One Pass v. Octane Lighting - Complaint

Case 2:18-cv-02803-MWF-E Document 1 Filed 04/05/18 Page 1 of 20 Page ID #:1
1 JOHNSON & PHAM, LLP

Christopher D. Johnson, SBN: 222698
2 E-mail: cjohnson@johnsonpham.com
Christopher Q. Pham, SBN: 206697
3 E-mail: cpham@johnsonpham.com
Marcus F. Chaney, SBN: 245227
4 E-mail: mchaney@johnsonpham.com
Jason R. Vener, SBN: 267941
5 E-mail:jvener@johnsonpham.com
6355 Topanga Canyon Boulevard, Suite 326
6 Woodland Hills, California 91367
Telephone: (818) 888-7540
7 Facsimile: (818) 888-7544
8 Attorneys for Plaintiff
ONE PASS, LLC
9
10
UNITED STATES DISTRICT COURT
11
CENTRAL DISTRICT OF CALIFORNIA
12
WESTERN DIVISION
13
ONE PASS, LLC, a California Limited Case No.: 2:18-cv-02803
14 Liability Company,
COMPLAINT FOR DAMAGES:
15 Plaintiff,
(1) FEDERAL TRADEMARK
16 v. INFRINGEMENT [15 U.S.C. §
1114/Lanham Act §32(a)];
17 OCTANE LIGHTING, INC., a (2) FALSE DESIGNATION OF
California Corporation; and DOES 1-10, ORIGIN/UNFAIR
18 inclusive, COMPETITION [15 U.S.C.
§1125(a)/Lanham Act §43(a)];
19 Defendants. (3) UNFAIR BUSINESS
PRACTICES [CALIFORNIA
20 BUSINESS & PROFESSIONS
CODE §17200];
21 (4) FEDERAL PATENT
INFRINGEMENT [35 U.S.C.
22 §271].
23 [DEMAND FOR JURY TRIAL]
24
25
///
26
27 ///
28
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COMPLAINT FOR DAMAGES
1 COMES NOW, Plaintiff ONE PASS, LLC (“Plaintiff”), to hereby file its
2 Complaint for Damages (“Complaint”) against Defendant OCTANE LIGHTING,
3 INC.; and DOES 1-10, inclusive (collectively “Defendants”).
4 PARTIES
5 1. Plaintiff ONE PASS, LLC (formerly Goldtime Products, LLC), is
6 now, and was at the time of the filing of this Complaint and at all intervening
7 times, a California limited liability company having a principal place of business in
8 Hollister, California.
9 2. Plaintiff is informed and believes that Defendant OCTANE
10 LIGHTING, INC., is now, and was at the time of the filing of this Complaint, and
11 at all intervening times, an active California corporation located in Simi Valley,
12 California (hereinafter “OCTANE”)
13 3. The true names and capacities, whether individual, corporate,
14 associate or otherwise, of Defendants herein named as DOES 1-10, inclusive, are
15 unknown to Plaintiff. Plaintiff therefore sues said Defendants by such fictitious
16 names. When the true names and capacities of said Defendants have been
17 ascertained, Plaintiff will amend this pleading accordingly.
18 4. Plaintiff further alleges that Defendant OCTANE, and DOES 1-10,
19 inclusive, sued herein by fictitious names, are jointly, severally and concurrently
20 liable and responsible with one another upon the causes of action hereinafter set
21 forth.
22 5. Plaintiff is informed and believes and thereon allege that at all times
23 mentioned herein Defendant OCTANE, and DOES 1-10, inclusive, and each of
24 them, were the agents, servants and employees of every other Defendant and the
25 acts of each Defendant, as alleged herein, were performed within the course and
26 scope of that agency, service or employment.
27 JURISDICTION / VENUE
28 6. This Court has jurisdiction over the subject matter of the First,
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1 Second, and Fourth Causes of Action (violation of the Lanham Act and Patent law)
2 pursuant to 15 U.S.C. §1121 and/or 28 U.S.C. §§ 1331 and/or 1338(a).
3 7. This Court has personal jurisdiction over Defendants as Defendants
4 conduct business within this jurisdiction, are domiciled within this jurisdiction, and
5 have committed the tortious activities of trademark and patent infringement and
6 unfair competition in this district. Defendants have sufficient minimum contacts
7 with this district such that the exercise of jurisdiction over Defendants by this
8 Court does not offend traditional notions of fair play and substantial justice.
9 Among other things, Defendants have advertised, offered to sell, sold, and
10 distributed products that infringe the trademark and patents of Plaintiff to
11 consumers within this judicial district for Defendants’ own commercial gain and
12 have exploited California’s extensive marketplace, wherein Plaintiff maintains
13 substantial business contacts and financial interests. Defendants have also offered
14 to sell and actually sold products (described more fully below) using interactive
15 internet websites knowing or having reason to know that consumers throughout the
16 United States, including within this judicial district, would purchase said goods
17 from Defendants, believing that they were goods manufactured and distributed by
18 Plaintiff or their authorized manufacturers when the opposite its true.
19 8. Additionally, supplemental jurisdiction exists over Defendants
20 because, on information and belief, Defendants conduct business in California and
21 in this judicial district, have purposefully directed action to California and this
