Spenco v. Rhythm & Blues Racing - Complaint

8/19/2019 Spenco v. Rhythm & Blues Racing - Complaint

1/47

IN

THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTmCT OF TEXAS

WACODIVISION

SPENCO

MEDICAL

CORPORATION

Plaintiff,

V.

RHYTHM& BLUESRACING,

LLC,

FINISH STRONG SPORTS, LLC,

AND

RAYMOND

W.COOPER,

Defendants

) ^.. .

^^. ^

^.

'K^c^-ooofcj

)

CIVILACTIONNO:

w '

)

)

)

)

COMPLAINT

TO THE

HONORABLE DISTRICT COURT

JUDGE:

Plaintiff,

SPENCO

MEDICAL CORPORATION

( Spenco ), by its

counsel

and for ts

complaint against

RHYTHM

& BLUES RACING, LLC, FINISH STRONG SPORTS, LLC, and

RAYMOND

W.

COOPER (collectively

referred to as

Defendants )

alleges as follows:

Parties

1.

Plaintiff,

Spenco Medical

Corporation

( Spenco,

Spenco

Medical,

or SMC )

isa corporation

dulyorganized under he awsof he

State

of

Texas

and

having

a principal

place

ofbusinessat6301 Imperial

Drive,

Waco,Texas76712.

2.

Defendant

RHYTHM &

BLUES RACING,LLC

sa domestic limited

liability

company organized under the

laws

of he Stateof

Texas

that organizes and

holds

foot races in

Houston,

Texas andelsewhere, and isan entity that has a registered

office

street address

at

6426

WashingtonAve., Houston, Texas 77007-2111.

3. Defendant

FINISH

STRONGSPORTS,LLC sa domestic

limited liability

company organized under he awsof he

State

ofTexas

hat

operatesthe FinishStrongSports

COMPLAINT

Page

1

of20

Case 6:16-cv-00063 Document 2 Filed 03/22/16 Page 1 of 20


2/47

retail

store

that

has

a principal place

of

business dentified

as a

streetaddress

of

6426

Washington Ave., Houston, Texas 77007.

4. RAYMOND

W.

COOPER is he owner and

operator

of he retail store Finish

StrongSports

ocated

at6426 Washington

Ave.,

Houston, Texas

77007-21

11,

which

does

business under or in association with the limited

liability

company

FINISH STRONG

SPORTS,

LLC.

5. Mr. Cooper

s

dentified

as

a Member

of he

Officers

and

Directors,

aswell as

he

Registered Agent,

ofFINISH

STRONG SPORTS,

LLC.

6.

Mr.

Cooper

is

dentified as

the

sole

Director

and

Registered

Agent

for

Service

of

Process

to RHYTHM &

BLUES

RACING, LLC.

Jurisdiction

and

Yenue

7. Thiscourthas subject

matter

urisdiction because:

a.

This isan

action forpatent

infringement arising under

the

PatentAct

of he

United States, Title

35,

United StatesCode, and

b. This

s

an

action alsoarisingunder

he

rademark

aws

of

he

United

States

(Title

15 United StatesCode,

Chapter

22)

and

he

awsof

he

StateofTexas

for false designation

of

origin and

false description.

8.

The court has urisdiction under 28 U.

S.

C. §§1331,

1338

and 15

U. S. C. § 1121.

9.

Venue is

proper

in the

Western District

of

Texas

under

28

U. S. C.

§1391

and

§1400(b).

a.

The

Plaintiffs principal place of he business is

Waco,

Texas.

b.

Each

of he Defendantsmaybe oundand/or

esides

in he WesternDistrict

ofTexas pursuant to the terms of

28

U. S.

C.

§1391(c) or

(d).

COMPLAINT

Page2 of20



3/47

c. The

Western

District of

Texas

is a

judicial

district where events giving rise

to the claim of

patent infringement

have

occurred

and are occurring, in part, because:

i. infringing activities

are

causing

harm

to Plaintiff n this

udicial

district,

and

ii.

Defendants

have reached

out to

the

people

in

this udicial district to

provide

accused

devices

to hosepeople asa

resultof

solicitations,

advertisements

and interactive websites

seeking registrations

for

the

Rhythm

&

Blues foot

race

scheduled to occur on February 14,

2016.

10.

The

court

has

personal

jurisdiction

over

each Defendant

because

each

Defendant

has

conducted

business

and continues to conduct

business

in

the

state of Texas directly

or

indirectly

relating

to the controversy

at issue and

each Defendant

is

believed to

have

purposefully

availed itselfof he

benefits of

he

forum

state.

a. The Defendants,directly

or hrough ntermediaries,ship,

distribute,

offer

for sale,

sell, andadvertise(on an nteractivewebsite)

tsproducts

in

he United

States,

he

State

ofTexas, and the

Western

District

of

Texas.

b. Eachof

hese Defendants has purposefully and

voluntarily cooperated

with

each other to

place one

or more

infringing products

into

the

stream of commerce with the

expectation hat

heywill

be acquiredandusedby

consumers

in

he

WesternDistrictofTexas.

c. Upon

information and belief, the accused products have been sold

and

used

by

consumers and other individuals in

the Western District of Texas, and

the

Defendants have

refused

to confirm

that accused products

will

not

be distributed

in the

future

despite

repeated

requests

from

Plaintiff

hat Defendants

confirm

that fact.

COMPLAINT

Page

3

of20



4/47

d. Each

of

heseDefendants

are

believed

to

have ointly

cooperated

inacts

hat

constitute

violations of

patent

and

trademark

laws within

the StateofTexas,

and more

particularly,

within the Eastern District ofTexas.

Factual Background

11.

Spenco Medical is

he manufacturer and

seller ofquality

insoles

in he United

Statesand hroughoutmanycountries

of

he

world. SpencoMedical was ormed

in

1970andha s

at all times been headquartered in Waco, Texas.

