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MICHAEL A. PAINTER, Bar #4360Q

ISAACMAN, KAUFMAN & PAINTER

painter@,ikplaw.com
CT

10250 Constellation Boulevard, Suite 2900


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Los Angeles, California 90067


(310) 881-6800 - Telephone
(310) 881-6801 -Facsimile
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GEORGE THOROGOOD

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Attorneys
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UNITED STA' ES DISTRICT COURT


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CENTRAL DIS' RICT OF CALIFORNIA

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GEORGE THOROGOOD, an
individual,

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Plaintiff,

COMPLAINT FOR TRADEMARK


INFRINGEMENT AND FALSE
DESIGNATION OF ORIGIN

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v

CASE NO.

s.

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BAD TO THE BONE, LLC, a


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JURY TRIAL DEMANDED

Virginia limited liability company;


and DOES I - X, Inclusive,

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Defendants.

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COME NOW THE

PLAINTIFF, GEORGE THOROGOOD, and for

causes of action against the defendants, complains and alleges as follows:


PAID

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NUV2Qa ,

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u
Cls.u. b6 Patriot Court
COUF I 461
MAP-PLEADING-1761

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JURISDICTION

1.

This is a civil action whkh arises under Sections 32(1) [15 U.S.C.

1114(1)] and 43(a) [15 U.S.C. 1125(a)] of the United States Trademark Act.

Jurisdiction is based upon 15 U.S.C. Section 1121 and 28 U.S.C. Section 1338(a).

TH]E PARTIES

2.

Plaintiff, GEORGE THOROGOOD, is an individual and citizen of the

United States, having his principal pkce of business in Los Angeles,

California (hereinafter referred to as "Thorogood").

3.

Plaintiff is informed and believes and, based on such information and

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belief, alleges that defendant, BAD TO THE BONE, LLC is a Virginia limited

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liability company and has its principal place of business in Charlottesville,

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Virginia and does business throughout the United States in general and in the

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Central District of California in particular (hereinafter referred to as "Defendant").

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Plaintiff is informed and believes and, based on such information and belief,

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alleges that all members of Defendant are citizens of the State of Virginia.

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4.

The true names or capacities, whether individual, corporate, associate,

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representative, or otherwise, of the defendants named herein as DOES I - X,

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inclusive, are unknown to plaintiffwho therefore, pursuant to Local Rule 19-1 of

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this Court, sues said defendants by such fictitious names and plaintiff will amend

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this Complaint to show their true names and capacities when the same have been

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ascertained.

FIRST COUNT FOR TRADEMARK INFRINGEMENT

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5.

Plaintiff hereby repeats aid realleges Paragraphs 1 - 4, inclusive, as

though set forth in full herein again.

6.

In 1983, and long prior to any of the acts of the defendants com

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plained of in this Complaint, Thorogood, by and through his predecessor-in-

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interest, adopted the mark BAD TO THE BONE as a trademark to designate


clothing, namely, T-shirts, tank tops, jackets and hats, said mark being extensively

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MAP-PLEADING-1761

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used, advertised and promoted throug tiout the United States in general and in the

State of California in particular.

7.

Since long prior to any of the acts of Defendant complained of in this

Complaint, Thorogood, by and throughh his predecessor-in-interest, applied for and

registered its BAD TO THE BONE trademark on the Principal Register in the

United States Patent and Trademark

Registration No. 3,684,749 being attached hereto as Exhibit 1. Based upon the

rights accorded registration of the trademark and the trademark's long and contin-

uous use by Thorogood, and his predejcessor-in-interest, to designate clothing,

Office, a copy of Certificate of Trademark

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namely, T-shirts, tank tops, jackets

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to manufacture and sell clothing namely,, T-shirts, tank tops, jackets and hats

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designated by the BAD TO THE

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the sale of clothing, namely, T-shirts, ank tops, jackets and hats through the use of

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the BAD TO THE BONE trademark.

