Complaint - Ernie Ball v. Thin The Herd Guitars (CDCA 2016)

1
2
3
4
5
6
Best Best & Krieger LLP

G. HENRY WELLES, Bar No. 157193
Henry.Welles@bbklaw.corn
74-760 Highway 111
Suite 200
Indian Wells, CA 92210
Telephone: (760) 568-2611
Telecopier: (760) 340-6698
Attorneys for Plaintiff
ERNIE BALL, INC., a California
corporation,
7
8
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
10
11
12

corporation,
Plaintiff,
13
14
v.
17
18
THIN THE HERD GUITARS, a

business entity form unknown
VAUGHAN EDWIN SHANNON,
an individual; and DOES 1-10,
inclusive.
Defendants.
19
20
COMPLAINT FOR:
1. Federal Trademark Infringement;
2. Federal Trade Dress Infringement;
15
16
Civil Action No. 5:16-cv-01237
3. Federal Trademark Dilution;

4. Federal Unfair Competition;
5. Common Law Trademark
Infringement;
6. California Statutory Unfair
Competition; and
7. Common Law Unfair Competition
21
22
23
24
25
26
27
28
79803.00002\7765800.1
COMPLAINT
For its Complaint Against Defendants THIN THE HERD GUITARS;
VAUGHAN EDWIN SHANNON; and DOES 1-10, Plaintiff ERNIE BALL, INC.
alleges as follows:
JURISDICTION AND VENUE
4
5
1.
This is an action for pecuniary and injunctive relief from violations of
the Lanham Act, arising under the laws of the United States 15 U.S.C. 1051 et
seq. and for pecuniary and injunctive relief for Trademark infringement under
California Law, Cal. B& P Code 14200 et seq. and for unfair competition under
the statutory and common laws of California under Cal. B&P Code 17200 et seq.,
10
11
B&P Code 14402, 14430, and California common law.

