Kirakosian v. Sonic Imports - Complaint

Case 2:19-cv-01235 Document 1 Filed 02/19/19 Page 1 of 18 Page ID #:1
1 A. Eric Bjorgum (State Bar No. 198392)

Marc Karish (State Bar No. 205440)
2 KARISH & BJORGUM PC
119 E. Union St., Suite B
3 Pasadena, CA 91103
Telephone: (213) 785-8070
4 Facsimile: (626) 795-6321
E-Mail: [email protected]
5
Attorneys for Plaintiffs
6 ALBERT KIRAKOSIAN and
KIRACO, LLC
7
8
UNITED STATES DISTRICT COURT
9
CENTRAL DISTRICT OF CALIFORNIA
10
11
12 ALBERT KIRAKOSIAN, an ) Case No. 2:19-cv-01235
individual; KIRACO, LLC d/b/a Apple )
13 on Top, a California limited liability )
company, ) COMPLAINT FOR:
14 ) 1) PATENT INFRINGEMENT
Plaintiffs, )
15 ) 2) TRADEMARK
vs. ) INFRINGEMENT
16 )
SONICS IMPORTS, INC. d/b/a US ) 3) TRADE DRESS
17 Global Imports, d/b/a VAP Master, a ) INFRINGEMENT
California corporation; and DOES 1-10, ) 4) COMMON LAW
18 inclusive, )
) TRADEMARK
19 Defendants. ) INFRINGEMENT
)
20 ) 5) COUNTRFEITING
) 6) FALSE DESIGNATION OF
21 ) ORIGINA/COMMON LAW
)
22 ) UNFAIR COMPETITION
) 7) UNFAIR COMPETITION
23 )
UNDER CAL. B&P § 17200
24
25 REQUEST FOR JURY TRIAL
26
27
28
.
COMPLAINT
1
1
2 Plaintiffs Albert Kirakosian and Kiraco, LLC d/b/a Apple on Top aka AOT
3 (“Kiraco”) (collectively, “Plaintiffs”) by their attorneys, Karish & Bjorgum, PC
4 allege:
5 JURISDICTION AND VENUE
6 1. This is an action for patent infringement, trademark counterfeiting and
7 infringement, unfair competition and false designation of origin arising under the
8 laws of the United States, including the Patent Act, 35 U.S.C. §§ 271 and 281-285
9 and the Lanham Act, 15 U.S.C. §§ 1114, 1116 and 1125. Plaintiffs also bring state
10 law claims for common law trademark infringement, common law unfair
11 competition and violation of § 17200 of California’s Business and Professions
12 Code.
13 2. This court has jurisdiction over patent and trademark claims under 28
14 U.S.C. §§ 1331, 1338(a) and 1338(b). This court has supplemental jurisdiction
15 over the plaintiffs’ non-federal claims under 28 U.S.C. § 1367(a) in that those
16 claims are so related to the plaintiffs’ federal claims that they form part of the same
17 case or controversy.
18 3. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b), (c),
19 and 1400(b). Defendant Sonics Imports, Inc. d/b/a US Global Imports (“US
20 Global”) has its principal place of business in this District, sells the accused
21 products in this District and markets the accused products in this District.
22 THE PARTIES AND GENERAL ALLEGATIONS
23 4. Plaintiff Albert Kirakosian (“Kirakosian”) is an individual residing in
24 the County of Los Angeles.
25 5. Plaintiff Kiraco, LLC (“Kiraco”) is a limited liability company
26 organized under the laws of California with its principal place of business in
27 Northridge, California 91324. Plaintiff Kiraco does business as Apple on Top aka
28 AOT. Plaintiffs design, manufacture and sell hookah and hookah accessories,
.
COMPLAINT
2
1 including patented and trademarked products sold under the APPLEONTOP and
2 AOT brands.
3 6. Defendant Sonics Imports, Inc. is a California corporation that does
4 business as US Global Imports and may also be doing business as Vap Master.
5 (Defendant Sonic Imports, Inc. will be referred to herein as “US Global”.) On
6 information and belief, US Global’s principal place of business is located at 406
7 East 4th Street, Los Angeles, California 90013. US Global maintains the website
8 www.usglobalimports.com. The bottom of the landing page of that website states
9 “© 2018 Sonics Imports Inc..” The website describes US Global’s business:
10 “Welcome to the world’s best smoking accessories and vape accessories online
11 store. We are the industry leader in high quality, low price distribution.” Among
12 other things, US Global offers hookah and hookah accessories for sale over the
13 internet in the “Hookah Shop” section of its website. On information and belief,
14 US Global sells hookah and hookah accessories throughout the United States. US
15 Global also maintains a storefront in downtown Los Angeles that sells hookah and
16 hookah accessories.
17 7. Except as described herein, Plaintiffs are ignorant of the true names of
18 defendants sued as Does 1 through 10, inclusive, and therefore, Plaintiffs sue these
19 defendants by such fictitious names. Following further investigation and
20 discovery, Plaintiff will seek leave of this Court to amend this Complaint to allege
21 their true names and capacities when ascertained. These fictitiously named
22 defendants aided and abetted and/or conspired with the named defendants in the
23 wrongful acts and course of conduct or otherwise caused the damages and injuries
24 claimed herein and are responsible in some manner for the acts, occurrences and
25 events alleged in this Complaint.
26 The APPLEONTOP Bowl and the AOT Patent
27 8. Plaintiff Kirakosian is an inventor and seller of hookah and hookah
28 accessories through Kiraco. Plaintiff develops and sells high-quality hookah
.
COMPLAINT
3
1 accessories. Among other things, Plaintiff invented a small, sleek hookah “head”
2 (the head of the hookah is a bowl that contains the tobacco and charcoal in the
3 hookah). Plaintiff’s goal was to create the smallest possible Hookah bowl that
4 could still deliver the full Hookah experience. The resulting product, the
5 APPLEONTOP bowl (the “AOT Bowl”), fits most hookahs, takes up less space
6 than traditional bowls, and provides for long-lasting flavor. Plaintiff developed the
7 APPLEONTOP or AOT brand and trademarks (the “AOT Marks”) to market the
8 AOT Bowl. The AOT Marks reflect Plaintiff’s dynamic marketing and branding.
9 9. On December 19, 2012, Plaintiff Kirakosian submitted a design patent
10 application for his hookah pipe head to the United States Patent and Trademark
11 Office (“USPTO”). On April 7, 2015, the USPTO duly and validly issued U.S.
12 Patent No. D726,366 (“AOT Patent”) naming Plaintiff Kirakosian as the applicant
13 and inventor. (Attached as Exhibit A is a true and correct copy of Patent No.
14 D726,366.)
15 10. Each claim in the AOT Patent is valid and enforceable. The marking
16 requirements of 35 U.S.C. § 287 have been satisfied with respect to the AOT
17 patent.
18 11. Plaintiff AOT sells products embodying the design shown in U.S.
19 Patent No. D726,366. Attached as Exhibit B is a true and correct photograph of
20 the AOT Product.
21 12. Plaintiffs’ trademarks related to the AOT Bowl reference the
22 product’s distinctive, creative design. The patented AOT Bowl is in the shape of
23 an apple with a metal puncture bowel/pan sitting on its top. A single rubber green
24 leaf is attached to the metal bowl to allow for easy access to the coals. The AOT
25 Bowl’s body is comprised of rubber ridges and comes in various colors. The AOT
26 Bowl is also a distinctive, non-functional shape that has obtained secondary
27 meaning and qualifies a product design trade dresss.
28
.
COMPLAINT
4
1 The AOT Marks

