Floyd's 99 v. Chavalo 77 - Floyd's Barbershop Trademark Complaint PDF

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 1 of 13 Page ID #:1
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Joshua P. Kweller (SBN 254834)

Email: josh.kweller@moyewhite.com
MOYE WHITE LLP
16 Market Square, 6th Floor
1400 16th Street
Denver, CO 80202
Telephone: 303.292-2900
Facsimile: 303.292-4510
Attorney for Plaintiff Floyds 99 Holdings, LLC
UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA
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FLOYDS 99 HOLDINGS, LLC, a

Colorado limited liability company
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Plaintiff,
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v.
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CHAVALO 77 INC.,
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Defendant.
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Case No. ______________________

COMPLAINT FOR:
Trademark infringement, false
designation of origin and unfair
competition
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COMPLAINT
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Plaintiff, Floyds 99 Holdings, LLC, through its attorneys, Moye White
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LLP, for its Complaint against Defendant Chavalo 77 Inc. (Defendant), states as
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follows:
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INTRODUCTION AND NATURE OF THE ACTION
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1.
This is an action under the trademark laws of the United States and
the common law for infringement, false designation of origin and unfair
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competition.
Plaintiff seeks, among other things, an injunction enjoining
Defendant and those acting in concert with it from wrongful and unlawful use of
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Plaintiffs trademarks.
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PARTIES, JURISDICTION AND VENUE

2.
Plaintiff is a Colorado limited liability company with its principal
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place of business at 5340 S. Quebec, Suite 205N, Greenwood Village, Colorado
80111.
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3.
Defendant is a California corporation with its principal place of
business located at 7219 Atlantic Ave., Cudahy, California 90201.

4.
This Court has original subject matter jurisdiction over this action
pursuant to 28 U.S.C. 1338(a) & (b). Additionally, this Court has supplemental
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jurisdiction over Plaintiffs common law and state statutory claims pursuant to
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28 U.S.C. 1367(a).
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5.
Venue is proper in this Court under 28 U.S.C. 1391(b)(1) & (2) and
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(c) as Defendant resides within this judicial district, and because a substantial part
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of the events or omissions giving rise to the relief sought herein occurred in this
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district.
FACTS
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6.
Plaintiff commenced operations as a barbershop in or about 2001, and
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provides services in several states, including California.
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7.
Since its founding, Plaintiff has created, employed, and marketed its
services under various distinctive trademarks and trade dress at great expense.
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Plaintiffs trademarks and trade dress have become readily recognized
by consumers and associated with Plaintiff, and comprise an extremely valuable

asset of Plaintiffs business.
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Among the trademarks adopted by Plaintiff are a distinctive logo first
used by Plaintiff as early as June 2006:
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10.
Plaintiff has also created, developed, and employed in its business a
highly distinctive interior design, featuring a Poster Wall, by which Plaintiff has
come to be recognized by consumers. Plaintiffs interior design is a federally
registered and incontestable United States Trademark, Reg. No. 3467850. A copy
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of Plaintiffs U.S. Trademark registration is attached hereto as Exhibit A.

11.
Defendant was incorporated in California on March 10, 2014.
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In or about July 2014, Plaintiff became aware that Defendant had
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opened and was operating a barbershop at 7219 Atlantic Ave., Cudahy, California
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90201, only miles from Plaintiffs existing Los Angeles locations in Encino,
Hermosa Beach, Venice, Melrose, Santa Monica, Mar Vista, Studio City, and
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Burbank.
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As shown in the side-by-side comparison photographs below, the
interior and exterior signage used by Defendant constituted wholesale
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misappropriation of Plaintiffs trademarks and trade dress:
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14.
By letter dated July 25, 2014, Plaintiff made a formal demand upon
Defendant to cease and desist infringement of its trademark and trade dress. See
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Exhibit B, Letter to Defendant.
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Apparently in response to Plaintiffs demand, Defendant changed its
interior signage, but persisted in infringing Plaintiffs exterior signage and interior
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design.
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Plaintiff made a second demand upon Defendant regarding the
continuing infringement of its trademarks and trade dress by letter dated October
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17, 2014. See Exhibit C, Second Letter to Defendant.

