Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 1 of 25

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF FLORIDA

Civil Action No.: 0:19-cv-60490-RKA

BESWEET CREATIONS, LLC, )

a Florida limited liability company, )
)
Plaintiff, )
)
v. )
)
TRU REFLECTIONS, INC., )
a Texas corporation, )
)
Defendant. )
)

MOTION FOR DEFAULT JUDGMENT AGAINST

TRU REFLECTIONS, INC. AND INCORPORATED MEMORANDUM OF LAW

000010/01192559_1
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 2 of 25

Pursuant to Rule 55(b)(2), Plaintiff, BeSweet Creations, LLC (“Plaintiff”), by and through
undersigned counsel hereby moves this Court to enter default judgment against Defendant, Tru
Reflections, Inc., (“Defendant”), and states in support as follows:
I. INTRODUCTION/PROCEDURAL POSTURE
1. On February 25, 2019, Plaintiff filed its Complaint against Defendant for trademark
infringement and false designation of origin under the Federal Trademark Act of 1946, 15 U.S.C.
§ 1051, et seq. (“Lanham Act”) [D.E. 1].
2. As detailed in the Complaint, Plaintiff is the owner of Federal Registration No.
5,033,503, for its BEAR design trademark in connection with online retail store services and/or
vitamin products. See Complaint [D.E. 1].
3. Plaintiff attempted to serve the summons and Complaint upon Defendant but the
process server was unsuccessful in his attempt to serve the Defendant. The process server
performed a skip trace search but was unable to uncover an additional address to serve the
Defendant.
4. On April 6, 2019, Defendant, filed a Petition for Cancellation against Plaintiff’s
Federal Registration No. 5,033,503, which forms the basis of this lawsuit. The case Tru
Reflections, Inc. v. BeSweet Creations, LLC, Cancellation No.: 92071030, is currently suspended
by the Trademark Trial and Appeal Board pending final disposition of the current action.
5. Defendant’s Petition for Cancellation reflects its correspondence information as:
Tru Reflections Inc, 519 E. Interstate 30, #402, Rockwall, TX 75087.
6. As such, Plaintiff forwarded the newly discovered address to the process server to
continue its attempts to serve the Summons and Complaint on the Defendant.
7. On May 1, 2019, Plaintiff received an Affidavit of Service from the process server
notifying Plaintiff’s that the service address was for, “Pak-N-Post”, a mailbox business in Texas.
The manager of the business refused to give his name but confirmed that the Defendant holds a
mailbox at the location. The manager instructed the process server to put the Summons and
Complaint into an envelope and address the envelope to the Defendant and that he would put it in
the mailbox. See Return of Service [D. E. 8].
8. On June 4, 2019, the Clerk of Court entered a Default against Defendant for failure
to appear, or otherwise plead to the complaint [D. E. 10].

000010/01192559_1

-2-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 3 of 25

9. On July 9, 2019, the Court Ordered Plaintiff to file an amended return of service or
otherwise show cause as to why the Court should not set aside the Clerk’s entry of default for
insufficient service of process and dismiss the action without prejudice [D. E. 11].
10. On July 12, 2019, Plaintiff filed its response to the Court’s Order to Show Cause or
in the Alternative Request for Extension of Time to Serve Defendant [D. E. 12].
11. On July 15, 2019, the Court entered a paperless order denying as moot the
Plaintiff’s Alternative Request for Extension of Time [D. E. 13].
12. On July 17, 2019, the Court entered an order finding that Defendant had indeed
failed to respond to the Complaint or otherwise appear in this action.
Plaintiff now respectfully requests the entry of Default Judgment against Defendant,
including injunctive relief, an accounting for damages, and a finding that the case is exceptional
as further detailed below.
II. LEGAL STANDARD
It is well established that upon default a defendant admits the plaintiff’s well-pleaded
allegations of fact, is concluded on those facts by the judgment, and is barred from contesting on
appeal the facts thus established.” Nishimatsu Constr. Co. v. Hous. Nat’l Bank, 515 F.2d 1200,
1206 (5th Cir. 1975). “A default judgment is unassailable on the merits but only so far as it is
supported by well-pleaded allegations, assumed to be true.” Id. “Granting a motion for default
judgment is within the trial court's discretion.” Adidas AG v. Sport Jersey Shops, No. 18-cv-62629,
2019 U.S. Dist. LEXIS 5145, at *3 (S.D. Fla. Jan. 11, 2019). “Because the defendant is not held
to admit facts that are not well pleaded or to admit conclusions of law, the court must first
determine whether there is a sufficient basis in the pleading for the judgment to be entered.” Id.
(citing Buchanan v. Bowman, 820 F.2d 359, 361 (11th Cir. 1987)).
In determining damages, Fed.R.Civ.P. 55(b)(2) authorizes the court to “conduct hearings…
when, to enter or effectuate judgment, it needs to: (A) conduct an accounting; (B) determine the
amount of damages…” Furthermore, the Eleventh Circuit has made clear “damages for
a default judgment may not be entered without an evidentiary hearing unless the amount claimed
is a liquidated sum or one capable of mathematical calculation.” Baumann v. Bank of Am., N.A.,
734 F. App’x 664, 671 (11th Cir. 2018) (internal citations omitted).

000010/01192559_1

-3-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 4 of 25

III. ARGUMENT
a. The Facts Alleged in the Complaint Establish Defendant's Liability for
Federal Trademark Infringement

Plaintiff’s Complaint [D.E. 1] states a cause of action against Defendant for Federal
Trademark Infringement. The Complaint properly alleges that this Court has jurisdiction over
Plaintiff's trademark infringement claim under 28 U.S.C. §§1331; 1338(a) and 15 U.S.C. §1121.
[D.E. 1] at ¶ 5. The Complaint also establishes personal jurisdiction over Defendant in that the
Defendant has committed tortious acts in this District through Defendant’s advertising and sale of
imitation vitamin products using Plaintiff’s packaging and appearance through a website
accessible in this District. [D.E. 1] at ¶ 6. Venue is also proper in this District pursuant to 28
U.S.C. §1391(b) and §1391(c) because a substantial part of the events giving rise to the claim
occurred in this District, a substantial part of property that is the subject of this action is situation
in this District, and because Defendant is subject to personal jurisdiction in this District [D.E. 1]
at ¶ 7. As Defendant has failed to plead or otherwise defend, at least the following facts are deemed
admitted:
1. Plaintiff is in the business of, inter alia, (1) marketing and selling vitamins and
vitamin preparations and dietary and nutritional supplements (collectively, “vitamin products”)
and (2) providing online retail store services featuring vitamin products in interstate commerce.
Plaintiff generally markets and sells its vitamin products through not only its website at
sugarbearhair.com, but also through various online marketplace and ecommerce websites as well
as on various online social media sites [D.E. 1] at ¶ 8.

