big time toys v. buzz bee toys - socker hopper trademark complaint

8/10/2019 Big Time Toys v. Buzz Bee Toys - SOCKER HOPPER Trademark Complaint

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IN THE UNITED STATES DISTRICT COURTFOR THE MIDDLE DISTRICT OF TENNESSEE

NASHVILLE DIVISION

Big Time Toys, LLC, and Sam )Harwell, )) JURY DEMAND

Plaintiff, ))

v. ) Case No. 3:14-cv-1350)

Buzz Bee Toys, Inc.; Buzz Bee Toys ) Judge Campbell(HK) Co., Ltd.; Jeffrey C. ) Magistrate-Judge BryantZimmerman; and Target Corp., )

)Defendants. )

FIRST AMENDED COMPLAINT

In support of the relief sought herein, the Plaintiffs, Big Time Toys, LLC (Big

Time), and Sam Harwell, hereby allege as follows:

PARTIES

1. Big Time is a Tennessee limited-liability company with its principal place

of business at 2823 Dogwood Place, Nashville, Tennessee. Big Times membership

consists of Tennessee citizens.

2. Big Time manufactures, markets and sells its own branded toys

worldwide. Its best-known toys include MOONSHOES, SEA-MONKEYS,

YOYOBALL, and, germane to this lawsuit, SOCKER BOPPER inflatable boxing

pillows, among many others. It sells its products domestically through a number of

nationally-famous retailers, such as Wal-Mart, Walgreens, Toys R Us and, germane to

this lawsuit, formerly Target Corp. (Target).

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3. Sam Harwell is the President and CEO of Big Time. He has his principal

permanent residence in Nashville, Tennessee.

4. Buzz Bee Toys, Inc. (Buzz Bee), is a New Jersey corporation. On

information and belief, it has its principal place of business at 309 Fellowship Road,

Suite 105, Mt. Laurel, New Jersey 08054.

5. Buzz Bee is a toy company, best known for toys that closely emulate well-

known toys, such as its Air Warriors line, which is similar to Hasbros Nerf Blasters line,

and Water Warriors line, which is similar to Hasbros Super Soaker line.

6. According to the searchable online database of the Division of Business

Services of the Tennessee Secretary of State, Buzz Bee has no registered agent for the

service of process in Tennessee. Therefore, it may be served via the Tennessee Secretary

of State, pursuant to Tennessees Long Arm Statute, T.C.A. 20-2-214 & -215.

7. Buzz Bee Toys (HK) Co., Ltd. (Buzz Bee HK) is, on information and

belief, a corporation organized under the laws of the Peoples Republic of China, with its

principal place of business at 1803-04 Railway Plaza, 39 Chatham Rd. (S), Tsim Sha

Tsui, Hong Kong, Peoples Republic of China.

8. Jeffrey C. Zimmerman is President of Buzz Bee. On information and belief,

he resides in New Jersey.

9. Target is, on information and belief, a Minnesota corporation with its

principal place of business at 1000 Nicollet Mall, Minneapolis, MN 55403-2542. On

information and belief, Target maintains a registered agent for the service of process at

CT Corporation System, 800 S. Gay St., Ste. 2021, Knoxville, TN 37929-9710.

JURISDICTION AND VENUE

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10. This Court has subject-matter jurisdiction over this action under 28 U.S.C.

1331 and 1338 because it arises under the Lanham Act, 15 U.S.C. 1051, et seq . This

court has jurisdiction over the additional claims under 28 U.S.C. 1332 because Big

Time and Mr. Harwell are citizens of Tennessee and Buzz Bee and Mr. Zimmerman are

citizens of New Jersey, Buzz Bee HK is a citizen of the Peoples Republic of China and

Target is a citizen of Minnesota, and the amount in controversy exceeds $75,000. This

Court further has supplemental jurisdiction over such additional claims under 28 U.S.C.

1367.