2 13. On or about February 11, 2013, Plaintiff began using the
3 APPLEONTOP mark to sell hookah and hookah accessories. On or about May 30,
4 2013, Plaintiff Kiraco began using the AOT mark to sell hookah and hookah
5 accessories. Since 2012, Plaintiff has used the APPLEONTOP mark on his
6 website, available at www.appleontop.com. Plaintiff has devoted substantial time,
7 effort, and resources to the development and extensive promotion of the AOT
8 Marks and the products offered thereunder.
9 14. On April 7, 2015, the USPTO duly and validly registered the AOT
10 mark to Kiraco, registration number 4,717,006. The first use date stated in the
11 registration is May 30, 2013. Kiraco owns all right, title and interest in the AOT
12 mark. The AOT Mark is a word mark with the letters A, O, and T or as it appears
13 “AOT.” (Attached as Exhibit C are true and correct copies of the registration
14 statements for the AOT Marks).
15 15. On November 17, 2017, the USPTO duly and validly registered the
16 APPLEONTOP mark to Kiraco, registration number 5,345,896. The registration
17 statement lists a first use date of February 11, 2013 and the initial classification is
18 for “Hookah parts, namely bowls.” Kiraco owns all right, title and interest in the
19 APPLEONTOP mark. The “APPLEONTOP” mark is a word mark with the letters
20 A, P, P, L, E, O, N, T, O and P or as it appears “APPLEONTOP” (Attached as
21 Exhibit C are true and correct copies of the registration statements for the AOT
22 Marks).
23 16. As a result of Kiraco’s trademark registration and extensive use of its
24 AOT Marks, Plaintiff Kiraco has built and now owns enormously valuable
25 goodwill symbolized by the AOT Marks. Due to Plaintiffs’ devotion of substantial
26 time, effort and resources to the development and extensive promotion of the AOT
27 Marks and the products offered thereunder (including the AOT Bowl), the hookah
28 community has come to recognize and rely on the AOT Marks as indicia of the
.
COMPLAINT
5
1 high quality and unique design of the AOT Bowl and Plaintiffs’ other hookah
2 products.
3 17. The AOT Bowl is packaged in a small, clear plastic box with text on a
4 distinctive red banner at the base of the box. At bottom, the text states “AOT ®.”
5 On the box’s back, there is a red backdrop with white text describing the AOT
6 Bowl and its origins as well as the url for Plaintiffs’ website. (Attached as Exhibit
7 D is a true and correct photograph copy of Plaintiff’s AOT product packaging.)
8 US Global Counterfeits the AOT Bowl
9 18. Defendant traffics in counterfeit AOT Bowls which infringe one or
10 more claims of the AOT Patent by, among other things, making, using, offering to
11 sell, or selling in the United States, or importing into the United States, products
12 that are covered by the claim of the AOT Patent. (Attached as Exhibit E is a true
13 and correct photograph copy of the Infringing Products).
14 19. The Infringing Products appear identical to Plaintiffs’ products and
15 packaging in all material respects. The products, including the marks as well as the
16 packaging are identical. The Infringing Products even include the “patent pending”
17 claim on the bottom of the product.
18 20. Plaintiff, Kirakosian has inspected the Infringing Products and
19 believes such infringing products, while looking identical to that of the AOT
20 Products were not in fact manufactured or sold by Plaintiff. In fact, the Infringing
21 Products do not use the high-grade material used in the AOT Products.
22 21. Defendant has also repeatedly utilized the AOT Marks in connection
23 with the advertising and sale of counterfeit products. Without authorization or
24 license from AOT, Defendant knowingly and willfully used or reproduced the
25 AOT Marks in connection with its distribution, importing, shipping, advertising,
26 offering for sale, selling, and facilitating the sale of Infringing Products in
27 commerce.
28
.
COMPLAINT
6
1 22. Defendant’s use of the AOT Patent, the AOT Mark, Plaintiffs’
2 “AppleOnTop” mark, and Plaintiff’s AOT Trade Dress in commerce is without the
3 permission, license, or authority of Plaintiffs.
4 23. As a result of Defendant’s unlawful infringement of the AOT Patent,
5 the AOT Mark, the “AppleOnTop” mark and Plaintiff’s AOT Trade Dress,
6 Plaintiffs have suffered and continue to suffer damages for which Plaintiffs are
7 entitled to recover from Defendant in amounts to be established according to proof.
8 24. Defendant’s infringement of the AOT Patent is willful and deliberate.
9 25. Defendant knowingly received payments for this unauthorized and
10 counterfeit product.
11 26. Defendant’s actions have already confused and deceived, and threaten
12 to further confuse and deceive, the consuming public concerning the source of the
13 unauthorized and counterfeit products. By deceiving potential customers into
14 believing that the Infringing Products are authentic products, Defendant harms the
15 consuming public and irreparably harms AOT’s valuable reputation and goodwill.
16 AOT has no remedy at all for Defendant’s conduct, and AOT will be irreparably
17 harmed if Defendant is allowed to continue counterfeiting AOT products.
18 27. AOT became aware of Defendant’s selling products bearing the AOT
19 Marks in 2018. AOT has purchased sample Infringing Products. AOT confirmed
20 that the sample products are counterfeit Infringing Products.
21 28. The Infringing Products are not genuine AOT products. AOT did not
22 manufacture, inspect, or package the Infringing Products prior to the unauthorized
23 sale, and did not approve the Infringing Products for sale or distribution.
24 Defendant is not authorized by AOT to manufacture, advertise, distribute, sell,
25 offer to sell, or facilitate the sale of any products bearing the AOT Marks that are
26 not authentic products.
27
28
.
COMPLAINT
7
1 FIRST CLAIM FOR RELIEF