2. Plaintiff adopted its BEAR design trademark ( ) in 2015 to identify

its online retail store services and/or a line of vitamin products, including a Hair Vitamin
formulation, and to distinguish its vitamin products from other products on the market. Since that
time, Plaintiff has continuously used its trademarks in commerce in connection with the marketing,
selling and performing of Plaintiff’s retail store services and certain vitamin products. Plaintiff’s
000010/01192559_1

-4-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 5 of 25

use of the BEAR design trademark has been substantially exclusive during that time [D.E. 1] at ¶
9.
3. Plaintiff is the owner of a federal trademark registration for its BEAR design
trademark in connection with online retail store services and/or vitamin products (more fully
described in the certificates of registration attached hereto). Federal registration number 5,033,503
relates to the BEAR design trademark for vitamin products [D.E. 1] at ¶ 10 and Ex. A.
4. Plaintiff’s federal trademark registrations are valid and subsisting [D.E. 1] at ¶ 11.
5. Plaintiff has expended considerable sums in marketing its Hair Vitamin formulation
product. For example, since 2015, Plaintiff has extensively promoted its Hair Vitamin formulation
product under or in association with the BEAR design trademark and the Hair Vitamin Bottle
Trade Dress through social media advertising campaigns and internet marketplace advertising,
reaching millions of customers and potential customers on a monthly basis [D.E. 1] at ¶ 14 and
Ex. B.
6. Through Plaintiff’s longstanding use and promotional activities related to the
BEAR design trademark and the Hair Vitamin Bottle Trade Dress, and due to the widespread and
favorable public acceptance and recognition of those marks, each of the BEAR design trademark
and the Hair Vitamin Trade Dress have become a distinctive designation of the source of origin
for Plaintiff’s goods and/or services [D.E. 1] at ¶ 15.
7. Plaintiff has exerted every effort to maintain the highest standard of quality for its
vitamin products. Plaintiff has enjoyed considerable success and is well known as the source of
origin of vitamin products, including its Hair Vitamin formulation product, and online retail store
services to consumers from Florida and throughout the United States under the BEAR design
trademark and the Hair Vitamin Bottle Trade Dress. Indeed, Plaintiff’s Hair Vitamin formulation
product is the #1 bestselling hair vitamin online since 2016 and is well known as the world’s first
gummy vegetarian hair multivitamin [D.E. 1] at ¶ 16.
8. As a result of these efforts, Plaintiff has developed considerable fame, consumer
recognition, and goodwill in the BEAR design trademark and the Hair Vitamin Bottle Trade Dress
among the purchasing public. Consumers in Florida and throughout the United States have come
identify Plaintiff for vitamin products, including its Hair Vitamin formulation product, and online
retail store services provided under and/or in association with the BEAR design trademark and the

000010/01192559_1

-5-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 6 of 25

Hair Vitamin Bottle Trade Dress and to trust Plaintiff for the safe and effective products and fair
and honest dealings offered under said identifiers [D.E. 1] at ¶ 17.
9. Plaintiff owns rights in Florida and throughout the United States in and to the
BEAR design trademark and the Hair Vitamin Bottle Trade Dress for vitamin products which are
superior to any rights which Defendant may claim in and to said marks in any form or style [D.E.
1] at ¶ 18.
10. Defendant is in the business of, inter alia, selling, offering for sale, and advertising
a hair vitamin product online, through a website accessible in this District, as part of a broad, long-
term e-commerce business that extends its reach to consumers in this District and ships products
to consumers in this District [D.E. 1] at ¶ 19.
11. Defendant’s hair vitamin product is sold, offered for sale, and advertised using
product packaging that is nearly identical to Plaintiff’s Hair Vitamin Bottle Trade Dress and having
a vitamin appearance is identical to Plaintiff’s BEAR design trademark. [D.E. 1] at ¶ 20 and Ex.
C.
12. Defendant’s vitamin products are not manufactured, distributed, or otherwise
offered by Plaintiff, or done so with the permission of Plaintiff [D.E. 1] at ¶ 23.
13. Upon information and belief, Defendant routinely uses trade dress and trademarks
that are intended to imitate Plaintiff’s Hair Vitamin Bottle Trade Dress and Plaintiff’s BEAR
design trademark. An example of how Defendant presents its Defendant’s hair vitamin product
for sale and sells the same, and how that compares to Plaintiff’s BEAR design trademark and the
Hair Vitamin Bottle Trade Dress are provided below:
Plaintiff’s Hair Vitamin Formulation Product Defendant’s hair vitamin product

000010/01192559_1

-6-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 7 of 25

14. Plaintiff has not in any way authorized Defendant’s use of Plaintiff’s BEAR design
trademark and the Hair Vitamin Trade Dress in association with Defendant’s hair vitamin product
[D.E. 1] at ¶ 22. Additionally, Defendant’s hair vitamin product is not manufactured, distributed,
or otherwise offered by Plaintiff, or done so with the permission of Plaintiff [D. E. 1] at ¶ 23.
15. Due to the similarities in the trade dress and the identical vitamin appearance,
consumers who encounter Defendant’s hair vitamin product are likely to believe that Defendant
and its imitation vitamin product are sourced from, approved by, associated with, and/or affiliated
with Plaintiff when, in fact, that is not the case [D.E. 1] at ¶ 24.
16. Defendant’s use of Plaintiff’s trademark vitamin appearance, as well as its use of
an imitation of Plaintiff’s decorative bottle, to sell and advertise and its imitation vitamin product
has occurred and continues to occur with at least constructive notice of Plaintiff’s trademark rights
by virtue of Plaintiff’s federal trademark registration [D.E. 1] at 25.
17. Upon information and belief, Defendant’s use of Plaintiff’s trademark and vitamin
appearance, as well as its use of an imitation of Plaintiff’s decorative bottle, to sell and advertise
and its imitation vitamin product was done with full knowledge of Plaintiff’s BEAR design
trademark and the Hair Vitamin Bottle Trade Dress and has been a willful, intentional, and
deliberate course of action designed specifically to trade upon the goodwill associated with
Plaintiff’s BEAR design trademark and the Hair Vitamin Bottle Trade Dress as well as the
distinctiveness, strength, and value thereof. For example, when searching on Amazon.com for
“sugar bear hair,” Defendant’s hair vitamin product appears right under Plaintiff’s product, looking
substantially identical thereto. Also notable from when such a search is performed is that every
other vitamin product that comes up looks entirely different from Plaintiff’s hair vitamin
formulation product and Defendant’s hair vitamin product [D.E. 1] at ¶ 26 and Ex. D.
18. By using Plaintiff’s trademark name, designs and vitamin appearance, as well as its
use of an imitation of Plaintiff’s decorative bottle, to sell and advertise and its fraudulent vitamin
product, Defendant has and/or is attempting to unfairly profit from the name, reputation, and
advertising of Plaintiff [D.E. 1] at ¶ 27.
13. Defendant’s use of Plaintiff’s trademark vitamin appearance, as well as its use of
an imitation of Plaintiff’s decorative bottle, to sell and advertise and its fraudulent vitamin product
which is offered in competition with Plaintiff’s Hair Vitamin formulation, causes the likelihood of

