Document 32
Filed 02/28/2008
Page 1 of 34
1
2
3
RONALD MARTINETTI, ESQ. State Bar No.106 898 KAZANJIAN & MARTINETTI 520 East Wilson Avenue Glendale, California 91206 Tel. 818-241-1011 FAX 818-241-2193
4
5 6 7
Attorneys for Lee's General John Lee
Defendants Toys, Inc.,
and
UNITED STATES DISTRICT SOUTHERN DISTRICT
COURT
8
9
OF CALIFORNIA
10
11
i= 1w"'
Z
CASE. NO.07 CV 2391 (JAR POR)
GEORGIA-PACIFIC CONSUMER PRODUCTS LP, a Delaware limited partnership, DEFENDANTS' OPPOSITION TO PLAINTIFF GEORGIA PACIFIC'S MOTION FOR PRELIMINARY INJUNCTION; DECLS. OF JOHN LEE ;. DECL. OF R. MARTINETTI DECL. OF A. JIMENEZ
) LEE'S GENERAL TOYS, INC., corporation, JOHN LEE, an and DOES 1-10, a California) individual; ) ) Date: (Defs. Feb. brief 28, 2008 due)
:J Z
ID o N
0)
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Plaintiff, V5.
14
15 16 17
~Z,":JUU! (I) . < < .J-o( III .'111 .J Zo <
18 19
Defendants.
(Assigned to Je Houston)
Hone
20
DEFENDANTS Lee's
21
General to
Toys,
Inc.
and John Motion
Lee for
respectfully
Preliminary
22 23 24
25
submit Injunction.
Dated:
their
opposition
Plaintiff's
February
26,
2008
KAZANJIAN & MARTINETTI RONALD MARTINETTI, ESQ.
.
By ~ II\I\A\'~ MfAl\"t'Ij f"J~ I'~'. for Defendants
26 27 28
Jo~~tdV\~~r~i.~~E~ Attorneys
1
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 2 of 34
1
TABLE OF CONTENTS
A. OVERVIEW. 4
2
3
4
5 6 7 8 9
B. PLAINTIFF GEORGIA-PACIFIC MUST DEMONSTRATE "PROBABLE SUCCESS ON THE MERITS" BEFORE IT WILL BE GRANTED INJUNCTIVE RELIEF. SINCE GEORGIA-PACIFIC HAS NOT ESTABLISHED VALID TRADE DRESS OR TRADEMARK CLAIMS FOR ITS ANGEL SOFT TISSUE, THERE IS NO LIKELIHOOD OF CONFUSION TO SUPPORT ITS REQUEST FOR IMMEDIATE RELIEF. 4 C. PLAINTIFF'S ORDINARY PACKAGING OF ITS ANGEL SOFT AND ANGEL SOFT PS PRODUCTS DOES NOT MERIT TRADE DRESS PROTECTION. MOREOVER, DEFENDANT ANGELITE DOES NOT COMPETE IN THE SAME MARKET AS ANGEL SOFT PS AND PLAINTIFF HAS NOT DEMONSTRATED ANY PRESENCE IN THE CALIFORNIA LATINO OR SPANISH SPEAKING MARKET DEFENDANTS SELL TO. 6.
10
11
D. PLAINTIFF'S ANGEL SOFT MARKS ARE PURELY DESCRIPTIVE TERMS AND SO ARE NOT ACCORDED STATUTORY PROTECTION. IN FACT, THE TRADEMARK OFFICE REFUSED TO APPROVE PLAINTIFF'S USE OF THE WORD "SOFT".10 E. PLAINTIFF BELIEVES THAT ITS MARKS FALL INTO ONE OF TWO pROTECTED CATEGORIES BUT -ITS MARKS ARE NOT ENTITLED TO PROTECTION WITHIN EITHER OF THE TWO CATEGORIES ll F. PLAINTIFF IS NOT LIKELY TO PREVAIL ON ITS FALSE DESIGNATION OF ORIGIN CLAIM SINCE THE MARKS ARE TOTALLY DISSIMILAR AND ANGELITE'S PACKAGE STATES THAT THE PRODUCT WAS "MADE IN CHINA..." 17
G. PLAINTIFF IS NOT LIKELY TO PREVAIL ON ITS UNFAIR COMPETITION CLAIM SINCE IT HAS NOT SHOWN EITHER LIKELIHOOD OF CONFUSION NOR ACTUAL CONFUS ION 17 H. OUR CIRCUIT HAS RECOGNIZED THAT IN "EXCEEDINGLY RARE" INSTANCES A PARTY'S VOLUNTARY CESSATION OF CHALLENGED CONDUCT WILL MOOT INJUNCTIVE RELIEF. DEFENDANT LEE'S REMOVAL OF 59, 520 TISSUE WRAPPINGS AND HIS VOLUNTARILY INFORMING DISTRIBUTORS THAT HE WILL NOT FILL RE-ORDERS DEMONSTRATES THAT THIS IS SUCH AN INSTANCE. 18
12 13 14
15 16 17
18 19
20
21
22 23 24 25 26 27 28
Ste2hen 127 F.3d ~ Boney, 821 (9th Inc. cir. ME 599 Inc. F.2d ~ Sleekcraft 341 (9th cir. Veterans 1035 Ass'n. {D.C. cir.
CASES
Boats 1979) ~ Blinded 1989) ~ Vet. 12, 13,
14,
15,
16
Blinded 872 F.2d
Foundation 12, 15 Inc. 8
~ Boney 1997)
Services,
2
.Q.Q n 1
2
434 Fed~~ Trade Commission ~ Affordable 17 9 F .3 d 12 2 8 ( 9 th C i r .19 9 9 ) 18
GoTo.com. Inc. ~ Walt Disney: ~
Carter-Wallace.
Inc.
~
Procter
~
Gamble
~
F.2d Media
794
(9th
cir.
1970)
10
3
4
5 202 12, 13, 14,
stx. Inc. ~ ~ stik, Inc.
F.3d
1199
(9th
Cir.
2000)
5,
6,
16
Page 3 of 34
R
"'
B
A
708
F.Supp.
1551
(N.D.Cal.
1988)
7
Filed 02/28/2008
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Document 32
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lP.
Case 3:07-cv-02391-JAH-POR
19
20
21
22 23
24
25
26 27
A
28
3
1
MEMORANDUM OF POINTS AND AUTHORITIES A.
Plaintiff
2 3
OVERVIEW Georgia-Pacific valid
list
in-
Consumer that
it
Products tissues: ANGEL SOFT and one
with in Ex Support
claims This
4
5
holds four three phrase for TRO, p. ANGEL SOFT PS.
(Memorandum ("Memorandum")
trademarks with of Parte the phrase
in
bathroom
cludes trademarks the Application
Page 4 of 34
6 7
4)
are retail outlets. such
Decl. of John in to c
8
9 10 11
ID o (\I g) ~ Z
(\1 lnO \1. In .J
Plaintiff's ANGEL SOFT products
Defendant does not sell
sold ercialoutlets as
(Suppl.
in
However, hotels Lee, the Latino
California
Filed 02/28/2008
that par. and Spanish which Jimenez,
4) Further,
carry 4) speaking are three of that are or totally unknown Southern Moreover, Defendant's products are largely sold
rnarket---a
ANGEL SOFT FS products.
f: 1III Z "' ;) z
12 13
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market
Armando
in par. sell ANGEL SOFT has Lee, has stopped pending
distributors
ANGEL SOFT tissues
(Decl.
of five
U
Document 32
\1.
14
15 16 17
Defendant's patronized advertising.
.x
O..,-"'.J
~z~3~ < ...In I-I/) .J-< .'\11 Zo «\I NIn . \11 .J < c Z
distributors largely
and
to no presence
swap meets
by
Latinos where of Defendant Angelite info
d its
~
~ ~
(Suppl. Moreover, distributing gation
not accept PLAINTIFF BEFORE IT GEORGIA-PACIFIC WILL re-orders.
Decl.
John
par.
