newport v newport.pdf by martyschwimmer

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									             Case 2:14-cv-03373-JEM Document 1 Filed 05/01/14 Page 1 of 6 Page ID #:1



              1   SEDGWICK LLP
                  ROBERT F. HELFING Bar No. 90418
              2   robert.helfing@sedgwicklaw.com
                  HEATHER L. McCLOSKEY Bar No. 193239
              3   heather.mccloskey@sedgwicklaw.com
                  XIAOYI YAO Bar No. 261290
              4   xiaoyi.yao@sedgwicklaw.com
                  801 South Figueroa Street, 19th Floor
              5   Los Angeles, California 90017-5556
                  Telephone: (213) 426-6900
              6   Facsimile: (213) 426-6921
              7   Attorneys for Plaintiffs
                  KCI NEWPORT, INC. and
              8   KASSIR IMPORT-EXPORT CO., INC.
              9
            10                           UNITED STATES DISTRICT COURT
            11                         CENTRAL DISTRICT OF CALIFORNIA
            12
            13    KCI NEWPORT, INC., a California                 CASE NO.
                  corporation, and KASSIR
            14    IMPORT-EXPORT CO., INC., a
                  California corporation,                         COMPLAINT FOR
            15                                                    DECLARATORY RELIEF;
                                      Plaintiffs,
            16                                                    DEMAND FOR JURY TRIAL
                        v.
            17
                  LORILLARD LICENSING COMPANY,
            18    LLC, a North Carolina LLC,
            19                        Defendant.
            20
            21          Plaintiffs KCI Newport, Inc. and Kassir Import-Export Co., Inc. (“Kassir”)
            22    seek a declaratory judgment against Lorillard Licensing Company, LLC
            23    (“Lorillard”). Plaintiff s allege as follows:
            24                                               PARTIES
            25          1.     Plaintiffs Kassir and KCI Newport are California corporations with
            26    their principal places of business in Commerce, California.
            27          2.     Defendant Lorillard is a North Carolina limited liability company with
            28    its principal place of business in Greensboro, North Carolina.

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              1                                 JURISDICTION AND VENUE
              2           3.   This is an action for declaratory judgment under 28 U.S.C.A. §§ 2201,
              3   2202.
              4           4.   Subject matter jurisdiction over this action is conferred upon this court
              5   by 28 U.S.C.A. §§ 1331, 1332, and 1338 in that, among other things, the matter to
              6   be litigated raises one or more federal questions, the dispute is between citizens of
              7   different states, and the amount in controversy exceeds the value of $50,000.
              8           5.   This court has jurisdiction over Lorillard and venue is properly laid in
              9   this district under 28 U.S.C. § 1391(b) and (c) in that defendant Lorillard regularly
            10    transacts business in this district, which is also where plaintiffs reside, and a
            11    substantial part of the events giving rise to the claim occurred here.
            12                                            FACTS
            13            6.   Kassir is a wholesaler and distributor of general merchandise
            14    including smoking supplies, operating that business since 1995.
            15            7.   Keen Private Label Limited (“Keen”) is a United Kingdom company
            16    that has produced and sold butane gas for lighters under the trademark NEWPORT
            17    since the early 1960s. No later than 1968, Keen obtained a United Kingdom
            18    registration for a trademark that includes the word, NEWPORT.
            19            8.   Keen’s packaging prominently features the word, NEWPORT, set
            20    within a distinctive red flame and blue rectangle device, and other distinctive
            21    graphic elements. Attached as Exhibit A is a copy of Keen’s packaging for its
            22    NEWPORT butane lighter gas. Keen has also used the trademark, NEWPORT, the
            23    red flame and blue rectangle device and other distinctive elements of its packaging
            24    for smoking accessories such as filters, lighter fluid, wicks, flints and pipe cleaners.
            25    Keen has used those trademarks, not only in the United Kingdom, but widely
            26    throughout the world.
            27            9.   In 2011, Keen granted Kassir the right to use NEWPORT, the red
            28    flame and blue rectangle device, and the other distinctive graphic elements of its

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              1   packaging in the United States. Since no later than August 2011, Kassir has sold
              2   butane lighter gas in packaging bearing the words, NEWPORT ZERO, the red
              3   flame and blue rectangle device, and the other distinctive graphic elements of
              4   Keen’s packaging. Attached as Exhibit B is a copy of Kassir’s packaging for
              5   butane lighter gas.
              6          10.    On January 23, 2013, Kassir filed an application in the United States
              7   Patent and Trademark Office to register a mark featuring the words, NEWPORT
              8   ZERO, the red flame and blue rectangle device and other graphic elements of its
              9   packaging. The application was approved and matured to registration on March 4,
            10    2014, covering “cans containing butane gas.” Attached as Exhibit C is a copy of
            11    the certificate of registration.
            12           11.    Plaintiff KCI Newport was formed on March 6, 2013. Since that date,
            13    it has distributed butane lighter gas under the trademark registered by Kassir.
            14           12.    An actual controversy exists between the parties relating to Lorillard’s
            15    claim that plaintiffs’ use of its registered trademark is an infringement of its rights
            16    in the trademark, NEWPORT, and that it dilutes those rights.
            17           13.    Specifically, by letter dated February 19, 2014, Lorillard notified KCI
            18    Newport of its claim that its use of the registered mark infringes Lorillard’s rights
            19    in the trademark, NEWPORT. As support for its claim, Lorillard relied upon its
            20    United States registrations for NEWPORT and for NEWPORT & Design,
            21    registered for “cigarettes.” In that letter, Lorillard’s attorneys stated that it was
            22    “prepared to protect is [sic] trademark rights and investment in the NEWPORT
            23    brand by filing a civil action for trademark infringement, unfair competition and
            24    trademark dilution.” They continued that Lorillard was “willing to refrain from
            25    taking legal action for a short period of time” if, among other things, KCI ceased
            26    its alleged use of NEWPORT or any similar mark. Notwithstanding that
            27    representation, Lorillard’s attorneys stated that they reserved “the right to take
            28    legal action.”