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8.

and

hats, Thorogood owns the exclusive right

BONE

Since long prior to the

acts

trademark and to advertise and promote

of Defendant complained of in this

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Complaint, Thorogood and his predec^ssor-in-interest, extensively marketed, sold,

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advertised and promoted the sale of clbthing, namely, T-shirts, tank tops, jackets

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and hats under the trademark BAD T(]) THE BONE. Thorogood has gained a

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substantial reputation in connection with clothing, namely, T-shirts, tank tops,

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jackets and hats marketed and sold under the BAD TO THE BONE trademark. By

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reason of the marketing and sale of products under the above trademark, the trade

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and public, prior to said acts

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come to recognize the trademark BAE TO THE BONE, when used in connection

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with clothing, namely, T-shirts, tank t<j>ps, jackets and hats as identifying such

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products as being exclusively supplied by, authorized or affiliated with Thorogood.

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9.

of defendants

complained of in this Complaint, have

Long after Thorogood's first use of the BAD TO THE BONE trade-

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mark in commerce, Defendant first cofrimenced use of the trademark BAD TO

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THE BONE to manufacture, identify, distribute, advertise and/or promote the sale
MAP-PLEADING-1761

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of shirts, sweatshirts, hats and other related forms of wearing apparel in the United

States. Defendant has used the trademark

the identified trademark wrongfully appropriates Thorogood's

THE BONE trademark and is confus ingly


in

10.

Defendant's acts

BAD TO THE BONE despite the fact

registered BAD TO

similar thereto.

ing, distributing, advertising, marketof manufacturing,

ing and promoting the sale of shirts, slweatshirts and hats through the use of the

trademark BAD TO THE BONE is

directed to the same segment of the purchasing

8 public to which Thorogood directs hi^ products,


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11.

Defendant's use of the

10 above to distribute, designate,


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trademark BAD TO THE BONE as alleged

adverti se
se and/or

promote the sale of shirts,

sweatshirts and hats is likely to cause confusion or mistake or to deceive the pur-

12 chasers of its products as to the sourc^ of origin of defendants' products and to


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cause defendants' products to be passed off or viewed as those which are provided

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or authorized by Thorogood

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12.

That unless restrained by this Court, Defendant will continue to use


1;o manufacture, identify, distribute, advertise

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the trademark BAD TO THE BONE

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and/or promote the sale of shirts, sweatshirts and hats and, as a result thereof, the

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public generally will be misled and

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defendants, and each of them, are tho se of, or are affiliated with Thorogood, to the

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irreparable damage and injury of the )usiness of Thorogood.

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13.

deceived into believing that the products of

Thorogood is informed quid believes and, based on such information

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and belief, alleges that Defendant adcjpted and has used the trademark BAD TO

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THE BONE to identify shirts

sweatshirts

24 Thorogood's long prior use of the

and hats with actual knowledge of

BAD TO THE BONE trademark and with the

25 intent to trade on the reputation and gj<ood will of that mark,


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14.

This is therefore an exicejptional

case within the meaning of 35 of the

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United States Trademark Act, 15 U.S .C. 1117, entitling Thorogood to recover

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reasonable attorneys' fees.


MAP-PLEADING-1761

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15.

The aforesaid actions of Defendant has irreparably damaged

Thorogood and will, unless restrained , continue to so damage the business of

Thorogood and its good will, for all o|f which there is no adequate remedy at law.

SECOND COUNT FOR FEDERAL UNFAIR COMPETITION

AND FALSE DESIGNATION OF ORIGIN

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Plaintiff hereby repeats and realleges Paragraphs 1 - 4, and 5-14,

inclusive, of the First Count as thoug] set forth in full herein again inclusive, of the

First Count as though set forth in full tierein again.

17.

Defendant's above-alleg$d actions constitute the use in connection

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with goods of false or misleading desdriptions and representations with respect to

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the origin, sponsorship or approval of its products and the publicity therefor by

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suggesting that such goods and the advertising thereof are connected with or

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associated, sponsored or affiliated witi Thorogood, or that the same truly origi-

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nated with Thorogood. Defendant has caused its shirts, sweatshirts and hats, and

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the distributing, designating, advertisiii:g and/or promotion thereof, to enter United

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States commerce. The misappropriation and use of Thorogood's BAD TO THE

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BONE trademark by Defendant as well as Defendant's other actions described

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above constitute false and misleading descriptions of fact and representations of

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fact that are likely to give the public a false impression and to confuse the public as

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to the source of defendants' goods.

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18.

