., Plaintiff, v. DR. FRESH, LLC, Defendant. ) ) ) ) ) ) ) ) )

Case No. 14-cv-1097

Jury Trial Demanded

COMPLAINT Now comes Plaintiff Sunstar Americas, Inc. (“Sunstar”) and for its Complaint against Defendant, Dr. Fresh, LLC (“Dr. Fresh”), states as follows: Factual Background 1. Sunstar is a corporation organized under the laws of the State of Delaware and

has its principal place of business at 4635 West Foster Avenue, Chicago, Illinois 60630. Sunstar sells oral health care products to oral health care professionals and consumers. Among Sunstar’s more successful products are its GUM brand illuminated toothbrushes marketed for children. These toothbrushes include a suction cup at the end opposite the bristles. When a child pushes the suction cup end of the toothbrush against a surface, a light within the toothbrush illuminates for a prescribed time period, indicating to the child how long to brush. 2. Upon information and belief, Dr. Fresh is a limited liability corporation

organized under the laws of the State of Delaware and has its principal place of business at 6645 Caballero Boulevard, Buena Park, California 90620.


U.S. Patent No. 8,079,109 (“the ‘109 Patent”) is entitled “Illuminated

toothbrush” and was issued by the United States Patent and Trademark Office on December 20, 2011. A true and correct copy of the ‘109 Patent is attached as Exhibit A to this Complaint. 4. illumination. 5. Sunstar is the assignee and rightful owner of the ‘109 Patent. A copy of the The ‘109 Patent is directed to an illuminated toothbrush that has timed

assignment from the named inventors, Chad Misner and Dennis Eatherton, to Sunstar was recorded in the United States Patent and Trademark Office on October 8, 2008, at reel 021646 frame 0181. 6. Dr. Fresh sells and offers for sale in the United States and in this judicial

district illuminated toothbrushes having a suction cup at one end under the Firefly® trademark. According to Dr. Fresh, “Each Firefly toothbrush lights up and flashes for 60 seconds, the dentist recommended time for kids to brush each row of teeth.” (last visited Jan. 20, 2014). 7. Dr. Fresh markets its Firefly® toothbrushes at

The “Buy Now” link displays a web page that directs customers to online retailers supplied by Dr. Fresh, such as and, and national retailers, such as Walmart, Target, Walgreens, Toys-R-Us, and CVS pharmacy, that have retail stores throughout the Chicagoland area. See (last visited Jan. 20, 2014). At least two of these retailers, Target and Walgreens, sell Firefly toothbrushes in this judicial district.



By letter dated September 27, 2013, Sunstar notified Dr. Fresh that its Firefly

toothbrushes infringed the ’109 Patent. In a letter dated October 21, 2013, Dr. Fresh denied infringement and asserted that the ’109 Patent is invalid and unenforceable, all without reasonable bases. 9. During the time period between Sunstar’s September 27, 2013, letter and Dr.

Fresh’s October 21, 2013, response, Dr. Fresh sent a letter dated October 7, 2013, to Sunstar accusing Sunstar of infringing U.S. Trademark Registration No. 3,593,027 for the mark “HARD TO REACH PLACES” (“the ‘027 Mark”). A true and correct copy of the trademark registration is attached as Exhibit B to this Complaint. Dr. Fresh demanded that Sunstar “immediately remove the phrase ‘HARD TO REACH AREAS’ from all [of Sunstar’s] toothbrush packaging and from all [of Sunstar’s] advertising materials for these toothbrushes,” and “immediately stop selling all toothbrushes bearing the phrase “HARD TO REACH AREAS.’” Dr. Fresh further demanded “an accounting of all products sold by [Sunstar] bearing the phrase “HARD TO REACH AREAS” as well as an accounting of the number of products bearing this phrase remaining in [Sunstar’s] inventory.” Dr. Fresh demanded a response by October 15, 2013, and warned Sunstar that, if it did not receive a response by that date, Dr. Fresh “will . . . have no choice but to immediately pursue all [its] legal remedies.” 10. On October 25, 2013, Sunstar responded to Dr. Fresh’s October 7 letter,

denying any infringement of the ‘027 Mark and providing evidence that Sunstar had been continuously using the accused phrase since considerably prior to Dr. Fresh’s trademark application filing date of 2005 or alleged later first use date. 11. Dr. Fresh responded by letter of November 11, 2013, maintaining the

infringement claim. In a reply letter dated December 18, 2013, Sunstar reasserted that Dr.


