AMSA v. Advance Carts - Complaint

Case 9:18-cv-80383-BB Document 1 Entered on FLSD Docket 03/26/2018 Page 1 of 66
IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA
Civil Action No. ______________________
AMSA, INC. d/b/a VERSACART SYSTEMS, INC.,

a Colorado corporation,
Plaintiff,
v.
ADVANCE CARTS, INC.,

a Florida corporation, and
SUPERBASKET AMERICAS, INC.,
a Connecticut corporation,
Defendants.
COMPLAINT AND JURY DEMAND
Plaintiff AMSA, Inc. d/b/a Versacart Systems, Inc. (hereinafter "Plaintiff" or "Versacart
Systems"), by and through its undersigned counsel, for its Complaint against Defendants Advance
Carts, Inc. (“Advance”) and SuperBasket Americas, Inc. (“SuperBasket”), states as follows:
JURISDICTION
1. This action arises under the patent laws of the United States, 35 U.S.C. § 101 et
seq., for unfair competition arising under the Lanham Act, 15 U.S.C. § 1125(a), and for violation
of state and common law. The Court has original subject matter jurisdiction over this case and the
parties pursuant to 28 U.S.C. §§ 1331, 1338(a), and 15 U.S.C. §1221, and supplemental
jurisdiction under 28 U.S.C. §§ 1367(a).
2. The Court has personal jurisdiction over Defendants as Defendants have a principal
place of business in this District, conduct business in this District, sell their infringing products in
this District, and as Versacart Systems' claims arise from tortious acts occurring in this District,
and as Defendant Advance is incorporated in the state of Florida.
3. The Court has jurisdiction over Defendant SuperBasket under the state of Florida
Long Arm Statute, Fla. Stat. 48.193, as Defendant SuperBasket operates, conducts, engages in,
and carries on a business in Florida.
VENUE
4. Venue is proper in the United States District Court for the Southern District of
Florida pursuant to 28 U.S.C. §§ 1391 and 1400(b).
THE PARTIES
5. Plaintiff Versacart Systems is, and at all relevant times herein was, a corporation
duly organized and existing under the laws of the state of Colorado, having a principal place of
business at 4720 Walnut Street, Suite 105, Boulder, Colorado 80301. Plaintiff designs, imports,
exports, and distributes shopping carts and ancillary items through multiple channels throughout
the United States of America.
6. Mr. Ivor Michael Walter and Mr. Jeroen Engel are, and at all relevant times herein
were, the inventors of the "Shopping Cart," protected by U.S. Design Patent No. D538,501, which
issued on March 13, 2007 (the "'501 Patent"). Mr. Walter and Mr. Engel have duly assigned the
'501 Patent to Versacart Systems.
7. Mr. Walter and Mr. Engel are, and at all relevant times herein were, the inventors
of the "Shopping Cart," protected by U.S. Design Patent No. D566,372, which issued on April 8,
2008 (the "'372 Patent"). Mr. Walter and Mr. Engel have duly assigned the '372 Patent to Versacart
Systems.
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8. Mr. Walter is, and at all relevant times herein was, the inventor of the "Cart,"
protected by U.S. Design Patent No. D580,619, which issued on November 11, 2008 (the "'619
Patent"). Mr. Walter has duly assigned the '619 Patent to Versacart Systems.
protected by U.S. Design Patent No. D633,269, which issued on February 22, 2011 (the "'269
Patent"). Mr. Walter has duly assigned the '269 Patent to Versacart Systems.
of the "Cart," protected by U.S. Design Patent No. D638,602, which issued on May 24, 2011 (the
"'602 Patent"). Mr. Walter and Mr. Engel have duly assigned the '602 Patent to Versacart Systems.
protected by U.S. Design Patent No. D639,521, which issued on June 7, 2011 (the "'521 Patent").
Mr. Walter has duly assigned the '521 Patent to Versacart Systems.
12. Mr. Walter and Mr. Ning Siu Sin are, and at all relevant times herein were, the
inventors of the "Cart," protected by U.S. Design Patent No. D644,809, which issued on September
6, 2011 (the "'809 Patent"). Mr. Walter and Mr. Sin have duly assigned the '809 Patent to Versacart
Systems.
13. Mr. Walter, Mr. Engel and Mr. Wilson Zeng are, and at all relevant times herein
were, the inventors of the "Set of Cart Baskets," protected by U.S. Design Patent No. D656,288,
which issued on March 20, 2012 (the "288 Patent"). Mr. Walter, Mr. Engel, and Mr. Zeng have
duly assigned the '288 Patent to Versacart Systems.
14. Mr. Walter is, and at all relevant times herein was, the inventor of the "Combined
Child Seat and Retention Flap for use with a Shopping Cart," protected by U.S. Design Patent No.
3
D658,841, which issued on May 1, 2012 (the "'841 Patent"). Mr. Walter has duly assigned the
of the "Set of Cart Baskets," protected by U.S. Design Patent No. D663,091, which issued on July
3, 2012 (the "'091 Patent"). Mr. Walter and Mr. Engel have duly assigned the ‘091 Patent to
Versacart Systems.
protected by U.S. Design Patent No. D700,762, which issued on March 4, 2014 (the "'762 Patent").
protected by U.S. Design Patent No. D751,264, which issued on March 8, 2016 (the "'264 Patent").
18. Mr. Walter, Mr. Engel, and Mr. Zeng are, and at all relevant times herein were, the
inventors of the "Cart Basket," protected by U.S. Design Patent No. RE45,961, which issued on
April 5, 2016 (the "'’961 Reissued Patent" or “’961 Patent”). Mr. Walter, Mr. Engel, and Mr. Zeng
have duly assigned the '961 Reissued Patent to Versacart Systems.
19. Mr. Walter, Mr. Zeng, and Mr. Paul Jensen are, and at all relevant times herein
were, the inventors of the "Cart," protected by U.S. Design Patent No. D763,536, which issued on
August 9, 2016 (the "'536 Patent"). Mr. Walter, Mr. Zeng, and Mr. Jensen have duly assigned the
20. Mr. Walter is, and at all relevant times herein was, the inventor of the "Shopping
Cart," protected by U.S. Design Patent No. RE46,268, which issued on January 10, 2017 (the "'268
4
Reissued Patent" or “’268 Patent”). Mr. Walter has duly assigned the '268 Reissued Patent to
Versacart Systems.
21. Mr. Walter, Mr. Engel, and Mr. Zeng are, and at all relevant times herein were, the
inventors of the "Set of Cart Baskets," protected by U.S. Design Patent No. RE46,281, which
issued on January 24, 2017 (the "'281 Reissued Patent" or “’281 Patent”). Mr. Walter, Mr. Engel,
and Mr. Zeng have duly assigned the ‘281 Reissued Patent to Versacart Systems.
22. Upon information and belief, Defendant Advance is, and at all relevant times herein
was, a corporation duly organized and existing under the laws of the state of Florida with a
principal place of business located at 2799 NW 2nd Avenue, Boca Raton, Florida 33431. Advance
conducts business in this District and has sold and presently sells infringing products in this
District.
23. Upon information and belief, Defendant Advance is an operating entity owned
100% by Defendant SuperBasket, a corporation duly organized and existing under the laws of the
state of Connecticut, with a principal place of business at 129 Church St., New Haven, Connecticut
06510.
24. Upon information and belief, Defendant Advance conducts business in Florida on
behalf of SuperBasket, and under the direction and control of SuperBasket.
25. On information and belief, Defendants employ at least one common corporate
officer who resides in this district. Marcus Magnusson is identified in state corporate records as
the President of Advance and the Vice President and Secretary of SuperBasket, and lists his
residence address in Boca Raton, Florida. Mr. Magnusson is also identified as the registered agent
for Advance.
26. Advance and SuperBasket are hereinafter referred to collectively as "Defendants".
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FACTUAL ALLEGATIONS
The '501 Patent
27. Beginning on or about October 2004, Versacart Systems began to market and sell
a novel cart, which is set forth and described in the '501 Patent, in the United States of America.
28. On September 7, 2005, Mr. Walter filed a United States Patent Application with
the United States Patent and Trademark Office (“USPTO”) to protect the ornamental design of
this cart, which was entitled "Shopping Cart."
29. Mr. Walter assigned the subject matter of the '501 Patent to Versacart Systems in
an Assignment dated September 2, 2005. The Assignment was recorded at the USPTO on October
4, 2005.
30. On March 13, 2007, the USPTO duly and legally issued to Ivor Michel Walter U.S.
Design Patent No. D538,501. A true copy of the '501 Patent is attached hereto as Exhibit 1.
31. Mr. Walter was and continues to be the first and original inventor of the invention
claimed in the '501 Patent, which is sold as Versacart Systems' EXpress6000-B (also referred to
as “EXpress 6000”). The EXpress6000-B is made of steel using round and/or oval tubing and/or
wire and molded plastic. True and correct copies of digital photographs of Versacart’s
EXpress6000-B cart and a specification sheet of the EXpress6000-B cart are attached and
incorporated herein as Exhibit 17.
32. Mr. Engel was subsequently identified as an inventor of the invention claimed in
the ‘501 Patent and assigned all right, title, and interest in the ‘501 Patent to Versacart Systems in
Assignments dated February 15, 2016.
33. Plaintiff is, and at all relevant times mentioned herein was, the lawful assignee of
the '501 Patent.
6
34. Plaintiff has not licensed nor assigned any rights under the '501 Patent to