6)
importing, selling, and
Case 3:07-cv-02391-JAH-POR
18 19 products
the
in
outcome
writing
of
this
that it
litiwill
20
21
and has (Suppl.
Decl.
of
John
Lee,
par.
5)
MUST DEMONSTRATE "PROBABLE BE GRANTED INJUNCTIVE RELIEF.
22 23 24 25 26 27
1. GEORGIA-PACIFIC
ON THE MERITS"
B.
SUCCESS
SINCE
MARK CLAIMS FOR ITS ANGEL SOFT TISSUE, CONFUSION TO SUPPORT ITS The Ni~ch Circuit
THERE IS NO LIKELIHOOD REQUEST FOR IMMEDIATE RELIEF. has set forth the required
showing
OF
for
28
4
injunctive Boats
Inc. v. Walt Disney Co.
relief
v.
in Sleekcraft
trademark
cases
in
AMF Inc.
and GoTo.com., relief
or
before there is an opportunity for full
2 Injunctive
harm
a party
is
discovery. on part the
a serious
remedy
since
it
may benefit
3
4 Therefore
our courts have required a strong showing 5
of the seeks
on
party the and party merits
in its
who seeks court "the has
irreparable injury is presumed. ~e, r:~rr~
this that can demonstrate of success on the irreparable injury." In fact, "probable success
provisional
remedy.
Plaintiff
Page 5 of 34
6
to persuade merits" possibility shown probable the once
trademark claim,
~
8
a y
9
Filed 02/28/2008
10
Walt Disney ~, 202 F3d. 1199, 1205 (9th Cir. 2000)
11
At
preliminary injunction stage, a party
the must the
at po
show
"a Act.
i= 1l1I "' :J
\D o N -
12 likelihood confusion"
of prevail
supra. 202 Fo3d
to under 1205.
~
Lanham
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13
GoTo.com. ~ Walt Disney
In
the
14
15
Document 32
~Z,":JU'"
the trial
of the marks; 2)
court the channel opposing
actual
in relatedness used; party's 4) of
determining
likelihood
of
confusion: the the two strength
1)
the companies' of the
16 similarity 17
~
~
services; challenging mark: mark; evidence
of
3) 5) the
the
marketing
Case 3:07-cv-02391-JAH-POR
18 19
intent
7)
in the
selecting
likelihood
its
of
6)
into
by po 1205 (citing the
"pliant" one; GoTo.com..
at po
1205 (citing
confusion;
20
expansion
exercised Fo3d at purchases.
other
markets;
8)
the
Inc.
degree
~
of
Nglt
care
Disnev.
likely
supra.
to
be 202
21
GoTo.cornl
22 23
This
a
factors)
"some Inc. factors ~ Walt
test
is than
202
Fo3do
are
much
Disnev
more
~
24
important
suQra,
others."
25 26
Inc. ~ West
Coast
cQ
174
F.3d
1036,
1054
(9th
27
cir.
1999)
5
28
1
However, quessimilarity
202
"an
in fact.
important of
Inc. ~ Wal t Disnev ~
question" confusion analysis"--is "the
" a critical
2
3
tion of F.3d In the not
m~np
in the at present
showing has
li~t-~
the m~rks_" p. case,
that trademark in in the four marks it it possesses a valid trade dress mnrk
likelihood
4
5
1205) Plaintiff Georqia-Pacific has
Page 6 of 34
R ~
the
required that it a valid
or its In fact,
it-~
p,
~
moving Plaintiff
four p.
papers appears marks"
(Memorandum,
(Memorandum, uncertain or are are
stronq. ..."
p. as to 12: or
) ;
4) whether
Filed 02/28/2008
10 11
ID o N "' < Z LL
marks "Whether as suggestive the
~hown in
in
are the marks, ANGEL SOFT Trademarks
Supplemental Brief
"suggestive ANGEL SOFT Trademarks classified as arbitrary
"arbitrary."
~ 1IIJ "' Z j Z
12
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13 14
15
lR
(Same
uncertainty for Preliminary Injunction, p.
Support Brief")
of
Motion
9)
("Supplemental
Document 32
since over it had been arbitrarily would seem that
certain
t-_l1p
Plaintiff years
thnt
claims aqo, mark to Boy paint
.
Adam
1.(2002 Supplement)
that Plaintiff
the
ANGEL SOFT mark
was registered would
sp.lp.crpn
sixty
know for
and
'7
lR
was are
(Sir
Trademark
Case 3:07-cv-02391-JAH-POR
there:fore entitled Dutch or complete such
~~
protection--as
famous Isaac
~,
marks Newton
1!=}
APPLE computers
Brook man,
20
notwithstanding)
2.02 [A] , p. 2-19 21
Section
22 23
cPLAINTIFF'S
ORDINARY
PAC
:ING
OF
ITS
ANGEL
SOFT
~ND
ANGEL
SOFT PS PRODUCTS DOES NOT MERIT TRADE DRESS PROTECTION. MOREOVER
ANGEL
24 DEFENDANT ANGELITE DOES NOT COMPETE IN THE SAME MARKET ~s
25
2R
SOFT CALIFORNIA 1.
PS AND PLAINTIFF
HAS NOT DEMONSTRATED ANY PRESENCE
rN
THE
LATINO OR SPANISH SPEAKING MARKET DEFENDANTS SELL TO ordinary ANGEL SOFT packaqe is not
enti-
27
2P'
Georgia-Pacific's
6
tIed
1
to a.
Pl~inti-F-F
trade dress appears as its
(Memorandum,
dress protection to protection . authority ordinary packevery
phototoil~t
protection. should claim
its
Trade trade dress for
be extended
cautiously
2
3 ANGEL SOFT (as well pp. would
aqinq
ANGEL SOFT PS products) does to
roll (Exh.
4 5, extend or
toil~t tissll~--a standard
7, trade that 1. chain qeneric Scott tissue resembles dress protection its rather
16)
However,
Plaintiff
not
cite
any
that
5
f}
Page 7 of 34
~
other toilet
(Exh.
paper 2, photoqraph of cvs druqstore
on the
market.
B
qraph) tissue
Trade dress refers to the overall look of a product--literally
.C)
wrappinq)
Filed 02/28/2008
10
11
how it dress' refers
may
is to as size,
stx. ~ ~ ~ stik, ~,
"dressed the shape, 708
has
up." appearance color, color combinations, F.Supp.
cautioned:
As one District of the product and
Court
has
noted,
"'Trade
include
~ 1IiI "'
:> Z a> -
ID o CII
12
Z
-"' (/)1-> <
Z
13 features or qraphics."
(N.D.Cal. 1988) .However, one scholar
1lJ1t<
such
texture, 1551, "Not
U
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\!0
14
15
Document 32
O~=",J ~ ~ <
~Z..:>U < < "' (/) . .J-< IIJ .'IIJ .J Zo <
1557
all
16
trade dress protectable." Law, packaging
appeal ~pll rndress claim, in the (Emphasis in
is
protectable.
In
fact,
most
oriqinal.)
trad~
Adam
dr~ss
Brookman,
i!:;
17
probably Trademark
h-
Case 3:07-cv-02391-JAH-POR
lB
section is not
6.01,
p.
6-4
(2003
Supplement) distinctive
California
1!=}
ANGEL SOFT's
any rh~r prevail (1) on a trade npTpnn~nr~ special
nor
has Spanish
it
ac-
20
quired
m~rkprrrn
speaking
21
22 23
t-h~t-~
a party
must is through inherently secondary distinctive meaning;
(2)
demonstrate or
there
the
trade
dress
has
is
ac-
24
quired
likelihood
distinctiveness that (3)
Bonev
a
the public will be confused by the
infrinqinq
2R
2R use;
Inc. ~
and
the
trade
",'. . SerV1CeS.
dress
~
is
nonfunction~l_"
N.,.. Bonev.
27
127 F.3d
7
821,
828
(9th
cir.
1997)
28
1
ANGEL SOFT'S
~t-~nn~rn
packaqe rolls.
