value inn counterfeit servicemark complaint

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					Case 0:12-cv-61827-UU Document 1 Entered on FLSD Docket 09/18/2012 Page 1 of 12



                                    UNITED STATES DISTRICT COURT
                                FOR THE SOUTHERN DISTRICT OF FLORIDA

 THIRTY-EIGHT STREET, INC., a Florida
 corporation, and VANTAGE HOSPITALITY
 GROUP, INC., a Florida corporation,

           Plaintiffs,                                         CASE NO. ____________________

 v.

 JAI UMIYA MATA, LLC, a Texas limited
 liability company, and JASHAVANT D. PATEL,
 NIKHIL VYAS, and DINESH PATEL, individuals,

       Defendants.
 _____________________________________/

           COMPLAINT FOR COMPENSATORY DAMAGES, TREBLE DAMAGES,
                   INJUNCTIVE RELIEF, AND ATTORNEY FEES

           Plaintiffs, THIRTY-EIGHT STREET, INC. (“TESI”) and VANTAGE HOSPITALITY

 GROUP, INC. (“VANTAGE”), through their attorneys, file this Complaint against Defendants

 JAI UMIYA MATA, LLC a/k/a JAI UMIYA MATA LLC (“JAI UMIYA”), JASHAVANT D.

 PATEL, NIKHIL VYAS, and DINESH PATEL (collectively, “Defendants”) and state:

                                            INTRODUCTION

           1.        This action arises from Defendants’ infringement and counterfeiting of Plaintiff

 TESI’s registered AMERICAS BEST VALUE INN service mark following Defendant JAI

 UMIYA’s breach of its licensing agreement with Plaintiff VANTAGE. In this action, Plaintiffs

 seek compensatory damages, treble damages, injunctive relief and attorneys’ fees against

 Defendants for violations of the federal Lanham Act (Counts I, II, III) and compensatory

 damages against Defendant JAI UMIYA for breach of contract (Count IV).




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                                      JURISDICTION AND VENUE

           2.        This Court has subject matter jurisdiction of this action pursuant to 15 U.S.C.

 §§ 1114, 1116, 1117, 1118, and 1121; 28 U.S.C. § 1331; and 28 U.S.C. §§ 1338(a), because this

 case involves a federal question arising under the Lanham Act, 15 U.S.C. § 1051, et seq.

           3.        Personal jurisdiction and venue are proper in this Court because: (a) the contract

 entered into between Plaintiff VANTAGE and Defendant JAI UMIYA calls for jurisdiction and

 venue relative to all disputes under the contract to lie in counties within this District; (b) upon

 information and belief, Defendants reside in this District, as that term is defined in 28 U.S.C.

 § 1391(c), because Defendants promote and market the services of Defendants in this District in

 violation of the Lanham Act and thereby are subject to personal jurisdiction in this District, 28

 U.S.C. § 1391(b)(3); and (c) Plaintiffs are situated in this District, and are being harmed in this

 District by the infringing conduct of Defendants, 28 U.S.C. § 1391(b)(2).

                                                 PARTIES

           4.        Plaintiff TESI is a corporation organized under the laws of the State of Florida,

 having its principal place of business at 3300 N. University Drive, Suite 500, Coral Springs,

 Florida 33065.

           5.        Plaintiff VANTAGE is a corporation organized under the laws of the State of

 Florida, having its principal place of business at 3300 N. University Drive, Suite 500, Coral

 Springs, Florida 33065.

           6.        Upon information and belief, Defendant JAI UMIYA is a limited liability

 company which is organized and doing business under the laws of the state of Texas, having its

 principal place of business at 8800 Airport Blvd, Houston, Texas 77061-3400.




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           7.        Upon information and belief, Defendants JASHAVANT D. PATEL, NIKHIL

 VYAS, and DINESH PATEL are and/or at all relevant times were managers of Defendant JAI

 UMIYA and are directly responsible for causing Defendant JAI UMIYA to engage in the

 infringing activities set forth in Counts I, II and III.

                                      PLAINTIFFS’ RIGHTS IN THE MARK

           8.        Plaintiff TESI is the owner of U.S. Service Mark Registration No. 3216237 (the

 “‘237 Registration”) for the mark AMERICAS BEST VALUE INN BY VANTAGE and Design

 (the “Mark”) in connection with hotel and motel services.

           9.        Plaintiff VANTAGE is the exclusive worldwide licensee of all rights in and to the

 Mark.

           10.       Plaintiff VANTAGE, by itself and through its predecessor, has used the Mark

 continuously in interstate commerce from at least as early as November 30, 2004 in connection

 with various hospitality services, including, but not limited to, hotel and motel services, and the

 Mark continues in use today to identify such services.

