Rubik S Brand v. Flambeau - Complaint

Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 1 of 36
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
RUBIKS BRAND LIMITED,
Plaintiff,
v. Case No. 17-cv-06559 (PGG)
FLAMBEAU, INC., DUNCAN TOYS JURY DEMANDED

COMPANY, TOYS R US, INC.,
Defendants.
DEFENDANT FLAMBEAU, INC.S ANSWER, AFFIRMATIVE DEFENSES,

AND COUNTERCLAIMS
Defendant, Flambeau, Inc. (Defendant), by its attorneys, Quarles & Brady LLP, herein
responds to the Complaint of Rubiks Brand Limited (Plaintiff). The paragraphs in this
Answer are numbered to correspond with the paragraph numbers in Plaintiffs Complaint. Any
and all allegations in Plaintiffs Complaint that are not specifically admitted here are hereby
denied.
NATURE OF THE ACTION
1. This is an action for: infringement of Plaintiffs registered trademark under 15

U.S.C. 1114; false designation of origin in violation of 15 U.S.C. 1125(a); dilution of
Plaintiffs trademark in violation of 15 U.S.C. 1125(c); injunctive relief and damages under 15
U.S.C. 1114, 1117, 1118, 1119 and 1125; violation of Section 360-1 of the New York
General Business Law; and violation of the common law of the State of New York.
RESPONSE: Defendant admits that Plaintiffs Complaint purports to state claims for
trademark infringement under 15 U.S.C. 1114, false designation of origin under 15 U.S.C.
1125(a), trademark dilution under 15 U.S.C. 1125(c), and violations of Section 360-1 of the
New York General Business Law and New York common law, but denies that the Complaint
states any valid claim for relief. Defendant admits that the Complaint requests injunctive relief
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and damages under 15 U.S.C. 1114, 1117, 1118, 1119 and 1125, but denies that Plaintiff is
entitled to any of its requested relief. Defendant denies any remaining allegations in
paragraph 1.
JURISDICTION AND VENUE
2. This Court has jurisdiction over the subject matter of this action pursuant to 15
U.S.C. 1121, 28 U.S.C. 1331 and 1338, and this Court has supplemental jurisdiction over
the New York State claims pursuant to 28 U.S.C. 1367(a). The New York State law claims
asserted herein are so related to the Lanham Act claims as to form part of the same case or
controversy.
RESPONSE: Defendant admits that, if valid, claims arising under Title 15 of the United
States Code would give rise to the Courts subject matter jurisdiction, but denies that the
Complaint states any valid claim for relief and denies that Plaintiff is entitled to any of its
requested relief. Defendant admits that, if valid, Plaintiffs state law claims, as alleged, would
give rise to the Courts pendant subject matter jurisdiction, but denies that the Complaint states
any valid claim for relief and denies that Plaintiff is entitled to any of its requested relief.
Defendant denies any remaining allegations in paragraph 2.
3. Upon information and belief, this Court has personal jurisdiction over the
Defendants because they regularly conduct business in the State of New York and/or because a
substantial part of the events giving rise to these claims occurred in this judicial district, and they
have minimum contacts with the forum.
RESPONSE: Defendant denies the allegations in paragraph 3.
4. Venue is properly founded in this judicial district pursuant to 28 U.S.C. 1391(b)

and (c) because Defendants are subject to personal jurisdiction within this judicial district and/or
because a substantial part of the events giving rise to these claims occurred in this judicial
district.
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PARTIES
5. Rubiks Brand Limited (Rubiks Brand or Plaintiff) is a limited liability

company organized under the laws of the United Kingdom, with its principal place of business at
7 Lambton Place, London, England W11 2SH.
RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to
the truth of the allegations in paragraph 5, and therefore denies those allegations.
6. Upon information and belief, Defendant Flambeau, Inc. is a corporation organized

under the laws of the State of Wisconsin, having its principal place of business at 801 Lynn
Avenue, Baraboo, Wisconsin 53913.
RESPONSE: Responding to paragraph 6 of the Complaint, Defendant admits that it is a
corporation organized under the laws of the State of Wisconsin, having its principal place of
business at 801 Lynn Avenue, Baraboo, Wisconsin 53913.
7. Upon information and belief, Defendant, Duncan Toys Company is a division of

Flambeau, Inc., having its principal place of business at 15981 Valplast Road, Middlefield, Ohio
44062.
RESPONSE: Defendant admits that Duncan Toys Company is a division of Defendant,
having an address at 15981 Valplast Road, Middlefield, Ohio 44062. Because Duncan Toys
Company is not a separate legal entity, but a division of Defendant, it is not a proper defendant in
this action. Accordingly, the parties filed a stipulation dismissing Duncan Toys Company from
this action on December 14, 2017, which the Court so-ordered that same day. (Dkt. 23).
Defendant denies any remaining allegations in paragraph 7.
8. Upon information and belief, Defendant Toys "R" Us, Inc. is a corporation
organized under the laws of the State of Delaware, having its principal place of business at One
Geoffrey Way, Wayne, New Jersey 07470. Defendant Toys "R" Us, Inc. is a wholly owned
subsidiary of Geoffrey LLC.
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PLAINTIFFS CUBE
9. Plaintiff produces the famous RUBIKS CUBE, a 3-D combination puzzle