12.

Spenco

Medical

ownsall right,title

and nterestto

United StatesPatentNos.

0628,

779;

D634,

920;

D663,

511.

See

Exhibits

1-3, Spenco

Design

Patents.

13.

Spenco Medical

sells products known at he Yumi

Sandals,

which have (by way

ofexample) he followingupper and nsole patternshownbelow.

14.

Mr.

Cooper

operates the retail store

FinishStrong

Sports

ocated in Houston hat

sells

running

shoes,

sports accessories,

and sandals.

COMPLAINT

Page

4

of

20



5/47

15.

Finish

Strong

Sports

purchasedandsoldYumisandals romSpencoMedical

during,

at

east, the years 2012-2014.

16.

Spenco

Medical'sYumisandalsweremarketed and

distributed

toMr. Cooper's

Finish

Strong

Sports

store.

17.

Finish

Strong Sports received multiple shipments ofSpenco's

Yumi

sandals

in

numerous

different configurations over at

east a three

year period.

18.

Those shipments are

shown

on

Spenco invoices provided to

Finish

Strong Sports,

which include, by wayofexample, and are not

limited

to invoice PSI07778703, dated

March

27,

2014; nvoice

PSI0673104,dated

May

22, 2013; and nvoice

PSI0572188,

dated

June 14,

2012.

19. Spenco

Yumi

sandal has the

appearance and tread

design

that is covered

by

three

U. S. DesignPatents

(U.

S. PatentNos.D628J79;D634,

920;

D663,

511),

as wellas other

intellectual property rights. SeeExhibits 1-3, SpencoDesignPatents.

20. With respect

to

the

bottom

tread design. Plaintiff submits

Figure

8

from

each of

the

above design patents,

which appears

below.

~- - ~:\^

-- . ^a

??

.^

-


6/47

21.

RHYTHM

& BLUES

RACING,

LLC in an

entity

organized byMr. Raymond

Cooper, alone

or

with others,

to

support the

Rhythm

&

Blues foot

race scheduled to

take

place

on

February 14,

2016.

22. The Rhythm & Blues

foot

race scheduled to takeplace

on February

14,

2016

in

Houston, Texaswas advertised on

a

website located at the domainname

www. rhythmandblueslialfiTiarathon. com.

23.

Participants in the

Rhythm & Blues foot

race scheduled

to

take

place on

February

14, 2016

in

Houston,

Texas

registered

for

the event

on

a

website

located

at the

domain

name

vvvvvv.

rhythmandblueshalfmaratlioi-i.com.

24. Mr.

Cooper's

store. Finish

Strong

Sports,operatesa

website

hat ncludes a

promotional

banner

for the Houston Rhythm & Blue Road Race held on

February

14, 2016 (see

below).

Finish

Strong

Sports/Rhythm & Blues

Promotional

Banner

25.

The

banner

shownaboveappearedon he Rhythm&

Blues

footracewebsite

www.

rhythmaiKiblueshalfmarathon.

coin

(shown

above).

26. The accused sandals shown

below

(hereinafter Accused Products ) provided by

Mr.

Cooper,FinishStrongSportsand/or Rhythm& Blues HalfMarathonpossess

dentical

COMPLAINT

Page

6 of20



7/47

uppers and bottom tread designs as shown

in

U. S.

Design

Patent Nos.

D628,

779;

D634,

920;

D663,

511.

(See below).

Accused Products Distributed By Defendants

27.

The Accused

Products were distributed to race participants

by the

Defendants in

exchange

or

a registration fee (average

$75

perperson).

28. Under

Egyptian

Goddess, Inc.

v. Swisa, Inc.,

543 F.3d

665

(Fed.

Cir.

2008)

(hereinafterEgyptianGoddessII), he established(and sole) standard

or

determining

infringement ofdesign

patents

as the "ordinary observer

test.

29.

The

"ordinary

observer est

compares

he patented

design

rom the ordinary

observer's

perspective

to

the

allegedly

infringing

design

to

determine

whether

he

patented

design

and he

allegedly infringingdesign

are

so

similar hat a

purchaser

amiliarwithany

prior

sandal designs would

be

deceived into purchasing one supposing it to be

he

other. Egyptian

Goddess,

Inc.,

543 F. 3d at 670, 672,

674,

676-78.

COMPLAINT

Page 7

of

20



8/47

30.

The

Accused Products

are

considered to be

knock

off counterfeit copies of he

Spenco Yumi sandals

previously

soldanddistributed by Mr. Cooperat hisFinishStrong Sports

store.

31. The Accused Products are

unauthorized copies

of he Spenco Yumi sandals

previously sold and

distributed

by

Mr.

Cooper at his Finish Strong Sports store.

32. Mr. Cooper was

assigned

an individual email address

so that

he could

coordinate

sponsorshipopportunitieswith he Rhythm&

Blues

HalfMarathon ace.

33. Sponsors for the Rhythm &

Blues foot

race

scheduled

to take place on

February

14,

2016

n

Houston,

Texas

contacted

Mr.

Cooper

at

an

email

address

coop@rhYthinandliieshalfmarathon. com to become

a

partner of

he

race, which was an

email

address provided

on

a website located

at

the

domain

name address

vvwvv. rhvthmandblues

i

I

finarat

ho .co

m.

34.

FINISH

STRONG

SPORTS,

LLC is a domestic limited

liability

company

organized

under

the lawsof

he

Stateof

Texas that

operates the Finish Strong

Sports

retail

store.

35. The

organizational

headquarters

of

he

Rhythm

&

Blues

foot

race

scheduled

on

February

14,2016

n Houston, Texaswas he FinishStrongSportsretail store address s6426

Washington Ave.,

Houston,

Texas 77007.