22 district, or have otherwise availed themselves of the privileges and protections of
23 the laws of the State of California, such that this Court’s assertion of jurisdiction
24 over Defendants does not offend traditional notions of fair play and due process.
25 9. Venue is proper in this district, inter alia, pursuant to 28 U.S.C.
26 §1391(b) because, on information and belief, Defendants are domiciled in this
27 district and a substantial part of the events or omissions giving rise to these claims
28 occurred in this judicial district, and has caused damage to Plaintiff in this district.
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1 The products at issue in this litigation were purchased in California and Defendants
2 purposefully distributed said products within California. Moreover, the products
3 were paid with funds from a financial institution in California, and the transactions
4 were processed through PayPal, Inc., located in California. Defendants’ actions
5 within this district directly interfere with and damage Plaintiff’s commercial
6 business and harms Plaintiff’s goodwill within this Venue.
7 GENERAL ALLEGATIONS
8 Plaintiff and Their ONE PASS® and T-BAR® Brands and Products
9 10. Plaintiff is in the business of designing, manufacturing, and/or
10 distributing devices for cleaning automobiles, devices for removing liquids and/or
11 debris from automobiles, and cleaning, polishing, scouring, and abrasive
12 preparations for automobiles, boats, recreational vehicles, trailers, motorcycles,
13 trucks and aircrafts. Such products include Plaintiff’s ONE PASS® and T-BAR® -
14 brand WATERBLADE® products, which include devices used for the removal of
15 water from widows, and curved or flat surfaces.
16 11. Plaintiff has spent substantial time, money and effort in developing
17 consumer recognition and awareness of its ONE PASS® and T-BAR® -brand
18 WATERBLADE® products and associated trademarks. Indeed, Plaintiff has spent
19 an enormous amount of money on print and Internet advertising in order to inform
20 consumers of the benefits of Plaintiff’s ONE PASS® and T-BAR® -brand
21 WATERBLADE® products.
22 12. Through the extensive use of Plaintiff’s ONE PASS®, T-BAR® and
23 WATERBLADE® marks, Plaintiff has built up and developed significant goodwill
24 in ONE PASS® and T-BAR®-brand WATERBLADE® products. A wide array
25 of newspapers, magazines and television networks have included advertising of
26 Plaintiff’s products, which are immediately identified by Plaintiff’s ONE PASS®,
27 T-BAR® and WATEBLADE® marks.
28 13. As a result of Plaintiff’s efforts and the quality of Plaintiff’s products,
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1 the ONE PASS®, T-BAR® and WATERBLADE® marks have been prominently
2 placed in the minds of the public. Consumers, purchasers and members of the
3 public have become familiar with Plaintiff’s intellectual property and products, and
4 have come to recognize the ONE PASS®, T-BAR® and WATERBLADE® marks
5 and products and associate them exclusively with Plaintiff. Plaintiff has acquired a
6 valuable reputation and goodwill among the public as a result of such association.
7 Plaintiff’s T-BAR®, ONE PASS®, and WATERBLADE® Trademarks
8 and Patents
9 14. While Plaintiff has gained significant common law trademark and
10 other rights in its T-BAR® and ONE PASS® - brand WATERBLADE® products
11 through their use, advertising and promotion, Plaintiff has also protected its
12 valuable rights by filing for and obtaining federal trademark registrations for same.
13 Namely, Plaintiff has registered the trademark T-BAR®, with the United States
14 Patent and Trademark Office (“USPTO”), in Class 21, for “plastic water blade
15 inserts used in a holder with an extension handle for the removal of water from
16 windows, curved, and flat surfaces,” which has the USPTO Reg. No. 2,943,348,
17 and which has a claimed date of first use at least as of January 31, 1998.
18 15. Additionally, Plaintiff has registered the trademark ONE PASS®,
19 with the USPTO, in Class 21, for “squeegee for removing water from curved and
20 flat surfaces of automobiles, motorcycles and other types of vehicles, and parts and
21 accessories thereof” which has the USPTO Reg. No. 2,552,179, and which has a
22 claimed date of first use at least as of April 2000.
23 16. Also, Plaintiff has registered the trademark ONE PASS®, with the
24 USPTO, in Class 21, for “squeegee for removing water from curved and flat
25 surfaces of automobiles, motorcycles and other types of vehicles, and parts and
26 accessories thereof” which has the USPTO Reg. No. 3,271,591, and which has a
27 claimed date of first use at least as of December 31, 1997.
28 17. Moreover, Plaintiff has registered, on the Supplemental Registry of
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1 the USPTO, the trademark WATERBLADE®, in Class 21 for “Device for