Defendants, nor to any agent of Defendants.
35. Pursuant to Versacart Systems' standard business practice of marking products, the
EXpress6000-B and/or packaging was marked with notice of "patent pending" beginning in or
about September 2005, after Versacart Systems filed the application that became the '501 Patent.
36. Upon information and belief, at least as early as June, 2014 and continuing through
the present, Defendant Advance designed, manufactured, and sold its own versions of Plaintiff's
novel cart, referred to as “Xpress 90x”, as set forth and described in the '501 Patent. Defendant
Advance's Xpress 90x cart is identical or at least substantially similar in design and shape to the
cart depicted in the '501 Patent. True and correct copies of digital photographs of Defendant
Advance's imitation Xpress 90x cart are attached and incorporated herein as Exhibit 26.
37. Upon information and belief, Defendant Advance's imitation Xpress 90x cart is
marketed, sold, and offered for sale throughout the United States by Defendants, including but not
limited to within the state of Florida.
The '372 Patent
38. Beginning on or about January 2006, Versacart Systems began to market and sell a
novel cart, which is set forth and described in the '372 Patent, in the United States of America.
39. On December 14, 2006, Mr. Walter filed a United States Patent Application with
the USPTO to protect the ornamental design of the novel cart, which was entitled "Shopping Cart."
40. On January 3, 2007, Mr. Walter assigned the '372 Patent to Versacart Systems. The
Assignment was recorded at the USPTO on February 12, 2007.
41. On April 8, 2008, the USPTO duly and legally issued to Ivor Michel Walter U.S.
7
claimed in the ‘372 Patent, which is sold as Versacart Systems' "EXpress 3500-B" and “EXpress
3500-B-C (also referred to as “EXpress 3500”). The EXpress3500-B and EXpress 3500-B-C are
made of steel using round and/or oval tubing and/or wire and molded plastic. True and correct
copies of digital photographs of Versacart’s EXpress3500-B and EXpress 3500-B-C carts and
specification sheets thereof are attached and incorporated herein as Exhibit 18.
Assignments dated February 15, 2016.
the '372 Patent.
about December, 2006, after Versacart Systems filed the application that became the '372 Patent.
novel cart, referred to as “Xpress 55x,” “Xpress 65x,” and “Xpress 65xc,” as set forth and
described in the '372 Patent. Defendant Advance's Xpress 55x, 65x, and 65xc carts are identical
or at least substantially similar in design and shape to the cart depicted in the '372 Patent. True
and correct copies of digital photographs of Defendant Advance's imitation Xpress 55x, 65x, and
65xc carts and specification sheets thereof are attached and incorporated herein as Exhibit 27.
8
48. Upon information and belief, Defendant Advance's imitation Xpress 55x, 65x, and
65xc carts are marketed, sold, and offered for sale throughout the United States by Defendants,
including but not limited to within the state of Florida.
The '619 Patent
49. Beginning on or about February, 2007, Versacart Systems began to market and sell
50. On January 30, 2008, Mr. Walter filed a United States Patent Application with the
United States Patent and Trademark Office ("USPTO") to protect the ornamental design of this
cart, which was entitled "Cart."
an Assignment dated January 29, 2008. The Assignment was recorded at the USPTO on January
30, 2008.
52. On September 6, 2011, the USPTO duly and legally issued to Ivor Michel Walter
U.S. Design Patent No. D580,619. A true copy of the '619 Patent is attached hereto as Exhibit 3.
claimed in the '619 Patent, which is sold as Versacart Systems' "EXpress5050-B" (also referred to
as “EXpress5050”). The EXpress5050-B is made of steel using round and/or oval tubing and/or
wire and molded plastic. True and correct copies of digital photographs of Versacart’s
EXpress5050-B cart and a specification sheet of the EXpress5050-B cart are attached and
incorporated herein as Exhibit 19.
the '619 Patent.
9
about January, 2008 after Versacart Systems filed the application that became the '619 Patent.
Advance's Xpress 100x imitation of Plaintiff's novel cart, and a specification sheet of the Xpress
100x cart, taken directly from Defendant’s website, are attached and incorporated herein as Exhibit
28.
58. Upon information and belief, Defendant Advance's imitation Xpress Series 100x
cart is used, marketed, sold, and offered for sale by Defendants throughout the United States,
The '269 Patent
59. Beginning on or about November, 2008, Versacart Systems began to market and
sell a novel cart, which is set forth and described in the '269 Patent, in the United States of America.
60. On October 22, 2009, Mr. Walter filed a United States Patent Application with the
USPTO to protect the ornamental design of this cart, which was entitled "Cart."
10
an Assignment dated October 22, 2009. The Assignment was recorded at the USPTO on October
22, 2009.
62. On February 22, 2011, the USPTO duly and legally issued to Ivor Michel Walter
claimed in the '269 Patent, which is sold as Versacart Systems' EXpress6000-B. See Exhibit 17.
the '269 Patent.
about October 2006, after Versacart Systems filed the application that became the '269 Patent.
67. Upon information and belief, at least as early as June 2014 and continuing through
Advance's imitation Xpress 110x cart of Plaintiff's novel cart, taken directly from Plaintiff’s
website, and a specification sheet of the Xpress 110x cart, are attached and incorporated herein as
Exhibit 29.
11
marketed, sold, and offered for sale by Defendants throughout the United States, including but not
The '602 Patent
an Assignment dated October 27, 2010. The Assignment was recorded at the USPTO on
November, 2010.
72. On May 24, 2011, the USPTO duly and legally issued to Ivor Michel Walter U.S.
claimed in the '602 Patent, which is sold as Versacart Systems' "EXpress5050-B". The
EXpress5050-B is made of steel using round and/or oval tubing and/or wire and molded plastic.
See Exhibit 19.
an Assignment dated February 15, 2016 and recorded on April 25, 2016.
the '602 Patent.
12
about October, 2010 after Versacart Systems filed the application that became the '602 Patent.
Advance's Xpress 100x imitation of Plaintiff's novel cart, and a specification sheet of the Xpress
100x cart, taken directly from Defendant’s website, are attached and incorporated herein as Exhibit
28.
used, marketed, sold, and offered for sale by Defendants throughout the United States, including
but not limited to within the state of Florida.
The '521 Patent
80. Beginning on or about December, 2009, Versacart Systems began to market and
81. On November 15, 2010, Mr. Walter filed a United States Patent Application with
the United States Patent and Trademark Office ("USPTO") to protect the ornamental design of this
13
an Assignment dated November 15, 2010. The Assignment was recorded at the USPTO on
November 15, 2010.
83. On June 7, 2011, the USPTO duly and legally issued to Ivor Michel Walter U.S.
claimed in the '521 Patent, which is sold as Versacart Systems' "EXpress7050". The EXpress7050
is made of steel using round and/or oval tubing and/or wire and molded plastic. True and correct
copies of digital photographs of Versacart’s EXpress7050 cart and a specification sheet for the
EXpress7050 cart are attached and incorporated herein as Exhibit 20.
the '521 Patent.
EXpress7050 and/or packaging was marked with notice of "patent pending" beginning in or about
November, 2010 after Versacart Systems filed the application that became the '521 Patent.
novel cart, referred to as “Xpress 130xc,” as set forth and described in the '521 Patent. Defendant
Advance's Xpress 130xc cart is identical or at least substantially similar in design and shape to the
14
Advance's Xpress 130xc imitation of Plaintiff's novel cart, and a specification of the Xpress 130xc
cart, taken directly from Defendant’s website, are attached and incorporated herein as Exhibit 30.
89. Upon information and belief, Defendant Advance's imitation Xpress 130xc cart is
The '809 Patent
90. Beginning on or about December, 2009, Versacart Systems began to market and
91. On December 1, 2010, Mr. Walter filed a United States Patent Application with the
December 1, 2010. Subsequently, Mr. Ning Siu Sin was identified as an inventor of the invention
claimed in the ‘809 Patent, and he then assigned the subject matter of the ‘809 patent to Versacart
Systems, and his Assignment was recorded in the USTPO.
93. On September 6, 2011, the USPTO duly and legally issued to Ivor Michel Walter
claimed in the '809 Patent, which is sold as Versacart Systems' "EXpress6000-C" (also referred to
as “EXpress6000” or “EXpress6000-C”). The EXpress6000-C is made of steel using round and/or
oval tubing and/or wire and molded plastic. True and correct copies of digital photographs of
15
Versacart’s EXpress6000-C cart and a specification sheet of the EXpress6000-C cart are attached
and incorporated herein as Exhibit 21.
the '809 Patent.
EXpress6000-C and/or packaging was marked with notice of "patent pending" beginning in or
about December, 2010 after Versacart Systems filed the application that became the '809 Patent.
