Amazon Answer To Amended Complaint

Case 1:22-cv-02246-JPH-MKK Document 151 Filed 10/04/23 Page 1 of 47 PageID #: 1465
IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
)
RENEE GABET and
)
ANNIE OAKLEY ENTERPRISES, INC.,
)
) No. 1:22-cv-02246-JPH-MKK
Plaintiffs,
)
)
-vs.-
)
)
AMAZON.COM, INC., and
)
JOHN DOES 1-50,
)
)
Defendants.
)
ANSWER AND COUNTERCLAIMS OF AMAZON.COM, INC
Defendant Amazon.com, Inc. (“Amazon”) answers the Amended Complaint for Willful
and Intentional Trademark Infringement and Related Claims (“Complaint”) of Annie Oakley
Enterprises, Inc. and Renee Gabet (“plaintiffs”), and brings counterclaims against them, as
follows:
NATURE OF ACTION, JURISDICTION AND VENUE
1. Amazon admits that this action purports to be for trademark infringement, false
designation of origin, and unfair competition, under inter alia, the Lanham Act, 15 U.S.C. §§ 1051,
et seq., and for common law trademark infringement under Indiana state law. Amazon denies that
plaintiffs have stated any viable claims. As to plaintiffs’ purported state common law claims for
unfair competition, Amazon is not required to respond because those claims have been dismissed
by the Court prior to the date of this Answer. (See ECF 139.)
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2. Amazon admits that this Court has subject matter jurisdiction over actions brought
pursuant to 28 U.S.C. §§ 1331 and 1338 and 15 U.S.C. § 1121 and 28 U.S.C. § 1332, but denies
that plaintiffs have stated any viable claims under those provisions. Amazon admits that this Court
has supplemental jurisdiction over the state common law claims remaining in this action pursuant
to 28 U.S.C. §§ 1367(a), but denies that jurisdiction exists under 28 U.S.C. § 1338(b).
3. For purposes of this action only, Amazon does not contest that venue was proper
but denies that venue was convenient in the Northern District of Indiana, where this Complaint
was filed. Amazon denies that a substantial part of the events giving rise to this action occurred in
the Northern District of Indiana. For purposes of this action only, Amazon does not contest that it
was subject to personal jurisdiction in the Northern District of Indiana. Amazon lacks knowledge
or information sufficient to form a belief as to the truth of the allegations to the extent they pertain
to the other defendants.
4. For purposes of this action only, Amazon does not contest that it was subject to
personal jurisdiction in the Northern District of Indiana. Amazon denies that it sold, offered for
sale, or marketed any product accused of infringement in the Northern District of Indiana. Amazon
admits an affiliated company marketed and offered for sale some products accused of infringement
in this action in the Northern District of Indiana, but denies that any such efforts were directed at
the Northern District of Indiana or that it did so for all products accused of infringement in this
action. Amazon lacks knowledge or information sufficient to form a belief as to the truth of the
allegations to the extent they pertain to the other defendants or to the extent they relate to the vague
allegation “similar URLs for foreign countries.”
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THE PARTIES
5. Amazon lacks knowledge or information sufficient to form a belief as to the truth
of the allegations in Paragraph 5 of the Complaint.
6. Denied.
7. Denied.
8. Amazon denies that it is organized under the laws of the State of Washington.
Amazon admits that its principal office is located at 410 Terry Ave. N, Seattle, WA 98109-5210.
9. Amazon denies that it acquires infringing products, that it has co-conspirators, or
that it knows the identities of these non-existent co-conspirators. Amazon lacks knowledge or
information sufficient to form a belief as to the truth of the remaining allegations in Paragraph 9
of the Complaint.
FACTUAL ALLEGATIONS
12. Amazon denies that Gabet filed a federal trademark application for Morning Dew
or that she owns the listed corresponding federal registration. Amazon admits that Gabet filed
federal trademark applications for Sunset and Indian Musk. Amazon lacks knowledge or
information sufficient to form a belief as to the truth of whether Gabet owns the listed trademark
registrations for Sunset and Indian Musk. Amazon is not required to respond with respect to
allegations related to the other listed trademarks either because claims related to them have been
dismissed by the Court prior to the date of this Answer (see ECF 139) or because plaintiffs have
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informed Amazon that they are not asserting Sagebrush in this action (including formal responses
to discovery requests stating that they need not provide responsive documents because they are
not asserting Sagebrush).
13. With respect to the registrations for Morning Dew, Sunset, and Indian Musk,
Amazon denies the allegations in Paragraph 13 of the Complaint. Amazon is not required to
respond with respect to allegations related to the other listed trademarks either because claims
related to them have been dismissed by the Court prior to the date of this Answer (see ECF 139)
or because plaintiffs have informed Amazon that they are not asserting Sagebrush in this action.
14. Amazon denies that Annie Oakley is a “registrant” as defined in 15 USC § 1127.
(See ECF 139.) Amazon lacks knowledge or information sufficient to form a belief as to the truth
of the remaining allegations in Paragraph 14 of the Complaint.
15. Amazon admits that a requirement of trademark registration and renewal includes
the submission of statements of use to the U.S. Patent and Trademark Office. With respect to
Morning Dew, Sunset, and Indian Musk, Amazon denies that Annie Oakley has used these marks
in nearly every conceivable possible way or that Amazon or its counsel is aware of how plaintiffs
use them or that it took depositions or other discovery from plaintiffs that show how plaintiffs use
them. Amazon lacks knowledge or information sufficient to form a belief as to the truth of the
remaining allegations of Paragraph 15 directed to Morning Dew, Sunset or Indian Musk. Amazon
is not required to respond with respect to allegations related to the other listed trademarks either
because claims related to them have been dismissed by the Court prior to the date of this Answer
(see ECF 139) or because plaintiffs have informed Amazon that they are not asserting Sagebrush
in this action.
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16. Amazon denies the allegations directed against it. Amazon lacks knowledge or
information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 16.
17. Amazon admits that it has a “Report Infringement form” for use by intellectual
property rights owners and their agents to notify Amazon of alleged intellectual property
infringements such as copyright and trademark concerns. Amazon admits that Gabet contacted it
in 2018 and that Amazon responded. Amazon denies that plaintiffs, including Gabet, identified
allegedly infringing products accused in the Complaint. Amazon denies that it has sold infringing
products. Amazon admits that no court has ever found Amazon liable of infringing any of
plaintiffs’ trademarks and denies that it ever had any related ill-gotten gains. Amazon lacks
knowledge or information sufficient to form a belief as to the truth of the remaining allegations of
Paragraph 17.
18. Denied.
19. Amazon denies infringement. Amazon admits that in a prior litigation it served an
interrogatory asking plaintiffs to state “each trademark owned by Gabet, state the time period
during which said trademark has been used, and describe the category of products on which each
has been used.”
20. Amazon denies that, in 2020, Gabet provided Amazon a list of advertising ideas.
Amazon admits that, in 2020, plaintiffs provided Amazon the list in paragraph 20. Amazon lacks
knowledge or information sufficient to form a belief as to the truth of the remaining allegations of
Paragraph 20.
21. Amazon denies that paragraph 20 lists registrations. Amazon denies that the
asserted registrations are prima facie evidence of validity, ownership or an exclusive right to use
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the marks in commerce in connection with the goods specified in registrations. Amazon denies
that the registrations provide constructive notice of Gabet’s ownership of the marks.
22. Amazon denies that plaintiffs, including Gabet, provided Amazon with notice of
any products accused in the Complaint. Amazon denies that Amazon has sold any products that
infringe any trademarks asserted by plaintiffs in this action or prior actions.
23. Amazon denies that it directly infringes, contributorily infringes, or induces
infringement of Morning Dew, Sunset or Indian Musk or that it has incorporated words comprising
trademarks into URLs on www.amazon.com for products that would be of interest to persons
looking for plaintiffs’ products. Amazon is not required to respond with respect to allegations
related to the other trademarks either because claims related to them have been dismissed by the
Court prior to the date of this Answer (see ECF 139) or because plaintiffs have informed Amazon
that they are not asserting Sagebrush in this action.
24. Amazon admits that the products depicted in paragraph 24 have been offered for
sale on www.amazon.com. Amazon denies the remaining allegations related to the Indian Musk,
Sunset, and Morning Dew trademarks. Amazon is not required to respond with respect to
allegations related to Sagebrush because plaintiffs have informed Amazon that they are not
asserting Sagebrush in this action.
25. Denied.
26. Amazon admits that it uses “ASINs” to identify products. Amazon denies the
remaining allegations in paragraph 26.
27. Amazon denies that it disregards the rights of others or that this has been confirmed
by multiple courts. Amazon admits it unsuccessfully opposed the issuance of a preliminary
injunction in Kinsley Tech. Co. v. Ya Ya Creations, Inc., No. 2:20-cv-04310-ODW (C.D. Cal.), but
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denies that the court found infringement. Amazon admits that the opinion included the block
quotation included in paragraph 27, but denies that the other quotations in paragraph 27 are
accurate.
28. Amazon admits that an opinion in the action Maglula Ltd. v. Amazon.com, Inc., No.
1:19-cv-01570 (E.D. Va.), states Maglula notified Amazon that Amazon was selling counterfeit
products. Amazon admits that the opinion states that “the evidence of unlawful counterfeiting by
these Chinese entities is overwhelming.” Amazon admits that the opinion denying Amazon’s
motion for summary judgment states “this is simply not a case where Amazon can avoid liability”
but denies that the court in this case found Amazon liable. Amazon denies that the court in this
action found that Amazon improperly destroyed accused products.
29. Denied.
of the allegations of Paragraph 30.
31. Denied.
32. Denied.
33. With respect to the registrations for Morning Dew, Sunset, and Indian Musk,
Amazon denies the allegations in Paragraph 33 of the Complaint. Amazon is not required to
respond with respect to allegations related to the other listed trademarks either because claims
related to them have been dismissed by the Court prior to the date of this Answer (see ECF 139)
or because plaintiffs have informed Amazon that they are not asserting Sagebrush in this action.
34. With respect to Morning Dew, Sunset, and Indian Musk, Amazon denies that Annie
Oakley has used them in nearly every conceivable possible way. Amazon lacks knowledge or
information sufficient to form a belief as to the truth of the remaining allegations of Paragraph 34
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directed to Morning Dew, Sunset or Indian Musk. Amazon is not required to respond with respect
to allegations related to the other listed trademarks either because claims related to them have been
dismissed by the Court prior to the date of this Answer (see ECF 139) or because plaintiffs have
informed Amazon that they are not asserting Sagebrush in this action.
35. Amazon denies that Annie Oakley is within the definition of the term “legal
representative” as that term is used in 15 USC § 1127. Amazon lacks knowledge or information
sufficient to form a belief as to the truth of the remaining allegations in Paragraph 35 of the
Complaint.
36. With respect to Morning Dew, Sunset, and Indian Musk, Amazon denies the
allegations of Paragraph 36. Amazon is not required to respond with respect to allegations related
to the other listed trademarks either because claims related to them have been dismissed by the
Court prior to the date of this Answer (see ECF 139) or because plaintiffs have informed Amazon
that they are not asserting Sagebrush in this action.
37. Denied.
38. Amazon admits that it was never contacted by plaintiffs prior to the Complaint
being filed regarding any of the products accused of infringement in the Complaint. Amazon
denies that it was required to procure plaintiffs’ authorization for any of its actions.
39. Denied.
40. Denied.
41. Denied.
42. Amazon admits that the article cited states that it was “second to cross $1 trillion
line.” Amazon admits that its affiliated companies offer a variety of products for purchase on
www.amazon.com. Amazon admits that third parties offer products for purchase on
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www.amazon.com, and that third parties—and not Amazon—decide which products those parties
sell, the means of shipping, and product pricing. Amazon admits that its affiliated companies
permit third parties to list products on the Amazon Marketplace, process orders consumers place
for products purchased from third-party sellers, and process payments made by customers to the
sellers of the products. Amazon admits that its affiliated companies collect fees from third-party
sellers, and that a third-party seller must assent to Amazon’s Services Business Solutions
Agreement, which governs third-party offerings on the site, and which includes provisions
prohibiting the third-party seller from offering products that infringe the intellectual property rights
