brands to
7
manufacture, use, offer to sell, and/or sell products that use the FIXR Trademark.
8
49. None of the Defendants have obtained permission from True Brands to use
9
10 True Brands advertising materials, including photographs and promotional videos, in
11 connection with the marketing and sale of products that are virtually identical to True
12
Brands FIXR products.
13
14 50. Because Defendants are selling cheap imitations of True Brands FIXR product
15 using a virtually identical trademark with True Brands own advertising materials, there can
16
be no question that True Brands has been and will continue to be irreparably harmed by the
17
18 Defendants. Such unauthorized use of its trademarks on cheap imitations is likely to cause
19 potential purchasers, as well as the public at large, to believe that Defendants products are
20
affiliated with, authorized by, sponsored, and/or endorsed by True Brands. This causes
21
irreparable damage to True Brands FIXR brand and to the goodwill and reputation of True
22
23 Brands.
24 D. Willful Infringement
25
51. Promo Motive, John Graham, Virtual Web Trade Show, and Brian Browns
26
(collectively Willfully Infringing Defendants) activities have been deliberate and willful.
27
28
11
1 52. The Willfully Infringing Defendants are aware of the D274 Patent and the
2 FIXR Trademark and have deliberately chosen to manufacture, use, sell, and/or offer for sale
3
the infringing FIXER 20-in-1 Multi-tool which copies and/or imitates the protected design
4
5 and/or trademark.
6 1. Promo Motive
7
53. Defendants Promo Motive and John Graham purposefully listed the following
8
terms on the ASI Promotional flyers and suggested retail pricing page for the FIXER 20-in-
9
10 1 Multi-tool:
11 FIXER
12
FIXER promotional product
13
FIXR
14
15 FIXR 20 in 1 multi tool for your next tradeshow or promotional product
giveaway
16
17 FIXR multi tool
18 FIXR promo
19 FIXR promotional tool
20
See Exhibit J.
21
54. By listing the above terms on the Promo Motive website, both Promo Motive
22
23 and Mr. Graham intended to deceive consumers and drive customers web searching for the
24 FIXR 20 tools in 1 multi-tool to the Promo Motive website by stuffing the Promo
25
Motive website with these terms.
26
27 55. By copying True Brands videos, images, and other promotional materials,
28 Promo Motive and Mr. Graham are clearly attempting to deceive consumers.
12
1 56. On September 11, 2017 counsel for True Brands wrote to Defendants Promo
2 Motive and John Graham, delivered via electronic mail and DHL Express. In this letter,
3
counsel for True Brands notified Defendants Promo Motive and John Graham of Promo
4
5 Motives continued infringement of the D274 Patent and FIXR Trademark and production
6 of counterfeit goods. See Exhibit K.

7
57. Upon information and belief, True Brands believes Defendants Promo Motive
8
9 and John Graham did, in fact, receive and review the September 11, 2017 letter.
10 58. Upon information and belief, Defendants Promo Motive and John Graham
11
have knowledge of True Brands D274 Patent and FIXR Trademark as evidenced by their
12
use of True Brands own advertisements regarding the FIXR 20 tools in 1 multi-tool.
13
14 2. Virtual Web Trade Show
15 59. On September 11, 2017, counsel for True Brands wrote to Defendants Virtual
16
Web Trade Show and Brian Brown, delivered via electronic mail and Federal Express. In
17
18 this letter, counsel for True Brands notified Defendants Virtual Web Trade Show and Brian
19 Brown of Virtual Web Trade Shows continued infringement of the FIXR Trademark and
20
production of counterfeit goods. See Exhibit L.
21
60. In a first responsive email dated September 12, 2017, Mr. Brown stated that
22
23 Virtual Web Trade Show is not directly involved in selling any product for [Promo Motive],
24 rather, we are just an advertising conduit implying that Virtual Web Trade Show and Mr.
25
Brown get a free pass from its violations of the trademark protections in the United States
26
27 because the two Defendants did not directly sell the infringing product.
28
13
1 61. In a responsive email on September 12, 2017, counsel for True Brands pointed
2 out that the trademark protections prohibit anyone from using a trademark in commerce that
3
is likely to cause confusion or mistake.
4
5 62. Mr. Brown responded that same day and told counsel for True Brands to take
6 up the issue with Promo Motive. Further, Mr. Brown effectively ended any future
7
communications or settlement discussions prior to filing a lawsuit by asking counsel for True
8
9 Brands not to send [him] anymore letters or annoying correspondence and noting that he
10 knew his rights having gone through this dozens of times.

