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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 1 of 36

UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF NEW YORK

RUBIKS BRAND LIMITED,

Plaintiff,

v. Case No. 17-cv-06559 (PGG)

FLAMBEAU, INC., DUNCAN TOYS JURY DEMANDED


COMPANY, TOYS R US, INC.,

Defendants.

DEFENDANT FLAMBEAU, INC.S ANSWER, AFFIRMATIVE DEFENSES,


AND COUNTERCLAIMS

Defendant, Flambeau, Inc. (Defendant), by its attorneys, Quarles & Brady LLP, herein

responds to the Complaint of Rubiks Brand Limited (Plaintiff). The paragraphs in this

Answer are numbered to correspond with the paragraph numbers in Plaintiffs Complaint. Any

and all allegations in Plaintiffs Complaint that are not specifically admitted here are hereby

denied.

NATURE OF THE ACTION

1. This is an action for: infringement of Plaintiffs registered trademark under 15


U.S.C. 1114; false designation of origin in violation of 15 U.S.C. 1125(a); dilution of
Plaintiffs trademark in violation of 15 U.S.C. 1125(c); injunctive relief and damages under 15
U.S.C. 1114, 1117, 1118, 1119 and 1125; violation of Section 360-1 of the New York
General Business Law; and violation of the common law of the State of New York.

RESPONSE: Defendant admits that Plaintiffs Complaint purports to state claims for

trademark infringement under 15 U.S.C. 1114, false designation of origin under 15 U.S.C.

1125(a), trademark dilution under 15 U.S.C. 1125(c), and violations of Section 360-1 of the

New York General Business Law and New York common law, but denies that the Complaint

states any valid claim for relief. Defendant admits that the Complaint requests injunctive relief

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and damages under 15 U.S.C. 1114, 1117, 1118, 1119 and 1125, but denies that Plaintiff is

entitled to any of its requested relief. Defendant denies any remaining allegations in

paragraph 1.

JURISDICTION AND VENUE

2. This Court has jurisdiction over the subject matter of this action pursuant to 15
U.S.C. 1121, 28 U.S.C. 1331 and 1338, and this Court has supplemental jurisdiction over
the New York State claims pursuant to 28 U.S.C. 1367(a). The New York State law claims
asserted herein are so related to the Lanham Act claims as to form part of the same case or
controversy.

RESPONSE: Defendant admits that, if valid, claims arising under Title 15 of the United

States Code would give rise to the Courts subject matter jurisdiction, but denies that the

Complaint states any valid claim for relief and denies that Plaintiff is entitled to any of its

requested relief. Defendant admits that, if valid, Plaintiffs state law claims, as alleged, would

give rise to the Courts pendant subject matter jurisdiction, but denies that the Complaint states

any valid claim for relief and denies that Plaintiff is entitled to any of its requested relief.

Defendant denies any remaining allegations in paragraph 2.

3. Upon information and belief, this Court has personal jurisdiction over the
Defendants because they regularly conduct business in the State of New York and/or because a
substantial part of the events giving rise to these claims occurred in this judicial district, and they
have minimum contacts with the forum.

RESPONSE: Defendant denies the allegations in paragraph 3.

4. Venue is properly founded in this judicial district pursuant to 28 U.S.C. 1391(b)


and (c) because Defendants are subject to personal jurisdiction within this judicial district and/or
because a substantial part of the events giving rise to these claims occurred in this judicial
district.

RESPONSE: Defendant denies the allegations in paragraph 4.

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PARTIES

5. Rubiks Brand Limited (Rubiks Brand or Plaintiff) is a limited liability


company organized under the laws of the United Kingdom, with its principal place of business at
7 Lambton Place, London, England W11 2SH.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 5, and therefore denies those allegations.

6. Upon information and belief, Defendant Flambeau, Inc. is a corporation organized


under the laws of the State of Wisconsin, having its principal place of business at 801 Lynn
Avenue, Baraboo, Wisconsin 53913.

RESPONSE: Responding to paragraph 6 of the Complaint, Defendant admits that it is a

corporation organized under the laws of the State of Wisconsin, having its principal place of

business at 801 Lynn Avenue, Baraboo, Wisconsin 53913.

7. Upon information and belief, Defendant, Duncan Toys Company is a division of


Flambeau, Inc., having its principal place of business at 15981 Valplast Road, Middlefield, Ohio
44062.

RESPONSE: Defendant admits that Duncan Toys Company is a division of Defendant,

having an address at 15981 Valplast Road, Middlefield, Ohio 44062. Because Duncan Toys

Company is not a separate legal entity, but a division of Defendant, it is not a proper defendant in

this action. Accordingly, the parties filed a stipulation dismissing Duncan Toys Company from

this action on December 14, 2017, which the Court so-ordered that same day. (Dkt. 23).

Defendant denies any remaining allegations in paragraph 7.

8. Upon information and belief, Defendant Toys "R" Us, Inc. is a corporation
organized under the laws of the State of Delaware, having its principal place of business at One
Geoffrey Way, Wayne, New Jersey 07470. Defendant Toys "R" Us, Inc. is a wholly owned
subsidiary of Geoffrey LLC.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 8, and therefore denies those allegations.

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PLAINTIFFS CUBE

9. Plaintiff produces the famous RUBIKS CUBE, a 3-D combination puzzle


invented in 1974 by the Hungarian professor of architecture Ern Rubik. As of June, 2017,
approximately 100 million RUBIKS CUBES have been sold worldwide. RUBIKS CUBE is the
best selling puzzle game of any kind in the world.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 9, and therefore denies those allegations.

10. The RUBIKS CUBE puzzle has a distinctive appearance comprised of a black
cube having nine (9) square-shaped color patches on each of its six (s) faces, with the color
patches on each face being the same when the puzzle is in the start or solved position, and
consisting of the colors red, white, blue, green, yellow and orange (hereinafter referred to as the
RUBIKS Design Mark or the Mark). A photograph of Plaintiffs RUBIKS CUBE puzzle
Mark is set forth below:

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 10 and therefore denies those allegations.

