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Case 1:15-cv-00948-WTL-DML Document 1 Filed 06/17/15 Page 1 of 12 PageID #: 1
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Dan Lawton (State Bar No. 127342)

dan@lawtonlaw.com
Joseph C. Kracht (State Bar No. 228507)
joe@lawtonlaw.com
LAWTON LAW FIRM
Emerald Plaza
402 West Broadway, Suite 1330
San Diego, CA 92101
(619) 595-1370 (Telephone)
(619) 595-1520 (Facsimile)
Attorneys for Plaintiff Imprimis Pharmaceuticals, Inc.
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IN THE UNITED STATES DISTRICT COURT
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FOR THE SOUTHERN DISTRICT OF INDIANA
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IMPRIMIS PHARMACEUTICALS, )
INC., a Delaware corporation,
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Plaintiff,
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v.
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HOOKS APOTHECARY, INC., an )
Indiana corporation, and DOES 1
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through 20, inclusive,
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Defendants.
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)
Case No.:
COMPLAINT FOR DAMAGES AND
OTHER RELIEF FOR TRADEMARK
INFRINGEMENT AND OTHER TORTS
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Plaintiff Imprimis Pharmaceuticals, Inc. (plaintiff or Imprimis), avers the

following:
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OVERVIEW
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These counterclaims comprise an action for, inter alia, damages and other
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relief for trademark infringement and for declaration of trademark rights under the
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Lanham Act, 15 U.S.C. 1501 et seq.

JURISDICTION AND VENUE
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1.
This action for declaratory judgment and for infringement of trademarks
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arises under the laws of the United States, Title 15 of the United States Code, and 28
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U.S.C. 2201 and Fed. R. Civ. P. 57.
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2.
This Court has subject matter jurisdiction under 28 U.S.C. 1331,
1338(a) and (b), and 2201.

3.
Venue is proper in this judicial district under pertinent law, including,
inter alia, 28 U.S.C. 1391(b), (c).

THE PARTIES
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4.
Imprimis is a corporation organized and existing under the laws of the
State of Delaware and has as its principal place of business and is doing business in
the State of California.
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Defendant Hooks Apothecary, Inc., is a corporation organized and
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existing under the laws of the State of Indiana and has as its principal place of
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business and is doing business in the State of Indiana. It is sometimes referred to
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hereinafter as Hooks or defendant.
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6.
The true names and capacities, whether individual, corporate, associate,
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representative or otherwise, of defendants Does 1 through 20, inclusive, are unknown
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to Imprimis, who therefore sues them by such fictitious names. Imprimis will seek
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leave to amend this complaint to show the true names and capacities of said
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defendants when they are ascertained. Imprimis is informed and believes, and
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thereupon alleges, that each of the defendants named as a Doe, along with the named
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defendants, is responsible in some manner for the occurrences herein alleged, and that
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Imprimiss injuries herein alleged were legally or proximately caused by said
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defendants. Wherever it is alleged that any act or omission was also done or
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committed by any specifically named defendant, or by defendants generally, Imprimis
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intends thereby to allege, and does allege, that the same act or omission was also done
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and committed by each and every defendant named as a Doe, and each named
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defendant, both separately and in concert or conspiracy with the named defendants.
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7.
At all times mentioned herein, defendants, and each of them, were the
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agents, servants, co-conspirators, or employees of one another, and the acts and
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omissions herein alleged were done or suffered by them, acting individually and
through or by their alleged capacity, within the scope of their authority. Each of the
defendants aided and abetted and rendered substantial assistance in the
accomplishment of the acts complained of herein. In taking the actions, as
particularized herein, to aid and abet and substantially assist in the commission of the
misconduct complained of, each defendant acted with an awareness of his, its or its
primary wrongdoing and realized that his, its or its conduct would substantially assist
in the accomplishment of that misconduct and was aware of his, its or its overall
contribution to, and furtherance of the conspiracy, common enterprise, and common
course of conduct. Defendants acts of aiding and abetting included, inter alia, all of
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the acts each defendant is alleged to have committed in furtherance of the conspiracy,
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common enterprise, and common course of conduct complained of herein.