11
63. Upon information and belief, prior to September 11, 2017, Defendants Virtual
12
Web Trade Show and Brian Brown were on constructive notice of the FIXR Trademark.
13
14 64. On information and belief, despite the Willfully Infringing Defendants actual
15 and/or constructive notice of the D274 Patent, FIXR Trademark, and/or counterfeited
16
replicas of the FIXR 20 tools in 1 multi-tool and despite an objectively high likelihood
17
18 that the Willfully Infringing Defendants actions constituted infringement of the D274 Patent
19 and/or FIXR Trademark, the Willfully Infringing Defendants knowingly chose to infringe
20
the D274 Patent and/or FIXR Trademark and offer to sell and or sell the counterfeited
21
22 objects.
23 65. Accordingly, the Willfully Infringing Defendants actions constitute willful

24
infringement under the applicable legal standard.
25
66. Without an injunction, Defendants will likely choose to dispose of the
26
27 counterfeit goods and any evidence relating to the same.
28
14
1 COUNT I
(Infringement of the D274 Patent, 35 U.S.C. 271)
2
3 67. True Brands re-alleges and incorporates all the foregoing allegations as though
4 fully set forth herein.

5
68. Promo Motives accused FIXER 20-in-1 Multi-tool infringes the single
6
claim of the D274 Patent.
7
8 69. Under 35 U.S.C. 271(a), Defendants Promo Motive and John Graham have
9
infringed, and continue to infringe, literally or under the doctrine of equivalents, the D274
10
Patent by manufacturing, using, offering to sell, and/or selling Promo Motives FIXER 20-
11
12 in-1 Multi-tool in the United States and/or importing the same into the United States.
13 70. On information and belief, Defendants Promo Motive and John Graham have
14
engaged in, and continue to engage in, affirmative acts to encourage the Chinese
15
16 manufacturers of the infringing product to manufacture the product, thereby infringing the
17 patents-in-suit.
18
71. On information and belief, Defendants Promo Motive, John Graham, and John
19
Does I & II have offered to sell, sold, and/or imported component(s) of the patented design
20
21 for use in the infringement of the D274 Patent which constitute a material part of the
22
patented design and which were made especially for use in the patented design.
23
72. On information and belief, Defendants Promo Motive and John Graham, at
24
25 least, had actual knowledge that the induced acts constitute patent infringement and/or have
26 been willfully blind to the same.
27
73. On information and belief, Defendants Promo Motive, John Graham, and John
28
Does I & II have profited by virtue of their infringement of the D274 Patent.
15
1 74. True Brands has suffered, and will continue to suffer, irreparable harm from
2 Defendants Promo Motive, John Graham, and John Does I & IIs infringement of the D274
3
Patent through the sales of the FIXER 20-in-1 Multi-tool. As there is no other adequate
4
5 remedy at law, under 35 U.S.C. 283, True Brands is entitled to an injunction against the
6 continued infringement of the D274 Patent.