2.
This Court has jurisdiction over the subject matter of this action as
12
provided for in 28 U.S.C. 1331, 1337 and 1338; and 15 U.S.C. 1121. This
13
Court also has jurisdiction under the doctrine of supplemental jurisdiction under 28
14
U.S.C. 1367.
15
3.
Defendants are subject to personal jurisdiction in this Court because
16
Plaintiff is informed and believes they transact business in the State of California,
17
distributing, soliciting sales and selling infringing goods in the state of California,
18
as well as interstate. Plaintiff is informed and believes that events or omissions
19
giving rise to the claims occurred within this judicial district. Venue is proper in
20
this District under 28 U.S.C. 1391. Furthermore, Defendants have received a
21
cease and desist letter sent by counsel for the Plaintiff which referenced the
22
trademarks cited herein below and referenced the infringement of those trademark
23
with specific examples. The Defendants removed a few for sale listings but
24
otherwise refused to comply with a cease and desist letter and are therefore
25
intentionally infringing and intentionally causing harm to a California resident
26
corporation within this judicial district.
27
28
79803.00002\7765800.1
COMPLAINT
PARTIES
1
2
Plaintiff Ernie Ball, Inc. ("Ernie Ball") is, and at all times herein
mentioned was, a corporation organized and existing under the laws of the State of
California, having its principal place of business in Coachella, Riverside County,
California. Ernie Ball designs, manufactures, distributes, licenses, and sells electric
guitars and basses, and musical equipment and accessories.
BESTBEST&KRI EGERLLP
4.
5.
Defendant Thin The Herd Guitars is a business entity form unknown
located in Round Rock, Texas. Plaintiff is informed and believes that Thin The
Herd Guitars is merely a dba for defendant Vaughan Edward Shannon and is not a
10
separate and distinct entity. Thin The Herd Guitars advertises and sells product in
11
the United States, including through the Internet, and in California, including Los
12
Angeles County.
13
6.
Defendant Vaughan Edwin Shannon is an individual resident in Round
14
Rock Texas, and Plaintiff is informed and believes that Shannon owns operates and
15
uses Defendant Thin The Herd Guitars as a dba.
16
7.
Plaintiff is unaware of the true names and capacities of defendants
17
sued herein as DOES 1 through 10, and, therefore, sues these defendants by such
18
fictitious names. Plaintiff is informed and believes that each fictitiously sued
19
defendant was and is in some way responsible for the acts alleged in the Complaint.
20
8.
Plaintiff is further informed and believes that at all times herein
21
mentioned, each of the Defendants was the owner, agent, representative, and joint
22
venturer of each other, and were acting on behalf of such joint venture and/or
23
partnership, and within the course and scope of said agency, in performing the acts
24
as set forth in this Complaint. Plaintiff is informed and believes that, Defendants'
25
and each of their acts as hereinafter referred, were engaged in with the full
26
authorization and ratification of each other and each of them and were within the
27
scope and course of such agency, representation and joint venture.
28
79803.00002\7765800.1
COMPLAINT
FIRST CLAIM FOR RELIEF
Federal Trademark Infringement 15 U.S.C. ,*1114
9.
Plaintiff repeats and realleges every allegation set forth in paragraphs 1
through 8 herein.
10.
On or about January 22, 1991, U.S. Trademark Registration No.
1632297 was issued for a design trademark for the 4+2 tuner configuration for use
on musical instruments including guitar headstocks. First use in commerce was on
or about 1982. (A copy of the 1632297 trademark registration information is
attached as Exhibit "A".) Ernie Ball is the owner of the entire right, title and interest
10
in and to the registration and trademark for the 4+2 tuner configuration for guitar
11
headstocks. (The "4+2 Trademark").
12
11.
On or about July 13, 2010, U.S. Trademark Registration No. 3816107
13
was issued for a design trademark for a headstock shape for use on musical
14
instruments including guitar headstocks. First use in commerce was on or about
15
1982. (A copy of the 3816107 trademark registration information is attached as
16
Exhibit "B".) Ernie Ball is the owner of the entire right, title and interest in and to
17
the registration and design trademark for this trademarked headstock design shape.
18
(The "Headstock Trademark" ).
19
12.
On or about June 14, 2016, U.S. Trademark Serial Number 86883704
20
was published for opposition and is expected to issue in due course. The trademark
21
is the word mark "VALENTINE" for use on fretted instruments including guitars.
22
First use in commerce was on or about 2016. (A copy of the 86883704 Trademark
23
registration application information is attached as Exhibit "C".) Ernie Ball is the
24
licensee and owner of the right to use and protect this trademark. (The "Valentine
25
Trademark").
26
13.
On or about June 14, 1977, U.S. Trademark Registration No. 1067654
27
was issued for the word mark "MUSIC MAN" for use on fretted instruments
28
including guitars. First use in commerce was on or about 1975. (A copy of the
79803.00002`.7765800.1
-3-
COMPLAINT
1067654 trademark registration information is attached as Exhibit "D".) Ernie Ball
is the owner of the entire right, title and interest in and to the registration and
trademark for this word mark. (The "Music Man Trademark").
14.
Plaintiff is informed and believes that at all times relevant, and prior to
the infringement, Defendants are, and were, on actual notice, or at a minimum
constructive notice, that Plaintiffs above referenced trademarks are registered with
the United States Patent and Trademark Office and so protected, or in the case of