of others. Except as admitted, Amazon denies the remaining allegations in Paragraph 42 of the
Complaint. Amazon lacks knowledge or information sufficient to form a belief as to the truth of
the allegations to the extent they pertain to any other defendants.
43. Amazon admits that third-party sellers, with limited exceptions, control which
products they will market, offer for sale, or sell on www.amazon.com. Amazon admits that its
affiliated companies directly sell slightly used products that were once third-party products, and
such sales are referred to as “Amazon Warehouse” sales. Amazon denies the remaining allegations
in Paragraph 43 of the Complaint.
44. Amazon admits that when a third-party seller offers a product for the first time (that
is, when no existing listing pertains to the product), the third-party seller provides information for
creating the listing, and the information provided may include the categories of information
described in paragraph 44. Except as admitted, Amazon denies the remaining allegations in
Paragraph 44 of the Complaint.
45. Paragraph 45’s use of the word “formats” is not sufficiently clear for Amazon to
admit or deny the allegations contained therein. Amazon admits that it possesses certain
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contractual rights to modify listings created by third parties and that it may remove or restrict
access to listings when, for example, intellectual property rights holders contact Amazon and
request that action. However, plaintiffs never contacted Amazon before commencing this action
to request such actions for any products accused in this case. Amazon denies the remaining
allegations in Paragraph 45 of the Complaint.
46. Amazon admits that third-party sellers may elect to utilize Amazon’s services,
including certain advertising services, and that Amazon’s affiliated companies offer fulfillment
services including “Fulfillment by Amazon,” which involves storing and shipping products to
customers after third-party sellers sell products to customers. Amazon denies the remaining
allegations in Paragraph 46 of the Complaint.
47. Amazon admits that third-party sellers set the price for products they list, sell, or
offer for sale on www.amazon.com. Amazon denies that the Amazon Agreement states that
“Vendors may not charge more on Amazon than they charge in other sales channels,” that it
prohibits “third-party vendors [from] offer[ing] inferior customer service or provid[ing] lower
quality information about products than in other sales channels,” or that it requires that, “[t]o the
extent that third-party vendors need to communicate with customers regarding their orders on
Amazon, they must do so through the Amazon platform.”
48. Amazon can neither admit nor deny the statement that “with these preliminaries
completed, Amazon lists the product online and sales begin,” because it is not clear what the
“preliminaries” refers to, and other necessary steps occur before a product is listed by a third-party
seller on www.amazon.com. Amazon admits that its affiliated companies collect and convey order
and payment information to third-party sellers, and that customers can choose different shipping
preferences when available. Amazon admits that it expects third-party sellers to fulfill
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representations made to customers regarding when products are shipped. Amazon admits that
customers can rate or review third-party sellers. Amazon denies the remaining allegations in
paragraph 48 of the Complaint.
49. Amazon denies that it collects the fees described from vendors as Amazon
understands that term and as it uses the term in publicly available documents. Amazon denies the
remaining allegations in Paragraph 49 of the Complaint.
50. Amazon admits that its agreement with third-party sellers permits it to suspend,
prohibit, or remove listings; that it can require third-party sellers to cancel orders; that it may
suspend payments to third-party sellers under certain circumstances; and that third-party sellers
are required to indemnify, defend, and hold Amazon harmless under specified circumstances.
Amazon denies the remaining allegations in Paragraph 50 of the Complaint.
51. Denied.
52. Amazon denies the allegations in Paragraph 52 of the Complaint to the extent they
pertain to Amazon. Amazon lacks knowledge or information sufficient to form a belief as to the
truth of the allegations to the extent they pertain to any other defendants.
54. Denied.
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COUNT I
Federal Trademark Infringement
56. Amazon realleges and incorporates its responses to the allegations of Paragraphs 1
through 55 of the Complaint.
57. With respect to Gabet and Indian Musk, Sunset, and Morning Dew, Amazon denies
the allegations in Paragraph 57 of the Complaint to the extent they pertain to Amazon. Amazon
lacks knowledge or information sufficient to form a belief as to the truth of the allegations to the
extent they pertain to any other defendants. Amazon is not required to respond with respect to
allegations related to Annie Oakley or the other listed trademarks either because claims related to
them have been dismissed by the Court prior to the date of this Answer (see ECF 139) or because
plaintiffs have informed Amazon that they are not asserting Sagebrush in this action.
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COUNT II
False Designation of Origin and Unfair Competition Under the Lanham Act
66. With respect to Indian Musk, Sunset, and Morning Dew, Amazon denies the
allegations in Paragraph 66 of the Complaint to the extent they pertain to Amazon. Amazon lacks
knowledge or information sufficient to form a belief as to the truth of the allegations to the extent
they pertain to any other defendants. Amazon is not required to respond with respect to allegations
related to the other listed trademarks either because claims related to them have been dismissed by
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the Court prior to the date of this Answer (see ECF 139) or because plaintiffs have informed
Amazon that they are not asserting Sagebrush in this action.
COUNT III
Common Law Trademark Infringement
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71. Denied.
COUNT IV
Unfair Competition
72. Amazon realleges and incorporates its responses to the allegations of Paragraphs
1 through 71 of the Complaint.
73. Amazon is not required to respond because the allegations in Paragraph 73 relate
solely to a claim that has been dismissed by the Court prior to the date of this Answer. (See ECF
139.)
139.)
139.)
139.)
139.)
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139.)
GENERAL DENIAL
Amazon denies any and all allegations of the Complaint not specifically admitted herein
above.
ADDITIONAL DEFENSES
Further answering and as additional defenses, Amazon states the following without
admitting any allegation of the Complaint not otherwise admitted and without assuming the burden
of proving any fact that is otherwise plaintiffs’ burden to prove. Amazon reserves the right to
amend or augment these defenses based on further investigation and discovery.
First Defense
(Non-Infringement)
79. Amazon does not infringe and has not infringed plaintiffs’ trademarks in any
manner.
Second Defense
(Non-Liability for Third-Party Actions)
80. Amazon is not liable for acts of third parties, including parties who list, offer to sell,
and sell products using Amazon’s online marketplace.
Third Defense
(No Trademark Protection/Invalidity)
81. The claims in plaintiffs’ Complaint are barred in whole or in part because plaintiffs
lack trademark rights, for example, because plaintiffs’ trademarks registrations are invalid (for
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example, as alleged in Amazon’s Counterclaims, infra, the registrations were obtained
fraudulently) and because plaintiffs’ alleged common law trademarks lack secondary meaning.
Fourth Defense
(Laches)
82. The claims in plaintiffs’ Complaint are barred in whole or in part under the
equitable doctrines of laches.
Fifth Defense
(Damages Limited)
83. Plaintiffs have not sustained any damages and plaintiffs are not entitled to recover
Amazon’s profits, including because the principles of equity prevent monetary recovery.
Sixth Defense
(Failure to State Sufficient Facts to Constitute Claims)
84. Plaintiffs fail to state a claim upon which relief may be granted.
Seventh Defense
(Failure to Mitigate Damages)
85. Plaintiffs’ claims are barred, in whole or in part, by their failure to mitigate
damages.
Eighth Defense
(Injunctive Relief Unavailable)
86. Plaintiffs are not entitled to injunctive relief because any alleged injury to plaintiffs
is not immediate or irreparable, and plaintiffs have an adequate remedy at law.
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Ninth Defense
(Statute of Limitations)
87. Plaintiffs’ claims are barred in whole or in part by the applicable statute of
limitations.
Tenth Defense
(Estoppel and Waiver)
88. Plaintiffs’ claims are barred in whole or in part by the doctrines of estoppel and
waiver.
Eleventh Defense
(Lack of Standing)
89. Plaintiffs lack standing to bring their claims in whole or in part.
COUNTERCLAIMS
Counterclaimant Amazon.com, Inc. (“Amazon”), by and through its counsel of record, for
its Counterclaims against Annie Oakley Enterprises, Inc. (“Annie Oakley”) and Renee Gabet
(“Gabet”) (collectively “counter-defendants”), hereby alleges as follows:
1. Amazon brings claims for cancellation of the four remaining asserted trademark
registrations due to Gabet’s fraud on the U.S. Patent and Trademark Office (“USPTO”). Gabet
submitted at least 19 false declarations under the penalty of perjury when applying for,
prosecuting, and maintaining the registrations for the three remaining trademarks at issue, Sunset,
Indian Musk, and Morning Dew. (Two registrations are for Sunset.)
2. Gabet fraudulently obtained and extended trademark coverage by knowingly
making sworn false statements to the USPTO about her supposed “bona fide” intention to use the
marks on different types of goods. For eight years, she treated the USPTO like a trademark
reservation system, submitting at least a half-dozen knowingly false declarations of bona fide
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intent when applying to register Sunset. She did this to extend the life of the registration’s
application while not actually taking steps to use the mark. She made similar false declarations
when applying for a registration for Indian Musk. The USPTO relied on these declarations by
extending the abandonment deadline for her to file declarations of actual use.
3. Gabet has also submitted fraudulent sworn declarations of actual use. They stated
that Gabet used the marks on more goods than she did. She submitted the false declarations to
convince the USPTO to issue the asserted registrations for Sunset and Indian Musk. Five years
after the registrations’ issuance, she did this again to convince the USPTO to allow all asserted
registrations to mature to “incontestable” status. And she has done it since then for all asserted
registrations when submitting declarations to renew.
4. Plaintiffs’ Complaint includes trademark claims against Amazon based on
fraudulently obtained registration rights. Amazon thus brings counterclaims for cancellation of the
fraudulently obtained registrations. It also brings counterclaims seeking declarations of non-
infringement, including against non-registration–based trademark rights asserted by both counter-
defendants.
THE PARTIES
5. Amazon is a Delaware corporation with its principal office located at 410 Terry
Ave. N, Seattle, WA 98109-5210.
6. On information and belief, and based on representations made in the Complaint,
Gabet resides in Ligonier, Indiana, and she owns Annie Oakley.
7. Annie Oakley is an Indiana corporation with its principal place of business located
at 300 Johnson St., Ligonier, Indiana 46767.
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JURISDICTION AND VENUE
8. Amazon brings these counterclaims under the trademark laws of the United States,
35 U.S.C. §§ 1051 et seq., 15 U.S.C. § 1119, and the Declaratory Judgment Act, 28 U.S.C. §§ 2201
and 2202. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 (federal question)
and 1338 (trademarks), and under 28 U.S.C. §§ 2201 and 2202 (declaratory judgment).
9. The Court may exercise personal jurisdiction over each counter-defendant.
Counter-defendants have waived any objections to personal jurisdiction because their complaint
against Amazon is pending in this Court. Counter-defendants both reside within the state of
Indiana.
10. Venue is proper with respect to each of the following Counterclaims because their
complaint against Amazon is pending in this Court and pursuant to 28 U.S.C. § 1391.
11. By filing their Complaint, counter-defendants have sought to impose liability on
Amazon for alleged trademark infringement, counterfeiting and unfair competition under federal
law. Amazon is not liable for the alleged trademark infringement, counterfeiting and unfair
competition. Moreover, the trademarks registrations asserted by Gabet are invalid. Consequently,
an actual controversy exists between the parties with respect to Amazon’s alleged liability for the
claims in counter-defendants’ complaint.
GABET’S 12 FALSE SUNSET DECLARATIONS
12. Gabet purports to own two registrations for Sunset. The earlier Registration
No. 2,024,708 (“’708 registration”) is for “cologne.” Gabet filed the application for this
registration on August 4, 1993. The application’s serial number is 74802837 (’837 application).
The USPTO issued the ’708 on registration on December 17, 1996.
13. The second Sunset registration, Registration No. 2,547,492 (“’492 registration”) is
for “body powders, bath gels, soaps for skin, face, body, and bath, and body lotions.” Gabet filed
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the application for this registration on December 23, 1996, just after the ’708 registration issued.
The application’s serial number is 75217811 (’811 application). The USPTO issued the ’472
registration on March 12, 2002.
14. This table summarizes the asserted Sunset registrations:
App. Filing App. Serial