7
75. True Brands has sustained damages as both a direct and proximate result of
8
9 Defendants Promo Motive, John Graham, and John Does I & IIs infringement of the D274
10 Patent. Accordingly, True Brands is entitled to damages pursuant to 35 U.S.C. 284 and/or
11
289.
12
76. This is an exceptional case warranting an award of treble damages under 35
13
14 U.S.C. 284 and/or attorneys fees under 35 U.S.C. 285.
15 COUNT II
16 (Direct Infringement of the FIXR Trademark, 15 U.S.C. 1114)
18
fully set forth herein.
19
78. Promo Motives accused FIXER 20-in-1 Multi-tool infringes the FIXR
20
21 Trademark.
22
79. Under 15 U.S.C. 1114(1)(a), Defendants Promo Motive, John Graham,
23
Virtual Web Trade Show, and Brian Brown have used, advertised, sold, and/or offered for
24
25 sale the infringing FIXER 20-in-1 Multi-tool product, and continue to do the same. Such
26 use is likely to cause confusion to consumers and is direct infringement of the FIXR
27
Trademark.
28
16
1 80. Defendants Promo Motive, John Graham, Virtual Web Trade Show, and Brian
2 Brown intended to deceive consumers and used the FIXR Trademark to cause confusion and
3
sell the FIXER 20-in-1 Multi-tool product.
4
5 81. On information and belief, Defendants Promo Motive, John Graham, Virtual
6 Web Trade Show, and Brian Brown had actual knowledge that the infringing acts constitute
7
trademark infringement and/or have been willfully blind to the same.
8
10 Web Trade Show, and Brian Brown have profited by virtue of their infringement of the
11
FIXR Trademark.
12
83. True Brands has suffered, and will continue to suffer, irreparable harm from
13
14 Defendants Promo Motive, John Graham, Virtual Web Trade Show, and Brian Browns
15 infringement of the FIXR Trademark through the sales of the FIXER 20-in-1 Multi-tool.
16
As there is no other adequate remedy at law, under Fed. R. Civ. P. 65, True Brands is
17
18 entitled to an injunction against the continued infringement of the FIXR Trademark.
19 84. True Brands has sustained damages as both a direct and proximate result of
20
Defendants infringement of the FIXR Trademark. Accordingly, True Brands is entitled to
21
22 damages pursuant to 15 U.S.C. 1117.
23 COUNT III
24 (Contributory Infringement of the FIXR Trademark, 15 U.S.C. 1114)
27
28
Trademark.
17
1 87. Defendants Virtual Web Trade Show, Brian Brown, and Shopify have and
2 continue to provide advertisement and support services for the Promo Motive website.
3
Specifically, Virtual Web Trade Show and Brian Brown advertise the FIXER 20-in-1
4
5 Multi-tool on behalf of Promo Motive and direct customers to Promo Motives website to
6 purchase the same. Shopify provides Promo Motive with web host services, including, but
7
not limited to, server storage and allowed Promo Motive and John Graham to set up and
8
9 maintain and e-commerce website through which Promo Motive is able to advertise, offer for
10 sale, and sell the infringing FIXER 20-in-1 Multi-tool. Such use and continued use is
11
likely to cause confusion to consumers and is contributory infringement of the FIXR
12
Trademark.
13
14 88. Defendants Virtual Web Trade Show, Brian Brown, and Shopify have actual
15 and/or constructive knowledge of Promo Motives direct infringement of the FIXR
16
Trademark and yet continue to provide the advertisement and support services for Promo
17
18 Motive.
19 89. On information and belief, Defendants Virtual Web Trade Show, Brian Brown,
20
and Shopify have profited by virtue of their contributory infringement of the FIXR
21
22 Trademark.
24
Defendants Virtual Web Trade Show, Brian Brown, and Shopifys infringement of the FIXR
25
Trademark. As there is no other adequate remedy at law, under Fed. R. Civ. P. 65, True
26
27 Brands is entitled to an injunction against the continued infringement of the FIXR
28 Trademark.
18
2 Defendants infringement of the FIXR Trademark. Accordingly, True Brands is entitled to
3
damages pursuant to 15 U.S.C. 1117.
4
5 COUNT IV
(Trademark Counterfeiting, 15 U.S.C. 1114)
6
92. True Brands re-alleges and incorporates all the foregoing allegations as though
7
9
93. Promo Motives accused FIXER trademark is a counterfeit of the registered
10
FIXR Trademark.
11
12 94. Defendants Promo Motive, John Graham, Virtual Trade Show, Brian Brown,
13 and John Does I & II have sold and offered for sale counterfeit products, and continue to do
14
the same by using a copy of the FIXR registered trademark, or a confusingly similar version
15
16 thereof, in connection with the sale of the FIXER 20-in-1 Multi-tool.
17 95. Defendants Promo Motive, John Graham, Virtual Trade Show, Brian Brown,
18
and John Does I & II intended to deceive consumers and used the FIXR Trademark, or a
19
confusingly similar version thereof, to sell the counterfeit FIXER 20-in-1 Multi-tool
20
21 product.
22
96. On information and belief, Defendants Promo Motive, John Graham, Virtual
23
Web Trade Show, and Brian Brown, at least, had actual knowledge that the induced acts
24
25 constitute trademark infringement and production of counterfeits and/or have been willfully
26 blind to the same.
27
28
19
2 Trade Show, Brian Brown, and John Does I & II have profited by virtue of the use of
3
counterfeits.
4
6 Defendants Promo Motive, John Graham, Virtual Trade Show, Brian Brown, and John Does
7
I & IIs use of counterfeits through the offers for sale and sales of the FIXER 20-in-1 Multi-
8
9 tool. As there is no other adequate remedy at law, under Fed. R. Civ. P. 65, True Brands is
10 entitled to an injunction against the continued use of counterfeits.