(Memorandum, wrappinq
~
~nn
consists
p. 3) The
in
of
outer
the
wrappinq
of
the
2
~
i.c;
white clear--there ;~
toilet nothinq packaqe
yellow
11~P~
paper strikinq
Moreover,
t-h~ h'll~
or
unusual
4
R
wrapped
~nlnrs
in
a clear
outer
wrappinq.
are
same yellow and blue combination on
i-;~~llf:.
not
its toilet paper. (Exh. 2,
unusual:
at
least
one druqstore
chain
(CVS)
Page 8 of 34
fi
~
Po
the
cv.c;
druqstore
tissue (Exh. uses a blue backqround.
chain wrappinq) 1, Scott tissue photoFurther,
qeneric
toilet
Scott
a
qraph) Defendant
t-hp
Pl~int-if'f' ~llhm i t-- t-pn
Filed 02/28/2008
l()
Anqelite's
~nn
pink
of a wide iournals produced any evidence (e.q. American Baby array of qlossy advertisements and ANGEL
SOF'r.
wrappinq Moreover.
stands
in
stark
contract
to
h~~
in
11
ID o N 0;
< Z \10
<
hll1P yellow the lanquaqe has not court. to Enqlish .but it
~ 1III "' Z :J
l~
12
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national Circle)
;,.
Family
t-h~t-
Document 32
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demonstratinq
O~=",J
~Z,.:JU «",In .J-< ~LIJ Zo
r~'i-Fnrni~
shopper
Angelite's dressed in a dark blue and
thpit-~
in
attractive briqht
Court
~n
the
pink
Latino
or
Spanish
wrapping
speakinq
with yellow.
!:;hould
Ir~ fop
m;=1rkpt-
lR
would ent
in
confuse product
a
niTTAr-
~ 1"'
~ ~
Therefore. disreqard
P)(PC!llfo; VP~ ~ ~
Case 3:07-cv-02391-JAH-POR
lP.
assessinq
~n~ ~nn t-p~t-imnni~l~ -frnm
any
secondary
meaninq,
1,q
Pl~int-i-f-f'~
20
;rrplpv~nt-?1
c.
Plaintiff
has
not
demonstrated
a non-functional
purpose
~~
22
to
()11r
merit circuit also w. F.3d at p. 828.
trade
dress
protection requires Bonev.
'T'hi~
2~ 24
+-inn~l"
that Inc.
;=It-t-rinl1t-j::)
the v.
trade Boney
;=I~
dress Services.
nj::)j::)n nj::)~~rinj::)n
hp
"nnnf'lln~-
Inc.~
;=I~ ";=1
supra,
me. re.
2R 2R
1?7
arbitrary
Tl ;'1 i r
pmnp";~hmpn+-" vuitton ~t Fils S.A.
that
v.
lends
J.
the
Younq
product
Enterprises.
~
distinctive Inc. .
h44
27
2P'
A
F_?n 769, deserves protection:
(Memorandum, p. 3) Even if this
773 a photoqraph of a baby set aqainst somehow photo-
(1981)
What
is
the
embellishment
that
Plaintiff
1
claims 2
hlu~
a
backqround? distinctive,
~nd
were no
with Plaintiff's
~
~()n~inp-rp-n
Defendant's pink cannot be confused
packaqe
has
such
4 qraph
R
its
soft
briqht
blue Plaintiff
product in the California Latino
and yellow. has nr Spanish
Anqelite
-e--t ~ S .A.
Page 9 of 34
R
Further,
7 is
not speaking is
sold.
~ ~
made any
showing
that
its
recognizable especially
Decl.
vuitton
8 market. 9
(Suppl. 10
Younq Enterprises, Inc., supra, 644 F.2d at
at
John p. . 773 (showinq of Lee, par. 5)
the
swap meets
where
Filed 02/28/2008
of
11
secondary
:J Z
meaninq
required
to
show
non-functionability)
j: 1\11 "'
0)
Z
10 o N
12
Therefore,
l~
Plaintiff's drab industrial packaging is not
ANGEL SOFT mark
is
not
protectable.
entitled
-"' (/)1-> < Z
11Ia:< U
d.
ANGEL SOFT PS's dress apparently to
note
toilet
Document 32
'4
to
1R
O~:!",J ~
trade Plaintiff also dress
of this
protection makes protection. the claim that its ANGEL
pp. 3,
~Zf-:JU «"'(/) .J-~ .'111 Zo
SOFT
5,
16
~
~ IJ
FS is
17 7,
17
entitled
at 5) A photoqraph
trade
(Memorandum, rather
ordinary in
Plaintiff's
lookinq
Case 3:07-cv-02391-JAH-POR
18
roll
1.9
of tissue
(at p.
3) .
is The drab pink
reproduced
Ex industrial packaqinq
bp.~r~
Part2
no
20
resemblance
21
Application
to Defendant Spanish outlets 4)
p.
Defendant's
and white its
wrappinq. bathroom tissue larqely in
Moreover,
distributes speaking (such since
22
t-hp
California
and
Latino as Little Defendant does
market. Caesar not compete
Plaintiff Enterprises) in Plain.
23
sells to commercial
24
(Memorandum, 2R
tiff's market,
there
is Plaintiff
(Memorandum,
no likelihood has
p. 3)
of only
There
confusion. been
is
2f) Tn
27
additiol), 2003.
sellinq
no
ANGEL
showinq q
~OF",
PS that
this
28
since
1
wrappinq industrial
~
;=1+-
is market.
Fils S.A. ~ ~ Younq
so well to Inc..
of fact whether Louis vuitton use of
known by iustify supra. 644
F_?n
Little
the
Vl ; +-
Caesar. dress protection.
or
the
rest
of
2
~
trade
4
pp.
R
773.
776
( question
fleur-de-lis secondary D. PLAINTIFF'S
AND
is meaninq) ANGEL SOFT MARKS ARE PURELY DESCRIPTIVE IN FACT.
TRADEMARK
OF THE WORD "SOFT"
functional
and
if
so whether
mark
has
acquired
a
Page 10 of 34
R
TERMS
R
.Q
SO ARE NOT ACCORDED STATUTORY PROTECTION.
OFFICE REFUSED TO APPROVE PLAINTIFF'S USE
THE
Filed 02/28/2008
10 11
"' o N 0) < z
(Memorandum, p.
l~
Plaintiff
in
admits
II
in issued
"~nrt-" 13)
its only if the word
w~~
r'i;~
movinq
papers
that
the
four
trademarks
question from
rlop-~
...were
t= 1\iI "' :J z z t= "' (/)"'~ l1J...
12
claimed
Pl ~ i nt-_i TT
protection." not Office;
thp:
elaborate presumably, However, the held that tissue the term
tp:rm
as to
why the
word
"~nrt-_"
"~nrt---"
w~.c;
Document 32
u
"' '"(/) . l1J .J < a Z
'4
reiected reiected merely
anqel," anoth~r
by the as purely way circuit has lonq of describinq descriptive.
Trademark
w~~
O
~z~3~ «
lR
Anqel
Soft
is
.J-.c .'l1J Zo
lR
~s
"Purely Inc.
lI~nft--
n~
~n
~
~ t9
'7
and our
lP.
descriptive
v. Procter
&
Case 3:07-cv-02391-JAH-POR
1.Q
Gamble
Co., (citation to and Body Scrub," describe a wide
434
F.2d
794,
800
(9th
cir.
1970)
(e.q.
.
lI~hrpnnpn
2n wheat")
been Hand. (Exhibit
Fnn+-
omitted)
In
fact.
array an of Oranqe
the
term
products:
"anqel
e.q.,
soft" "Anqel County,
Californi~
hn~
21
used
Soft
dbn
22 2~
3. 16.
a
Print-out No.
re
internet
search
of
term
"anqel
soft,"
24
Feb. However,
it"
2008.
6)
mark may be entitled to protection
if
Q.R
descriptive
2R
h~~
acquired
a secondary
rneaninq.
'T'hp-rp
i.c;
no
showinq
t-h~t-
27
ANGEI~
2P.