the Valentine mark, is a pending registration.
15.
At all material times herein, Plaintiff has been engaged in the
10
manufacture and interstate and international wholesale distribution of guitars and
11
musical instruments, and affiliated products, under the names and marks Ernie
12
Ball and Music Man, among others. These products feature the 4+2 Trademark,
13
the Headstock Trademark, the Music Man Trademark, and some of the guitars also
14
bear the Valentine trademark. Plaintiff has been in continuous use of these marks
15
since the date of first use alleged hereinabove.
16
16.
Plaintiff sells its trademarked products throughout the United States,
17
and overseas. Plaintiff's products are sold through approved dealerships in various
18
States and through Internet advertising nationally and internationally, and through
19
Internet websites. Plaintiffs trademarked products have been, and continue to be,
20
extensively advertised and sold nationally and internationally.
21
17.
Defendants have been and are advertising for sale, and Plaintiff is
22
informed and believes, selling, infringing products, which are guitars with the name
23
"Custom Build" on the headstocks. These include the following:
24
A.
Defendants listed a "Valentine" type guitar for sale on
25
Reverb.com, which infringes upon the Valentine Trademark, the 4+2 Trademark,
26
and the Headstock Shape Trademark. (Exhibit "E"). This same design guitar was
27
also listed for sale on the Thin The Herd website, with additional reference to and
28
infringement upon the Music Man Trademark. (Exhibit "F"). These particular
79803.00002\7765800.1
4-
COMPLAINT
advertising listings were withdrawn after a cease and desist letter was sent, but the
infringing items have not been surrendered to the Plaintiff and Plaintiff is informed
and believes this infringing model guitar is still offered for sale by some other
channel in trade. Models in different colors such as trans red and trans black were
also advertised. The Defendants have not accounted for their sales, profits, etc.
B.
Defendants have advertised for sale, and continue to advertise
for sale, a guitar identified as "Sky Blue PRS/ Telecaster Hybrid with Music Man
Headstock". (Exhibit "G"). Notably after receiving a cease and desist letter, the
Defendants removed the two photographs showing the infringing headstock but left
10
11
the guitar up for sale with the remaining two photos. (Exhibit "H").
18.
Defendants, and each of them, have infringed, and continue to
12
infringe; have induced and continue to induce others to infringe; and/or have
13
committed and continue to commit acts of contributory infringement of the
14
registered trademarks referenced hereinabove. Plaintiff is informed and believes
15
that Defendants' infringing activities in the United States and this District include
16
advertising, use, sale, and/or offer for sale, of guitars using Plaintiff's federally
17
registered and pending trademarks.
18
19.
Plaintiff is informed and believes that the Defendants' above alleged
19
infringing activities are conducted in and through interstate commerce, including
20
through the Internet, and as such are likely to cause confusion, mistake, or
21
deception among consumers as to the source, quality, and nature of Defendants'
22
goods relative to the Plaintiff.
23
20.
This Complaint is further notice to the Defendants of Plaintiffs
24
ownership of the above registered marks, and trade dress rights in its instruments,
25
and of Defendants' unfair competition, and is a notice and demand to Defendants to
26
immediately cease and desist their unlawful activities. Plaintiff is informed and
27
believes that Defendants refuse to comply.
28
79803.00002'7765800.1
COMPLAINT
Plaintiff is informed and believes and thereon alleges that, as a direct
and proximate result of the advantage accruing to Defendants' business from
Plaintiff's national and international advertising, sales, and consumer recognition,
and as a proximate result of confusion, deception, or mistake caused by Defendants'
wrongful advertising and sales of its infringing goods as alleged hereinabove, that
Defendants have made substantial profits, according to proof, but which Plaintiff is
informed and believes exceeds $10,000.
8
9
BESTBEST&KRIEGERLLP
21.
22.
10
11
and as a proximate result of confusion, deception, or mistake, caused by
12
Defendants' wrongful advertising and sales of its infringing goods as alleged
13
hereinabove, that Plaintiff has been deprived of substantial sales and/or license fees,
14
and deprived in some part of the value of its trademarks as a commercial asset, all
15
in an amount in excess of $10,000 and subject to proof.
16
23.
Plaintiff is informed and believes, and thereon alleges that, unless
17
restrained an enjoined by this Court, that Defendants will continue to infringe upon
18
Plaintiff's registered trademarks, as and in the manner alleged hereinabove, thus
19
engendering a multiplicity of judicial proceedings, and pecuniary compensation is
20
inadequate, and will not afford Plaintiff adequate relief for the ongoing damage to
21
its trademarks in the public perception. The Court should further order that all
22
infringing articles and advertising materials shall be delivered up by Defendants
23
and destroyed.
24
24.
Plaintiff is informed and believes that Defendants' infringement is
25
intentional, willful, and/or deliberate, and this case should be declared an
26
"exceptional case" pursuant to 15 U.S.C. 1117, and that Defendants should be
27
accordingly ordered to pay Plaintiff's attorney fees and costs, according to proof,
28
79803.00002\7765800.1
COMPLAINT
but which plaintiff is informed and believe are in excess of $5,000 at the time of
filing of the Complaint.
SECOND CLAIM FOR RELIEF
Federal Trade Dress Infringement 15 U.S.C. 1125
5
6
7
25.
through 8, and 10 through 24 herein.

