Gillette Company v. Perez Et. Al

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION

THE GILLETTE COMPANY, One Gillette Park, Boston, MA 02127 Plaintiff, vs. GENERIC SHAVERS 16974 Inyo Street La Puente, CA 91744 NATHAN G. PEREZ 16974 Inyo Street La Puente, CA 91744 and UNKNOWN JOHN DOE(S), UNKNOWN JANE DOE(S), Defendants.

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Civil Action No.: 14-cv-419 Unassigned DEMAND FOR JURY TRIAL

COMPLAINT FOR DESIGN PATENT INFRINGEMENT AND CIVIL

COUNTERFEITING

COMES NOW Plaintiff, The Gillette Company, (hereinafter “Gillette”), by and through

its attorneys, and for its complaint against Defendant Generic Shavers, Nathan Perez, as an

individual and d/b/a Generic Shavers and other unknown John Doe and Jane Doe defendants

associated with Generic Shavers (collectively, all of the foregoing sometimes referred to herein

as “Defendants”), alleges that:

NATURE OF THE CASE

1. This action arises from the manufacture, distribution, sale, and/or offer for sale of

razor blades, razor cartridges, shaving blade units, dispensers for razor cartridges, and razor

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containers by Defendants that violate the utility patent and design patent rights of Gillette and the

sale of razor blades, razor cartridges and razor containers that are counterfeit copies of genuine

Gillette products which further violate the trademark and copyright rights of Gillette. The razor

blade products at issue in this case intentionally imitate and/or directly copy the valuable, unique

and distinctive ornamental and non-functional design of and containers for Gillette’s Mach3®,

Fusion® and/or Venus® razor blade cartridges, shaving blade units, dispensers, and shaving

blade containers products, thereby infringing Gillette’s design patent rights in violation of the

Patent Act, 35 U.S.C. § 271 et seq. The Defendants willfully infringe Gillette’s utility patent

rights by manufacturing, using, marketing, selling, offering for sale, and/or importing into the

United States razor blade products that infringe one or more claims of Gillette's utility patent

rights in violation of the Patent Act, 35 U.S.C.§ 271 et seq.

2. In addition to the above, Defendants are selling as “authentic” certain razor blades

and razor containers under counterfeit marks for Gillette® and Venus® in violation of the

Lanham Act, 15 U.S.C. § 1114 et seq.

THE PARTIES

3. The Gillette Company is a corporation licensed in the state of Delaware, with its

principal place of business at One Gillette Park, Boston, Massachusetts, 02127 and is a wholly-

owned subsidiary of The Procter & Gamble Company (hereinafter “P&G”), a corporation

licensed in the state of Ohio. Gillette’s Corporate Disclosure Statement is filed concurrently

with this Complaint, as required by Rule 7.1 of the Federal Rules of Civil Procedure.

4. Upon information and belief, Defendant Nathan Perez owns and operates Generic

Shavers as an unincorporated entity, either as a sole proprietor and/or in conjunction with other

unknown Defendants John Doe(s) and/or Jane Doe(s), with its principal place of business located

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at 16974 Inyo Street, La Puente, CA 91744 and operating a website with an address of

www.genericshavers.com.

5. Upon information and belief, Defendant Nathan Perez is a resident of California

with a last known address at 16974 Inyo Street, La Puente, CA 91744.

6. Upon information and belief, one or more Defendants John Doe(s) and/or Jane

Doe(s) (whose names and addresses are unknown) are individuals who at all times relevant

hereto were owners, employees, agents, and/or representatives of Generic Shavers.

JURISDICTION AND VENUE

7. This Court has subject matter jurisdiction over Gillette’s claims because they arise

under the patent laws of the United States, including, but not limited to, Patent Act 35 U.S.C. §

271, and the trademark laws of the United States, including but not limited to, Lanham Act, 15

U.S.C. § 1114 and 15 U.S.C. § 1125. Subject matter jurisdiction is conferred by 28 U.S.C. §

1331 and 28 U.S.C. § 1338(a).