2 removing liquids from curved and flat surfaces, namely, handled flexible silicone
3 or rubber for removing liquids from windows and from curved and flat surfaces,”
4 which has the USPTO Reg. No. 3,263,523, and which has a claimed date of first
5 use at least as of September 1, 1997.
6 18. Further, Plaintiff owns various valid and lawfully issued United States
7 Patents for its T-BAR® and ONE PASS® -brand products, including but not
8 limited to USPTO Reg. Nos.: 7,757,336 and 7,134,163 (Plaintiff’s Patents”).
9 Defendants’ Wrongful and Infringing Conduct
10 19. Particularly in light of the success of Plaintiff and Plaintiff’s products
11 as well as the reputation they have gained, Plaintiff and its products have become
12 targets for unscrupulous individuals and entities who wish to take a “free ride” on
13 its goodwill and reputation. Plaintiff has spent considerable effort and resources to
14 build up its products and marks, including its patented T-BAR® and ONE PASS®
15 -brand WATERBLADE® products.
16 20. A large number of these individuals and entities deal in knock-offs of
17 T-BAR® and ONE PASS® -brand products and advertise same for sale as “T-
18 BAR,” “ONE PASS” and/or “WATERBLADE” products, when said products are
19 not, in fact, T-BAR® and ONE PASS® -brand WATERBLADE® products and do
20 not originate with Plaintiff. Their actions vary and include manufacturing, copying,
21 exporting, importing, advertising, promoting, offering for sale, selling, and
22 distributing unauthorized reproductions of the patented T-BAR® and ONE
23 PASS® -brand WATERBLADE® products.
24 21. To wit, Defendants primarily utilize Internet commerce enabled
25 websites and/or listings to advertise, promote, and distribute products which
26 constitute unauthorized copies and/or reproductions of patented T-BAR® and
27 ONE PASS® -brand WATERBLADE® products, and which are falsely advertised
28 as being T-BAR® and ONE PASS® -brand WATERBLADE® products in
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1 Defendants’ online advertising and listings.