Reg. Date Reg. No. Goods
Date No.
8/4/93 74802837 12/17/96 2,024,708 “cologne”
“body powders, bath gels, soaps for
12/23/96
75217811 3/12/02 2,547,492 skin, face, body, and bath, and body
lotions”
15. Gabet submitted at least 12 false declarations related to these applications and
registrations.
16. The ’837 application included Gabet’s purported declaration of bona fide intent to
use Sunset on: cologne, perfume, body powder, bath gel (soap), body lotion. Despite Amazon’s
requests, counter-defendants have produced no evidence to corroborate this bona fide intent. For
the next eight years, she continued to file similar declarations of supposed bona fide intent in order
to keep the application and its follow-on ’811 application alive. These declarations were
knowingly false and the USPTO relied on them.
17. In reliance on Gabet’s declaration, on March 28, 1995, the USPTO issued a Notice
of Allowance for the ’837 application. Gabet then had six months to file a Statement of Use of
Sunset on the listed goods, or to file a declaration of bona fide intent to use the trademark as part
of a Request for an Extension of Time to File a Statement of Use.
18. On September 29, 1995, the USPTO determined the ’837 application had been
abandoned because the USPTO had not received a statement of use from Gabet or a request for an
extension of time.
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19. On February 5, 1996, Gabet filed a petition to revive the ’837 application,
representing that she had mailed a (partial) statement of use but it had gotten lost in the mail. The
petition included a declaration, signed by Gabet on February 3, 1996, under the penalty of perjury,
that she was now using Sunset as a trademark just for cologne. The declaration also stated that she
had not yet used the mark for perfume, body powders, bath gel (soap), and body lotion, but that
she had a bona fide intention to do so. The petition also included a request to divide the application,
so that the USPTO could issue a registration for just cologne, allowing her more time to file
statements of use for the other goods.
20. On December 17, 1996, the USPTO issued the ’708 Registration for Sunset, listing
only cologne.
21. On December 23, 1996, Gabet filed the ’811 application to register Sunset as a
trademark for “body powders, bath gels, soaps and body lotions,” but not perfume.
False December 1, 1996 Intent-to-Use Declaration (’492 Reg.)
22. The ’811 application included Gabet’s declaration, dated December 1, 1996, under
the penalty of perjury, stating that she had a bona fide intention to use Sunset on or in connection
with “[b]ody powders, bath gels, soaps and body lotions.”
23. This declaration was knowingly false. Gabet has no documents or things that
corroborate the declaration.
24. More than four months earlier in this litigation, on May 26, 2023, Amazon served
Gabet Request for Production No. 52, which seeks documents sufficient to show that counter-
defendants had a bona fide intention on December 23, 1996 (the day the declaration was submitted
to the USPTO) to use Sunset with body powders, bath gels, soap for skin, soap for face, soap for
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body, soap for bath, and body lotion. Counter-defendants have not produced any corroborating
documents or things in response.
25. The USPTO relied on Gabet’s false declaration to extend the deadline for a
declaration of actual use.
Gabet Clarifies Application (’492 Reg.) and USPTO Issues Notice of Allowance
26. On about August 8, 1997, during its examination of the ’811 application, the
USPTO issued an action stating that “soaps” in the application’s identification of goods is
indefinite because it fails to identify the specific types of goods for which registration is sought.
The USPTO informed Gabet that she may amend the “soaps” to “soaps for skin, face, body, and
bath,” “if accurate.”
27. On February 6, 1998, Gabet amended the identification of goods in the ’811
application to, “Body powders, bath gels, soaps for skin, face, body, and bath, and body lotions.”
28. On April 20, 1999, the USPTO issued a Notice of Allowance for the ’811
application for Sunset for the listed goods. The Notice of Allowance included the instruction that
Gabet should submit within six months either a Statement of Use or a Request for an Extension of
Time to File a Statement of Use.
False October 15, 1999 Intent-to-Use Declaration (’492 Reg.)
29. On about October 18, 1999, Gabet submitted a Request for Extension of Time to
File a Statement of Use. The request included Gabet’s declaration, dated October 15, 1999, and
signed under the penalty of perjury, that she had a continued bona fide intention to use Sunset in
connection with body powders, bath gels, soaps for skin, face, body, and bath, and body lotions.
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31. On May 26, 2023, Amazon served on Gabet Request for Production No. 51 seeking
documents sufficient to show that counter-defendants had a bona fide intention on October 15,
1999, to use Sunset in commerce on or in connection with body powders, bath gels, soap for skin,
soap for face, soap for body, soap for bath, and body lotion. Counter-defendants have not produced
any documents or things during this litigation that corroborate Gabet’s alleged bona fide intent on
October 15, 1999, to use Sunset with body powders, bath gels, soap for skin, soap for face, soap
for body, soap for bath, and body lotion.
32. This declaration was material to the USPTO’s determination to issue the ’492
registration. The USPTO determined this declaration provided a basis to prevent the ’811
application from becoming abandoned.
False March 27, 2000 Intent-to-Use Declaration (’492 Reg.)
33. On about March 29, 2000, Gabet submitted a second Request for Extension of Time
to File a Statement of Use. The request included Gabet’s declaration, dated March 27, 2000, and
signed under the penalty of perjury, stating that she had a continued bona fide intention to use
Sunset in connection with body powders, bath gels, soaps for skin, face, body, and bath, and body
lotions.
35. On May 26, 2023, Amazon served on Gabet Request for Production No. 50, which
seeks documents sufficient to show that counter-defendants had a bona fide Intention on March 27,
2000, to use Sunset with body powders, bath gels, soap for skin, soap for face, soap for body, soap
for bath, and body lotion. Counter-defendants have not produced any documents or things during
-25-
this litigation that corroborate the alleged bona fide intent on March 27, 2000, to use Sunset with
body powders, bath gels, soap for skin, soap for face, soap for body, soap for bath, and body lotion.
False October 17, 2000, Intent-to-Use Declaration (’492 Reg.)
37. On about October 18, 2000, Gabet submitted a third Request for Extension of Time
to File a Statement of Use. The request included Gabet’s declaration, dated October 17, 2000, and
lotions.
39. On May 26, 2023, Amazon served Request for Production No. 49, seeking
documents sufficient to show that counter-defendants had a bona fide intention on October 17,
2000, to use Sunset with body powders, bath gels, soap for skin, soap for face, soap for body, soap
for bath, and body lotion. Counter-defendants have not produced any documents or things during
this litigation that corroborate Gabet’s alleged bona fide intent on October 17, 2000 to use Sunset
with body powders, bath gels, soap for skin, soap for face, soap for body, soap for bath, and body
lotion.
-26-
False April 17, 2001 Intent-to-Use Declaration (’492 Reg.)
41. On about April 19, 2001, Gabet submitted a fourth Request for Extension of Time
to File a Statement of Use. The request included Gabet’s declaration, dated April 17, 2001, and
lotions.
43. On May 26, 2023, Amazon served Request for Production No. 48, which seeks
documents sufficient to show that counter-defendants had a bona fide intention on April 17, 2001,
to use Sunset with body powders, bath gels, soap for skin, soap for face, soap for body, soap for
bath, and body lotion. Counter-defendants have not produced any documents or things during this
litigation that corroborate the alleged bona fide intent, on April 17, 2001, to use the Sunset with
body powders, bath gels, soap for skin, soap for face, soap for body, soap for bath, and body lotion.
False October 18, 2001 Actual-Use Declaration (’492 Reg.)
45. On about October 18, 2001, Gabet requested registration of Sunset. She included a
declaration, dated October 18, 2001, and signed under penalty of perjury on behalf of Gabet,
stating Gabet is using Sunset in commerce on or in connection with body powders, bath gels, soaps
for skin, face, body, and bath, and body lotions and that the mark was first used on June 15, 2001.
-27-
46. The October 18, 2001, declaration of use was knowingly false. As set forth above,
Gabet had first submitted a declaration of bona fide intent to use Sunset on body powders, bath gel
(soap), and body lotions almost eight years earlier, back in 1993. Since then, she had filed at least
five similar declarations of bona fide intent to use, in 1996, 1999, 2000 (twice), and in early 2001.
Gabet has no documents or things that corroborate that she intended to use Sunset on at least body
powders and soap from 1993 to 2001, or that she was actually using Sunset on body powders or
soap.
documents sufficient to show that in 2001, counter-defendants used Sunset in commerce on or in
connection with body powders, bath gels, soap for skin, soap for face, soap for body, soap for bath,
and body lotion. Counter-defendants have not produced any documents or things during this
litigation that show that in 2001 Gabet or Annie Oakley used Sunset on or in connection with at
least the goods body powders and soaps for skin, face, body, and bath. Counter-defendants have
not produced any financial records for 2001 showing sales of any products that use Sunset in
commerce on or in connection with at least body powders and soap for skin, face, body, and bath.
Counter-defendants have not produced any catalogs, order forms, advertisements, or website
records for 2001 showing that Gabet or Annie Oakley offered for sale any products that use Sunset
in commerce on or in connection with at least body powders and soap for skin, face, body, and
bath.
registration because the USPTO relied on the declaration to issue the registration.