36. An official

sponsor

of

he

Rhythm &

Blues

foot

race scheduled on

February 14,

2016 in

Houston,

Texas is dentified

as

the Finish

Strong Sports

retail store.

37.

The

FinishStrongSports(www.

finislistrongsports.

com)website advertised he

Rhythm

& Blues

foot

racescheduledonFebruary 14,2016 in Houston,

Texas.

38. The

Finish Strong

Sports (vvvvvv.

finishstrongsports.

coin)

website

included a count-

down

clock to

the

start of

he foot

race.

COMPLAINT

Page

8 of

20



9/47

39. The Finish

Strong Sports

(wvvvv. f1nishstrongsports. com)

website has

links to the

websiteused

to advertiseand

register

participantsfor

he

Rhythm& Blues

foot

racescheduled

on February 14, 2016 in Houston, Texas.

40. Mr.

Cooper

is dentifiedas

the

Registrant

Namefor

he

website

usedto publicize

the

Rhythm&

Blues

Racing oot acescheduledonFebruary 14,2016

n

Houston, Texas.

41.

Mr.

Cooper and

Finish

Strong

Sports registered the Rhythm

&

Blues Half oot

race

domainname (vvvvw. rhythma ndbliieshalfmarathon. corn), as shown below:

Registrant

Name:

RaymondCooper

Registrant

Organization: Finish

Strong

Sports

Registrant Street:

P

0

Box

630781

Registrant

City: Houston

Registrant State/Province:Texas

Registrant Postal Code:77263

Registrant

Country:

US

Registrant Phone: +1. 7134098954

Goodwill

and

Efforts to Promote

42.

SpencoMedicalhas

devoted

considerableeffortandexpense n

developing he

goodwill associatedwith the saleof

ts Yumi

sandal.

43. Spenco has sold significant numbers

ofYumi sandals, which

has resulted

in

substantial revenues to

Spenco.

44.

The

Spenco

Yumi

sandal is

marketed on

the Internet and

sold through that

Internet

market

channel.

45. The

SpencoYumisandal is sold to

and

distributed

o

he

public hrough retail

stores,

such as

Finish

Strong

Sports.

46.

Based

on exposure of he sandal to the market, Spenco believes its Yumi sandals

are directly

connected

and associated

by the

consuming public

with

Spenco

Medical.

COMPLAINT

Page

9

of

20



10/47

47.

Defendants'

website

is

nteractive in hat it ispossible for a user to order products

from

the

website.

Requests for

Responses

48. On February 23, 2016,

Spenco

representatives sent

a

cease and

desist

letter, with

other demands,

to

the Defendants.

49.

Noneof he Defendantsagreed o

complywithany

of

he

demands n he

February23,2016

ceaseand

desist etter.

50.

On

March 4,

2016,

Spenco representatives

sent

a follow-up letter to Defendants,

requesting

again

that the

Defendants

comply

with

the

demands

set

forth

in

he

February

23,

2016

cease and desist letter previously

sent to

the

Defendants by

Spenco Medical representatives.

51. None

of

he

Defendants responded in

any

manner to the March 4,

2016

letter.

52. In responseto

he

February

23,

2016

or

March,4, 2016 etters,

none

of

he

Defendants

agreed o

immediately

or

permanently

ceaseanddesist

any further distribution

of he

Accused

Products.

53.

In

response

to

the

February

23,

2016

or

March,

4,

2016

letters,

none

of he

Defendants

agreed

to

provide any information

relating to

the

following:

(a) the

source

manufacturer

andprovidersof

he

Accused Products;and,

(b)an

temizationof

any revenue received

by

any

of

he

Defendants

rom

registration ees

and

sponsorship

ees

from the

Houston

andAtlanta Rhythm

& Blues road racespromotedon

he

Rhythm&

Blues

HalfMarathonwebsite.

54.

In response to

the

February

23, 2016or March,

4,

2016 letters,

none

of

he

Defendants agreedto remove any advertising, publicity, pictures ordepictions

of

he

Accused

Products

from

any advertising, websites orpromotions associated

with

any

Defendants

or heir

activities.

COMPLAINT

Page

10 of20



11/47

55.

In response to

the February

23, 2016

or March,

4, 2016

etters,

none

of he

Defendantsagreed o identify

any

participant andsponsor n

he

Rhythm

&

Blues road

race

(Atlanta

andHouston)

includingany

participant

hatmay

have received heaccused

"knock-off

AccusedProduct,with he dentification ncludingeachpersonor

entities

by nameandcontact

information.

56.

In

response to

the February 23,

2016

or March,

4,

2016 letters,

none

of

he

Defendants

agreed

o ssueany

ype

ofapology regarding

ts

saleand/or

distribution

of he

Accused

Products.

57. In

response

to

the

February

23, 2016or March,4, 2016

etters,

noneof he

Defendants agreed to pay Spenco Medical an appropriate amount ofmoney

representing

damages o

SpencoMedical

(determined basedon

profits

made from

he

Rhythm & BluesHalf

Marathon

race, lost

profits

to Spenco, or reasonable

royalty

on units sold).

58. In response to

the

February 23, 2016 or March, 4, 2016

letters, none of he

Defendants provided any type

ofassurance

that the Defendants intended to

comply

withanyof

the

demands

set

forth

in

the

letters.

COUNT

I -

INFRINGEMENT

OF

U.

S.

PATENTD628,779

59. SpencoMedical repeats

he

allegations

ofparagraphs

1-58

as if

ully set

orth

herein.

60. Aftera full andfairexamination, U. S. PatentD628J79,entitled "Sandal"was

dulyand egally ssued

onDecember

14,2010("the 779Patent ). A copyofthe 779Patent s

attached

as

Exhibit

1

to thisComplaint.