000010/01192559_1

-7-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 8 of 25

confusion, mistake or deception as to whether its fraudulent vitamin product are sponsored,
affiliated, or approved by Plaintiff or whether Plaintiff’s Hair Vitamin formulation is affiliated or
associated with Defendant. Such conduct by Defendant deprives Plaintiff of the ability to control
the quality of the goods marketed under the infringed marks, and, instead, places Plaintiff's
valuable reputation and goodwill into the hands of Defendant, over whom Plaintiff has no control
[D.E. 1] at ¶ 28.
14. The goodwill of Plaintiff for vitamin products and online retail store services that
has been acquired under its BEAR design trademark and the Hair Vitamin Bottle Trade Dress is
of significant value, and harm to such goodwill is irreparable [D.E. 1] at ¶ 30.
15. Defendant has made and will continue to make substantial profits and gains to
which it is not in law or equity entitled [D. E. 1] at ¶ 29.
16. Plaintiff has been and will continue to sustain damages which include lost income,
profits, and business opportunities as well as irreparable harm to its business, reputation and
goodwill as a direct and proximate result of Defendant’s actions. [D.E. 1] at ¶ 31.
17. Plaintiff has no adequate remedy at law for the acts of infringement and other
unlawful acts complained of herein and such acts have caused and will continue to cause damage
and irreparable injury to Plaintiff if Defendant is not restrained by this Court from further
violations of Plaintiff’s rights. For example, customers who purchase Defendant’s product
believing it is by or connected to Plaintiff’s may publish negative reviews and/or feedback about
Plaintiff’s products if they are unhappy with Defendant’s imitation product [D.E. 1] at ¶ 32.
18. Defendant’s adoption and use of the BEAR design trademark constitutes an
unauthorized use of a reproduction, counterfeit, copy, or colorable imitation of Plaintiff’s
registered marks in commerce in connection with the sale, offering for sale, distribution, or
advertising of vitamin products.
19. Defendant’s adoption and use of the BEAR design trademark makes Defendant’s
products look like Plaintiff’s. This not only creates a likelihood of consumer confusion, mistake
or deception but is in fact intended to create consumer confusion mistake and deception as the
marks are employed to trick consumers into thinking Defendant’s vitamin products are those of
Plaintiff’s [D.E. 1] at ¶ 39.

000010/01192559_1

-8-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 9 of 25

20. Defendant’s infringing actions have been committed, and continue to be

committed, with constructive and actual notice of the Plaintiff’s registered marks and with the
specific intent and purpose to trade upon the goodwill of Plaintiff’s BEAR design trademark.
Defendant’s infringement is therefore intentional, willful, and deliberate [D.E. 1] at ¶ 40.
The foregoing now-admitted facts are sufficient for a finding against Defendant on
Plaintiff’s Lanham Act trademark infringement claim.
To prevail on a claim of trademark infringement under Section 32 of the Lanham
Act, a plaintiff must demonstrate (1) that the plaintiff owns a valid and enforceable
trademark, (2) that the defendant used the trademark in commerce without consent,
and (3) that the unauthorized use was likely to deceive, cause confusion, or result
in mistake.

Edge Sys. LLC v. Aguila, 186 F. Supp. 3d 1330, 1348 (S.D. Fla. 2016) (quoting Davidoff & CIE,
S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1301 (11th Cir.2001)); see also 15 U.S.C. § 1114(1)(a).
As to the first element, Plaintiff’s BEAR design trademark is evidence of Plaintiff’s exclusive right
to use and authorize the use of the BEAR design trademark in commerce in connection with
vitamin products and/or online retail store services. See Carte Blanche Corp. v. Carte Blanche,
Inc., No. 75-110-CIV-JE, 1975 U.S. Dist. LEXIS 13205, at *6 (S.D. Fla. Mar. 24, 1975) (“a
federally registered trademark is prima facie evidence of the registrant’s exclusive right to use a
registered mark in commerce. Thus, registration of the trademark proves ownership, and
ownership implies use, in the absence of evidence to the contrary”).
Plaintiff’s long-established trademark rights in its BEAR design trademark, acquired
through extensive interstate use and advertising since at least 2015, is evidenced by Plaintiff's
certificate of registration for the mark, No.: 5,033,503. See 15 U.S.C. § 1057(b) (stating that the
certificate “shall be prima facie evidence of the validity of the registered mark and of the
registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive
right to use the registered mark in commerce on or in connection with the goods or services
specified in the certificate.”).
Furthermore, through its default, Defendant has admitted Plaintiff’s ownership of the
registration and that it places Defendant on constructive notice of Plaintiff’s rights in the mark.
See Polo Fashions, Inc. v. Clothes Encounters, No. 84 C 2491, 1985 WL 96, *3 (N.D.Ill. July 17,
1985) (holding that the first element of federal trademark infringement was satisfied when the

000010/01192559_1

-9-
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 10 of 25

plaintiff introduced evidence of registration and the defendant conceded that the plaintiff owned
the registrations at issue). Thus, Plaintiff has established it has protected trademarks in the name
or mark at issue.
With respect to the second element of trademark infringement, “[i]n order for a mark to be
‘use[d] in commerce’ the mark must be ‘placed in any manner on the goods or their containers or
the displays associated therewith or on the tags or labels affixed thereto.’” Optimum Techs., Inc.
v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1242 (11th Cir. 2007); see 15 U.S.C. § 1127.
In this case, Plaintiff has alleged that Defendant is selling imitation vitamin products in packaging
that is nearly identical to Plaintiff’s packaging through websites accessible in this District. [D.E.
1] at ¶ 19, 20. This allegation is supported by the assertion that when a search is performed on
Amazon.com for “sugar bear hair,” Defendant’s hair vitamin product appears right under
Plaintiff’s product, looking substantially identical thereto. [D.E. 1] at ¶ 15. In light of such
allegations, now taken as true, it is beyond any reasonable dispute that Plaintiff has established
that Defendant used its marks in commerce as defined by the Lanham Act and that Defendant is
behind the sale of the imitation vitamin products.
With respect to the third element of trademark infringement, the Eleventh Circuit uses a
seven factor test in determining likelihood of confusion.
To determine the ‘likelihood of confusion’ element, the Court must consider seven
factors: "'(1) type of mark, (2) similarity of mark, (3) similarity of the products the
marks represent, (4) similarity of the parties’ retail outlets and customers, (5)
similarity of advertising media used, (6) defendant's intent and (7) actual
confusion.'"