8. This Court has personal jurisdiction over Defendants Generic Shavers, Nathan

Perez, and the Doe Defendants under Fed. R. Civ. Pro. 4 and under Ohio Rev. Code Ann. §

2307.382 because Defendants Generic Shavers, Nathan Perez and the Doe Defendants upon

information and belief, have committed acts of infringement in Ohio and/or have regularly

solicited business or derived substantial revenue from goods promoted, advertised, sold, used,

and/or consumed in the state of Ohio, and specifically have sold shaving blade units, razor blade

cartridges, and/or dispensers for razor cartridges that infringe Gillette’s intellectual property in

the State of Ohio and have thus purposefully availed themselves of the privilege of doing

business in the state of Ohio.

9. Venue is proper pursuant to 28 U.S.C. § 1391.

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FACTUAL BACKGROUND

OVERVIEW OF PLAINTIFF GILLETTE

10. Gillette is the owner, by virtue of assignment, of the entire right, title and interest

in and to U.S. design patent D422,751(“’751 Patent”), issued on April 11, 2000 and expired on

April 14, 2014, claiming “the ornamental design for a razor blade cartridge.” A copy of the ‘751

Patent is attached hereto as Exhibit A.


in and to U.S. design patent D531,518 S (“’518 Patent), issued on November 7, 2006, claiming

“the ornamental design for a dispenser for razor cartridges.” A copy of the ‘518 Patent is

attached hereto as Exhibit B.


in and to U.S. design patent D533,684 (“’684 Patent”), issued on December 12, 2006, claiming

“the ornamental design for a razor cartridge.” A copy of the ‘684 Patent is attached hereto as

Exhibit C.


in and to U.S. design patent D430,023 (“’023 Patent”), issued on August 29, 2000, claiming “the

ornamental design for a container.” A copy of the ‘023 Patent is attached hereto as Exhibit D.


in and to U.S. design patent D440874 S (“’874 Patent”), issued on April 24, 2001, claiming “the

ornamental design for a container.” A copy of the ‘874 Patent is attached hereto as Exhibit E.

15. Gillette is the owner, by virtue of assignment, of the entire right, title, and interest

in and to U.S. Patent No. 5,813,293 (“‘293 Patent”), issued on September 29, 1998, entitled

“Shaving System and Method.” A copy of the ‘293 Patent is attached hereto as Exhibit F.

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16. Gillette has expended a great deal of time and money seeking federal protection

of its intellectual property including, but not limited to, its unique, nonfunctional and distinctive

product designs.

17. Gillette is in the business of, among other things, developing, designing,

advertising and marketing personal care/grooming products for men and women. These personal

care/grooming products include a variety of shaving products for men. Gillette, as part of the

P&G family, is the global market leader in razors, shaving, and razor blade and shaving

products.

18. For men, among other things, Gillette offers proprietary razors, razor blade

cartridges, shaving blade units, razor blade dispensers, and refill razor blades under the Mach3®

brand (including the Mach3®, Mach3® Turbo and Mach3® Sensitive brands) and Fusion®

brand (including Fusion®, Fusion® Power and Fusion® ProGlideTM brands).

19. For women, among other things, Gillette offers proprietary razors, razor

cartridges, razor blade containers, and refill razor blades under the Venus® brand.

20. The Mach3® line of razor blade cartridges feature a unique, distinctive, non-

functional design that embodies the design of the ‘751 Patent.

21. Gillette has established tremendous goodwill and proprietary design rights in the

design of the Mach3® line of razor blade cartridges.

22. The Mach3® line of razor blade cartridges embodies at least one of the claims of

the ‘293 Patent.

23. The Fusion® line of dispensers for razor cartridges are sold housed in a dispenser

that features a unique, distinctive, non-functional design that embodies the design of the ‘518

Patent.

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24. The Fusion® line of razor cartridges feature a unique, distinctive, non-functional

design that embodies the design of the ‘684 Patent.


design of the Fusion® line of razor cartridges and dispensers for razor cartridges.

26. Certain of the Venus® line of shaving blade containers are sold housed in a

container that features a unique, distinctive, non-functional design that embodies the design of

the ‘023 Patent.

27. Certain of the Venus® line of razor cartridges are sold housed in a container that

features a unique, distinctive, non-functional design that embodies the design of the ‘874 Patent.


design of the Venus® line of razor blade containers.