-28-
False April 16, 2007 Actual-Use Declaration (’492 Reg.)
49. On about April 16, 2007, Gabet submitted a combined declaration of use and
incontestability to USPTO. This declaration was dated April 16, 2007, and signed under the
penalty of perjury, on behalf of Gabet, stating she is using or is using through a related company
Sunset with body powders, bath gels, soaps for skin, face, body, and bath, and body lotions. The
declaration also stated that Sunset, from March 12, 2002, to March 12, 2007 (five consecutive
years), has been in continuous use with body powders, bath gels, soaps for skin, face, body, and
bath, and body lotions. The declaration was accompanied by a specimen of packaging showing the
use of Sunset on eau de toilette natural spray.
50. This declaration was knowingly false. The specimen that accompanied the
declaration does not corroborate it because it depicts packaging for eau de toilette natural spray,
which is not listed on the registration.
documents sufficient to show that from 2002 to 2007, counter-defendants used Sunset in
commerce on or in connection with body powders, bath gels, soap for skin, soap for face, soap for
body, soap for bath, and body lotion. Counter-defendants have not produced any documents in this
litigation that show that show Gabet or Annie Oakley used Sunset in commerce on or in connection
with at least body powders and soap for skin, face, body, and bath at any time from 2002 to 2007.
Counter-defendants have not produced any financial records for any year from 2002 to 2007
showing sales of any products that use Sunset with at least body powders and soap for skin, face,
body, and bath. Counter-defendants have not produced any catalogs, order forms, advertisements,
or website records for any year from 2002 to 2007 showing that they offered for sale any products
that use Sunset with at least body powders and soap for skin, face, body, and bath.
-29-
52. This declaration was material to the USPTO’s determination that the ’492
registration was incontestable because it relied on the declaration to provide the ’492 registration
with incontestable status.
False January 10, 2012 Actual-Use Declaration (’492 Reg.)
53. On about January 25, 2012, Gabet submitted a combined declaration of use and
application for renewal of registration. Gabet’s declaration, dated January 10, 2012, was signed
under the penalty of perjury, and stated that Gabet is using or is using through a related company
Sunset with body powders, bath gels, soaps for skin, face, body, and bath, and body lotions.
54. This declaration was knowingly false. Amazon’s May 26, 2023 Request for
Production No. 43 seeks documents sufficient to show that in 2011 or January 2012, counter-
defendants used Sunset in commerce on or in connection with body powders, bath gels, soap for
skin, soap for face, soap for body, soap for bath, and body lotion. Counter-defendants have not
produced any documents in this litigation showing they used at any time in 2011 or January 2012
Sunset with at least body powders and soap for skin, face, body, and bath. Counter-defendants
have not produced any financial records from 2011 or January 2012 showing sales of any products
that use Sunset for body powders, bath gels, soaps for skin, face, body, and bath, or body lotions
products. Counter-defendants have not produced any catalogs, order forms, advertisements, or
website records from 2011 or January 2012 showing that Gabet or Annie Oakley offered for sale
any products that use Sunset with body powders, bath gels, soaps for skin, face, body, and bath,
and body lotions.
55. This declaration was material to the USPTO’s determination to extend the term of
the ’492 registration.
-30-
False December 5, 2021 Actual-Use Declaration (’492 Registration)
56. On about December 5, 2021, Gabet submitted a combined declaration of use and
application for renewal of registration. This submission included a declaration, dated December 5,
2021, and signed under the penalty of perjury, stating Sunset is in use in commerce on or in
connection with body powders, bath gels, soaps for skin, face, body, and bath, and body lotions.
The declaration was accompanied by a specimen of packaging showing the use of Sunset on eau
de toilette natural spray.
corroborate the declaration. The specimen that accompanied the declaration does not corroborate
the declaration. It depicts Sunset on packaging for eau de toilette, not body powders, bath gels,
soaps for skin, face, body, and bath, and body lotions.
connection with each of the following types of goods: body powders, bath gels, soap for skin, soap
for face, soap for body, soap for bath, and body lotion. Counter-defendants have not produced any
documents in this litigation showing that Gabet or Annie Oakley used at any time in 2021 Sunset
with at least body powders and soap for skin, face, body, and bath. Counter-defendants have not
produced any financial records from 2021 showing sales of any products that use Sunset with at
least body powders and soap for skin, face, body, and bath. Counter-defendants have not produced
any catalogs, order forms, advertisements, or website records from 2021 showing that Gabet or
Annie Oakley offered for sale any products that use Sunset with at least body powders and soap
for skin, face, body, and bath.
-31-
False October 24, 2006 Actual-Use Declaration (’708 Registration (for Cologne))
60. On about October 24, 2006, Gabet submitted a combined declaration of use and
application for renewal of registration with respect to the ’708 registration (the first Sunset
registration that issued, covering only cologne). The declaration, dated October 24, 2006, and
signed under the penalty of perjury on behalf of Gabet, stated Gabet is using or is using through a
related company Sunset with cologne. The declaration was accompanied by a specimen of
packaging showing the use of Sunset on eau de toilette natural spray.
62. Cologne and eau de toilette are not the same goods.
connection with cologne. Counter-defendants have not produced any documents in this litigation
showing that Gabet or Annie Oakley used Sunset in 2006 with cologne. Counter-defendants have
not produced any financial records from 2006 showing sales of any products that use Sunset with
cologne. Counter-defendants have not produced any catalogs, order forms, advertisements, or
website records from 2006 showing that Gabet or Annie Oakley offered for sale any products that
use Sunset with cologne.
-32-
False May 5, 2016 Actual-Use Declaration (’708 Registration)
65. On about May 5, 2016, Gabet submitted a combined declaration of use and
application for renewal of registration. This submission included a declaration, dated May 5, 2016,
and signed under the penalty of perjury on behalf of Gabet, stating Sunset is in use in commerce
on or in connection with cologne. The declaration was accompanied by a specimen of packaging
showing the use of Sunset on eau de toilette natural spray.
corroborate the declaration. The specimen that accompanied the declaration does not corroborate
the declaration because it depicts the use of Sunset on packaging for eau de toilette natural spray,
which is not cologne.
connection with cologne. Counter-defendants have not produced any documents in this litigation
showing that Gabet or Annie Oakley used at any time in 2016 Sunset in commerce on or in
connection with cologne. Counter-defendants have not produced any financial records from 2016
showing sales of any products that used Sunset in commerce on or in connection with cologne.
Counter-defendants have not produced any catalogs, order forms, advertisements, or website
records from 2016 showing that Gabet or Annie Oakley offered for sale any products that used
Sunset in commerce on or in connection with cologne.
GABET’S FOUR FALSE INDIAN MUSK DECLARATIONS
69. Gabet purports to own trademark registration 1,836,520 for the trademark Indian
Musk for the goods cologne, perfume, and body powder (’520 registration). The application that
-33-
resulted in the ’520 registration has an August 4, 1993, filing date. The application has the serial
number 74420379 (’379 application). The ’520 registration issued on May 17, 1994.
70. Gabet submitted at least four false declarations to the USPTO related the ’379
application and the ’520 registration.
False June 7, 1993 Intent-to-Use Declaration
71. On about June 21, 1993, Gabet requested registration of Indian Musk and submitted
a statement of use. The request included a declaration, dated June 7, 1993, and signed under the
penalty of perjury, stating Gabet is using Indian Musk in commerce on or in connection with
cologne, perfume, and body powder and that the mark was first used in November 1985.
corroborate the full scope of this declaration. The specimen that accompanied the declaration
corroborates only part of the declaration because it depicts the use of Indian Musk on packaging
for only spray cologne.
registration because the USPTO relied on the declaration to issue the registration.
False October 1, 1999 Actual-Use Declaration
incontestability. This submission included Gabet’s declaration, dated October 1, 1999 and signed
under the penalty of perjury, stating Gabet is using Indian Musk in commerce on or in connection
with cologne, perfume and body powder. The declaration also stated that Indian Musk, from
May 17, 1994 to October 1, 1999, has been in continuous use in commerce on or in connection
with cologne, perfume, and body powder. The declaration was accompanied by a specimen of
packaging showing the use of Indian Musk on cologne.
-34-
corroborate that she used Indian Musk on at least body powder or perfume during this time period.
documents sufficient to show that in each year from 1994 to 1999, counter-defendants used Indian
Musk in commerce on or in connection with each of the following types of goods: cologne,
perfume, and body powder. Counter-defendants have not produced any documents in this litigation
that show that in each year from 1994 to 1999 Gabet or Annie Oakley used Indian Musk with at
least perfume and body powder. Counter-defendants have not produced any financial records for
each year from 1994 to 1999 showing sales of any products that use Indian Musk in commerce on
or in connection with at least perfume and body powder. Counter-defendants have not produced