novel cart, referred to as “Xpress 110xc”, as set forth and described in the '809 Patent. Defendant
Advance's Xpress 110xc cart is identical or at least substantially similar in design and shape to the
Advance's Xpress 110xc imitation of Plaintiff's novel cart, and a specification sheet of the Xpress
110xc cart, taken directly from Plaintiff’s website, are attached and incorporated herein as Exhibit
31.
99. Upon information and belief, Defendant Advance's imitation Xpress 110xc cart is
The '288 Patent
100. Beginning on or about April 2010, Versacart Systems began to market and sell a
16
101. On March 23, 2011, Mr. Walter filed a United States Patent Application with the
cart, which was entitled "Set of Cart Baskets.”
an Assignment dated March 23, 2011. The Assignment was recorded at the USPTO on March 23,
2011.
claimed in the '288 Patent, which is sold as Versacart Systems' "TT-100-S-T". The TT-100-S-T
baskets are made of molded plastic having a plurality of holes on each of the sides. True and correct
copies of digital photographs of Versacart’s TT-100-S-T cart are attached and incorporated herein
as Exhibit 22.
105. Mr. Engel and Mr. Zeng were subsequently identified as inventors of the invention
claimed in the ‘288 Patent.
106. Mr. Zeng assigned all right, title, and interest in the ‘288 Patent to Versacart
Systems in an Assignment dated February 15, 2016 and recorded on April 18, 2016.
107. Mr. Engel assigned all right, title, and interest in the ‘288 Patent to Versacart
Systems in an Assignment dated and recorded on April 4, 2016.
the '288 Patent.
17
TT-100-S-T and/or packaging was marked with notice of "patent pending" beginning in or about
March, 2011 after Versacart Systems filed the application that became the '288 Patent.
novel cart baskets, referred to as “105px”, as set forth and described in the '288 Patent. Defendant
Advance's 105px cart baskets are identical or at least substantially similar in design and shape to
the cart baskets depicted in the '288 Patent. True and correct copies of digital photographs of
Defendant Advance's 105px imitation of Plaintiff's novel cart, and a specification sheet of the
Xpress 105px cart, taken directly from Defendant’s website, are attached and incorporated herein
as Exhibit 32.
112. Upon information and belief, Defendant Advance's imitation 105px cart baskets are
The '841 Patent
113. Beginning on or about October, 2010, Versacart Systems began to market and sell
114. On September 21, 2011, Mr. Walter filed a United States Patent Application with
cart, which was entitled "Combined Child Seat and Retention Flap for Use with a Shopping Cart.”
an Assignment dated September 21, 2011. The Assignment was recorded at the USPTO on
September 22, 2011.
18
116. On May 1, 2012, the USPTO duly and legally issued to Ivor Michel Walter U.S.
claimed in the '841 Patent, which is sold as Versacart Systems' "EXpress7050". The EXpress7050
is made of steel using round and/or oval tubing and/or wire and molded plastic and has a child seat
and retention flap as set forth in the ‘841 Patent. See Exhibit 20.
the '841 Patent.
EXpress7050 and/or packaging was marked with notice of "patent pending" beginning in or about
September, 2011 after Versacart Systems filed the application that became the '841 Patent.
novel cart, referred to as “Xpress 130xc,” having the child seat and retention flap as set forth and
described in the '841 Patent. Defendant Advance's Xpress 130xc cart’s child seat and retention
flap is identical or at least substantially similar in design and shape to the child seat and retention
flap depicted in the '841 Patent. See Exhibit 30.
122. Upon information and belief, Defendant Advance's imitation Xpress 130xc cart
with child seat and retention flap is used, marketed, sold, and offered for sale by Defendants
throughout the United States, including but not limited to within the state of Florida.
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The '091 Patent
123. Beginning on or about April, 2011, Versacart Systems began to market and sell a
cart, which was entitled "Set of Cart Baskets."
December 1, 2010.
126. On July 3, 2012, the USPTO duly and legally issued to Ivor Michel Walter U.S.
claimed in the '091 Patent, which is sold as Versacart Systems' "TT-100-S-T". The Express TT-
100-S-T baskets are made of molded plastic having a plurality of holes on each of the sides. See
Exhibit 22.
the ‘091 Patent.
Systems in an Assignment dated and recorded on April 4, 2016.
the '091 Patent.
20
March, 2012 after Versacart Systems filed the application that became the '091 Patent.
novel cart, referred to as “105px”, as set forth and described in the '091 Patent. Defendant
Advance's 105px cart is identical or at least substantially similar in design and shape to the cart
depicted in the '091 Patent. True and correct copies of digital photographs of Defendant Advance's
Xpress 105px imitation of Plaintiff's novel cart, and a specification of the Advance 105px cart,
taken directly from Defendant’s website, are attached and incorporated herein as Exhibit 32.
134. Upon information and belief, Defendant Advance's imitation 105px cart is used,
marketed, sold, and offered for sale by Defendants throughout the United States, including but not
The '762 Patent
an Assignment dated October 17, 2012. The Assignment was recorded at the USPTO on
November 11, 2012.
21
claimed in the '762 Patent, which is sold as Versacart Systems' "TT-150" and “TT-175.” The TT-
150 and TT-175 each have a top basket made of colorful molded plastic and having rounded
corners and a plurality of holes on its sides. They also have a lower grated platform made of
rounded steel tubing. True and correct copies of digital photographs and specification sheets of
Versacart’s TT-150 and TT-175 carts are attached and incorporated herein as Exhibits 23 and 24.
the '809 Patent.
TT-150 and TT-175 and/or packaging was marked with notice of "patent pending" beginning in
or about October, 2012 after Versacart Systems filed the application that became the '762 Patent.
novel carts, referred to as “55px” and “105px,” as set forth and described in the '762 Patent.
Defendant Advance's 55px and 105px carts are identical or at least substantially similar in design
and shape to the cart depicted in the '762 Patent. See Exhibits 33 and 32.
144. Upon information and belief, Defendant Advance's imitation 55px and 105px carts
are used, marketed, sold, and offered for sale by Defendants throughout the United States,
22
The '264 Patent
145. Beginning on or about December 2013, Versacart Systems began to market and sell
146. On November 19, 2014, Mr. Walter filed a United States Patent Application with
November 19, 2014.
claimed in the '264 Patent, which is sold as Versacart Systems' "C-160". The C-160 is made of
steel using round and/or oval tubing and/or wire and molded plastic. True and correct copies of
digital photographs of Versacart’s C-160 cart and a specification sheet of the C-160 cart are
attached and incorporated herein as Exhibit 25.
the '264 Patent.
C-160 and/or packaging was marked with notice of "patent pending" beginning in or about
November, 2014 after Versacart Systems filed the application that became the '264 Patent.
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novel cart, referred to as “100Z,” “140Z” “160Z,” “180Z” and “210Z,” as set forth and described
in the '264 Patent. Defendant Advance's 100Z, 140Z, 160Z, 180Z, and 210Z carts are identical or
at least substantially similar in design and shape to the cart depicted in the '264 Patent. True and
correct copies of digital photographs and/or specification sheets of Defendant Advance's imitations
of Plaintiff's novel cart, taken directly from Defendant’s website, are attached and incorporated
herein as Exhibit 35.
154. Upon information and belief, Defendant Advance's imitation 100Z, 140Z, 160Z,
180Z, and 210Z carts are used, marketed, sold, and offered for sale by Defendants throughout the
United States, including but not limited to within the state of Florida.
The ‘961 Reissued Patent
novel cart, which is set forth and described in the '961 Reissued Patent, in the United States of
America.
USPTO to protect the ornamental design of the novel cart, which was entitled "Set of Cart
Baskets."
157. On March 24, 2011, Mr. Walter assigned the Patent Application that would become
the '700 Patent to Versacart Systems. The Assignment was recorded at the USPTO on March 24,
2011.
Design Patent No. D656,700.
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159. On April 5, 2016, the USPTO duly and legally reissued the ’700 patent as U.S.
Design Patent No. RE45,961. A true copies of the ‘961 Reissued Patent is attached hereto as
Exhibit 13.
160. Mr. Walter was and continues to be the first and original inventor of the novel cart,
which is sold as Versacart Systems' "TT-100-S-T". The TT-100-S-T has a top basket made of
plastic and having rounded corners and a plurality of holes on its sides. See Exhibit 22.
claimed in the ‘961 Patent and assigned all right, title, and interest in the ‘961 Patent to Versacart
Systems in Assignments dated February 15, 2016.
the ‘700 and ‘961 Patents.
163. Plaintiff has not licensed nor assigned any rights under the ‘700 or '961 Patents to