Thorogood is informed and believes and, based on such information

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and belief, alleges that Defendant adopted and has used the trademark BAD TO

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THE BONE to identify shirts, sweatshirts


irts and hats with actual knowledge of

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Thorogood's long prior use ofthe BAlj) TO THE BONE trademark and with the

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intent to trade on the reputation and good will of that mark,

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19.

This is therefore an excerjtional

case within the meaning of35 ofthe

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United States Trademark Act, 15 U.S C. 1117, entitling Thorogood to recover

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reasonable attorneys' fees.


MAP-PLEADING-1761

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20.

The aforesaid actions of Defendant

has irreparably damaged

Thorogood and will, unless restrained!, continue to so damage the business of

Thorogood and its good will, for all o 'which there is no adequate remedy at law.

WHEREFORE, plaintiff seek^ judgment against Defendant as follows:

1.

That Defendant and its o

ficers, agents, servants, employees, attor-

neys, confederates, related companies and all persons acting in concert or partici-

pation with it, be enjoined and restrained during the pendency of this action, and

permanently thereafter:

(a)

from using in any manner as a trademark or trade name the

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mark BAD TO THE BONE, alone or in combination with any other word or words

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or design, in connection with designating, distributing, advertising, promoting

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and/or offering for sale or the sale of sjhirts,

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Thorogood, or not authorized by Thorp good to be sold in connection with said

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mark;

(b)

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sweatshirts and hats not produced by

from passing off, inducing or enabling others to sell or pass off

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hats, T-shirts and/or sweatshirts which are not Thorogood's or not offered under

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the control and supervision of Thorog <|)od and approved by Thorogood, through the

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use of the mark BAD TO THE BONE or formatives thereof;

(c)

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from committing aiy acts calculated to cause purchasers to

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believe that Defendant's shirts,

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proved or connected with or guarantee^ by or offered and sold under the control

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and supervision of Thorogood; and


(d)

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sweatshirts
irts and/or hats are

sponsored by or ap-

from otherwise competing unfairly with Thorogood in any

manner.

2.

ThatDefendant be required to deliver up to Thorogood or destroy any

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and all price lists, labels, signs, prints, packages, wrappers, receptacles, advertising

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matter, promotional and other material in the possession of Defendant, or under its

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control bearing the mark BAD TO THE BONE alone, or in combination with any
MAP-PLEADING-1761

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other word or words or design used in connection with the distributing, designat
ing, advertising, promotion or sale ofhats, T-shirts and/or sweatshirts not produced
by Thorogood or not made under the supervision and control of Thorogood.
3. That Defendant account for and pay over to Thorogood all damages

sustained by Thorogood and all profits realized by Defendant by reason of

Defendant's unlawful acts and that the amount of damages for infringement of

Thorogood's trademark be increased by a sum not exceeding three times the


amount thereof as provided by Section 35 ofthe United States Trademark Act, 15

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U.S.C. 1117.

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4.

That Thorogood be awarded exemplary damages in the amount of

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$100,000.

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5.
That Thorogood be awarded its costs ofsuit, including reasonable
attorneys' fees and have such other and further relief as to the Court may deem

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equitable, including but not limited to, any relief set forth under Section 34-39 of

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the United States Trademark Act.

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PLAINTIFF DEMANDS A JURY TRIAL OF THIS ACTION.

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Respectfully submitted,

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ISAACMAN, KAUFMAN & PAINTER

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Michael A. Painter

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Attorneys for Plaintiff


GEORGE THOROGOOD

Dated: S ' />* AW '"-/

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MAP-PLEADING-1761

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EXHIBIT 1

^s

iyH

^tttteU states; of 3W
*W^

&mteb fttateJ Jatent antr tftaieitiatft Bite

*</"

BAD TO THE BONE


Reg. No. 3,684,749 destroyers, inc. (California CORPORATION)
RegisteredSep. 22,2009 8484 WILSHIRE BOULEVARD , SUITE 850
BEVERLYHILLS, CA 90211

Int. CI.: 25 for: clothing,namely, T-SHIRTS, TANK TOPS, JACKETS, HATS, IN CLASS 25 (U.S.
CLS.22AND39).

principSSSS FIRST USE --1983; IN

COMMERCE 0-0-1983.

THE MARK CONSISTS OF STANDARD*CHARACTERS WITHOUT CLAIM TO ANY PAR-

TICULAR FONT, STYLE, SIZE OR COLOR.