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              1         14.    On April 1, 2014, attorneys for KCI Newport and Kassir responded
              2   with a letter disputing Lorillard’s contentions. Among other things, they denied
              3   that they had used any mark that was confusingly similar to, or that diluted,
              4   Lorillard’s trademarks.
              5         15.    By letter dated April 24, 2014, Lorillard’s attorneys disputed the
              6   plaintiffs’ position and maintained Lorillard’s contention that the plaintiffs’ use of
              7   its trademark infringed and diluted Lorillard’s registered marks. The letter stated,
              8   “The only way for our clients to resolve this matter short of litigation is for KCI
              9   [Newport] to cease its use of NEWPORT and surrender its registration.” They
            10    further stated that “Lorillard has instructed us to take legal action” if the plaintiffs
            11    did not comply with their demands by 5 p.m. on May 1, 2014.
            12          16.    Pursuant to their belief that the use of their mark does not infringe or
            13    dilute any rights Lorillard may have in the trademark, NEWPORT, for cigarettes,
            14    the plaintiffs have not complied with Lorillard’s demand and do not intend to
            15    comply by the expiration of the deadline. Accordingly, plaintiffs have a reasonable
            16    apprehension that their continuing use of their mark will result in Lorillard’s
            17    initiating litigation for trademark infringement and dilution, as it has threatened to
            18    do.
            19             CLAIM FOR DECLARATION OF NONINFRINGEMENT AND
            20                                       NONDILUTION
            21          17.    Plaintiffs incorporate by reference their allegations in paragraphs 1–16
            22    above.
            23          18.    Plaintiffs allege that the use of their mark in connection with butane
            24    gas lighters is not likely to cause confusion or mistake, or to deceive as to the
            25    affiliation, connection, or association of plaintiffs with Lorillard. Plaintiffs further
            26    allege that the use of their mark in connection with their goods is not likely to
            27    cause confusion or mistake, or to deceive as to the origin, sponsorship, or approval
            28    by Lorillard of plaintiffs’ goods. Plaintiffs therefore further allege that the use of

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              1   their mark does not infringe any rights Lorillard may own in the trademark,
              2   NEWPORT.
              3          19.    Plaintiffs allege that the use of their mark is not likely to cause
              4   dilution by blurring or tarnishment of Lorillard’s NEWPORT mark.
              5          20.    Based upon the representations in the correspondence described
              6   above, plaintiffs allege that Lorillard disputes each such allegation. Specifically,
              7   Lorillard contends that plaintiffs’ use of their mark both infringes and dilutes its
              8   claimed rights in the trademark, NEWPORT.
              9          21.    Accordingly, an actual controversy has arisen and now exists, for
            10    which plaintiffs have no plain, speedy and adequate remedy at law, and whose
            11    resolution is available only through a judicial determination of the respective rights
            12    of the parties.
            13                                  PRAYER FOR RELIEF
            14           THEREFORE, plaintiffs seeks a declaration that:
            15           1.     Their use of their mark does not infringe or dilute any rights that
            16    Lorillard may be found to have in the trademark, NEWPORT, including any rights
            17    represented by Lorillard’s United States registrations for NEWPORT and for
            18    NEWPORT & Design, registered for “cigarettes,” or which may exist under the
            19    common law; and
            20           2.     This court award to plaintiffs attorney’s fees and costs;
            21           3.     This court grant any such other and further relief as it may in its
            22    discretion deem just and proper.
            23
            24    Dated: May 1, 2014                 SEDGWICK LLP
            25                                       By: /s/ Robert F. Helfing
                                                         Robert F. Helfing
            26                                           Heather L. McCloskey
                                                         Xiaoyi Yao
            27                                           Attorneys for Plaintiffs
                                                         KCI NEWPORT, INC., and KASSIR
            28                                           IMPORT-EXPORT CO., INC.

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              1                             DEMAND FOR JURY TRIAL
              2         Plaintiffs KCI Newport, Inc. and Kassir Import-Export Co., Inc. hereby
              3   demand a trial by jury as to all issues properly so tried.
              4
              5   Dated: May 1, 2014                SEDGWICK LLP
              6
                                                    By: /s/ Robert F. Helfing
              7                                         Robert F. Helfing
                                                        Heather L. McCloskey
              8                                         Xiaoyi Yao
                                                        Attorneys for Plaintiffs
              9                                         KCI NEWPORT, INC., and KASSIR
                                                        IMPORT-EXPORT CO., INC.
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