11. The RUBIKS CUBE puzzle was launched in the United States in 1980 and has
been continuously sold throughout the country for the past thirty-seven (37) years. Plaintiff
estimates that more than 40 million RUBIKS CUBE puzzles have been sold in the United
States. As a result of the extensive sales and commercial success of Plaintiffs RUBIKS CUBE
puzzle, its distinctive and iconic appearance has been extremely well-known.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 11 and therefore denies those allegations.

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12. Plaintiff has made substantial expenditures to advertise and promote its RUBIKS
CUBE puzzle through various means, including on the Internet. Attached hereto as Exhibit 1 is
a screen shot of the homepage of Plaintiffs website: https://www.rubiks.com/.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 12 and therefore denies those allegations.

13. The distinctive appearance of the RUBIKS Design Mark immediately imparts to
purchasers and the public that the RUBIKS CUBE puzzles originate from Plaintiff.

RESPONSE: Defendant denies the allegations in paragraph 13.

14. The RUBIKS Design Mark symbolizes the extraordinary goodwill that is
associated with the Plaintiff and is Plaintiffs most valuable asset.

RESPONSE: Defendant denies the allegations in paragraph 14.

15. Plaintiff owns U.S. Trademark and Service Mark Registration Numbers 1,265,094
and 2,285,794 on the Principal Register for the RUBIKS Design Mark through mesne
assignments. These registrations are in full force and effect and are incontestable pursuant to
Section 15 of the Lanham Act, 15 U.S.C. 1065. A copy of these registrations is attached hereto
as Exhibits 2-A and 2-B.

RESPONSE: Defendant admits that what appears to be the online U.S. Patent &

Trademark Office TSDR records (as of August 28, 2017) for U.S. Trademark and Service Mark

Registration Numbers 1,265,094 and 2,285,794 are attached to the Complaint as Exhibits 2-A

and 2-B and that the TSDR records indicate that Plaintiff is the owner of the subject

registrations. Defendant admits that, if properly obtained and due to their age, these registrations

would have achieved incontestable status under 15 U.S.C. 1065. Defendant denies, however,

that the registrations are valid or that they cover protectable trademarks. Defendant lacks

knowledge or information sufficient to form a belief as to the truth of the remaining allegations

in paragraph 15 and therefore denies those allegations.

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16. Plaintiffs U.S. trademark registrations provide constructive notice of Plaintiffs


ownership of the RUBIKS Design Mark and its right to exclusive use of this mark throughout
the United States pursuant of Section 7(c) of the Lanham Act, 15 U.S.C. 1072.

RESPONSE: Defendant denies the allegations in paragraph 16.

DEFENDANT FLAMBEAUS ACTS OF ALLEGED INFRINGEMENT AND UNFAIR


COMPETITION

17. Upon information and belief, Defendant Flambeau through its DUNCAN TOYS
COMPANY division manufactures and sells yoyos, toys and puzzles on its website at
https://www.yo-yo.com/, to online retailers such as Amazon and to national retail store chains for
resale to consumers.

RESPONSE: Defendant denies the allegations in paragraph 17.

18. Upon information and belief, Flambeau manufactures and sells twist puzzle cubes
that are twist puzzles that copy and emulate the distinctive appearance of Plaintiffs puzzles
bearing its RUBIKS Design Mark to national retailers, including CVS. A photograph of a twist
puzzle cube sold by Defendant Flambeau to retailers is set forth below (Defendants Puzzle):

RESPONSE: Defendant admits that it sells a three-dimensional puzzle called the

Quick Cube. Defendant denies the remaining allegations in paragraph 18.

19. Defendant Flambeaus sale of twist cube puzzles that mimics the features and
overall appearance of the RUBIKS Design Mark has been and continues to be without
authorization or consent of Plaintiff.

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RESPONSE: Defendant admits that it has not received authorization or consent from

Plaintiff to sell the Quick Cube, but denies that authorization or consent is required. Defendant

denies the remaining allegations in paragraph 19.

20. In view of the fame and extraordinary success of the RUBIKS CUBE, minor
changes to Defendant Flambeaus product such as changing black to white and slight rounding of
the corners do not negate a likelihood of confusion. Instead, the public is likely to believe that
Defendants' Puzzle is a version of Plaintiffs famous RUBIKS CUBE.

RESPONSE: Defendant denies the allegations in paragraph 20.

21. Defendant Flambeau has had actual notice of Plaintiffs incontestable U.S.
trademark registrations and the fact that Plaintiff possesses the exclusive right to use the
RUBIKs Design Mark throughout the United States. Upon information and belief Flambeau is
aware that the enormous and highly valuable goodwill symbolized by the Mark belongs to
Plaintiff.

RESPONSE: Defendant denies the allegations in paragraph 21.

DEFENDANT TOYS R USS ACT OF ALLEGED INFRINGEMENT AND UNFAIR


COMPETITION

22. Upon information and belief, Defendant Toys "R" Us owns and operates a chain
of retail toy stores in the northeastern region of the United States and an Internet website located
at www.toysrus.com that sells toys, games and other child oriented products to consumers.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 22 and therefore denies those allegations.

23. Upon and information and belief, Defendant Toys "R" Us has in the past
purchased and continues to purchase Defendants Puzzle for retail sale in its stores. A
photograph of the infringing twist puzzle purchased at a Toys "R" Us store is attached as Exhibit
3.

RESPONSE: Defendant admits that Toys R Us, Inc. has purchased and continues to

purchase the Quick Cube. Defendant admits that what appears to be a photograph of its Quick

Cube is attached to the Complaint as Exhibit 3. Defendant denies that its Quick Cube infringes

any of Plaintiffs purported trademark rights. Defendant lacks knowledge or information

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sufficient to form a belief as to the truth of the remaining allegations in paragraph 23 and

therefore denies those allegations.

24. Defendant Toys "R" Uss sale of twist puzzles that are highly similar in
appearance to the RUBIKS Design Mark has been and continues to be without the authorization
or consent of Plaintiff.