March 2011, after Versacart Systems filed the application that became the '700 and ‘961 Patents.
novel cart, referred to as “55px,” and “55pxc” as set forth and described in the '’700 and ‘961
Patents. Defendant Advance's 55px and 55pxc carts are identical or at least substantially similar
in design and shape to the cart depicted in the '700 and ‘961 Patents. See Exhibits 33 and 36.
25
166. Upon information and belief, Defendant Advance's imitation 55px and 55pxc carts
are marketed, sold, and offered for sale throughout the United States by Defendants, including but
not limited to within the state of Florida.
The '536 Patent
167. Beginning on or about February 2014, Versacart Systems began to market and sell
168. On January 12, 2015, Mr. Walter, Mr. Paul Jensen, and Mr. Zeng filed a United
States Patent Application with the United States Patent and Trademark Office ("USPTO") to
protect the ornamental design of this cart, which was entitled "Cart."
169. Mr. Walter, Mr. Jensen, and Mr. Zeng assigned the subject matter of the '536 Patent
to Versacart Systems in Assignments dated February 18, 2015. The Assignments were recorded
at the USPTO on February 24, 2015.
170. On August 9, 2016, the USPTO duly and legally issued to Ivor Michel Walter, Paul
Jensen and Wilson Zeng U.S. Design Patent No. D763,536. A true copy of the '536 Patent is
attached hereto as Exhibit 14.
171. Mr. Walter, Mr. Jensen, and Mr. Zeng were and continue to be the first and original
inventors of the invention claimed in the '536 Patent, which is sold as Versacart Systems' "C-160".
The C-160 is made of steel using round and/or oval tubing and/or wire and molded plastic. See
Exhibit 25.
the '536 Patent.
26
Express C-160 and/or packaging was marked with notice of "patent pending" beginning in or about
January, 2015 after Versacart Systems filed the application that became the ‘536 Patent.
novel cart, referred to as “100Z,” “140Z” “160Z,” “180Z,” and “210Z,” as set forth and described
in the '536 Patent. Defendant Advance's 100Z, 140Z, 160Z, 180Z, and 210Z carts are identical or
at least substantially similar in design and shape to the cart depicted in the '536 Patent. See Exhibit
35.
176. Upon information and belief, Defendant Advance's imitation 100Z, 140Z, 160Z,
180Z, and 210Z carts are used, marketed, sold, and offered for sale by Defendants throughout the
United States, including but not limited to within the state of Florida.
America.
178. On April 3, 2012, Mr. Walter filed a United States Patent Application with the
USPTO to protect the ornamental design of the novel cart, which was entitled "Shopping Cart.”
179. On April 2, 2012, Mr. Walter assigned the Patent Application that would become
the '972 Patent to Versacart Systems. The Assignment was recorded at the USPTO on October 8,
2015.
180. On July 9, 2013, the USPTO duly and legally issued to Ivor Michel Walter U.S.
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181. On January 10, 2017, the USPTO duly and legally reissued the ’972 patent as U.S.
Design Patent No. RE46,268. A true copy of the ‘268 Reissued Patent is attached hereto as Exhibit
15.
which is sold as Versacart Systems' "EXpress6000-C". The EXpress6000-C is made of steel using
round and/or oval tubing and/or wire and molded plastic, and has a top and bottom basket
connected by a frame and handle. See Exhibit 21.
EXpress6000-C and/or packaging was marked with notice of "patent pending" beginning in or
about April 2012, after Versacart Systems filed the application that became the '972 and ‘268
Patents.
novel cart, referred to as “Xpress 110x,” and “Xpress 110xc” as set forth and described in the '972
and ‘268 Patents. Defendant Advance's Xpress 110x and 110xc carts are identical or at least
substantially similar in design and shape to the cart depicted in the '972 and ‘268 Patents. See
Exhibits 29 and 31.
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187. Upon information and belief, Defendant Advance's imitation Xpress 110x and
110xc carts are marketed, sold, and offered for sale throughout the United States by Defendants,
America.
USPTO to protect the ornamental design of the novel cart, which was entitled "Set of Cart
Baskets".
190. On March 24, 2011 Mr. Walter assigned the Patent Application that would become
the '700 Patent to Versacart Systems. The Assignment was recorded at the USPTO on March 24,
2011.
192. On January 24, 2017, the USPTO duly and legally reissued the ’700 patent as U.S.
Design Patent No. RE46,281. A true copy of the ‘281 Reissued Patent is attached hereto as Exhibit
16.
which is sold as Versacart Systems' "TT-100-S-T". The TT-100-S-T has a top basket made of
plastic and having rounded corners and a plurality of holes on its sides. See Exhibit 22.
claimed in the ‘281 Reissued Patent.
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Systems in an Assignment dated May 22, 2016 and recorded on May 27, 2016.
196. Mr. Zeng assigned all right, title, and interest in the ‘281 Patent to Versacart
Systems in an Assignment dated May 26, 2016 and recorded on May 27, 2016.
March 2011, after Versacart Systems filed the application that became the '700 and ‘281 Patents.
novel cart, referred to as “55px,” and “55pxc” as set forth and described in the '’700 and ‘281
Patents. Defendant Advance's 55px and 55pxc carts are identical or at least substantially similar
in design and shape to the cart depicted in the '700 and ‘281 Patents. See Exhibits 33 and 35.
201. Upon information and belief, Defendant Advance's imitation 55px and 55pxc carts
are marketed, sold, and offered for sale throughout the United States by Defendants, including but
not limited to within the state of Florida.
Trade Dress Rights
EXpress6000-B Trade Dress
202. Plaintiff is, and at all relevant times mentioned herein was, the lawful owner of the
valid and protectable trade dress associated with its novel shopping cart, which includes features
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in the size, colors, texture, finish, and choice of material, associated with Versacart Systems'
EXpress6000-B. The EXpress6000-B trade dress includes, by way of example, the composite
image created by the carts in the EXpress6000 series, the frame made of steel, the use of
rectangular steel tubing in the frame, the use of coated metal wire in the basket, the use of round
and/or oval tubing and/or wire, the use of molded plastic on portions of the frame, and the
ornamental design of the novel cart. See Exhibit 17.
203. Defendant Advance’s Xpress 90x and 110x carts closely resemble the
characteristics of visual appearance of the Plaintiff’s EXpres 6000 series through the resemblance
of the composite image created by the carts in the EXpress6000 series, the use of a frame made of
steel, the use of rectangular steel tubing in the frame, the use of coated metal wire in the basket,
the use of round and/or oval tubing and/or wire, the use of molded plastic on portions of the frame,
and the resemblance of the ornamental design of the novel cart. See Exhibits 26 and 28.
EXpress 3500-B and EXpress 3500-B-C Trade Dress
valid and protectable trade dress associated with its novel cart, which includes features in the size,
colors, texture, finish, and choice of material associated with Versacart Systems' EXpress3500-B
and EXpress3500-B-C, which are also sold with Plaintiff's other product offerings. The
EXpress3500-B and EXpress3500-B-C trade dress includes, by way of example, the composite
image created by the EXpress3500-B and EXpress3500-B-C, the frame made of steel, the use of
round and/or oval tubing and/or wire, the use of molded plastic on portions of the frame, and the
205. Defendant Advance’s Xpress 55x, 65x, and 65xc carts closely resemble the
characteristics of visual appearance of the Plaintiff’s EXpress3500-B and EXpress3500-B-C
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through the resemblance of the composite image created by the carts in the EXpress3500-B and
EXpress3500-B-C, the use of a frame made of steel, the use of rectangular steel tubing in the
frame, the use of coated metal wire in the basket, the use of round and/or oval tubing and/or wire,
the use of molded plastic on portions of the frame, and the resemblance of the ornamental design
of the novel cart. See Exhibit 27.
EXpress5050-B Trade Dress
colors, texture, finish, and choice of material associated with the frame of Versacart Systems'
EXpress5050-B, which is also sold with Plaintiff's other product offerings. The EXpress5050-B
trade dress includes, by way of example, the composite image created by the EXpress5050-B, the
frame made of steel, the use of round and/or oval tubing and/or wire, the use of molded plastic on
portions of the frame, and the ornamental design of the novel cart. See Exhibit 19.
207. Defendant Advance’s Xpress 100x carts closely resemble the characteristics of
visual appearance of the Plaintiff’s EXpress5050-B through the resemblance of the composite
image created by the carts in the EXpress5050-B, the use of a frame made of steel, the use of
rectangular steel tubing in the frame, the use of coated metal wire in the basket, the use of round
and/or oval tubing and/or wire, the use of molded plastic on portions of the frame, and the