Fresh’s trademark claim is frivolous, pointed out that Sunstar has sold hundreds of millions of units of its products in packaging bearing the accused phrase, and furnished additional evidence showing Sunstar’s usage of the accused phrase dating back to 1987, long before Dr. Fresh’s registration filing date or alleged first use. Dr. Fresh has failed to respond to Sunstar’s last letter. Jurisdiction and Venue 12. This action arises under the patent laws of the United States 35 U.S.C. § 1 et

seq. and the Declaratory Judgment Act, 28 U.S.C. § 2201(a). This Court has subject matter jurisdiction over this action under 28 U.S.C. § 1331, §1338(a), and § 2201(a). 13. This Court has personal jurisdiction over Dr. Fresh because Dr. Fresh has

transacted business and committed tortious acts within Illinois by the acts complained of herein. 14. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) and § 1400(b)

because Dr. Fresh resides within the Northern District of Illinois as residence is defined in 28 U.S.C. § 1391(c). 15. A justiciable controversy exists between Sunstar and Dr. Fresh as to whether

Sunstar is infringing or has infringed the ‘027 Mark. Claims Count 1 — Patent Infringement 16. Sunstar restates and incorporates by reference the allegations in paragraphs 1

through 15 of this Complaint as if fully set forth herein. 17. Defendant Dr. Fresh, by itself, and through its subsidiaries, affiliates, and/or

agents has been, and is, infringing the ‘109 Patent by offering to sell and selling in the United States and in this district illuminated toothbrushes under the trademark Firefly®. Dr. Fresh’s

infringing products include the illuminated toothbrushes shown in the attached Exhibit C, both of which are on sale in the Chicago, IL area. These products infringe at least claim 1 of the ’109 Patent. Unless enjoined by the Court, Dr. Fresh will continue to infringe the ‘109 Patent. 18. Dr. Fresh’s infringement of the ‘109 Patent has injured Sunstar, and Sunstar is

entitled to recover damages adequate to compensate for such infringement pursuant to 35 U.S.C. § 284. 19. The continued infringement by Dr. Fresh has been willful and will irreparably

harm Sunstar unless the Court enters an injunction prohibiting further infringement of the ‘109 Patent. Count 2 — Declaratory Judgment Action of No Infringement of Trademark 20. Sunstar restates and incorporates by reference the allegations in paragraphs 1

through 15 of this Complaint as if fully set forth herein. 21. Sunstar uses the phrase “Hard-to-Reach-Areas” on its webpage

( and the phrase “For hardto-reach areas” on its toothbrush packaging. A true and correct copy of the webpage at (as visited on Jan. 20, 2014) is attached as Exhibit D to this Complaint. Additional usages appear in Sunstar’s catalogs and on packaging for its products. 22. One example of Sunstar’s use of the phrase “Hard-to-Reach Areas” appears

below, taken from Sunstar’s webpage:



The lack of prominence, the location of the phrase, and the descriptive context

demonstrate that Sunstar is using “Hard-to-Reach Areas” on its webpage in a non-trademark and descriptive sense. 24. On Sunstar’s toothbrush packaging, the phrase “For hard-to-reach areas”

appears in letters smaller and less prominently than Sunstar’s trademarks G·U·M and SUNSTAR, as shown in the figure below. Sunstar’s use of the phrase “For hard-to-reach areas” merely describes a function and purpose of Sunstar’s toothbrushes and, therefore, is a descriptive, not a trademark, use.



Sunstar has been using continuously the accused phrase for many years before

Dr. Fresh’s alleged first use of its trademark, and continuously thereafter, in connection with millions of toothbrushes sold throughout the United States. 26. Sunstar’s phrases differ from Dr. Fresh’s mark, HARD TO REACH PLACES,

among other reasons, by omitting the word PLACES and adding the words “areas,” “For,” and hyphens. Sunstar’s phrase differs from Dr. Fresh’s mark in appearance, sound, meaning and commercial impression and is not likely to cause confusion.