invented in 1974 by the Hungarian professor of architecture Ern Rubik. As of June, 2017,
approximately 100 million RUBIKS CUBES have been sold worldwide. RUBIKS CUBE is the
best selling puzzle game of any kind in the world.
10. The RUBIKS CUBE puzzle has a distinctive appearance comprised of a black
cube having nine (9) square-shaped color patches on each of its six (s) faces, with the color
patches on each face being the same when the puzzle is in the start or solved position, and
consisting of the colors red, white, blue, green, yellow and orange (hereinafter referred to as the
RUBIKS Design Mark or the Mark). A photograph of Plaintiffs RUBIKS CUBE puzzle
Mark is set forth below:
the truth of the allegations in paragraph 10 and therefore denies those allegations.
11. The RUBIKS CUBE puzzle was launched in the United States in 1980 and has
been continuously sold throughout the country for the past thirty-seven (37) years. Plaintiff
estimates that more than 40 million RUBIKS CUBE puzzles have been sold in the United
States. As a result of the extensive sales and commercial success of Plaintiffs RUBIKS CUBE
puzzle, its distinctive and iconic appearance has been extremely well-known.
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12. Plaintiff has made substantial expenditures to advertise and promote its RUBIKS
CUBE puzzle through various means, including on the Internet. Attached hereto as Exhibit 1 is
a screen shot of the homepage of Plaintiffs website: https://www.rubiks.com/.
13. The distinctive appearance of the RUBIKS Design Mark immediately imparts to
purchasers and the public that the RUBIKS CUBE puzzles originate from Plaintiff.
14. The RUBIKS Design Mark symbolizes the extraordinary goodwill that is
associated with the Plaintiff and is Plaintiffs most valuable asset.
15. Plaintiff owns U.S. Trademark and Service Mark Registration Numbers 1,265,094
and 2,285,794 on the Principal Register for the RUBIKS Design Mark through mesne
assignments. These registrations are in full force and effect and are incontestable pursuant to
Section 15 of the Lanham Act, 15 U.S.C. 1065. A copy of these registrations is attached hereto
as Exhibits 2-A and 2-B.
RESPONSE: Defendant admits that what appears to be the online U.S. Patent &
Trademark Office TSDR records (as of August 28, 2017) for U.S. Trademark and Service Mark
Registration Numbers 1,265,094 and 2,285,794 are attached to the Complaint as Exhibits 2-A
and 2-B and that the TSDR records indicate that Plaintiff is the owner of the subject
registrations. Defendant admits that, if properly obtained and due to their age, these registrations
would have achieved incontestable status under 15 U.S.C. 1065. Defendant denies, however,
that the registrations are valid or that they cover protectable trademarks. Defendant lacks
knowledge or information sufficient to form a belief as to the truth of the remaining allegations
in paragraph 15 and therefore denies those allegations.
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16. Plaintiffs U.S. trademark registrations provide constructive notice of Plaintiffs

ownership of the RUBIKS Design Mark and its right to exclusive use of this mark throughout
the United States pursuant of Section 7(c) of the Lanham Act, 15 U.S.C. 1072.
DEFENDANT FLAMBEAUS ACTS OF ALLEGED INFRINGEMENT AND UNFAIR

COMPETITION
17. Upon information and belief, Defendant Flambeau through its DUNCAN TOYS
COMPANY division manufactures and sells yoyos, toys and puzzles on its website at
https://www.yo-yo.com/, to online retailers such as Amazon and to national retail store chains for
resale to consumers.
18. Upon information and belief, Flambeau manufactures and sells twist puzzle cubes
that are twist puzzles that copy and emulate the distinctive appearance of Plaintiffs puzzles
bearing its RUBIKS Design Mark to national retailers, including CVS. A photograph of a twist
puzzle cube sold by Defendant Flambeau to retailers is set forth below (Defendants Puzzle):
RESPONSE: Defendant admits that it sells a three-dimensional puzzle called the
Quick Cube. Defendant denies the remaining allegations in paragraph 18.
19. Defendant Flambeaus sale of twist cube puzzles that mimics the features and
overall appearance of the RUBIKS Design Mark has been and continues to be without
authorization or consent of Plaintiff.
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RESPONSE: Defendant admits that it has not received authorization or consent from
Plaintiff to sell the Quick Cube, but denies that authorization or consent is required. Defendant
denies the remaining allegations in paragraph 19.
20. In view of the fame and extraordinary success of the RUBIKS CUBE, minor
changes to Defendant Flambeaus product such as changing black to white and slight rounding of
the corners do not negate a likelihood of confusion. Instead, the public is likely to believe that
Defendants' Puzzle is a version of Plaintiffs famous RUBIKS CUBE.
21. Defendant Flambeau has had actual notice of Plaintiffs incontestable U.S.
trademark registrations and the fact that Plaintiff possesses the exclusive right to use the
RUBIKs Design Mark throughout the United States. Upon information and belief Flambeau is
aware that the enormous and highly valuable goodwill symbolized by the Mark belongs to
Plaintiff.
DEFENDANT TOYS R USS ACT OF ALLEGED INFRINGEMENT AND UNFAIR

COMPETITION
22. Upon information and belief, Defendant Toys "R" Us owns and operates a chain
of retail toy stores in the northeastern region of the United States and an Internet website located
at www.toysrus.com that sells toys, games and other child oriented products to consumers.
23. Upon and information and belief, Defendant Toys "R" Us has in the past
purchased and continues to purchase Defendants Puzzle for retail sale in its stores. A
photograph of the infringing twist puzzle purchased at a Toys "R" Us store is attached as Exhibit
3.
RESPONSE: Defendant admits that Toys R Us, Inc. has purchased and continues to
purchase the Quick Cube. Defendant admits that what appears to be a photograph of its Quick
Cube is attached to the Complaint as Exhibit 3. Defendant denies that its Quick Cube infringes
any of Plaintiffs purported trademark rights. Defendant lacks knowledge or information
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sufficient to form a belief as to the truth of the remaining allegations in paragraph 23 and
therefore denies those allegations.
24. Defendant Toys "R" Uss sale of twist puzzles that are highly similar in
appearance to the RUBIKS Design Mark has been and continues to be without the authorization
or consent of Plaintiff.
RESPONSE: Defendant denies that Defendant Toys "R" Us sells twist puzzles that are
highly similar in appearance to Plaintiffs puzzle cube design. Defendant lacks knowledge or
information sufficient to form a belief as to the truth of the remaining allegations in paragraph 24
and therefore denies those allegations.
25. Defendants sale of twist puzzles bearing a spurious copy of the federally
registered RUBIKS Design Mark is likely to cause confusion, mistake, or deception as to the
source, sponsorship of Defendants Puzzles or affiliation between Defendants and Plaintiff,
causing irreparable harm to Plaintiffs reputation and the goodwill which is symbolized by the
RUBIKS Design Mark.
26. As a result of Defendants use of a spurious version of Plaintiffs federally

registered RUBIKS Design Mark, consumers who expect to receive Plaintiffs RUBIKS CUBE
puzzle, for which Plaintiff has developed a national and international reputation, will be
disappointed when using Defendants imitation twist puzzle cube. This will cause irreparable
harm to Plaintiffs reputation and the goodwill which is symbolized by the RUBIKS Design
Mark.
27. By virtue of Defendants unauthorized use of the RUBIKS Design Mark,