resemblance of the ornamental design of the novel cart. See Exhibit 28.
EXpress7050 Trade Dress
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EXpress7050, which is also sold with Plaintiff's other product offerings. The EXpress7050 trade
dress includes, by way of example, the composite image created by the EXpress7050, the frame
made of steel, the use of round and/or oval tubing and/or wire, the use of molded plastic on portions
of the frame, the proportional dimensions of the bottom and top baskets, and the ornamental design
209. Defendant Advance’s Xpress 110x carts closely resemble the characteristics of
visual appearance of the Plaintiff’s EXpress7050 through the resemblance of the composite image
created by the carts in the EXpress7050, the use of round and/or oval tubing and/or wire, the use
of molded plastic on portions of the frame, the proportional dimensions of the bottom and top
baskets, and the ornamental design of the novel cart. See Exhibit 30.
EXpress6000-C Trade Dress
EXpress6000-C, which is also sold with Plaintiff's other product offerings. The EXpress6000-C
trade dress includes, by way of example, the composite image created by the EXpress6000-C, the
frame made of steel, the use of round and/or oval tubing and/or wire, the use of molded plastic on
portions of the frame, and the ornamental design of the novel cart. See Exhibit 21.
211. Defendant Advance’s Xpress 110xc carts closely resemble the characteristics of
visual appearance of the Plaintiff’s EXpress6000-C through the resemblance of the composite
image created by the carts in the EXpress6000-C, the use of round and/or oval tubing and/or wire,
the use of molded plastic on portions of the frame, and the ornamental design of the novel cart.
See Exhibit 31.
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TT-100-S-T Trade Dress
colors, texture, finish, and choice of material associated with the frame of Versacart Systems' TT-
100-S-T, which is also sold with Plaintiff's other product offerings. The TT-100-S-T trade dress
includes, by way of example, the composite image created by the TT-100-S-T, the frame made of
colorful molded plastic, the use of holes on each of the sides of the baskets, the angle of the baskets,
the rounded corners, and the ornamental design of the novel cart. See Exhibit 22.
213. Defendant Advance’s 105px and 55px and 55pxc carts closely resemble the
characteristics of visual appearance of the Plaintiff’s TT-100-S-T through the resemblance of the
composite image created by the carts in the TT-100-S-T, the frame made of colorful molded
plastic, the use of holes on each of the sides of the baskets, the angle of the baskets, the rounded
corners, and the ornamental design of the novel cart. See Exhibits 32, 33, and 36.
TT-150 Trade Dress
150, which is also sold with Plaintiff's other product offerings. The TT-150 and trade dress
includes, by way of example, the composite image created by the TT-150, the top basket made of
plastic and having rounded corners and a plurality of holes on its sides, its bright color, the lower
platform made of round steel tubing, and the ornamental design of the novel cart. See Exhibit 23.
215. Defendant Advance’s 55px carts closely resemble the characteristics of visual
appearance of the Plaintiff’s TT-150 through the resemblance of the composite image created by
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the carts in the TT-150, the top basket made of plastic and having rounded corners and a plurality
of holes on its sides, its bright color, the lower platform made of round steel tubing, and the
TT-175 Trade Dress
175, which is also sold with Plaintiff's other product offerings. The TT-175 and trade dress
includes, by way of example, the composite image created by the TT-175, the top basket made of
plastic and having rounded corners and a plurality of holes on its sides, its bright color, the lower
platform made of round steel tubing, and the ornamental design of the novel cart. See Exhibit 24.
217. Defendant Advance’s 55pxc carts closely resemble the characteristics of visual
appearance of the Plaintiff’s TT-175 through the resemblance of the composite image created by
the carts in the TT-175, the top basket made of plastic and having rounded corners and a plurality
of holes on its sides, its bright color, the lower platform made of round steel tubing, and the
C-160 Trade Dress
colors, texture, finish, and choice of material associated with the frame of Versacart Systems' C-
160, which is also sold with Plaintiff's other product offerings. The C-160 trade dress includes, by
way of example, the composite image created by the C-160, the frame made of steel, the use of
round and/or oval tubing and/or wire, the use of molded plastic on portions of the frame, the
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horizontal and parallel design of the tubing, the design and angle of the lower platform, and the
219. Defendant Advance’s 100Z, 140Z, 160Z, 180Z, and 210Z carts closely resemble
the characteristics of visual appearance of the Plaintiff’s C-160 through the resemblance of the
composite image created by the carts in the C-160, the frame made of steel, the use of round and/or
oval tubing and/or wire, the use of molded plastic on portions of the frame, the horizontal and
parallel design of the tubing, the design and angle of the lower platform, and the ornamental design
Trademark Rights
220. In addition, since at least as early as March 30, 2005, Versacart Systems has
provided shopping carts throughout the United States through multiple distribution channels.
221. Since at least as early as March 30, 2005, Versacart has continuously used the mark
EXPRESS in connection with its carts in interstate commerce (hereafter referred to as “EXPRESS
Trademark”).
222. On February 8, 2018, Versacart filed U.S. Trademark Application Serial No.
87/785119 for the EXPRESS Trademark for “metal storage corrals in the nature of a storage shed
for shopping carts” in International Class 6, and “shopping carts; shopping carts designed to hold
a separate basket or crate” in International Class 12, based on use in interstate commerce as early
as March 30, 2005. A true and correct copy of U.S. Trademark Application Serial No. 87/785119
is attached hereto as Exhibit 38.
223. Among other goods, Versacart uses the EXPRESS Trademark in relation to a line
of shopping carts, which includes its EXpress6000-C, EXpress6000-B, EXpress5050-B, EXpress
7050 and EXpress3500-B carts.
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224. Versacart also operates a website hosted at www.versacart.com that promotes the
EXpress line of shopping carts. A true and correct copy of the web page for the EXpress line of
shopping carts is attached as Exhibit 37.
225. As a result of long-standing use, extensive advertising and promotion, Versacart
has acquired substantial common law rights in the EXPRESS Trademark, which has become
widely and favorably known among Versacart’s customers and potential customer base, including
national retail outlets and grocery stores, for designating a single source of shopping carts.
General Allegations
226. On or about June 25, 2014, Versacart Systems, by and through counsel, notified
Defendant Advance by priority mail letter transmission of Advance's infringement of Versacart
Systems' intellectual property rights (the "Notice Letter"). In the Notice Letter, Versacart Systems
asked Defendant Advance to discontinue the sale and offer for sale of Versacart Systems' product
designs and corresponding intellectual property, including patent, trademark, trade dress, and
copyrights. A true and correct copy of the Notice Letter and accompanying Exhibits are attached
hereto as Exhibit 39.
227. On or about July 11, 2014, Defendant Advance, via its Co-Owner Peter Olausson,
wrote a response letter (“Response Letter”) to counsel for Versacart Systems representing that it
had ceased using certain materials on its website, and that Advance needed more time to evaluate
and respond to certain other infringement matters. A true and correct copy of the Response Letter
is attached hereto as Exhibit 40.
228. Versacart Systems has not received any further communications from Defendant
Advance regarding the substance of the Notice Letter.
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229. Defendant Advance continues to copy product designs identified in the Notice
Letter and continues to make, sell, and offer for sale such copied products.
230. Defendant Advance copied existing and new designs made by Versacart Systems
after the date of the Notice Letter, and proceeded to make, sell, and offer for sale such copied
products.
231. Upon information and belief, Advance operates a website hosted at the domain
www.advancecarts.com that promotes shopping carts under the designation “Xpress” (“Advance’s
Shopping Carts”). A true and correct copy of the web page for the Xpress line of shopping carts
is attached as Exhibit 41.
232. Defendants market and distribute Advance’s Shopping Carts.
233. Defendant Advance’s “Xpress” designation for Advance’s Shopping Carts and
Versacart’s EXPRESS Trademark used in connection with its shopping carts are nearly identical.
Defendant Advance’s “Xpress” designation removes the letter “e” from EXPRESS, but sounds