11. This Court has personal jurisdiction over Buzz Bee because tortious acts

that are the subject of this action were committed in Tennessee. In particular, as

detailed below, Buzz Bee, through itself and/or through its closely-related sister

company, Buzz Bee HK, has sold and continues to sell the infringing goods to Target,

with the knowledge that Target has several stores in Tennessee and in this District, and

with the expectation that Target will sell the infringing goods in Tennessee and in this

District.

12. This Court has personal jurisdiction over Buzz Bee HK because tortious

acts that are the subject of this action were committed in Tennessee. In particular, as

detailed below, Buzz Bee HK has sold and continues to sell the infringing goods to

Target, with the knowledge that Target has several stores in Tennessee and in this

District, and with the expectation that Target will sell the infringing goods in Tennessee

and in this District.

13. This Court has personal jurisdiction over Mr. Zimmerman because

tortious acts that are the subject of this action were committed in Tennessee. In

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particular, as detailed below, Mr. Zimmerman oversees the design, manufacture and

sales of all Buzz Bee toys, including the sale of the infringing toys through Target retail

stores in Tennessee and in this District.

14. This Court has personal jurisdiction over Target because tortious acts that

are the subject of this action were committed in Tennessee. In particular, Target has

sold and continues to sell the infringing goods through its retail stores located in

Tennessee and in this District.

15. Venue is proper in this District pursuant to 28 U.S.C. 1391 because Buzz

Bee, Buzz Bee HK, Mr. Zimmerman and Target have committed tortious acts subject to

this action in this District.

GENERAL ALLEGATIONS

16. Big Time is in the business of manufacturing, marketing and selling toys.

One of its leading products is SOCKER BOPPER inflatable boxing pillows. When

inflated, SOCKER BOPPER inflatable boxing pillows have a squat cylinder shape,

about ten inches in diameter, with a hollow in the middle of one side into which a childs

hand may be securely inserted. The other side prominently bears the SOCKER

BOPPER logo.

17. Children with SOCKER BOPPER inflatable boxing pillows secured to

each hand may safely hit each other with the toys. The toy is intended for children five

and older.

18. The mark SOCKER BOPPER (the Mark) is registered on the Principal

Register of the United States Patent and Trademark Office (USPTO), bearing

registration no. 2931334 (the Registration), with an application filing date of February

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26, 2003, and a registration date of March 8, 2005, for use in connection with boxing

gloves, punching bags, inflatable bop bags, inflatable speed bags, stuffed punching balls,

paddle balls, inflatable punch balls, balloons, electronic arcade punching games, and

inflatable toys in the nature of hand covers (the Goods).

19. Mr. Harwell is the current owner of the Mark, Socker Bopper Trade Dress

(defined below), the Classic Socker Bopper Combined Logo (defined below) and Classic

Socker Bopper Packaging (defined below) (collectively, the Indicia). He is also the

current registrant of the Registration.

20. Big Time is the exclusive licensee of the Indicia from Mr. Harwell,

pursuant to a written instrument, a true and correct copy of which is attached hereto as

Exhibit A. Big Time originally developed the Indicia and was the original owner of the

Indicia (and associated goodwill) and was the original registrant of the Registration.

21. In 2012, Big Time assigned the Indicia (and associated goodwill) and

Registration to Mr. Harwell, and Mr. Harwell granted an exclusive license back to Big

Time in connection with Indicia (and associated goodwill) and Registration. This

transaction was memorialized in a written instrument (and amendment), a true and

correct copy of which is attached hereto as Exhibit A.

22. The Mark has been used in commerce for at least five consecutive years

since its U.S. registration in connection with the Goods. A Declaration of Use and

Incontestability Under Sections 8 and 15 in connection with the Registration and

meeting the requirements of 15 U.S.C. 1065 was properly submitted to the USPTO on

March 1, 2011, and was accepted and acknowledged by the USPTO on April 5, 2011. As a

result, the Mark is incontestable, and the Marks registration is conclusive evidence of

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(the Classic Socker Bopper Combined Logo). Although Big Time has recently

introduced a new combined logo, the Classic Socker Bopper Combined Logo is still used

in connection with sales of SOCKER BOPPER inflatable boxing pillows in the U.S. and

is still very much in evidence on the internet, on Big Time's website and in the stream of

commerce. The Plaintiffs have no intention of abandoning the Classic Socker Bopper

Combined Logo.