Plaintiff is unable to exercise quality control over twist puzzle cube sold by Defendants which
contain a spurious copy of Plaintiffs well-known Mark.
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FIRST CLAIM FOR RELIEF
TRADEMARK INFRINGEMENT UNDER LANHAM ACT 15 U.S.C. 1114(1)(a)
28. The allegations set forth above in paragraphs 1 through 26 hereof are adopted and
incorporated by reference as if fully set forth herein.
RESPONSE: Responding to paragraph 28, Defendant incorporates by reference its
responses to the allegations set forth in the paragraphs of the Complaint recited above as if fully
set forth herein.
29. Plaintiff is the record owner of U.S. Trademark and Service Mark Registration
Numbers 1,265,094 and 2,285,794, which are valid, subsisting and incontestable.
RESPONSE: Defendant admits that Plaintiff appears as the owner in the online U.S.
Patent & Trademark Office TSDR records (as of August 28, 2017) for U.S. Trademark and
Service Mark Registration Numbers 1,265,094 and 2,285,794. Defendant admits that, if properly
obtained and due to their age, these registrations would have achieved incontestable status.
Defendant denies, however, that the registrations are valid or that they cover protectable
trademarks. Defendant lacks knowledge or information sufficient to form a belief as to the truth
of the remaining allegations in paragraph 29 and therefore denies those allegations.
30. Defendants, without authorization from Plaintiff, have used and are continuing to
use the spurious copy of the RUBIKS Design Mark in connection with their twist puzzle cubes.
RESPONSE: Defendant admits that it has not received authorization or consent from
Plaintiff to sell the Quick Cube, but denies that authorization or consent is required. Defendant
denies the remaining allegations in paragraph 30.
31. Defendants sale of twist puzzles bearing the spurious copy of the RUBIKS
Design Mark is likely to cause confusion, or to cause mistake, or to deceive consumers into
believing that Defendants products are genuine, authorized or approved by Plaintiff.
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32. Defendants conduct constitutes trademark infringement in violation of 15 U.S.C.

1114(1)(a).
33. Upon information and belief, Defendants misappropriation and infringement of

Plaintiffs Mark was and is willful and intentional.
34. Upon informant and belief, by its acts, Defendants have made and will continue to
make substantial profits and gains to which they are not entitled in law or equity.
35. Upon information and belief, Defendants intend to continue their infringing acts,
and will continue to infringe Plaintiffs registered RUBIKS Design Mark, unless restrained by
this Court.
36. Defendants conduct has caused, and will continue to cause, irreparable injury to
Plaintiff. Plaintiff has no adequate remedy at law.
SECOND CLAIM FOR RELIEF
FALSE DESIGNATION OF ORIGIN 15 U.S.C. 1125(a)
set forth herein.
38. Defendants advertisement, promotion, and use of a spurious copy of Plaintiffs

RUBIKS Design Mark is intended and is likely to confuse, mislead, deceive consumers, the
public, and the trade as to the origin, source, sponsorship, or affiliation of Defendants twist
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puzzle cube, and is likely to cause the public to believe erroneously that such products have been
authorized, sponsored, approved, endorsed, or licensed by Plaintiff, or that Plaintiff is in some
way affiliated with Defendants.
39. Defendants acts constitute false designation of origin and false misleading
description and representation of fact, all in violation of 15 U.S.C. 1125(a).
40. Upon information and belief, Defendants misappropriation and infringement of

Plaintiffs RUBIKS Design Mark was and is willful and intentional.
41. Upon information and belief, by their acts, Defendants have made and will
continue to make substantial profits and gains to which they are not entitled in law or equity.
42. Upon information and belief, Defendants intend to continue their infringing acts,
and will continue to infringe Plaintiffs RUBIKS Design Mark, unless restrained by this Court.
THIRD CLAIM FOR RELIEF
TRADEMARK DILUTION UNDLER LANHAM ACT 15 U.S.C. 1125(c)
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set forth herein.
45. Plaintiff is the exclusive owner of the RUBIKS Design Mark in the United
States.
46. Plaintiffs RUBIKS Design Mark is distinctive and has been used for many years
and has achieved enormous and widespread public recognition.
47. Plaintiffs RUBIKS Design Mark is famous within the meaning of 15 U.S.C.
1125(c).
48. Defendants advertisement, promotion, distribution, and sale of twist puzzle cubes
under the Plaintiffs RUBIKS Design Mark, without authorization from Plaintiff, is likely to
dilute the distinctive quality of the mark and decrease the capacity of the Mark to identify and
distinguish Plaintiffs products.
49. Defendants have intentionally and willfully diluted and continue to dilute the
distinctive quality of Plaintiffs RUBIKS Design Mark in violation of 15 U.S.C. 1125(c).
50. Upon information and belief, by their acts, Defendants have made and will
continue to make substantial profits and gains to which they are not entitled in law or equity.
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51. Upon information and belief, Defendants intend to and will continue to dilute
Plaintiffs Mark, unless restrained by this Court.
FOURTH CLAIM FOR RELIEF
UNFAIR BUSINESS PRACTICE UNDER N.Y. GEN. BUS. LAW 360-1
set forth herein.
54. Plaintiffs RUBIKS Design Mark is distinctive and has acquired secondary
meaning in the marketplace, and is owned by Plaintiff.
55. Defendants acts are likely to dilute, have diluted, and, unless enjoined by this
Court, will continue to dilute the distinctive quality of Plaintiffs Mark.
56. As a direct and proximate result of Defendants willful and wonton acts and
conduct, Plaintiffs reputation and goodwill have been damaged.
57. Defendants acts and conduct have caused irreparable harm to Plaintiff and to
Plaintiffs reputation and goodwill, and will continue to do so unless enjoined by this Court.
Plaintiff has no adequate remedy at law.
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FIFTH CLAIM FOR RELIEF
COMMON LAW TRADEMARK INFRINGEMENT
set forth herein.
59. Defendants activities constitute trademark infringement under the common law
of the State of New York.
60. Defendants use of Plaintiffs RUBIKS Design Mark, unless restrained by this
Court, will lead the public to believe that there is a connection or association between
Defendants and Plaintiff, when in fact, there is none.
61. Defendants acts and conduct have caused irreparable harm to Plaintiff and to
Plaintiffs reputation and goodwill, and will continue to do so unless enjoined by this Court.
Plaintiff has no adequate remedy at law.
AFFIRMATIVE DEFENSES
Without assuming any burden that it would not otherwise bear under applicable law and
rules, and specifically reserving its right to assert additional affirmative defenses as additional
information or materials become available through discovery or otherwise, Defendant hereby
asserts the following affirmative defenses.
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First Affirmative Defense