Island Stone Int’l Ltd. v. Island Stone India Private Ltd., No. 6:16-cv-656-Orl-40KRS, 2017 U.S.
Dist. LEXIS 193402, at *7-8 (M.D. Fla. Nov. 3, 2017) (citing Lone Star Steakhouse & Saloon,
Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir. 1997)). “Of these factors, the type
of mark and evidence of actual confusion are the most important.” Id.
In this case, each of these factors conclusively weighs in favor of Plaintiff, as follows:
Type of Mark
Here, Defendant’s use of both Plaintiff’s trademark vitamin appearance, as well as its use
of an imitation of Plaintiff’s decorative bottle, to sell and advertise and its imitation vitamin
product which is offered in competition with Plaintiff’s Hair Vitamin formulation, causes the

000010/01192559_1

- 10 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 11 of 25

likelihood of confusion, mistake or deception as to whether its imitation vitamin product are
sponsored, affiliated, or approved by Plaintiff or whether Plaintiff’s Hair Vitamin formulation is
affiliated or associated with Defendant. The high strength of Plaintiff’s marks, along with the over
four (4) years of continuous and unchallenged use weighs in favor of a finding of likelihood of
confusion.
Similarity of the Marks
Defendant is using nearly identical trade dress and the identical vitamin appearance of
Plaintiff’s products to identify and sell its vitamin products. Thus, this factor weighs heavily in
favor of a finding of likelihood of confusion.
Similarity of the Products the Marks Represent
The products in question are identical: Defendant is offering hair vitamin formulation
gummy products under the Sugar Bear Hair trademark appearance. Thus, this factor weighs
heavily in favor of a finding of likelihood of confusion.
Similarity of Advertising Media Used
As established in the Complaint, Plaintiff generally markets and sells its vitamin products
through not only its website at sugarbearhair.com, but also through various online marketplace and
ecommerce websites as well as on various online social media sites. [D.E. 1] at ¶ 8. This satisfies
the fourth element, as the parties are using the same marketing channels for sale of the subject
vitamin products.
Both Plaintiff and Defendant market their respective gummy vitamin products through
websites accessible through the Internet. Both parties advertising media prominently feature and
use the Sugar Bear Hair name and use it as a trademark to identify and distinguish the gummy
vitamin products. This weighs in favor of a finding of likelihood of confusion.
Defendant’s Intent
“[I]n the trademark infringement context, ‘intent’ refers to the intent to confuse customers,
not merely the intent to use a mark that is already in use somewhere else.” Meridian Mut. Ins. Co.,
128 F.3d at 1120. In this action, Defendant’s hair vitamin product is sold, offered for sale, and
advertised using product packaging that is nearly identical to Plaintiff’s Hair Vitamin Bottle Trade
Dress and having a vitamin appearance that is identical to Plaintiff’s BEAR design trademark.
Defendant’s use of Plaintiff’s trademark vitamin appearance, as well as its use of an imitation of

000010/01192559_1

- 11 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 12 of 25

Plaintiff’s decorative bottle, to sell and advertise and its imitation vitamin product which is offered
in competition with Plaintiff’s Hair Vitamin formulation. This causes the likelihood of confusion.
Thus, this factor weighs in favor of a finding of a likelihood of confusion.
Actual Confusion
“The law is well settled in this circuit that evidence of actual confusion between
trademarks is not necessary to a finding of likelihood of confusion, although it is the best such
evidence.” E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525, 1529 (11th
Cir. 1985). Nonetheless, Defendant has admitted as a matter of law that Defendant’s use of
Plaintiff’s trademark and vitamin appearance, as well as its use of an imitation of Plaintiff’s
decorative bottle, to sell and advertise and its imitation vitamin product was done with full
knowledge of Plaintiff’s BEAR design trademark and the Hair Vitamin Bottle Trade Dress and
has been a willful, intentional, and deliberate course of action designed specifically to trade upon
the goodwill associated with Plaintiff’s BEAR design trademark and the Hair Vitamin Bottle Trade
Dress as well as the distinctiveness, strength, and value thereof [D.E. 1] at ¶ 26. Due to the
similarities in the trade dress and the identical vitamin appearance, consumers who encounter
Defendant’s hair vitamin product are likely to believe that Defendant and its imitation vitamin
product are sourced from, approved by, associated with, and/or affiliated with Plaintiff when, in
fact, that is not the case. This factor therefore weighs in favor of a finding of likelihood of
confusion [D.E.1] at ¶ 24.
Based on above, each of the seven factors weigh in favor of Plaintiff in that Defendant’s
marketing and offering gummy vitamin products as a competitor with nearly identical product
packaging and having a vitamin appearance that is identical to Plaintiff’s trademark through
identical sales channels is likely to cause confusion in the marketplace. Plaintiff has therefore
established Defendant’s liability for federal trademark infringement.
b. The Facts Alleged in the Complaint Establish Defendant’s Liability for
Lanham Act §43(a) Trademark Infringement – False Designation of Origin

In addition to the facts established in this case as described, supra, the following well-
pleaded facts have also been established:
1. Plaintiff owns all right in the image and overall appearance of its bottle (“Hair
Vitamin Bottle Trade Dress”). Plaintiff adopted its Hair Vitamin Bottle Trade Dress in 2015 and

000010/01192559_1

- 12 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 13 of 25

has continually used the Hair Vitamin Bottle Trade Dress in commerce throughout the United
States in connection with the marketing and selling of Plaintiff’s Hair Vitamin formulation product
since its date of first use. Plaintiff’s use of the Hair Vitamin Bottle Trade Dress has been
substantially exclusive during that time [D.E. 1] at ¶ 12.
2. Plaintiff’s Hair Vitamin Bottle Trade Dress includes the following elements:
a. a clear and colorless bottle having a white top and a label that has a light blue
base color, with the light blue label having white writing thereon;
b. the word “HAIR” in white, capitalized in a relatively large font relative to the
other printed indicia on the label, featured on the central portion of the label;
c. the word “VITAMINS” in white, capitalized in a relatively mid-sized font
relative to the other printed indicia on the label, featured directly below the
word “HAIR;”
d. a white rectangular block positioned under the word “VITAMINS” and
extending laterally across the bottle so as to be the same length as the word
“VITAMINS,” with light blue text therein that is the same color as the base
color of the label; and
e. the light blue label being sized to not extend completely to the top or the bottle
of the bottle so that the BEAR design trademark gummies inside the bottle are
visible from the outside of the bottle above and below the label (when the bottle
is full as sold). [D.E. 1] at ¶ 13.
Plaintiff has sued Defendant for false designation of origin under Section 43(a) of the
Lanham Act and the evidence dictates that Plaintiff should succeed on the merits of its claim. In
order to prevail on a Lanham Act false designation of origin claim, a plaintiff “must show (1) that
it had trademark rights in the mark or name at issue and (2) that the other party had adopted a mark
or name that was the same, or confusingly similar to its mark, such that consumers were likely to
confuse the two.” Suntree Techs., Inc. v. Ecosense Int’l, Inc., 693 F.3d 1338, 1346 (11th Cir. 2012)
(quotation omitted); 15 U.S.C. § 1125(a). In this case, Plaintiff has unmistakably established that
it is the prior owner and user of all rights in the image and overall appearance of its Hair Vitamin
Bottle Trade dress in connection with the marketing and selling of Plaintiff’s Vitamin formulation
product, as evidenced by Plaintiff’s uninterrupted and continuous use of its Hair Vitamin Bottle