SOFT has
acquired
any
followinq
in
the
Californin
T,~t-; nn
10
~
and Spanish
widely
1
Speaking
in
market or
and Armando Jimenez, even
or Southern (Decl. to Enqlish-lanquaqe
iournals;
that California of Plaintiff's supporting is
the
product
has
been
advertised Los Anqeles by purchasers. attached qlossy journals are protection of
PROPROTECTION
2
knnwn
or recognized 6) are
from mainstream 3,
3
pars.
The advertisements
4 papers
R
there
is ANGEL SOFT's the BELIEVES
BUT ITS M~RKS ~RE NOT ENTITLED
no showing marks interpretation the Lanham Act. not entitled to
that
these
are
read
by Latinos.
Page 11 of 34
6
Therefore,
7
under 8
Ea
even PLAINTIFF
C~TEGORIES
most THAT ITS MARKS FALL INTO ONE OF TO
generous
9
TECTED WITHIN
1.. P1aintiff
cl~im.c:;
Filed 02/28/2008
10 EITHER THE TWO C~TEGORIES
is t::hnt-t-_hp- AN~RT. ~()F'T' hrnnn wn~ unsure or its own trad~mark II
"' N
m
j: .-o "' III
;) z
12 Pl ~ i nt-_i rr 13
lq44-
Z
launched
in
-"' (J).-> < Z
,. \10 -
11l~<
(Memorandum,
p.
3)
Yet,
Plaintiff In
in
is fact, Plaintiff brief the
both
unsure
of
whether
its original
its
Document 32
U
14
O",-",.J
marks
lR
are and are
hpt-_~ -
arbitrary in suqqestive, (Memorandum, ANGEL SOFT Trademarks of "Angel Soft" is not the type of product...") descriptive are p. 11: "On the then qoes on to its supplemental brief,
or
suqqestive.
~z~5j « Iii (J) .J-o( .'11l Zo
. I1l .J < C Z
papers
16
denies issue of
that
t-n
its hedge
distinctive-
~
~ G
marks
'7
; t-_~
spectrum
Case 3:07-cv-02391-JAH-POR
18 ness, 19 suggestive (Supplemental or Brief, sugqestive of p. 9: the the arbitrary--not descriptive or
20
2'
type of
~~
"The product--bathroom Defendant another as an anqel. it
2. A
phrase
tissue.") noted, sayinq the that mark is Plaintiff's descriptive bathroom since tissue it
;~
22
has
2~
24
"soft
merely
way of
"
is
However, assuminq that the mark
i.c;
25 26 27
determine
2P.
suggesthat
mark is
tive,
is
a weak mark
does
one
not
that
merit
requires
statutory
an
protection.
imaqination
suggestive
to the nature of the qoods.
11
()np betwp.p.n n
circuit
mark "A term is suggestive if it requires imaqination, and a suqqestive one:
court
has
described
the
difference
2
descriptive
3 4
5
nf'
thouqht
of idea qoods. A
and
perception
to
reach
a conclusion
as
to
the
nature !diate
term
t-_hp
is ingredients, qoods." qualities or characteristics of th~
descriptive
if
it
forthwith
conveys
an i-
Page 12 of 34
R ~ P. ~
tion,
1040 (D.C. cir.
872
F.2d
1035,
1989)
notes
the.
In
the
present
case,
Plaintiff
(in
a footnote)
that but forced
in
Filed 02/28/2008
10 11
\0 o N 0) < Z
word
then notes (again in a footnote) that the Trademark Office
"soft"
"may be suggestive
of
bathroom
tissue
products,"
~ 1w"' Z :J Z
12
13 wnrn
Plaintiff "soft"
9, note 2)
"to in its trademark application." (Supplementa
1
disclaim
any
independent
trademark
rights
the
Brief,
-"' !/)1-> 1lJa:< U«ZOD: II. ~ "' ii:~0!!10 ,.II. .J
14
po
O",-",.J ~~< ~Z.-:JU"' !/) < « .J-< .'IIJ Zo «N NIn . IIJ .J < C Z
Document 32
15
lR
Assuminq
th~n
that Plaintiff to
Foundation,
the is its claim. not required Blinded
phrase
"Angel
Soft"
is
suqqestive, to
de:monstr~tp-
rAthp-r
~
descriptive, meaning protect
~
~ ~
17
lP.
secondary
Veterans
supra, 872
AssociaF.2d
Case 3:07-cv-02391-JAH-POR
at circuit has found that
19
p. 1040 (D.C. cir. 1989) However,
our
a
"weak" and not mark. entitled to
the
20
suggestive greater
~ Sleekcraft Boats, 599
mark protection
F.2d
may be considered afforded
21
an arbitrary
341, 350 (9th
22 2~
To gain statutory
cir.
1979)
protection,
a suggestive
mark
must
undergo
a
24 riqorous
analysis, of of
20 ii
and its confusion" an offending
F.2d at p.
owner in the one.
1206.
must
demonstrate public's GoTo.com., mind Inc.
that between ~
there its Walt
is own
25
"a mark
Co. .supra.
likelihood and that
26 27
2P.
Disnev
12
The Anqelite
1
there is no likelihood of confusion.
mark
and ANGEL SOFT marks
are
so dissimilar
that
2
3.
~
Under tests cannot
public is
the set demonstrate the
almost thirty years aqo, our
down by our that brand.
cirif closely F.2d
circuit the
for
trademark
infrinqement, 4 likely
R
Plaintiff
to
a leadinq case, decided
confuse
its
marks
with
Angelite
In
Page 13 of 34
6 cuit 7 the marks in dispute " ...are stated that a suqqestive trademark will merit protection
quite
similar
and the
goods
8 related."
9 at p. "pro-
350. only
(citinq Westward
627,
As the against
Coach tire 1968) . Manufacturinq ~ ~ Ford Motor
~
court similar goods, similarly marketed." Id. at p.
also
noted,
a "weak
mark"
may
be
Filed 02/28/2008
10 tected
11
350
:J Z
j: 1\11 "'
0)
Z
10 o N 388
l~
12
F.2d
634 (7th
-"' U11-> < Z
11I[t<
In
the present
Spanish speaking market (Decl. of in which Plaintiff, Armando
Document 32
U
'4
Latino and 15
case,
Angelite
markets
its
tissues
to
the despite
Jimenez, par.
~z~5~ I-U1 < ..."' .J-o( .'111 Zo
some effort, Further, has
5 and 6)
is Defendant little, or no, presence. marketed its Anqelite
(Suppl.
wholly
unknown.
16
~
~ ~
4)
17
at
swap meets
Decl. of John
[email protected]@.
Plaintiff 18 pars.
l~
Lee,
Case 3:07-cv-02391-JAH-POR
with
regard
to
the
similarity
of
disputed
marks,
a more
recent
20
9th
21
Circuit must be considered in
opinion
has
provided their
further entirety
quidance.
First, and as they
". ..1-_hp
marks
appear
in
22 23 24 25
2R Angelite p.
1206. sound,
Second,
...similarity
is
adiudqed
in
terms
of
appear-
ance,
and meaninq." sells
its
Id.
products
at
p.
in a
1206.
specialized and the Spanish speakinq community;
market moreover,
aimed th~
27
marks 2R
toward are
Latinos
different
in
appearance,
13
sound,
and meaninq:
1
a. In the
supra,
The appearance
determining font and at p. 1206. colors. GoTo.com., Inc. ~ ~ Disney Co., the similarity of marks, a court may look
of to
the
marks
is
totally
dissimilar
2
3 4
5 202 F.3d
The ANGEL SOFT font
(Memo-
is logo
a certain "g" Angelite p. 7) In addition, flourish that the bland in
in is written in script. Moreover, the
large
white
block
lettering.
Page 14 of 34
6
7
randum, "g" ANGEL
SOFT lacks. (Memorandum, in Angelite has
p.