Lack of Personal Jurisdiction
1. Defendant incorporates by reference its responses to the allegations set forth in
the paragraphs of the Complaint recited above as if fully set forth herein.
2. The Court lacks personal jurisdiction over Defendant in part because Defendant
has no physical presence in the State of New York and does not have sufficient minimum
contacts with the State of New York, and thus fundamental fairness should prevent Defendant
from having to defend itself in the State of New York.
Second Affirmative Defense

Improper Venue
the Complaint as well as its affirmative defense allegations set forth above as if fully set forth
herein.
4. This District is not the proper venue to hear this case in part because the facts of
the case have no relationship to the State of the New York and the Court lacks personal
jurisdiction over Defendant.
Third Affirmative Defense

Failure to State a Claim
herein.
6. Plaintiff has failed to state a claim upon which relief can be granted in part
because all of Plaintiffs claims are premised on the flawed theory that functional features are
entitled to trademark protection, which contravenes trademark law.
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Fourth Affirmative Defense

Invalidity - Utilitarian Functionality
herein.
8. Plaintiffs alleged trademarks are not entitled to trademark protection because
they are utilitarian functional.
9. The features of Plaintiffs alleged trademarks (e.g., a black cube having nine
color patches on each of its six faces) are essential to the use and purpose of Plaintiffs puzzle
cube (i.e., solving the cube).
10. Plaintiffs alleged registered trademarks consist of a black cube having nine
color patches on each of its six faces with the color patches on each face being the same and
consisting of the colors red, white, blue, green, yellow, and orange. (U.S. Registration No.
1,265,094; U.S. Registration No. 2,285,794).
11. Plaintiff describes its puzzle cube on its website as a solid cube that can twist[]
and turn[] but still not break or fall apart. A true and correct copy of a webpage from
Plaintiffs website titled The History of the Rubiks Cube is attached to this Answer as
Exhibit 1.
12. Plaintiff describes the colors of the puzzle cube on its website as the means of
scrambling and solving the puzzle: With colorful stickers on its sides, the Cube [can be]
scrambled and then solved. (Exhibit 1).
13. Plaintiff shows its puzzle cube being scrambled and solved by color on its online
store:
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A true and correct copy of a webpage from Plaintiffs website titled Store - Cubes is attached
to this Answer as Exhibit 2.
14. Plaintiff provides Solving Guides on its website that instruct players to use the
puzzle cubes colors to solve the puzzle. A true and correct copy of a webpage from Plaintiffs
website titled How to solve the 3x3 Rubiks cube? is attached to this Answer as Exhibit 3.
15. Plaintiff instructs: [C]reat[e] a white cross on the white face of the cube and
then solv[e] the white corners. (Exhibit 3).
16. The features of Plaintiffs alleged trademarks (e.g., a black cube having nine
color patches on each of its six faces) also constitute an improvement in the operation of
Rubiks puzzle cube (i.e., solving the cube quickly).
17. Plaintiff promotes its puzzle cube on its website for Speed Cubing, a
competitive activity in which individuals race to solve the puzzle cube. A true and correct copy
of a webpage from Plaintiffs website titled Speed Cubing is attached to this Answer as
Exhibit 4.
18. Plaintiff describes the colors of the puzzle cube on its website as the means of
scrambling and solving the puzzle quickly: We have developed the fastest Rubiks Cube yet!
The traditional stickers have been replaced with plastic; which means no fading (Exhibit 4).
19. Further, the features of Plaintiffs alleged trademarks are the subject of utility
patents.
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20. Prior to Plaintiffs predecessors seeking registration of their trademarks related to
Plaintiffs puzzle cube, Ern Rubik and his assignees sought and obtained patent protection for
his three-dimensional puzzle cube and other like-inventions.
21. Per the European Patent Office, Hungarian Patent No. 170062 (the 062
Hungarian Patent) was filed for on January 30, 1975 and published on March 28, 1977. The
062 Hungarian Patent is attached to this Answer as Exhibit 5 and discloses a three-dimensional
puzzle cube that can twist and turn:
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22. Per the European Patent Office, Belgian Patent No. 887875 (the 875 Belgian
Patent) was filed for on March 10, 1981, published on July 1, 1981, and claims priority to the
062 Hungarian Patent. The 875 Belgian Patent is attached to this Answer as Exhibit 6 and
discloses a three-dimensional puzzle cube that can twist and turn:
23. U.S. Patent No. 4,378,116 (the 116 U.S. Patent) was filed on August 3, 1981
and issued on March 29, 1983. The 116 U.S. Patent is attached to this Answer as Exhibit 7 and
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discloses a spatial logical toy. The 116 U.S. Patent similarly discloses a three-dimensional
puzzle cube with elements in the shape of small cubes that may be colored to assemble them in a
predetermined order:
The toy elements, in the shape of small cubes, may be turned along the spatial
axes of the cube by means of connecting elements arranged in the geometric
center on the large cube. The surfaces of the small cubes forming each surface of
the large cube are colored or carry numbers, figures or any other symbols which
can be assembled into the predetermined logical order or sequence by
simultaneously rotating the nine toy elements forming the surfaces of the large
cube.
24. Accordingly, Plaintiffs puzzle cube design is utilitarian functional and thus is not
entitled to trademark protection.
Fifth Affirmative Defense