26.
In addition to the Federally Registered Trademarks alleged
hereinabove, Plaintiff has trade dress rights in the design, shape, configuration, and
unique appearance of its guitars. In particular the Valentine Trademark is used on a
10
signature design guitar made for a famous musician in Maroon 5, and the entire
11
configuration and appearance of the guitar constitutes particular trade dress. The
12
guitar designs and elements thereof, such as the headstock shape, are non-
13
functional.
14
27.
Plaintiffs trademarks and trade dress in its musical instruments are
15
famous marks by virtue of the advertising and industry position of Plaintiff Ernie
16
Ball, and by the use of the products by present and former high profile musicians
17
such as Eddie Van Halen, John Petrucci, Steve Lukather, Steve LaRue, Randy
18
Jackson of American Idol, and James Valentine of Maroon 5.
19
28.
By virtue of extensive advertising and sales over many years, together
20
with consumer acceptance and recognition, Plaintiff's products have numerous
21
source indicating features (trade dress), including but not limited to the 4+2 tuner
22
configurations on the headstocks of the Ernie Ball Music Man guitars and the
23
headstock shape. Plaintiff's marks have become, and are, valuable assets
24
symbolizing Plaintiff, the quality of Plaintiff's goods and Plaintiffs goodwill.
25
Plaintiffs above alleged trade dress is inherently distinctive and/or has acquired
26
secondary-meaning.
27
28
29.
Defendants' guitars referenced hereinabove use the trade dress of the
Plaintiff and are effectively counterfeits emulating every aspect of the product in an
79803.00002\7765800.1
7-
COMPLAINT
attempt to be virtually identical but for labeling on the headstock, or at a minimum
are colorable copies of Plaintiff's trademarks and trade dress.
30.
Defendants have infringed, and continue to infringe; have induced and
continue to induce others to infringe; and/or have committed and continue to
commit acts of contributory infringement of the trade dress of Plaintiff's above
referenced musical instruments. Defendants' infringing activities in the United
States and this District include use, sale, and/or offer for sale, and/or licensing for
sale, of products that include and feature counterfeits, copies, and/or colorable
copies of instruments with the trade dress of the Plaintiff. This is misappropriation
10
11
and infringement of Plaintiff's trade-dress.