28. The SOCKER BOPPER toy is packaged in colored cardboard boxes that

feature two children wearing the SOCKER BOPPER inflatable boxing pillows. Since

1996, the front of the packaging has the image of the children taking up about the lower

two-thirds of the box and, just above their heads, the Combined Logo, all set against a

background color that contrasts with both colors of the Combined Logo (the Classic

Socker Bopper Packaging). Although Big Time has recently introduced a new package

design for the SOCKER BOPPER toys, the Classic Socker Bopper Packaging is still

used in connection with sales in the U.S. of SOCKER BOPPER inflatable pillows and is

still very much in evidence on the internet, on Big Time's website and in the stream of

commerce. The Plaintiffs have no intention of abandoning the Classic Socker Bopper

Packaging.

29. Attached hereto as Exhibit B is a true and correct image of the SOCKER

BOPPER toys and packaging, clearly showing the Socker Bopper Trade Dress, the

Classic Socker Bopper Combined Logo and the Classic Socker Bopper Packaging.

30. Recently, Buzz Bee and Buzz Bee HK have been manufacturing, marketing

and selling their own line of inflatable boxing pillows under the name Sockn Bop. On

information and belief, Buzz Bees and Buzz Bee HKs use of Sockn Bop and related

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design elements in connection with inflatable boxing pillows commenced no earlier than

2012.

31. The Buzz Bee inflatable boxing pillows have the name Sockn Bop

positioned on the face of the toy, in an amusing, off-kilter font. It is placed in front of a

stylized explosion, which is in a color that contrasts with that of the brand letters (the

Sockn Bop Logo).

32. The Buzz Bee inflatable boxing pillows are also a squat cylinder shape with

a slightly concave face that bears Buzz Bees Sockn Bop Logo in the center in a color that

contrasts with that of the face and side (the Sockn Bop Product Design).

33. The Buzz Bee inflatable boxing pillows are sold in colorful cardboard

boxes. On the front of the box are two children wearing the Buzz Bee inflatable boxing

pillows, which takes up roughly the bottom two-thirds of the box front, with the Sockn

Bop Logo prominently displayed; just above the childrens heads is the larger instance of

the Sockn Bop Logo; the background color of the box front contrasts with both colors of

the Sockn Bop Logo (the Buzz Bee Package Design).

34. Attached hereto as Exhibit C is a true and correct copy of an image that

accurately displays the Sockn Bop products and packaging, with Sockn Bop Logo,

Sockn Bop Product Design and Buzz Bee Package Design evident.

35. Big Time sells SOCKER BOPPER inflatable boxing pillows through

major retail channels, such as WalMart and Toys R Us, and through major internet

retailers, such as amazon.com.

36. On information and belief, Buzz Bee and Buzz Bee HK sell their Sockn

Bop inflatable boxing pillows through these same trade channels.

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37. Until recently, one of Big Times largest customers for its SOCKER

BOPPER inflatable boxing pillows had been Target. From October 2011 to March

2013, Big Time had sold approximately $1.1 million worth of SOCKER BOPPER

inflatable boxing pillows to Target.

38. Recently, however, Target has begun purchasing, promoting and selling

Buzz Bees Sockn Bop inflatable boxing pillows instead of SOCKER BOPPER

inflatable boxing pillows. On information and belief, Target places the Sockn Bop

products in the same place it previously placed the SOCKER BOPPER product; thus,

consumers who were accustomed to seeing SOCKER BOPPER in Targets aisles now

see Buzz Bees Sockn Bop toys in their place.

39. Target has about 1800 retail stores in the United States, about 30 in

Tennessee and about twelve in this District. Target has promoted, offered to sell and

sold Sockn Bop products in Tennessee and in this District.

40. Mr. Zimmerman is Buzz Bees president. His duties for Buzz Bee include,

among other duties, directly overseeing the design, manufacture, packaging, and sales of

all of Buzz Bees toy products.