SER. NO. 76-648,243, FILED 10|-11-2005.

GEORGIA CARTY, EXAMININb ATTORNEY

Director oftheUnited State,I'atent and InKfeuiark Office

UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OFCALIFORNIA


CIVIL COVER!SHEET

I. (a) PLAINTIFFS ( Check box if you are representing yourself Q )

DE FENDANTS

GEORGE THOROGOOD, an individual

BAip TOTHE BONE, LLC; DOES - X,Inclusive

(b) County of Residence of First Listed Plaintiff

LA.

{Check box if you are representing yourself Q )

Co inty of Residence of First Listed Defendant

(EXCEPTINU.S. PLAINTIFF CASES)

(IN <|>.S. PLAINTIFFCASES ONLY)

(c) Attorneys {Firm Name, Address and Telephone Number) If you are

Attxneys {Firm Name, Address and Telephone Number) If you are

representing yourself, provide the same information.

rep esenting yourself, provide the same information.

II. BASIS OF JURISDICTION (Place anXinonebox only.)


| 11.U.S. Government

III. CITIZENSHIP OF
(Place an Xin one

[x] 3.Federal Question (U.S.

Plaintiff

PRINCIPAL PARTIES-For Diversity Cases Only

box for plaintiffand one for defendant)

Citizenof Th}s State

Government Not a Party)

n 1 n 1 lncorPorated or Principal Place

L-1

Citizen of AHother State

| | 2. U.S. Government

KF . PIF

of Businessin this State

LJ * l_l *

2 Incorporated and Principal Place

5 fj 5

of Business in Another State

| 14. Diversity (Indicate Citizenship

Defendant

L-'

Citizen or Susject

ofPartiesinltemlll)

ForeignCouhtry

3 Foreign Nation

D 6 D 6

IV. ORIGIN (Place an Xin one boxonly.)


s

1. Original
Proceeding

,, 2.Removed from

State Court

,, 3.Remanded from

,, 4.Reinstated or

Appellate Court

Reopen* d

c t

j*

5.Transferred from Another

District (Specify)

ii

6. Multi-

nictrirr

U LitigatiQan

V. REQUESTED IN COMPLAINT: JURY DEMAND: [x] Yes

Jo

CLASS ACTION under F.R.Cv.P. 23: Q]Yes lV)No

MpNEY DEMANDED IN COMPLAINT: $ Injunction; Damage

(Check "Yes" only ifdemanded in complaint.)

VI. CAUSE OF ACTION (Cite the U.S. Civil Statute under which you are filing and write a brief statement ofcause. Do notcite jurisdictional statutes unless diversity.)
15 U.S.C. 1125(a)- TrademarkInfringement

VII. NATURE OF SUIT (Place an Xin one box only).


OTHER STATUTES

375 False Claims Act

r-, 400 State

L-' Reapportionment

410 Antitrust

Q 430 Banks and Banking

450 Commerce/ICC
Rates/Etc.

CONTRACT

240 Torts to Land

120 Marine

245 Tort Product

130Miller Act

290 All Other Real

ii 140 Negotiable

Judgment

490 Cable/Sat TV

iI 890 Other Statutory


L-' Actions

151 Medicare Act

DefaultedStudent

Loan (Excl. Vet.)

153 Recovery of

"-I Suits

rn

895 Freedom of Info.

190 Other
Contract
195 Contract

Product Liability

196 Franchise

REAL PROPERTY

899 Admin. Procedures

ii 160 Stockholders'

891 Agricultural Acts

896 Arbitration

Vet. Benefits

893 Environmental
Matters

fj Overpayment of

Act

152 Recovery of

850 Securities/Com-

modities/Exchange

Act/Review ofAppeal of (~J 210 Land

Agency Decision

Condemnation

fj 220 Foreclosure

950 Constitutionality of
State Statutes

FOR OFFICE USE ONLY:

CV-71 (11/13)

230 Rent Lease &

Ejectment

Case Number:

462 r> aturalization


Appl ration

M. INJURY;
315 Airplane

Product Liability

370Cither Fraud
371 T uth in Lending
380Other Personal

ii

Propejrty Damage

385 P.operty Damage


Product Liability

330 Fed. Employers'


Liability

i-] 423 Withdrawal 28


u USC 157

355 Motor Vehicle

Product Liability
360 Other Personal

Injury

CM. RIGHTS

540Mandamus/Other
550Civil Rights

[] 555 Prison Condition

830 Patent
840 Trademark

SOCIAL SECURITY

861 HIA(1395ff)
862Black Lung (923)

863DIWC/DIWW (405(g))
864SSID Title XVI

865 RSI (405(g))

560 Civil Detainee

I I Conditions of
Confinement

FORFEITURE/PENALTY <

422 A jpeal 28
USC 1 58

Liability

535Death Penalty
Other:

BAN CRUPTCY

340 Marine

350 Motor Vehicle

820 Copyrights

fj 463Alien Detainee

320 Assault, Libel &

345 Marine Product

PROPERTY RIGHTS

Habeas Corpus:

Slander

625 Drug Related

LI Seizure ofProperty 21

FEDERAL TAX SUITS

870 Taxes (U.S. Plaintiff or


Defendant)

871 IRS-Third Party 26 USC


7609

USC 881

690Other

LABOR
440I0:her CivilRights
rI 710 Fair Labor Standards
441 V >ting

362 Personal Injury 442 Eriployment


Med Malpratice
365 Personal Injury- n W H >using/
' Accommodations
Product Liability
445 American with

367 Health Care/


Pharmaceutical

Personal Injury
Product Liability

ii 446/Ai nerican with

368 Asbestos

L-1 Disal
Disabi

Personal Injury

Product Liab'

PRISONER PETITIONS

ii 465 0|ther
rI 510Motions to Vacate
' Immijiration Actions
Sentence
TORTS
D 530 General
PERSON VL PROPERTY

D 310 Airplane

Enforcement of

|~~| 480 Consumer Credit

Property

4'

150 Recovery of
rn Overpayments

470 Racketeer Influ

enced &Corrupt Org.

Liability

IMMIGRATION

II Instrument

fj 460 Deportation

REAL PROPERTY CONT,

fj 110Insurance

Disabiities-

LJ Act
fi 720 Labor/Mgmt.

"' Relations

Leave Act

Emplc yment
ities-Other

4481E( lucation

740 Railway LaborAct

ri 751 Family and Medical

790 Other Labor

Litigation
ii 791 Employee Ret. Inc.

L-' Security Ag

CVTV-uimb
CIVIL COVER SHEET

Page! of 3

UNITED STATES DISTRICT COURT, CEIITRAL DISTRICT OF CALIFORNIA


CIVIL COVER SHEET

VIII. VENUE: Your answers to the questions below will determine the division ofthe Court to which this case will most likely be initially assigned. This initial assignment
is subject to change, in accordance with the Court's General Orders, upon review by the Cd,urt of your Complaintor Noticeof Removal.
Question A: Was this case removed from

STATE CASEWAS PENDING IIiTHE COUNTY OF:

state court?

Yes 0

No

If"no,"go to Question B. If"yes," checkthe


box to the right that applies,enter the
corresponding division in response to
QuestionD, below,and skipto SectionIX.

INITIALDIVISIONIN CACD IS:

I | Los Angeles

Western

Ventura, SantaBarbara, or SanLuis Obis 30

Western

Orange

Southern

Riverside or San Bernardino

Question B: Is the United States, or one of

Eastern

Ifthe United States, or one ofits at encies oremployees, is aparty, is it

its agenciesoremployees, a partyto this


action?

A PLAINTIFF?

Yes B

No

If"no,"go to Question C If"yes," checkthe


box to the right that applies,enter the
corresponding divisionin response to
Question D, below,and skip to Section IX.

. Question G Location of

plaintiffs, defendants, and claims?

(Makeonly one selection per row)

INITIAL
DIVISION IN

A DEFENDANT?

Then checkthe boxbelow for thecounty In


which themajority ofDEFENDANTS reside.
Los Angeles

Indicate the location in which a

majority of plaintiffs reside:

Indicate the location in which a

Western

Ventura, Santa Barbara, or San Luis

Obispo

Orange

Orange

Riverside or San Bernardino

Riverside or San Bernardino

Other

Other

Obispo

Orange County

^^

Western
Southern
Eastern

Western

F.