           11.       Plaintiff VANTAGE advertises and sells its hospitality services under the Mark

 throughout the United States, including, but not limited to, Florida and this District.

           12.       Because of the long and continuous use of the Mark in commerce, including

 advertising and provision of services under the Mark, consumers throughout the United States

 have come to recognize the Mark as a symbol of the services offered by Plaintiff VANTAGE

 under the Mark.

          THE LICENSING AGREEMENT BETWEEN VANTAGE AND JAI UMIYA

           13.       Plaintiff VANTAGE operates a brand membership program under its

 “AMERICAS BEST VALUE INN” brand (“Program”) under which providers of hospitality




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 services receive from Plaintiff VANTAGE a license to use the Mark in connection with

 hospitality services, as well as other benefits, in exchange for payments and compliance with

 other covenants, such as maintaining a certain level of quality of the hospitality accommodations

 offered in connection with the Mark.

           14.       On or about March 4, 2008, Defendant JAI UMIYA applied to participate in the

 Program and use the Mark at the address of 8800 Airport Blvd, Houston, Texas 77061-3400 (the

 “Branded Property”).                 On March 18, 2008, Plaintiff VANTAGE accepted Defendant JAI

 UMIYA’s application. Thereupon, Defendant JAI UMIYA agreed to the terms in the application

 for membership in the Program. Defendant JAI UMIYA’s Brand Membership Application and

 Agreement for the Branded Property (the “Brand Agreement”) is attached hereto as Exhibit A.

           15.       The Brand Agreement licensed the use of the Mark to Defendant JAI UMIYA in

 connection with offering and providing hospitality services. Among other obligations, the Brand

 Agreement required Defendant JAI UMIYA to pay to Plaintiff VANTAGE an initial fee,

 membership, advertising and annual conference fees, and certain additional fees.

           16.       After entering into the Brand Agreement and becoming a member in the Program,

 Defendant JAI UMIYA used the Mark, including displaying the Mark on signs in connection

 with offering and providing hospitality services at the Branded Property.

           17.       As a result of Defendant JAI UMIYA’s failure to fulfill its obligations under the

 Brand Agreement, Plaintiff VANTAGE terminated the Brand Agreement on May 16, 2012 (the

 “Termination Date”) and notified Defendants of same. A copy of the May 16, 2012 termination

 letter is attached hereto as Exhibit B.




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           18.       Within 30 days of the Termination Date, JAI UMIYA was required by the Brand

 Agreement to cause the removal of signage bearing the Mark, corresponding to June 16, 2012

 (the “Grace Period”).

           19.       Following Plaintiff VANTAGE’s termination of the Brand Agreement,

 Defendants willfully continued use of the Mark in connection with offering and providing

 hospitality services at the Branded Property. In particular, Defendant JAI UMIYA displayed one

 or more signs, furniture, or fixtures bearing the Mark at the Branded Property without Plaintiffs’

 authorization.

           20.       By letters dated July 25, 2012 and August 20, 2012, Plaintiff VANTAGE notified

 Defendants of the continued unauthorized use of the Mark and demanded that they cease and

 desist from such use. (Copies of the letters are attached hereto as Exhibit C). Despite these

 demands, the terms of the Brand Agreement, and the demand to cease and desist in the

 termination letter, Defendants continued to willfully use the Mark without Plaintiffs’ consent.

           21.       Defendants’ use of the Mark has caused or will likely cause confusion in the

 marketplace. Such use of the Mark has caused or will likely cause confusion, mistake or

 deception with respect to the association of Defendants with Plaintiffs, or as to the origin,

 sponsorship or approval of Defendants’ services by Plaintiffs. Further, Defendants’ use of the

 Mark in commercial advertising and promotion misrepresents the nature, characteristics,

 qualities and origin of Defendants’ services.

           22.       Upon information and belief, at all relevant times, Defendants JASHAVANT D.

 PATEL, NIKHIL VYAS, and DINESH PATEL directly controlled the continued unauthorized

 use of the Mark by Defendant JAI UMIYA, and directed, participated in, ratified, or otherwise

 assisted the unauthorized, and hence infringing, use of the Mark. As the active moving force




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 behind Defendant JAI UMIYA’s infringement, Defendants JASHAVANT D. PATEL, NIKHIL

 VYAS, and DINESH PATEL are jointly and severally liable for Defendant JAI UMIYA’s

 infringement.

           23.       Plaintiffs have been, and continue to be, injured by Defendants’ unauthorized and

 unlawful use of the Mark. Such infringement has caused, and continues to cause, irreparable

 harm to Plaintiffs and Plaintiffs’ goodwill and reputation under the Mark.