3) Anqelite's
8
9
the is an
irnpor-
logo against
a blue background.
is The difference
the
supra, 599 F.2d at p. 351.
wrapped in
of marks. 8ME IncorQorated
in logos is
an oval
shape;
the
ANGEL SOFT lettering
set
Filed 02/28/2008
10
II
\D o N
m
tant
~
key
Boats,
in
determining
similarity
~ 1Ii/ "'
:J Z
12 13
14
Z
-"' Inl-> < Z
Further,
packaging by package has a pink background. other tissue products as shown in Exhs. 1 and has a blue and yellow background (similar to
the
colors
are
totally
different.
The
ANGEL that
SOFT used Angelite
1lJ1r<
U
Document 32
O~-",.J
~Z,":JU IIJ .J < C Z
15 16 17
lB
2) .The
«,"In. .J-< .'IIJ Zo
~
using pare
immediately
Co., supra, 202 F.3d at p.
the it
similarity."
sinqle cannot
qlance
test
set
forth
in be said
GoTo.com., that
GoTo.com. ~
to "...one
~
comis Disney
ANGEL SOFT and Angelite,
struck by their
Case 3:07-cv-02391-JAH-POR
19
20
21
inspection b. are totally dissimilar
1206.
In
fact,
from
the a visual
marks
upon standpoint.
a
close
22 23 24
important
~ Incorporated
The sound has noted
of
the
marks that
is in is
dissimilar. comparing often marks, conveyed
"Sound is word-of-mouth." also
Our circuit because
~
reputation
25 26
Here, phrase both
"Angel
Boats,
supra,
599
F.2d
at
p.
351.
products
Soft" has
have
the
a different
common word
sound than
"angel" the
but single
the
word
27 28
14
"Anqelite,"--a
neologism.
The two
Y--Sleekcraft Boats,
marks
supra,
are 599
not
"strikinqly
alike
1
whp-n
spoken.
"
.AME
2 F.2d
~
at
p.
352
(noting omitted.) of
meaning
Boats,
the
similarity
between
"Smirnoff
and Sarn-
off")
(Citation c. The meaninq
in cnn
~ claim
4 the
itself substantiate of
marks
is
dissimilar
R
"Closeness
Page 15 of 34
R
"'
supra,
599
Fo2d
at
po
352.
However,
the
and "lite"
word refers
to
Random
"soft" to
~
8 are
~
not
of a tissue; "lite" or "liqht" refers weight.
synonyms.
Id.
at
page
352.
"Soft"
texture,
the
feel
Filed 02/28/2008
10
House
11
Therefore,
~hprp i~ no likelihood of confusion
ID o N
0\
by the marks.
consumers
j: 1\iI "'
:J Z
12
Z
based
13
upon Plaintiff's arques are the to sinqle the word "Angel, bathroom tissue.
II its
the marks that arbitrary." mark is arbitrary If (Supplemental "On the spectrum of are not arbitrary
appearance,
sound,
or
meaning
of
-"' cnl-> < Z
IlJCt< U
Document 32
ii:~~~~ II. .J -
'4
Plaintiff
15
~~< . IIJ .J < O Z IIJ .J t9
4.
O~-",.J
distinctiveness, Brief, because Plaintiff
argument
t-- hp.
~Z,":JU «",cn .J-o( .'IIJ Zo
ANGEL SOFT Trademarks
1.6
p.
th~
9)
word
Plaintiff
1"'
claims
that
"anqel"
has under However,
addinq nr
no relation the
marketed
might have
Case 3:07-cv-02391-JAH-POR
lR
its
lA
tissue
20
21
merit. phrase merely is cannot
with v.
po
descriptive to the
word
"soTt"
h~throom
robs
tissue--and
the
its another have
the
uniqueness way of
when applied describing it both
adiective American
quality ways:
"soft." Veterans
of its mark
~"Q Fou~:!=.t
the is not
Blinded
product. arbitrary
Veterans supra,
22
Plaintiff
23
24
~e~~~ "+-;r"'n
when
combined
Blinded note scotch
R7'
9 (listing whiskey, examples "Mustang" of motels)
25
F.2d 2R
at
1040,
arbitrary
.
marks:
27
5.
2R
"Black
& White" Plaintiff
has
not
demonstrated
likplihnnn
DT
confl1~;on
1~
1
under The
~p-p-m 't-n
the "similarity accord
determining
Inc.. Disnev ~ ~
other of the
"likelihood Walt of of
e.q. .GoTo.com.. ,
factors. the most weiqht in marks" is the sinqle factor that courts
2
~
4
R
confusion."
supra,
202 1205) However, a number
F.3d
at
p.
other 2)
channels
factors
Page 16 of 34
6
11
are the
4) marketing
also goods, 5) exer~
relevant: 3) type the
purchaser as well as a
e.g., of and the party's
intention.
1) actual degree of care likely to be confusion,
strength
of
the
mark,
proximityof
evidence of goods
8
used;
~i~Arl
9 by
10
11
ID o N 0) < l~
Filed 02/28/2008
Tn
the that is are
to describe a product. (Exh. 3)
presence descriptive--and that "angel soft"
case,
Defendants
have
demonstrated
the actu-
~ 1W W :J Z W
12 ally a common phrase
ANGEL SOFT marks
Z ~ Z LI.
Moreover,
~It~ U
'4 Defendant
Pl~int-irr'~
Angelite glossy to tissues, or advertisinq loyalty to Plaintiff's campaiqns. Latino purchasers are this Southern California market.
magazine ads in national
has
used
swap meets
as marketing
channels~-and are both
not
Document 32
lR
magazines
16
geared are have no attachment "Bathroom par. strongly customers
par. customers 2)
While careful
products shoppers "Anqels
(Decl.
nnn
~
~ ~
17 bathroom 18 19 Moments" 4) object are to more or Jimenez, Defendants Spanish
of Armando speaking Jimenez,
Case 3:07-cv-02391-JAH-POR
in
nof
Action" Armando
20
21
Plaintiff's likely
(Memorandum, 1 are likely p. to
statement to
1.4
that
22
speaking
be confused.
("0 0 othese
(Decl.
2~ 24
Spanish Defendant
since 2R
[i.e.,
be
confused.") to were
and
Also,
Lee had no intention logos completely
equally
infringe different,
importantly,
on ANGEL SOFT's the
ANGEL
mark~
26
the
different;'
colors
SOFT was
and
type
not sold
27
were
28
lh
,
was sold. (Supple the
i!';
in
the
whe.re.
Latino
Anqelite
markets Decle only
from
me.ntion
'especially of evidence
that
Chow.
at Lee, of
does (Decl. 28) under of Andrew
Towl~
swap meets paragraph "actual
not
John confusion," even
8)
2
Further.
~
supposed
a consumer
~ MrAllp.n
an
anonymous
hlltrprpr~ t-n
letter
4
Anqelite 5
in
Support Therefore,
thp-rpf'~C!t-nr~-
of
iR no "likelih,
Ex Parte of confusion" the
Application
for
TRO, Exh.
Page 17 of 34
R
7
R
F.
Q
PLAINTIFF CLAIM
PACKAGE
nnt-p~
IS NOT LIKELY
STNCR
STATES THAT THE tn p!';t-_nhl ; !';h n :false PRODUCT WAS "MADE IN CHINA."
TO PREVAIL ON ITS TOT~LLY DISSIMIL~R
~NGE-
FALSE DESIGNATION OF ~ND
ORIGIN
Filed 02/28/2008
10
LITE'S 11
Plaintiff desiqnation
"ns
(Q o N a; <
l~
rh~r
ml]~t. p-~t-.nhl i~h thpsnme elements
of are
claim."
re.-
i= 1w"'
12
z ~ i= "' z
origin
claim, to
p.
it
~It~
Document 32
u
'4
(Memorandum,
quired
17)
prove
a trademark
or
trade
dress
infringement
~z..:>u «",UI .J-o( .'\IJ Zo
15
Defendant
16
has consumer of wrapping and therefore of John clearly there Lee, par. TO PREV~IL ANGEL SOFT. would confuse
already
demonstrated
that
there Angelite's
is
no likelihood
n i !:;t-_i nC!t-_i VP
that an ordinary with Angelite's in oriqin. IS NOT LIKELY (Decl. China" those
17
mark
Case 3:07-cv-02391-JAH-POR
18 Moreover,
l~
states is
that no confusion
the
product about the
was "Made
20
point
21 G-
of PL~INTIFF SINCE IT
7)
ON ITS
(Exh.