2 22. Plaintiff has never authorized or consented to Defendants’ use of
3 Plaintiff’s T-BAR®, ONE PASS® and WATERBLADE® trademarks in
4 commerce, or any confusingly similar marks, nor has Plaintiff authorized
5 Defendants to manufacture, copy, sell, import, advertise, offer for sale, market, or
6 distribute any T-BAR® and ONE PASS® -brand WATERBLADE® products, to
7 sell copies of Plaintiff’s patented T-BAR® and ONE PASS® -brand
8 WATERBLADE® products, or to sell products which embody the claims of the
9 Plaintiff’s Patents.
10 23. Defendants use the Internet auction website www.eBay.com (“eBay”),
11 owned by eBay, Inc., the online sales website www.amazon.com, owned by
12 Amazon, Inc. (“Amazon”), and their own www.octanelighting.com website to
13 offer for sale, sell and distribute reproductions of patented T-BAR® and ONE
14 PASS® -brand WATERBLADE® products to consumers, or to sell products
15 which embody the claims of the Plaintiff’s Patents, while advertising that said
16 products are T-BAR®, ONE PASS® and/or WATERBLADE® products.
17 24. Many of the online commercial transactions accomplished by
18 Defendants are also accomplished through the PayPal.com (“PayPal”) payment
19 service provided by PayPal, Inc. Using PayPal, purchasers of products can transfer
20 funds to sellers, electronically and online, from any PayPal account to any other
21 PayPal account.
22 25. Defendants operate interactive and commerce enabled webpage sales
23 listings on eBay under the seller ID “octane_lighting.” Through these webpages,
24 Defendants regularly and systematically advertise, market, distribute and sell
25 unauthorized copies of Plaintiff’s patented T-BAR® and ONE PASS® -brand
26 WATERBLADE® products and/or products which embody the claims of
27 Plaintiff’s Patents to consumers, while advertising, in the sales listings for said
28 products that the products being offered for sale are “One Pass Waterblade T-Bar”
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1 products.
2 26. Defendants also operate interactive and commerce enabled webpage
3 sales listings on Amazon under the seller ID “Octane Lighting.” Through these
4 webpages, Defendants regularly and systematically advertise, market, distribute
5 and sell unauthorized copies of Plaintiff’s patented T-BAR® and ONE PASS® -
6 brand WATERBLADE® products and/or products which embody the claims of the
7 Plaintiff’s Patents to consumers, while advertising, in the sales listings for said
8 products that the products being offered for sale are “One Pass Waterblade T-Bar”
9 products.
10 27. On January 10, 2018, Defendants had listed for sale, on eBay, through
11 their “octane_lighting” seller ID, a product described as “11” Octane Silicone One
12 Pass Waterblade T-Bar Squeegee Car Wash Dry Water Blade.” This product was
13 purchased on January 10, 2018, for a total cost of $10.14. Upon receipt, said
14 product was inspected by Plaintiff for authenticity. Despite Defendants’ claims in
15 their eBay sales listing that the product was a “T-Bar,” and “One Pass”
16 “Waterblade” product, said product was not a T-BAR® and ONE PASS®-brand
17 WATERBLADE® product, nor originated with Plaintiff. Moreover, the product
18 acquired from Defendants also bore Plaintiff’s WATERBLADE® mark.
19 Additionally, said product was a copy of Plaintiff’s patented T-BAR® and ONE
20 PASS®-brand WATERBLADE® products and/or embodied the subject matter of
21 the claims of the Plaintiff’s Patents.
22 28. By this sale and others, on information and belief, Defendants have
23 violated and continue to violate Plaintiff’s exclusive rights in its trademarked and
24 patented T-BAR® and ONE PASS®-brand WATERBLADE® products, and use
25 images and marks that are confusingly similar to, identical to, and/or constitute
26 reproductions of Plaintiff’s T-BAR®, ONE PASS® and WATERBLADE®
27 trademark and Plaintiff’s patented products to confuse consumers and aid in the
28 promotion and sales of its unauthorized goods. Defendants’ conduct and use began
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1 long after Plaintiff’s adoption and use of its T-BAR®, ONE PASS® and
2 WATERBLADE® trademark and Plaintiff’s Patents and after Plaintiff obtained
3 the trademark and patent registrations alleged above. Indeed, Defendants had
4 knowledge of Plaintiff’s ownership of the T-BAR®, ONE PASS® and
5 WATERBLADE® marks prior to the actions alleged herein, and adopted them in
6 bad faith and with intent to cause confusion as to the source of Defendants’
7 products. Defendants also had knowledge of Plaintiff’s ownership of Plaintiff’s
8 Patents and reproduced the subject matter thereof in bad faith and in violation of
9 Plaintiff’s patent rights. Neither Plaintiff nor any authorized agents thereof have
10 consented to Defendants’ use of Plaintiff’s T-BAR®, ONE PASS® and/or
11 WATERBLADE® trademarks or Plaintiff’s Patents in the manner complained of
12 herein.
13 29. Defendants’ actions were committed in bad faith and with the intent to
14 cause confusion and mistake, and to deceive the consuming public and the public
15 at large as to the source, sponsorship and/or affiliation of Defendants, and/or
16 Defendants’ unauthorized goods. By their wrongful conduct, Defendants have
17 traded upon and diminished Plaintiff’s goodwill.
18 30. Defendants have, among other things, willfully and in bad faith
19 committed the following acts, all of which have and will continue to cause
20 irreparable harm to Plaintiff: (i) infringed Plaintiff’s rights in the T-BAR® ONE
21 PASS® and WATERBLADE® trademarks and Plaintiff’s Patents; (ii) misled the
22 public into believing there is an association or connection between Defendants and
23 Plaintiff and/or the products advertised and sold by Defendants and Plaintiff; (iii)
24 used false designations of origin on or in connection with its goods and/or services;
25 (iv) committed unfair competition; (v) infringed upon Plaintiff’s Patents in its T-
26 BAR® and ONE PASS® -brand WATERBLADE® products; and (vi) unfairly
27 profited from such activity. Unless enjoined, Defendants will continue to cause
28 irreparable harm to Plaintiff.
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1 FIRST CAUSE OF ACTION