29. Gillette is also the owner of several federal registrations relating to its distinctive

and famous family of Gillette® Marks for a variety of goods.

30. Gillette is the owner of the entire right, title, and interest in and to U.S.

Registration No. 0767,865 for GILLETTE, registered April 7, 1964, for “safety razors and safety

razor blades” in Class 8. This registration is valid, subsisting and incontestable. Gillette is also

the owner of U.S. Registration No. 1,037,776 for GILLETTE, registered April 13, 1976, for

“shave cream, aftershave lotion, and antiperspirant” in Class 3. This registration is valid,

subsisting and incontestable. These registrations are hereinafter collectively referred to as the

“Gillette® Marks.”

31. Gillette is the owner of several federal registrations relating to its distinctive and

famous family of Venus® Marks for a variety of goods.

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32. Gillette is the owner of all right, title, and interest in U.S. Registration No.

2,488,308 for VENUS, registered September 11, 2001, for “razor and razor blades; dispensers;

cassettes; holders and cartridges all containing blades; and structural parts therefor” in Class 8.

This registration is valid, subsisting and incontestable. Gillette is also the owner of all right, title,

and interest in U.S. Registration No. 2,593,030 for VENUS (stylized), registered July 9, 2002,

for “razors and razor blades; dispensers, cassettes, holders and cartridges all containing blades;

and structural parts therefor” in Class 8. This registration is valid, subsisting and incontestable.

These registrations are hereinafter collectively referred to as the “Venus® Marks.”

33. Gillette has engaged in open, notorious, and extensive widespread promotion and

advertising of its Gillette® Marks and Venus® Marks for a variety of goods including razor

blades, razor cartridges and razor dispensers.

34. Gillette has expended substantial amounts of time, money and effort in

advertising and promoting its Gillette® Marks and Venus® Marks over many years, and in

establishing and preserving the goodwill associated therewith, and the goodwill associated with

the Gillette® Marks and Venus® Marks are valuable assets to Gillette.

OVERVIEW OF DEFENDANTS GENERIC SHAVERS, NATHAN PEREZ AND DOE DEFENDANTS

35. Upon information and belief, Defendant Generic Shavers is an unincorporated

entity operated either as a sole proprietorship by Mr. Nathan Perez and/or in conjunction with

various unknown John Doe(s) and Jane Doe(s) Defendants.

36. Upon information and belief, Mr. Perez has registered the domain names for the

website www.genericshavers.com (hereinafter the “Generic Shavers Website”).

37. Upon information and belief, Mr. Perez, in conjunction with various unknown

John Doe(s) and Jane Doe(s) manages, operates and controls the Generic Shavers Website,

http://www.genericshavers.com/�

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through which consumers purchase razor blade cartridges, shaving blade units, and dispensers

for razor cartridges that infringe upon Gillette’s intellectual property rights.

38. Upon information and belief, Generic Shavers, Mr. Perez and the Doe Defendants

(collectively, the “Generic Shavers Entities”) offer for sale, via the Generic Shavers Website, a

variety of products, including razor blade cartridges, shaving blade units, and dispensers for

razor cartridges that it claims are “compatible” with Gillette Fusion® razor blades and Gillette

Mach3® razors. See http://www.genericshavers.com.

39. Upon information and belief, the Generic Shavers Entities offer for sale, via the

Generic Shavers Website, products including razor blades cartridges and dispensers for razor

cartridges that it claims are “authentic” Gillette® Venus® razor blades and razor containers. See

http://www.genericshavers.com.

40. Upon information and belief, products purchased from the Generic Shavers

Website ship from Generic Shavers and Mr. Perez’s address in California.

41. Upon information and belief, the Generic Shavers Entities base a substantial

component of the Generic Shavers Entities’ business on direct copies and near exact imitations

of Gillette’s products that embody the designs of the ‘751 Patent, the ‘518 Patent, the ‘684

Patent, the ‘023 Patent, the ‘874 Patent and at least one of the claims of the ‘293 Patent.

42. In the fall of 2013, Gillette became aware that Mr. Perez was selling Gillette®

Venus® and Gillette® Fusion® products through the website Amazon.com. Mr. Perez claimed

these products were “authentic” or genuine Gillette products and/or Gillette “compatible”

products. Mr. Perez sold these products under the username “n8perez” on the Amazon.com

website.