4)
UNF~IR
COMPETITION OF CONFUSION
NOR
22
CT.a. TM
H~S NOT SHOWN EITHER LIKELIHOOD
23
~CTU~L CONFUSION
24
Plaintiff correctly
claim
notes
that
under
a state
law
unfair
cornpe-
25
tition
the
test confused
is
"whether by the similarity
the
public of the
is
2R
likely
to marks."
b~ (Memoran-
27
deceived dum, p.
or 18)
28
17
1
npf"pnn~nt
has
likelian
already consumer
would
demonstrated confuse Angelite's
that
there
is
no
2
t-- h ~ t
hood ordinary
with one those of ANGEL SOFT. n;~~_;nct;ve mark
~
4
R
Moreover, produced tion" product.
Application (Declaration for TRO, Exh. 28)
the consumer signed protecnot in Support of Ex Parte even refer to Defendant's "Anonymous for Consumer complaint anonymously does Towle
that
Plaintiff
has
is
Page 18 of 34
6
7 8
and apparently of Andrew
9 10
11
U) o N
0) < l~
The court
Plain-
should for HAS RECOGNIZED THAT IN
"EXCEEDINGL y RARE"
iqnore an iniunction under state law. INWILL
this
lettre
de cachet
and deny
Filed 02/28/2008
tiff's H.
STANCES A PARTY'S VOLUNTARY CESSATION OF CHALLENGED CONDUCT OUR
request CIRCUIT
i= 1w"' Z :)
Z "' Z ""
'2
MOOT INJUNCTIVE WR~PPINGS ~ND HIS VOLUNTARILY INFORMING DISTRIBUTORS NOT FILL
()llr
i=
RELIEF.
DEFENDANT LEE'S
REMOVAL OF 59,
520 TISSUE THAT HE WILL
~a:~
Document 32
U«ZO~ "" "' ii:~0!(10 '.
~~< . 111
'4
lR
O~:!",J
~Zf-:)U «(",cn .J-o(
RE-ORDERS DEMONSTRATES THAT THIS
('! i r('!l] i t-a party's voluntary cessation of
IS SUCH AN INSTANCE "exceedingly
challenged
.'111 Zo «N NU\
.J < C Z
16 17 IB
1~
has
recoqnized
that
in
rare"
conduct
inwill
~
~ ~
stances
Case 3:07-cv-02391-JAH-POR
able
Media,
179
F.3d
1228,
1238
(9th
cir.
1999) a
20
In
meet this
order events [have] behavior
1238.
to
burden,
made it
party
absolutely
" ...mus
t
show clear cannot reasonably be that expected
t-h~t--
21
"subsequent alleqedly recur." In the
removal
l~b~l
II
the to
22
wrongful Id. the
of
23
at present
59,
p.
24
25
2R
case,
Defendant 520 tissue
John wrappings
Lee voluntarily that bore the
supervised
Anqelite
and has
lonqer
informed
, sellinq,
the
court importinq,
under or
oath distributinq
that
his
company Anqelite tissue
is
27
...no
28
18
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008 " (Decl.
Page 19 of 34
(pending
1
the
outcome
of
this
1
litigation)
.
of
John
Lee,
par. 2
3
1;
Suppl.
Decl., Defendant
them
par.
Moreover, utors tissue for John
informing
Lee has written
that II ...we
to
his
five
major
distribAngelite
are
no longer Instead, in
selling we are
4
5 6
and will sale Lee, our par.
not
refill
any which
reorders. is not
offering (Decl.
of
Swan label 2) concern
controversy."
~
Plaintiff's
8 9 tissues is
that
Defendants
Defendants
will
have
distribute
applied for
Angelito a trademark
a red
herring.
under the
that mark--and
name--as has
is until has
their April never
right, to
and Plaintiff file its sold, not John in
has
contested papers.
any
10
11
opposition
However,
Defendant using
is
imported, brand
or
distributed
until
i, ! Ijill
12
tissues
13 litigation
the
Angelito
and will Decl. actions of
do so Lee,
this 3)
offend-
concluded.
(Suppl. strong voluntarily company will
par. the
14
15 ing 16
Based
upon
Defendants' and their that the
removing
wrappings them
contacting not re-fill
distributors any clear" Angelite
showing
to orthat reason-
inform
17 ders, 18 19 their ably Defendants marketing be expected
Plaintiff's 21
have of to
request
made an "absolutely (or until Angelito) this
Angelite recur"
for
tissues litigation
injunction
"cannot is
concluded.
should there-
20
a preliminary
fore
be denied.
February 26, 2008 KAZANJIAN & MARTINETTI RONALD MARTINETTI, ESQ.
22 23
Dated:
24
25
By ~~\~ Moon<.~.
26
..
27 28
Ronald Martinetti Attorneys for Defendants Lee's General Toys and John Lee
19
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 20 of 34
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 21 of 34
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 22 of 34
13300T
Time of Request: Client ID/Project Number of Lines: Job Number:
Saturday, February Name: Ron Martinetti 72 1823:75887135
16,
2008
19:40:50
EST
Research
Information
Service: Terms and Connectors Search Print Request: All Documents 1-11 Source: Combined Business and Corporation Search Terms: "angel soft"
Information
Send to:
REBHUHN , HARRY HARRY REBHUHN LAW 1441 LOS N VISTA ANGELES, ST CA
OFFICES 2
OF
APT
90046-4227
~
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 23 of 34
Page
1. AESTHEnQUE, INC., DOMESnC CORPORAnON (pROFIT), 6/1/1996, 11/13/1996,100137343,ARKANSAS SECRETARY OF STATE ...ANGEL SOFT SKIN ...
2. ANGEL-SOFT NATURAL SKIN CARE, OTHER (ASSUMED NAME), 3/9/2004, ANX8174652, MINNESOTA SECRETARYOF STATE
3. ANGEL SOFf, OTHER (ASSUMED BUSINESS NAME), 5/3/1994, 39892088,OREGON SECRETARY OF STATE
4. ANGEL SOFf INK, 11/27/2007, 2007040288, SAN DIEGO COUNTY, NAMES
CALIFORNIA,
FICTITIOUS
BUSINESS
5. ANGEL
SOFT CLEANING, OF STATE
INC.,
OOMESnC
FOR PROFIT,
111112006, PO6000005399,
FLORIDA
DEPARTMENT
6. ANGEL SOFT HAND, FOOT AND BODY SCRUB, 11/1/2004,20046006242,ORANGE COUNTY, CALIFORNIA. FlcTmous BUSINESS NAMES
7. ANGEL
SOFT RAGDOLLS-UNIDOLLS,
7/1/2000.
MICmGAN
FICTITIOUS
BUSINESS
NAMES
8. Angel-Soft Natural Skin Care, DBA, 3/9/2004, MINNESOTA FICTITIOUS BUSINESS NAMES
9. ANGEL SOFT WATER CO., INC., DOMESnC CORPORAnON, 11/1/1973(Anniversary Month: NOVEMBER), SO336123.ILLINOIS SECRETARYOF STATE
10. ANGEL SOFT ALPACAS, INC., DOMESTIC CORPORATION, 31311998 (Anniversary Month: MARCH), 59828843,ILLINOIS SECRETARYOF STATE
11. ANGEL SOFT nSSUE MILLS, INC., FOREIGN BUSINESS, 9127/1995, 713011976, 406278, NEW YORK DEPARTMENT OF STATE
~~
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 24 of 34
13300T
**********
Completed Saturday, 1823:75887135 72 1
********** February 16, 2008
Time of
Request
19:40:50
EST
Print Number: Number of Lines: Number of Pages:
Send To:
REBHUHN I HARRY 1441 LOS
HARRY LAW ST CA OFFICES 2 OF APT
REBHUHN N VISTA
ANGELES.