2 (Infringement of Registered Trademarks against Defendants OCTANE
3 LIGHTING, INC.; and DOES 1 through 10, Inclusive)
4 [15 U.S.C. § 1114/Lanham Act § 32(a)]
5 31. Plaintiff hereby incorporates by reference each of the other
6 allegations set forth elsewhere in this Complaint as though fully set forth in this
7 cause of action.
8 32. Plaintiff has continuously used its T-BAR®, ONE PASS® and
9 WATERBLADE® trademarks in interstate commerce.
10 33. Plaintiff, as the owner of all right, title and interest in and to the T-
11 BAR®, ONE PASS® and WATERBLADE® trademarks, has standing to
12 maintain an action for trademark infringement under the U.S. Trademark Statute
13 15 U.S.C. § 1114.
14 34. Defendants are, and at the time of their actions complained of herein
15 were, actually aware that Plaintiff is the registered trademark holder of the T-
16 BAR®, ONE PASS® and WATERBLADE® trademarks.
17 35. Defendants did not and failed to obtain the consent or authorization
18 of Plaintiff as the registered owner of the mark to deal in and commercially
19 distribute, market and sell products, including water removing devices, into the
20 stream of commerce while using Plaintiff’s asserted T-BAR®, ONE PASS® and
21 WATERBLADE® marks.
22 36. Defendants negligently, recklessly, willfully, or in bad faith used in
23 commerce the reproductions, copies, and/or colorable imitations of Plaintiff’s
24 asserted marks in connection with the sale, offering for sale, distribution, or
25 advertising of Defendants’ goods by offering, advertising, promoting, retailing,
26 selling, and distributing products marketed as being T-BAR®, ONE PASS® and
27 WATERBLADE® - brand products when this assertion is false.
28 37. Defendants reproduced, copied, and colorably imitated Plaintiff’s
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1 registered ONE PASS®, T-BAR® and WATERBLADE® trademarks and applied

2 such reproductions, copies, or colorable imitations to advertisements and/or sales
3 listings intended to be used in commerce upon or in connection with the sale,
4 offering for sale, distribution, and/or advertising of goods.
5 38. Defendants’ use and sale of items falsely advertised as T-BAR® and
6 ONE PASS® -brand WATERBLADE® products is likely to cause confusion, or
7 to cause mistake, or to deceive, mislead, betray, and defraud consumers who
8 believe that Defendants’ items are authentic products originating with Plaintiff,
9 and/or manufactured, and/or sponsored, by Plaintiff.
10 39. Defendants’ acts infringe on Plaintiff’s exclusive rights and goodwill
11 in the T-BAR®, ONE PASS® and WATERBLADE® marks, as well as cause
12 confusion, mistake or deception.
13 40. Plaintiff has suffered and will continue to suffer substantial and
14 irreparable injury, loss and damage to its rights in and to the T-BAR®, ONE
15 PASS® and WATERBLADE® trademarks and the goodwill associated therewith,
16 for which it has no adequate remedy at law. Thus, Plaintiff requests injunctive
17 relief.
18 41. Defendants’ continued use of Plaintiff’s asserted marks without
19 Plaintiff’s consent or authorization constitutes intentional infringement of
20 Plaintiff’s federally registered trademark in violation of § 32 of the Lanham Act,
21 15 U.S.C. § 1114. Based on such conduct, Plaintiff is entitled to injunctive relief
22 as well as monetary damages, and other remedies provided by §§ 1116, 1117, and
23 1118, including Plaintiff’s damages, Defendants’ profits, reasonable attorneys’
24 fees, costs, and/or prejudgment interest.
25 ///
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27 ///
28 ///
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1 SECOND CAUSE OF ACTION

2 (False Designation of Origin & Unfair Competition against Defendants
3 OCTANE LIGHTING, INC.; and DOES 1 through 10, Inclusive)
4 [15 U.S.C. § 1125(a)/Lanham Act § 43(a)]
7 cause of action.
8 43. Plaintiff, as the owner of all common law right, title, and interest in
9 and to the T-BAR®, ONE PASS® and WATERBLADE® asserted marks, has
10 standing to maintain an action for false designation of origin and unfair
11 competition under the Federal Trademark Statute, Lanham Act § 43(a) (15 U.S.C.
12 § 1125). Plaintiff’s asserted marks are inherently distinctive and/or have acquired
13 distinctiveness.
14 44. Defendants have, without authorization, on or in connection with its
15 goods and services, used in commerce marks which are confusingly similar to the
16 asserted marks, and have made false designations of origin which are likely to
17 cause confusion or cause mistake or to deceive as to the affiliation, connection or
18 association of Defendants with Plaintiff, and as to the origin, sponsorship or
19 approval of Defendants’ goods or services or commercial activities.
20 45. Defendants’ conduct described above violates the Lanham Act, and
21 Defendants have unfairly competed with and injured and, unless immediately
22 restrained, will continue to injure Plaintiff, causing damage to Plaintiff in an
23 amount to be determined at trial, and will cause irreparable injury to Plaintiff’s
24 goodwill and reputation associated with the value of Plaintiff’s asserted marks.
25 46. On information and belief, the conduct of Defendants has been
26 negligent, reckless, willful, or in bad faith to cause confusion, or to cause mistake
27 or to deceive and in blatant disregard of Plaintiff’s rights.
28 47. Defendants knew, or by the exercise of reasonable care should have
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1 known, that their adoption and commencement of use in commerce and