REGISTERED MARKS
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8.
Imprimis is the owner of the following trademarks: GO DROPLESS!
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(U.S. Serial No. 96143543), GO DROPLESS! Logo (U.S. Serial No. 86143553),
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LESSDROPS (U.S. Serial No. 86497791), DROPLESS CATARACT THERAPY
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(U.S. Serial No. 86497090 ), and DROPLESS THERAPY (U.S. Serial No. 86497100)
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(collectively hereinafter referred to as the Imprimis marks). As a matter of law,
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Imprimis has the exclusive rights to the use of said marks and said trademarks are
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valid, subsisting, and in full force and effect.
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9.
Imprimis has extensively used the Imprimis marks in the advertisement
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and promotion of its products and has spent large sums of money to promote and
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advertise its products under the Imprimis marks. As a consequence, the Imprimis
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marks have become identified, in the United States and throughout the world, as
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signifying novel slow-releasing ophthalmic compositions containing triamcinolone
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acetate, moxifloxacin hydrochloride, triamcinolone acetate, and vancomycin and uses
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thereof in the treatment of acute infections of the eye and compositions for intraocular
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injection of therapeutically effective quantities of anti-bacterial and anti-inflammatory
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agents, as well as methods for fabricating the compositions and for using them in
intraocular injections. These agents and methods are highly useful for dropless
cataract surgery, something that is attractive to both eye surgeons and patients who
suffer from cataracts.
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Since 2014, Imprimis has sold more than $4.3 million worth of products
under the Imprimis marks in North America alone. Since that same year, Imprimis
has spent more than $4 million in the United States advertising and promoting the
Imprimis marks. In addition, over fifty (50) articles concerning Imprimis products
and mentioning the Imprimis marks have appeared recently in major ophthalmic
surgery center-targeted trade publications.
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The products manufactured, distributed and sold by Imprimis bearing the
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Imprimis marks have become well known in the United States and throughout the
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world both by users of such products and the public generally as being products of
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high quality having their exclusive origin with Imprimis.
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As a result of the recognized quality of Imprimis products and its
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extensive advertising and promotion of the Imprimis marks in the United States and
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throughout the world, Imprimis has developed an acquired valuable good will that is
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directly associated with the Imprimis marks.

DEFENDANTS WRONGFUL COURSE OF CONDUCT
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In addition, in 2012 and 2014, respectively, applications nos. US
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14/361,242 (priority to November 29, 2011) and 14/227,819 (priority to July 22,
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2013) were filed with the U.S. Patent and Trademark Office. Generally, these patent
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applications describe inventions for novel slow-releasing ophthalmic compositions
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containing triamcinolone acetate, moxifloxacin hydrochloride, triamcinolone acetate,
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and vancomycin and uses thereof in the treatment of acute infections of the eye and
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compositions for intraocular injection of therapeutically effective quantities of anti-
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bacterial and anti-inflammatory agents, as well as methods for fabricating the
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compositions and for using them in intraocular injections. Imprimis is the assignee of
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the rights asserted in these applications. The claimed inventions are highly useful for
dropless cataract surgery, something that is attractive to both eye surgeons and
patients who suffer from cataracts. Imprimis applications for patents published on
October 30, 2014, and January 22, 2015, respectively.
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Imprimis is also the owner of the Imprimis marks.
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Hooks is infringing all, or some substantial subset, of these intellectual
property rights. Hooks has been manufacturing, marketing, and selling copycat
Dropless formulations whose administration has been reported to have caused a
high incidence of endophthalmitis and other related problems in patients recovering
from cataract surgery in the area, thus creating confusion and harming the reputation
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of Imprimis inventions, to the result that some physicians who previously ordered
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from Imprimis (and who have monthly cataract cases in the hundreds) have stopped
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doing so. The confusion in the market includes the false belief that the goods Hooks
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is selling belong to, are sponsored by, or are affiliated with Imprimis.
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Hooks has been selling its products at a price substantially below the
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prices at which Imprimis products are offered, e.g., $6 per vial for Tri-Moxi. All of
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this is to the actual damage of Imprimis. Emails in our possession authored by
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Hooks personnel clearly demonstrate Hooks awareness of Imprimis rights.
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FIRST CLAIM FOR RELIEF
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(Infringement of Trademarks)
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(Against All Defendants)
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17.
Imprimis realleges and incorporates by reference as though fully set forth
in the preceding paragraphs 1 through 16.