41. Mr. Zimmerman oversaw the design, manufacture and sale of the Sockn

Bop toys, and directed Buzz Bee to design, manufacture, packaging, and distribute the

Sockn Bop toys throughout the United States through Target retailers, including

Target retailers in Tennessee and in this District.

42. On information and belief, Buzz Bee and Mr. Zimmerman knew of the

Indicia when they chose to use Sockn Bop, the Sockn Bop Product Design, the Sockn

Bop Combined Logo and the Buzz Bee Package Design to promote their competing

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49. Unless the Defendants are enjoined from using Sock'n Bop, the Sockn

Bop Logo, the Buzz Bee Package Design, and the Sockn Bop Product Design, Big Time

will suffer irreparable injury to its reputation and goodwill, which cannot be adequately

compensated monetarily.

COUNT I: FEDERAL INFRINGEMENT OF A REGISTERED TRADEMARK

50. The Plaintiffs repeat and incorporate by reference the allegations of

paragraphs 1 through 49 as though fully set forth herein.

51. The mark SOCKER BOPPER is registered on the Principal Register of

the United States Patent and Trademark Office, bearing registration no. 2931334, with

an application filing date of February 26, 2003, and a registration date of March 8,

2005, for use in connection with boxing gloves, punching bags, inflatable bop bags,

inflatable speed bags, stuffed punching balls, paddle balls, inflatable punch balls,

balloons, electronic arcade punching games, and inflatable toys in the nature of hand

covers (the Goods).

52. Mr. Harwell is the owner of the federally registered Mark for us in

connection with, among other things, inflatable boxing pillows.

53. Mr. Harwell is, through assignment of the Mark and Registration from Big

Time, the senior use of the Mark in interstate commerce.

54. The Defendants use of Sockn Bop in interstate commerce in connection

with inflatable boxing pillows will likely result in confusion as to source or affiliation, in

violation of 15 U.S.C. 1114(1).

55. The Defendants activities will be likely to cause confusion of the public to

Mr. Harwells detriment.

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56. As a result of the Defendants use of Sock'n Bop and the Sock'n Bop

Logo, Mr. Harwell has suffered damages in an amount to be determined at trial.

COUNT II: FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION

OF ORIGIN



58. The Mark has been in continuous use since at least 1996 in connection

with inflatable boxing pillows.

59. The Classic Socker Bopper Combined Logo has been in use since 1996,

and, although Big Time has recently introduced a new combined logo, the Classic Socker

Bopper Combined Logo is still used in connection with sales in the U.S. of SOCKER

BOPPER inflatable boxing pillows and is still very much in evidence on the internet,

on Big Time's website and in the stream of commerce. Big Time does not intend to

abandon the Classic Socker Bopper Combined Logo.

60. Mr. Harwell is the owner of the Mark and Classic Socker Bopper

Combined Logo in connection with, among other things, inflatable boxing pillows.

61. As the exclusive licensee of the Mark in connection with the Goods, Big

Time has exclusive rights in the Mark in connection with, among other things, inflatable

boxing pillows.

62. As the exclusive licensee of the Classic Socker Bopper Combined Logo, Big

Time has exclusive rights in the Mark in connection with, among other things, inflatable

boxing pillows.

63. As shown in Exhibit C attached hereto, Buzz Bee, Buzz Bee HK and Target

are selling inflatable boxing pillows under the name Sockn Bop, using the Sockn Bop

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Combined Logo. On information and belief, these sales commenced no earlier than

2012.

64. Mr. Zimmerman oversaw the design, manufacture, packaging distribution

and sale of the Sockn Bop toys and directed Buzz Bee to cause the design,

manufacture and sale of the Sockn Bop toys.

65. The Defendants use of Sock'n Bop in connection with inflatable boxing

pillows will likely result in confusion, mistake or to deceive as to the affiliation of the

Defendants with the Plaintiffs, or as to the origin, sponsorship, or approval of Buzz Bees

Sock'n Bop inflatable boxing pillows.