2 continuing use of marks which are confusingly similar and/or identical to
3 Plaintiff’s asserted marks would cause confusion, mistake, or deception among
4 purchasers, users and the public.
5 48. Defendants’ use and sale of items advertised in conjunction with
6 Plaintiff’s asserted marks unfairly competes with Plaintiff and is likely to cause
7 confusion, mistake, or to deceive, mislead, betray, and defraud consumers to
8 believe that their substandard products are ONEPASS® T-BAR®
9 WATERBLADE® products.
10 49. Defendants’ continuing use of Plaintiff’s asserted marks constitutes
11 false designation of origin and unfair competition in violation of § 43(a) of the
12 Lanham Act, 15 U.S.C. § 1125(a), causing Plaintiff to suffer substantial and
13 irreparable injury for which it has no adequate remedy at law.
14 50. Defendants’ wrongful conduct has permitted or will permit them to
15 make substantial sales and profits on the strength of Plaintiff’s marketing,
16 advertising, sales and consumer recognition. As a direct and proximate result of
17 Defendants’ wrongful conduct, as alleged herein, Plaintiff has been and will be
18 deprived of sales of its T-BAR® and ONE PASS® - brand WATERBLADE®
19 products in an amount as yet unknown but to be determined at trial, and has been
20 deprived and will be deprived of the value of Plaintiff’s marks as commercial
21 assets in an amount as yet unknown but to be determined at trial. Plaintiff seeks
22 damages and an accounting of Defendants’ profits.
23 51. Based on Defendants’ wrongful conduct, Plaintiff is entitled to
24 injunctive relief as well as monetary damages, and other remedies as provided by
25 the Lanham Act, including Plaintiff’s damages, Defendants’ profits, reasonable
26 attorneys’ fees, costs and prejudgment interest.
27 ///
28 ///
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1 THIRD CAUSE OF ACTION

2 (Unlawful, Unfair, Fraudulent Business Practices against OCTANE
3 LIGHTING, INC.; and DOES 1 through 10, Inclusive)
4 [California Business & Professions Code § 17200 et seq.]
7 cause of action.
8 53. By marketing, advertising, promoting, selling and/or otherwise
9 dealing in products in conjunction with the unauthorized use of the T-BAR®,
10 ONE PASS® and WATERBLADE® trademarks, Defendants have engaged in
11 unfair competition including unlawful, unfair and fraudulent business practices in
12 violation of the California Business and Professions Code § 17200 et seq.
13 54. Defendants’ marketing, advertising, promoting, selling and/or
14 otherwise dealing in products in conjunction with the unauthorized use of the T-
15 BAR®, ONE PASS® and WATERBLADE® trademarks is in violation and
16 derogation of Plaintiff’s rights and is likely to cause confusion, mistake and
17 deception among consumers and the public as to the source, origin, sponsorship,
18 or quality of the goods of Defendants, thereby causing loss, damage and injury to
19 Plaintiff and to the purchasing public. Defendants’ conduct was intended to cause
20 such loss, damage and injury.
21 55. Defendants knew, or by the exercise of reasonable care should have
22 known, that their marketing, advertising, promoting, selling and/or otherwise
24 ONE PASS® and WATERBLADE® trademarks would cause confusion, mistake
25 or deception among purchasers, users and the public.
26 56. By marketing, advertising, promoting, selling and/or otherwise
28 ONE PASS® and WATERBLADE® trademarks, Defendants intended to and did
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1 induce, and intend to and will induce customers to purchase their products by
2 trading off the extensive goodwill built up by Plaintiff in its marks.
3 57. Upon information and belief, the conduct of Defendants has been
4 negligent, reckless, willful, or in bad faith, to cause confusion, or to cause mistake
5 or to deceive, and in disregard of Plaintiff’s rights.
6 58. Defendants’ wrongful conduct, as alleged above, has permitted and
7 will permit them to make substantial sales and profits on the strength of Plaintiff’s
8 marketing, advertising, sales and consumer recognition. As a direct and proximate
9 result of Defendants’ wrongful conduct, as alleged herein, Plaintiff has been and
10 will be deprived of substantial sales of its products in an amount as yet unknown
11 but to be determined at trial, and has been and will be deprived of the value of its
12 trademarks as commercial assets, in an amount as yet unknown but to be
13 determined at trial. Plaintiff seeks restitution in this matter, including an order
14 granting Defendants’ profits stemming from its infringing activity, and its actual
15 and/or compensatory damages.
16 59. Plaintiff has no adequate remedy at law for Defendants’ continuing
17 violation of its rights set forth above. Plaintiff seeks injunctive relief.
18 60. Plaintiff further requests a court order that an asset freeze or
19 constructive trust be imposed over all monies and assets in Defendants’
20 possession which rightfully belong to Plaintiff.
21 FOURTH CAUSE OF ACTION
22 (Federal Patent Infringement Against OCTANE LIGHTING, INC.; and
23 DOES 1 through 10, Inclusive)
24 [35 U.S.C. §271]
25 61. Plaintiff hereby incorporates by reference each of the other allegations
26 set forth elsewhere in this Complaint as though fully set forth in this cause of
27 action.
28 62. Plaintiff is the owner of Plaintiff’s Patents with the USPTO Reg.
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1 Nos.: 7,757,336 and 7,134,163.

