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					                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 1 of 16



                                        1 Richard M. Wirtz (SBN 137812)
                                             email:rwirtz@wirtzlaw.com
                                        2 Erin K. Barns (SBN 286865)
                                             email:ebarns@wirtzlaw.com
                                        3 W I R T Z L A W APC
                                             4365 Executive Drive, Suite 1460
                                        4 San Diego, California 92121
                                             voice: 858.259.5009
                                        5 fax:      858.259.6008
                                        6
                                             Thomas D. Foster (SBN 213414)
                                        7 TD Foster - Intellectual Property Law
                                             11622 El Camino Real, Suite 100
                                        8 San Diego, CA 92130
                                             voice: 858.922.2170
                                        9 email:foster@tdfoster.com
                                        10 Attorneys for Plaintiff WAHOO INTERNATIONAL, INC.
                                        11
                                                                   UNITED STATES DISTRICT COURT
                                        12
                                                              SOUTHERN DISTRICT OF CALIFORNIA
                                        13
voice 858.259.5009 / fax 858.259.6008




                                              WAHOO INTERNATIONAL, INC., a Case Number: '13CV1395 GPC BLM
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14    California corporation,
        San Diego, CA 92121




                                        15                                 COMPLAINT FOR DAMAGES
                                              Plaintiff,                   AND INJUNCTIVE RELIEF
                                        16    v.                                           1.      Trademark Infringement
                                        17                                                         (15 U.S.C. § 1114)
                                              PHIX DOCTOR, INC. a               Florida 2.         Federal Trademark Dilution
                                        18    Corporation; and DOES 1-10.                          (15 U.S.C. § 1125 (C))
                                                                                           3.      False Designation of Origin
                                        19    Defendants.                                          (15 U.S.C. § 1125(A))
                                                                                           4.      Injury to Business Reputation
                                        20                                                         and Dilution under California
                                                                                                   Law (Cal. Bus. & Prof. Code §
                                        21                                                         14247)
                                                                                           5.      Common Law Passing off and
                                        22                                                         Unfair Competition
                                                                                           6.      Unfair Competition (Cal. Bus.
                                        23                                                         & Prof. Code § 17200)

                                        24                                                 (DEMAND FOR JURY TRIAL)
                                        25
                                        26         Plaintiff WAHOO INTERNATIONAL, INC. ("Wahoo” or “Plaintiff”) alleges
                                        27 as follows:
                                        28


                                                                     COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 2 of 16



                                         1         1.     Wahoo is the record owner of the federally registered trademark
                                         2 SOLAREZ for clear resin coating (Reg. No. 2,802,579).
                                         3         2.     This action arises from the unauthorized use of a mark for a competing
                                         4 product which is confusingly similar to the federally registered trademark SOLAREZ
                                         5 by Defendants PHIX DOCTOR, INC. and DOES 1-10 (“Defendants”).
                                         6         3.     By using a trade name and trademark that is confusingly similar to the
                                         7 nationally famous SOLAREZ® trademark, Defendants have caused and are likely to
                                         8 continue to cause confusion that Wahoo is the source or sponsor of Defendants’
                                         9 product(s), or that there is an association between Wahoo and Defendants’ product(s).
                                        10 In addition, Defendant’s acts are causing, and/or are likely to cause dilution of the
                                        11 SOLAREZ® trademark. Consequently, Wahoo seeks injunctive relief and damages
                                        12 under the federal Lanham Act (15 U.S.C. §§ 1051 et. seq.), the California Business and
                                        13 Professions Code, and the common law doctrines of passing off and unfair competition.
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14                                                 I.
        San Diego, CA 92121




                                        15                                       JURISDICTION
                                        16         4.     The Court has personal jurisdiction over Defendant PHIX DOCTOR, INC.
                                        17 because Defendant has maintained minimum contacts with the state of California.
                                        18 Defendant has continuously and systematically marketed and sold its infringing product
                                        19 here in California. It sells its product both directly to California consumers through its
                                        20 website and through distributors and retailers in California. Because these actions form
                                        21 the basis of Plaintiff’s action, there is also specific jurisdiction.
                                        22         5.     This Court has jurisdiction over this matter pursuant to 15 U.S.C. § 1121
                                        23 and 28 U.S.C. §§ 1331, 1332, 1338, and 1367. Plaintiff's claims are, in part, based on
                                        24 violations of the Lanham Act, as amended, 15 U.S.C. §§ 1051, et seq. The Court has
                                        25 jurisdiction over the state law claims pursuant to 28 U.S.C. §§ 1332, 1338(b), and 1367.
                                        26         6.     Venue lies in the Southern District of California pursuant to 28 U.S.C. §
                                        27 1391(b) and (c). Plaintiff is informed and believes that Defendant has transacted
                                        28 business in this judicial district, and a substantial part of the events, omissions, and