90046-4227
A
1,-,
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 25 of 34
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 26 of 34
1
2 3
RONALD MARTINETTI, ESQ. State Bar No.106 898 KAZANJIAN & MARTINETTI 520 East Wilson Avenue Glendale, California 91206 Tel. 818-241-1011 FAX 818-241-2193 E-Mail [email protected]
4
5 6 7
Attorneys for Lee's General John Lee
Defendants Toys, Inc.,
and
UNITED STATES DISTRICT 8
9
COURT OF CALIFORNIA
FOR THE SOUTHERN DISTRICT 10
CASE. 11
i= 1111 "' Z :J Z -"' Inl-> 1Ua:< U
NO.07 CV 2391 (JAR POR)
12 13
GEORGIA-PACIFIC CONSUMER PRODUCTS LP, a Delaware limited partnership,
14 V5.
15 16
Plaintiff,
) ) ) ) )
DECLARATION OF RON MARTINETTI IN OPPOSITION TO PL. 'S MOT. FOR PRELIMI~ARY INJUNCTION
Date: Judge: LEE'S GENERAL TOYS, INC., corporation, JOHN LEE, an DOES 1-10, a California individual; ) and) )
Febe 28, Hone Je
2008 Houston
17 18 19
Defendants.
20
21
DECLARATION OF JOHN LEE IN REBUTTAL TO PLAINTIFF'S I, 1. and 4. 2. taken
and
REPLY
Ron Martinet I took the
ti,
hereby
declare: that are labeled as Exhibits I, 2,
22 23 24 25 26 27
photographs
The photographs last week in
the
of
the
Scott city.
Scott
I
and cvs
purchased
bathroom
both
tissues
toilet
were issues
known
New York
items.
photographed
of
course
is
a nationally
28
1
brand that is label--the stronq
of drugstores in California.
has manaqer in the South and that he believed that of the store told me that the chain
been
widely
advertised
over
the
years.
cvs
a
is
generic especially
ran
1 -
CVS also
a chain
T
also Although
glass to improve the quality.
photographed this stamp is visible to
the
el ite
roll
wit--h the
t-hp
Made
in
China
stamp.
a magnifying
naked
eye,
I
used
4.
former
I declare under penalty of perjury
Exhibit
law partner.
3 was printed
from
the
internet
by Harry
Rebhuhn
my
that
the
foregoing
is
true
and corr~ctExecuted
i= 1IU "' :J Z z i= "' cn",~ III~ U
Case 3:07-cv-02391-JAH-POR
this
February
27,
2008
at
Glendale,
Californin.
10 o (\I Q) < Z
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-
Document 32
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Filed 02/28/2008 Page 27 of 34
?
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 28 of 34
1
2
3
RONALD MARTINETTI, ESQ. State Bar No.106 898 KAZANJIAN & MARTINETTI 520 East Wilson Avenue Glendale, California 91206 Tel. 818-241-1011 FAX 818-241-2193 E-Mail [email protected]
4
5 6 7
Attorneys for Lee's General John Lee
Defendants Toys, Inc.,
and
8
9
UNITED STATES DISTRICT
COURT OF CALIFORNIA
FOR THE SOUTHERN DISTRICT
10
11
t= 1\11 "'
z :J z
CASE. GEORGIA-PACIFIC CONSUMER PRODUCTS LP, a Delaware limited partnership, Plaintiff,
12 13
NO.07 CV 2391 (JAR POR)
-"' Inl-> wn:< U
< z
-
14
.
~!:<
w
DECLARATION OF ARMANDO JIMENEZ IN OPPOSITION TO PL. 'S MOT. FOR PRELIMINARY INJUNCTION
15 16 17
vs. Date: Feb. 28, Judge: Hon. J. ,
LEE'S GENERAL TOYS, INC., corporation, JOHN LEE, an DOES 1-10, a California individual; ) and) )
.,w
Z o
.J
< c
! (\I In
w z .J \9
2008 Houston
18 19
Defendants.
20
DECLARATION OF JOHN LEE IN REBUTTAL TO PLAINTIFF'S
21
REPLY
22 23
24
I,
Armando I have
Jimenez, been a
hereby private
declare: licensed investigator in
1. since
I
California
1988 also
and have fluent
worked in
in
both
the
criminal been
I
and civil active
worked in
fields.
in
25
am
Spanish
Southern
and have
California.
very
have
the voter for
26 27 28
Latino
community
in
registration
projects
for
Latinos
and grass
roots
fundraising
1
1
Latino
2I
T~mi 1 i ~r
programs
am also a father and have a family and am very
in
education
and domestic
violence
prevention.
2
~
wit-h
shopping
addition,
wit-h
for
T
household
with and with
Pl~inr'!nn-
qoods
Latino I stronqlv disaqree families and am familinr
and products.
In
4
R +-hl"ir
interact education awareness.
socially
many
Page 29 of 34
R ~
+-n ;'tn
t-i-f-f'!'::
counsel's
othp:r
statement shoppers.
arp~nrprttl ~nn
that Latinos prudent
t-hp
Latinos
may be more
easily
rll~~n
8
conru!:;~
niTs;;)
shoppers.
like myself, and there is no way I would Anqel
Soft They are completely to
T rl='~n
logo the Spanish
T,;'!
and the and ear. lanquaqe
Opinion
Anqelite
loqo.
Filed 02/28/2008
10 11
"' o N
0)
ferent
~ -
eye papers Business
seen I also w~~~h an ad in these
such and Latina (which
as
nnn
j: 1W W
:J Z
12
1~
Spanish
wife
rinn~
magazines
subscribes rnr Anqel Soft. Further, to) .I have never
such
as Hispanic
my r-."hl t-' '-'.Lica-
Z
-W Inl-> < Z
IlJO:<
U
'4
lR
Spanish Soft
Moments"
in
lanquaqe
nn
Document 32
O~:!WJ ~~<
t-plpvi~inn
~Zf-:JU IIJ .J < C Z
and have TV (including
Angel
I have traveled
never
Soft's "Bathroom
seen
an ad for
Anqel
«",In.J-< .'IIJ Zo
Spanish campaiqn)
thp-
lR
lanquaqe
4.-
.
T,n~
~ 1'1'
~ ~
Tn
addition, San Diego areas and, as far
extensively
as I can
Case 3:07-cv-02391-JAH-POR
lP'
Angeles
~n-F+-
and
determine,
Anqel
lA
has
far as I am concerned, Anqel
absolutely
no followinq
or
Soft
niche
has no
in
the
Latino
trademark or
market. loyalty
20
As
in
21
the tissue of market
Spanish
language
community amonq Latinos.
and
is
wholly
unknown
in
t-hl"'
22
bathroom 5.
Soft
T
.qmnll
2~
As part
was visited corner
~()-Ft-
my investigation
in the st-_nrp~ Southern in T,~t-inn
into
determininq
Calirorni~
whether
T,~t-;nn
Anqel community,
24
well-known several 9R
~~
9:1)'
neiqhborhoods
Mom and and Pop stores. I did not see any
for
example.
p-vinpn("!~ nf"
Anqel
no one seemed to
recoqnize
the
1 ~hAl
-
T
did.
?R ?
however,
is
1
see Angelite
who lest Whittiert patronizes stores in the East Los
in
several
small
stores.
My wife,
also,
a
shopper
2
Montebello
area--areas population. My that have a large Latino
~
wife Soft 4
bathroom 5
I
told
tissue.
me that
she was totally
unfamiliar
with
the
Anqel
declare
under
penalty
the is
of of California that the foreqoinq
perj
under
the
laws
of
Page 30 of 34
6
United
,."
states and correct.
and the
state
true 8 Executed 9 10 this February 27, 2008 at Glendale, California
Filed 02/28/2008
/1
.,1
11
~ 1IiI "'
:l Z
12
Z
-"' (/II-> < Z 111~< U
13
14
15 16 17 18
Case 3:07-cv-02391-JAH-POR
Document 32
19
20
21
22 23 24
25
26 27
2P.