31.
12
infringing activities are conducted in and through interstate commerce, and as such
13
are likely to cause confusion, mistake, and/or deception among consumers as to the
14
source, quality, and nature of Defendants' goods, and is likely to lead to confusion
15
with the Plaintiff and its goods and licensees.
16
32.
17
18
Plaintiffs national and international advertising, sales, and consumer recognition,
19
20
21
hereinabove, that Defendants have made substantial profits, in an amount in excess
22
of $10,000, and subject to proof.
23
33.
24
25
26
27
28
79803.00002\7765800.1
8-
COMPLAINT
and deprived in some part of the value of its trademarks as commercial assets, all in
an amount in excess of $10,000, subject to proof.
restrained and enjoined by this Court, Defendants will continue to infringe upon
Plaintiffs trade dress in the above-referenced musical instruments, in the manner
alleged hereinabove, thus engendering a multiplicity of judicial proceedings, and
pecuniary compensation is inadequate, and will not afford Plaintiff adequate relief
for the ongoing damage to its trade dress in the public perception. The Court should
further order that all infringing articles and advertising materials shall be delivered
10
11
BESTBEST&KRIEGERLLP
34.
up by Defendants and destroyed.

35.
Plaintiff is informed and believes that Defendants' infringement is
12
13
"exceptional case" pursuant to 15 U.S.C. 1117, and that Defendants be ordered to
14
pay Plaintiffs attorney fees and costs, according to proof.
15
THIRD CLAIM FOR RELIEF
16
Federal Trademark Dilution 15 U.S.C. 4 1125
17
18
19
20
21
36.
through 8, 10 through 24, and 26 through 35 herein.

37.
Plaintiffs registered trademarks and trade dress, as alleged
hereinabove, are famous under the definition of 15 U.S.C. 1125.

38.
Defendants' use of the trademarks and trade dress of Plaintiffs musical
22
instruments as alleged hereinabove began after Plaintiffs marks and trade dress
23
became famous. Defendants' actions blur and tarnish the distinctive qualities of
24
Plaintiff's famous marks and trade dress. Defendants' have intentionally copied, and
25
continue to copy, Plaintiff's marks and trade dress by selling, distributing,
26
advertising, and offering for sale instruments with Plaintiff's trademarked 4+2 tuner
27
configurations on the headstocks and using the Plaintiff's trademarked headstock
28
shape, and use of the other trademarks and trade dress. Defendants' actions impugn
79803.00002\7765800.1
9-
COMPLAINT
the Plaintiffs reputation for excellence symbolized by Plaintiffs marks and trade
dress. Plaintiff is deprived of its lawful right to control the reputation for excellence
and high quality symbolized by its marks and trade dress by Defendants' actions.
39.
infringing activities are conducted in and through interstate commerce, and that
Defendants' conduct is causing the confusion and/or deception of the public that
Defendants' products are in some way sponsored by, affiliated with, or approved by
Plaintiff when they are not. Plaintiff is informed and believes that Defendants'
actions have resulted in actual harm to the Plaintiff.
10
40.
11
and proximate result of Defendants' actions in misappropriating and diluting
12
Plaintiffs marks and trade dress, and the resulting advantage accruing to
13
Defendants' business from Plaintiffs national and international advertising, sales,
14
and consumer recognition, and as a proximate result of confusion, deception, or
15
mistake, caused thereby, that Defendants have made substantial profits, in an
16
amount in excess of $10,000, and subject to proof.
17
41.
18
and proximate result of Defendants' actions in misappropriating and diluting
19
Plaintiffs marks and trade dress, and the resulting advantage accruing to
20
Defendants' business from Plaintiffs national and international advertising, sales,
21
and consumer recognition, and as a proximate result of confusion, deception, or
22
mistake, caused thereby, that Plaintiff has been deprived of substantial sales and/or
23
license fees, and deprived in some part of the value of its trademarks as commercial
24
assets, all in an amount in excess of $10,000, and subject to proof.
25
42.
26
restrained an enjoined by this Court, that Defendants will continue to
27
misappropriate and dilute Plaintiffs trademarks and trade dress referenced
28
hereinabove, in the manner alleged hereinabove, thus engendering a multiplicity of

79803.00002\7765800.1
10 -
COMPLAINT
judicial proceedings, and pecuniary compensation is inadequate, and will not afford
Plaintiff adequate relief for the ongoing damage to its trade dress in the public
perception. The Court should further order that all infringing articles and
advertising materials shall be delivered up by Defendants and destroyed.
43.
Plaintiff is informed and believes that Defendants' misappropriation
and dilution of Plaintiff's trademarks, and Defendants' trade dress infringement is
"exceptional case" pursuant to 15 U.S.C. 1117, and that Defendants should be
ordered to pay Plaintiff's attorney fees and costs, according to proof.
10
FOURTH CLAIM FOR RELIEF
11
Federal Unfair Competition 15 U.S.C. 1125
12
13
14
15
16
44.
through 8, 10 through 24, 26 through 35, and 37 through 44 herein.

45.
By the acts described hereinabove, Defendants have engaged in
ongoing unlawful and unfair business practices, in violation of 15 U.S.C. 1125.