                                                                       COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                           2
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 3 of 16



                                        1 injuries giving rise to Plaintiff's claims occurred in this judicial district.
                                        2                                                II.
                                        3                                        THE PARTIES
                                        4         7.     Plaintiff Wahoo International, Inc. is a California Corporation having its
                                        5 principle place of business at 6074 Corte Del Cedro, Carlsbad, CA 92011. Wahoo
                                        6 International® is a leading manufacturer of UV cure resins. Resins are thick liquids
                                        7 that harden into transparent solids. The process of “curing” in chemistry refers to the
                                        8 hardening of a substance brought about by some catalyst, whether it be chemical
                                        9 additives, UV radiation, or heat. UV cure resins “cure,” or harden, when exposed to
                                        10 ultraviolet light. Wahoo sells its product online and through distributors in San Diego,
                                        11 CA, Ocean City, Maryland, and Aiea, Hawaii.
                                        12        8.     Defendant Phix Doctor, Inc. is a Florida Corporation having its principle
                                        13 place of business at 131 Tomahawk Dr., Unit 9A, Indian Harbour Beach, Florida 32937.
voice 858.259.5009 / fax 858.259.6008
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                                        14 On information and belief, Defendant sells its “Durarez” product online and through
        San Diego, CA 92121




                                        15 distributors in California, North Carolina, and Florida, as well as through retailers
                                        16 throughout the country.
                                        17                                               III.
                                        18        THE SOLAREZ® MARK AND DEFENDANT’S INFRINGEMENT
                                        19        9.     SOLAREZ® repair putty is a unique UV cure synthetic resin. It is a clear,
                                        20 non-yellowing mixture of high-strength, fiber reinforced polyester resin and a
                                        21 solar-activated catalyst. There is no mixing required and it can be applied straight from
                                        22 the tube. SOLAREZ® UV resin quickly and durably repairs fiberglass, plastics, wood
                                        23 and metal in minutes (3 minutes when exposed to uv sunlight). Because SOLAREZ®
                                        24 repair putty hardens so quickly, it emits up to 95% less VOC's (vapors) than other cure
                                        25 systems.
                                        26        10.    SOLAREZ® repair putty was the first UV cure resin on the surf market.
                                        27 Since the product was first sold in 1987, Wahoo has invested in the promotion of its
                                        28 product and the education of the relevant public regarding use of a UV cure repair resin.


                                                                      COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                          3
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 4 of 16



                                         1 Wahoo provides answers to the 20 most frequently asked questions regarding UV cure
                                         2 resins (and specifically SOLAREZ® repair putty) on its website. As the first resin of
                                         3 its kind and through Wahoo’s promotional and educational efforts, SOLAREZ® repair
                                         4 putty has become famous in the surf, snowboard, and skate industry.
                                         5         11.   Plaintiff has used the SOLAREZ® mark on its repair putty continuously
                                         6 and consistently since June 26, 1989. It first registered the mark on the principal
                                         7 register on April 14, 1992 (Reg. No. 1,682,565). After the mark’s first registration
                                         8 lapsed for inadvertent failure to renew in 2003, it was re-registered on January 6, 2004
                                         9 (Reg. No. 2,802,579). The registration’s date of first use is June 26, 1989. A true and
                                        10 correct copy of Plaintiff’s federal registration certificate is attached as Exhibit A. The
                                        11 trademark is now incontestible.
                                        12         12.   Plaintiff is also the owner of a family of marks with the suffix -rez, which
                                        13 family Plaintiff has advertised as “Rez-solutions” including: SPONGEREZ for
voice 858.259.5009 / fax 858.259.6008
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     W I R T Z L A W APC




                                        14 bodyboard and swimfin repair resin (in use since 1989), NEOREZ for wetsuit repair
        San Diego, CA 92121




                                        15 resin (in use since 1990), and RADREZ for snow and skate board and skate shoe repair
                                        16 resin (in use since 1992). In the surf, skate, and snowboard industry and culture, -rez
                                        17 is a distinguishing element recognized by customers as identifying Plaintiff’s products
                                        18 when it appears in a composite. Plaintiff advertises, promotes, and sells its -rez
                                        19 products in a manner designed to create an association of common origin for all marks
                                        20 containing -rez. As a result, consumers in the surf, skate, and snowboard industry have
                                        21 come to so associate all marks for repair resin containing the -rez suffix with Plaintiff.
                                        22         13.   Defendants purchased Plaintiff’s SOLAREZ® product sometime before
                                        23 2010.
                                        24         14.   On information and belief, Defendant is a producer of Fiberglass Repair
                                        25 Products and accessories. On November 29, 2011, Defendant announced on its website
                                        26 its new product: “Durarez.” According to Defendants’ website description, “Durarez”
                                        27 is a fiber filled epoxy & polyester repair product. Defendant advertises that its product
                                        28 “cures in full sun in less than 3 minutes for a professional finish that saves you time and