17.
A recent inspection of Defendants premises has revealed that
Defendants infringement of Plaintiffs trademarks and trade dress continues

unabated.
FIRST CLAIM FOR RELIEF
(Lanham Act Unfair Competition False Designation Of Origin under 15
U.S.C. 1125(a))
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Plaintiff incorporates each and every allegation of this Complaint.
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Plaintiff has expended considerable effort, skill, and capital promoting
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its barbershop under its trademarks and trade dress commencing long before
Defendant was formed.
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As a result, Plaintiffs trademarks and trade dress have become
associated with Plaintiffs services, and have acquired substantial goodwill with
consumers.
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Upon information and belief, Defendant had actual knowledge of
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Plaintiff, its trademarks and trade dress, before it opened for business, and willfully
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infringed the same.

22.
Defendant had constructive notice of Plaintiffs trademark registration
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for the Poster Wall before opening for business.

23.
Defendants acts, practices, and conduct constitute unfair competition,
false designation of origin, and false or misleading descriptions or representations
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of fact in that they are likely to cause confusion or mistake, or deceive the public
into believing there is an affiliation, connection, or association between Defendant
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with Plaintiff, or believing that Defendants services originate from, are sponsored
by, or approved of by Plaintiff, in violation of 15 U.S.C. 1125(a).
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As a direct and proximate result of Defendants infringement, Plaintiff
has and is likely to be substantially injured in its business, including its goodwill
and reputation, resulting in lost revenues and profits, and diminished goodwill.
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Plaintiff has no adequate remedy at law because its trademarks and
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trade dress represent to the public the identity, reputation, and goodwill of Plaintiff
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such that damages alone cannot fully compensate Plaintiff for Defendants
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misconduct.
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Unless enjoined by the Court, Defendant and those acting in concert
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with it will continue to use and infringe Plaintiffs trademarks and trade dress to
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the irreparable injury of Plaintiff. This threat of future injury to the business
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identity, goodwill, and reputation of Plaintiff requires injunctive relief to prevent
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Defendants continued use of Plaintiffs trademarks and trade dress, and to

ameliorate and mitigate injuries of Plaintiff.
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Plaintiff is entitled to preliminary and permanent injunctions enjoining
Defendant from any future use of Plaintiffs trademarks and trade dress.
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Plaintiff is entitled to an accounting of Defendants earnings and
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revenues for the time period in which it has used Plaintiffs trademarks and trade
dress without authorization.
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Plaintiff is entitled to recover damages equal to
Defendants profits, all damages sustained by Plaintiff, and the costs of the action.
SECOND CLAIM FOR RELIEF
(Unfair Competition Common Law)
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29.
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Defendants actions, as set forth herein, constitute unfair competition
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in that they have the natural and probable tendency to deceive so as to pass off the
business of one person as and for that of another.
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Plaintiff is entitled to preliminary and permanent injunctive relief
against Defendants continued use of Plaintiffs trademarks and trade dress in

connection with its barbershop.
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Plaintiff is entitled to recover damages, and to receive other equitable
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relief, as determined by the Court, including permanent injunctive relief.
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THIRD CLAIM FOR RELIEF

(Violation of the California Model State Trademark Law,
California Business and Professions Code Sections 14200 et seq.)
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Defendant has used, without Plaintiffs consent, Plaintiffs trademarks
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in a manner likely to mislead the public and cause confusion or mistake, or deceive
the public into believing there is an affiliation, connection, or association between
Defendant with Plaintiff, or believing that Defendants services originate from, are
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sponsored by, or approved of by Plaintiff.