3
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 31 of 34
1
PROOF OF SERVICE I am employed in Los Angeles the age of eighteen years and not My business address is 520 East 91206. On Georgia Martinet County, a party Wilson California; I am over to the within action. Glendale, California to Plaintiff Decls. of
2 3
4
5
this date I served Defendants' Pacific's Motion for Preliminary ti, A. Jimenez, J. Lee
_by personal delivery
Opposition Injunction; below)
R.
6
~
(to
the
address
x 8
9
by placing a true copy thereof envelope with postage thereon fully prepaid, Post Office mail box at Glendale, California,
Stephen Swinton, Esq. Latham & Watkins 12636 High Bluff Drive, San Diego, California Tel. 858-523-5450 858-523-5400 FAX ~
enclosed in a sealed in the united States addressed to:
10
11
12
13
14
suite 400 92130-2071
and via
FAX to
counsel
for
Georgia-Pacific
Consumer
Prod.
(x)
15 16 17
18 19
(x) BY MAIL I sealed and placed such envelope for collection and mailing to be deposited in the mail on the same day in the ordinary course of business at Glendale, California. I am readily familiar with our law firm's practice of collecting and processing correspondence and documents for mailing. They are deposited with the u.s. Postal Service on the same day as dated, in the ordinary course of business. (State) I declare under penalty of perjury the State of California and the united states is true and correct. (Federal are also to be filed via e-rnail. of the state of California under that the the
20
21
lawS--Of foregoing (x)
22 23 24
25
The papers that
I declare under penalty the foregoing is true Executed this
..
of perjury and correct. 27, 2008 at
26 27 28
February
Glendale,
California
91206
1
,..c=::=:::::::=.:,
Case 3:07-cv-02391-JAH-POR
Document 32
Filed 02/28/2008
Page 32 of 34
1
2
3 4
5 6 7 8 9
RONALD MARTINETTI, ESQ. State Bar No.106 898 KAZANJIAN & MARTINETTI 520 East Wilson Avenue Glendale, California 91206 Tel. 818-241-1011 FAX 818-241-2193 E-Mail [email protected]
Attorneys for Lee's General John Lee
Defendants Toys, Inc.,
and
UNITED STATES DISTRICT
COURT OF CALIFORNIA
FOR THE SOUTHERN DISTRICT
10
11
ID O N
Q) ~ Z
12
13
CASE. NO.07 CV 2391 (JAR POR)
GEORGIA-PACIFIC CONSUMER PRODUCTS LP, a Delaware limited partnership, Plaintiff,
-:> Z -"' (j)1-> 111~< Uo(ZOIl
"'
Z
II. u:~0!!10 '" .x .J O",-",.J ~~<
,.II.
14
. 111 .J < C Z
SUPPLEMENTAL DECL. OF JOHN LEE IN OPP TO PLAINTIFF'S MOT. FOR PRELIMINARY INJUNCTION
Date: Judge: Febe 28, Hone Je 2008 Houston
~Z'":>U '" < 0( .J-< .'111 Zo o(N NIn
(j)
15
vs.
LEE'S GENERAL TOYS, INC., corporation, JOHN LEE, an DOES 1-10, a California individual; I ) and) )
16
17
~
~
18 Defendants. 19
20
21 DECLARATION INJUNCTION
I, John I am Lee, a hereby defendant declare: in the present action, along
OF
JOHN LEE IN OPPOSITION TO MOT.
FOR
PRELIMINARY
22 23 24
25
1. General
with
Toys
Lee's
and
Toys, with
Inc.
I
am the
president
of
Lee's
General
26 27
am familiar
the
day
to
day
operations.
28
1
? -
As have no
I
have
stated
under
oath
in
the
past,
D2fp.nn~nt~
1
removed 2 longer
sellinq, importinq,
the or distributing
.
outer Angelite tissue
wrappinqs
from
59,
520 tissue
rolls
and are
3 (pendinq the outcome of this litiqation)
4
1 -
At
pending has
present, Trademark
application
Lee's Office Georqia-Pacific been (their opposition papers. under tissue
of
General for and Plaintiff to any product the sell the
conclusion
Toys Anqelito. has This
has
an application
R
hp-Tnrp-
the opposed an extension
np-Tp-nn~nt-~
Page 33 of 34
6
been
1':1
by Plaintiff second) never not that name until market or any Angelito marketed file
qranted 8 However, 9 Angelito label other products using and we will 10 or any litiqation. 4Lee's to Southern
and
11
have
Filed 02/28/2008
this
10 o N -
j: 1l1I "' :J
12
General California market
ave.
r of
Toys Latino has been the sole Spanish
has
focused
on marketinq
Anqelite
tisspeaking
Z Z j: "'
0) <
13
~~~
,.II. -
Z
sues
14
the In the
and the
U
Document 32
O",-",.J ~~<
market. Latino
lR
fact,
strateqy
focus
Angelite
of tis
my
~Zf-:JU «,"U1 .J-< .'IIJ Zo
marketinq 16 sues
17 example,
I sell toys and other products directly
that
have
been
sold
have
been
sold
to
the
Latino
from
market.
our
For wareoverwhelming
number
~
~
Case 3:07-cv-02391-JAH-POR
18
housp.
th~t
i ~ located in Vernon. whn
The
of (including speaking.
in
19
cllstomp-r~
come to are Anqelite Latino
purchase
items
the Moreover, to c~
lercialoutlets
20
Anqelite 21
h~vp
past,
I
tissues) never sold
and Spanish
tissues
such
~!:;
22
hotels.
23
5. In
distributors.
the
past,
I
Anqelite
hnve ;n-Ft
tissues
led
has
these
also
been
distributors
sold
24
five
through
that we are
2R nn
longer of
sellinq these
Anqelite distributors
tissues almost
and will
not exclusively
re-fill sell
orders. to
swap
2R
rrhrpp
27
mp-p-t-~-
28
They
are
Jorge
Acevas
Contreras,
TBA Mexican
Trade
2
Grn-
1
cery, these swap meets
by
and TCI and these speaking
seen any Angel Soft advertisement
Supply swap meets customers. geared never
their
Co. are largely patronized
Plaintiff
Angel
Soft
has
no presence
at
2
3 4
R
Latinos
6.
I have never
and Spanish to
the
products sold at the Anqel Soft loqo with its background photo of has
in
Southern
a swap a meet.
California
Latino
market
and have
seen
Page 34 of 34
6 7 8 9
7. baby blue sellinq pers.
the
j on it,
Further,
would
not with toys
wrappinq has sta.
be confused pink and bathroom
"Made
in
with Based Latinos
China,"
our upon are careful shopmy experience
oval
shaped
loqo
that
letterinq both
since
backqround. tissue,
Filed 02/28/2008
10
11
(!) o N
0) < Z
~ 1LU "'
:l Z
12
1~
there
8. I had absolutely no intention of infringing on Anqel
can
be no confusion
as to
its
point
of
origin.
Soft's diff'erent
Z
-"' (/II->
LiJ!t<
U
14
~~< (/I . LiJ .J < O Z
trademark since and type, as far around
v~lin declare under penalty of perj ~~lirnrni~ rr~npm~rk whi~h T
my logo and since to which I tell--and Anqel Soft was not sold
was completely
different,
had in sold to. In
Document 32
O~-",.J
i1:~~~~ .J II.
~ZI-:lU "' < < .J-o( .'LiJ Zo
15 16 17
colors market meets
h~n I ~
the at
Latino
as I was able Southern California
was not sold
nhr~inpn
the addition,
in ?001-
swap
I
~
~ ~
Case 3:07-cv-02391-JAH-POR
18
lQ
that united
the States
foregoing and the
is state
true
of
20
21
California.
and correct
under
the
laws
of
the
22
Executed this February
27,
2008
at
Vernon,
California
23 24 25
2f\
27 28
3
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