11
12
Defendants Promo Motive, John Graham, Virtual Trade Show, Brian Brown, and John Does
13
14 I & IIs use of counterfeits. Accordingly, True Brands is entitled to damages pursuant to 15
15 U.S.C. 1117.
16
COUNT V
17 (False or Misleading Description, False Advertising, and False Designations of Origin
18 and/or Sponsorship, 15 U.S.C. 1125)
20
21
22
23 Trademark.
24 102. Promo Motive, John Graham, Virtual Trade Show, Brian Brown, and John
25
Does I & II have knowingly used in commerce, in connection with the FIXER 20-in-1
26
27 Multi-tool, the FIXR Trademark, or a substantially similar version thereof, which is likely
28 to cause confusion or mistake as to the manufacturer and/or seller of the multi-tool.
20
2 Does I & II intended to deceive consumers and use the FIXR Trademark to cause confusion
3
and sell the counterfeit FIXER 20-in-1 Multi-tool product.
4
6 Does I & II acts constitute false or misleading descriptions, false advertising, and/or false
7
descriptions of the origin and/or sponsorship of Defendants Promo Motive, John Graham,
8
9 Virtual Trade Show, Brian Brown, and John Does I & IIs goods in violation of 15 U.S.C.
10 1125(a).
11
105. On information and belief, Defendants Promo Motive, John Graham, Virtual
12
Web Trade Show, and Brian Brown, at least, have had actual knowledge that the induced
13
14 acts constitute false or misleading descriptions and/or have been willfully blind to the same.
16
Trade Show, Brian Brown, and John Does I & II have profited by virtue of their false or
17
18 misleading descriptions, false advertising, and/or false descriptions of the origin and/or
19 sponsorship of the FIXER 20-in-1 Multi-tool.

20
21
23 I & IIs false or misleading descriptions, false advertising, and/or false descriptions of the
24
origin and/or sponsorship of the FIXER 20-in-1 Multi-tool. As there is no other adequate
25
remedy at law, under Fed. R. Civ. P. 65, True Brands is entitled to an injunction against the
26
27 false or misleading descriptions, false advertising, and/or false descriptions of the origin
28 and/or sponsorship of the FIXER 20-in-1 Multi-tool.
21
3
I & IIs false or misleading descriptions, false advertising, and/or false descriptions of the
4
5 origin and/or sponsorship of the FIXER 20-in-1 Multi-tool. Accordingly, True Brands is
6 entitled to damages pursuant to 15 U.S.C. 1117.

