ets express v. bodum

7/29/2019 ETS Express v. Bodum

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Case 2:13-cv-02084-JVS-JC Document 1 Filed 03/22/13 Page 1 of 26 Page ID #:2


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Parties, Jurisdiction, and Venue

2. Plaintiff ETS Express, Inc. dba The Express Line (hereinafter "ETS

EXPRESS") is a California Corporation having a principal place of business at 420

South Lombard Street, Oxnard, California 93030.

3. Upon information and belief, Defendant BODUM USA INC. (hereinafter

BODUM) is a Delaware Corporation with an address of 603 West 26th Street, Suite

1250, New York, NY 10001 registered with the Secretary of State of the State of

California as a foreign corporation with an agent for service of process within

California.

4. Pursuant to 28 U.S.C. 2201 and 2202, this Court may declare the rights and

other legal relationships of the parties and may order such other relief as may be

necessary. This Court has subject matter jurisdiction of the design patent declaratory

relief claims under 28 U.S.C. 1331 and under 28 U.S.C. 1338, in that, this case

arises under the Patent Laws of the United States, 35 U.S.C. l et seq.

5. This Court also has subject matter jurisdiction of the trade dress declaratory

relief action under 28 U.S.C. 1331 and under 28 U.S.C. 1338, in that, this case also

arises under the Trademark Laws of the United States 15 U.S.C. 1951 et seq.



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6. David E. Bennett, counsel for Defendant BODUM, sent a letter to Plaintiff's

president alleging infringement of Design Patent No. D553,437S ( "the '437 patent")

and of Defendant's alleged BODUM CANTEEN TRADE DRESS as a violation of

Defendant's rights under Lanham Act 43a (15 U.S.C. 1125a). In the penultimate

paragraph of that letter, Mr. Bennett said "If we do not receive a satisfactory

response from you, Bodum will have no choice but to take all appropriate action to

stop such activity." A copy of that letter is attached as Exhibit 1.

7. An actual case and controversy exists between ETS EXPRESS and Defendant

BODUM as a result of Defendant's accusations of patent and trade dress

infringement.

8. Defendant BODUM is subject to the personal jurisdiction of this Court

because BODUM has offered products for sale and/or sold products in the Central

District of California. This court also has personal jurisdiction over Defendant by

virtue of the fact that, upon information and belief, Defendant:

a) operates a website through which Defendant does business in this state (see,

http://www.bodumusa.com/)

b) regularly solicits business and/or derives substantial revenue from goods

used or consumed in this state.

; and/or



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7. Upon information and belief, venue is proper under 28 U.S.C. 1391(b)

because acts giving rise to the claims asserted herein occurred in the Central District

of California.

Facts

8. Plaintiff markets and sells a line of double-wall glassware under the "VISTA"

name. Plaintiff's VISTA glassware is offered and sold to the promotional products

market rather than the general consumer market. Plaintiff's products have a

distinctive frusto-conical shape that is different from the frusto-conical shape of

Defendant's asserted trade dress. Moreover, Plaintiff's VISTA glassware has

distinctively colored handles while the design of the asserted '437 patent lacks

handles altogether.

[Declaratory Judgment, under 28 U.S.C. 2201 and 2202

FIRST CLAIM FOR RELIEF

of Non- Infringement Against Defendant]

9. The preceding paragraphs are incorporated herein by reference.

10. A copy of the '437 patent is attached hereto as Exhibit 2.

11. A picture of the accused VISTA glass is attached hereto as Exhibit 3.

12 As is plainly evident, Plaintiff's VISTA glass does not, in any

way, infringe the design of the BODUM '437 patent.

[Declaratory Judgment under 28 U.S.C. 2201 and 2202

SECOND CLAIM FOR RELIEF



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of Invalidity and Unenforceability of Asserted Trade Dress Against Defendant]

13. The preceding paragraphs are incorporated herein by reference.

14. A picture of a BODUM CANTEEN glass, which, it is presumed, embodies the

BODUM CANTEEN TRADE DRESS, is attached as Exhibit 4.

15. Plaintiff's VISTA glassware does not, in any way infringe any rights that

Defendant BODUM may have in its so-called CANTEEN TRADE DRESS.

16. Defendant BODUM cannot claim any trade dress rights to the frusto-conical

shapes of its CANTEEN glassware or any item in the CANTEEN glassware line.

17. The "double-wall" feature of the claimed trade dress is functional and, as such,

cannot be appropriated by BODUM either under the Patent Laws or the Trade Mark

Laws of the United States.

18. The frusto-conical shape of the BODUM CANTEEN glassware is a common

geometric shape and cannot be appropriated by BODUM under either the Patent

Laws or the Trade Mark Laws of the United States.

PRAYER FOR RELIEF

WHEREFORE PLAINTIFF ETS EXPRESS PRAYS for judgment against

Defendant BODUM as follows:

1. A declaration that ETS EXPRESS has not in any manner infringed, andis not currently infringing, Defendant BODUM's '437 patent;



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EXHIBIT 1



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EXHIBIT 2



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EXHIBIT 3



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EXHIBIT 4



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ets express v. bodum

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