Invalidity - Aesthetic Functionality
herein.
26. Plaintiffs alleged trademarks are not entitled to trademark protection because
they are aesthetically functional.
27. Plaintiffs alleged trademark rights unduly confer a significant benefit by
restricting competition in the puzzle cube market because, if enforceable, they cannot practically
be duplicated by the use of alternative designs.
28. For example, a puzzle cube cannot be scrambled or solved without having smaller
internal cubes that can twist and turn, like those covered by Plaintiffs alleged trademarks.
29. Similarly, a puzzle cube cannot be scrambled or solved, or at least not as quickly,
without matching color patches on each side of the cube, like those covered by Plaintiffs alleged
trademarks.
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30. Accordingly, Plaintiffs puzzle cube design has aesthetic functionality and thus is
not entitled to trademark protection.
Sixth Affirmative Defense

Invalidity - Lack of Enforcement / Abandonment
herein.
32. Plaintiffs puzzle cube design is not entitled to protection because Plaintiff has
failed to enforce its trademark rights in the design.
33. A search on Amazon.com for puzzle cube yields numerous puzzle cubes for
sale that consist of a black cube with right-angled smaller internal cubes that can twist and turn
with matching color patches, including:
KickFire Kube Speed Cube INIL 3x3x3order cube puzzle
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ShengShou 3x3x3 Puzzle Cube Speed Cube 3x3
The Amazon.com pages for these example puzzle cubes are attached to this Answer as Exhibits
8-11.
34. Upon information and belief, Plaintiff has failed to enforce its alleged trademark
rights against the above puzzle cubes and others. Thus, by acts of omission, Plaintiff has caused
its purported puzzle cube design to become the generic designation for the goods on or in
connection with which it is used or otherwise lose its significance as a mark.
35. Accordingly, because Plaintiff has failed to enforce its alleged trademark rights in
its puzzle cube design, Plaintiff has abandoned those rights and thus cannot assert those rights
here.
Seventh Affirmative Defense

Invalidity - Lack of Distinctiveness
herein.
37. Plaintiffs puzzle cube design is not entitled to trademark protection because
whatever distinctiveness the design may once have had has been lost.
38. As set forth above, Plaintiff has allowed dozens of other puzzle cubes to saturate
the puzzle cube market.

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39. Accordingly, consumers do not recognize Plaintiff as the sole source of puzzle
cubes. That is, Plaintiffs purported puzzle cube design has come to refer to puzzle cubes
themselves rather than the source of puzzle cubes; thus losing its distinctive significance as an
identification of source (a/k/a mark).
40. Because the Plaintiff puzzle cube design is not source identifying, it is not
distinctive and thus not entitled to trademark protection.
Eighth Affirmative Defense

Non-Infringement
herein.
42. There is no likelihood of confusion between Defendants Quick Cube and
Plaintiffs alleged puzzle cube design, in part because the puzzle cubes are not similar in
appearance and the parties use their house brands in promoting and selling their respective
goods.
43. Defendants Quick Cube is not confusingly similar in appearance to Plaintiffs
puzzle cube. By non-limiting example, Defendants Quick Cube is a white cube, while
Plaintiffs puzzle cube is black. Defendants Quick Cube has rounded edges for the smaller
internal components and color patches, while Plaintiffs puzzle cube has square edges.
Accordingly, consumers are not likely to confuse the Quick Cube for the Plaintiffs puzzle cube.
44. Moreover, both Plaintiff and Defendant prominently feature their house brands
when promoting and selling their respective puzzle cubes. Plaintiffs puzzle cubes bear the
Rubiks house brand on the toy itself. A true and correct copy of a webpage from Plaintiffs
online Store is attached to this Answer as Exhibit 12.
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45. Similarly, Defendants puzzle cubes are sold in packaging that bears the
Duncan house brand. A true and correct copy of a photograph of Defendants Quick Cube in
its packaging is attached to this Answer as Exhibit 13. Accordingly, consumers are put on notice
that the Quick Cube and Plaintiffs puzzle cube come from different sources.
46. In addition, Plaintiff asserts U.S. Registration No. 2,285,794 (the 794
Registration), which lists licensing of intellectual property for its services. Defendant does
not license intellectual property. Accordingly, assertion of the 794 Registration against
Defendant is frivolous on its face.
47. Because the Quick Cube is not likely to cause consumer confusion with Plaintiffs
alleged puzzle cube design, Defendant does not infringe and has not infringed Plaintiffs
purported trademark rights.
Ninth Affirmative Defense

Laches
herein.
49. Defendant began manufacturing and selling the Quick Cube in March 2016.
50. Upon information and belief, Plaintiff became aware of the Quick Cube soon after
its entrance into the puzzle cube market.
51. Despite having knowledge of the Quick Cube, Plaintiff inexcusably delayed in
bringing this suit.
52. During the period of Plaintiffs delay in bringing suit, Defendant reasonably relied
on Plaintiffs delay by investing substantial resources in marketing and promoting the Quick
Cube. Also during the period of Plaintiffs delay, relevant documents have or may have been
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discarded, the memories of relevant persons have or may have faded and/or Defendant may no
longer have access to those persons. Therefore, Defendant will be prejudiced if Plaintiff is now
permitted to assert its purported trademark rights.
53. Accordingly, Plaintiffs claims are barred by the doctrine of laches.
Tenth Affirmative Defense

Estoppel
herein.
55. In prosecuting its registered trademarks, Plaintiffs predecessors-in-interest made
representations to the U.S. Patent & Trademark Office (USPTO) regarding the limited scope
of the trademark protection sought, that the Office relied upon in allowing the registrations.
56. Accordingly, Plaintiff is estopped from claiming that Defendant violates
Plaintiffs alleged trademark rights, in part based on Plaintiffs representations to the USPTO.
Eleventh Affirmative Defense