7
COUNT VI
8 (Common Law Trademark Infringement)
9
10
11
12 110. Promo Motives accused FIXER 20-in-1 Multi-tool infringes the FIXR
13 Trademark.
14
111. Defendants Promo Motive, John Graham, Virtual Web Trade Show, and Brian
15
16 Brown have used, advertised, sold, and/or offered for sale the infringing FIXER 20-in-1
17 Multi-tool product, and continue to do the same. Such use is likely to cause confusion to
18
consumers and is infringement of the FIXR Trademark.
19
112. Defendants Promo Motive, John Graham, Virtual Web Trade Show, and Brian
20
21 Brown intended to deceive consumers and used the FIXR Trademark to cause confusion and
22
sell the FIXER 20-in-1 Multi-tool product.
23
113. Defendants Virtual Web Trade Show, Brian Brown, and Shopify have and
24
25 continue to provide advertisement and support services for the Promo Motive website.
26 Specifically, Virtual Web Trade Show and Brian Brown advertise the FIXER 20-in-1
27
Multi-tool on behalf of Promo Motive and direct customers to Promo Motives website to
28
purchase the same. Shopify provides Promo Motive with web host services, including, but
22
1 not limited to, server storage and allowed Promo Motive and John Graham to set up and
2 maintain and e-commerce website through which Promo Motive is able to advertise, offer for
3
sale, and sell the infringing FIXER 20-in-1 Multi-tool. Such use and continued use is
4
5 likely to cause confusion to consumers and is contributory infringement of the FIXR
6 Trademark.
7
114. Defendants Promo Motive, John Graham, Virtual Trade Show, Brian Brown,
8
9 and John Does I & II have sold and offered for sale counterfeit products, and continue to do
10 the same by using a copy of the FIXR registered trademark, or a confusingly similar version
11
thereof, in connection with the sale of the FIXER 20-in-1 Multi-tool.
12
115. The acts of the Defendants constitute infringement of True Brands common
13
14 law rights to the FIXR Trademark under the laws of the state of Arizona and elsewhere. The
15 FIXR Trademark is distinctive and inherently distinctive.
16
116. On information and belief, Defendants have profited by virtue of their
17
18 infringement of the FIXR Trademark.
20
Defendants infringement of the FIXR Trademark. As there is no other adequate remedy at
21
22 law, under Fed. R. Civ. P. 65, True Brands is entitled to an injunction against the continued
23 infringement of the FIXR Trademark.

24
25
Defendants infringement of the FIXR Trademark. Accordingly, True Brands is entitled to
26
27 damages.
28
23
1 COUNT VII
(Common Law Unfair Competition)
2

5
120. Defendants have misappropriated and used True Brands FIXR Trademark,
6
and developed counterfeits of the same, in a manner that is contrary to honest business
7
8 conduct in a commercial setting, in an effort to sell counterfeit products to unsuspecting
9
consumers.
10
121. The acts of the Defendants constitute unfair competition in violation of True
11
12 Brands superior rights under the common law of the state of Arizona and elsewhere.
13 122. On information and belief, Defendants have profited by virtue of their unfair
14
competition.
15
17 Defendants unfair competition. As there is no other adequate remedy at law, under Fed. R.
18
Civ. P. 65, True Brands is entitled to an injunction against the continued unfair competition.
19
20
21 Defendants unfair competition. Accordingly, True Brands is entitled to damages.
22
COUNT VIII
23 (Conversion of Plaintiffs Patented Design, Marks, and Advertising and Marketing
Materials)
24

27
126. Although Defendants had no authorization from Plaintiff, Defendants have
28
used and continue to use True Brands patented design, FIXR Trademark, and advertising
24
1 and marketing materials in connection with Defendants products and/or services, without
2 any payments to True Brands, and have, thus, converted True Brands property for
3
Defendants own use in violation of True Brands rights under the common law of Arizona
4
5 and elsewhere.
6 127. Defendants use of True Brands patented design, FIXR Trademark, and
7
advertising and marketing materials is in denial of, inconsistent with, and/or in derogation,
8
9 exclusion, and/or defiance of True Brands title to and/or rights in its patented design, FIXR
10 Trademark, and advertising and marketing materials.