identical to EXPRESS when pronounced.
234. Upon information and belief, Versacart and Defendants market and sell their goods
in the same channels of trade, including at trade shows, online, and directly to potential consumers.
235. Upon information and belief, Versacart and Defendants market and sell their goods
to the same potential customers, including large consumer retail chains in which shopping carts
are used.
236. Defendant Advance’s use of the “Xpress” designation for Advance’s Shopping
Carts is likely to cause consumer confusion with Versacart’s EXPRESS Trademark used in
connection with shopping carts.
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237. Upon information and belief, Defendant Advance adopted the “Xpress” designation
for its shopping carts knowingly, with an intent to derive benefit from the reputation of Versacart’s
EXPRESS Trademark. Even after receiving and responding to Versacart’s Notice Letter,
Defendant Advance continued using the “Xpress” designation for Advance’s Shopping Carts.
238. Upon information and belief, Defendants market and distribute Defendant
Advance’s Shopping Carts in each state of the United States.
239. Defendant Advance’s Shopping Carts are identical to the shopping carts supplied
by Versacart Systems under the EXPRESS Trademark.
240. Defendant Advance manufactures, distributes, and sells its own version of
Plaintiff's patented products throughout the United States.
241. Upon information and belief, at least as early as June, 2014, Defendant Advance
has been manufacturing, importing, selling and/or distributing products which infringe Plaintiff's
intellectual property rights.
242. Upon information and belief, Defendant Advance’s infringing activities occurred
and are occurring under the direction and control of Defendant SuperBasket.
243. Defendants are manufacturing, importing, selling and/or distributing infringing
products in willful violation of Versacart Systems' intellectual property rights.
244. By manufacturing, importing, selling, and/or distributing imitation products,
including Defendant Advance's Xpress 110c, Xpress 110x, Xpress 90x, Xpress 55x,, Xpress 65x,
Xpress 65xc, Flavor Series 105x and 105px, and 160Z, Defendants are infringing the trade dress
associated with Plaintiff's EXpress6000-C, EXpress6000-B, EXpress3500-B, EXpress3500-B-C,
EXpress5050-B, Express7050, TT-100-S-T, TT-150, TT-175, and/or C-160, which is protected
under Section 1125(a) of the Lanham Act.
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245. Defendants are "passing off" Defendants' version of EXpress6000-C,
EXpress6000-B, EXpress3500-B, EXpress3500-B-C, EXpress5050-B, Express7050, TT-100-S-
T, TT-150, TT-175, and/or C-160 shopping carts to third parties as the products that are marketed,
sold, and offered for sale throughout the United States by Versacart Systems.
246. Defendants' infringing and confusingly similar trade dress is likely to cause
confusion with Plaintiff's distinctive trade dress associated with Plaintiff's EXpress6000-C,
EXpress6000-B, EXpress3500-B, EXpress3500-B-C, EXpress5050-B, Express7050, TT-100-S-
T, TT-150, TT-175, and/or C-160, and upon information and belief, has caused confusion among
actual consumers.
247. The trade dress associated with Plaintiff's EXpress6000-C, EXpress6000-B,
EXpress3500-B, EXpress3500-B-C, EXpress5050-B, Express 7050, TT-100-S-T, TT-150, TT-
175, and/or C-160 has acquired secondary meaning.
248. The trade dress associated with Plaintiff's EXpress6000-C, EXpress6000-B,
EXpress3500-B, EXpress3500-B-C, EXpress5050-B, Express7050, TT-100-S-T, TT-150, TT-
175, and/or C-160 is non-functional.
249. Defendants’ use of the same or confusingly similar trade dress to the distinctive
trade dress associated with Plaintiff's EXpress6000-C, EXpress6000-B, EXpress3500-B,
EXpress3500-B-C, EXpress5050-B, Express7050, TT-100-S-T, TT-150, TT-175, and/or C-160
demonstrates copying and intent to confuse both potential and actual consumers, which constitutes
unfair competition.
250. The additional acts of Defendants complained of herein further constitute unfair
competition.
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FIRST CLAIM FOR RELIEF
(Infringement of the '501 Patent – Against Both Defendants)
251. Plaintiff realleges and incorporates by reference each and every allegation
contained in the previous paragraphs, as though fully set forth herein.
252. Defendants, and each of them, have infringed and continue to infringe the claims
of Plaintiff's '501 Patent by applying patented designs, or a colorable imitation thereof, to an article
of manufacture, and thereafter using, selling or distributing said products within this District and
elsewhere throughout the United States.
253. Upon information and belief, Defendants are inducing direct infringement of the
'501 Patent by others by actively instructing, assisting, and/or encouraging others to practice one
or more of the inventions claimed in the '501 Patent, in violation of 35 U.S.C. § 271(b).
254. Upon information and belief, Defendants are contributing to direct infringement of
the '501 Patent by others by directing others to manufacture one or more components which
constitute a material part of the invention defined by the claims of the '501 Patent, knowing the
same to be especially made or especially adapted for use in an infringement of the '501 Patent, and
which components are not staple articles or commodities of commerce suitable for substantial non-
infringing use, in violation of 35 U.S.C. § 271(c).
255. Defendants' actions of making, having made, importing, using or selling products
which infringe the '501 Patent have been, and are, willful, deliberate and/or in conscious disregard
of Plaintiff's rights, making this an exceptional case within the meaning of 35 U.S.C. § 285 and
entitling Plaintiff to an award of its attorneys' fees and treble damages.
256. Unless restrained and enjoined, Defendants' acts of infringement as alleged above,
will cause Plaintiff irreparable injury, to which Plaintiff has no adequate remedy.
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257. Defendants' infringement of the '501 Patent has caused damage to Plaintiff in an
amount to be ascertained at trial.
SECOND CLAIM FOR RELIEF
contained in paragraphs 1 through 250, as though fully set forth herein.
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THIRD CLAIM FOR RELIEF
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FOURTH CLAIM FOR RELIEF
(Infringement of the '269 Patent – Against All Defendants)
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FIFTH CLAIM FOR RELIEF
45
SIXTH CLAIM FOR RELIEF
46
SEVENTH CLAIM FOR RELIEF
47
EIGHTH CLAIM FOR RELIEF
48
NINTH CLAIM FOR RELIEF
of Plaintiff's ‘841 Patent by applying patented designs, or a colorable imitation thereof, to an article
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TENTH CLAIM FOR RELIEF
50
51
ELEVENTH CLAIM FOR RELIEF
52
TWELFTH CLAIM FOR RELIEF
53
THIRTEENTH CLAIM FOR RELIEF
54
FOURTEENTH CLAIM FOR RELIEF
55
FIFTEENTH CLAIM FOR RELIEF
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SIXTEENTH CLAIM FOR RELIEF
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SEVENTEENTH CLAIM FOR RELIEF
(Unfair Competition under 15 U.S.C. § 1125 – Against Both Defendants)
364. Defendants’ promotion, advertising, marketing, distribution, offer for sale and sale
throughout the United States of shopping carts under the designation “Xpress” constitutes
infringement of an unregistered trademark and use of a false designation of origin which is likely
to cause confusion, mistake, or deception as to origin, sponsorship, or approval, in violation of
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). This conduct constitutes an attempt to
trade on the goodwill which Versacart Systems has developed in the EXPRESS Trademark, all to
the damage of Versacart Systems.
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365. As a result of Defendants’ conduct, Defendants have caused Versacart System
irreparable harm and injury and will continue to do so unless Defendants are restrained and
enjoined by this Court from further violation of Versacart System’s rights.
366. Versacart System has no adequate remedy at law.
EIGHTEENTH CLAIM FOR RELIEF
(Florida Common Law Trademark Infringement – Against Both Defendants)
368. Defendants’ promotion, advertising, marketing, distribution, offer for sale and sale
throughout the United States of shopping carts under the designation “Xpress” is likely to cause
confusion, or to deceive potential purchasers and others, whereby they would be led to mistakenly
believe that Defendants are affiliated with, related to, sponsored by, or connected with Versacart
Systems, in violation of the common law of the state of Florida.
369. This conduct also constitutes an attempt to trade on the goodwill which Versacart
Systems has developed in the EXPRESS Trademark, all to the damage of Versacart Systems.
370. Upon information and belief, the acts of Defendants were willful and malicious and
done with the intent to injure Plaintiff. Therefore, Plaintiff is entitled to recover, and hereby
requests, exemplary and/or punitive damages from Defendants.