                                                                      COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                          4
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 5 of 16



                                         1 money!” The product is advertised as an ultra-clear, sun powered resin that works on
                                         2 epoxy and polyester, and never hardens in the tube.
                                         3         15.   In December 2012, Plaintiff’s trademark counsel sent a cease and desist
                                         4 letter to Defendant via email and Federal Express which letter the Defendant basically
                                         5 ignored.
                                         6         16.   In January 2013, both Plaintiff and Defendants exhibited at the Surf Expo
                                         7 in Florida. Defendants’ product was exhibited inside the Eastern Surf Supply booth.
                                         8 At that trade show, Defendants’ agent, Tony Gowen, represented to Plaintiff’s
                                         9 representative, Nelz Vellocido, that Defendants intended to “wind down” use of the
                                        10 “Dura-Rez” mark.
                                        11         17.   However, in or about February 2013, Plaintiff’s distributor in Florida,
                                        12 Lazee Lizard LLC, called Plaintiff to complain that other stores in the area claimed to
                                        13 be buying Plaintiff’s SOLAREZ resin product from Rainbow Surf Supply (which is not
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
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                                        14 one of Plaintiff’s distributors). The proprietors of Lazee Lizard called one such store,
        San Diego, CA 92121




                                        15 Water Sports West, to ask if they carried SOLAREZ resin, which Water Sports West
                                        16 claimed that it did. The proprietors of Lazee Lizard then visited Water Sports West and
                                        17 confirmed that the product they were actually selling was Defendants’ “Durarez” resin.
                                        18         18.   In addition, on March 11, 2013, Defendants updated their website
                                        19 www.phixdoctor.net, and did not remove their advertisement of their “Durarez” resin.
                                        20         19.   Despite Defendants’ knowledge of Plaintiff’s rights in the trademark since
                                        21 at least 2010, when Defendants purchased Plaintiff’s SOLAREZ resin, and despite
                                        22 being confronted by Plaintiff’s representative in January of 2013, Defendants’ continue
                                        23 to willfully infringe upon Plaintiff’s trademark.
                                        24 / / /
                                        25 / / /
                                        26 / / /
                                        27 / / /
                                        28 / / /


                                                                     COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                         5
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 6 of 16



                                         1                              FIRST CLAIM FOR RELIEF
                                         2                                 Trademark Infringement
                                         3                                     (15 U.S.C. § 1114)
                                         4         20.   Plaintiff realleges and incorporates by reference each of the foregoing
                                         5 material allegations as though set forth in full at this point.
                                         6         21.   Defendants are using the “Durarez” mark in connection with the sale,
                                         7 offering for sale, distribution, and/or advertising of a resin product in such a manner as
                                         8 to cause actual confusion, as is likely to cause confusion, or to cause mistake, or to
                                         9 deceive consumers or potential consumers in violation of 15 U.S.C. § 1114.
                                        10         22.   Defendants had actual notice and knowledge, and/or had constructive
                                        11 notice, of Plaintiff’s ownership and registration of the SOLAREZ® trademark prior to
                                        12 Defendants’ adoption and use of their “Durarez” mark.                    Plaintiff has owned its
                                        13 SOLAREZ trademark since its date of first use, June 26, 1989. The trademark has been
voice 858.259.5009 / fax 858.259.6008
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                                        14 federally registered since January 6, 2004 (with the first registration active from April
        San Diego, CA 92121




                                        15 14, 1992 until 2003). Defendants purchased Plaintiff’s SOLAREZ resin sometime in
                                        16 or before 2010. Defendants then developed their own resin product and began to
                                        17 market it under the confusingly similar “Durarez” mark beginning November 29, 2011.
                                        18         23.   Defendants’ use of the “Durarez” mark is without the consent of Plaintiff.
                                        19         24.   Defendants' unauthorized use of the “Durarez” mark falsely indicates to
                                        20 consumers that Defendants' product is in some manner connected with, sponsored by,
                                        21 affiliated with, or related to Plaintiff, Plaintiff’s family of -rez marks, and Plaintiff’s
                                        22 SOLAREZ resin product.
                                        23         25.   Defendants' unauthorized use of “Durarez” mark is likely to cause, and has
                                        24 in fact caused consumers to be confused as to the source, nature, and quality of the
                                        25 goods Plaintiff offers. This is in part due to the fact that Plaintiff owns, advertises, and
                                        26 promotes its family of -rez marks as having a common origin in Plaintiff.
                                        27         26.   Plaintiff has been, is now, and will be irreparably injured and damaged by
                                        28 Defendants' trademark infringement. In addition to Plaintiff’s sales which have been