2 63. Upon information and belief, Defendants have infringed and continue
3 to directly infringe Plaintiff’s Patents by advertising, distributing, using, selling
4 and/or offering to sell, in the United States and/or importing into the United States,
5 products which embody the claims covered by Plaintiff’s Patents or equivalents
6 thereof, including but not limited to apparatuses for removing standing water from
7 flat and contoured surfaces and textured and patterned surfaces. Upon information
8 and belief, Defendants’ infringing products embody the claimed subject matter of
9 the Plaintiff’s Patents. By their conduct, Defendants have violated 35 U.S.C. §271
10 by direct infringement of Plaintiff’s Patents.
11 64. The product purchased from Defendants is the same or substantially
12 the same as Plaintiff’s products which embody the claims of Plaintiff’s Patents.
13 The design of Defendants’ knockoff products are so similar to the products of
14 Plaintiff which embody the claims of Plaintiff’s Patents as to be nearly identical
15 thereto and such that an ordinary observer, giving such attention as a purchaser
16 usually gives, would be so deceived by the substantial similarity between the
17 products so as to be induced to purchase the infringing products believing them to
18 be substantially the same as Plaintiff’s authentic products. The following is a side-
19 by-side comparison of Plaintiff’s Patents drawings with a picture of the infringing
20 product sold by Defendants:
21 Plaintiff: Defendants:
22
23
24
25
26
27
28
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1
2
3
4
5
6
7
65. By their conduct, Defendants have violated and infringed and
8
continue to violate and infringe 35 U.S.C. §271 and Plaintiff’s Patents, by
9
advertising, offering to sell, selling, and/or distributing in the United States and/or
10
importing into the United States products that are the equivalent of those protected
11
by Plaintiff’s Patents.
12
66. On information and belief, Defendants have violated and continue to
13
violate 35 U.S.C. §271 by indirect infringement of Plaintiff’s Patents, by inducing
14
others to directly infringe Plaintiff’s Patents by advertising, offering to sell,
15
selling, and/or distributing in the United States and/or importing into the United
16
States products that directly infringe Plaintiff’s Patents.
17
67. Plaintiff has not granted a license or other authorization to
18
Defendants to make use, offer to sale, sell, import, or distribute any products
19
embodying similarities to Plaintiff’s Patents, particularly in relation to any of
20
Plaintiff’s ONEPASS® T-BAR® and/or WATERBLADE® products.
21
68. Plaintiff is informed and believes, and on that basis alleges, that
22
Defendants have gained profits by virtue of their infringement of the Plaintiff’s
23
Patents.
24
69. As a direct and legal result of Defendants’ wrongful conduct,
25
Plaintiff has been and will be irreparably and permanently harmed; wherefore
26
Plaintiff is without an adequate remedy at law. Accordingly, Plaintiff is entitled
27
to, among other things, an order enjoining and restraining Defendants from further
28
- 17 -
1 engaging in infringement of the Plaintiff’s Patents.