any catalogs, order forms, advertisements, or website records for each year from 1994 to 1999
showing that Gabet or Annie Oakley offered for sale any products that use Indian Musk in
commerce on or in connection with at least perfume and body powder.
False March 9, 2004 Actual-Use Declaration
78. On about March 9, 2004, Gabet submitted a combined declaration of use and
application for renewal of registration. This submission included a declaration dated March 9,
2004, and signed under the penalty of perjury on behalf of Gabet, stating Gabet is using or is using
through a related company Indian Musk in commerce on or in connection with cologne, perfume,
and body powder.
-35-
documents sufficient to show that, in 2004, counter-defendants used Indian Musk in commerce on
or in connection with each of the following types of goods: cologne, perfume, and body powder.
Counter-defendants have not produced any documents in this litigation showing that Gabet or
Annie Oakley used at any time in 2004 Indian Musk in commerce on or in connection with at least
cologne and body powder. Counter-defendants have not produced any financial records for 2004
showing sales of any products that use Indian Musk in commerce on or in connection with at least
cologne and body powder. Counter-defendants have not produced any catalogs, order forms,
advertisements, or website records for 2004 showing that Gabet or Annie Oakley offered for sale
any products that use Indian Musk in commerce on or in connection with at least cologne and body
powder.
False June 24, 2013 Actual-Use Declaration
82. On about June 24, 2013, Gabet submitted a combined declaration of use and
application for renewal of registration. This submission included a declaration dated June 24, 2013,
and signed under the penalty of perjury on behalf of Gabet, stating Gabet is using or is using
through a related company Indian Musk in commerce on or in connection with cologne, perfume,
and body powder. The declaration was accompanied by a specimen with Indian Musk eau de
toilette natural spray packaging.
-36-
83. This declaration was knowingly false. Gabet has no corroborating documents or
things. The specimen does not corroborate because it depicts the use of Indian Musk on packaging
for eau de toilette natural spray, which is not cologne or body powder.
documents sufficient to show that in 2013, counter-defendants used Indian Musk in commerce on
or in connection with each of the following types of goods: cologne, perfume, and body powder.
Counter-defendants have not produced any documents in this litigation showing that in 2013,
Gabet or Annie Oakley used Indian Musk on or in connection with at least cologne or body powder.
Counter-defendants have not produced any financial records for 2013 showing sales of any
products that use Indian Musk in commerce on or in connection with at least cologne and body
powder. Counter-defendants have not produced any catalogs, order forms, advertisements, or
website records for 2013 showing that Gabet or Annie Oakley offered for sale any products that
use Indian Musk in commerce on or in connection with at least cologne and body powder.
GABET’S THREE FALSE MORNING DEW DECLARATIONS
86. Gabet purports to own trademark registration 1,792,108 for the trademark Morning
Dew for the goods perfumes, colognes, and fragrances for personal use (’108 registration). The
date of this registration is September 7, 1993.
87. Gabet did not apply for the ’108 registration from the USPTO. Instead, a different
company, S & J Perfume Company Ltd., applied for and obtained the registration. The registration
itself identifies S & J Perfume Company Ltd. as the registrant. Gabet contends that in 1995, this
company assigned her the registration, but plaintiffs have not produced a written assignment in
this ligation in response to Amazon’s discovery requests.
-37-
88. Gabet submitted at least four false declarations related to the ’108 registration.
False January 24, 1999 Actual-Use Declaration
89. On about February 12, 1999, Gabet submitted a combined declaration of use and
incontestability. This submission included Gabet’s declaration, dated January 24, 1999, and under
the penalty of perjury, stating Gabet is using Morning Dew in commerce on or in connection with
perfumes, colognes, and fragrances for personal use. The declaration also stated that Morning
Dew, from September 7, 1993 to January 24, 1999, has been in continuous use in commerce on or
in connection with perfumes, colognes, and fragrances for personal use. The declaration was
accompanied by two specimens of packaging, both showing the use of Morning Dew on spray
cologne.
corroborates only part of the declaration because it depicts the use of Morning Dew on packaging
for only spray cologne and does not show use with perfumes.
91. Gabet alleges her “years of training and certification in perfumery in Paris and
Milan from the industry’s most renowned perfume industry luminaries.” Gabet alleges she owns
and operates a significant perfume business.
92. Ms. Gabet knows that perfume and cologne are different goods.
documents sufficient to show that in each year from 1993 to January 1999, counter-defendants
used Morning Dew in commerce on or in connection with each of perfumes, colognes, and
fragrances for personal use. Counter-defendants have not produced any documents in this litigation
that show that in each year from 1993 to January 1999 Gabet or Annie Oakley used Morning Dew
-38-
in commerce on or in connection with at least perfumes. Counter-defendants have not produced
any financial records for each year from 1993 to January 1999 showing sales of any products that
use Morning Dew with at least perfumes. Counter-defendants have not produced any catalogs,
order forms, advertisements, or website records for each year from 1993 to January 1999 showing
that Gabet or Annie Oakley offered for sale any products that use Morning Dew in commerce on
or in connection with at least perfumes.
The False December 3, 2012 Actual-Use Declaration
95. On about December 3, 2012, Gabet submitted a combined declaration of use and
application for renewal of registration. This submission included a declaration, dated December 3,
2012, and signed under the penalty of perjury on behalf of Gabet, stating Gabet is using or is using
through a related company Morning Dew in commerce on or in connection with perfumes,
colognes, and fragrances for personal use. The declaration was accompanied by a specimen of
packaging showing the use of Morning Dew on eau de toilette natural spray.
for only eau de toilette natural spray and does not therefore show use in commerce on at least
cologne.
documents sufficient to show that in 2012, counter-defendants used Morning Dew in commerce
-39-
on or in connection with each of the following types of goods: perfumes, colognes, and fragrances
for personal use. Counter-defendants have not produced any documents in this litigation showing
that Gabet or Annie Oakley used at any time in 2012 Morning Dew with at least colognes. Counter-
defendants have not produced any financial records for 2012 showing sales of any products that
use Morning Dew in commerce on or in connection with at least colognes. Counter-defendants
have not produced any catalogs, order forms, advertisements, or website records for 2012 showing
that Gabet or Annie Oakley offered for sale any products that use Morning Dew in commerce on
or in connection with at least colognes.
The False October 15, 2022 Actual-Use Declaration
application for renewal of registration. This submission included a declaration, dated October 15,
2022, and signed under the penalty of perjury on behalf of Gabet, stating Gabet is using Morning
Dew in commerce on or in connection with perfumes, colognes, and fragrances for personal use.
The declaration was accompanied by a specimen of packaging showing the use of Morning Dew
on eau de toilette natural spray.
for only eau de toilette natural spray, not colognes.
101. On May 26, 2023, Amazon served on Gabet Request for Production No. 57, which
seeks documents sufficient to show that in 2022, counter-defendants used Morning Dew in
-40-
commerce on or in connection with each of the following types of goods: perfumes, colognes, and
fragrances for personal use. Counter-defendants have not produced any documents in this litigation
showing that Gabet or Annie Oakley used at any time in 2022 Morning Dew in commerce on or
in connection with at least colognes. Counter-defendants have not produced any financial records
for 2022 showing sales of any products that use Morning Dew in commerce on or in connection
with at least colognes. Counter-defendants have not produced any catalogs, order forms,
advertisements, or website records for 2022 showing that Gabet or Annie Oakley offered for sale
any products that use Morning Dew in commerce on or in connection with at least colognes.
FIRST CLAIM FOR RELIEF
(Cancellation of Registration No. 2,54,492 Under 15 U.S.C. § 1119)
103. Amazon hereby incorporates by reference the allegations in the proceeding
paragraphs 1–102 of its Counterclaims.
104. The USPTO issued the ’492 registration as a result of Gabet’s false representations,
made with knowledge of their falsity and which were material to the USPTO’s decision to issue
the trademark.
105. The USPTO accorded the ’492 registration incontestable status as a result of
Gabet’s false representations, which she made with knowledge of their falsity and which were
material to the USPTO’s decision to issue the trademark.
106. The USPTO permitted Gabet to maintain the ’492 registration as a result of Gabet’s
false representations, which she made with knowledge of their falsity and which were material to
the USPTO’s decision to issue the trademark.
107. The ’492 registration should be canceled under 15 U.S.C. § 1119.
-41-
SECOND CLAIM FOR RELIEF
109. The USPTO renewed the ’708 registration as a result of Gabet’s false
representations, which she made with knowledge of their falsity and which were material to the
USPTO’s decision to issue the trademark.
THIRD CLAIM FOR RELIEF
112. The USPTO issued the ’520 registration as a result of Gabet’s false representations,
which she made with knowledge of their falsity and which were material to the USPTO’s decision
to issue the trademark.
-42-
FOURTH CLAIM FOR RELIEF
FIFTH CLAIM FOR RELIEF
(Declaratory Judgment of No Infringement and No Counterfeiting of a Registered