000010/01192559_1

- 13 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 14 of 25

Trade Dress in connection with its making, selling, and distributing of a hair vitamin formulation
product in Florida and throughout the United States since 2015. Furthermore, the uncontroverted
evidence establishes that Plaintiff’s rights are enforceable under the Lanham Act because it shows
that Plaintiff has acquired secondary meaning in the marks at issue. See Gift of Learning Found.,
Inc. v. TGC, Inc., 329 F.3d 792, 800 (11th Cir. 2003).
Under Eleventh Circuit precedent, “a plaintiff has the burden of sustaining a high degree
of proof establishing secondary meaning…” Id. 329 F.3d at 800. “Aside from a consumer survey,
Courts consider the following four factors to determine whether a particular mark has acquired
secondary meaning: (1) the length and manner of its use; (2) the nature and extent of advertising
and promotion; (3) the efforts made by plaintiff to promote a conscious connection in the public's
mind between the name and the plaintiff's business; and (4) the extent to which the public actually
identifies the name with plaintiff's goods and services.” Klayman v. Freedom's Watch, Inc., 765 F.
Supp. 2d 1348, 1358 (S.D. Fla. 2008). Through the admitted well-pleaded allegations in the
Complaint, including the exhibits attached thereto, Plaintiff has more than met this burden. In this
case, Plaintiff has provided (uncontroverted) extensive evidence which demonstrates each of these
factors. Plaintiff has established:
• Since 2015, Plaintiff has extensively promoted its Hair Vitamin formulation product under
or in association with the BEAR design trademark and the Hair Vitamin Bottle Trade Dress
through social media advertising campaigns and internet marketplace advertising, reaching
millions of customers and potential customers on a monthly basis. [D.E. 1] at ¶ 14 and
Ex. B.
• Plaintiff has exerted every effort to maintain the highest standard of quality for its vitamin
products. [D.E. 1] at ¶ 16.
• Plaintiff expended considerable sums in marketing its Hair Vitamin formulation product.
[D.E. 1] at ¶ 14.
• Plaintiff’s Hair Vitamin Bottle Trade Dress is inherently distinctive and has acquired
distinctiveness in the minds of consumers due to Plaintiff’s substantially exclusive
longstanding and extensive use thereof. [D.E. 1] at ¶ 44.
• Through Plaintiff’s longstanding use and promotional activities related to the BEAR design
trademark and the Hair Vitamin Bottle Trade Dress, and due to the widespread and

000010/01192559_1

- 14 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 15 of 25

favorable public acceptance and recognition of those marks, each of the BEAR design
trademark and the Hair Vitamin Bottle Trade Dress have become a distinctive designation
of the source of origin for Plaintiff’s goods and/or services. [D.E. 1] at ¶ 15.
• Plaintiff has enjoyed considerable success and is well known as the source of origin of
vitamin products, including its Hair Vitamin formulation product, and online retail store
services to consumers from Florida and throughout the United States under the BEAR
design trademark and the Hair Vitamin Bottle Trade Dress. Indeed, Plaintiff’s Hair
Vitamin formulation product is the #1 bestselling hair vitamin online since 2016 and is
well known as the world’s first gummy vegetarian hair multivitamin. [D.E. 1] at ¶ 16.
• As a result of these efforts, Plaintiff has developed considerable fame, consumer
recognition, and goodwill in the BEAR design trademark and the Hair Vitamin Bottle
Trade Dress among the purchasing public. Consumers in Florida and throughout the
United States have come identify Plaintiff for vitamin products, including its Hair Vitamin
formulation product, and online retail store services provided under and/or in association
with the BEAR design trademark and the Hair Vitamin Bottle Trade Dress and to trust
Plaintiff for the safe and effective products and fair and honest dealings offered under said
identifiers. [D.E. 1] at ¶ 15.
Each of these admitted allegations, when applied to the four-factor secondary use test, establish
that the Plaintiff’s marks have established secondary meaning.
Length and Manner of its Use
In 2015 Plaintiff adopted its BEAR design trademark in 2015 and its Hair Vitamin Bottle
Trade Dress to identify its online retail store services and/or a line of vitamin products, including
its Hair Vitamin formulation product, and used it to distinguish its vitamin products from other
products on the market. Since that time, Plaintiff has continuously used its trademark in commerce
throughout the United States in connection with the marketing, selling and performing of
Plaintiff’s retail store services and certain lines of vitamin products. Plaintiff’s use of the BEAR
design trademark and Hair Vitamin Bottle Trade Dress has been substantially exclusive during
that time. Plaintiff has spent years providing safe and effective products in order to establish the
credibility of its name and goods and services. Therefore, this factor weighs heavily in showing
that the Plaintiff has gained secondary meaning.

000010/01192559_1

- 15 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 16 of 25

Nature and Extent of Advertising and Promotion

Since 2015, Plaintiff expended considerable sums in marketing its Hair Vitamin
formulation product. Plaintiff has extensively promoted its Hair Vitamin formulation product
under or in association with the BEAR design trademark and the Hair Vitamin Bottle Trade Dress
through social media advertising campaigns and internet marketplace advertising, reaching
millions of customers and potential customers on a monthly basis.
Efforts Made to Promote Conscious Connection
Through Plaintiff’s longstanding use and promotional activities related to the BEAR design
trademark and the Hair Vitamin Bottle Trade Dress, and due to the widespread and favorable
public acceptance and recognition of those marks, each of the BEAR design trademark and the
Hair Vitamin Bottle Trade Dress have become a distinctive designation of the source of origin for
Plaintiff’s goods and/or services. Plaintiff has exerted every effort to maintain the highest standard
of quality for its vitamin products. Plaintiff has enjoyed considerable success and is well known
as the source of origin of vitamin products, including its Hair Vitamin formulation product, and
online retail store services to consumers from Florida and throughout the United States under the
BEAR design trademark and the Hair Vitamin Bottle Trade Dress. As detailed, Plaintiff has made
substantial efforts to promote a conscious connection in the public’s mind between its name and
its product.
Extent to which Public Identifies the Name with Plaintiff’s Goods and Services
As a result of the foregoing, Plaintiff’s Hair Vitamin formulation product is the #1
bestselling hair vitamin online since 2016 and is well known as the world’s first gummy vegetarian
hair multivitamin. Therefore, this factor shows that the public actually identifies the name with
Plaintiff’s goods and services.
Accordingly, the remaining issue here is whether there exists a likelihood of confusion to
consumers as to the proper origin of the subject goods.
The 11th Circuit’s Seven-Factor Test
When determining if there is likelihood of consumer confusion, the court analyzes the
following seven factors: “(1) type of mark, (2) similarity of mark, (3) similarity of the products the
marks represent, (4) similarity of the parties’ retail outlets and customers, (5) similarity of
advertising media used, (6) Defendant’s intent, and (7) actual confusion.” See, e.g., Lone Star