Riverside orSan

Outside the Central

Bernardino Counties

District ofCalifornia

Other

CI

Indicate the location in which a


majority of defendants reside:

majority ofclaims arose:

whichthe majority of PLAINTIFFS reside.

I I Los Angeles

r| Ventura, Santa Barbara, orSan Luis

Los Angeles. Ventura, Santa Barbara,or


.County
SariLuisObispo Counties"

.CACD IS:

Thencheckthe boxbelowfor the county In

,., < i.

C.1. Iseitherofthe following true? Ifso,checkthe one that applies:

Q 2ormore answers in Column C


I | only 1answer in Column Candnoanswers in Column D

C.2. Is

iither of the following true? Ifso,checkthe one that applies:

2 or more answers in Column D

only 1 answer in Column D and no answers in Column C

Yourcase willinitiallybe assigned to the

Yourcase willinitiallybe assigned to the

SOUTHERN DIVISION.

EASTERN DIVISION.

Enter"Southern" in response to Question D, below.

If none applies, answer question C2 totheright.

Enter "Eastern" in response to Question D, below.

^^

If none applies, gotothebox below. A

Your case will initially be; ssigned to the


WESTERN DIVIS ON.

Enter "Western" in response to Question D below.

Question D: Initial Division?

INITIAL DIVISION IN CACD

Enterthe initial division determined by Question A, B, or Cabove:


Western Division

CV-71 (11/13)

CIVIL COVER SrEET

Page 2 of3

UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIA


CIVIL cover:SHEET

IX(a). IDENTICAL CASES: Has this action been previously filed inthiscourt aiddismissed,
i
remanded orclosed?

[x] NO

Q YES

[x] NO

Q YES

Ifyes, list case number(s):

IX(b). RELATED CASES: Have any cases been previously filed in this court thajt are related tothepresent case?
Ifyes, list case number(s):

Civil cases aredeemed related if a previously filed caseandthe presentcase:


(Check all boxes that apply)

vv'

ii .

. .

| | A. Arise fromthe same or closely relatedtransactions, lappenings, or events; or

| | B. Call for determination ofthe same orsubstantially r Hatedor similar questions of law and fact; or
| | C. For other reasons would entail substantial dupliiicatibn of labor if heard by different judges; or
I | D. Involve thesame patent, trademark orcopyright.t, ar)d oneofthefactors identified above ina,b orcalso is present.
X. SIGNATURE OF ATTORNEY

DATE: /y^/C*//

(OR SELF-REPRESENTED LITIGANT):

Notice to Counsel/Parties: The CV-71 (JS-44) Civil Cover Sheet and the information1 contain
...
id herein neither replace norsupplement the filing andservice of pleadings or
otherpapers as required bylaw. This form, approved bythe Judicial Conference ofthe United States in September 1974, is required pursuant to Local Rule3-1 is not filed
butisused bytheClerk ofthe Court forthe purpose ofstatistics, venue andinitiating the;civ I docketsheet.(For moredetailed instructions, see separateinstructions sheet).

Key to Statistical codes relatingto SocialSecurityCases:


Nature of Suit Code
861

Abbreviation
HIA

Substantive Statement of Cau e of Action

All claimsfor health insurance benefits (Mepiicare)under Title18, Part A,of the SocialSecurityAct,as amended. Also,
include claims by hospitals, skillednursing acilities, etc.,forcertification as providers ofservices underthe program.

(42U.S.C.1935FF(b))
862

BL

All claims for"Black Lung" benefits underTitle 4,Part B, ofthe Federal Coal Mine Health andSafety Act of1969. (30 USC

923)
863

DIWC

863

DIWW

864

SSID

865

RSI

Allclaims filed by insured workers for disab lity insurance benefitsunder Title 2 of the Social Security Act, as amended;plus

all claims filed for child's insurance benefits based on disability. (42 U.S.C. 405 (g))

All claims filed for widows or widowers insu


i
raneebenefitsbased on disability under Title

amended. (42 U.S.C. 405 (g))

All claims for supplemental security income payments based upon disability filed under Title 16oftheSocial Security Act, as
amended.

All claims for retirement (old age) and survivors benefits under Title 2oftheSocial Security Act, asamended.
(42 U.S.C. 405(g))

CV-71 (11/13)

2 ofthe Social Security Act, as

CIVIL COVER SHEET

Page 3 of3