RESPONSE: Defendant denies that Defendant Toys "R" Us sells twist puzzles that are

highly similar in appearance to Plaintiffs puzzle cube design. Defendant lacks knowledge or

information sufficient to form a belief as to the truth of the remaining allegations in paragraph 24

and therefore denies those allegations.

25. Defendants sale of twist puzzles bearing a spurious copy of the federally
registered RUBIKS Design Mark is likely to cause confusion, mistake, or deception as to the
source, sponsorship of Defendants Puzzles or affiliation between Defendants and Plaintiff,
causing irreparable harm to Plaintiffs reputation and the goodwill which is symbolized by the
RUBIKS Design Mark.

RESPONSE: Defendant denies the allegations in paragraph 25.

26. As a result of Defendants use of a spurious version of Plaintiffs federally


registered RUBIKS Design Mark, consumers who expect to receive Plaintiffs RUBIKS CUBE
puzzle, for which Plaintiff has developed a national and international reputation, will be
disappointed when using Defendants imitation twist puzzle cube. This will cause irreparable
harm to Plaintiffs reputation and the goodwill which is symbolized by the RUBIKS Design
Mark.

RESPONSE: Defendant denies the allegations in paragraph 26.

27. By virtue of Defendants unauthorized use of the RUBIKS Design Mark,


Plaintiff is unable to exercise quality control over twist puzzle cube sold by Defendants which
contain a spurious copy of Plaintiffs well-known Mark.

RESPONSE: Defendant denies the allegations in paragraph 27.

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FIRST CLAIM FOR RELIEF

TRADEMARK INFRINGEMENT UNDER LANHAM ACT 15 U.S.C. 1114(1)(a)

28. The allegations set forth above in paragraphs 1 through 26 hereof are adopted and
incorporated by reference as if fully set forth herein.

RESPONSE: Responding to paragraph 28, Defendant incorporates by reference its

responses to the allegations set forth in the paragraphs of the Complaint recited above as if fully

set forth herein.

29. Plaintiff is the record owner of U.S. Trademark and Service Mark Registration
Numbers 1,265,094 and 2,285,794, which are valid, subsisting and incontestable.

RESPONSE: Defendant admits that Plaintiff appears as the owner in the online U.S.

Patent & Trademark Office TSDR records (as of August 28, 2017) for U.S. Trademark and

Service Mark Registration Numbers 1,265,094 and 2,285,794. Defendant admits that, if properly

obtained and due to their age, these registrations would have achieved incontestable status.

Defendant denies, however, that the registrations are valid or that they cover protectable

trademarks. Defendant lacks knowledge or information sufficient to form a belief as to the truth

of the remaining allegations in paragraph 29 and therefore denies those allegations.

30. Defendants, without authorization from Plaintiff, have used and are continuing to
use the spurious copy of the RUBIKS Design Mark in connection with their twist puzzle cubes.

RESPONSE: Defendant admits that it has not received authorization or consent from

Plaintiff to sell the Quick Cube, but denies that authorization or consent is required. Defendant

denies the remaining allegations in paragraph 30.

31. Defendants sale of twist puzzles bearing the spurious copy of the RUBIKS
Design Mark is likely to cause confusion, or to cause mistake, or to deceive consumers into
believing that Defendants products are genuine, authorized or approved by Plaintiff.

RESPONSE: Defendant denies the allegations in paragraph 31.

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32. Defendants conduct constitutes trademark infringement in violation of 15 U.S.C.


1114(1)(a).

RESPONSE: Defendant denies the allegations in paragraph 32.

33. Upon information and belief, Defendants misappropriation and infringement of


Plaintiffs Mark was and is willful and intentional.

RESPONSE: Defendant denies the allegations in paragraph 33.

34. Upon informant and belief, by its acts, Defendants have made and will continue to
make substantial profits and gains to which they are not entitled in law or equity.

RESPONSE: Defendant denies the allegations in paragraph 34.

35. Upon information and belief, Defendants intend to continue their infringing acts,
and will continue to infringe Plaintiffs registered RUBIKS Design Mark, unless restrained by
this Court.

RESPONSE: Defendant denies the allegations in paragraph 35.

36. Defendants conduct has caused, and will continue to cause, irreparable injury to
Plaintiff. Plaintiff has no adequate remedy at law.

RESPONSE: Defendant denies the allegations in paragraph 36.

SECOND CLAIM FOR RELIEF

FALSE DESIGNATION OF ORIGIN 15 U.S.C. 1125(a)

37. The allegations set forth above in paragraphs 1 through 35 hereof are adopted and
incorporated by reference as if fully set forth herein.

RESPONSE: Responding to paragraph 37, Defendant incorporates by reference its

responses to the allegations set forth in the paragraphs of the Complaint recited above as if fully

set forth herein.

38. Defendants advertisement, promotion, and use of a spurious copy of Plaintiffs


RUBIKS Design Mark is intended and is likely to confuse, mislead, deceive consumers, the
public, and the trade as to the origin, source, sponsorship, or affiliation of Defendants twist

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puzzle cube, and is likely to cause the public to believe erroneously that such products have been
authorized, sponsored, approved, endorsed, or licensed by Plaintiff, or that Plaintiff is in some
way affiliated with Defendants.

RESPONSE: Defendant denies the allegations in paragraph 38.

39. Defendants acts constitute false designation of origin and false misleading
description and representation of fact, all in violation of 15 U.S.C. 1125(a).

RESPONSE: Defendant denies the allegations in paragraph 39.

40. Upon information and belief, Defendants misappropriation and infringement of


Plaintiffs RUBIKS Design Mark was and is willful and intentional.

RESPONSE: Defendant denies the allegations in paragraph 40.

41. Upon information and belief, by their acts, Defendants have made and will
continue to make substantial profits and gains to which they are not entitled in law or equity.

RESPONSE: Defendant denies the allegations in paragraph 41.

42. Upon information and belief, Defendants intend to continue their infringing acts,
and will continue to infringe Plaintiffs RUBIKS Design Mark, unless restrained by this Court.

RESPONSE: Defendant denies the allegations in paragraph 42.

43. Defendants conduct has caused, and will continue to cause, irreparable injury to
Plaintiff. Plaintiff has no adequate remedy at law.