000010/01192559_1

- 16 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 17 of 25

Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir. 1997). Under
the seven-factor “likelihood of confusion” analysis, “there are no set rules as to how much evidence
of confusion is needed; rather, a district court ‘must take into consideration the circumstances
surrounding each particular case.’” Id. at 1382. As will be shown here, each of these factors weigh
heavily in favor of likelihood of consumer confusion.
Type/Strength of Mark
The “type of mark” factor requires inquiry into the strength of the mark. It is well
established in trademark jurisprudence that “classifying the type of mark Plaintiff has determined
whether it is strong or weak”. Frehling Enters., Inc. v. Int’l Select Group, Inc., 192 F.3d 1330,
1335 (11th Cir. 1999). With respect to inherent strength, courts have identified four categories of
marks in order of increasing descriptiveness and strength: 1) generic, 2) descriptive, 3) suggestive,
and 4) arbitrary. Id. But the strength of a mark is not solely determined by the type of mark; even
if a mark is not inherently distinctive, once it can be shown to have developed widespread customer
recognition and brand loyalty, a weaker type of mark can become strong. John H. Harland Co. v.
Clarke Checks, Inc., 711 F.2d 966, 974 n. 13 (11th Cir.1983)(a weak mark can become stronger,
but evidence is required to establish this). Here, as evidence shows that Plaintiff’s mark has not
only acquired secondary meaning but has in fact achieved widespread consumer recognition, the
marks at issue must be considered strong. See, Florida Int'l Univ. Bd. of Trustees v. Florida Nat'l
Univ., Inc., 830 F.3d 1242, 1259 (11th Cir. 2016)(“Determining the strength of any mark requires
weighing either or both circumstantial evidence of advertising and promotion and direct evidence
of consumer recognition, such as by a survey.”). Therefore, this factor strongly favors Plaintiff.
Similarity of Marks
“Here, the court compares the marks and considers the overall impressions that the marks
create, including the sound, appearance, and manner in which they are used.” Frehling at 1337.
Here, not only is Defendant’s vitamin appearance identical to Plaintiff’s BEAR design trademark,
Defendant’s product packaging is nearly identical to the Plaintiff’s Vitamin Bottle Trade Dress.
Accordingly, this factor favors Plaintiff.
Similarity of the Products or Services the Marks Represent
Here, the court must make a determination as to whether the services are the type that
members of the public would attribute to a single source. See e.g. Freedom Sav. & Loan Asso. v.

000010/01192559_1

- 17 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 18 of 25

Way, 757 F.2d 1176, 1184 (11th Cir. 1985); See also Frehling at 1338. In this case, Defendant’s
goods and Plaintiff’s are of the exact same type. It is obvious that gummy vitamins provided under
the same mark by two different sources are the kind of goods that the public would attribute to a
single source. Thus, this factor weighs strongly in Plaintiff’s favor.
Similarity of the Parties’ Retail Outlets and Customers
“This factor takes into consideration where, how, and to whom the parties’ products are
sold.” Frehling, 192 F.3d at 1339. In this regard, there does not need to be direct competition
between the parties. Id. Rather, there need only be some degree of overlap present. Id. Here,
there is direct competition; customers of gummy vitamins. If a customer searches on Amazon.com
for “sugar bear hair,” Defendant’s hair vitamin product appears right under Plaintiff’s product,
looking substantially identical thereto. Accordingly, this factor weighs in favor of a likelihood of
consumer confusion.
Similarity of Advertising Media Used
“This factor looks to each party’s method of advertising.” Id. at 1339. As established in
the Complaint, Plaintiff generally markets and sells its vitamin products through not only its
website at sugarbearhair.com, but also through various online marketplace and ecommerce
websites as well as on various online social media sites. [D.E. 1] at ¶ 8. Both parties use Internet
websites and social media to advertise their goods. Thus, this factor weighs strongly in Plaintiff’s
favor.
Defendant’s Intent
“If it can be shown that a Defendant adopted a Plaintiff’s mark with the intention of
deriving a benefit from the Plaintiff’s business reputation, this fact alone may be enough to justify
the interference that there is confusingly similarity.” Id. at 1340. In considering this factor, a court
may look to an alleged infringer’s behavior for evidence of an improper intent through “intentional
blindness.” Id. at 1340. Based on the facts in this case, Defendant’s behavior goes well beyond
intentional blindness. Defendant, recognizing the immense popularity of Plaintiff’s products, has
designed its product to look just like Plaintiff’s. Defendant has gone so far as to file a Petition for
Cancellation against Plaintiff’s Federal Registration No. 5,033,503, which forms the basis of this
lawsuit. Not only did Defendant fail to allege prior use of any mark, Defendant did not allege it
even owns a famous mark (and certainly not one that was famous before Plaintiff’s use of the

000010/01192559_1

- 18 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 19 of 25

subject mark in Federal Registration No.: 5,033,503). As such, this factor weighs in favor of a
likelihood of consumer confusion.
Evidence of Actual Confusion
Evidence of actual confusion is not necessary for a finding of likelihood of consumer
confusion in order to obtain a preliminary injunction. E. Remy Martin & Co., S.A. v. Shaw Ross
Int’l Imports, Inc., 756 F.2d 1525, 1529-1530 (11th Cir. 1985). However, such evidence is
typically the best evidence of a likelihood of confusion. Exxon Corp. at 506. Moreover, evidence
of actual confusion typically makes finding a likelihood of confusion a foregone conclusion.
Unique Sports Prods. at 1325. Here, Plaintiff has submitted substantial evidence showing actual
customer confusion with regard to Plaintiff and Defendant’s products. Accordingly, this factor
weighs in favor of a likelihood of consumer confusion and should make finding a likelihood of
confusion a foregone conclusion.
Based on an analysis of the foregoing seven factors, it is evident that Plaintiff has a
substantial likelihood of success on the merits because, Plaintiff is the prior owner of a protectable
mark and Defendant’s actions will clearly create a likelihood of consumer confusion.
Defendant’s unauthorized use of Plaintiff’s trade dress and trademark vitamin gummy in
connection with the sale, distribution, or advertising of Defendant’s imitation vitamin products is
not only likely to cause confusion, or to cause mistake, or to deceive, it is intended to trick members
of the public that are looking to purchase gummy vitamin products from Plaintiff into purchasing
Defendant’s imitation gummy vitamin products or otherwise believing that Defendant’s products
are from, sponsored by, or approved by Plaintiff. Through its use of Plaintiff’s trade dress and
trademark vitamin gummy in connection with competing gummy vitamin products, Defendant is
willfully relying on Plaintiff’s past advertising and fame, as well as the goodwill symbolized by
the trade dress and trademark and the credibility appurtenant thereto due to Plaintiff’s
c. Plaintiff is Entitled to a Permanent Injunction
As a result of Defendant’s trademark infringement and false designation of origin, Plaintiff
is entitled to a permanent injunction preventing use of the BEAR design trademark, or any
confusingly similar mark or designation, as well as Plaintiff’s Hair Vitamin Bottle Trade Dress, or
any confusingly similar trade dress or designation, in connection with vitamin products or any
products which would reasonably be thought by the consuming public to come from Defendant’s