2 70. Defendants’ infringement of the Plaintiff’s Patents is and has been
3 willful. Accordingly, Plaintiff is entitled to its monetary damages, in an amount to
4 be proven at trial, an award of treble damages, and its reasonable attorney’s fees
5 and costs.
6 WHEREFORE, Plaintiff ONE PASS, LLC, prays for judgment against
7 Defendants OCTANE LIGHTING, INC., and DOES 1 through 10, inclusive, and
8 each of them, as follows:
9 1. An order and judgment preliminary and permanently enjoining
10 Defendants and their officers, directors, agents, servants, employees,
11 affiliates, attorneys, and all others acting in privity or in concert with
12 them, and their parents, subsidiaries, divisions, successors and assigns
13 from further acts of infringement of Plaintiffs’ Patents.
14 2. For an award of Plaintiff’s damages and Defendants’ profits adequate to
15 compensate Plaintiff for Defendants’ infringement of Plaintiff’s Patents,
16 and in no event less than a reasonable royalty for Defendants’ acts of
17 infringement, including all pre-judgment and post-judgment interest at
18 the maximum rate permitted by law;
19 3. For an award of all damages, including treble damages, based on any
20 infringement found to be willful, pursuant to 35 U.S.C. §284, together
21 with prejudgment interest.
22 4. For an award of all profits, pursuant to 35 U.S.C. §289 together with
23 prejudgment interest.
24 5. For an award of Defendants’ profits and Plaintiffs’ damages in an amount
25 to be proven at trial for trademark infringement under 15 U.S.C.
26 §1114(a);
27 6. In the alternative to actual damages and Defendants’ profits for the
28 infringement of Plaintiff’s Trademarks pursuant to the Lanham Act, for
- 18 -
1 statutory damages pursuant to 15 U.S.C. § 1117(c), which election

2 Plaintiff will make prior to the rendering of final judgment;
3 7. For an award of Defendants’ profits and Plaintiffs’ damages in an amount
4 to be proven at trial for false designation of origin and unfair competition
5 under 15 U.S.C. §1125(a);
6 8. For restitution in an amount to be proven at trial for unfair, fraudulent
7 and illegal business practices under Business and Professions Code
8 §17200;
9 9. For damages to be proven at trial for common law unfair competition;
10 10.For temporary, preliminary and permanent injunctive relief from this
11 Court prohibiting Defendants from engaging or continuing to engage in
12 the unlawful, unfair, or fraudulent business acts or practices described
13 herein, including the advertising and/or dealing in any unauthorized
14 product; the unauthorized use of any mark, patent or other intellectual
15 property right of Plaintiff’s; acts of trademark infringement; false
16 designation of origin; unfair competition; and any other act in derogation
17 of Plaintiff’s rights;
18 11.For an order from the Court requiring that Defendants provide complete
19 accountings and for equitable relief, including that Defendants disgorge
20 and return or pay their ill-gotten gains obtained from the illegal
21 transactions entered into and or pay restitution, including the amount of
22 monies that should have been paid if Defendants’ complied with their
23 legal obligations, or as equity requires;
24 12.For an order from the Court that an asset freeze or constructive trust be
25 imposed over all monies and profits in Defendants’ possession which
26 rightfully belong to Plaintiff;
27 13.For damages in an amount to be proven at trial for unjust enrichment;
28 14.For an award of exemplary or punitive damages in an amount to be
- 19 -
1 determined by the Court;

2 15.For Plaintiff’s reasonable attorney’s fees;
3 16.For all costs of suit; and
4 17.For such other and further relief as the Court may deem just and
5 equitable.
6
7 DATED: April 5, 2018 JOHNSON & PHAM, LLP
8
By:/s/ Jason R. Vener, Esq.
9 Christopher D. Johnson, Esq.
10 Christopher Q. Pham, Esq.
Marcus F. Chaney, Esq.
11 Jason R. Vener, Esq.
ONE PASS, LLC
13
14 DEMAND FOR JURY TRIAL
15 Plaintiff ONE PASS, LLC, respectfully demands a trial by jury in this action
16 pursuant to Civil L.R. 3-6(a).
17
18 DATED: April 5, 2018 JOHNSON & PHAM, LLP
19
By:/s/ Jason R. Vener, Esq.
20 Christopher D. Johnson, Esq.
21 Christopher Q. Pham, Esq.
Marcus F. Chaney, Esq.
22 Jason R. Vener, Esq.
ONE PASS, LLC
24
25
26
27
28
- 20 -

One Pass v. Octane Lighting - Complaint

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One Pass v. Octane Lighting - Complaint

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Case 2:18-cv-02803-MWF-E Document 1 Filed 04/05/18 Page 1 of 20 Page ID #:1

1 JOHNSON & PHAM, LLP

1 the USPTO, the trademark WATERBLADE®, in Class 21 for “Device for

1 Defendants’ online advertising and listings.

1 FIRST CAUSE OF ACTION

1 registered ONE PASS®, T-BAR® and WATERBLADE® trademarks and applied

1 SECOND CAUSE OF ACTION

1 known, that their adoption and commencement of use in commerce and

1 THIRD CAUSE OF ACTION

1 Nos.: 7,757,336 and 7,134,163.

1 engaging in infringement of the Plaintiff’s Patents.

1 statutory damages pursuant to 15 U.S.C. § 1117(c), which election

1 determined by the Court;

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