371. As a result of this conduct, Defendants, have caused and, unless restrained and
enjoined by this Court, will continue to cause irreparable harm, damage, and injury to Versacart
Systems.
372. Versacart Systems has no adequate remedy at law.
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NINETEENTH CLAIM FOR RELIEF
(Trade Dress Infringement – Against Both Defendants)
374. Defendants have infringed and continue to infringe the trade dress associated with
Plaintiff's EXpress6000C, EXpress6000B, EXpress3500-B, Express 7050, TT-100, TT-150, TT-
175, TT-100-S-T, and/or C-160 shopping carts by applying their designs, or a colorable imitation
thereof, to an article of manufacture, and thereafter using, selling or distributing said products
within this District and elsewhere throughout the United States. Plaintiff’s trade dress is distinctive
and non-functional and has attained secondary meaning.
375. Upon information and belief, the designs of Defendants' products are substantially
the same as Plaintiff's trade dress, such as to cause confusion and deceive purchasers into
purchasing one supposing it to be the other.
376. The acts of Defendants, as alleged herein, constitute trade dress infringement and
unfair competition in violation of Section 1125(a) of the Lanham Act.
377. Unless restrained and enjoined, Defendants' acts of trade dress infringement will
cause Plaintiff irreparable injury.
378. As a direct and proximate result of the aforesaid conduct, Plaintiff has sustained
damages in an amount to be proven at trial.
379. Plaintiff has incurred and will continue to incur attorneys' fees and court costs
arising from the acts of Defendants as alleged herein. Plaintiff seeks the recovery of attorneys'
fees and costs in this action.
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380. The wrongful acts of Defendants, as alleged herein, unless restrained and enjoined
by order of this Court, will cause irreparable harm to Plaintiff and its goodwill. Plaintiff has no
adequate remedy at law for the injuries that have been, and will continue to be, sustained as a result
of Defendants' conduct.
TWENTIETH CLAIM FOR RELIEF
(Unfair Competition – Against Both Defendants)
382. The acts of Defendants, as alleged herein, constitute unfair competition in violation
of Section 1125(a) of the Lanham Act and Florida common law.
383. As a direct and proximate result of the aforesaid conduct, Plaintiff has sustained
damages in an amount to be proven at trial.
384. Plaintiff has incurred, and will continue to incur attorneys' fees and court costs
arising from the acts of Defendants as alleged herein. Plaintiff seeks the recovery of attorneys'
fees and costs in this action.
385. Upon information and belief, the actions of the Defendants were willful and
malicious and done with the intent to injure Plaintiff. Therefore, Plaintiff is entitled to recover,
and hereby requests, exemplary and/or punitive damages from Defendants.
386. The wrongful acts of Defendants, as alleged herein, unless restrained and enjoined
by order of this Court, will cause irreparable injury to Plaintiff and its goodwill. Plaintiff has no
adequate remedy at law for the injuries that have been, and will continue to be, sustained as a result
of Defendants' conduct.
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PRAYER FOR RELIEF
WHEREFORE, Plaintiff, prays for judgment as follows:
On The First Through Sixteenth Claims for Relief
387. Declaring that Defendants have infringed Plaintiff's '809, '269, '501, '372, '961,
'091, ‘281, ‘762, ‘264, ‘268, ‘619, ‘602, ‘521, ‘841, ‘536, ‘700, and ‘288 Patents;
388. Issuing temporary and preliminary injunctions enjoining Defendants, their officers,
agents, subsidiaries, and employees, and those in privity with or that act in concert with any of the
foregoing, from further activities that constitute infringement of Plaintiff's '809, '269, '501, '372,
'961, '091, ‘281, ‘762, ‘264, ‘268, ‘619, ‘602, ‘521, ‘841, ‘536, and ‘288 Patents, pursuant to 35
U.S.C. § 283;
389. For an award against Defendants, jointly and severally, for actual damages,
including lost profits and a reasonable royalty;
390. For an award of all gains, profits, and advantages derived by Defendants by their
infringement of Plaintiff's '809, '269, '501, '372, '961, '091, ‘281, ‘762, ‘264, ‘268, ‘619, ‘602, ‘521,
‘841, ‘536, and ‘288 Patents;
391. For enhanced statutory damages pursuant to 35 U.S.C. § 284, together with costs
and pre- and post-judgment interest;
392. For injunctive relief in the form of a permanent injunction, enjoining Defendants
from manufacturing, importing, selling, marketing and/or distributing any products that infringe
on Plaintiff's '809, '269, '501, '372, '961, '091, ‘281, ‘762, ‘264, ‘268, ‘619, ‘602, ‘521, ‘841, ‘536,
and ‘288 Patents;
393. For an order requiring Defendants to deliver up to be impounded during the
pendency of this action all of the allegedly infringing products;
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394. For an order requiring Defendants' remaining inventory of infringing products to
be delivered up to the custody of the Court for destruction;
395. For reasonable attorneys' fees under 35 U.S.C. § 285;
396. For interest at the maximum legal rate on all damages from the date first incurred
until paid, if applicable;
On The Seventeenth through Eighteenth Claims for Relief
397. Issuing preliminary and permanent injunctive relief enjoining Defendants and any
principals, agents, servants, employees, successors, and assigns of Defendants, and all those in
privity, concert, or participation with Defendants, from:
(i) imitating, copying, duplicating, or otherwise making any use of the
EXPRESS Trademark, and or any mark confusingly similar to the EXPRESS Trademark,
including, but not limited to, the designation "Xpress;"
(ii) manufacturing, producing, distributing, circulating, selling, or otherwise
disposing of any printed material which bears any copy or colorable imitation of the
EXPRESS Trademark;
(iii) using any unauthorized copy or colorable imitation of the EXPRESS
Trademark in such fashion as is likely to relate or connect Defendants with Versacart
Systems;
(iv) using any false designation of origin or false description which can or is likely
to lead the trade or public, or individual members thereof, to believe mistakenly that any
service advertised, promoted, offered, or sold by Defendants are sponsored, endorsed,
connected with, approved, or authorized by Versacart Systems;
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(v) causing likelihood of confusion or injury to Versacart Systems' business
reputation and to the distinctiveness of the EXPRESS Trademark by unauthorized use of a
confusingly similar sign design;
(vi) engaging in any other activity constituting unfair competition or infringement
of the EXPRESS Trademark or Versacart Systems' rights in, or to use, or to exploit the
same; and
(vii) assisting, aiding or abetting another person or business entity in engaging or
performing any of the activities enumerated in subparagraphs (i) through (vi) above.
B. Finding that Defendants have infringed the EXPRESS Trademark in violation of
federal law and have damaged Versacart Systems' goodwill by Defendants' conduct,
C. Finding that Defendants have unfairly competed with Versacart Systems by the acts
complained of herein in violation of federal law.
D. Finding that the acts of Defendants constitute trademark infringement in violation
of the common law of the state of Florida.
E. Finding that the acts of Defendants constitute unfair competition in violation of the
common law of the state of Florida.
F. Finding Defendants liable and awarding to Versacart Systems monetary damages
in an amount to be fixed by the Court in its discretion as just, including all of the Defendants'
profits or gains of any kind resulting from their willful infringement and/or acts of unfair
competition, said amount to be trebled, and exemplary damages in view of the intentional nature of
the acts complained of herein, pursuant to 15 U.S.C. § 1117.
G. Awarding to Versacart Systems exemplary damages in view of the intentional,
willful, wanton and reckless disregard of its rights; and
64
H. Granting to Versacart Systems such other and further relief as the Court may deem
just, proper, and equitable under the circumstances
On The Nineteenth and Twentieth Claims for Relief
398. For restitution of all revenue and profits from Defendants' unfair business practices,
including an award of damages available under 15 U.S.C. § 1117, including for willful violation
of § 1125(a);
399. For exemplary and/or punitive damages;
400. For the recovery of attorneys' fees and costs;
401. For injunctive relief in the form of a preliminary and permanent injunction
enjoining Defendants from engaging the future acts of consumer confusion and unfair or deceptive
business practices;
On All Claims for Relief
402. For attorneys’ fees, costs, and pre- and post-judgment interest as permitted by law;
403. Punitive damages as provided by law; and
404. For such other and further relief as the Court may deem just and proper.
JURY DEMAND
Plaintiff hereby demands a trial by jury on all issues so triable.
65
DATED: March 26, 2018 Respectfully submitted,
/s/ Ava K. Doppelt, Esq.