                                       COUNT I
                INFRINGEMENT OF FEDERALLY REGISTERED SERVICE MARK
                                   (15 U.S.C. § 1114)

                                          (ALL DEFENDANTS)

           24.       Plaintiffs repeat and reallege each of the allegations contained in Paragraphs 1

 through 23 of this Complaint as if fully set forth herein.

           25.       Defendants have infringed Plaintiff TESI’s rights in the ‘237 Registration in

 violation of 15 U.S.C. § 1114.

           26.       Given the notices provided to Defendants by Plaintiff VANTAGE, such activities

 are, and remain, with full knowledge of Plaintiffs’ rights, willful and intentional.

           27.       These willful and intentional acts of infringement have caused and are causing

 great and irreparable injury and damage to Plaintiffs’ business and goodwill and reputation in an

 amount that cannot be ascertained at this time and, unless restrained, will cause further

 irreparable injury and damage, leaving Plaintiffs with no adequate remedy at law.

           WHEREFORE, Plaintiffs demand judgment against Defendants, jointly and severally,

 for the following:

           a)        a temporary and permanent injunction enjoining Defendants, their officers,

 directors, servants, agents, employees, attorneys and representatives, and each of them, and those




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 parties acting in concert or participating with them, from using any more marks confusingly

 similar to the Mark in connection with the advertising or sale of their services;

           b)        an order directing that Defendants remove all signage and deliver up for

 destruction all materials and matter in their possession, custody or under their control that bear

 any mark or any other thing calculated or likely to cause confusion, deception or mistake in the

 marketplace with regard to the Mark, including, without limitation, all signage, and apparatus

 and electronically stored information capable of making any signage, advertising and

 promotional materials;

           c)        an accounting of profits Defendants have wrongfully obtained from their use of

 the Mark, 15 U.S.C. § 1117(a);

           d)        compensatory damages, costs, and attorneys’ fees, 15 U.S.C. § 1117(a); and

           e)        such other relief as this Court deems proper.

                                         COUNT II
                          COUNTERFEITING OF FEDERALLY REGISTERED
                               SERVICE MARK 15 U.S.C. § 1116(d)

                                          (ALL DEFENDANTS)

           28.       Plaintiffs repeat and reallege each of the allegations contained in Paragraphs 1

 through 23 of this Complaint as if fully set forth herein.

           29.       This is an action for counterfeiting of a federally registered mark under 15 U.S.C.

 § 1116(d).

           30.       Defendants’ unauthorized use of the Mark constitutes counterfeiting as defined by

 15 U.S.C. § 1116(d)(1)(B).

           WHEREFORE, Plaintiffs demand judgment against Defendants, jointly and severally,

 for the following:




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           a)        a temporary and permanent injunction enjoining Defendants, their officers,

 directors, servants, agents, employees, attorneys and representatives, and each of them, and those

 parties acting in concert or participating with them, from using any more marks confusingly

 similar to the Mark in connection with the advertising or sale of their services;

           b)        an order directing that Defendants remove all signage and deliver up for

 destruction all materials and matter in their possession, custody or under their control that bear

 any mark or any other thing calculated or likely to cause confusion, deception or mistake in the

 marketplace with regard to the Mark, including, without limitation, all signage, and apparatus

 and electronically stored information capable of making any signage, advertising and

 promotional materials;

           c)        an accounting of profits Defendants have wrongfully obtained from their use of

 the Mark, 15 U.S.C. § 1117(a);

           d)        compensatory damages, treble damages, costs, and attorneys’ fees, 15 U.S.C.

 § 1117(a)(b);

           e)        statutory damages between $1,000 and $200,000 per counterfeit mark, and up to

 $2,000,000 per counterfeit mark for willful use, U.S.C. § 1117(a); and

           f)        such other relief as this Court deems proper.

                                          COUNT III
                          STATUTORY INFRINGEMENT OF SERVICE MARK
                                        15 U.S.C. § 1125

                                          (ALL DEFENDANTS)

           31.       Plaintiffs repeat and reallege each of the allegations contained in Paragraphs 1

 through 23 of this Complaint as if fully set forth herein.




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           32.       This is an action for false designation of origin in violation of 15 U.S.C.

 § 1125(a).

           33.       Defendants’ use of the Mark constitutes a false designation of origin and/or false

 description or representation, which is likely to deceive consumers and prospective customers

 into believing that Defendants’ services originate from, or are licensed by, sanctioned by,

 sponsored by, or in some way affiliated with Plaintiffs in violation of 15 U.S.C. § 1125(a).