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43. Gillette purchased a sample of the Gillette® Venus® product sold by Mr. Perez

under the username “n8perez” through the Amazon.com website. Gillette conducted subsequent

testing of the received product and confirmed that the product was, in fact, counterfeit.

44. On December 2, 2013, Gillette sent a letter via certified mail to Mr. Perez at the

listed address of 16974 Inyo Street, La Puente, CA 91744 notifying the Mr. Perez of the

infringement of Gillette’s intellectual property, patent and civil counterfeiting claims on Mr.

Perez’s Amazon store listing.

45. While the “n8perez” Amazon.com store listing was eventually removed through

Amazon, at a date unknown to Gillette, to date Gillette has received no response to its letter from

Mr. Perez.

46. Gillette subsequently determined Mr. Perez and the Generic Shavers Entities were

involved with the sale of razor blade cartridges and razor blade dispensers on the Generic

Shavers Website that infringe upon Gillette’s design and utility patents. These infringing items

currently remain available for sale.

47. Gillette therefore files this Complaint seeking injunctive relief and damages from

the Generic Shavers Entities, individually and collectively for joint and several liability, for the

Generic Shavers Entities’ willful infringement of Gillette’s intellectual property and design

patent rights and the willful counterfeiting of Gillette’s intellectual property.

COUNT ONE – DIRECT INFRINGEMENT OF THE ‘751 PATENT BY THE GENERIC SHAVERS ENTITIES

48. Gillette restates and realleges paragraphs 1-47.

49. Gillette is the owner of the ‘751 Patent, which issued on April 11, 2000 and

expired on April 14, 2014. The ‘751 Patent was valid and enforceable at the time of the

infringement by the Generic Shavers Entities.

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50. Upon information and belief, the Generic Shavers Entities, either alone or in

concert with each other, have infringed the ‘751 Patent by making, designing, selling, and/or

offering for sale razor blade cartridges that apply the design of the ‘751 Patent or colorable

imitation thereof, in violation of 35 U.S.C. § 271(a).

51. An ordinary observer, given such attention as a purchaser usually gives, would be

so deceived by the substantial similarity between the design of the razor blade cartridges made,

designed, sold, and/or offered for sale by the Generic Shavers Entities and the patented design in

the ‘751 Patent so as to be induced to purchase the razor blade cartridges through the Generic

Shavers Website believing the razor blade cartridges sold by the Generic Shavers Entities to be

substantially the same as the designs embodied by and protected under the ‘751 patent.

52. The Generic Shavers Entities, either alone or in concert with each other, have also

profited from and Gillette has suffered pecuniary damage in amounts to be determined at trial as

a result of the Generic Shavers Entities’ willful infringement of Gillette’s ‘751 Patent, pursuant

to 35 U.S.C. §§ 284 and 289.

COUNT TWO – DIRECT INFRINGEMENT OF THE ‘518BY THE GENERIC SHAVERS ENTITIES

PATENT


54. Gillette is the owner of the ‘518 Patent, which is valid and enforceable.


concert with each other, have infringed, and continue to infringe, the ‘518 Patent by making,

designing, selling, and/or offering for sale dispensers for razor cartridges that apply the design of

the ‘518 Patent or colorable imitation thereof, in violation of 35 U.S.C. § 271(a).


so deceived by the substantial similarity between the design of the razor cartridge dispensers

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made, designed, sold, and/or offered for sale by the Generic Shavers Entities and the patented

design in the ‘518 Patent so as to be induced to purchase the razor cartridge dispensers, either

through the Generic Shavers Website believing the razor cartridge dispensers to be substantially

the same as the design embodied by and protected under the ‘518 Patent.