66. The Defendants use of the Sock'n Bop Logo in connection with inflatable

boxing pillows will likely result in confusion, mistake or to deceive as to the affiliation of

Buzz Bee Toys with the Plaintiffs, or as to the origin, sponsorship, or approval of the

Defendants Sock'n Bop inflatable boxing pillows.

67. These uses of Sock'n Bop and the Sock'n Bop Logo constitute false

representation, false description and false designation of origin of Buzz Bees inflatable

boxing pillows in violation of 15 U.S.C. 1125(a).

68. As a result of the Defendants use of Sock'n Bop and the Sock'n Bop

Logo, the Plaintiffs have suffered damages in an amount to be determined at trial.

COUNT III: FEDERAL TRADE-DRESS INFRINGEMENT



70. An accurate depiction of the Socker Bopper Trade Dress and Classic

Socker Bopper Packaging is attached hereto as Exhibit B.

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77. Although Big Time has introduced a new trade dress for the packaging of

its SOCCER BOPPER toys, the Classic Socker Bopper Packaging is still used in

connection with sales in the U.S. of SOCKER BOPPER inflatable boxing pillows and is

still very much in evidence on the internet, on Big Time's website and in the stream of

commerce. Big Time has no intention of abandoning the Classic Socker Bopper

Packaging.

78. Through the Plaintiffs extensive use of the Socker Bopper Trade Dress and

the Classic Socker Bopper Packaging in connection with its SOCKER BOPPER

inflatable boxing pillows, consumers have come to identify the Socker Bopper Trade

Dress and the Classic Socker Bopper Packaging with Big Time and its SOCKER

BOPPER inflatable boxing pillows. The Classic Socker Bopper Packaging has thus

acquired secondary meaning in the marketplace.

79. Mr. Harwell is the owner of the Socker Bopper Trade Dress and Classic

Socker Bopper Packaging in connection with, among other things, inflatable boxing

pillows.

80. Big Time is the exclusive licensee of the Socker Bopper Trade Dress and

the Classic Socker Bopper Packaging. The Socker Bopper Trade Dress and the Classic

Socker Bopper Packaging were originally developed and owned by Big Time, which in

2012 assigned it to Mr. Harwell and received from Mr. Harwell an exclusive license to

use the Classic Socker Bopper Packaging.

81. As shown in Exhibit C attached hereto, the Defendants are selling a line of

inflatable boxing pillows using the Sockn Bop Product Design and Buzz Bee Package

Design. On information and belief, these uses commenced no earlier than 2012.

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boxing pillows constitutes a false passing off goods as those of another in violation of

Tenn. Code Ann. 4718104(b)(1).

b. The Defendants use of Sock'n Bop, the Sock'n Bop Logo, the

Sockn Bop Trade Dress and the Buzz Bee Package Design in connection with inflatable

boxing pillows is likely to lead to substantial consumer confusion or misunderstanding

as to the source, sponsorship, approval or certification of goods offered by the

Defendants in violation of Tenn. Code Ann. 4718104(b)(2).

c. The Defendants use of Sock'n Bop, the Sock'n Bop Logo and the

Buzz Bee Package Design in connection with inflatable boxing pillows constitutes an act

or practice that is deceptive to the consumer and others in violation of Tenn. Code Ann.

4718104(b)(27).

COUNT V: COMMON-LAW UNFAIR COMPETITION



88. The Defendants use of Sock'n Bop, the Sock'n Bop Logo, the Sockn Bop

Trade Dress and the Buzz Bee Package Design in connection with inflatable boxing

pillows has likely caused and will continue to be likely to cause consumers to be

deceived as to the origin or sponsorship of the goods offered by the Defendants, in

violation of Tennessee common law.