61. Spenco Medical is the owner of

he

entire

right, title,

and interest in and to the

'779 Patent.

COMPLAINT

Page

11 of20



12/47

62. Because he

AccusedProductsdistributedby

Defendants

are dentical

to

he

sandals shown in he '779 Patent, the

accused

products are infringingproducts that satisfy the

ordinary

observer est fordesignpatent

nfringement.

63.

Each

of he Defendants

have

nfringed,continueto infringe,

nduce

others

o

infringe, and/or contribute to

the

infringement of he '779

Patentby,

individually

and/or

collectively, making, using, and/or selling (or nducing or contributing to those

acts

byanother)

the

Accused

Products in the United

States

and the StateofTexas.

64. Oneor moreof

he

above-identifiedDefendants

directly infringed

he '779Patent

by

having

made,

using,

marketing, selling, and/or

offering the

Accused

Products

in

exchange

for

the

registration

fee

paidfor he Rhythm

&

Blues

HalfMarathon ace

held

onFebruary14,

2016.

65.

The Defendants indirectly

infringed

(contributory or inducement)

the

'779

Patent

by nducingothers

(race participants)to use

he

AccusedProducts.

66. Defendants' actsof

nfringement

for

he

'779Patent

have

causedandwill

continue to cause

damage

and injury to

Plaintiff

for which Plaintiff

s

entitled to

relief

under

35

U.

S. C.

§284.

67. The

Plaintiff

s

entitled

to

recover

from

the

Defendantsdamagessustainedby

he

Plaintiffas

a

result of he

Defendants'

wrongful acts in an amount subject to proof at rial.

68.

The Defendants'

acts of nfringement

of

he

'779

Patent have caused and will

continue to cause immediate and irreparable

injury

to Plaintiff

for

which Plaintiff s entitled to

injunctive

relief

under 35 U. S. C.

§283.

69. The Defendants'

actsof nfringement

of he '779Patentwill

continueto

damage

the Plaintiffs business

and

rights,

causing

irreparable

injury and

harm,

for which

there is no

adequate remedy

of

aw,

unless

enjoined by this Court.

COMPLAINT

Page

12 of20



13/47

70. Defendants' infringement of he '779 Patent has been and continues to

be

willful

and

deliberate,and in flagrantdisregardofPlaintiff

rights

under

he '779Patent.

COUNTII INFRINGEMENTOFU. S.PATENT

D634,

920

71.

Spenco

Medical

repeats the

allegations

ofparagraphs

1 -58

as if ully set forth

herein.

72. After a full andfairexamination,

U.

S. Patent

D634,920,

entitled "Sandal"

was

dulyand

egally ssued

on

March

29,

2011

("the 920Patent ).

A copy

of

he

'920Patent

s

attached as Exhibit

2

to

this

Complaint.

73.

Spenco

Medical

is

the

owner

of

he

entire

right,

title,

and

interest

in

and

to

the

'920 Patent.

74.

Because the

Accused Products

distributed by Defendants are identical

to the

sandals

shown in he '920

Patent, the accused

products

are

infringingproducts that satisfy the

ordinaryobserver est fordesignpatent nfringement.

75. Each

of he Defendants

have

nfringed,

continueto

nfringe, nduceothers

o

infringe, and/or

contribute

to

the

infringement

of

he

'920

Patent

by,

individually

and/or

collectively, making, using,

and/or

selling (or inducing or

contributing

to

those

acts

by

another)

the Accused Products in the United

States

and

the State ofTexas.

76. Oneormoreof

he

above-identifiedDefendants

directly infringed he

'920Patent

by

having

made,

using,

marketing,

selling, and/or offering the

Accused Products in exchange

for

the registration fee

paid

for

he Rhythm

& Blues

Half

Marathon raceheld

on February 14,

2016.

77.

The Defendants ndirectly nfringed

(contributory

or nducement) he '920Patent

by nducingothers

(race participants)

to use he

AccusedProducts.

COMPLAINT

Page 13

of20



14/47

78. Defendants'

acts

of

nfringement

for he '920Patent

have

caused

and

will

continue to cause damage and injury to Plaintifffor

which

Plaintiff s

entitled

to reliefunder

35

U. S. C.

§284.

79. The Plaintiff

is

entitled

to

recover from the Defendants

damages

sustained by he

Plaintiffas

a result

of he

Defendants' wrongful acts

inan

amount

subject to

proofat

rial.

80.

The

Defendants'actsof

nfringement

of he '920Patenthavecaused

and

will

continue to

cause immediate and

irreparable injury to

Plaintiff

for which Plaintiff s

entitled to

injunctive relief

under 35

U. S. C. §283.

81. The

Defendants' acts

of

nfringement

of

he

'920

Patent

will

continue

to damage

the

Plaintiffs

business and rights, causing

irreparable

injury

and

harm, for

which

here isno

adequateremedyof aw, unlessenjoinedby

his

Court.

82. Defendants'

nfringement

of

he '920Patent

has

been

andcontinuesto

be willful

anddeliberate,and in flagrantdisregardofPlaintiff rights

under

he '920Patent.

COUNTIII INFRINGEMENTOFU.

S.PATENTD663,

511

83.

Spenco

Medical

repeats

the

allegations

of

paragraphs

1-58 as

if

ully

set

forth

herein.

84.

After a

full

and fair examination,

U.

S. Patent D663,

5

11, entitled

"Sandal"

was

duly and legally

issued on

July

17,

2012

( the

'511 Patent ).

A

copy of he '51 1 Patent s

attached as Exhibit 3

to this Complaint.

85. Spenco

Medical

is he

owner

of he entire

right,

title, and nterest in andto he

'511

Patent.