57. The Generic Shavers Entities’ deliberate and willful actions in infringing the

design of Gillette’s ‘518 Patent, either alone or in concert with each other, have caused and will

continue to cause irreparable harm to Gillette unless preliminarily and permanently enjoined

pursuant to 35 U.S.C. § 283.



a result of the Generic Shavers Entities’ willful infringement of Gillette’s ‘518 Patent pursuant to

35 U.S.C. §§ 284 and 289.

COUNT THREE – DIRECT INFRINGEMENT OF THE ‘684 PATENT BY THE GENERIC SHAVERS ENTITIES





designing, selling, and/or offering for sale razor blade cartridges that apply the design of the ‘684

Patent or colorable imitation thereof, in violation of 35 U.S.C. § 271(a).


so deceived by the substantial similarity between the design of the razor blade cartridges made,


the ‘684 Patent so as to be induced to purchase the razor blade cartridges through the Generic

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Shavers Website believing the razor blade cartridges sold by the Generic Shavers Entities to be

substantially the same as the designs embodied by and protected under the ‘684 patent.

63. The Generic Shavers Entities’ deliberate and willful actions in infringing the

design of Gillette’s ‘684 Patent, either alone or in concert with each other, have caused and will






to 35 U.S.C. §§ 284 and 289.

COUNT FOUR – DIRECT INFRINGEMENT OF THE ‘023 PATENT BY THE GENERIC SHAVERS ENTITIES





designing, selling, and/or offering for sale razor containers that apply the design of the ‘023



so deceived by the substantial similarity between the design of the razor containers made,


the ‘023 Patent so as to be induced to purchase the razor containers through the Generic Shavers

Website believing the razor containers sold by the Generic Shavers Entities to be substantially

the same as the designs embodied by and protected under the ‘023 patent.

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69. Defendants’ deliberate and willful actions in infringing the design of Gillette’s

‘023 Patent, either alone or in concert with each other, have caused and will continue to cause

irreparable harm to Gillette unless preliminarily and permanently enjoined pursuant to 35 U.S.C.

§ 283.




to 35 U.S.C. §§ 284 and 289.

COUNT FIVE – DIRECT INFRINGEMENT OF THE ‘874 PATENT BY THE GENERIC SHAVERS ENTITIES





designing, selling, and/or offering for sale razor containers that apply the design of the ‘874



so deceived by the substantial similarity between the design of the razor containers made,


the ‘874 Patent so as to be induced to purchase the razor containers through the Generic Shavers

Website believing the razor containers sold by the Generic Shavers Entities to be substantially

the same as the designs embodied by and protected under the ‘874 patent.

75. Defendants’ deliberate and willful actions in infringing the design of Gillette’s

‘874 Patent, either alone or in concert with each other, have caused and will continue to cause

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irreparable harm to Gillette unless preliminarily and permanently enjoined pursuant to 35 U.S.C.

§ 283.




to 35 U.S.C. §§ 284 and 289.

COUNT SIX – WILLFUL INFRINGEMENT OF THE ‘293 PATENT BY THE GENERIC SHAVERS ENTITIES



79. Gillette has complied with the marking requirements of 35 U.S.C. § 287.

80. On information and belief, the Generic Shavers Entities are infringing at least one

of the claims of the ‘293 Patent in violation of 35 U.S.C. § 271(a) by making, using, selling,

offering for sale and/or importing in to the United States, without license or authority, the

infringing product.

81. On information and belief, the Generic Shavers Entities’ infringement of the ‘293

Patent has taken place with the knowledge of the ‘293 Patent and this infringement has been

willful, deliberate, and intentional.

82. As a result of the Generic Shavers Entities’ infringing activities, Gillette has been

and will continue to be damaged and irreparably harmed unless and until such infringing

activities are enjoined by this Court.



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to 35 U.S.C. § 284.

COUNT SEVEN –CIVIL COUNTERFEITING


85. Gillette is the exclusive owner of the Gillette® Marks and the Venus® Marks,

which have been used continuously for many years, and are currently being used by Gillette in

commerce in the United States. The razor products sold by the Generic Shavers Entities are

falsely presented as genuine Gillette® Venus® products, when in fact these goods are counterfeit

copies and bear counterfeit imitations of the Gillette® and Venus® products.