RESPONSE: Defendant denies the allegations in paragraph 43.

THIRD CLAIM FOR RELIEF

TRADEMARK DILUTION UNDLER LANHAM ACT 15 U.S.C. 1125(c)

44. The allegations set forth above in paragraphs 1 through 43 hereof are adopted and
incorporated by reference as if fully set forth herein.

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RESPONSE: Responding to paragraph 44, Defendant incorporates by reference its

responses to the allegations set forth in the paragraphs of the Complaint recited above as if fully

set forth herein.

45. Plaintiff is the exclusive owner of the RUBIKS Design Mark in the United
States.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

the truth of the allegations in paragraph 45, and therefore denies those allegations.

46. Plaintiffs RUBIKS Design Mark is distinctive and has been used for many years
and has achieved enormous and widespread public recognition.

RESPONSE: Defendant denies the allegations in paragraph 46.

47. Plaintiffs RUBIKS Design Mark is famous within the meaning of 15 U.S.C.
1125(c).

RESPONSE: Defendant denies the allegations in paragraph 47.

48. Defendants advertisement, promotion, distribution, and sale of twist puzzle cubes
under the Plaintiffs RUBIKS Design Mark, without authorization from Plaintiff, is likely to
dilute the distinctive quality of the mark and decrease the capacity of the Mark to identify and
distinguish Plaintiffs products.

RESPONSE: Defendant denies the allegations in paragraph 48.

49. Defendants have intentionally and willfully diluted and continue to dilute the
distinctive quality of Plaintiffs RUBIKS Design Mark in violation of 15 U.S.C. 1125(c).

RESPONSE: Defendant denies the allegations in paragraph 49.

50. Upon information and belief, by their acts, Defendants have made and will
continue to make substantial profits and gains to which they are not entitled in law or equity.

RESPONSE: Defendant denies the allegations in paragraph 50.

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51. Upon information and belief, Defendants intend to and will continue to dilute
Plaintiffs Mark, unless restrained by this Court.

RESPONSE: Defendant denies the allegations in paragraph 51.

52. Defendants conduct has caused, and will continue to cause, irreparable injury to
Plaintiff. Plaintiff has no adequate remedy at law.

RESPONSE: Defendant denies the allegations in paragraph 52.

FOURTH CLAIM FOR RELIEF

UNFAIR BUSINESS PRACTICE UNDER N.Y. GEN. BUS. LAW 360-1

53. The allegations set forth above in paragraphs 1 through 52 hereof are adopted and
incorporated by reference as if fully set forth herein.

RESPONSE: Responding to paragraph 53, Defendant incorporates by reference its

responses to the allegations set forth in the paragraphs of the Complaint recited above as if fully

set forth herein.

54. Plaintiffs RUBIKS Design Mark is distinctive and has acquired secondary
meaning in the marketplace, and is owned by Plaintiff.

RESPONSE: Defendant denies the allegations in paragraph 54.

55. Defendants acts are likely to dilute, have diluted, and, unless enjoined by this
Court, will continue to dilute the distinctive quality of Plaintiffs Mark.

RESPONSE: Defendant denies the allegations in paragraph 55.

56. As a direct and proximate result of Defendants willful and wonton acts and
conduct, Plaintiffs reputation and goodwill have been damaged.

RESPONSE: Defendant denies the allegations in paragraph 56.

57. Defendants acts and conduct have caused irreparable harm to Plaintiff and to
Plaintiffs reputation and goodwill, and will continue to do so unless enjoined by this Court.
Plaintiff has no adequate remedy at law.

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RESPONSE: Defendant denies the allegations in paragraph 57.

FIFTH CLAIM FOR RELIEF

COMMON LAW TRADEMARK INFRINGEMENT

58. The allegations set forth above in paragraphs 1 through 57 hereof are adopted and
incorporated by reference as if fully set forth herein.

RESPONSE: Responding to paragraph 58, Defendant incorporates by reference its

responses to the allegations set forth in the paragraphs of the Complaint recited above as if fully

set forth herein.

59. Defendants activities constitute trademark infringement under the common law
of the State of New York.

RESPONSE: Defendant denies the allegations in paragraph 59.

60. Defendants use of Plaintiffs RUBIKS Design Mark, unless restrained by this
Court, will lead the public to believe that there is a connection or association between
Defendants and Plaintiff, when in fact, there is none.

RESPONSE: Defendant denies the allegations in paragraph 60.

61. Defendants acts and conduct have caused irreparable harm to Plaintiff and to
Plaintiffs reputation and goodwill, and will continue to do so unless enjoined by this Court.
Plaintiff has no adequate remedy at law.

RESPONSE: Defendant denies the allegations in paragraph 61.

AFFIRMATIVE DEFENSES

Without assuming any burden that it would not otherwise bear under applicable law and

rules, and specifically reserving its right to assert additional affirmative defenses as additional

information or materials become available through discovery or otherwise, Defendant hereby

asserts the following affirmative defenses.

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First Affirmative Defense


Lack of Personal Jurisdiction

1. Defendant incorporates by reference its responses to the allegations set forth in

the paragraphs of the Complaint recited above as if fully set forth herein.

2. The Court lacks personal jurisdiction over Defendant in part because Defendant

has no physical presence in the State of New York and does not have sufficient minimum

contacts with the State of New York, and thus fundamental fairness should prevent Defendant

from having to defend itself in the State of New York.

Second Affirmative Defense


Improper Venue

3. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

4. This District is not the proper venue to hear this case in part because the facts of

the case have no relationship to the State of the New York and the Court lacks personal

jurisdiction over Defendant.

Third Affirmative Defense


Failure to State a Claim

5. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

6. Plaintiff has failed to state a claim upon which relief can be granted in part

because all of Plaintiffs claims are premised on the flawed theory that functional features are

entitled to trademark protection, which contravenes trademark law.

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Fourth Affirmative Defense


Invalidity - Utilitarian Functionality

7. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

8. Plaintiffs alleged trademarks are not entitled to trademark protection because

they are utilitarian functional.