46.
As a direct and proximate cause of Defendants' unlawful and unfair
17
business practices, Plaintiff is informed and believes it has suffered damages in
18
excess of $10,000 and subject to proof at trial, and that Defendants have made
19
substantial profits, in an amount in excess of $10,000, and subject to proof, which
20
Plaintiff is entitled to recover.
21
47.
22
restrained and enjoined by this Court, that Defendants will continue to engage in
23
unfair business practices as alleged hereinabove, thus engendering a multiplicity of
24
25
Plaintiff adequate relief for the ongoing damage. The Court should further order
26
that all infringing articles and advertising materials used in connection with the
27
herein alleged unfair competition shall be delivered up by Defendants and
28
destroyed.
79803.00002\7765800.1
11 -
COMPLAINT
Plaintiff is informed and believes that Defendants' unfair competition
is intentional, willful, and/or deliberate, and this case should be declared an
"exceptional case" pursuant to 15 U.S.C. 1117, and that Defendants be ordered to
pay Plaintiff's attorney fees and costs, according to proof.
FIFTH CLAIM FOR RELIEF
Common Law Trademark Infringement
7
8
9
10
11
BESTBEST&KRIEGERLLP
48.
49.
through 8, 10 through 24, 26 through 34, 36 through 43, and 45 through 48 herein.
50.
By the acts described hereinabove, Defendants have engaged in
ongoing trademark infringement, in violation of common law.

51.
12
infringing activities are likely to cause confusion, mistake, or deception among
13
consumers as to the source, quality, and nature of Defendants' goods, and is likely
14
to lead to consumer confusion with the Plaintiff and its goods and licensees.
15
52.
16
17
18
19
20
hereinabove, that Defendants have made substantial profits, in an amount in excess
21
of $10,000, and subject to proof.
22
53.
23
24
Plaintiffs national and international advertising, sales, and consumer recognition,
25
26
27
28
79803.00002\7765800 1
12 -
COMPLAINT
and deprived in some part of the value of its trademarks as commercial assets, all in
an amount believed to be in excess of $10,000, and subject to proof.
54.
restrained and enjoined by this Court that Defendants will continue to infringe
upon Plaintiffs trademarks and trade dress in the above referenced musical
instruments, in the manner alleged hereinabove, thus engendering a multiplicity of
Plaintiff adequate relief for the ongoing damage to its trade dress in the public
perception. The Court should further order that all infringing articles and
10
advertising materials shall be delivered up by Defendants and destroyed.
11
SIXTH CLAIM FOR RELIEF
12
California Statutory Unfair Competition B&P Code 17000, et seq.
13
55.
14
through 8, 10 through 24, 26 through 34, 36 through 43, 45 through 48, and 50
15
through 54 herein.
16
56.
By the acts described hereinabove, Defendants have engaged and are
17
engaging in ongoing activities which are an unfair competition against Plaintiff
18
under B&P Code 17000 et seq.
19
57.
Defendants' actions herein alleged are willful, intentional, malicious,
20
and designed to harm Plaintiff. As such, Plaintiff is entitled to the remedy of treble
21
damages pursuant to Cal. B&P Code 17082.
22
23
24
25
58.
Plaintiff is entitled to the remedy of recovery of attorney fees and costs
in this action pursuant to Cal. B&P Code 17082.

59.
Plaintiff is entitled to the remedy of an injunction and/or restitution
under Cal. B&P Code 17000 et. seq.
26
27
28
79803.00002\7765800.1
- 13 -
COMPLAINT
SEVENTH CLAIM FOR RELIEF
Common Law Unfair Competition
through 8, 10 through 24, 26 through 34, 36 through 43, 45 through 48, 50 through
54, and 56 through 59.
61.
Defendants' actions as alleged hereinabove constitute unfair
competition at common law, as a result of which Plaintiff has suffered, and will
continue to suffer damages, in excess of $20,000 and according to proof, as well as
irreparable injury.
10
BESTBEST&KRIEGERLLP
60.
62.
Defendants' conduct is believed to be willful and intentional and
11
malicious, and designed to harm Plaintiff, thus justifying an award of punitive
12
damages at trial, in an amount according to proof. Plaintiff is also entitled to
13
recover reasonable attorney fees and costs.