COMPLAINT

Page 14

of20



15/47

86. Because the

Accused

Products

distributed

byDefendantsare

identical

to the

sandals shown in

the '51 1 Patent,

the

accused products

are infringing products that

satisfy

the

ordinary

observer

est fordesignpatent nfringement.

87. Eachof he Defendants

have infringed, continue to

infringe,

induce others to

infringe, and/or contribute to

the

infringement of

he

'511 Patent by, individually and/or

collectively,

making, using, and/or

selling

(or

nducingorcontributing

to hose acts

by another)

theAccusedProducts in

the United

Statesand

the

State

of

Texas.

88.

One

or

more of

he

above-identified

Defendants directly infringed the

'511 Patent

by

having

made, using, marketing, selling,

and/or

offering the

Accused Products

in

exchange

for

the registration fee

paid

for the

Rhythm &

Blues

Half

Marathon

race

held on February 14,

2016.

89.

The Defendants indirectly infringed (contributory or nducement) the '511 Patent

by

nducing

others (raceparticipants)to use the AccusedProducts.

90.

Defendants'

acts

of nfringement for

he 511 Patenthave

caused

and

will

continue

to

cause

damage

and

njuryto Plaintiff orwhichPlaintiff

s

entitledto reliefunder35

U.

S.

C.

§284.

91. The

Plaintiff

isentitled to recover from the Defendants damages sustained

by he

Plaintiff as a

result

of he

Defendants'

wrongful

acts in

an amount subject

to proof

at trial.

92. The

Defendants'

actsof nfringementof

he

'511 Patent

have

caused

and

will

continueto

cause

mmediateand

rreparable njury

toPlaintiff or

which

Plaintiff sentitled o

injunctive relief under

35

U.

S. C. §283.

93. The Defendants' acts of

nfringement

of he

'511

Patent will continue

to damage

the Plaintiffs business and rights,causing irreparable

injury

and

harm,

forwhich there is

no

adequateremedyof aw, unless

enjoinedby

thisCourt.

COMPLAINT

Page 15

of20



16/47

94.

Defendants' nfringement

of he '5

11

Patenthas beenand

continuesto

be willful

and

deliberate,

and in flagrant

disregard

of

Plaintiff

rights under the '511

Patent.

COUNT IV

LANHAM

TRADEMARK CLAIM

UNDER

15

U.

S.

C.§

1125(A)

FOR FALSE

DESIGNATION

OF

ORIGINANDFALSEDESCRIPTION

95. Plaintiff ncorporates the allegations ofparagraphs 1-58 as if ully set

forth

in his

paragraph.

96.

Spencohassold

significantnumbers

ofYumisandals,

whichhas

resulted in

substantialrevenuesto Spenco.

97. Based

on

exposure of

he

sandal

to

the

market,

Spenco

believes its

Yumi

sandals

are

directly connected and associated

by

the

consuming public with Spenco Medical.

98.

Defendants' acts

ofdistributing confusingly similar

"knock-off

sandal

designs

of

the Spenco Yumi sandal is ikely to

cause

confusion, mistake,

and/or

deception as to he

affiliation,

connection, andassociation

of

Defendantswith

SpencoMedical

and/or

are

likely to

cause confusion, mistake,

and and/or

deception

as to

the origin, sponsorship,

and/or

approval of

Defendants' Accused

Products

by

Spenco Medical.

99.

The Defendants'

acts

of

distributing

confusingly similar "knock-off sandal

designs

of he Spenco Yumi sandal designs constitute

false

designations

of

origin and

false

descriptionsof

source

in

violation

of15 U. S.

C.

§1125(a)(l)(A).

100. The Defendants'

acts

of

distributing

confusingly similar "knock-off sandal

designsof he SpencoYumi

sandal

constitute

misrepresentation

of he nature, characteristics,

qualities

or

geographic

origin

ofSpenco's

products

in

violation

of

15

U. S.

C.

§1125(a)(l)(B).

101. Spenco Medical isentitled to damages resulting

from

Defendants'

acts

in

violationof

15

U. S.

C.

§ 1

125(a).

COMPLAINT

Page

16 of20



17/47

102.

Spenco

Medical isentitled

to

an injunction against

further

violations

of

15 U.

S.

C.

§ 1125(a)by

he

Defendants.

COUNT V

- STATE

UNFAIR

COMPETITION

103. Plaintiff incorporates the allegations

ofparagraphs 1-58 as

if

ully

set forth

in

this

paragraph.

104. SMC

has

acquired a

business reputation

and/ora distinctive quality inassociation

with

SPENCO s Yumi

sandals.

105.

Defendants

have

caused, andcontinueto cause,

a

likelihood of

njury to

Spenco's

business

reputation

associated

with

Spenco's products

and/or

a

likelihood

of

diluting

the

distinctive quality

ofSpenco's

products in the

eye of

he

consumer.

106. Defendants' acts constitute

a

violation

ofTex. Bus

&

Corn. Code

§ 16. 29,

and the

acts

of Defendants constitute unfair competition under the lawsof

he State

of

Texas.

107. Spenco

Medical isentitled to damages

resulting from Defendants'

violation

of

Tex.

Bus.& Corn.

Code

§

16. 29

and ts other

acts

ofunfaircompetition.

108. Spenco

Medical

is

entitled

to

an

injunction

against

further

violations

of

Tex

Bus.

&

Corn.

Code

§16. 29 and any

further

acts

of

unfair competition.

PRAYER

WHEREFORE,

SpencoMedical

prays

for udgmentas ollows:

1. Adjudge anyorall

of

U. S.

Patent

Nos.

0628,

779; D634,

920;

D663, 511

to

be

valid

and nfringed;

2.

Adjudge

any

or

all

of

he

Defendants

to

have

directly

infringed, and/or

indirectly

infringed at eastoneofU. S.

Patent Nos.