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Imprimis owns the Imprimis marks. Under common law, Imprimis has
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the exclusive right to the use of said mark and said marks are valid, subsisting, and in
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full force and effect.
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19.
Beginning in 2014, Hooks began selling a similar product under the
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name Dropless.
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20.
Hooks use of the designation Dropless has caused, and is likely to
continue to cause, confusion on the part of those persons who purchase ophthalmic
compositions containing triamcinolone acetate, moxifloxacin hydrochloride,
triamcinolone acetate, and vancomycin for the purpose of treating infections of the
eye and compositions and for intraocular injection of therapeutically effective
quantities of anti-bacterial and anti-inflammatory agents. Such use has misled and
deceived, and will continue to mislead and deceive, the public as to the source and
sponsorship of Hooks products.
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Imprimis, however, not Hooks, is the senior user of the Imprimis marks,
with an actual date of first use antedating that claimed by Hooks. Imprimis is
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entitled to use, in interstate commerce, its marks in the goods identified in commerce
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and also on goods which, in the minds of the consuming public, are considered to be
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closely related to the goods listed in those registrations.
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Hooks continued use of the Dropless mark based on its alleged date
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of first use is likely to cause confusion, deception, and mistake in the minds of the
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consuming public, all to the detriment of Imprimis, its trademark reputation,
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goodwill, and business.
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For the foregoing reasons. Imprimis has been damaged by Hooks
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allegation of trademark rights superior to those of Imprimis, and will continue to be
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damaged, unless this Court intervenes.
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As the direct and proximate result of Hooks wrongful acts, Imprimis
has been damaged in an amount to be proven at trial

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The acts of infringement described above are willful, deliberate and in
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reckless disregard of Imprimiss rights. On this basis, Imprimis is entitled to an
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award of punitive damages in an amount sufficient to make an example of Hooks and
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to deter others from similar misconduct in the future.
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SECOND CLAIM FOR RELIEF
(Common Law Unfair Competition)
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This claim for relief arises under the common law of trademarks and
unfair competition.
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The use of the Dropless name and mark by defendants will lead to the
erroneous belief that Hooks products originate with, or are sponsored by, or are
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endorsed or licensed by Imprimis, or that Imprimis is somehow associated with the
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business or products of Hooks, thus enabling Hooks to misappropriate and unfairly
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trade upon Imprimis valuable goodwill and the renown of its mark, and subjecting
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Imprimis goodwill and reputation in the Imprimis marks to the hazards and perils to
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Hooks business activities (over which Imprimis has no control whatsoever).
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29.
The foregoing acts of Hooks constitute unfair competition and
infringement of Imprimis common law rights in the Imprimis marks.

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As a direct and proximate result of Hooks infringement and unfair
competition, Imprimis has been damaged in an amount to be proven at trial.
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THIRD CLAIM FOR RELIEF
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(Common Law Trademark and Trade Name Infringement)
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This count arises under the common law of trademarks and unfair
competition.
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Hooks use of the Imprimis marks is likely to cause purchasers to
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believe that Hooks business is part of Imprimis organization and is connected with
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it; that the products Hooks sells are those of Imprimis; and that Hooks is selling at
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the direction of Imprimis. In fact, none of these things is true.

34.
The foregoing acts of Hooks constitute trademark and trade name
infringement under the common law.

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As a direct and proximate result of Hooks infringements, Imprimis has
suffered, and will continue to suffer, irreparable injury unless and until the Court
enjoins Hooks from further infringements.
FOURTH CLAIM FOR RELIEF
(For Declaratory Relief under 28 U.S.C. 2201)
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36.
Imprimis realleges and incorporates by reference as though fully set
forth in the preceding paragraphs 1 through 35.

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There exists an actual controversy between the parties as to their rights
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and liabilities vis-a-vis one another and with respect to the Hooks mark and the
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Imprimis marks.
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38.
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Imprimis is entitled to a decree declaring the parties rights and
liabilities under the provisions of 28 U.S.C. 2201.
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FIFTH CLAIM FOR RELIEF
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(For Injunctive Relief)
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39.
Imprimis realleges and incorporates by reference as though fully set
forth in the preceding paragraphs 1 through 38.