REQUESTED RELIEF
14
15
16
17
WHEREFORE, Plaintiff Ernie Ball prays for judgment against Defendants

and each of them, jointly and severally:
A.
That Defendants and their owners, officers, agents, servants,
18
employees, attorneys, parents, subsidiaries, affiliates, successors, and all others in
19
active concert or participation with them or acting on their behalf, be preliminarily
20
and permanently enjoined from importing, manufacturing, producing, distributing,
21
selling, advertising, or in any way dealing with musical instruments, including
22
guitars and bass guitars, that use any of the trademarks or trade dress of the Plaintiff
23
as set forth hereinabove; that they be enjoined from further infringement of
24
Plaintiffs registered and pending registration trademarks, trade dress, and common
25
law trademarks; that they be preliminarily and permanently enjoined from passing
26
off, palming off, or assisting in passing or palming off Defendants' goods as those
27
of the Plaintiff; and counterfeiting or assisting in counterfeiting of Plaintiffs goods;
28
and otherwise prohibited from pursuing or assisting with any and all acts of unfair
79803.00002\7765800.1
14 -
COMPLAINT
competition and trademark and trade dress infringement, as alleged in this
Complaint.
B.
1.
Provide Plaintiff with a complete inventory list of all colorable
products of Defendants using Plaintiff's trademarks and/or trade dress, including
the examples referenced herein and on the attached exhibits; and such product that
Defendants have ever dealt with in any way, and account to Plaintiff as trustee ex
maleficio for the entire production, import, distribution, and sales, and all profits
derived therefrom by the Defendants;

2.
10
INDIANWELLS
That the Court Order that Defendants be required to:
Provide Plaintiff with a complete inventory list of all colorable
11
products of Defendants using Plaintiff's trademarks and/or trade dress, including
12
the examples referenced herein and on the attached exhibits, whether already sold,
13
or on order, or in inventory, and such product that Defendants have ever dealt with
14
in any way, and account to Plaintiff as trustee ex maleficio for the entire
15
production, import, distribution, and sales, and all profits derived therefrom by the
16
Defendants;
3.
17
Use their best efforts to recall from trade any and all infringing
18
goods, and deliver up to Plaintiff for destruction all colorable copy guitars, product,
19
packages, literature, labels, advertising, and other materials of an infringing, false,
20
misleading, or unfair nature, as well as such product in Defendants' possession or
21
control; and
4.
22
File with this Court and serve on Plaintiff a report in writing
23
within three months from the date of judgment, under oath, setting forth in detail
24
the manner and form in which Defendants have complied with the terms of any
25
injunction entered by this Court.
26
27
C.
That Defendants be ordered to account for and disgorge and pay to
Plaintiff all profits derived by Defendants from their aforesaid acts, including acts
28
79803.00002\7765800.1
15 -
COMPLAINT
of infringement, dilution, and unfair competition, in an amount in excess of $10,000
and according to proof;

D.
That Defendants be ordered to pay damages resulting to Plaintiff by
the above alleged activities of infringement, dilution, and unfair competition, in an
amount in excess of the jurisdictional minimum of this Court, and according to
proof in excess of $10,000 and according to proof;

E.
7
8
That Damages on the Sixth Cause of Action should be trebled pursuant
to B&P Code 17000 et seq.;

F.
That this case be declared an "exceptional case' pursuant to 15 U.S.C.
10
1117, given Defendants' willful and deliberate infringement and unfair
11
competition, and that Defendants be ordered to pay Plaintiffs attorney fees and
12
costs, according to proof, but in excess of $5,000 at the time of filing the
13
Complaint;
14
15
16
17
18
G.
That Plaintiff be awarded punitive damages as and where warranted by
H.
That Plaintiff be awarded pre and post judgment interest as and where
law;
authorized by law; and

I.
That Plaintiff be granted such other and further relief, Including
19
injunctive relief, where and as the case may require, and the Court may deem just
20
and proper.
21
22
Dated: June 22, 2016
23
BEST
EG
4if
A&Pliprfr
By:
24
NRY WELLES
Attorneys for Plaintiff
corporation,
25
26
27
28
79803.00002 7765800 1
- 16 -
COMPLAINT

Complaint - Ernie Ball v. Thin The Herd Guitars (CDCA 2016)

Transféré par

Informations du document

Copyright

Formats disponibles

Partager ce document

Partager ou intégrer le document

Options de partage

Avez-vous trouvé ce document utile ?