D628J79; D634, 920; D663, 511 by way

of

nducement

and/or contributory infringement;

COMPLAINT

Page

17

of

20



18/47

3.

Preliminarily and

permanently

enjoin any orall the Defendants, and any other

personorentity

acting

n concertorparticipationwith

any Defendant,

fromany

activity that constitutes infringement, inducement, or

contributory

the

infringement

ofU.S.Patent

Nos.

D628,779; D634,

920;

D663,

511;

4.

Award

Plaintiff damages resulting from the

patent

infringement ofany orall of

U. S.PatentNos.

D628,

779;

D634,920;D663,511;

5. Adjudge

he

Defendants' patent nfringement o be willful and

deliberate

actsof

infringement, and award enhanced damages for such willful infringement;

6. Adjudge hiscase o be exceptional under

he

PatentAct,and award he Plaintiff

attorney feesandcosts ncurred inprosecuting hismatter;

7.

Adjudge the

Plaintiff

o be entitled

to

an

accounting

of

Defendants'

revenues

resulting

directly

or indirectly from

the Defendants'

infringement

of

any

or

all

U. S.

Patent

Nos.

0628,

779; D634, 920; D663, 511, including

any

and all damages

for

any pre-verdict

or

post-verdict

infringement;

8.

In

the

event

a

permanent

injunction

preventing

future

acts

of

nfringement

is

not

granted,award

he

Plaintiff upplemental damages,

royalty

fee,and/or icense fee

forall direct or ndirect infringement

ofU.

S. PatentNos. D628, 779; D634,

920;

D663,

511;

9. Adjudge that

the

Defendants' acts constitute false designation oforigin and/or

false

description of

source

in violation

of 15

U.

S.

C. §1125(a)(l)(A);

10.

Adjudge

that the

Defendants'

acts constitute

false

or

misleading conduct

that

violates 15 U.

S.

C. §1125(a)(1) (B);

COMPLAINT

Page 18 of20



19/47

11.

Adjudge

that

the Defendants'

acts

constitute unfair competition

under the

laws

of

the State of Texas and/or violation

of

Texas statutes.

12.

Preliminarily and

permanently

enjoinanyor

all

of he Defendants,andany other

person

orentity in concert

or

participation withany

of he Defendants,

from any

further violation of 15 U. S.

C. §1125,

any

other federal LanhamAct protection, or

any

unfair competition lawsof

he

State ofTexas;

13. AwardPlaintiffdamagesresulting from the violations

of

he

LanhamActand/or

the unfair competition laws of he State ofTexas;

14. Adjudge he

Defendants'

nfringement obewillful anddeliberateacts n

violation of he Lanham

Act or

he

unfair competition

lawsof he StateofTexas,

and

award

enhanceddamages

orsuch

violations;

15. Adjudge this case to be

exceptional

under the Lanham Act orTexas State law,

and award

the

PlaintifiF attorney fees and

costs

incurred in prosecuting this matter;

16. Adjudge the Plaintiff to be entitled to an accounting of

Defendants'

revenues

resultingdirectly

or

ndirectly

from

the

Defendants'

violations

of

he LanhamAct

or

Texasstate

law, including any

and

all damages for

anypre-verdict

orpost-

verdict

infringement;

17.

Award the Plaintiff

costs, pre-judgment

and

post-judgment

interest, expenses,

and

reasonable attorney

fee incurred

in bringing

and prosecuting

this action; and,

18. Award such

other and

further

relief

hat

he

Court deems ust andproper.

Jury

Demand

Plaintiff

herebydemandstrial

by

uryonall ssues.

COMPLAINT

Page

19

of

20



20/47

Respectfully

submitted,

SPENCOMEDICALCORPORATION

/s/ D.

Scott Hemingway

D.

Scott

Hemingway

(TXBarNo.09407880)

Hemingway

&

Hansen, LLP

1700 Pacific

Avenue,

Suite 4800

Dallas, TX 75201

(214)292-8301 (direct)

(214) 292-8999

(fax)

Email:

shemingway@hh-iplaw.

com

John

P.

Palmer

(TX

Bar.

No. 15430600)

Naman,

Howell, Smith

&

Le e

400

Austin

Ave, 8th

floor

P. 0.

Box 1470

Waco, TX 76701

Phone:(254)755-4100

Fax:(254)754-6331

Email: palmeri^namanhovvell.co m

ATTORNEYS FOR

PLAINTIFF

SPENCO MEDICAL CORPORATION

COMPLAINT

Page

20 of20



21/47

Exhibit 1

Case 6:16-cv-00063 Document 2-1 Filed 03/22/16 Page 1 of 9


22/47

USOOD628779S

(12)

United

States Design Patent (IG)patent No.:

Martinez et al.

(45)

Date

ofPatent:

US

D628,779 S

**

Dec.

14,

2010

(54) SANDAL

(75)

Inventors:

Jacob

Martinez,

Temple,

TX

(US);

David

B.Granger,

Lorena,TX

(US);

PaulLewis, Beeton

(CA)

(73) Assignee: SpencoMedicalCorporation,Waco,

TX

(US)

(**)

Tenn: 14 Years

(21) Appl. No.

:

29/362,044

(22) Filed:

May19,2010

(51)

LOG

9)

Cl. ..................................................

02-04

(52) U. S.

CI. ....................................................... D2/917

(58) Fieldof ClassificationSearch ..................

D2/896.

D2/916-918,946, 969,971; 36/83, 112.

36/113,

136, 3

A,

7.4,

7. 5.

7.

6,

11.5

Seeapplication ile orcomplete

search

history.

(56)

References

Cited

U.

S.