35.
Defendants acts, practices, and conduct significantly impact the
public as actual or potential consumers of Plaintiffs services.
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Plaintiff has suffered injury to a legally protected interest as a result of
Defendants acts, practices, and conduct.

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Plaintiff has been injured as a result of Defendants acts, practices,
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and conduct.
FOURTH CLAIM FOR RELIEF
(Misappropriation of Business Values and Goodwill)
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Defendants unauthorized use of Plaintiffs trademarks and trade
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dress, as set forth above, constitutes misappropriation of Plaintiffs valuable
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goodwill, reputation, and business values.
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40.
Plaintiff has expended substantial time, labor, skill, and money in
developing its trademarks and trade dress for barbershop services since as early as
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2001.
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As a result, Plaintiffs trademarks and trade dress have developed
significant goodwill in the market and have come to represent the highest standards
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of quality and service.

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Defendant has misappropriated Plaintiffs goodwill and is using that
goodwill for its direct benefit and profit.

43.
Defendants misappropriation of Plaintiffs trademarks and trade dress
and goodwill has wrongfully interfered with Plaintiffs business.

44.
Defendant has unfairly profited from its misappropriation of
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Plaintiffs goodwill and business values and has capitalized on their commercial
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value, causing Plaintiff damages in an amount to be proven at trial.
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45.
Plaintiff is entitled to an accounting of Defendants earnings and
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revenues and damages for Defendants unauthorized misappropriation of
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Defendants goodwill and business values.
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FIFTH CLAIM FOR RELIEF
(Unjust Enrichment)
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46.
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Defendant knowingly used Plaintiffs trademarks and trade dress
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under circumstances which would make it unjust for Defendant to retain the
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benefit without paying Plaintiff.

48.
Defendant has retained this benefit at the expense of Plaintiff.
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Plaintiff is entitled to an accounting, the imposition of a constructive
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trust, and disgorgement of Defendants profits.
PRAYER FOR RELIEF
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WHEREFORE, Plaintiff prays for the following relief:

1.
A preliminary and permanent injunction directing Defendant to
remove all infringing exterior and other signage and the Poster Wall;
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An order requiring Defendant to promptly cease and desist all
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advertising which uses any reproduction of the infringing trademarks and trade
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dress, or any other confusingly similar designation, in all media including Internet
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websites and social media, newspapers, magazines, flyers, coupons, promotions,
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signs, telephone books, telephone directory assistance listings and mass mailings,
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all at Defendants cost;
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3.
A preliminary and permanent injunction enjoining Defendant, its
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directors, officers, agents, servants, employees and attorneys, and all others in
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active concert or participation with them from:
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a.
Using the Plaintiffs trademarks or trade dress, or any
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trademark, service mark, logo, trade name, or trade dress that is confusingly
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similar to Plaintiffs;
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b.
Otherwise infringing Plaintiffs trademarks or trade dress;
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Passing off any of its products or services as those of Plaintiff;
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Causing a likelihood of confusion or misunderstanding as to the
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source or sponsorship of its businesses, products or services; and
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Causing a likelihood of confusion or misunderstanding as to its
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affiliation, connection or association with Plaintiff or any of Plaintiffs products or
services;
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4.
An order requiring Defendant to file with the Court and to serve upon
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Plaintiffs counsel within ten (10) days after entry of any injunction or order issued
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herein, a written report, under oath, setting forth in detail the manner in which it
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has complied with such injunction or order;

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An accounting of Defendants revenue, earnings and profits for the
purpose of determining damages;
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An order that Defendant account and pay over to Plaintiff all gains,
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profits and advantages derived by it as a result of its infringement of Plaintiffs
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trademarks or trade dress and unfair competition, and misappropriation of
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goodwill, business values, and unjust enrichment;