000010/01192559_1

- 19 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 20 of 25

business. “To obtain a permanent injunction, a plaintiff must show (1) that he has suffered an
irreparable injury; (2) that his remedies at law are inadequate; (3) that the balance of hardships
weighs in his favor; and (4) that a permanent injunction would not disserve the public interest.”
Barrett v. Walker Cty. Sch. Dist., 872 F.3d 1209, 1229 (11th Cir. 2017) (citing eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388 (2006)). Additionally, Plaintiff is entitled to an injunction
against another person who, at any time after the owner’s mark has become famous, commences
use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion,
of competition, or of actual economic injury. See 15 U.S.C. §1125(c)(1).
Irreparable Injury
As recently noted by this Court, “[t]he Eleventh Circuit ‘[extends] a presumption of
irreparable harm once a plaintiff establishes a likelihood of success on the merits of a trademark
infringement claim.’” Canes Bar & Grill of S. Fla., Inc. v. Sandbar Bay, LLC, No. 18-20204-CIV,
2018 WL 4678573, at *7 (S.D. Fla. Sept. 29, 2018)(quoting N. Am. Med. Corp. v. Axiom
Worldwide, Inc., 522 F.3d 1211, 1227 (11th Cir. 2008)); see, Davidoff & CIE, S.A. v. PLD Int'l
Corp., 263 F.3d 1297, 1304 (11th Cir. 2001)(“a sufficiently strong showing of likelihood of
confusion [caused by trademark infringement] may by itself constitute a showing of ... [a]
substantial threat of irreparable harm.)). Furthermore, “grounds for irreparable injury include loss
of control of reputation, loss of trade, and loss of goodwill.” Ferrellgas Ptnrs., L.P. v. Barrow,
143 F. App’x 180, 190 (11th Cir. 2005). Because the Defendant has admitted to the harm to
Plaintiff’s reputation and goodwill, as well as the extremely strong showing of likelihood of
confusion inherent in Defendant’s passing off its products as Plaintiff’s, all of these well-pleaded
facts have been established and irreparable injury is not only established under the applicable law,
but it also may be properly presumed. See J. Thomas McCarthy, 4 McCarthy on Trademarks and
Unfair Competition § 25:10 (5th ed.)(“counterfeiting is ‘hard core’ or ‘first degree’ trademark
infringement and is the most blatant and egregious form of ‘passing off.’”)
Adequate Remedy at Law
It is usually recognized in trademark infringement cases that there is not an adequate
remedy at law to redress infringement and infringement by its nature causes irreparable
harm.” Tally-Ho, Inc. v. Coast Community College, 889 F.2d 1018, 1029 (11th Cir. 1989).

000010/01192559_1

- 20 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 21 of 25

As separate entities, Plaintiff clearly has no control over the nature and quality of the
Defendant’s vitamin products offered under the same name and mark as Plaintiff’s. As long as
Defendant continues to use Plaintiff’s BEAR design trademark and the Hair Vitamin Bottle Trade
Dress, the goodwill Plaintiff has accrued due to Plaintiff’s years of providing safe and effective
products, remains endangered by the acts of Defendant. Consequently, Defendant’s infringement
of Plaintiff’s BEAR mark and Plaintiff’s Hair Vitamin Bottle Trade Dress, has weakened the
distinctive quality of Plaintiff’s mark and clearly constitutes irreparable injury for which Plaintiff
has no adequate legal remedy.
Balance of Hardships/Public Interest
Plaintiff would be unduly harmed if the injunction is not entered. “Without a preliminary
injunction Plaintiff would lose control of its trademarks because Defendant would freely continue
to use Plaintiff's registered marks. This would result in a loss of money and goodwill for Plaintiff
that could not easily be calculated or redressed.” GMC v. Phat Cat Carts, Inc., 504 F. Supp. 2d
1278, 1287 (M.D. Fla. 2006). A permanent injunction which simply prohibits Defendant from
using the BEAR design trademark and the Hair Vitamin Bottle Trade Dress, or any colorable
imitation thereof, would not force it out of business; it would simply force it to change the items
sold through websites accessible in this District.
Furthermore, the public interest is in favor of protecting Plaintiff’s marks. “Plaintiff argues
correctly that the public is interested in fair competitive practices and in the protection of
trademarks and trade names.” GMC v. Phat Cat Carts, Inc., 504 F. Supp. 2d 1278, 1288 (M.D.
Fla. 2006) (holding that issuing a preliminary injunction would further that public interest).
Accordingly, each of the factors weigh in favor of granting a permanent injunction.
d. Plaintiff is Entitled to an Award of Damages
Having established liability for a default judgment for trademark infringement and false
designation of origin, Plaintiff is entitled to recover statutory, actual, and treble damages. In order
to calculate the total amount Plaintiff is entitled to, an analysis of actual damages and profits may
take place. Fed.R.Civ.P. 55(b)(2). Pursuant to the Lanham Act, 15 U.S.C. §1117(a), a trademark
owner is entitled to recover from an infringer: (1) the infringer’s profits; (2) any damages sustained
by the plaintiff; and (3) the costs of the action. Further, in assessing profits the plaintiff shall be
required to prove defendant's sales only. See 15 U.S.C. §1117(a). Thus, Plaintiff is entitled to