9. The features of Plaintiffs alleged trademarks (e.g., a black cube having nine

color patches on each of its six faces) are essential to the use and purpose of Plaintiffs puzzle

cube (i.e., solving the cube).

10. Plaintiffs alleged registered trademarks consist of a black cube having nine

color patches on each of its six faces with the color patches on each face being the same and

consisting of the colors red, white, blue, green, yellow, and orange. (U.S. Registration No.

1,265,094; U.S. Registration No. 2,285,794).

11. Plaintiff describes its puzzle cube on its website as a solid cube that can twist[]

and turn[] but still not break or fall apart. A true and correct copy of a webpage from

Plaintiffs website titled The History of the Rubiks Cube is attached to this Answer as

Exhibit 1.

12. Plaintiff describes the colors of the puzzle cube on its website as the means of

scrambling and solving the puzzle: With colorful stickers on its sides, the Cube [can be]

scrambled and then solved. (Exhibit 1).

13. Plaintiff shows its puzzle cube being scrambled and solved by color on its online

store:

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A true and correct copy of a webpage from Plaintiffs website titled Store - Cubes is attached

to this Answer as Exhibit 2.

14. Plaintiff provides Solving Guides on its website that instruct players to use the

puzzle cubes colors to solve the puzzle. A true and correct copy of a webpage from Plaintiffs

website titled How to solve the 3x3 Rubiks cube? is attached to this Answer as Exhibit 3.

15. Plaintiff instructs: [C]reat[e] a white cross on the white face of the cube and

then solv[e] the white corners. (Exhibit 3).

16. The features of Plaintiffs alleged trademarks (e.g., a black cube having nine

color patches on each of its six faces) also constitute an improvement in the operation of

Rubiks puzzle cube (i.e., solving the cube quickly).

17. Plaintiff promotes its puzzle cube on its website for Speed Cubing, a

competitive activity in which individuals race to solve the puzzle cube. A true and correct copy

of a webpage from Plaintiffs website titled Speed Cubing is attached to this Answer as

Exhibit 4.

18. Plaintiff describes the colors of the puzzle cube on its website as the means of

scrambling and solving the puzzle quickly: We have developed the fastest Rubiks Cube yet!

The traditional stickers have been replaced with plastic; which means no fading (Exhibit 4).

19. Further, the features of Plaintiffs alleged trademarks are the subject of utility

patents.

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20. Prior to Plaintiffs predecessors seeking registration of their trademarks related to

Plaintiffs puzzle cube, Ern Rubik and his assignees sought and obtained patent protection for

his three-dimensional puzzle cube and other like-inventions.

21. Per the European Patent Office, Hungarian Patent No. 170062 (the 062

Hungarian Patent) was filed for on January 30, 1975 and published on March 28, 1977. The

062 Hungarian Patent is attached to this Answer as Exhibit 5 and discloses a three-dimensional

puzzle cube that can twist and turn:

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22. Per the European Patent Office, Belgian Patent No. 887875 (the 875 Belgian

Patent) was filed for on March 10, 1981, published on July 1, 1981, and claims priority to the

062 Hungarian Patent. The 875 Belgian Patent is attached to this Answer as Exhibit 6 and

discloses a three-dimensional puzzle cube that can twist and turn:

23. U.S. Patent No. 4,378,116 (the 116 U.S. Patent) was filed on August 3, 1981

and issued on March 29, 1983. The 116 U.S. Patent is attached to this Answer as Exhibit 7 and

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discloses a spatial logical toy. The 116 U.S. Patent similarly discloses a three-dimensional

puzzle cube with elements in the shape of small cubes that may be colored to assemble them in a

predetermined order:

The toy elements, in the shape of small cubes, may be turned along the spatial
axes of the cube by means of connecting elements arranged in the geometric
center on the large cube. The surfaces of the small cubes forming each surface of
the large cube are colored or carry numbers, figures or any other symbols which
can be assembled into the predetermined logical order or sequence by
simultaneously rotating the nine toy elements forming the surfaces of the large
cube.

24. Accordingly, Plaintiffs puzzle cube design is utilitarian functional and thus is not

entitled to trademark protection.

Fifth Affirmative Defense


Invalidity - Aesthetic Functionality

25. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

26. Plaintiffs alleged trademarks are not entitled to trademark protection because

they are aesthetically functional.

27. Plaintiffs alleged trademark rights unduly confer a significant benefit by

restricting competition in the puzzle cube market because, if enforceable, they cannot practically

be duplicated by the use of alternative designs.

28. For example, a puzzle cube cannot be scrambled or solved without having smaller

internal cubes that can twist and turn, like those covered by Plaintiffs alleged trademarks.

29. Similarly, a puzzle cube cannot be scrambled or solved, or at least not as quickly,

without matching color patches on each side of the cube, like those covered by Plaintiffs alleged

trademarks.

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30. Accordingly, Plaintiffs puzzle cube design has aesthetic functionality and thus is

not entitled to trademark protection.

Sixth Affirmative Defense


Invalidity - Lack of Enforcement / Abandonment

31. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

32. Plaintiffs puzzle cube design is not entitled to protection because Plaintiff has

failed to enforce its trademark rights in the design.

33. A search on Amazon.com for puzzle cube yields numerous puzzle cubes for

sale that consist of a black cube with right-angled smaller internal cubes that can twist and turn

with matching color patches, including:

KickFire Kube Speed Cube INIL 3x3x3order cube puzzle

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 22 of 36

ShengShou 3x3x3 Puzzle Cube Speed Cube 3x3

The Amazon.com pages for these example puzzle cubes are attached to this Answer as Exhibits

8-11.

34. Upon information and belief, Plaintiff has failed to enforce its alleged trademark

rights against the above puzzle cubes and others. Thus, by acts of omission, Plaintiff has caused

its purported puzzle cube design to become the generic designation for the goods on or in

connection with which it is used or otherwise lose its significance as a mark.

35. Accordingly, because Plaintiff has failed to enforce its alleged trademark rights in

its puzzle cube design, Plaintiff has abandoned those rights and thus cannot assert those rights

here.