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By reason of Hooks actions, Imprimis has been seriously and
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irreparably damaged; Imprimis business reputation has been injured; and Imprimis
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has suffered dilution of the distinctive quality of its marks and the Dropless name.
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Unless and until Hooks is restrained, Imprimis will continue to be so damaged until
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this action can proceed to final judgment.
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Hooks wrongful conduct, unless and until enjoined by order of this
Court, will cause great and irreparable injury to Imprimis. The goodwill is
established by Imprimis, and being tarnished by Hooks, is irreplaceable and cannot
be remedied adequately by recovery of money damages.
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Imprimis requests that this Court grant a temporary restraining order
and preliminary and permanent injunctions enjoining Hooks and its agents, servants,
and employees, and all persons acting under, in concert with, or for them from doing
the following:
(i)
from continuing the use of the infringements identified

hereinabove;
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from using in connection with its business, except as expressly
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authorized by Imprimis, any reproduction or colorable imitation of
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the word Dropless;

(iii)
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from making in any whatsoever any statement or representation or
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performing any act likely to lead the public or individual members
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of the public to believe that Hooks is in any manner, directly or
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indirectly, associated or connected with, or licensed, authorized or
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approved by Imprimis; and

(iv)
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from committing any other acts which infringes on Imprimis
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marks or constitutes unfair competition against Imprimis or its
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licensees.
PRAYER FOR RELIEF
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WHEREFORE, Imprimis prays for relief as follows:
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A.
That the Court award Imprimis such general and special damages as it
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has sustained by reason of Hooks infringements and unfair competition according to
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proof at trial and that, because of the willful nature of said infringements, the Court
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enter judgment for Imprimis for those damages and for three times the amount of
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those damages pursuant to section 35 of the Lanham Act, 15 U.S.C. 1117;
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B.
For judgment that Hooks has violated section 32 of the Lanham Act, 15
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U.S.C. 1114;
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C.
For judgment that Hooks has violated section 43(a) of the Lanham Act,
15 U.S.C. 1125(a);
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For judgment that Hooks has engaged in unfair competition under the
common law;
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For preliminary and permanent injunctions enjoining Hooks:

(i)
from continuing the use of the infringements identified

hereinabove;
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from using in connection with its business, except as expressly

authorized by Imprimis, any reproduction or colorable imitation of
the word Dropless;
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(iii)
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from making in any way whatsoever any statement or
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representation or performing any act likely to lead the public or
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individual members of the public to believe that Hooks is in any
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manner, directly or indirectly, associated or connected with, or
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licensed, authorized or approved by Imprimis;

(iv)
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from committing any other acts which infringes on Imprimis
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marks or constitutes unfair competition against Imprimis or its
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licensees;
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F.
That the Court order Hooks registrations, if any, should they be granted
by the USPTO, be abandoned in whole and order the register rectified accordingly;
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That the Court order Hooks to account and pay over to Imprimis all
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gains, profits and advantages derived by him from said trademark infringement and
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unfair competition;
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H.
That the Court order Hooks to deliver up and destroy all signs, devices,
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literature, advertising and other material bearing any of Imprimis marks or colorable
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imitations thereof;
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I.
That the Court assess Hooks Imprimis attorneys fees and award those
fees to Imprimis pursuant to section 35 of the Lanham Act, 15 U.S.C. 1117, given
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the willful nature of Hooks infringements;

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That the Court assess Hooks punitive damages because of the willful
nature of its infringements;

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That Hooks be ordered to file with the Court and serve on Imprimis
counsel, within thirty (30) days after service of any injunction(s) issued herein, or
within such other reasonable time as the Court shall direct, a report in writing and
under oath, setting forth in detail the manner in which Hooks has complied with any
such injunction(s);
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That the Court assess pre-judgment and post-judgment interest and costs
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of suit (including all disbursements and expenses of this action) against defendants,
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and award such interest and costs to Imprimis; and
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M.
That Imprimis have such other and further relief as this Court may deem
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just and proper.
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Respectfully submitted,
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Dated: June 15, 2015
LAWTON LAW FIRM

By:
s/Dan Lawton
Dan Lawton
Joseph C. Kracht
Attorneys for Plaintiff
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DEMAND FOR TRIAL BY JURY AND FOR SPEEDY HEARING

Plaintiff hereby demands a trial by jury as to all issues triable by jury. Plaintiff
also requests a speedy hearing of its claim for declaratory judgment pursuant to Fed.
R. Civ. P. 57.
Respectfully submitted,
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Dated: June 15, 2015
LAWTON LAW FIRM
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By:
s/Dan Lawton
Dan Lawton
Attorney for Plaintiff Imprimis
Pharmaceuticals, Inc.
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Case 1:15-cv-00948-WTL-DML Document 1 Filed 06/17/15 Page 1 of 12 PageID #: 1

Dan Lawton (State Bar No. 127342)

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF INDIANA

Plaintiff Imprimis Pharmaceuticals, Inc. (plaintiff or Imprimis), avers the

Lanham Act, 15 U.S.C. 1501 et seq.