RELIEF REQUESTED

WHEREFORE, Plaintiffs Big Time Toys, LLC, and Sam Harwell pray for

judgment against Buzz Bee Toys, Inc.; Buzz Bee Toys (HK) Co., Ltd.; Jeff Zimmerman;

and Target Corp. as follows:

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1. A preliminary and permanent injunction against each Defendant and their

servants, agents, employees, successors and assigns and all persons acting in concert

with each Defendant, enjoining them from:

a. marketing, selling, distributing, supplying or delivering inflatable

boxing pillows or other inflatable toys using Sockn Bop, the Sockn Bop Logo, the

Sockn Bop Trade Dress and the Buzz Bee Package Design or any other mark similar to

SOCKER BOPPER or the Classic Socker Bopper Combined Logo, or any other trade

dress confusingly similar to the Socker Bopper Trade Dress or the Classic Socker Bopper

Packaging;

b. using or distributing any advertising or promotional materials,

electronic or otherwise, in connection with inflatable boxing pillows or other inflatable

toys that use or contain Sockn Bop, the Sockn Bop Logo, Sockn Bop Product Design

or the Buzz Bee Package Design or any other mark confusingly similar to SOCKER

BOPPER or the Classic Socker Bopper Combined Logo, or any other trade dress

similar to the Socker Bopper Trade Dress or the Classic Socker Bopper Packaging.

2. An order requiring each Defendant to deliver up to Big Time for

destruction all goods, signs, advertisements, literature, business forms, cards, labels,

packages, wrappers, pamphlets, brochures, receptacles, and any other written or printed

material in Defendants possession or under its control that bear Sockn Bop, the

Sockn Bop Logo, the Sockn Bop Product Design, the Buzz Bee Package Design or any

other mark confusingly similar to SOCKER BOPPER or the Classic Socker Bopper

Combined Logo, or any other trade dress confusingly similar to the Socker Bopper Trade

Dress or the Classic Socker Bopper Packaging.

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3. An order requiring each Defendant to account for profits made by the

Defendant as a result of sales of inflatable boxing pillows, or other inflatable toys, made

in connection with Sockn Bop, the Sockn Bop Logo, the Sockn Bop Product Design,

the Buzz Bee Package Design or any other mark similar to SOCKER BOPPER or the

Classic Socker Bopper Combined Logo, or any other trade dress confusingly similar to

the Socker Bopper Trade Dress or the Classic Socker Bopper Packaging.

4. An award to Big Time and Mr. Harwell of damages sustained by Big Time

as a result of the acts complained herein, to be trebled in accordance with 15 U.S.C.

1117 and with the Tennessee Consumer Protection Act.

5. An award to Big Time and Mr. Harwell of their attorneys fees pursuant to

15 U.S.C. 1117 and to the Tennessee Consumer Protection Act.

6. An award of punitive damages to Big Time and Mr. Harwell for the

Defendants deception of consumers and violation of the Plaintiffs rights.

7. An award of pre- and post-judgment interest.

8. A trial by jury on all issues so triable.

9. Such other and further relief as the Court may deem appropriate and

equitable.

Dated: October 21, 2014.

Respectfully submitted,

/s/Richard G. SandersRichard G. Sanders (Tenn BPR No. 23875) Aaron & Sanders, PLLC11 Lea Ave., Ste. 606Nashville, TN 37210(615) 7341188Fax (615) 2509807

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[email protected]

Counsel for Big Time Toys, LLC, and Sam Harwell

PLAINTIFFS DEMAND A JURY ON ALL ISSUES SO TRIABLE.

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CERTIFICATE OF SERVICE

I hereby certify that on the 21st day of October, 2014, a true and correct copy of theforegoing has been served via the Electronic Case Filing system of the United StatesDistrict Court for the Middle District of Tennessee, which will automatically send email

notification of such filing to the following attorneys of record:

John OMalleyMichael F. SnyderJohn P. Sullivan V OLPE & K OENIG , P.C.30 S. 17th St., 18th Fl.Philadelphia, PA 19103

Robb S. Harvey W ALLER L ANSDEN DORTCH & D AVIS , LLP511 Union St., Ste. 2700Nashville, TN 37219

/s/Richard G. SandersCounsel for the Plaintiff

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big time toys v. buzz bee toys - socker hopper trademark complaint

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