Seventh Affirmative Defense


Invalidity - Lack of Distinctiveness

36. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

37. Plaintiffs puzzle cube design is not entitled to trademark protection because

whatever distinctiveness the design may once have had has been lost.

38. As set forth above, Plaintiff has allowed dozens of other puzzle cubes to saturate

the puzzle cube market.


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39. Accordingly, consumers do not recognize Plaintiff as the sole source of puzzle

cubes. That is, Plaintiffs purported puzzle cube design has come to refer to puzzle cubes

themselves rather than the source of puzzle cubes; thus losing its distinctive significance as an

identification of source (a/k/a mark).

40. Because the Plaintiff puzzle cube design is not source identifying, it is not

distinctive and thus not entitled to trademark protection.

Eighth Affirmative Defense


Non-Infringement

41. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

42. There is no likelihood of confusion between Defendants Quick Cube and

Plaintiffs alleged puzzle cube design, in part because the puzzle cubes are not similar in

appearance and the parties use their house brands in promoting and selling their respective

goods.

43. Defendants Quick Cube is not confusingly similar in appearance to Plaintiffs

puzzle cube. By non-limiting example, Defendants Quick Cube is a white cube, while

Plaintiffs puzzle cube is black. Defendants Quick Cube has rounded edges for the smaller

internal components and color patches, while Plaintiffs puzzle cube has square edges.

Accordingly, consumers are not likely to confuse the Quick Cube for the Plaintiffs puzzle cube.

44. Moreover, both Plaintiff and Defendant prominently feature their house brands

when promoting and selling their respective puzzle cubes. Plaintiffs puzzle cubes bear the

Rubiks house brand on the toy itself. A true and correct copy of a webpage from Plaintiffs

online Store is attached to this Answer as Exhibit 12.

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45. Similarly, Defendants puzzle cubes are sold in packaging that bears the

Duncan house brand. A true and correct copy of a photograph of Defendants Quick Cube in

its packaging is attached to this Answer as Exhibit 13. Accordingly, consumers are put on notice

that the Quick Cube and Plaintiffs puzzle cube come from different sources.

46. In addition, Plaintiff asserts U.S. Registration No. 2,285,794 (the 794

Registration), which lists licensing of intellectual property for its services. Defendant does

not license intellectual property. Accordingly, assertion of the 794 Registration against

Defendant is frivolous on its face.

47. Because the Quick Cube is not likely to cause consumer confusion with Plaintiffs

alleged puzzle cube design, Defendant does not infringe and has not infringed Plaintiffs

purported trademark rights.

Ninth Affirmative Defense


Laches

48. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

49. Defendant began manufacturing and selling the Quick Cube in March 2016.

50. Upon information and belief, Plaintiff became aware of the Quick Cube soon after

its entrance into the puzzle cube market.

51. Despite having knowledge of the Quick Cube, Plaintiff inexcusably delayed in

bringing this suit.

52. During the period of Plaintiffs delay in bringing suit, Defendant reasonably relied

on Plaintiffs delay by investing substantial resources in marketing and promoting the Quick

Cube. Also during the period of Plaintiffs delay, relevant documents have or may have been

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 25 of 36

discarded, the memories of relevant persons have or may have faded and/or Defendant may no

longer have access to those persons. Therefore, Defendant will be prejudiced if Plaintiff is now

permitted to assert its purported trademark rights.

53. Accordingly, Plaintiffs claims are barred by the doctrine of laches.

Tenth Affirmative Defense


Estoppel

54. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

55. In prosecuting its registered trademarks, Plaintiffs predecessors-in-interest made

representations to the U.S. Patent & Trademark Office (USPTO) regarding the limited scope

of the trademark protection sought, that the Office relied upon in allowing the registrations.

56. Accordingly, Plaintiff is estopped from claiming that Defendant violates

Plaintiffs alleged trademark rights, in part based on Plaintiffs representations to the USPTO.

Eleventh Affirmative Defense


Fraud on the USPTO

57. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

58. Plaintiffs predecessors-in-interest fraudulently obtained the U.S. Registration No.

1,265,094 (the `094 Registration). The full file history of the 094 Registration is attached to

this Answer as Exhibit 14.

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Patent Applications

59. Upon information and belief, Ern Rubik invented various three-dimensional

puzzle cubes in the mid-to-late 1970s. Mr. Rubik and his assigns began applying for patents on

the puzzle cubes shortly thereafter (Rubiks Patents).

60. Mr. Rubik and his assigns filed for a patent on a puzzle cube in Hungary on

January 30, 1975. Hungarian Patent No. 170062 (the 062 Hungarian Patent) published on

March 28, 1977 and disclosed a three-dimensional puzzle cube that can twist and turn.

61. Mr. Rubik and his assigns filed for a patent on a puzzle cube in Belgium on

March 10, 1981. Belgian Patent No. 887875 (the 875 Belgian Patent) published on July 1,

1981 and disclosed a three-dimensional puzzle cube that can twist and turn.

62. Mr. Rubik and his assigns filed for a patent on a puzzle cube in the United States

on August 3, 1981. U.S. Patent No. 4,378,116 (the 116 U.S. Patent) issued on March 29,

1983 and disclosed a three-dimensional puzzle cube that can twist and turn and further that color

may be used on the cube to logically order the toy elements and thus covered the goods in the

puzzle cube design application.

Licensing Agreements

63. Upon information and belief, prior to or during the year 1981, Ideal Toy

Corporation (Ideal) entered into an exclusive licensing agreement with Mr. Rubik and/or his

assigns to market and sell the puzzle cubes claimed in the Rubiks Patents.

64. Upon information and belief, Ideal was aware of the patent applications that gave

rise to the 062 Hungarian Patent, the 875 Belgian Patent, and the 116 U.S. Patent prior to

entering into its exclusive licensing agreement.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 27 of 36

65. Upon information and belief, Ideal was aware of the 062 Hungarian Patent, the

875 Belgian Patent, and the 116 U.S. Patent upon their publication and/or issuance.

Trademark Application

66. Ideal filed U.S. Application No. 73/358,308 (the 308 Application) with the

U.S. Patent & Trademark Office (USPTO) to register a puzzle cube design as a trademark on

April 5, 1982.

