Hovsepian v. Apple, Inc.

Filing 458

Hovsepian v. Apple, Inc.

)

J

Doc. 458

6

MICHELLE D. KAHN, Cal. Bar No . 124528 MICHELLE J . HIRTH, Cal . Bar No. 200024 CRAIG A. PINEDO, Cal Bar No. 191337 KRISTEN L. TECHEL, Cal . Bar No. 228636 SHEPPARD, MULLIN, RICHTER & HAMPTON 1 .1 .r A Limited Liz&lity Partnership Including Professional Corporations Four Embarcadero Center, 17th Floor San Francisco, California 94111 Telephone : [phone] Facsimile : (415) 434-394 7 Attorneys for Plaintiffs MD BEAUTY, INC . and BIOCEUTIX, INC .

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION

MD BEAUTY, INC . and BIOCEUTIX, INC .,
Plaintiffs ,
V.

Civil Action No . C 05-0170 7 FIRST AMENDED COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION URY TRIAL REQUESTED

DENNIS F . GROSS, M.D . d/b/a M .D . SKINCARE LLC and DENNIS GROSS , M .D ., L.L.P. Defendants .

Plaintiffs MD Beauty, Inc. and Bioceutix, Inc . (collectively "Plaintiffs") bring this First Amended Complaint for Trademark Infringement, False Designation of Origin and Unfair Competition against defendant Dennis F . Gross, M.D . d/b/a M.D. Skincare and MD Skincare LLC and against defendant Dennis Gross, M .D ., L .L .P . (collectively "Defendants") as a matter of course under Federal Rule of Civil Procedure 15(a) and based upon the following allegations:

-IW42-sF : FHM161456876 .1

First Amended Complaint for Trademark Infringement, False Designation of Origin & Unfair Competition, DockeDemand om Jury ts.Justia.c

1

V T U B M

The Parties

1.

D Beauty, Inc . ("MD Beauty") is a Delaware corporation having a

principal place of business at 425 Bush Street, San Francisco, California 94108 . 2.
6

ioceutix, Inc. ("Bioceutix") is a Delaware corporation having its

principal place of business at 425 Bush Street, Third Floor, San Francisco, California 94108 . 3. 4. ioceutix is a wholly owned subsidiary of MD Beauty . pon information and belief, defendant Dennis F . Gross, M .D . is a

dermatologist registered to do business in the State of New York as defendant Dennis Gross, M.D., L .L . P . Upon information and belief, defendants Dennis F . Gross, M .D . and Dennis Gross, M .D ., L .L .P . (collectively "Defendants") are doing business as M .D . Skincare and as MD Skincare LLC, and have a principal place of business at 444 Madison Avenue, 8th Floor, New York, New York. Upon information and belief, Defendants regularly do business in the State of California.

Jurisdiction and Venu e

5.

his is an action for trademark i nfringement and false designation of

origin arising under the Trademark Act of July 5, 1946, as amended, 15 U .S .C . §§ 1051 et.
seq ., for unfair competition under Cal . Bus . & Prof. Code § 17200, and for trademark

infringement and unfair competition under the common law of the State of California . 6. his Court has subject matter jurisdiction of this action under

5 U .S .C . §1121(a), 28 U .S .C . §§1331, 1338(a) and (b), and under the supplemental jurisdiction of this Court, as embodied in 28 U .S .C . §1367(a) . 7. enue is proper in this j udicial district under 28 U .S .C . § 139l(b)

because a substantial po rt ion of the events giving ri se to the claims for relief stated in this First Amended Complaint occurred in this j udicial district.
-2W 02-SF :FHM\61456876 .1

First Amended Complaint for Trademark In fr ingement, False Designa tion of Origi n T Unfair Competition ; Jury Demand

I B

FIRST CLAIM FOR RELIEF Trademark-Infringemen t

Plaintiffs' Business and Marks 8.
6 7

ioceutix offers a line of skin care products under the Marks M .D .