2 (Patent Infringement)
3 29. Plaintiffs reallege and incorporate the allegations in paragraphs 1
4 through 28 as if set forth fully herein.
5 30. Plaintiff, Albert Kirakosian is the owner of all right, title, and interest
6 in U.S. Design Patent No. D726,366.
7 31. Plaintiffs have complied with the statutory requirement of placing a
8 notice of the AOT Patent on all articles manufactured or sold under the AOT
9 Patent.
10 32. Defendant has been and is directly infringing and/or inducing
11 infringement of and/or contributorily infringing the AOT Patent by, among other
12 things, making, using, offering to sell, or selling in the United States, or importing
13 into the United States, products that are covered by the claim of the AOT Patent.
14 33. Defendant does not have a license or permission to use the claimed
15 subject matter of the AOT Patent.
16 34. As a result of Defendant’s unlawful infringement of the AOT Patent,
17 Plaintiffs have suffered and continue to suffer damages for which Plaintiffs are
18 entitled to recover from Defendant in amounts to be established according to proof.
19 35. Defendant’s conduct in violation of 35 U.S.C. §§ 271(a)-(c) has
20 injured AOT and will cause AOT further irreparable injury and damage in the
21 future unless Defendant is enjoined from infringing the AOT Patent.
22 SECOND CLAM FOR RELIEF
23 (Trademark Infringement)
24 36. Plaintiffs incorporate herein by reference the allegations set forth in
25 paragraphs 1 through 35 above.
26 37. Plaintiff Kiraco is the owner of U.S. Trademark Registration No.
27 4,717,006 for AOT for use in connection with Hookah parts as set forth in Exhibit
28 C. The registered trademark is a valid, protectable and distinctive trademark that
.
COMPLAINT
8
1 Plaintiffs have continuously used to promote the AOT products since the date of
2 first use as designated in the USPTO records.
3 38. Defendant’s use in its products of Plaintiff’s AOT Mark is likely to
4 cause confusion, or mistake, or to deceive others into believing that Defendant’s
5 products are manufactured, offered, sponsored, authorized licensed, of similar
6 quality to, or otherwise affiliated with Plaintiffs.
7 39. Defendant either had actual notice and knowledge, or had constructive
8 notice by the USPTO’s placement of the mark on the Principal Register and
9 Plaintiffs’ notice of ® with the mark on Plaintiff Kiraco’s products and website
10 prior to Defendant’s adoption and use of Plaintiff Kiraco’s registered trade dress.
11 40. At no time did Defendant have the authorization, legal right, or
12 consent to engage in such activities in disregard of Plaintiffs’ rights in the
13 registered AOT Mark.
14 41. On information and belief, Defendant’s acts are deliberate and
15 intended to confuse the public as to the source of Defendant’s goods, to injure
16 Plaintiffs, and to reap the benefits of Plaintiffs’ goodwill associated with the AOT
17 Mark.
18 42. As a direct and proximate result of Defendant’s willful and unlawful
19 conduct, Defendant has damaged and will continue to damage Plaintiffs’ business,
20 market, reputation, and goodwill, and may discourage current and potential
21 customers from dealing with Plaintiffs. Such irreparable damage will continue
22 unless Defendant is enjoined from infringing Plaintiffs’ registered AOT Mark.
23 43. Defendant’s acts have damages and will continue to damage
24 Plaintiffs, and Plaintiffs have no adequate remedy at law.
25 44. In light of the foregoing, Plaintiffs are entitled to injunctive relief
26 prohibit Defendant from using Plaintiffs’ AOT Mark or any mark confusingly
27 similar thereto for any purpose, and to recover from Defendant all damages that
28 Plaintiffs have sustained and will sustain as a result of such infringing acts, and all
.
COMPLAINT
9
1 gains, profits and advantages obtained by Defendant as a result thereof, in an