Sunstar’s usages of the phrases “Hard-to-Reach-Areas” and “For hard-to-reach

areas” are non-infringing because they constitute fair use of a descriptive phrase, i.e., the “use of the name, term or device charged to be an infringement is a use, otherwise than as a mark, . . . which is descriptive of and used fairly and in good faith only to describe the goods . . ..” 15 U.S.C. § 1115(b)(4). 28. Dr. Fresh has unreasonably delayed asserting its claim of trademark

infringement since at least 2005. This delay was not excusable. Both before and since that time, Sunstar has made substantial use of the accused phrase and investment in packaging and advertising for products bearing this or like phrases, all without notice of Dr. Fresh’s alleged claim and for the purpose of describing an important function of Sunstar’s products. Any interference with Sunstar’s continued use of this phrase, therefore, would cause Sunstar undue prejudice. Dr. Fresh’s claim is barred by laches, estoppel, or the applicable statute of limitations. Count 3 — Declaratory Judgment Action of Invalidity of Trademark 29. Sunstar restates and incorporates by reference the allegations in paragraphs 1

through 15 and 21 through 28 of this Complaint as if fully set forth herein. 30. Sunstar’s usage of the phrases “Hard-to-Reach Areas,” “For hard-to-reach

areas,” and slight variations of those phrases pre-dates the 2005 filing date of Dr. Fresh’s U.S. Trademark Registration No. 3,593,027, which alleges a subsequent date of first use of January 16, 2008, and Sunstar has continued such usage for at least 25 years. 31. On information and belief, others have used, and continue to use, the phrase

“Hard-to-Reach Areas” and slight variations or colorable imitations of that phrase for similar


or related products since prior to Dr. Fresh’s trademark application filing date and its date of first use. 32. The phrase “hard to reach places” is used by Dr. Fresh, Sunstar and others to

describe a function of the toothbrush products in connection with which they are used. As such, this phrase is merely descriptive, generic and/or functional within the meaning of 15 U.S.C. 1052(e), and does not identify Dr. Fresh’s goods or distinguish them from the goods of others. 33. For the foregoing reasons, Dr. Fresh’s alleged trademark HARD TO REACH

PLACES and U.S. Trademark Registration No. 3,593,027 therefore are invalid. Prayer for Relief WHEREFORE, Sunstar prays for judgment and relief as follows: a. Judgment that the ‘109 Patent is infringed by Defendant Dr. Fresh; b. Judgment that Dr. Fresh’s acts of patent infringement are willful; c. A permanent injunction enjoining Dr. Fresh, its officers, agents, servants, employees, subsidiaries and affiliated companies, and those persons acting in active concert or participation therewith, from engaging in the aforesaid unlawful acts of patent infringement; d. An award of damages arising out of Dr. Fresh’s acts of patent infringement, together with pre-judgment and post-judgment interest; e. A finding that this an exceptional case under 35 U.S.C. § 285; f. Judgment that the damages so adjudged against Dr. Fresh be trebled pursuant to 35 U.S.C. § 284; g. A declaration that U.S. Trademark Registration No. 3,593,027 and the mark HARD TO REACH PLACES are invalid and cancelling the registration;

h. A declaration that Sunstar has not infringed, and is not infringing, U.S. Trademark Registration No. 3,593,027 or the mark HARD TO REACH PLACES; i. A declaration that Sunstar’s use of the phrases “Hard-to-Reach Areas” and “For hard-to-reach areas,” and any similar phrases, constitute descriptive and fair use; j. A declaration that there is no likelihood of confusion between Dr. Fresh’s mark, HARD TO REACH PLACES, and Sunstar’s use of the phrases “Hard-to-Reach Areas,” “For hard-to-reach areas,” and any similar phrases; k. An award of Sunstar’s reasonable attorneys’ fees, costs and expenses incurred in connection with this action; and l. Such further and additional relief as the Court deems just and proper.

Jury Demand Sunstar demands a jury trial on all issues and claims so triable.

Dated: February 14, 2014

Respectfully submitted,

/s/ Charles A. Laff Charles A. Laff Larry L. Saret Gilberto E. Espinoza Paul Coble MICHAEL BEST & FRIEDRICH LLP Two Prudential Plaza 180 N. Stetson Avenue, Suite 2000 Chicago, Illinois 60601-6710 Telephone: 312.222.0800 Facsimile: 312.222.0818