FORMULATIONS, M .D . FORMULATIONS & DESIGN, M .D . FORMULATIONS (Stylized) and M .D . FORMULATIONS VITA-PLUS (the "M .D . Family of Marks") . 9. n accordance with the provisions of federal law, Bioceutix, through

its predecessor, has registered the M .D . FORMULATIONS, M .D . FORMULATIONS (Stylized) and M .D . FORMULATIONS VIT-A-PLUS Marks with the United States Patent and Trademark Office (the "Registered Marks") . See Copies of the Certificates of Registration of the Registered Marks, U .S . Registration Nos . 1,814,683, 1,733,914 and 2,241,493, collectively attached hereto as composite Exhibit A . 10. ioceutix, through its predecessor, began to promote its goods under

the M.D . FORMULATIONS (Stylized) Mark at least as early as December 22, 1990 and its use of the M .D . FORMULATIONS (Stylized) Mark in interstate commerce has been continuous since that date . M .D . FORMULATIONS (Stylized) has been in use for and is registered for use in connection with "cosmetics and skin and hair care products ; namely, moisturizers, cleansers, shampoos, sunscreen preparations, lip balms, nail and cuticle creams, and dead skin removing gels[ .]" Bioceutix owns Registration No. 1,733,914 for M .D . FORMULATIONS (Stylized) . 11. Bioceutix, through its predecessor, began to promote its goods under

the M.D . FORMULATIONS Mark at least as early as November 21, 1991 and its use of the M.D . FORMULATIONS Mark in interstate commerce has been continuous since that date . M .D . FORMULATIONS has been in use for and is registered for use in connection with "cosmetics and skin and hair care products ; namely skin moisturizers, skin cleansers, shampoos, sunscreen preparations, lip balms, nail and cuticle creams, and dead ski n

-3W02-SF ; FHW61456876. ]

First Amended Complaint for Trademark Infringement, False Designation of Origi n & Unfair Competition ; Jury Demand

A B

I

removing gels[ .]" Bioceutix owns Registration No . 1,814,638 for M .D . FORMULATIONS . 12. ioceutix, through its predecessor, began to promote its goods under

2 3 4 5

the M.D. FORMULATIONS VIT-A-PLUS Mark at least as early as June 1995 and has used the M .D . FORMULATIONS VIT-A-PLUS Mark in interstate commerce continuously since at least September 1995 . M.D. FORMULATIONS VIT-A-PLUS has been in use for and is registered for use in connection with "skin care lotions and creams[ .]" Bioceutix owns Registration No . 2,241,493 for M.D. FORMULATIONS VITA-PLUS . 13. Bioceutix began to promote its goods under the M .D .

FORMULATIONS & DESIGN Mark at least as early as January 2002 and its use of the M .D . FORMULATIONS & DESIGN Mark in interstate commerce has been continuous since that date . The M.D . FORMULATIONS & DESIGN Mark has been in use in connection with cosmetics, skin and hair care products and Bioceutix has applied to the United States Patent and Trademark Office for registration of said use under the M .D . FORMULATIONS & DESIGN Mark, Application Serial No. 76/405006. Copies of the Use Application for Trademark M .D . FORMULATIONS & DESIGN and Filing Receipt for Trademark Application are collectively attached hereto as composite Exhibit B . 14. Bioceutix's goods under the M .D . Family of Marks are offered

throughout the United States, including the Northern District of California, and revenues from these goods have been signi fi cant. Further, Bioceutix has spent substantial time, money and effort promoting its goods under the M .D . Family of Marks . 15. s a consequence of the extensive advertising and promotion of the

M .D . Family of Marks, and of the widespread use of the M .D . Family of Marks, Bioceutix has developed recognition for its goods and has acquired and now enjoys a valuable reputation and goodwill under the M .D . Family of Marks .

-4w02-sF .FHM\61456876 .1

First Amended Complaint for Trademark Infr ingement, False Designation of Origin & Unfair Competition ; Jury Demand

F

Defendants and Their Activities

16.

Defendants offer skin care products under the designations M .D .

SKINCARE, M.D. SKIN CARE and M.D. SKINCARE & DESIGN . 17. 6
7

Upon information and belief, Defendants began using and continue to

use the M .D . SKINCARE, M .D . SKIN CARE and M .D . SKINCARE & DESIGN designations in connection with their skin care products. 18. Upon information and belief, Defendants have promoted and offered

and will continue to promote and offer skin care products under the M .D . SKINCARE, M .D . SKIN CARE and M .D . SKINCARE & DESIGN designations . 19. Upon information and belief, Defendants had notice of Bioceu ti x,

and/or its predecessors, and the M .D . Family of Marks prior to its adoption of the M.D. SKINCARE, M.D. SKIN CARE and M.D. SKINCARE & DESIGN designations for their skin care products. 20. Upon information and belief, Defendants began offering their skin