Trademark Under 15 U.S.C. § 1114)
121. An actual case and controversy now exists between Gabet and Amazon as to
whether Amazon is liable for infringement or counterfeiting the Sunset, Indian Musk, and Morning
Dew trademarks under 15 U.S.C. § 1114.
122. The products accused by Gabet do not infringe the Sunset, Indian Musk, and
Morning Dew trademarks within the meaning of 15 U.S.C. § 1114. They are unlikely to be
confused with any of Gabet’s (or Annie Oakley’s) products, as the channels of trade, consumers,
products, and the marks themselves are not sufficiently related. This is particularly the case given
the crowded field of marks for the relevant goods.
-43-
123. The products accused by Gabet also are not counterfeits of Gabet’s (or Annie
Oakley’s) products using the Sunset, Indian Musk, and Morning Dew trademarks within the
meaning of 15 U.S.C. §§ 1114 and 1116. The trademarks of the accused products are not spurious
marks that are identical with, or substantially indistinguishable, from the registered trademarks.
124. Amazon is not directly liable for infringement or counterfeiting by products that it
does not itself sell. Amazon is not indirectly liable for sales by third parties because, for among
other reasons, it has not knowingly encouraged third parties to sell infringing or counterfeited
products, nor has it had reason to suspect wrongdoing and failed to investigate.
125. To resolve the legal and factual questions raised by Gabet and to afford relief from
the uncertainty which has since precipitated from Gabet’s § 1114 claims, Amazon is entitled to the
issuance of an order declaring that it has no liability for infringement or counterfeiting under 15
U.S.C. § 1114.
SIXTH CLAIM FOR RELIEF
(Declaration of Judgment of No False Designation of Origin and Unfair Competition Under