000010/01192559_1

- 21 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 22 of 25

seek an award of Defendant’s profits from the date Defendant had actual knowledge of Plaintiff’s
trademark rights until the moment Defendant complies with an injunction issued by this Court or
otherwise ceases and desists using Plaintiff’s marks under the deterrence rationale.
As Defendant refused to participate in the instant case, Plaintiff was unable to take proper
discovery into the sales of Defendant. Simply put, Defendant’s non-responsive and dilatory
conduct cannot be allowed to simply buy it additional time to use the infringing mark. To explain,
provided a permanent injunction is the eventual result of a judgment against Defendant for the use
of marks identical to the registered marks in the exact same field, Defendant’s conduct in ignoring
Plaintiff’s assertion of its rights and these legal proceedings have actually bought it almost six
months of additional time to keep using the infringing mark, profit off any confusion, and deny
Plaintiff legal right to control the nature of services provided under its marks. Additionally,
Defendant has subjected Plaintiff to additional time and expense through its initiation of the above
referenced trademark cancellation proceeding. If such conduct is not deterred in some meaningful
way, Defendant’s conduct may actually encourage parties who know they are infringing a mark
and do not possess any claim to superior rights in the mark to simply ignore the cease and desist
letters (and/or respond in bad faith with nonsensical assertions) and ignore subsequent enforcement
proceedings with the comfort that they can squeeze out additional time to use the mark without
any consequence (beyond an injunction, which would have been the result had they immediately
ceased use when the rights were initially asserted anyway). As such, an order awarding profits is
proper to ensure Defendant’s conduct is not endorsed but rather deterred.
Due to Defendant’s refusal to participate in the instant case, in order to enable such an
award of all Defendant’s profits, Plaintiff requests that this Court order an accounting of
Defendant’s sales through all channels up until the moment Defendant ceases all use of Plaintiff’s
marks. Because this case involves the use of a deliberately deceptive mark, this Court may enhance
the damages award under either 15 U.S.C. 1117(b) or in its discretion. Polo Fashions, Inc. v.
Magic Trimmings, 603 F. Supp. 13, 19 (S.D. Fla. 1984) (“The Court may award the Plaintiff up to
three times the amount of profits made by the Defendant as damages as justice shall require. Such
an award is discretionary and may be based on a finding of willfulness.”).
The Lanham Act . . . confers broad discretion upon the district court to fashion the
assessment of damages according to the circumstances of the case . . . and it is the
character of the conduct surrounding the infringement that is relevant. Thus, it is

000010/01192559_1

- 22 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 23 of 25

the district court's assessment of the particular conduct involved that governs the
exercise of its discretion in fixing an appropriate remedy. The district court has the
statutory authority to enter judgment for such sum as the court shall find to be just,
according to the circumstances of the case.

Burger King Corp. v. Mason, 855 F.2d 779, 782-83 (11th Cir. 1988)
“This is an exceptional case since the Defendants cannot justify their actions as either a
reasonable attempt to develop their own trademark or as the result of any innocent confusion on
their part concerning the existence of the Polo Trademarks.” Polo Fashions, Inc. v. Magic
Trimmings, 603 F. Supp. 13, 19-20 (S.D. Fla. 1984) (citing Playboy Enterprises v. P.K. Sorren
Export Co., 546 F. Supp. 987 (S.D.Fla. 1982)). “The amendments to The Lanham Act were
obviously intended and directed towards eliminating such blatant counterfeiting activity as has
been conducted by the Defendants herein. Id. Furthermore, the willful counterfeiting of trademark
in and of itself has been held to be exceptional and warrants the award to plaintiffs of their
reasonable attorneys’ fees. Gucci Shops, Inc. v. Dreyfoos & Assocs., Inc., No. 83-709-CIV-ALH,
1983 U.S. Dist. LEXIS 11913, at *10-11 (S.D. Fla. Nov. 7, 1983); See also, 15 U.S.C. 1117(b).
In the instant matter, not only is it apparent on the face of the trademark infringement that
Defendant willfully and contemptuously infringed upon Plaintiff’s trademark rights, but then
Defendant’s refusal to meaningfully participate in the instant action further demonstrates a flagrant
disregard for such actions. As such, the instant circumstances present precisely what the
Lanham Act, as well as the Eleventh Circuit, contemplate for an exceptional case.
Defendant is a knowing, willful, and intentional infringer and counterfeiter of Plaintiff’s
BEAR design trademark and Hair Vitamin Bottle Trade Dress and has wantonly disregarded this
action. Such bad faith prior to and during litigation clearly warrants a finding of an “exceptional
case,’ an award of attorney’s fees and costs, and a trebling of damages. Accordingly, in the event
that judgment is not entered on Plaintiff’s infringement claim, Plaintiff respectfully requests that
the Court award Plaintiff the amount of Defendant’s profits, declare this case as exceptional,
trebling the damages to be determined from an accounting (or other method), and awarding
reasonable attorneys’ fees and costs incurred in this lawsuit (to be determined once the accounting
is complete or as this Court directs).
Plaintiff requests that this Court order an accounting of Defendant’s sales of counterfeits
of Plaintiff’s products through all channels up until the moment Defendant ceases all use of

000010/01192559_1

- 23 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 24 of 25

Plaintiff’s marks. After that accounting, Plaintiff requests that the Court hold an evidentiary
hearing to determine the full amount of damages that should be awarded to Plaintiff.
CONCLUSION
For the foregoing reasons, Plaintiff respectfully requests that this Court enter a default
judgment against Defendant, finding liability for federal trademark infringement false designation
of origin. Plaintiff respectfully requests that this Court enter a permanent injunction forever
enjoining Defendant from using either of the BEAR design trademark or Hair Vitamin Bottle trade
dress, or a colorable imitation thereof in connection with the sale of vitamin products or any
products which would reasonably be thought by the consuming public to come from Plaintiff.
Plaintiff requests the Court find Plaintiff is entitled to statutory damages in the amount of $1000
per unit sold pursuant to 15 U.S.C. §1117(c). Plaintiff additionally requests that the Court require
that Defendant provide an accounting to Plaintiff for Defendant’s total units sold in order to
properly determine damages. Finally, Plaintiff respectfully requests that this Court declare this
case as exceptional, trebling said damages and awarding reasonable attorneys’ fees and costs
incurred in this lawsuit.

Dated: July 26, 2019 Respectfully submitted,

CERTIFICATE OF SERVICE
I HEREBY CERTIFY that a true and correct copy of the foregoing has been served via
transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized
manner for those counsel or parties who are not authorized to receive electronically Notices of
Electronic Filing on this 26th day of July, 2019.

KOPELOWITZ OSTROW THE KEYS LAW FIRM, PLLC

FERGUSON WEISELBERG GILBERT Co-Counsel for the Plaintiff
Attorney for the Plaintiff 3550 SW 148th Ave, Suite 110
One West Las Olas Blvd., Suite 500 Miramar, Florida 33027
Fort Lauderdale, Florida 33301 954-519-2041(Office)
Telephone: (954) 525-4100 954-519-2042(Fax)
Facsimile: (954) 525-4300 954-519-2091(Direct)

By: /s/ Ashley Rosenbaum By: /s/ James G. Keys________

000010/01192559_1

- 24 -
Case 0:19-cv-60490-RKA Document 15 Entered on FLSD Docket 07/26/2019 Page 25 of 25

DAVID L. FERGUSON James G. Keys, III

Florida Bar No.: 981737 Florida Bar No. 63943
ASHLEY N. ROSENBAUM [email protected]
Florida Bar No.: 1002820
[email protected]
[email protected]

SERVICE LIST

Tru Reflections Inc

519 E. Interstate 30, #402
Rockwall, TX 75087
Defendant

000010/01192559_1

- 25 -