                                                                      COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                          6
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 7 of 16



                                         1 and will be diverted to Defendant as a result of consumer confusion, Plaintiff’s
                                         2 trademark and family of marks serves a unique function in representing intangible
                                         3 assets of Plaintiff such as its reputation and good will. Unless enjoined by the Court,
                                         4 Plaintiff will suffer further harm to its reputation, and goodwill each and every day that
                                         5 Defendants continue to use their “Durarez” mark in connection with the sale, offering
                                         6 for sale, distribution, and/or advertising of their competing resin product. The past,
                                         7 present, and in particular future harm to Plaintiff’s reputation and good will is difficult
                                         8 to value and therefore constitutes an injury for which Plaintiff has no adequate remedy
                                         9 at law.
                                        10         27.    By reason of the foregoing, Defendants have committed and are continuing
                                        11 to commit trademark infringement in violation of 15 U.S.C. §1114. As a direct and
                                        12 proximate result of Defendants’ conduct, Plaintiff is entitled, pursuant to 15 U.S.C.
                                        13 §1117(a), to recovery of: (i) Defendants’ profits related to all uses of any mark
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14 confusingly similar to Plaintiff’s SOLAREZ® trademark, any mark containing the -rez
        San Diego, CA 92121




                                        15 suffix, and particularly Defendants’ “Durarez” mark, and any and all iterations thereof;
                                        16 (ii) any damages sustained by Plaintiff as a result of Defendants’ conduct, the precise
                                        17 amount of which shall be established by Plaintiff at trial; and (iii) the costs of the action
                                        18 herein.
                                        19         28.    Plaintiff is also entitled to the recovery of its attorney’s fees to 15 U.S.C.
                                        20 §1117.
                                        21         29.    Plaintiff also seeks a preliminary and permanent injunction to prohibit
                                        22 Defendants from any further use of any mark confusingly similar to Plaintiff’s
                                        23 SOLAREZ® trademark, or any iterations thereof, or any mark containing the -rez suffix
                                        24 in connection with the sale, offering for sale, distribution and/or advertising of any resin
                                        25 products, without Plaintiff’s express written consent in advance.
                                        26 / / /
                                        27 / / /
                                        28 / / /


                                                                       COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                           7
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 8 of 16



                                        1                             SECOND CLAIM FOR RELIEF
                                        2                               Federal Trademark Dilution
                                        3                                    (15 U.S.C. § 1125 (c))
                                        4         30.    Plaintiff realleges and incorporates by reference each of the foregoing
                                        5 material allegations as though set forth in full at this point.
                                        6         31.    SOLAREZ® is a nationally and internationally famous mark that is widely
                                        7 recognized by consumers, distributors, and others in the industry. Plaintiff’s use of the
                                        8 mark in commerce in connection with its resin product began at least as early as June
                                        9 26, 1989. The trademark has been registered on the principal register since January 6,
                                        10 2004 (and before that the mark was registered from April 14, 1992, until 2003).
                                        11 Plaintiff is the owner of a family of marks containing the -rez suffix. Plaintiff’s use of
                                        12 this family of marks was established long before Defendant’s dilution began. Plaintiff
                                        13 began using SPONGE-REZ in 1989, NEO-REZ in 1990, and RAD-REZ in 1992. In
voice 858.259.5009 / fax 858.259.6008
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                                        14 the surf, skate, and snowboard industry and culture, -rez is a distinguishing element
        San Diego, CA 92121




                                        15 recognized widely by customers as identifying Plaintiff’s products when the -rez suffix
                                        16 appears in a composite. Plaintiff advertises, promotes, and sells its -rez family of
                                        17 products in a manner designed to create an association of common origin for all marks
                                        18 containing -rez. As a result, consumers in the surf, skate, and snowboard industry have
                                        19 come to so associate all marks containing the -rez suffix with Plaintiff.
                                        20        32.    Defendants' unauthorized use of the “Durarez” mark began, at the earliest,
                                        21 on November 29, 2011, long after Plaintiff’s SOLAREZ® trademark had become
                                        22 famous and after Plaintiff created its family of -rez marks.
                                        23        33.    Defendants' unauthorized use of the “Durarez” mark has and will continue
                                        24 to have an adverse effect upon the value and distinctive quality of the SOLAREZ®
                                        25 trademark and on the distinctive identifying quality of Plaintiff’s -rez family of marks.
                                        26 Defendants' acts blur and whittle away at the distinctiveness and identity-evoking
                                        27 quality of the SOLAREZ® trademark. Defendants’ acts are also likely to tarnish the
                                        28 SOLAREZ® trademark. Though UV cure resins give off considerable heat when