Fraud on the USPTO
herein.
58. Plaintiffs predecessors-in-interest fraudulently obtained the U.S. Registration No.
1,265,094 (the `094 Registration). The full file history of the 094 Registration is attached to
this Answer as Exhibit 14.
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Patent Applications
59. Upon information and belief, Ern Rubik invented various three-dimensional
puzzle cubes in the mid-to-late 1970s. Mr. Rubik and his assigns began applying for patents on
the puzzle cubes shortly thereafter (Rubiks Patents).
60. Mr. Rubik and his assigns filed for a patent on a puzzle cube in Hungary on
January 30, 1975. Hungarian Patent No. 170062 (the 062 Hungarian Patent) published on
March 28, 1977 and disclosed a three-dimensional puzzle cube that can twist and turn.
61. Mr. Rubik and his assigns filed for a patent on a puzzle cube in Belgium on
March 10, 1981. Belgian Patent No. 887875 (the 875 Belgian Patent) published on July 1,
1981 and disclosed a three-dimensional puzzle cube that can twist and turn.
62. Mr. Rubik and his assigns filed for a patent on a puzzle cube in the United States
on August 3, 1981. U.S. Patent No. 4,378,116 (the 116 U.S. Patent) issued on March 29,
1983 and disclosed a three-dimensional puzzle cube that can twist and turn and further that color
may be used on the cube to logically order the toy elements and thus covered the goods in the
puzzle cube design application.
Licensing Agreements
63. Upon information and belief, prior to or during the year 1981, Ideal Toy
Corporation (Ideal) entered into an exclusive licensing agreement with Mr. Rubik and/or his
assigns to market and sell the puzzle cubes claimed in the Rubiks Patents.
64. Upon information and belief, Ideal was aware of the patent applications that gave
rise to the 062 Hungarian Patent, the 875 Belgian Patent, and the 116 U.S. Patent prior to
entering into its exclusive licensing agreement.
26
65. Upon information and belief, Ideal was aware of the 062 Hungarian Patent, the
875 Belgian Patent, and the 116 U.S. Patent upon their publication and/or issuance.
Trademark Application
66. Ideal filed U.S. Application No. 73/358,308 (the 308 Application) with the
U.S. Patent & Trademark Office (USPTO) to register a puzzle cube design as a trademark on
April 5, 1982.
67. On July 27, 1982, the trademark examining attorney (Examiner) initially
refused registration because the design sought to be registered appears to be the configuration of
applicants goods and the configuration appears to be primarily functional in nature.
68. On September 3, 1982, Ideal traversed the refusal, claiming the mere fact that the
mark consists of the design of an article does not mean that design cannot function to identify the
source of the article and be protected as a trademark.
69. On September 20, 1982, the USPTO recorded Ideals assignment of the 308
Application to CBS, Inc., (CBS).
70. Upon information and belief, Ideal assigned its licensing agreement with Mr.
Rubik and/or his assigns to CBS.
71. Upon information and belief, CBS was aware of the patent applications that gave
rise to the 062 Hungarian Patent, the 875 Belgian Patent, and the 116 U.S. Patent prior to
receiving assignment of the 308 Application.
72. Upon information and belief, CBS was aware of the 062 Hungarian Patent, the
875 Belgian Patent, and the 116 U.S. Patent upon their publication and/or issuance.
73. In a non-final office action dated January 17, 1983, the Examiner reiterated that
[r]egistration has been refused on the grounds that the design sought to be registered appears to
27
be the configuration of the applicants goods and the configuration appears to be primarily
functional in nature.
74. In the January 17, 1983 non-final office action, the Examiner ordered that
Applicant must set forth the registration numbers of any patents which cover the goods in the
application.
75. CBS responded to the January 17, 1983 non-final office action on May 25, 1983.
76. Rather than providing the Examiner with the relevant patent registration numbers
as requested, CBS cited and quoted from two court decisions that reportedly found the puzzle
cube design non-functional.
77. CBS quoted the following passage from an ITC opinion that mistakenly found
that there were no utility patents disclosing the utilitarian advantage of the puzzle cube design:
We determine that the overall appearance of Ideals Rubiks Cube is