2 amount not yet known well, as well as the costs of this action pursuant to 15
3 U.S.C. §1117(a) and attorneys’ fees and treble damages pursuant to 15 U.S.C.
4 §1117(b).
5 45. In addition, pursuant to 15 U.S.C. §1118, Plaintiffs are entitled to an
6 order requiring destruction of all infringing materials in Defendant’s possession.
7 THIRD CLAIM FOR RELIEF
8 (Trade Dress Infringement)
11 47. Plaintiffs’ AOT Trade Dress constitutes protectable trade dress. The
12 protectable trade dress of the AOT Trade Dress is nonfunctional features that
13 identify the product and its source to customers.
14 48. AOT’s trade dress incorporates as its packaging a clear plastic box
15 allowing the AOT product within the box to be visible from the top, bottom and
16 three sides of the box and one side that is red in color with words describing the
17 product printed in white along with the designation of the origin of the product.
18 49. Upon information and belief, and in addition to infringing and/or
19 inducing others to infringe by making, using, offering to sell, and/or selling in the
20 United States, and/or importing into the United States, products that possess most,
21 if not all, of the claims of the AOT Patent, Defendant has begun advertising at its
22 principal place of business and on websites and other social media outlets with the
23 same mark as the AOT Mark and AOT Trade Dress. (See Exhibit E).
24 50. Defendant sells the Infringing Products with the AOT Mark and AOT
25 Trade Dress. The captions, packaging box, and appearance are nearly, if not
26 exactly, the same. Both the AOT Product and Defendant’s Infringing Products
27 resemble the shape of an apple with rubber ridges and a metal puncture bowel/pan
28 with a single rubber leaf for handling of hot coal.
.
COMPLAINT
10
1 51. Defendant’s use of the AOT Mark and AOT Trade Dress in
2 commerce is without the permission, license, or authority of Plaintiffs. Such use is
3 confusingly similar to Plaintiff’s federally-registered AOT Mark and AOT Trade
4 Dress.
5 52. Defendant began its infringement of the AOT Mark and AOT Trade
6 Dress with full knowledge of Plaintiff’s registration and use of the AOT Mark and
7 AOT Trade Dress. On information and belief, Defendant undertook these actions
8 with the intent of confusing consumers, so that it could trade on and receive the
9 benefit of the goodwill built up by Plaintiffs at great labor and expense over many
10 years.
11 53. Defendant’s use of the AOT Mark and AOT Trade Dress in the
12 manner described above is likely to cause confusion, to cause mistake, and/or to
13 deceive customers and potential customers of the parities, to affiliation,
14 connection, or association of Defendant with Plaintiffs, or as to the origin,
15 sponsorship, or approval of the goods and/or services of Defendant by Plaintiffs.
16 54. Defendant’s use of the AOT Mark and AOT Trade Dress in a manner
17 described above falsely indicates to the purchasing public that the goods and/or
18 services of Defendant originate with Plaintiffs, or are affiliated, connected or
19 associated with Plaintiffs, or are sponsored, endorsed, or approved by Plaintiffs, or
20 in some manner related to Plaintiffs.
21 55. Defendant’s use of the AOT Mark and AOT Trade Dress in a manner
22 described above enables Defendant to gain acceptance for its goods and/or
23 services, not solely on its own merits, but on the reputation and goodwill of
24 Plaintiffs and their AOT Marks and AOT Trade Dress.
25 56. Defendant’s use of the Infringing Marks and Trade Dress in a manner
26 described above prevents Plaintiffs from controlling the nature and quality of
27 goods and services provided under those marks and place the valuable reputation
28 and goodwill of Plaintiffs in the hands of Defendant.
.
COMPLAINT
11
1 57. Defendant’s activities have caused irreparable injury to Plaintiffs and