11
128. Defendants intentional exercise of dominion or control over True Brands
12
patented design, FIXR Trademark, and advertising and marketing materials so seriously
13
14 interferes with the right of True Brands to control its patented design, FIXR Trademark, and
15 advertising and marketing materials that Defendants may be required to pay True Brands the
16
full value of the patented design, FIXR Trademark, and advertising and marketing materials.
17
18 129. True Brands had the right to immediate possession of its patented design,
19 FIXR Trademark, and advertising and marketing materials at the time of the Defendants
20
conversion.
21
22 130. On information and belief, Defendants have profited by virtue of their
23 conversion.
24
25
Defendants conversion. As there is no other adequate remedy at law, under Fed. R. Civ. P.
26
27 65, True Brands is entitled to an injunction against the continued conversion.
28
25
2 Defendants infringement of the FIXR Trademark. Accordingly, True Brands is entitled to
3
damages.
4
5 COUNT IX
(Unjust Enrichment as to True Brands Patented Design, Marks, and Advertising and
6 Marketing Materials)
7
8
9
10 134. The above-mentioned acts of Defendants constitute misappropriation of True
11 Brands patented design, FIXR Trademark, and advertising and marketing materials, as well
12
as the goodwill associated with the same, at no cost to Defendants, and results in Defendants
13
14 unfairly benefitting from their wrongful acts in violation of True Brands rights under the
15 common law of Arizona and elsewhere.

16
135. The above-mentioned acts have caused, and will continue to cause, an
17
18 impoverishment of True Brands.
19 136. Defendants have no justification for their misappropriation of True Brands

20
patented design, FIXR Trademark, and advertising and marketing materials
21
137. On information and belief, Defendants have profited by virtue of their unjust
22
23 enrichment.
24 138. True Brands has no adequate remedy at law because True Brands patented
25
design, FIXR Trademark, and advertising and marketing materials are unique and represent
26
27 to the public True Brands identity, reputation, and goodwill, such that monetary damages
28 alone cannot fully compensate True Brands for Defendants willful misconduct.
26
1 III. PRAYER FOR RELIEF

2 WHEREFORE, True Brands respectfully requests that the Court enter judgment in
3
its favor and award True Brands relief as follows:
4
5 A. A declaration that Defendants are liable to True Brands for all claims and
6 causes of action made herein.

7
B. A preliminary and permanent injunction be issued enjoining Defendants, their
8
employees, agents, successors, and assigns, and all those in concert and participation with
9
10 Defendants, and each person who receives notice directly or otherwise of such injunctions
11 from;
12
i. Imitating, copying, or making unauthorized use of the design claimed in the
13
14 D274 Patent and/or the FIXR Trademark;
15 ii. Importing, manufacturing, producing, distributing, circulating, selling,

16
offering for sale, advertising, promoting, and/or displaying any service or
17
18 product using any simulation, reproduction, counterfeit, copy, and/or
19 confusingly similar variation of the D274 Patent and/or FIXR Trademark;

20
iii. Using any simulation, reproduction, counterfeit, copy, and/or confusingly
21
similar variation of the 274 Patent and/or FIXR Trademark in Defendants
22
23 business name or in connection with the promotion, advertisement, display,
24 sale, offer for sale, manufacture, production, circulation, and/or distribution
25
of any service or product;
26
27 iv. Using any false designation of origin or false description, including,
28 without limitation, any letters or symbols constituting the FIXR Trademark,
27
1 or performing any act, which can or is likely to lead members of the public
2 to believe that Defendants and/or any service or product manufactured,
3
distributed, and/or sold by Defendants is in any manner associated or
4
5 connected with True Brands or is sold, manufactured, licensed, sponsored,
6 approved, and/or authorized by True Brands;

7
v. Transferring, consigning, selling, shipping, and/or otherwise moving any
8
9 goods, packaging, and/or other materials in Defendants possession,
10 custody, and/or control bearing a design or mark substantially similar to the

