Professional Documents
Culture Documents
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WESTERN DIVISION
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13 Party A Ltd, t/a/ PARTY A AND
14 XYZ, a Party A and corporation
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Plaintiff,
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17 J. PARTY B, d/b/a S XYZ, an
18 District,
19 Defendant.
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22 Counterclaimant, v.
23 Party A Ltd, t/a/ PARTY A AND
24 XYZ, a Party A and corporation
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Counterdefendant.
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AMENDED COUNTERCLAIMS - 1
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Case No.:
AMENDED COUNTERCLAIMS
AGAINST PLAINTIFF FOR: (1)
COMMON LAW UNFAIR
COMPETITION; (2)
DECLARATORY RELIEF; AND (3)
FALSE DESIGNATION OF
ORIGIN
DEMAND FOR JURY TRIAL
others:
FACTUAL BACKGROUND
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10 the United States Patent & Trademark Office through Federal Registration
Nos.
11 9999,99999 (XYZ Marks).
12 3. The reputation and goodwill of XYZwerk still exist and there is still a
13 market for authentic XYZwerk car, parts, and car accessories in
14 the United States. Party A and XYZ did not receive an assignment of any
rights,
15 reputation, goodwill, or otherwise from XYZwerk.
16 4. Party B believes that the original German XYZwerk company conveyed
17 its intellectual property rights and other rights to XYZ Only, a separate non-
party
18 company.
19 5. Party B resells authentic XYZwerk items to the public.
20 6. Party B has suffered an injury-in-fact due to the Party A and XYZs
actions.
21 Some customers who purchase Party A and XYZ products under the mistaken
belief
22 that Party A and XYZ is the original XYZwerk company, may otherwise buy
from
23 Party B company, S XYZ. Party A and XYZs misleading use of the XYZ
24 mark is also likely to cause injury to S XYZ in the future. XYZ brand
25 customers may purchase from Party A and XYZ because their use of the
mark
Those
27 customers may believe that they are buying a product from the original
company
28 that started XYZ, when in fact they can buy the same resold, rebuilt
products
AMENDED COUNTERCLAIMS - 2
and
3 XYZ seeks to establish exclusive use of the XYZ mark. However, car
4 companies, like S XYZ need to use the XYZ mark in order to designate and
5 properly label their goods. Should S XYZ be prohibited from continued use
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of the XYZ mark, S XYZ will continue to lose customers and sales.
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AMENDED COUNTERCLAIMS - 3
at
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$18,016.00.
13. Party B seeks injunctive relief to prevent Party A and XYZ from further
capitalizing on the goodwill of XYZwerk by confusing consumers.
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(Declaratory Relief)
its Counterclaim.
10 15. A real and actual controversy exists between the parties as to the right of
11 each or either to use and/or register the XYZ Marks.
12 16. Party B contends that after XYZwerk abandoned its trademarks, many
13 parties and entities, including the parties hereto but also many others, commenced
14 use of the XYZ Marks.
15 17. The public and/or consumers of XYZwerk products and/or Party A and
16 XYZ still associate the XYZ Marks with XYZwerk.
17 18. Party A and XYZs use of the XYZ Marks is deceptive. It confuses
18 consumers by conveying a false connection of Party A and XYZs goods, services,
19 and business with XYZwerk. Party A and XYZs use of the XYZ Marks further
20 confuses consumers by conveying a false designation of origin of Party A and
21 XYZs goods and services.
22 19. Party B believes that the original German XYZwerk company conveyed
23 its intellectual property rights and other rights to XYZ Only. Therefore Party A and
24 XYZs registration would be improper and invalid.
25 20. Based on the foregoing, Party A and XYZs XYZ Marks should be
26 invalidated, cancelled, and Party A and XYZ should not have exclusive use of the
27 XYZ Marks.
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AMENDED COUNTERCLAIMS - 4
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of its Counterclaim.
22. Party A and XYZs acts have caused, and are likely to continue to cause,
confusion as to the origin of goods and services under the XYZ Marks.
Consumers are likely to believe the goods and services of Party A and XYZ
8 originate with the original XYZ manufacturer, XYZwerk, or its proper successor
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or assignee.
10 23. Party A and XYZ has engaged in acts that constitute false advertising and
11 false designation of origin pursuant to 43(a) of the Lanham Act.
12 24. Party B seeks injunctive relief and request damages. Party B seeks an award
13 of damages resulting from Party A and XYZs conduct. As a result of Party A
and
14 XYZ attempting to enforce its alleged rights against Party B, business has declined.
15 Party A and
AMENDED COUNTERCLAIMS - 5
5. For such other and further relief as this Court deems just and appropriate.
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Respectfully Submitted,
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28 DEMAND FOR A JURY TRIAL
AMENDED COUNTERCLAIMS - 6
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Pursuant
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Respectfully Submitted,
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AMENDED COUNTERCLAIMS - 7