                                                                      COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                          8
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 9 of 16



                                         1 curing in direct sunlight and can melt Styrofoam, SOLAREZ® repair putty has a special
                                         2 formula which can be used safely on Styrofoam without melting it.              Defendants’
                                         3 “Durarez” resin, on the other hand, does melt Styrofoam when it cures in direct
                                         4 sunlight. As a result, a confused consumer could ruin a Styrofoam surfboard by using
                                         5 Defendants’ “Durarez” resin while believing they are using Plaintiff’s SOLAREZ®
                                         6 product. Defendants' acts have therefore diluted and are likely to continue diluting the
                                         7 famous SOLAREZ® mark, by both blurring and tarnishment, in violation of 15 U.S.C.
                                         8 § 1125(c).
                                         9         34.    Plaintiff has been, is now, and will be irreparably injured and damaged by
                                        10 Defendants' dilution of Plaintiff’s famous SOLAREZ trademark. Plaintiff’s trademark
                                        11 and its family of marks serve a unique function in representing intangible assets of
                                        12 Plaintiff such as its reputation and good will. Unless enjoined by the Court, Plaintiff
                                        13 will suffer further harm to its reputation, and goodwill each and every day that
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14 Defendants continue to use their “Durarez” mark in connection with the sale, offering
        San Diego, CA 92121




                                        15 for sale, distribution, and/or advertising of their competing resin product. The past,
                                        16 present, and in particular future harm to Plaintiff’s reputation and good will is difficult
                                        17 to value and therefore constitutes an injury for which Plaintiff has no adequate remedy
                                        18 at law. Defendants’ wrongful conduct is continuing and as it does so, the trademark
                                        19 risks further dilution. Accordingly, Plaintiff is entitled to preliminary and permanent
                                        20 injunctive relief pursuant to 15 U.S.C. § 1125(c)(2).
                                        21         35.    Defendants have committed the acts alleged above: (i) with previous
                                        22 knowledge of Plaintiff’s prior right to and use of the trademark; (ii) with the willful
                                        23 intent to trade on Plaintiff’s good will and reputation; and (iii) with the willful intent to
                                        24 cause confusion, mistake, or deception. As a result, Plaintiff is entitled pursuant to 15
                                        25 U.S.C. §1117(a), to: (i) Defendants’ profits related to all uses of any mark which is
                                        26 confusingly similar to Plaintiff’s SOLAREZ® trademark, and all iterations thereof, and
                                        27 any mark containing the suffix -rez; (ii) any damages sustained by Plaintiff as a result
                                        28 of Defendants’ conduct, the precise amount of which shall be established by Plaintiff


                                                                       COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                           9
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 10 of 16



                                         1 at trial; and (iii) the costs of the action herein.
                                         2         36.    Plaintiff is also entitled to the recovery of its attorney’s fees pursuant to
                                         3 15 U.S.C. §1117.
                                         4         37.    Plaintiff also seeks a preliminary and permanent injunction to prohibit
                                         5 Defendants from any further use of any mark confusingly similar to Plaintiff’s
                                         6 SOLAREZ® trademark, or any iterations thereof, and/or any mark containing the -rez
                                         7 suffix in connection with the sale, offering for sale, distribution and/or advertising of
                                         8 any resin products, without Plaintiff’s express written consent in advance.
                                         9                              THIRD CLAIM FOR RELIEF
                                        10                                False Designation of Origin
                                        11                                    (15 U.S.C. § 1125(a))
                                        12         38.    Plaintiff realleges and incorporates by reference each of the foregoing
                                        13 material allegations as though set forth in full at this point.
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                                        14         39.    Defendants have used and are using in commerce their “Durarez” mark in
        San Diego, CA 92121