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An award of the costs and expenses, including reasonable attorneys
fees, incurred by Plaintiff in connection with this action as provided for by statute;
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An award of prejudgment interest; and
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For such other and further relief as the Court deems just and
appropriate.
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Respectfully submitted, this 5th day of May, 2016.
MOYE WHITE LLP
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/s/ Joshua P. Kweller

Joshua P. Kweller (SBN 254834)
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Attorneys for Plaintiff
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Floyd's 99 v. Chavalo 77 - Floyd's Barbershop Trademark Complaint PDF

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Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 1 of 13 Page ID #:1

Joshua P. Kweller (SBN 254834)

UNITED STATES DISTRICT COURT

FLOYDS 99 HOLDINGS, LLC, a

Case No. ______________________

Plaintiff, Floyds 99 Holdings, LLC, through its attorneys, Moye White

INTRODUCTION AND NATURE OF THE ACTION

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 2 of 13 Page ID #:2

Plaintiff seeks, among other things, an injunction enjoining

PARTIES, JURISDICTION AND VENUE

Plaintiff is a Colorado limited liability company with its principal

place of business at 5340 S. Quebec, Suite 205N, Greenwood Village, Colorado

Defendant is a California corporation with its principal place of

business located at 7219 Atlantic Ave., Cudahy, California 90201.

Plaintiff commenced operations as a barbershop in or about 2001, and

provides services in several states, including California.

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 3 of 13 Page ID #:3

Plaintiffs trademarks and trade dress have become readily recognized

by consumers and associated with Plaintiff, and comprise an extremely valuable

Among the trademarks adopted by Plaintiff are a distinctive logo first

used by Plaintiff as early as June 2006:

Plaintiff has also created, developed, and employed in its business a

of Plaintiffs U.S. Trademark registration is attached hereto as Exhibit A.

Defendant was incorporated in California on March 10, 2014.

In or about July 2014, Plaintiff became aware that Defendant had

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 4 of 13 Page ID #:4

As shown in the side-by-side comparison photographs below, the

interior and exterior signage used by Defendant constituted wholesale

misappropriation of Plaintiffs trademarks and trade dress:

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 5 of 13 Page ID #:5

Exhibit B, Letter to Defendant.

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 6 of 13 Page ID #:6

Apparently in response to Plaintiffs demand, Defendant changed its

Plaintiff made a second demand upon Defendant regarding the

17, 2014. See Exhibit C, Second Letter to Defendant.

A recent inspection of Defendants premises has revealed that

Defendants infringement of Plaintiffs trademarks and trade dress continues

Plaintiff incorporates each and every allegation of this Complaint.

Plaintiff has expended considerable effort, skill, and capital promoting

As a result, Plaintiffs trademarks and trade dress have become

Upon information and belief, Defendant had actual knowledge of

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 7 of 13 Page ID #:7

infringed the same.

Defendant had constructive notice of Plaintiffs trademark registration

for the Poster Wall before opening for business.

Defendants acts, practices, and conduct constitute unfair competition,

false designation of origin, and false or misleading descriptions or representations

into believing there is an affiliation, connection, or association between Defendant

As a direct and proximate result of Defendants infringement, Plaintiff

Plaintiff has no adequate remedy at law because its trademarks and

Unless enjoined by the Court, Defendant and those acting in concert

identity, goodwill, and reputation of Plaintiff requires injunctive relief to prevent

Case 2:16-cv-03108-PSG-AFM Document 1 Filed 05/05/16 Page 8 of 13 Page ID #:8

Defendants continued use of Plaintiffs trademarks and trade dress, and to

Plaintiff is entitled to preliminary and permanent injunctions enjoining

Plaintiff is entitled to an accounting of Defendants earnings and

dress without authorization.

Plaintiff is entitled to recover damages equal to

Plaintiff incorporates each and every allegation of this Complaint.

Defendants actions, as set forth herein, constitute unfair competition

Plaintiff is entitled to preliminary and permanent injunctive relief

against Defendants continued use of Plaintiffs trademarks and trade dress in