15 U.S.C. § 1125(a))
127. An actual case and controversy now exists between counter-defendants and
Amazon as to whether Amazon is liable false designation of origin and unfair competition as to
the Sunset, Indian Musk, and Morning Dew trademarks under 15 U.S.C. § 1125(a).
128. The products accused by counter-defendants do not result in a false designation of
origin and/or unfair competition within the meaning of 15 U.S.C. § 1125(a) with respect to the
Sunset, Indian Musk, and Morning Dew trademarks. Consumers of the accused products are
-44-
unlikely to ascribe them as products of counter-defendants’ because there is no likelihood of
confusion with counter-defendants’ Sunset, Indian Musk, and Morning Dew marks.
129. Amazon is not directly liable for false designation of origin and/or unfair
competition under 15 U.S.C. § 1125(a) with respect to products that it does not itself sell. Amazon
is not indirectly liable for sales by third parties because, for among other reasons, it has not
knowingly encouraged third parties to sell infringing or counterfeited products, nor has it had
reason to suspect wrongdoing and failed to investigate.
130. To resolve the legal and factual questions raised by counter-defendants and to
afford relief from the uncertainty which has since precipitated from counter-defendants’ § 1125(a)
claims, Amazon is entitled to issuance of an order declaring that it has no liability for false
designation of origin and/or unfair competition under 15 U.S.C. § 1125(a).
SEVENTH CLAIM FOR RELIEF
(Declaration of Judgment of No Trademark Infringement Under Indiana Common Law)
132. An actual case and controversy now exists between counter-defendants and
Amazon as to whether Amazon is liable for infringement as to the Sunset, Indian Musk, and
Morning Dew trademarks under Indiana common law.
133. The products accused by counter-defendants do not infringe the Sunset, Indian
Musk, and Morning Dew trademarks within the meaning of Indiana common law. They are
unlikely to be confused with any of counter-defendants’ products as the channels of trade,
consumers, products, and the marks themselves are not sufficiently related. This is particularly the
case given the crowded field of marks for the relevant goods.
-45-
134. Amazon is not directly liable for infringement by products that it does not itself
sell. Amazon is not indirectly liable for sales by third parties because, for among other reasons, it
has not knowingly encouraged third parties to sell infringing or counterfeited products, nor has it
had reason to suspect wrongdoing and failed to investigate.
135. To resolve the legal and factual questions raised by counter-defendants and to
afford relief from the uncertainty which has since precipitated from counter-defendants’ common
law claims, Amazon is entitled to issuance of an order declaring that it has no liability for
trademark infringement under Indiana common law.
PRAYER FOR RELIEF
WHEREFORE, Amazon prays for the following relief:
A. A judgment dismissing plaintiffs’ Complaint in its entirety, with prejudice, and
finding that plaintiffs recover nothing thereon;
B. Canceling U.S. Trademark Reg. 2,547,492;
C. Canceling U.S. Trademark Reg. 2,024,708;
D. Canceling U.S. Trademark Reg. 1,836,520;
E. Canceling U.S. Trademark Reg. 1,792,108;
E. A judgment declaring that Amazon is not liable for infringing or counterfeiting the
asserted trademarks in any way;
F. A judgment that Amazon is not liable for engaging unfair competition or false
designation of origin or description;
G. A judgment awarding Amazon its costs (including expert fees), disbursements, and
reasonable attorneys’ fees in this action, together with interest, including prejudgment interest,
thereon; and
-46-
F. Such further relief to Amazon as is just and proper.
DEMAND FOR JURY TRIAL
In accordance with Fed. R. Civ. P. 38(b), Amazon hereby demands a jury trial on all issues
so triable.
October 4, 2023 Respectfully submitted,
s/ Klaus H. Hamm
Robert T. Cruzen (Admitted pro hac vice)
Klaus H. Hamm (Admitted pro hac vice )
Caroline L. Desmond (Admitted pro hac vice)
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, OR 97204
Telephone: (503) 595-5300
Fax: (503) 595-5301
rob.cruzen@klarquist.com
klaus.hamm@klarquist.com
caroline.desmond@klarquist.com
Counsel for Defendant