67. On July 27, 1982, the trademark examining attorney (Examiner) initially

refused registration because the design sought to be registered appears to be the configuration of

applicants goods and the configuration appears to be primarily functional in nature.

68. On September 3, 1982, Ideal traversed the refusal, claiming the mere fact that the

mark consists of the design of an article does not mean that design cannot function to identify the

source of the article and be protected as a trademark.

69. On September 20, 1982, the USPTO recorded Ideals assignment of the 308

Application to CBS, Inc., (CBS).

70. Upon information and belief, Ideal assigned its licensing agreement with Mr.

Rubik and/or his assigns to CBS.

71. Upon information and belief, CBS was aware of the patent applications that gave

rise to the 062 Hungarian Patent, the 875 Belgian Patent, and the 116 U.S. Patent prior to

receiving assignment of the 308 Application.

72. Upon information and belief, CBS was aware of the 062 Hungarian Patent, the

875 Belgian Patent, and the 116 U.S. Patent upon their publication and/or issuance.

73. In a non-final office action dated January 17, 1983, the Examiner reiterated that

[r]egistration has been refused on the grounds that the design sought to be registered appears to

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 28 of 36

be the configuration of the applicants goods and the configuration appears to be primarily

functional in nature.

74. In the January 17, 1983 non-final office action, the Examiner ordered that

Applicant must set forth the registration numbers of any patents which cover the goods in the

application.

75. CBS responded to the January 17, 1983 non-final office action on May 25, 1983.

76. Rather than providing the Examiner with the relevant patent registration numbers

as requested, CBS cited and quoted from two court decisions that reportedly found the puzzle

cube design non-functional.

77. CBS quoted the following passage from an ITC opinion that mistakenly found

that there were no utility patents disclosing the utilitarian advantage of the puzzle cube design:

We determine that the overall appearance of Ideals Rubiks Cube is


nonfunctional. When the Morton-Norwich criteria are examined, it is clear that
the design of Rubiks Cube is not functional. There are no utility patents
disclosing the utilitarian advantage of the design sought to be registered as a
trademark. In fact, the original Hungarian patent covering Professor Rubiks
invention itself suggests the use of illustrations or numbers rather than colors.
Ideals advertising does not tout the utilitarian advantages of its design. There are
also numerous alternatives available to the design adopted by Ideal including
colored circles, triangles, or a clear plastic-based cube. Finally, there are no
indications that Ideals particular design results from a comparatively simple or
cheap method of manufacturing. We, therefore, conclude that a trademark in the
design of Ideals Rubiks Cube would not impair competition in the United States
by depriving other companies of various alternatives.

78. The above quote refers to the 062 Hungarian Patent, but does not list it by

number. It further does not mention the 875 Belgian Patent or the 116 U.S. Patent at all.

79. CBS told the Examiner in reference to the two disclosed court decisions that

these decisions are determinative as to the issue of non-functionality.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 29 of 36

80. Based on the above representations, the Examiner approved the puzzle cube

design (of the 308 Application) for publication and the USPTO published the mark for

opposition on November 1, 1983.

81. The puzzle cube design (of the 308 Application) was registered as the 094

Registration on January 24, 1984.

Fraudulent Omission

82. CBS made a material omission of fact when it failed to provide the Examiner with

copies of the Rubiks Patents upon request.

83. The Examiner requested any patents which cover the goods in the application

on January 17, 1983.

84. The goods in the 094 Registration that issued from the 308 Application are

listed as three dimensional puzzles.

85. The 062 Hungarian Patent published March 28, 1977 over five years before the

Examiners request.

86. The 062 Hungarian Patent disclosed a three-dimensional puzzle cube and thus

covers the goods in the 094 Registration.

87. The 875 Belgian Patent published July 1, 1981 over a year before the

Examiners request.

88. The 875 Belgian Patent disclosed a three-dimensional puzzle cube and thus

covers the goods in the 094 Registration.

89. The 116 U.S. Patent was allowed October 13, 1982 three months before the

Examiners requests and issued March 29, 1983 three months before CBS responded to the

Examiners request.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 30 of 36

90. The 116 U.S. Patent disclosed a three-dimensional puzzle cube as well as that

color may be used on the cube to logically order the toy elements and thus covers the goods in

the 094 Registration.

91. Accordingly, CBS should have provided the Rubiks Patents to the Examiner

upon request, but did not. This was a material omission of fact.

92. Upon information and belief, CBS knew or should have known about the Rubiks

Patents and their relevance to the trademark application, but chose not to disclose them.

93. Upon information and belief, CBS withheld the Rubiks Patents from the

Examiner because of their relevance to the Examiners ongoing question of functionality.

94. Upon information and belief, the Examiner allowed the 094 Registration to issue

in part due to CBSs omission of fact. Had the examiner seen the Rubiks Patents, she would

have found her concerns about functionality confirmed and would have refused registration.

Current Litigation

95. Despite the fraud perpetrated on the USPTO, Plaintiff now wields the 094

Registration to anticompetitive effect by suing puzzle cube sellers such as Plaintiff.

96. Accordingly, Plaintiffs ownership and enforcement of the 094 has damaged and

will continue to damage Defendant.

97. Plaintiff also asserts U.S. Registration No. 2,285,794 (the 794 Registration).

98. To the extent that the 794 Registration somehow applies to puzzle cubes,

Plaintiffs predecessors-in-interest had an obligation to inform the USPTO about the Rubiks

Patents, but did not and the affirmative defense of fraud on the USPTO would apply to the 794

Registration as well.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 31 of 36

Twelfth Affirmative Defense


Failure to Mitigate Damages

99. Plaintiff had a duty to mitigate its damages, but failed to take any action to do so.

Accordingly, any damages Plaintiff seeks should be barred.

COUNTERCLAIMS

Defendant hereby states the following allegations and counterclaims against Plaintiff and

demands a trial by jury on its non-equitable claims:

Nature of Action, Relief Sought, Jurisdiction, and Venue

1. This is an action for cancellation of Plaintiffs trademark registrations under 15

U.S.C. 1119, false or fraudulent registration under 15 U.S.C. 1120, and damages.