11
FIXR Trademark;
12
vi. Modifying, re-labeling, re-packaging, re-naming, concealing, or otherwise
13
14 changing the content, appearance, name, packaging or any other elements,
15 aspect, characteristic, or feature of any product, packaging, or other item
16
that is or ever was named or labeled with the word FIXR or any
17
18 substantially similar version thereof, including, but not limited to,
19 FIXER;
20
vii. Engaging in any other activity constituting an infringement of the D274
21
22 Patent and/or FIXR Trademark; and
23 viii. Instructing, assisting, aiding, and/or abetting any other person or business
24
entity in engaging in and/or performing any of the activities referred to in
25
subparagraphs (a)-(f) above.
26
27 C. For all claims for relief, an order requiring Defendants to destroy all goods
28 infringing and/or otherwise violating the D274 Patent and/or the FIXR Trademark;
28
1 D. For an order within thirty (30) days after entry of such an order requiring
2 Defendants to report in writing, under oath, the manner and form in which Defendants have
3
complied with the above;
4
5 E. For an order requiring Defendants to file with the Court and provide to True
6 Brands an accounting of all sales and profits realized through Defendants infringement of the
7
D274 Patent and/or FIXR Trademark and/or production of counterfeits;
8
9 F. For a judgment of treble damages because of Defendants intentional, willful,
10 and knowing use of counterfeits and infringement of the D274 Patent and FIXR Trademark
11
pursuant to 15 U.S.C. 1117(b) and/or 35 U.S.C. 274;
12
G. Alternatively, for an award of statutory damages pursuant to 15 U.S.C.
13
14 1117(c) and 35 U.S.C. 284 and/or 289;
15 H. Alternatively and/or additionally, for an award of damages pursuant to Arizona
16
common law;
17
18 I. Alternatively, for an award of damages sufficient to compensate True Brands
19 for Defendants unjust enrichment;

20
J. Attorneys fees pursuant to 15 U.S.C. 1117(a), Arizona common law, and/or
21
22 35 U.S.C. 285;
23 K. Pre-judgment interest on True Brands damages as allowed by law;

24
L. Post-judgment interest on the judgment at the legal rate from the date of
25
judgment;
26
27 M. Costs of court; and
28
29
1 N. Such other and further relief as shall seem just and proper to the Court under
2 the circumstances.
3
IV. JURY DEMAND
4
5 True Brands demands that all claims and causes of action raised in this Complaint be
6 tried to a jury to the fullest extent possible under the United States and Arizona
7
Constitutions.
8
DATED this 5th day of October, 2017.
9
10 BEUS GILBERT PLLC
11 By /s/ K. Reed Willis
12 L. Richard Williams
K. Reed Willis
13 701 North 44th Street
14 Phoenix, AZ 85008-6504
15 THORPE, NORTH & WESTERN

16 Mark Bettilyon
Peter M. de Jonge
17 Jed H. Hansen
18 175 South Main Street, Suite 900
Salt Lake City, UT 84111
19 Attorneys for Plaintiff
20
21
22
23
24
25
26
27
28
30

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Case 2:17-cv-03553-HRH Document 1 Filed 10/05/17 Page 1 of 30

1 BEUS GILBERT PLLC

15 factories in Shenzhen, China.

10 13. Venue is proper in this district, pursuant to 28 U.S.C. 1400(b), because

10 22. On information and belief, Promo Motive is a distributor of promotional

15 Promo Motives Product

1 FIXR 20 tools in 1 multi-tool. In fact, Promo Motives FIXER 20-in-1 Multi-tool is

1 a. Virtual Web Trade Show

6 products to Promo Motive and continues to do so.

1 3. Harm to True Brands

6 of counterfeit goods. See Exhibit K.

10 knew his rights having gone through this dozens of times.

23 65. Accordingly, the Willfully Infringing Defendants actions constitute willful

4 fully set forth herein.

6 continued infringement of the D274 Patent.

10 entitled to an injunction against the continued use of counterfeits.

28 to cause confusion or mistake as to the manufacturer and/or seller of the multi-tool.

19 sponsorship of the FIXER 20-in-1 Multi-tool.

6 entitled to damages pursuant to 15 U.S.C. 1117.

23 infringement of the FIXR Trademark.

4 fully set forth herein.

26 fully set forth herein.

10 Trademark, and advertising and marketing materials.

15 common law of Arizona and elsewhere.

19 136. Defendants have no justification for their misappropriation of True Brands

1 III. PRAYER FOR RELIEF

6 causes of action made herein.

15 ii. Importing, manufacturing, producing, distributing, circulating, selling,

19 confusingly similar variation of the D274 Patent and/or FIXR Trademark;

28 without limitation, any letters or symbols constituting the FIXR Trademark,

6 approved, and/or authorized by True Brands;

10 custody, and/or control bearing a design or mark substantially similar to the

19 for Defendants unjust enrichment;

23 K. Pre-judgment interest on True Brands damages as allowed by law;

15 THORPE, NORTH & WESTERN

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