2 the public, and unless restrained by this Court, will continue to cause irreparable
3 injury to Plaintiff and to the public. There is no adequate remedy at law for this
4 injury.
5 58. Defendant’s activities have caused irreparable injury to Plaintiffs and
6 the public, and unless restrained by this Court, will continue to cause irreparable
7 injury to Plaintiff and to the public. There is no adequate remedy at law for this
8 injury.
9 59. As a proximate result of Defendant’s unlawful infringement of the
10 AOT Trade Dress, Plaintiffs have been damaged and deprived of substantial sales
11 and has been deprived of the value of the AOT Trade Dress as a commercial asset,
12 in amounts to be established according to proof.
13 FOURTH CLAIM FOR RELIEF
14 (Common Law Trademark Infringement)
17 61. Since October 2012, Plaintiff, Albert Kirakosian has used the term
18 “Apple On Top” to refer to his hookah products and have use the term as
19 Plaintiffs’ website address www.AppleOnTop.com.
20 62. Upon information and belief, Defendant’s use of the “Apple on Top”
21 trademark constitute the use in commerce of false designations of origin, false or
22 misleading descriptions or representation that are likely to cause confusion and
23 mistake and to deceive consumers as to the source of origin of Defendant’s product
24 or the affiliation, connection, or association of Defendant with Plaintiffs or the
25 sponsorship or approval of Defendant’s products by Plaintiffs and constitute trade
26 dress infringement.
27 63. As a result of Defendant’s unlawful infringement of the AOT Marks,
28 Plaintiffs have suffered and continues to suffer damages. Plaintiffs have been
.
COMPLAINT
12
1 damaged and deprived of substantial sales and has been deprived of the value of
2 the AOT Trade Dress as a commercial asset, in amounts to be established
3 according to proof.
4
5 FIFTH CLAIM FOR RELIEF
6 (Counterfeiting)
9 65. Counterfeiting has been recognized as a serious issue resulting in
10 tremendous losses to American businesses. To combat counterfeits, Congress
11 passed the “Anticounterfeiting Consumer Protection Act of 1966” (ACPA).
12 66. California has a similar statute in Business and Profession Code
13 §14250.
14 67. Defendant’s actions also constitute use of one or more “counterfeit
15 marks” as defined in 15 U.S.C. §1116(d)(1)(B).
16 68. Upon information and belief, Defendant has, without the consent of
17 Plaintiffs, used in commerce counterfeit AOT Marks in connection with the sale,
18 offering for sale, distribution, or advertising of such goods, which is likely to cause
19 confusion, mistake, or deceive the purchaser that the counterfeit product originated
20 from Plaintiffs.
21 69. Defendant’s unauthorized use of the AOT Mark on counterfeit
22 products that they have distributed has caused and is causing consumer confusion
23 about the source and sponsorship of these counterfeit goods.
24 70. Defendant’s sale of these counterfeit products has caused considerable
25 damage to the goodwill of Plaintiffs and diminished the brand recognition of the
26 AOT Marks. The sales of these counterfeit products by Defendant has further
27 resulted in lost profits to Plaintiffs and have resulted in a windfall for Defendant.
28
.
COMPLAINT
13
1 71. Plaintiffs reserve the right to elect, at any time before final judgment
2 is entered in this case, an award of statutory damages pursuant to 15 U.S.C.
3 §1117(c)(1) and/or (2). Due to the nature of the counterfeiting, plaintiffs are
4 entitled to an award of statutory damages of up to $2,000,000 per mark infringed
5 under 15 U.S.C. §1117(c)(2).
6 72. In the alternative, and at a minimum, Plaintiffs are entitled to
7 injunctive relief and to recover Defendant’s profits, actual damages, enhanced
8 profits, and treble damages, costs, and reasonable attorneys’ fees under 15 U.S.C.
9 §1117(b).
10 SIXTH CLAIM FOR RELIEF
11 (False Designation of Origin/Unfair Competition)
14 74. The marketing and sale of the infringing products by Defendant
15 constitutes false designation of origin, which is likely to cause confusion and
16 mistake and to deceive consumers as to the source or origin of such goods or
17 sponsorship or approval of such goods or commercial activities by Plaintiffs in
18 violation of Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a).
19 75. Defendant’s conduct as alleged herein also constitutes unfair and
20 deceptive acts or practices in the course of business, trade, or in commerce, in
21 violation of California Business and Professions Code §§ 17200 and 17500, et seq
22 76. Upon information and belief, Defendant’s acts of unfair competition,
23 as described above, are deliberate and willful and undertaken with the intent to
24 misappropriate the goodwill and reputation associated with Plaintiffs’ AOT Mark,
25 AOT Trade Dress, and AOT Products.
26 77. Plaintiffs are informed and believe and thereon allege that as a
27 proximate result of Defendant’s false designation of origin, Defendant stands to
28 make substantial sales and profits in amounts to be established according to proof.
.
COMPLAINT
14
1 78. Plaintiffs are informed and believe and thereon allege that unless
2 restrained by this Court, Defendant will continue to designate falsely the origin of
3 its goods, causing irreparable damage to Plaintiffs and causing a multiplicity of
4 lawsuits. Pecuniary compensation will not afford Plaintiffs adequate relief for the
5 resulting damages. Further, Plaintiffs are informed and believe and thereon allege
6 that in the absence of injunctive relief, customers are likely to continue being
7 mistaken or deceived as to the true source, origin, sponsorship, and affiliation of
8 Defendant’s goods.
9 SEVENTH CLAIM FOR RELIEF
10 (Unfair Competition Under Cal. B&P § 17200)
11 79. Plaintiffs reallege paragraphs 1 through 78.
12 80. The above-described acts of Defendant constitute unfair competition
13 within the meaning of California Business and Professions Code section 17200.
14 Such acts have caused and will continue to cause irreparable and immediate injury
15 to Plaintiffs for which Plaintiffs have no adequate remedy at law. Unless
16 Defendant is restrained by this Court from continuing the acts alleged herein, these
17 injuries will continue to occur.
18
19 PRAYER FOR RELIEF
20 WHEREFORE, Plaintiffs pray for judgment against Defendant as follows:
21 1. A determination that Defendant has infringed the AOT Patent;
22 2. The Court preliminarily and permanently restrain and enjoin
23 Defendant and its officers, directors, agents, employees, licensees, successors and
24 assigns and all others acting in concert and participating with Defendant from
25 further acts of infringement, contributory infringement and inducing infringement
26 of the AOT Patent;
27
28
.
COMPLAINT
15
1 3. The Court preliminarily and permanently restrain and enjoin