Ava K. Doppelt, Esq.
Florida Bar No. 393738
ALLEN, DYER, DOPPELT & GILCHRIST, P.A.
255 S. Orange Avenue, Suite 1401
Orlando, Florida 32801
Telephone: (407) 841-2330
Facsimile: (407) 841-2343
Email: adoppelt@allendyer.com
Of counsel:
Carolyn Juarez, Esq.
NEUGEBOREN O’DOWD, PC
1227 Spruce Street, Suite 200
Boulder, Colorado 80302
Telephone: (720)536-4904
Email: Carolyn@nodiplaw.com
ATTORNEYS FOR PLAINTIFF

AMSA, INC. d/b/a VERSACART SYSTEMS, INC.
66

AMSA v. Advance Carts - Complaint

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AMSA v. Advance Carts - Complaint

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Case 9:18-cv-80383-BB Document 1 Entered on FLSD Docket 03/26/2018 Page 1 of 66

IN THE UNITED STATES DISTRICT COURT

Civil Action No. ______________________

AMSA, INC. d/b/a VERSACART SYSTEMS, INC.,

ADVANCE CARTS, INC.,

COMPLAINT AND JURY DEMAND

jurisdiction under 28 U.S.C. §§ 1367(a).

and as Defendant Advance is incorporated in the state of Florida.

and carries on a business in Florida.

Florida pursuant to 28 U.S.C. §§ 1391 and 1400(b).

the United States of America.

'501 Patent to Versacart Systems.

duly assigned the '288 Patent to Versacart Systems.

'841 Patent to Versacart Systems.

have duly assigned the '961 Reissued Patent to Versacart Systems.

'536 Patent to Versacart Systems.

behalf of SuperBasket, and under the direction and control of SuperBasket.

26. Advance and SuperBasket are hereinafter referred to collectively as "Defendants".

The '501 Patent

this cart, which was entitled "Shopping Cart."

incorporated herein as Exhibit 17.

Assignments dated February 15, 2016.

the '501 Patent.

Defendants, nor to any agent of Defendants.

limited to within the state of Florida.

The '372 Patent

Assignment was recorded at the USPTO on February 12, 2007.

Assignments dated February 15, 2016.

the '372 Patent.

Defendants, nor to any agent of Defendants.

including but not limited to within the state of Florida.

The '619 Patent

cart, which was entitled "Cart."

incorporated herein as Exhibit 19.

the '619 Patent.

Defendants, nor to any agent of Defendants.

including but not limited to within the state of Florida.

The '269 Patent

the '269 Patent.

Defendants, nor to any agent of Defendants.

limited to within the state of Florida.

The '602 Patent

cart, which was entitled "Cart."

See Exhibit 19.

the '602 Patent.

Defendants, nor to any agent of Defendants.

but not limited to within the state of Florida.

The '521 Patent

cart, which was entitled "Cart."

November 15, 2010.

EXpress7050 cart are attached and incorporated herein as Exhibit 20.

the '521 Patent.

Defendants, nor to any agent of Defendants.

but not limited to within the state of Florida.

The '809 Patent

cart, which was entitled "Cart."

Systems, and his Assignment was recorded in the USTPO.

as “EXpress6000” or “EXpress6000-C”). The EXpress6000-C is made of steel using round and/or

and incorporated herein as Exhibit 21.

the '809 Patent.

Defendants, nor to any agent of Defendants.

but not limited to within the state of Florida.

The '288 Patent

cart, which was entitled "Set of Cart Baskets.”