Ce contenu est-il inapproprié ?

Droits d'auteur :

Formats disponibles

Complaint - Ernie Ball v. Thin The Herd Guitars (CDCA 2016)

Transféré par

Droits d'auteur :

Formats disponibles

1

Best Best & Krieger LLP

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

ERNIE BALL, INC., a California

THIN THE HERD GUITARS, a

Civil Action No. 5:16-cv-01237

3. Federal Trademark Dilution;

For its Complaint Against Defendants THIN THE HERD GUITARS;

This is an action for pecuniary and injunctive relief from violations of

B&P Code 14402, 14430, and California common law.

Defendants are subject to personal jurisdiction in this Court because

as well as interstate. Plaintiff is informed and believes that events or omissions

this District under 28 U.S.C. 1391. Furthermore, Defendants have received a

intentionally infringing and intentionally causing harm to a California resident

corporation within this judicial district.

California, having its principal place of business in Coachella, Riverside County,

guitars and basses, and musical equipment and accessories.

Defendant Thin The Herd Guitars is a business entity form unknown

Defendant Vaughan Edwin Shannon is an individual resident in Round

uses Defendant Thin The Herd Guitars as a dba.

Plaintiff is unaware of the true names and capacities of defendants

Plaintiff is further informed and believes that at all times herein

scope and course of such agency, representation and joint venture.

FIRST CLAIM FOR RELIEF

Federal Trademark Infringement 15 U.S.C. ,*1114

Plaintiff repeats and realleges every allegation set forth in paragraphs 1

On or about January 22, 1991, U.S. Trademark Registration No.

on musical instruments including guitar headstocks. First use in commerce was on

or about 1982. (A copy of the 1632297 trademark registration information is

headstocks. (The "4+2 Trademark").

On or about July 13, 2010, U.S. Trademark Registration No. 3816107

instruments including guitar headstocks. First use in commerce was on or about

1982. (A copy of the 3816107 trademark registration information is attached as

(The "Headstock Trademark" ).

On or about June 14, 2016, U.S. Trademark Serial Number 86883704

registration application information is attached as Exhibit "C".) Ernie Ball is the

On or about June 14, 1977, U.S. Trademark Registration No. 1067654

1067654 trademark registration information is attached as Exhibit "D".) Ernie Ball

trademark for this word mark. (The "Music Man Trademark").

the infringement, Defendants are, and were, on actual notice, or at a minimum

the Valentine mark, is a pending registration.

At all material times herein, Plaintiff has been engaged in the

manufacture and interstate and international wholesale distribution of guitars and

since the date of first use alleged hereinabove.

Plaintiff sells its trademarked products throughout the United States,

extensively advertised and sold nationally and internationally.

"Custom Build" on the headstocks. These include the following:

Defendants listed a "Valentine" type guitar for sale on

Defendants have advertised for sale, and continue to advertise

Defendants, and each of them, have infringed, and continue to

committed and continue to commit acts of contributory infringement of the

registered trademarks referenced hereinabove. Plaintiff is informed and believes

registered and pending trademarks.

Plaintiff is informed and believes that the Defendants' above alleged

infringing activities are conducted in and through interstate commerce, including

deception among consumers as to the source, quality, and nature of Defendants'

goods relative to the Plaintiff.

This Complaint is further notice to the Defendants of Plaintiffs

and of Defendants' unfair competition, and is a notice and demand to Defendants to

believes that Defendants refuse to comply.

Plaintiff is informed and believes and thereon alleges that, as a direct

and proximate result of the advantage accruing to Defendants' business from

Plaintiff's national and international advertising, sales, and consumer recognition,