2. This Court has jurisdiction over the subject matter of this action pursuant to 15

U.S.C. 1121, 28 U.S.C. 1331 and 1338.

3. This Court has personal jurisdiction solely over Plaintiff by virtue of Plaintiff

filing its Complaint against Defendants in this Court.

4. Venue is proper in this judicial district for a claim solely against Plaintiff pursuant

to 28 U.S.C. 1391(b) and (c) because Plaintiff is subject to personal jurisdiction within this

judicial district.

Parties

5. Defendant Flambeau, Inc. is a corporation organized under the laws of the State

of Wisconsin, having its principal place of business at 801 Lynn Avenue, Baraboo, Wisconsin

53913.

6. Upon information and belief, Plaintiff Rubiks Brand Limited is a limited liability

company organized under the laws of the United Kingdom, with its principal place of business at

7 Lambton Place, London, England W11 2SH.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 32 of 36

First Counterclaim
Registration Cancellation
Functionality, Abandonment, Lack of Distinctiveness

7. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

8. On August 28, 2017, Plaintiff filed its Complaint against Defendant, alleging, in

part, registered trademark infringement under 15 U.S.C. 1114.

9. Plaintiff asserts that Defendant infringes trademarks registered as U.S.

Registration Nos. 1,265,094 and 2,285,794.

10. The trademarks registered as U.S. Registration Nos. 1,265,094 and 2,285,794 are

invalid because they cover utilitarian and aesthetically functional material, as set forth in

paragraphs 7-30 of Defendants affirmative defenses, which are incorporated by reference as if

fully set forth herein.

11. The trademarks registered as U.S. Registration Nos. 1,265,094 and 2,285,794 are

invalid because Plaintiff failed to enforce them, and the marks are thus abandoned, as set forth in

paragraphs 31-35 of Defendants affirmative defenses, which are incorporated by reference as if

fully set forth herein.

12. The trademarks registered as U.S. Registration Nos. 1,265,094 and 2,285,794 are

invalid because they are not distinctive, as set forth in paragraphs 36-40 of Defendants

affirmative defenses, which are incorporated by reference as if fully set forth herein.

13. Accordingly, the trademarks registered as U.S. Registration Nos. 1,265,094 and

2,285,794 are not valid and/or not protectable and thus should be cancelled under 15 U.S.C.

1119.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 33 of 36

Second Counterclaim
Registration Cancellation
False or Fraudulent Procurement

14. Defendant incorporates by reference its responses to the allegations set forth in

the Complaint as well as its affirmative defense allegations set forth above as if fully set forth

herein.

15. On August 28, 2017, Plaintiff filed a Complaint against Defendant, alleging, in

part, registered trademark infringement under 15 U.S.C. 1114.

16. Plaintiff asserts that Defendant infringes the trademark registered as U.S.

Registration Nos. 1,265,094 (the 094 Registration).

17. The trademark registered as the 094 Registration was procured in the U.S. Patent

and Trademark Office by false or fraudulent means, as set forth in paragraphs 57-98 of

Defendants affirmative defenses, which are incorporated by reference as if fully set forth herein.

18. As a consequence of the false or fraudulent procurement of the 094 Registration,

Defendant has sustained damages, including but not limited to being sued by Plaintiff for

trademark infringement.

19. Accordingly, the 094 Registration should be cancelled under 15 U.S.C. 1119

and 1120 and Plaintiff should compensate Defendant for damages sustained from the false or

fraudulent procurement.

20. Plaintiff also asserts U.S. Registration No. 2,285,794 (the 794 Registration).

21. To the extent that the 794 Registration somehow applies to puzzle cubes,

Plaintiffs predecessors-in-interest had an obligation to inform the USPTO about the Rubiks

Patents, but did not and the fraud or fraudulent procurement counterclaim would apply to the

794 Registration as well.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 34 of 36

Prayer for Relief

Wherefore, Defendant prays for the following relief:

A. A judgment against Plaintiff that Plaintiffs trademarks are invalid and/or not

protectable;

B. A judgment against Plaintiff that U.S. Registration No. 1,265,094 and/or U.S.

Registration No. 2,285,794 were procured falsely or fraudulently;

C. Cancellation of Plaintiffs registrations, U.S. Registration Nos. 1,265,094 and

2,285,794, under 15 U.S.C. 1119 and/or 1120;

D. Damages adequate to compensate Defendant for Plaintiffs enforcement of a false

and fraudulently procured registered trademark(s);

E. An award of costs and expenses, including attorneys fees pursuant to 15 U.S.C.

1117 or other applicable authority;

F. An award of pre- and post-judgment interest; and

G. Such other relief as the Court may deem just and proper.

Jury Demand

Defendant hereby demands a trial by jury on all issues triable by a jury alleged or relating

to this litigation pursuant to Rule 38 of the Federal Rules of Civil Procedure.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 35 of 36

QUARLES & BRADY LLP

Dated this 18th day of December, 2017. By: /s/ Jonathan Hudis
Jonathan Hudis
jonathan.hudis@quarles.com
1701 Pennsylvania Avenue, NW, Suite 700
Washington, DC 20006
Tel.: 202-372-9600
Fax: 202-372-9599

Anthony A. Tomaselli (Pro Hac Vice pending)


aat@quarles.com
Anita M. Boor (Pro Hac Vice pending)
anita.boor@quarles.com
33 East Main Street, Suite 900
Madison, WI 53703
Tel.: 608-251-5000
Fax: 608-251-9166

Counsel for Defendant


Flambeau, Inc.

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 36 of 36

CERTIFICATE OF SERVICE

I hereby certify that on December 18, 2017, I caused a copy of the foregoing document to

be served on all counsel of record via the Courts ECF system.

Mark I. Peroff
Darren W. Sanders
Wilson Keadjian Browndorf LLP
114 West 47th Street, 18th Floor
New York, NY 10036
mark.peroff@wkbllp.com
dsaunders@wkbllp.com

Dated: December 18, 2017 /s/ Jonathan Hudis