care products under the M.D. SKINCARE, M .D . SKIN CARE and M .D . SKINCARE & DESIGN designations in a deliberate attempt to leverage and trade on the goodwill and reputation established by Plaintiffs and their predecessor under the M .D . Family of Marks. 21. Defendants have advertised or have caused to advertise their skin care

products in interstate commerce in connection with the M.D . SKINCARE, M .D . SKIN CARE and M .D . SKINCARE & DESIGN designations, and have dist ributed or caused to be distributed promotional material bearing the M .D . SKINCARE, M .D . SKIN CARE and/or M.D. SKINCARE & DESIGN designations for the identified goods in interstate commerce . 22. Upon information and belief, Defendants' skin care products offered

or promoted under the M .D . SKINCARE, M .D . SKIN CARE and/or M.D. SKINCARE & DESIGN designations are offered and will continue to be offered through the sam e channels of trade, are being advertised and will continue to be advertised through the sam e
-5W 02-SF: FHM161456876.1

irst Amended Complaint for Trademark Infringement, False Designation of Origi n & Unfair Competition ; Jury Deman d

channels of advertising, and to the same consumers, as the skin care products that are offered and promoted under the M .D . Family of Marks. 23. The use of the M .D . SKINCARE, M .D . SKIN CARE and M .D .

SKINCARE & DESIGN designations by Defendants for the promotion and sale of Defendants' products is without the consent of Bioceutix .

Likelihood of Confusion-, Inju to Plaintiffs

24.

The use of the M .D . SKINCARE, M .D . SKIN CARE and M.D .

SKINCARE & DESIGN designations for skin care products by Defendants falsely indicates to consumers and to the trade that Defendants and/or their goods are in some manner connected with, sponsored by, affiliated with, or related to Plaintiffs and the goods of Bioceutix . 25. The use of the M .D . SKINCARE, M .D . SKIN CARE and M .D .

SKINCARE & DESIGN designations by Defendants in connection with Defendants' skin care products allows, and will continue to allow, Defendants to receive a benefit of goodwill built up at great labor and expense by Plaintiffs, and to gain acceptance and recognition for Defendants' goods not based on the merits of those goods, but on the reputation and goodwill of Plaintiffs' goods. 26. On or about March 17, 2003, Defendants were notified in writing of

the exclusive rights of MD Beauty and its subsidiaries in and to the M .D . Family of Marks for skin care products . At that time, MD Beauty and its subsidiaries demanded tha t Defendants cease and desist their unlawful activities as described above . Despite multiple communications with Defendants in an attempt to resolve the matter informally, Defendants have remained unwilling to cease their use of the M .D . SKINCARE, M .D . SKIN CARE and M .D . SKINCARE & DESIGN designations in connection with their skin care products and have continued their unlawful conduct . Copies of the parties' correspondence in this regard are collectively attached hereto as composite Exhibit C .
-6W02-SF :FHM161456876 . [

First Amended Complaint for Trademark Infringement, False Designation of Origin & Unfair Competition ; Jury Deman d

P T U

1 2
3

27.

The above-mentioned activities of Defendants are li kely to cause

confusion, or to cause mistake, or to deceive consumers wishing to obtain goods from Plaintiffs . 28. Upon information and belief, the acts of Defendants complained of

4 5

above have been conducted in commerce and have affected, and will continue to affect, Bioceutix's business of promoting and offering its skin care products in commerce and therefore constitute trademark infringement and false designation of origin in violation of 15 U.S .C . § 1114. 29. pon information and belief, the intentional and spurious nature of

6
7

the acts of Defendants complained of above make this an exceptional case under 15 U .S .C . § 1117(a) .

SECOND CLAIM FOR RELIEF False Designation of Origin

30.

Plaintiffs repeat and reallege the foregoing Paragraphs 1 through 29 as

if fully set forth herein . 31. he acts of Defendants complained of above constitute false

designation of origin in violation of 15 U .S .C . § 1125(a) .

THIRD CLAIM FOR RELIEF Statutory Unfair Competition

32.

laintiffs repeat and reallege the foregoing Paragraphs 1 through 31 as

if fully set forth herein . 33. The acts of Defendants complained of above constitute unfair or

fraudulent business practices, and deceptive, untrue or misleading advertising in violation of California statutory law, all to the injury of Plaintiffs .
-7W02-SF: FHM161456876 .1

First Amended Complaint for Trademark Infringement, False Designation of Origin & Unfair Competition ; Jury Deman d

U P T

34.

he advertising, promotion and sale of Defendants' skin care products

under the M .D . SKINCARE, M .D . SKIN CARE and M .D . SKINCARE & DESIGN designations constitute unlawful acts in violation of California Business & Professions Code § 17200 et seq .