           WHEREFORE, Plaintiffs demand judgment against Defendants, jointly and severally,

 for the following:

           a)        a temporary and permanent injunction enjoining Defendants, their officers,

 directors, servants, agents, employees, attorneys and representatives, and each of them, and those

 parties acting in concert or participating with them, from using any more marks confusingly

 similar to the Mark in connection with the advertising or sale of their services;

           b)        an order directing that Defendants remove all signage and deliver up for

 destruction all materials and matter in their possession, custody or under their control that bear

 any mark or any other thing calculated or likely to cause confusion, deception or mistake in the

 marketplace with regard to the Mark, including, without limitation, all signage, and apparatus

 and electronically stored information capable of making any signage, advertising and

 promotional materials;

           c)        an accounting of profits Defendants have wrongfully obtained from their use of

 the Mark, 15 U.S.C. § 1117(a);

           d)        compensatory damages, costs, and attorneys’ fees, 15 U.S.C. § 1117(a); and

           e)        such other relief as this Court deems proper.




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                                             COUNT IV
                                        BREACH OF CONTRACT

                                       (DEFENDANT JAI UMIYA)

            34.       Plaintiff repeats and realleges each of the allegations contained in Paragraph 1

  through 23 of this Complaint as if fully set forth herein.

            35.       Upon termination of the Brand Agreement and Defendant JAI UMIYA’s

  membership in the Program, Defendant JAI UMIYA was required under the Brand Agreement to

  do the following: (a) remove the Mark from any sign, furniture, fixtures or other visible thing

  within thirty (30) days; (b) pay $150 per day for each day that it has failed to remove the Mark

  after the expiration of the Grace Period; and (c) immediately pay the balance of any fees due

  under the Brand Agreement.

            36.       Defendant JAI UMIYA has breached the Brand Agreement by: (a) failing and

  refusing to discontinue use of the Mark, as well as failing and refusing to remove the Mark from

  all signs, furniture, fixtures and other visible things; (b) failing to pay the daily $150 fee for

  continuing to display the Mark since at least June 16, 2012 to the present (the “Liquidated

  Damages”); and (c) failing to pay the balance of fees due under the Brand Agreement.

            37.       Defendant JAI UMIYA owes Plaintiff the following sums arising from Defendant

  JAI UMIYA’s breach of the Brand Agreement:

            38.       Accelerated Fees for early termination of the Brand Agreement in the amount of

  $12,996.00,

            39.       Delinquent (unpaid and past due) Fees under the Brand Agreement in the amount

  of $28,912.40,

            40.       Liquidated Damages of $150 per day for failing to suspend use of the Mark

  beginning June 16, 2012 corresponding to $14,100 through September 18, 2012.



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            41.       Plaintiff has additionally been damaged by Defendant JAI UMIYA’s breaches of

  the Brand Agreement in an amount to be proven at trial.

            42.       For all amounts past due and owed by Defendant JAI UMIYA under the Brand

  Agreement, Plaintiff is entitled to recover $25 or 1.5% interest per month in the unpaid amount,

  whichever is greater. Under the Brand Agreement, Plaintiff VANTAGE is also entitled to

  recover from Defendant JAI UMIYA Plaintiff’s attorneys’ fees incurred in connection with this

  lawsuit.

            WHEREFORE, Plaintiffs demand judgment against Defendant JAI UMIYA for the

  following:

            a)        An order directing that Defendants remove all signage and deliver up for

  destruction all materials and matter in their possession, custody or under their control that bear

  any mark or any other thing calculated or likely to cause confusion, deception or mistake in the

  marketplace with regard to the Mark, including, without limitation, all signage, and apparatus

  and electronically stored information capable of making any signage, advertising and

  promotional materials;

            b)        An order awarding to Plaintiff VANTAGE damages for breach of contract;

            c)        An order awarding prejudgment and post judgment interest; and

            d)        An award of Plaintiff VANTAGE’s costs and expenses, including, without

  limitation, Plaintiff’s attorney’s fees incurred in this action.

                                             JURY DEMAND

            Plaintiffs hereby demand trial by jury on all issues so triable.




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  Dated: September 18, 2012            Respectfully submitted,

                                       By: /s/Carly A. Johnson
                                       Steven I. Peretz (Fla. Bar. No. 329037)
                                       Carly A. Johnson (Fla. Bar. No. 31052)
                                       PERETZ CHESAL & HERRMANN, P.L.
                                       201 S. Biscayne Blvd., Suite 1750
                                       Miami, Florida 33131
                                       Tel: 305-341-3000
                                       Fax: 305-371-6807
                                       Email: speretz@pch-iplaw.com
                                               cjohnson@pch-iplaw.com

                                       Counsel for Plaintiff, Thirty-Eight Street, Inc., a
                                       Florida corporation, and VANTAGE Hospitality
                                       Group, Inc., a Florida corporation




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