2 Defendant and its officers, directors, agents, employees, licensees, successors and
3 assigns and all others acting in concert and participating with Defendant from:
4 a. Directly or indirectly manufacturing, producing, printing,
5 distributing, importing, trafficking in, selling, offering for sale, possessing,
6 advertising, promoting or displaying any products, including gloves, bearing any
7 simulation, reproduction, copy or colorable imitation of the AOT Trade Dress;
8 b. Directly or indirectly printing and/or importing into the United
9 States any items bearing any simulation, reproduction, copy or colorable imitation
10 of the AOT Trade Dress;
11 c. Making any unauthorized use of the AOT trade dress in such a
12 way as to cause confusion, mistake or deception as to the affiliation, connection or
13 association of the Defendant with Plaintiffs or as to the origin, sponsorship or
14 approval of Defendant’s products;
15 d. Using any false designation of origin or false description or
16 misrepresentation, or performing any other act which is likely to mislead the trade
17 or public, or individual members thereof, into believing that the Defendant’s
18 products are associated or connected with Plaintiffs;
19 e. Otherwise infringing the Plaintiffs’ rights in and to the AOT
20 Trade Dress;
21 f. For an order directing the Defendant to deliver for destruction
22 all products, labels, boxes, bottles, signs, prints, packages, wrappers, and artwork
23 in its possession, or under its control, bearing or intended to bear any simulation,
24 reproduction, copy or colorable imitation of the AOT Trade Dress, including all
25 plates, molds, matrices and other means of making the same;
26 4. For compensatory damages according to proof;
27 5. The Court treble the damages award to Plaintiffs as a consequence of
28 Defendant’s willful infringement;
.
COMPLAINT
16
1 6. For all damages allowed under 35 U.S.C. § 289 pertaining to