nonfunctional. When the Morton-Norwich criteria are examined, it is clear that
the design of Rubiks Cube is not functional. There are no utility patents
disclosing the utilitarian advantage of the design sought to be registered as a
trademark. In fact, the original Hungarian patent covering Professor Rubiks
invention itself suggests the use of illustrations or numbers rather than colors.
Ideals advertising does not tout the utilitarian advantages of its design. There are
also numerous alternatives available to the design adopted by Ideal including
colored circles, triangles, or a clear plastic-based cube. Finally, there are no
indications that Ideals particular design results from a comparatively simple or
cheap method of manufacturing. We, therefore, conclude that a trademark in the
design of Ideals Rubiks Cube would not impair competition in the United States
by depriving other companies of various alternatives.
78. The above quote refers to the 062 Hungarian Patent, but does not list it by
number. It further does not mention the 875 Belgian Patent or the 116 U.S. Patent at all.
79. CBS told the Examiner in reference to the two disclosed court decisions that
these decisions are determinative as to the issue of non-functionality.
28
80. Based on the above representations, the Examiner approved the puzzle cube
design (of the 308 Application) for publication and the USPTO published the mark for
opposition on November 1, 1983.
81. The puzzle cube design (of the 308 Application) was registered as the 094
Registration on January 24, 1984.
Fraudulent Omission
82. CBS made a material omission of fact when it failed to provide the Examiner with
copies of the Rubiks Patents upon request.
83. The Examiner requested any patents which cover the goods in the application
on January 17, 1983.
84. The goods in the 094 Registration that issued from the 308 Application are
listed as three dimensional puzzles.
85. The 062 Hungarian Patent published March 28, 1977 over five years before the
Examiners request.
86. The 062 Hungarian Patent disclosed a three-dimensional puzzle cube and thus
covers the goods in the 094 Registration.
87. The 875 Belgian Patent published July 1, 1981 over a year before the
Examiners request.
88. The 875 Belgian Patent disclosed a three-dimensional puzzle cube and thus
covers the goods in the 094 Registration.
89. The 116 U.S. Patent was allowed October 13, 1982 three months before the
Examiners requests and issued March 29, 1983 three months before CBS responded to the
Examiners request.
29
90. The 116 U.S. Patent disclosed a three-dimensional puzzle cube as well as that
color may be used on the cube to logically order the toy elements and thus covers the goods in
the 094 Registration.
91. Accordingly, CBS should have provided the Rubiks Patents to the Examiner
upon request, but did not. This was a material omission of fact.
92. Upon information and belief, CBS knew or should have known about the Rubiks
Patents and their relevance to the trademark application, but chose not to disclose them.
93. Upon information and belief, CBS withheld the Rubiks Patents from the
Examiner because of their relevance to the Examiners ongoing question of functionality.
94. Upon information and belief, the Examiner allowed the 094 Registration to issue
in part due to CBSs omission of fact. Had the examiner seen the Rubiks Patents, she would
have found her concerns about functionality confirmed and would have refused registration.
Current Litigation
95. Despite the fraud perpetrated on the USPTO, Plaintiff now wields the 094
Registration to anticompetitive effect by suing puzzle cube sellers such as Plaintiff.
96. Accordingly, Plaintiffs ownership and enforcement of the 094 has damaged and
will continue to damage Defendant.
97. Plaintiff also asserts U.S. Registration No. 2,285,794 (the 794 Registration).
98. To the extent that the 794 Registration somehow applies to puzzle cubes,
Plaintiffs predecessors-in-interest had an obligation to inform the USPTO about the Rubiks
Patents, but did not and the affirmative defense of fraud on the USPTO would apply to the 794
Registration as well.
30
Twelfth Affirmative Defense

Failure to Mitigate Damages
99. Plaintiff had a duty to mitigate its damages, but failed to take any action to do so.
Accordingly, any damages Plaintiff seeks should be barred.
COUNTERCLAIMS
Defendant hereby states the following allegations and counterclaims against Plaintiff and
demands a trial by jury on its non-equitable claims:
Nature of Action, Relief Sought, Jurisdiction, and Venue
1. This is an action for cancellation of Plaintiffs trademark registrations under 15
U.S.C. 1119, false or fraudulent registration under 15 U.S.C. 1120, and damages.
2. This Court has jurisdiction over the subject matter of this action pursuant to 15
U.S.C. 1121, 28 U.S.C. 1331 and 1338.
3. This Court has personal jurisdiction solely over Plaintiff by virtue of Plaintiff
filing its Complaint against Defendants in this Court.
4. Venue is proper in this judicial district for a claim solely against Plaintiff pursuant
to 28 U.S.C. 1391(b) and (c) because Plaintiff is subject to personal jurisdiction within this
judicial district.
Parties
5. Defendant Flambeau, Inc. is a corporation organized under the laws of the State
of Wisconsin, having its principal place of business at 801 Lynn Avenue, Baraboo, Wisconsin
53913.
6. Upon information and belief, Plaintiff Rubiks Brand Limited is a limited liability
company organized under the laws of the United Kingdom, with its principal place of business at
7 Lambton Place, London, England W11 2SH.
31
First Counterclaim
Registration Cancellation
Functionality, Abandonment, Lack of Distinctiveness
herein.
8. On August 28, 2017, Plaintiff filed its Complaint against Defendant, alleging, in
part, registered trademark infringement under 15 U.S.C. 1114.
9. Plaintiff asserts that Defendant infringes trademarks registered as U.S.
Registration Nos. 1,265,094 and 2,285,794.
10. The trademarks registered as U.S. Registration Nos. 1,265,094 and 2,285,794 are
invalid because they cover utilitarian and aesthetically functional material, as set forth in
paragraphs 7-30 of Defendants affirmative defenses, which are incorporated by reference as if
fully set forth herein.
invalid because Plaintiff failed to enforce them, and the marks are thus abandoned, as set forth in
paragraphs 31-35 of Defendants affirmative defenses, which are incorporated by reference as if
fully set forth herein.
invalid because they are not distinctive, as set forth in paragraphs 36-40 of Defendants
affirmative defenses, which are incorporated by reference as if fully set forth herein.
13. Accordingly, the trademarks registered as U.S. Registration Nos. 1,265,094 and
2,285,794 are not valid and/or not protectable and thus should be cancelled under 15 U.S.C.
1119.
32
Second Counterclaim
Registration Cancellation
False or Fraudulent Procurement
herein.
15. On August 28, 2017, Plaintiff filed a Complaint against Defendant, alleging, in
part, registered trademark infringement under 15 U.S.C. 1114.
16. Plaintiff asserts that Defendant infringes the trademark registered as U.S.
Registration Nos. 1,265,094 (the 094 Registration).
17. The trademark registered as the 094 Registration was procured in the U.S. Patent
and Trademark Office by false or fraudulent means, as set forth in paragraphs 57-98 of
Defendants affirmative defenses, which are incorporated by reference as if fully set forth herein.
18. As a consequence of the false or fraudulent procurement of the 094 Registration,
Defendant has sustained damages, including but not limited to being sued by Plaintiff for
trademark infringement.
19. Accordingly, the 094 Registration should be cancelled under 15 U.S.C. 1119
and 1120 and Plaintiff should compensate Defendant for damages sustained from the false or
fraudulent procurement.
20. Plaintiff also asserts U.S. Registration No. 2,285,794 (the 794 Registration).
21. To the extent that the 794 Registration somehow applies to puzzle cubes,
Plaintiffs predecessors-in-interest had an obligation to inform the USPTO about the Rubiks
Patents, but did not and the fraud or fraudulent procurement counterclaim would apply to the
794 Registration as well.
33
Prayer for Relief
Wherefore, Defendant prays for the following relief:
A. A judgment against Plaintiff that Plaintiffs trademarks are invalid and/or not
protectable;
B. A judgment against Plaintiff that U.S. Registration No. 1,265,094 and/or U.S.
Registration No. 2,285,794 were procured falsely or fraudulently;
C. Cancellation of Plaintiffs registrations, U.S. Registration Nos. 1,265,094 and
2,285,794, under 15 U.S.C. 1119 and/or 1120;
D. Damages adequate to compensate Defendant for Plaintiffs enforcement of a false
and fraudulently procured registered trademark(s);
E. An award of costs and expenses, including attorneys fees pursuant to 15 U.S.C.
1117 or other applicable authority;
F. An award of pre- and post-judgment interest; and
G. Such other relief as the Court may deem just and proper.
Jury Demand
Defendant hereby demands a trial by jury on all issues triable by a jury alleged or relating
to this litigation pursuant to Rule 38 of the Federal Rules of Civil Procedure.
34
QUARLES & BRADY LLP
Dated this 18th day of December, 2017. By: /s/ Jonathan Hudis
Jonathan Hudis
jonathan.hudis@quarles.com
1701 Pennsylvania Avenue, NW, Suite 700
Washington, DC 20006
Tel.: 202-372-9600
Fax: 202-372-9599
Anthony A. Tomaselli (Pro Hac Vice pending)