AMAZON.COM, INC.
-47-

Amazon Answer To Amended Complaint

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Case 1:22-cv-02246-JPH-MKK Document 151 Filed 10/04/23 Page 1 of 47 PageID #: 1465

IN THE UNITED STATES DISTRICT COURT

ANSWER AND COUNTERCLAIMS OF AMAZON.COM, INC

NATURE OF ACTION, JURISDICTION AND VENUE

to the other defendants.

allegation “similar URLs for foreign countries.”

5. Amazon lacks knowledge or information sufficient to form a belief as to the truth

of the allegations in Paragraph 5 of the Complaint.

9. Amazon denies that it acquires infringing products, that it has co-conspirators, or

of the allegations in Paragraph 10 of the Complaint.

of the allegations in Paragraph 11 of the Complaint.

not asserting Sagebrush).

of the remaining allegations in Paragraph 14 of the Complaint.

has been used.”

infringe any trademarks asserted by plaintiffs in this action or prior actions.

23. Amazon denies that it directly infringes, contributorily infringes, or induces

that they are not asserting Sagebrush in this action.

asserting Sagebrush in this action.

remaining allegations in paragraph 26.

by multiple courts. Amazon admits it unsuccessfully opposed the issuance of a preliminary

action found that Amazon improperly destroyed accused products.

of the allegations of Paragraph 30.

that they are not asserting Sagebrush in this action.

the allegations to the extent they pertain to any other defendants.

in Paragraph 43 of the Complaint.

Paragraph 44 of the Complaint.

allegations in Paragraph 45 of the Complaint.

allegations in Paragraph 46 of the Complaint.

Amazon, they must do so through the Amazon platform.”

paragraph 48 of the Complaint.

remaining allegations in Paragraph 49 of the Complaint.

Amazon denies the remaining allegations in Paragraph 50 of the Complaint.

through 55 of the Complaint.

through 64 of the Complaint.

Amazon that they are not asserting Sagebrush in this action.

Amazon that they are not asserting Sagebrush in this action.

Amazon that they are not asserting Sagebrush in this action.

through 68 of the Complaint.

Amazon that they are not asserting Sagebrush in this action.

1 through 71 of the Complaint.

amend or augment these defenses based on further investigation and discovery.

(Non-Liability for Third-Party Actions)

and sell products using Amazon’s online marketplace.

(No Trademark Protection/Invalidity)

example, as alleged in Amazon’s Counterclaims, infra, the registrations were obtained

equitable doctrines of laches.

(Failure to State Sufficient Facts to Constitute Claims)

(Failure to Mitigate Damages)

(Injunctive Relief Unavailable)

is not immediate or irreparable, and plaintiffs have an adequate remedy at law.

(Estoppel and Waiver)

89. Plaintiffs lack standing to bring their claims in whole or in part.

(“Gabet”) (collectively “counter-defendants”), hereby alleges as follows:

2. Gabet fraudulently obtained and extended trademark coverage by knowingly

registrations when submitting declarations to renew.

4. Plaintiffs’ Complaint includes trademark claims against Amazon based on

fraudulently obtained registrations. It also brings counterclaims seeking declarations of non-

infringement, including against non-registration–based trademark rights asserted by both counter-

Ave. N, Seattle, WA 98109-5210.

6. On information and belief, and based on representations made in the Complaint,

Gabet resides in Ligonier, Indiana, and she owns Annie Oakley.

at 300 Johnson St., Ligonier, Indiana 46767.