2 infringement of design patents including profits;
3 7. The Court award Plaintiffs their costs, interest and attorney’s fees; and
4 8. The Court award Plaintiffs such other and further relief as the Court
5 deems just and proper.
6
7
8
9
Dated: February 19, 2019 Respectfully Submitted,
10
KARISH & BJORGUM PC
11
12 By: /s/ A. Eric Bjorgum
A. Eric Bjorgum
13 Attorneys for Plaintiffs
14 Albert Kirakosian and Kiraco LLC
15
16
17
18
19
20
21
22
23
24
25
26
27
28
.
COMPLAINT
17
1 REQUEST FOR JURY TRIAL

2
3 Pursuant to Fed.R.Civ.P. 38(b), Plaintiffs hereby request a trial by jury of all
4 issues raised by the complaint which are properly triable to a jury.
5
6
7
Dated: February 19, 2019 Respectfully Submitted,
8
9 KARISH & BJORGUM PC
10 By: /s/ A. Eric Bjorgum

A. Eric Bjorgum
11
Attorneys for Plaintiffs
12 Albert Kirkosian and Kiraco LLC
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
.
COMPLAINT
18
Case 2:19-cv-01235 Document 1-1 Filed 02/19/19 Page 1 of 6 Page ID #:19
Exhibit A
USOOD726366S
(12) United States Design Patent (10) Patent No.: USD726,366 S

Kirakosian (45) Date of Patent: Apr. 7, 2015
(54) HOOKAH PIPE HEAD 5. "E. S.,

epard, Jr."O B.E.
D632,426 S * 2/2011 Badawi ....... D27,162
(71) Applicant: Albert Kirakosian, Northridge, CA D680,684 S * 4/2013 Enshiwat D27,162
(US) D684.313 S * 6/2013 Wu ......... ... D27, 164
8.464,725 B2* 6/2013 Badawi ... ... 131,173
(72) Inventor: Albert Kirakosian, Northridge, CA 8,763,799 B2* 7/2014 Haidar ... ... 206/242
(US) 2010.02 18778 A1* 9, 2010 Borden ....... ... 131,194
2011/0308537 A1* 12/2011 Khoury et al. ................ 131,174
(**) Term: 14 Years * cited by examiner
(21) Appl. No. 29/440,163 Primary Examiner — Susan Bennett Hattan
Assistant Examiner — Janice Hallmark
(22) Filed: Dec. 19, 2012 (74) Attorney, Agent, or Firm — Russo & Duckworth, LLP:
(51) LOC (10) Cl. ................................................ 27-02 David G. Duckworth
(52) U.S. Cl. (57) CLAM
USPC ......................................... D27/167; D27/162 The ornamental design for the hookah pipe head, as shown
(58) Field of Classification Search and described.
USPC ......... D27/106, 162-169, 194; 13 1/220-222,
131/226, 173, 174, 194,329 330 DESCRIPTION
See application file for complete search history.
FIG. 1 is a perspective view of the hookah pipe head;
(56) References Cited FIG. 2 is an exploded perspective view of the hookah pipe
head;
U.S. PATENT DOCUMENTS FIG. 3 is a front elevation view of the hookah pipe head;
D42,165 S * 2/1912 Clemens ...................... D27,168 FIG. 4 is a rear elevation view of the hookah pipe head;
1881,793 A * 10/1932 ME . . . . . . . . . . . . . . . . . . . . . . . 131,194 FIG. 5 is a left side elevation view of the hookah pipe head;
D127,324 S * 5/1941 Leser ........................... D27, 164 FIG. 6 is a right side elevation view of the hookah pipe head;
D131,197 S : 1/1942 Leser ........................... D27,164 FIG. 7 is a top plan view of the hookah pipe head; and,
D132,561 S * 5/1942 Clements ..................... D27, 164 FIG. 8 is a bottom plan view of the hookah pipe head.
2,285,057 A * 6/1942 Russell ......................... 131,194 The b
2,325,412 A * 7/1943 Martin .......................... 131,196 e roken lines in the drawings illustrate portions of the
2,335,087 A * 1 1/1943 Schmier ........................ 131,194 hookah pipe head and form no part of the claimed design.
D143,257 S * 12/1945 Abrams ....................... D27, 164
D147,363 S * 8, 1947 Danilowicz .................. D27, 164 1 Claim, 4 Drawing Sheets
U.S. Patent Apr. 7, 2015 Sheet 1 of 4 USD726,366 S
8.