                                        15 connection with their resin product.
                                        16         40.    Defendants’ use of the “Durarez” mark is likely to cause confusion, to
                                        17 cause mistake, and/or to deceive as to Defendants affiliation, connection, or association
                                        18 with Plaintiff, and/or as to the origin, sponsorship, or approval of Defendants’
                                        19 product(s) by Plaintiff and constitutes a false designation of origin in violation of 15
                                        20 U.S.C. § 1125(a).
                                        21         41.    Plaintiff has been, is now, and will be irreparably injured and damaged by
                                        22 Defendants' actions as alleged herein. In addition to Plaintiff’s sales which have been
                                        23 and will be diverted to Defendant as a result of consumer confusion, Plaintiff’s
                                        24 trademark and its family of marks serves a unique function in representing intangible
                                        25 assets of Plaintiff such as its reputation and good will. Unless enjoined by the Court,
                                        26 Plaintiff will suffer further harm to its reputation, and goodwill each and every day that
                                        27 Defendants continue to use their “Durarez” mark in connection with the sale, offering
                                        28 for sale, distribution, and/or advertising of their competing resin product. The past,


                                                                       COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                           10
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 11 of 16



                                         1 present, and in particular future harm to Plaintiff’s reputation and good will is difficult
                                         2 to value and therefore constitutes an injury for which Plaintiff has no adequate remedy
                                         3 at law.
                                         4         42.    As a direct and proximate result of Defendants’ conduct, Plaintiff is
                                         5 entitled, pursuant to 15 U.S.C. §1117(a), to recovery of : (i) Defendants’ profits related
                                         6 to all uses of any mark which is confusingly similar to Plaintiff’s SOLAREZ®
                                         7 trademark, and all iterations thereof, and/or any mark containing the -rez suffix; (ii) any
                                         8 damages sustained by Plaintiff as a result of Defendants’ conduct, the precise amount
                                         9 of which shall be established by Plaintiff at trial; and (iii) the costs of the action herein.
                                        10         43.    In addition, Plaintiff is entitled to the recovery of its attorney’s fees
                                        11 pursuant to 15 U.S.C. §1117.
                                        12         44.    Plaintiff also seeks a preliminary and permanent injunction to prohibit
                                        13 Defendants from any further use of any mark confusingly similar to Plaintiff’s
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                                        14 SOLAREZ® trademark, or any iterations thereof, and/or any mark containing the -rez
        San Diego, CA 92121




                                        15 suffix in connection with the sale, offering for sale, distribution and/or advertising of
                                        16 any resin products, without Plaintiff’s express written consent in advance.
                                        17                             FOURTH CLAIM FOR RELIEF
                                        18           Injury to Business Reputation and Dilution under California Law
                                        19                          (CAL. BUS. & PROF. CODE §14247)
                                        20         45.    Plaintiff realleges and incorporates by reference each of the foregoing the
                                        21 material allegations as though set forth in full at this point.
                                        22         46.    SOLAREZ® is a famous and distinctive mark that is widely recognized
                                        23 by the general consuming public of this state as a designation of the source of Plaintiff’s
                                        24 goods. Plaintiff is also the owner of a family of marks containing the -rez suffix. In the
                                        25 surf, skate, and snowboard industry and culture, -rez is a distinguishing element
                                        26 recognized widely by customers as identifying Plaintiff’s products when it appears in
                                        27 a composite. Plaintiff advertises, promotes, and sells its -rez products in a manner
                                        28 designed to create an association of common origin for all marks containing -rez. As


                                                                       COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                           11
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 12 of 16



                                         1 a result, consumers in the surf, skate, and snowboard industry have come to so associate
                                         2 all marks containing the -rez suffix with Plaintiff.
                                         3        47.    Plaintiff’s use of the mark in commerce in connection with its resin
                                         4 product began at least as early as June 26, 1989. The trademark has been registered on
                                         5 the principal register since January 6, 2004 (with the previous registration active from
                                         6 April 14, 1992, until 2003).
                                         7        48.    Defendants' unauthorized use of the “Durarez” mark began, at the earliest,
                                         8 on November 29, 2011, long after Plaintiff’s SOLAREZ® trademark had become
                                         9 famous. Defendants’ website claims that their “Durarez” product is sold through
                                        10 distributors and retailers here in California.
                                        11        49.    Defendants' unauthorized use of the “Durarez” mark has and will continue
                                        12 to have an adverse effect upon the value and distinctive quality of the SOLAREZ®
                                        13 trademark and the -rez family of marks. Defendants' acts blur and whittle away at the
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14 distinctiveness and identity-evoking quality of the SOLAREZ® trademark and the -rez
        San Diego, CA 92121