PATENT

DOCUMENTS

D374, 549 S

D448, 542 S

0495, 123 S

D543,685 S

D563, 649 S

0576, 391 S

10/1996

McDonald ................... D2/917

10/2001 Biyant ........................ D2/917

8/2004 Wakatake .................... D2/969

6/2007

Andersen

et al. .............

D2/969

3/2008 Andersen et

al. .............

D2/969

9/2008 Contreras .................... D2/917

1/2009

7/2009

Contreras .................... D2/917

Dominquezet

al. ..........

D2/917

10/2007

Yamaguehi

et

al. ..........

36/11.5

5/2008 Ritter .......................... 36/136

10/2009 Saran takos ................... 36/101

D584,

885

S *

D596, 833 S *

2007/0245592

Al *

2008/0110060 Al*

2009/0249650

Al*

* citedby examiner

Primary Examiner

- Robert M

Spear

Assistant Examiner-

Rashida

C

McCoy

(74)

Attorney,

Agent, or Firm Eugenia S. Hansen;

Hemingway & Hansen, LI-P

(57)

CLAIM

Theornamental

design

ora

sandal,

as shown

anddescribed.

DESCRIPTION

FIG. 1 is a perspectiveview

of

a sandal showing

our

new

design;

FIG. 2 is a front view

of

a sandal

shown n

FIG. 1;

FIG.

3 is a

backview

of

a

sandal shown m

FIG.

1;

FIG. 4

is a side

view

of

a

sandal shown in FIG. 1;

FIG.

5

is a side view of a

sandal

shown

in

FIG. 1;

FIG.6 is a top view

of

a sandal shown n FIG. 1;

FIG. 7

is

a

bottom

view of a sandal shown in FIG. 1; and,

FIG.

8

is

a perspective

view

of a sandal shown

in FIG. 1.

1

Claim,

7

Drawing

Sheets



23/47

U. S.

Patent Dec.

14,

2010 Sheet

1

of 7

US D628, 779 S

fc



24/47

U.

S.

Patent Dec.

14, 2010

Sheet

2 of 7

US D628, 779 S

FIG. 2

FIG. 3



25/47

U. S. Patent

Dec.

14,

2010 Sheet 3

of 7

US D628J79 S

.t

0

h-<

h



26/47

U. S.

Patent Dec.

14, 2010

Sheet

4 of 7

US D628J79 S

IT)

p

h-1

fo



27/47

U. S. Patent Dec.14, 2010 Sheet

5

of 7

US

D628J79 S

FIG. 6



28/47

U.S. Patent Dec.14,2010 Sheet6 of 7

US

D628,

779 S

FIG. 7



29/47

U. S. Patent

Dec. 14,

2010

Sheet

7 of 7

USD628J79 S

fc



30/47

Exhibit 2



31/47

USOOD634920S

(12)United States Design

Patent (IQ)

patentNo.:

Martinez et al. (45) Date of Patent:

US D634,

920 S

**

Mar.

29,

2011

(54)

SANDAL

(75)

Inventors:

Jacob

Martinez,

Temple,

TX

(US);

DavidB.Granger,

Lorena,

TX

(US);

PaulLewis, Beeton,CA (US)

(73)

Assignee:

Spenco

Medical Corporation,

Waco,

.

rx

(us)

(**) Temi:

14 Years

(21) Appl. No.

:

29/378, 047

(22) Filed: Oct.28,2010

Related

U.

S.

Application Data

(62)

Division

of application No. 29/362, 044,

filed

on Ma y

19,

2010,

now

Pat.

No.

Des. 628,779.

(51)

LOG

9)

Cl. ..................................................

02-04

(52)

U.

S. C1. ........................................................

D2/917

(58) Field of Classification Search ................... D2/896,

D2/916-918,

946,

969,

971;

36/83,

112,

36/113, 136, 3

A,

7.4, 7. 5.

7.

6, 11.5

See application

file

for complete search history.

(56) ReferencesCited

U.

S.

PATENT DOCUMENTS

D374. 549

S *

10/1996 McD onald .....................

D2/917

0448,

542

S * 10/2001 Bryant ........................... D2/917

D495, 123 S

* 8/2004

Wakatake ...................... D2/969

D543. 685 S *

6/2007

Ajidersen el al. .............. D2/969

D563. 649 S

*

3/2008 Afldersen et al. .............. D2/969

D576391 S

*

9/2008 Contreras ...................... D2/917

0584, 885

S * 1/2009 Co ntreras ...................... D2/917

D596,

833

S *

7/2009 Dominquez

et

al. ...........

D2/917

2007/0245592

Al .

10/2007

Yamaguchi

et al. ........... 36/11.5

2008/0110060 Al* 5/2008 Ritter .............................. 36/136

2009/0249650 Al

*

10/2009 Sarantalcos ..................... 36/101

*

cited by

examiner

Primary Examiner -

Robert

M

Spear

Assistant

Examiner

- Rashida C McCoy

(74) Attorney,

Agent, or

Firm

- Hemingway & Hansen,

LLP;

EugeniaS. Haiisen

(57) CLAIM

The oniamental design for

a

sandal, as shown anddescribed.

DESCRIPTION

FIG.

1 is a perspectiveviewof a sandal showing

our

new

design;

FIG.

2 is a front

view

of

a

saiidal shown n FIG. 1;

FIG.3 is

a back

viewof

a

sandal shown ll FIG. 1;

FIG.4 is

a

sideviewof a sandalshown n FIG. 1;

FIG.

5

is

a sideview of

a

sandal shown n FIG. 1;

FIG.

6 is

a top

view of

a

saiidal shown in

FIG.

1;

FIG.7 is

a bottom

viewof

a saiidal shown n

FIG.

1; and,

FIG. 8 is a perspective view

of

a sandal

shown

in

FIG.

1.

Thesubject

matter shownwithin

he

broken lines

inFIGS.

7-8

forms

no

part of

he specified

embodiment.