<<---------------------
f
f
---------------------
---------- ---------------
a............................-1.-1.
f A.
---. ssssssssssssssssss
3.
3.
----------------------- ----------------------------- -------------------- J.J.-----------------
C C C ()
Fig. 8
Exhibit B
Exhibit C
Reg. No. 5,345,896 Kiraco LLC (CALIFORNIA LIMITED LIABILITY COMPANY)

18543 Devonshire St #383
Registered Nov. 28, 2017 Northridge, CALIFORNIA 91324
CLASS 34: Hookah parts, namely, bowls

Int. Cl.: 34
FIRST USE 2-11-2013; IN COMMERCE 2-11-2013
Trademark
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
Principal Register PARTICULAR FONT STYLE, SIZE OR COLOR
SER. NO. 87-435,805, FILED 05-03-2017

REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
Requirements in the First Ten Years*

What and When to File:
First Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
years after the registration date. See 15 U.S.C. §§1058, 1141k. If the declaration is accepted, the
registration will continue in force for the remainder of the ten-year period, calculated from the registration
date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
Requirements in Successive Ten-Year Periods*

What and When to File:
You must file a Declaration of Use (or Excusable Nonuse) and an Application for Renewal
between every 9th and 10th-year period, calculated from the registration date.*
Grace Period Filings*
The above documents will be accepted as timely if filed within six months after the deadlines listed above with
the payment of an additional fee.
*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
The time periods for filing are based on the U.S. registration date (not the international registration date). The
deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
nationally issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations
do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
international registration at the International Bureau of the World Intellectual Property Organization, under
Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
date of the international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the
international registration, see http://www.wipo.int/madrid/en/.
NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
USPTO website for further information. With the exception of renewal applications for registered
extensions of protection, you can file the registration maintenance documents referenced above online at h
ttp://www.uspto.gov.
NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
owners/holders who authorize e-mail communication and maintain a current e-mail address with the
USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
available at http://www.uspto.gov.
Page: 2 of 2 / RN # 5345896
Exhibit D
Exhibit E

Kirakosian v. Sonic Imports - Complaint

Uploaded by

Copyright:

Kirakosian v. Sonic Imports - Complaint

Uploaded by

Document Information

Original Description:

Original Title

Copyright

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Kirakosian v. Sonic Imports - Complaint

Uploaded by

Copyright:

Case 2:19-cv-01235 Document 1 Filed 02/19/19 Page 1 of 18 Page ID #:1

1 A. Eric Bjorgum (State Bar No. 198392)

3 (“Kiraco”) (collectively, “Plaintiffs”) by their attorneys, Karish & Bjorgum, PC

5 JURISDICTION AND VENUE

6 1. This is an action for patent infringement, trademark counterfeiting and

11 competition and violation of § 17200 of California’s Business and Professions

18 3. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b), (c),

22 THE PARTIES AND GENERAL ALLEGATIONS

23 4. Plaintiff Albert Kirakosian (“Kirakosian”) is an individual residing in

24 the County of Los Angeles.

25 5. Plaintiff Kiraco, LLC (“Kiraco”) is a limited liability company

1 The AOT Marks

1 FIRST CLAIM FOR RELIEF

1 gains, profits and advantages obtained by Defendant as a result thereof, in an

1 57. Defendant’s activities have caused irreparable injury to Plaintiffs and

1 3. The Court preliminarily and permanently restrain and enjoin

1 6. For all damages allowed under 35 U.S.C. § 289 pertaining to

1 REQUEST FOR JURY TRIAL

10 By: /s/ A. Eric Bjorgum

(12) United States Design Patent (10) Patent No.: USD726,366 S

(54) HOOKAH PIPE HEAD 5. "E. S.,

U.S. Patent Apr. 7, 2015 Sheet 1 of 4 USD726,366 S

U.S. Patent Apr. 7, 2015 Sheet 2 of 4 USD726,366 S

U.S. Patent Apr. 7, 2015 Sheet 3 of 4 USD726,366 S

U.S. Patent Apr. 7, 2015 Sheet 4 of 4 USD726,366 S

Reg. No. 5,345,896 Kiraco LLC (CALIFORNIA LIMITED LIABILITY COMPANY)

CLASS 34: Hookah parts, namely, bowls

SER. NO. 87-435,805, FILED 05-03-2017

REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION

Requirements in the First Ten Years*

Requirements in Successive Ten-Year Periods*

Grace Period Filings*

*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an

You might also like