                                        15 family of marks. Defendants' acts have diluted and are likely to continue diluting the
                                        16 famous SOLAREZ® mark in violation of California Business and Professions Code
                                        17 §14247.
                                        18        50.    Plaintiff has been, is now, and will be irreparably injured and damaged by
                                        19 Defendants' trademark infringement. In addition to Plaintiff’s sales which have been
                                        20 and will be diverted to Defendant as a result of consumer confusion, Plaintiff’s
                                        21 trademark and family of marks serve a unique function in representing intangible assets
                                        22 of Plaintiff such as its reputation and good will. Unless enjoined by the Court, Plaintiff
                                        23 will suffer further harm to its reputation, and goodwill each and every day that
                                        24 Defendants continue to use their “Durarez” mark in connection with the sale, offering
                                        25 for sale, distribution, and/or advertising of their competing resin product. The past,
                                        26 present, and in particular future harm to Plaintiff’s reputation and good will is difficult
                                        27 to value and therefore constitutes an injury for which Plaintiff has no adequate remedy
                                        28 at law.


                                                                      COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                          12
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 13 of 16



                                         1         51.    Plaintiff is therefore entitled to an injunction against Defendants’
                                         2 commercial use of any mark or trade name that is likely to cause dilution of Plaintiff’s
                                         3 SOLAREZ trademark, including any mark incorporating the -rez suffix, pursuant to
                                         4 California Business and Professions Code §14247.
                                         5         52.    Defendants have committed the acts alleged above: (i) with previous
                                         6 knowledge of Plaintiff’s prior right to and use of the trademark; (ii) with the willful
                                         7 intent to trade on Plaintiff’s good will and reputation; and (iii) with the willful intent to
                                         8 cause confusion, mistake, or deception. As a result, Plaintiff is entitled, pursuant to
                                         9 California Business and Professions Code §14247(b) to: (i) three times Defendants’
                                        10 profits related to the wrongful manufacture, use, display, or sale of goods under the
                                        11 “Durarez” mark and all iterations thereof, and any marks confusingly similar to the
                                        12 SOLAREZ® trademark and/or any marks incorporating the -rez suffix; (ii) three times
                                        13 any damages suffered by Plaintiff by reason of Defendants’ wrongful manufacture, use,
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14 display, or sale, goods under the “Durarez” mark and all iterations thereof, and any
        San Diego, CA 92121




                                        15 marks confusingly similar to the SOLAREZ® trademark and/or any marks
                                        16 incorporating the -rez suffix, the precise amount of which shall be established by
                                        17 Plaintiff at trial; and (iii) the costs of the action herein.
                                        18                               FIFTH CLAIM FOR RELIEF
                                        19                   Common Law Passing Off and Unfair Competition
                                        20         53.    Plaintiff realleges and incorporates by reference each of the foregoing
                                        21 material allegations as though set forth in full at this point.
                                        22         54.    Defendants' unauthorized use of its “Durarez” mark and other marks
                                        23 confusingly similar to Plaintiff’s SOLAREZ trademark and Plaintiff’s family of marks
                                        24 constitutes passing off and unfair competition in violation of the common law in
                                        25 California.
                                        26         55.    Plaintiff has been, is now, and will be irreparably injured and damaged by
                                        27 Defendants' actions.      In addition to Plaintiff’s sales which have been and will be
                                        28 diverted to Defendant as a result of consumer confusion, Plaintiff’s trademark and


                                                                       COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                           13
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 14 of 16



                                         1 family of marks serve a unique function in representing intangible assets of Plaintiff
                                         2 such as its reputation and good will. Unless enjoined by the Court, Plaintiff will suffer
                                         3 further harm to its reputation, and goodwill each and every day that Defendants
                                         4 continue to use their “Durarez” mark in connection with the sale, offering for sale,
                                         5 distribution, and/or advertising of their competing resin product. The past, present, and
                                         6 in particular future harm to Plaintiff’s reputation and good will is difficult to value and
                                         7 therefore constitutes an injury for which Plaintiff has no adequate remedy at law.
                                         8        56.     Plaintiff is entitled to a preliminary and permanent injunction enjoining
                                         9 and restraining Defendants from engaging in further acts of infringement and unfair
                                        10 competition.
                                        11                             SIXTH CLAIM FOR RELIEF
                                        12                                    Unfair Competition
                                        13                            (Cal. Bus. & Prof. Code § 17200)
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14        57.     Plaintiff realleges and incorporates by reference each of the foregoing
        San Diego, CA 92121