6 7

FOURTH CLAIM FOR RELIEF Common Law Trademark Infringement and Unfair Competitio n

35.

laintiffs repeat and reallege the foregoing Paragraphs 1 through 34 as

if fully set forth herein . 36. The acts of Defendants complained of above have and will continue to

unjustly enrich Defendants at Plaintiffs' expense . 37. The acts of Defendants complained of above constitute trademark

infringement and unfair competition under the common law of the State of California .

Irreparable Injury

38.

The acts of Defendants complained of in the First, Second, Third and

Fourth Claims for Relief set forth above are jeopardizing the goodwill of Plaintiffs in connection with the M .D . Family of Marks for Bioceutix's skin care products, and such acts have caused, and are causing, irreparable injury to Plaintiffs, to the trade and to consumers . 39. nless the acts complained of above are restrained and enjoined by

this Court, they will continue to cause further irreparable injury for which there is no adequate remedy at law .

-8W 02-SF: FH M \61456876 .1

First Amended Complaint for Trademark Infringement, False Designation of Origin & Unfair Competition ; Jury Demand

(

I

WHEREFORE, Plaintiffs pray : (a) For a judgment that Defendants, Defendants' officers, agents,

2 3 4 5 6 7

distributors, employees, attorneys, subsidiaries, assigns or related companies, and those in active concert or participation with Defendants, or any of them, who receive actual notice of the judgment by personal service or otherwise, be permanently enjoined from using or employing, directly or indirectly, the M .D . SKINCARE, M .D . SKIN CARE and M .D . SKINCARE & DESIGN designations in connection with the promotion or offering of any skin care products, or any other designation that is confusingly similar to or which is a colorable imitation of any of the M .D . Family of Marks for the identified goods ; (b) That Defendants be directed to file with this Court, within thirty (30)

days after entry of any injunction in this case, a written statement, under oath, setting forth in detail the manner in which Defendants have complied with the injunction ; (c) That an accounting be directed to determine the profits of Defendants

resulting from their trademark infringement, false designation of origin and unfair competition, which are the subject of this suit, and that such profits be paid over to Plaintiffs as an equitable remedy ; (d) That Plaintiffs recover their damages, in an as yet undetermined

amount, resulting from the trademark infringement, false designation of origin and unfair competition of Defendants ;
e) (f)

That Plaintiffs recover their costs of this action ; That Plaintiffs be awarded their reasonable attorneys' fees in

accordance with 15 U.S.C. §1117(a) ; (g) determined ; and That Plaintiffs be awarded punitive damages in an amount to b e

-9W02-sr:FHM\6 1 456876. l

First Amended Complaint for Trademark Infrin g ement, False Designation of Origi n & Unfair Competition ; Jury Demand

T

(h) deem appropriate.

hat Plaintiffs recover such other and further relief as the Court may

Dated : June, 2005

6

SHEPPARD, MULLIN, RICHTER & HAMPTON

1.L,F

By

MICHELLE J . HIRTH Attorneys for Plaintiffs MD BEAUTY, INC . and BIOCEUTIX, INC .

-10W02-SRFHM161456876 .1

First Amended Complaint for Trademark Infr ingement, False Designation of Origin & Unfair Competition ; Jury Demand

P

1

DEMAND FOR JURY TRIA L

laintiffs hereby demand a jury trial as provided by Rule 38(a) of the Federal Rules of Civil P ro cedure . SHEPPARD, MULLIN, RICHTER & RAMPTON LL P

By

M1LHnLE J . HIRTH 1 Attorn eys for Plaintiffs MD BEAUTY, INC . and BIOCEUTIX, INC .

-11W 02-SF:FHM161456876.1

First Amended Complaint for Trademark Infringement, False Designation of Origin & Unfair Competition ; Jury Demand

T

1 2 3 4 5

CERTIFICATION OF INTERESTED ENTITIES OR PERSON S

Pursuant to Civil L .R . 3-16, the undersigned certif es that as of this date, i other than the named parties, there is no such interest to report .

6

SHEPPARD, MULLIN, RICHTER & gAMPTON LL P

By

RTH N Attorneys for Plaintiffs MD BEAUTY, INC . and BIOCEUTIX, INC .
EfCIETVT

-12WOMF:FHM\61456876 .l

First Amended Complaint for Trademark Infringement, False Designation of Origi n & Unfair Competition ; Jury Demand