86. Upon information and belief, the Generic Shavers Entities, either individually or

in concert with each other, used and are currently using counterfeit Gillette® Marks and Venus®

Marks in commerce in connection with the sale and advertising of counterfeit razor blades, razor

cartridges, and razor containers in violation of 15 U.S.C. § 1114.


in concert with each other, used and are currently using counterfeit trademarks and product

packaging that were and are identical to, indistinguishable from, or confusingly similar with the

Gillette® Marks and the Venus® Marks and this use is likely to cause confusion, or to cause

mistake, or to deceive under 15 U.S.C. § 1114.


in concert with each other, are selling counterfeit copies of razor blade products falsely identified

as genuine Gillette® Venus® products and bearing counterfeit imitations of the Gillette® and

Venus® Marks, and are illegally copying the trade dress and other proprietary elements of

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genuine Gillette® Venus® products where such use is likely to cause confusion, to cause

mistake or to deceive under 15 U.S.C. § 1114.

89. All use of the Gillette® Marks and the Venus® Marks by the Generic Shavers

Entities were without the authorization, approval, or license by Gillette.

90. Upon information and belief, the Generic Shavers Entities intentionally copied,

used and promoted counterfeit the Gillette® Venus® products bearing counterfeit Gillette®

Marks and Venus® Marks with the knowledge that such the marks are counterfeit marks in

connection with the sale or offering for sale of razor blades, razor cartridges, and razor

containers.

91. The Generic Shavers Entities’ deliberate and willful actions in selling or offering

for sale counterfeit goods, either alone or in concert with each other, have caused and will





a result of the Generic Shavers Entities’ willful and intentional counterfeiting of Gillette’s

intellectual property and trademarks pursuant to 15 U.S.C § 1117.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Gillette respectfully requests that the Court enter judgment:

A. In favor of Gillette and against the defendants on all claims;

B. Preliminarily and permanently enjoin and restrain Defendant Generic Shavers,

Defendant Nathan Perez and unknown John Doe(s) and Jane Doe(s) defendants and their

respective officers, agents, employees, parents, subsidiaries, representatives, and all persons in

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active concert or participation with them against continued infringement of the ‘518 Patent, the

‘684 Patent, the ‘023 Patent, the ‘874 Patent, and the ‘293 Patent (35 U.S.C. § 283);

C. Preliminarily and permanently enjoin and restrain Defendant Generic Shavers,

Defendant Nathan Perez and unknown John Doe(s) and Jane Doe(s) defendants and their

respective officers, agents, employees, parents, subsidiaries, representatives, and all persons in

active concert or participation with them against continued counterfeiting of the Gillette® Marks

and the Venus® Marks (15 U.S.C. §§ 1116).

D. Order an accounting for Gillette’s damages and/or for Defendants’ profits derived

from and/or related to Defendants’ infringement of the ‘751 Patent, the ‘518 Patent, the ‘684

Patent, the ‘023 Patent, the ‘874 Patent and the ‘293 Patent (35 U.S.C. §§ 284 and 289

(excluding the ‘293 Patent)) and Defendants’ counterfeiting of Gillette’s intellectual property (15

U.S.C. § 1117);

E. Order an assessment of interest and costs against defendants (35 U.S.C. § 283, 15

U.S.C. § 1117);

F. Find this to be an exceptional case and to award reasonable attorneys’ fees to

Gillette (35 U.S.C. § 285 and 15 U.S.C. § 1117);

G. To treble the damages awarded to Gillette by reason of Defendants’ willful

infringement;

H. In the alternative to an award of actual damages for Defendants’ willful

counterfeit activities, award Gillette statutory damages of $2,000,000 for each Gillette® Mark

and each Venus® Mark counterfeited by Defendants, pursuant to 15 U.S.C. § 1117(c); and

I. Award Gillette such other relief as the Court may deem just and proper.

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JURY DEMAND

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Gillette demands a trial by jury

for all claims so triable.

Respectfully submitted,

/s/ Tammy L. Imhoff____________ Karen K. Gaunt (#0068418)

Tammy L. Imhoff (#0076720) DINSMORE & SHOHL, LLP 255 E. Fifth Street, Suite 1900 Cincinnati, OH 45202

Phone: (513) 977-8200 Fax: (513) 977-8141 Email: [email protected] [email protected]

Counsel for Plaintiff The Gillette Company

2958896

mailto:[email protected]�

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Gillette Company v. Perez Et. Al