                                        15 material allegations as though set forth in full at this point.
                                        16        58.     Defendants' acts described above constitute unfair competition in violation
                                        17 of California Business and Professional Code §17200 et seq., as they are both unlawful,
                                        18 as set forth above, and unfair.
                                        19        59.     Plaintiff has been, is now, and will be irreparably injured and damaged by
                                        20 Defendants' actions.     In addition to Plaintiff’s sales which have been and will be
                                        21 diverted to Defendant as a result of consumer confusion, Plaintiff’s trademark and
                                        22 family of marks serves a unique function in representing intangible assets of Plaintiff
                                        23 such as its reputation and good will. Unless enjoined by the Court, Plaintiff will suffer
                                        24 further harm to its reputation, and goodwill each and every day that Defendants
                                        25 continue to use their “Durarez” mark in connection with the sale, offering for sale,
                                        26 distribution, and/or advertising of their competing resin product. The past, present, and
                                        27 in particular future harm to Plaintiff’s reputation and good will is difficult to value and
                                        28 therefore constitutes an injury for which Plaintiff has no adequate remedy at law.


                                                                      COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                          14
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 15 of 16



                                         1         60.    Plaintiff is therefore entitled to a judgment enjoining and restraining
                                         2 Defendants from engaging in further unfair competition.
                                         3         61.    Plaintiff is also entitled to restitution of the profits and other ill-gotten
                                         4 gains by Defendants from the illegal and impermissible use of any mark confusingly
                                         5 similar to Plaintiff’s SOLAREZ® trademark and/or Plaintiff’s family of marks.
                                         6         62.    Plaintiff is also entitled to the recovery of its attorney’s fees, and any
                                         7 penalties for which the law provides.
                                         8
                                         9         WHEREFORE, Plaintiff prays for relief as follows:
                                        10         1.     Entry of an order and judgment requiring that Defendants and its officers,
                                        11 agents, servants, employees, owners and representatives, and all other persons, firms
                                        12 or corporations in active concert or participation with it, be enjoined and restrained from
                                        13 (a) using in any manner the SOLAREZ® mark, or any name, mark, or domain name
voice 858.259.5009 / fax 858.259.6008
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14 confusingly similar to or a colorable imitation of the SOLAREZ trademark or any
        San Diego, CA 92121




                                        15 name, mark, or domain containing the -rez suffix, including but not limited to
                                        16 Defendants’ “Dura-rez” mark; (b) doing any act or thing calculated or likely to cause
                                        17 confusion or mistake or likely to deceive members of the public, or prospective
                                        18 customers, as to the source of the goods offered for sale or sold, or likely to indicate
                                        19 some connection between Defendants' goods and Plaintiff or Plaintiff’s SOLAREZ®
                                        20 product or Plaintiff’s family of -rez marks; and (c) committing any acts which will
                                        21 tarnish, blur, or dilute, or are likely to tarnish, blur, or dilute the distinctive quality of
                                        22 the SOLAREZ® mark and/or Plaintiff’s family of -rez marks;
                                        23         2.     A judgment ordering Defendants, pursuant to 15 U.S.C. § 1116(a), to file
                                        24 with this Court and serve upon Plaintiff within thirty (30) days after entry of the
                                        25 injunction, a report writing under oath setting forth in detail the manner and form in
                                        26 which Defendants have complied with the injunction and ceased sale, offering for sale,
                                        27 or advertising of any goods under any mark confusingly similar to the SOLAREZ®
                                        28 trademark and/or Plaintiff’s family of marks, as set forth above;


                                                                       COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                           15
                                             Case 3:13-cv-01395-GPC-BLM Document 1 Filed 06/14/13 Page 16 of 16



                                        1         3.    A judgment in the amount of Plaintiff's actual damages, Defendants'
                                        2 profits, and/or three times same pursuant to California Business and Professions Code
                                        3 § 14247(b), and/or restitution of the profits and other ill-gotten gains by Defendants.
                                        4         4.    Plaintiff's reasonable attorney's fees and cost of suit, and pre-judgment
                                        5 interest pursuant to 15 U.S.C. §1117;
                                        6         5.    A judgment for enhanced damages and/or punitive damages under state
                                        7 law as appropriate;
                                        8         6.    A judgment granting Plaintiff such other and further relief as the Court
                                        9 deems just and proper.
                                        10                                                   Respectfully Submitted,
                                        11 DATED:       June 14, 2013                        WIRTZ LAW APC
                                        12
                                        13                                                   By:      s/ Richard M. Wirtz
voice 858.259.5009 / fax 858.259.6008




                                                                                                    Richard M. Wirtz
   4365 Executive Drive, Suite 1460
     W I R T Z L A W APC




                                        14                                                          rwirtz@wirtzlaw.com
        San Diego, CA 92121




                                                                                                    Erin K. Barns
                                        15                                                          ebarns@wirtzlaw.com
                                                                                                    Attorneys for Plaintiff
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                                                                    COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
                                                                                        16

				
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