This action for declaratory judgment and for infringement of trademarks

U.S.C. 2201 and Fed. R. Civ. P. 57.

Case 1:15-cv-00948-WTL-DML Document 1 Filed 06/17/15 Page 2 of 12 PageID #: 2

This Court has subject matter jurisdiction under 28 U.S.C. 1331,

1338(a) and (b), and 2201.

Venue is proper in this judicial district under pertinent law, including,

inter alia, 28 U.S.C. 1391(b), (c).

Imprimis is a corporation organized and existing under the laws of the

the State of California.

Defendant Hooks Apothecary, Inc., is a corporation organized and

business and is doing business in the State of Indiana. It is sometimes referred to

hereinafter as Hooks or defendant.

The true names and capacities, whether individual, corporate, associate,

representative or otherwise, of defendants Does 1 through 20, inclusive, are unknown

Imprimiss injuries herein alleged were legally or proximately caused by said

committed by any specifically named defendant, or by defendants generally, Imprimis

Case 1:15-cv-00948-WTL-DML Document 1 Filed 06/17/15 Page 3 of 12 PageID #: 3

defendants aided and abetted and rendered substantial assistance in the

accomplishment of the acts complained of herein. In taking the actions, as

common enterprise, and common course of conduct complained of herein.

Imprimis is the owner of the following trademarks: GO DROPLESS!

LESSDROPS (U.S. Serial No. 86497791), DROPLESS CATARACT THERAPY

(collectively hereinafter referred to as the Imprimis marks). As a matter of law,

valid, subsisting, and in full force and effect.

Imprimis has extensively used the Imprimis marks in the advertisement

signifying novel slow-releasing ophthalmic compositions containing triamcinolone

acetate, moxifloxacin hydrochloride, triamcinolone acetate, and vancomycin and uses

injection of therapeutically effective quantities of anti-bacterial and anti-inflammatory

Case 1:15-cv-00948-WTL-DML Document 1 Filed 06/17/15 Page 4 of 12 PageID #: 4

suffer from cataracts.

surgery center-targeted trade publications.

The products manufactured, distributed and sold by Imprimis bearing the

high quality having their exclusive origin with Imprimis.

As a result of the recognized quality of Imprimis products and its

directly associated with the Imprimis marks.

In addition, in 2012 and 2014, respectively, applications nos. US

applications describe inventions for novel slow-releasing ophthalmic compositions

containing triamcinolone acetate, moxifloxacin hydrochloride, triamcinolone acetate,

compositions for intraocular injection of therapeutically effective quantities of anti-

bacterial and anti-inflammatory agents, as well as methods for fabricating the

Case 1:15-cv-00948-WTL-DML Document 1 Filed 06/17/15 Page 5 of 12 PageID #: 5

October 30, 2014, and January 22, 2015, respectively.

Imprimis is also the owner of the Imprimis marks.

Hooks is infringing all, or some substantial subset, of these intellectual

Dropless formulations whose administration has been reported to have caused a

high incidence of endophthalmitis and other related problems in patients recovering

this is to the actual damage of Imprimis. Emails in our possession authored by

Hooks personnel clearly demonstrate Hooks awareness of Imprimis rights.

FIRST CLAIM FOR RELIEF

(Against All Defendants)

Imprimis realleges and incorporates by reference as though fully set forth

in the preceding paragraphs 1 through 16.

full force and effect.

Beginning in 2014, Hooks began selling a similar product under the

Hooks use of the designation Dropless has caused, and is likely to

Case 1:15-cv-00948-WTL-DML Document 1 Filed 06/17/15 Page 6 of 12 PageID #: 6

compositions containing triamcinolone acetate, moxifloxacin hydrochloride,