1

Claim,

7 Drawing Sheets



32/47

U.

S.

Patent

Mar.

29, 2011 SheetI of 7

US

D634,

920 S



33/47

U.

S.

Patent Mar. 29, 2011 Sheet2 of 7

US

D634,

920 S

FIG. 2

FIG. 3



34/47

U.

S.

Patent

Mar.

29,

zoii Sheet

3 of 7

US D634, 920 S

^-

2

h

^-^,



35/47

U. S. Patent

Mar. 29, 2011

Sheet

4 of 7

US D634, 920 S

>n

0

1-(

h

I



36/47

U. S. Patent Mar. 9 2011 Sheet of 7

US

D634, 920 S

FIG. 6



37/47

U.

S.

Patent

Mar. 29,

2011 Sheet

6

of 7

US D634,

920 S

FIG. 7



38/47

U. S. Patent Mar.29, 2011 Sheet7 of 7

US D634, 920 S

fo



39/47

Exhibit 3



40/47

USOOD663511S

(12)

United States Design Patent (IG)patent

No.:

Martinez

et

al.

(45)

Date of

Patent:

US D663, 511 S

Jul.

17,

2012

*

(54)

FOOTBED

(75)

Inventors:

Jacob

Martinez,

Temple,

TX

(US);

David

B. Granger, Lorena, TX

(US);

Paul Lewis,

Beeton

(CA)

(73) Assignee: Spenco

Medical

Corporation,Waco,

TX(US)

(**) Term: 14 Years

(21) Appl. No. :

29/379,303

(22)

Piled: Nov. 17, 2010

Related U. S.

Application

Data

(60)

Continuation

of

application No. 29/378, 047,

filed

on

Oct.

28,

2010,

now

Pat. No.

Des.634, 920,which s a

division

of

applicatioii

No.

29/362,

044,

filed oil

Ma y

19,2010,now

Pat.No.

Des. 628,779.

(51)

LOG

(9) Cl. .................................................. 02-04

(52)

U.

S.

C1. .......................................... D2/917; D2/961

(58)

Field

of

Classification Search ...................

D2/896,

D2/916 918, 946. 961, 969,

1: 36/83.

112.

36/113, 136,3 A, 7.4, 7.

5.

7. 6, 11.5

Seeapplication ile forcomplete

search

history.

(56)

ReferencesCited

U. S. PATENT DOCUMENTS

D425, 690 S

D475, 844 S

D495. 123 S

D576,

394 S

D592. 386 S

0593, 742 S

0656,716 S

*

cited

by exaniiner

5/2000 Brayeta l. .....................

D2/960

6/2003

Reynoldsetal. .............. D2/960

8/2004 Wakatak e ...................... D2/969

9/2008 Heller ............................

D2/951

5/2009 Baker etal. .................... D2/946

6/2009

Issler .............................

D2/960

4/2012 Eadesetal. ....................

D2/917

D399. 042 S

D420. 210 S

10/1998

Strawseretal.

2/2000 Alien

D2/961

D2/961

Primary Examiner

-

Robert M. Spear

Assistant

Examiner

- Rashida

C

McCoy

(74) Attorney, Agent, or Firm - Hemingway & Hansen,

LLP; Eugenia

S.

Hansen

(57)

CLAIM

The

ornamental

design fora footbed, as shown

and

described.

DESCRIPTION

FIG.

1

is

a

perspective

top view

of

a

footbed showing

our

new

design;

FIG. 2 is a front view of a footbed shown in FIG. 1;

FIG. 3 is a

back

view of a footbed shown in

FIG.

1;

FIG. 4 is a side view of a footbcd shown n FIG. 1;

FIG. 5 is a side

view

of a footbed shown

in

FIG. 1;

FIG. 6 is a top view

of

a

footbed

shown in FIG. 1 ;

FIG. 7

is

a

bottom view of

a footbed shown

in

FIG. 1;

and,

FIG. 8 is a perspective bottom view of a footbed shown in

FIG. 1.

Thesubjectmattershownwithin hebroken ines n

FIGS.

1-8

forms no part of he claim.

1

Claim,

7 Drawing Sheets

^

%;.-

:\,'

'..

^. Y-

^.^ ''.. '....

:. .. Vv-. ,

^. ---..

:

^

^?:::$1;

's\

"^,

'^mi^:^

^^-..

'

; <

:^

;]

'


41/47

U.

S.

Patent

Jul. 17, 2012

Sheet 1 of 7

USD663, 511S

^



42/47

U. S. Patent jui. 17, 2012 Sheet2 of 7

USD663,

511S

/

FIG. 2

"-^^^v

^/-^.

--^^^^

^


43/47

U. S. Patent

Jul.

17, 2012

Sheet3 of 7

US D663, 511 S

^

Q

>~"



44/47

U. S. Patent

Jul.

17, 2012

Sheet

4 of 7

USD663, 511S

»r-i

0

MM^t

\^



45/47

U.

S. Patent

Jul. 17,

2012

Sheet

5 of 7

US D663, 511 S

FIG. 6



46/47

U. S. Patent

JuL

17,

2012

Sheet

6

of 7

US D663, 511 S

no. ?

: P

\ii ll

ss\

\

^T~ ^|

'\s^-

^. \

.

^T^

^.

\-'^

s

\\ \r

i \\\ ^

l

Is

^^).^

^^ . /\

\

\x



47/47

U. S.

Patent

Jul. 17,

2012

Sheet

7

of 7

US

D663,

511 S

>-^

^~C2-^

Sss.::^-^.

^?:J:;^-^^%y

-^s^:^^^-^

Ti3&~.

^^^^^


Spenco v. Rhythm & Blues Racing - Complaint

Documents

Transcript of Spenco v. Rhythm & Blues Racing - Complaint