aat@quarles.com
Anita M. Boor (Pro Hac Vice pending)
anita.boor@quarles.com
33 East Main Street, Suite 900
Madison, WI 53703
Tel.: 608-251-5000
Fax: 608-251-9166
Counsel for Defendant

Flambeau, Inc.
35
CERTIFICATE OF SERVICE
I hereby certify that on December 18, 2017, I caused a copy of the foregoing document to
be served on all counsel of record via the Courts ECF system.
Mark I. Peroff
Darren W. Sanders
Wilson Keadjian Browndorf LLP
114 West 47th Street, 18th Floor
New York, NY 10036
mark.peroff@wkbllp.com
dsaunders@wkbllp.com
Dated: December 18, 2017 /s/ Jonathan Hudis

Rubik S Brand v. Flambeau - Complaint

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Rubik S Brand v. Flambeau - Complaint

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Case 1:17-cv-06559-PGG Document 24 Filed 12/18/17 Page 1 of 36

UNITED STATES DISTRICT COURT

RUBIKS BRAND LIMITED,

v. Case No. 17-cv-06559 (PGG)

FLAMBEAU, INC., DUNCAN TOYS JURY DEMANDED

DEFENDANT FLAMBEAU, INC.S ANSWER, AFFIRMATIVE DEFENSES,

NATURE OF THE ACTION

1. This is an action for: infringement of Plaintiffs registered trademark under 15

JURISDICTION AND VENUE

Defendant denies any remaining allegations in paragraph 2.

RESPONSE: Defendant denies the allegations in paragraph 3.

4. Venue is properly founded in this judicial district pursuant to 28 U.S.C. 1391(b)

RESPONSE: Defendant denies the allegations in paragraph 4.

5. Rubiks Brand Limited (Rubiks Brand or Plaintiff) is a limited liability

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

6. Upon information and belief, Defendant Flambeau, Inc. is a corporation organized

RESPONSE: Responding to paragraph 6 of the Complaint, Defendant admits that it is a

business at 801 Lynn Avenue, Baraboo, Wisconsin 53913.

7. Upon information and belief, Defendant, Duncan Toys Company is a division of

RESPONSE: Defendant admits that Duncan Toys Company is a division of Defendant,

Defendant denies any remaining allegations in paragraph 7.

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

9. Plaintiff produces the famous RUBIKS CUBE, a 3-D combination puzzle

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

RESPONSE: Defendant denies the allegations in paragraph 13.

RESPONSE: Defendant denies the allegations in paragraph 14.

in paragraph 15 and therefore denies those allegations.

16. Plaintiffs U.S. trademark registrations provide constructive notice of Plaintiffs

RESPONSE: Defendant denies the allegations in paragraph 16.

DEFENDANT FLAMBEAUS ACTS OF ALLEGED INFRINGEMENT AND UNFAIR

RESPONSE: Defendant denies the allegations in paragraph 17.

RESPONSE: Defendant admits that it sells a three-dimensional puzzle called the

Quick Cube. Defendant denies the remaining allegations in paragraph 18.

denies the remaining allegations in paragraph 19.

RESPONSE: Defendant denies the allegations in paragraph 20.

RESPONSE: Defendant denies the allegations in paragraph 21.

DEFENDANT TOYS R USS ACT OF ALLEGED INFRINGEMENT AND UNFAIR

RESPONSE: Defendant lacks knowledge or information sufficient to form a belief as to

any of Plaintiffs purported trademark rights. Defendant lacks knowledge or information

therefore denies those allegations.

and therefore denies those allegations.

RESPONSE: Defendant denies the allegations in paragraph 25.

26. As a result of Defendants use of a spurious version of Plaintiffs federally

RESPONSE: Defendant denies the allegations in paragraph 26.

27. By virtue of Defendants unauthorized use of the RUBIKS Design Mark,

RESPONSE: Defendant denies the allegations in paragraph 27.

FIRST CLAIM FOR RELIEF

TRADEMARK INFRINGEMENT UNDER LANHAM ACT 15 U.S.C. 1114(1)(a)

RESPONSE: Responding to paragraph 28, Defendant incorporates by reference its

set forth herein.

of the remaining allegations in paragraph 29 and therefore denies those allegations.

denies the remaining allegations in paragraph 30.

RESPONSE: Defendant denies the allegations in paragraph 31.

32. Defendants conduct constitutes trademark infringement in violation of 15 U.S.C.

RESPONSE: Defendant denies the allegations in paragraph 32.

33. Upon information and belief, Defendants misappropriation and infringement of

RESPONSE: Defendant denies the allegations in paragraph 33.

RESPONSE: Defendant denies the allegations in paragraph 34.

RESPONSE: Defendant denies the allegations in paragraph 35.

RESPONSE: Defendant denies the allegations in paragraph 36.