841058.3
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
ZELTIQ AESTHETICS, INC.
Plaintiff,
vs. J. SCOTT CRONAN, d/b/a TEXAS LASER SOURCE; NASSAU BAY DERMATOLOGY, P.A.; DR. JEANNE PAZ, M.D.; and TRANSFORMATION MEDISPA, LLC
Defendants.
::::::::::: : : :
Civil Action No. Judge
PLAINTIFF ZELTIQ AESTHETICS, INC.’S APPLICATION FOR TEMPORARY RESTRAINING ORDER, PRELIMINARY INJUNCTION , AND
PERMANENT INJUNCTION, and VERIFIED COMPLAINT
Plaintiff Zeltiq Aesthetics, Inc. (“Zeltiq”), by and through counsel, seeks a temporary
restraining order, preliminary injunction, permanent injunction, attorney’s fees, and damages
against Defendants J. Scott Cronan, d/b/a Texas Laser Source; Nassau Bay Dermatology, P.A.;
Jeanne Paz, M.D.; and Transformation MediSpa, LLC, and states the following in support.
NATURE OF THE ACTION
1. This is an action brought under the trademark laws of the United States, including
the Lanham Act, 15 U.S.C. §§ 1051 et seq., for trademark infringement, false designation of
origin, unfair competition, and false advertising.
JURISDICTION AND VENUE
2. This Court has subject matter jurisdiction over this case pursuant to 28 U.S.C. §§
1331 (federal question jurisdiction) and 1338 (civil action arising under any Act of Congress
relating to trademarks).
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3. This Court has personal jurisdiction over Defendants because each resides in and
transacts business within this state and in this judicial district, and Zeltiq's causes of action arise
from transactions within this state and judicial district.
4. Venue in this district is proper pursuant to 28 U.S.C. § 1391(b).
THE PARTIES
5. Plaintiff Zeltiq is a corporation organized and existing under the laws of
Delaware with a principal place of business at 4690 Willow Road, Pleasanton, California 94588-
2843.
6. On information and belief, Defendant Scott Cronan (“Cronan”) is an individual
doing business as Texas Laser Source (“TLS”), an unincorporated business, with a residence at
3113 Sea Channel Drive, Seabrook, Texas 77586, and a place of business at 5373 West
Alabama, Suite 415, Houston, Texas 77056.
7. On information and belief, Defendant Nassau Bay Dermatology, P.A. (“Nassau
Bay”) is a Texas professional association with a place of business at 390 East Medical Center
Boulevard, Webster, Texas 77589.
8. On information and belief, Defendant Jeanne Paz, M.D. is an individual resident
of this state and judicial district, and is the President of Nassau Bay.
9. On information and belief, Defendant Transformation MediSpa, LLC is a Texas
limited liability corporation with a principal place of business at 2530 W. Holcombe Blvd,
Houston, Texas 77030.
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FACTUAL BACKGROUND
A. Zeltiq and its CoolSculpting Procedure 10. Zeltiq is a medical technology company that owns and/or is the exclusive licensee
of the technology underlying the process known as “cryolipolysis,” a non-invasive, patented,
clinically proven procedure which involves freezing fat cells without damage to the skin.
11. Cryolipolysis involves the selective reduction of stubborn fat bulges through the
controlled cooling of subcutaneous fat tissue, which is broken down and absorbed by the body
through a process known as “apoptosis” to gradually reshape body contours.
12. Cryolipolysis is intended to address stubborn fat bulges that may not respond to
diet or exercise; obese individuals are generally not good candidates for cryolipolysis because
they typically have body areas that require significant fat reduction, and are unlikely to obtain
noticeable aesthetic results from such treatment.
13. The U.S. Food and Drug Administration (“FDA”) approved Zeltiq’s cryolipolysis
device in September 2010 for the provision of cryolipolysis services to the flank region, or “love
handles.”
14. Zeltiq is the only party in the United States to have obtained FDA approval to
offer a cryolipolysis device and services.
15. Zeltiq markets its cryolipolysis device and system under the registered trademarks
ZELTIQ® and COOLSCULPTING®, which it distributes exclusively to authorized medical
professionals that receive training on proper use of the device in compliance with FDA-approved
guidelines (“Physician Providers”).
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16. Zeltiq has extensively marketed and promoted its ZELTIQ COOLSCULPTING
system, which has received substantial press coverage since its approval by the FDA for non-
invasive, cosmetic, body-contouring.
17. Authorized Physician-Providers who purchase the ZELTIQ COOLSCULPTING
device enter into a Master Services Agreement (“MSA”) that includes a non-transferrable license
to use Zeltiq’s intellectual property in connection with the provision of cryolipolysis services
using Zeltiq’s device, including but not limited to trademarks and marketing materials. A true
and correct copy of the Terms and Conditions of Sale from the MSA is attached as Exhibit A.
18. The terms of the MSA expressly prohibit Physician-Providers from selling,
renting, leasing, or otherwise transferring Zeltiq’s device for use by any third party, unless the
proposed transferee has entered into a separate written agreement with Zeltiq, intended to ensure
proper use of Zeltiq’s trademarks as authorized by the trademark license, and its proprietary
technology and device in compliance with its FDA approval. See Exhibit A at p. 2 (“No Waiver.
No Assignment. Severability of Terms”).
B. Zeltiq’s Registered Trademarks and Service Marks
19. Zeltiq owns the following valid and subsisting U.S. trademark and service mark
registrations:
MARK REG. NO. GOODS/SERVICES ZELTIQ 3,897,576 Medical devices, namely, apparatus
for tissue contouring and cellulite improvement; medical services, namely, procedures and services in the nature of tissue contouring and cellulite improvement.
COOLSCULPTING 3,921,045 Medical services, namely, procedures and services in the nature of tissue contouring and cellulite improvement.
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MARK REG. NO. GOODS/SERVICES COOLSCULPTING 3,957,850 Medical devices, namely, apparatus
for tissue cooling, contouring and cellulite improvement; medical devices used to destroy fat cells.
20. Zeltiq's trademarks are widely recognized in the United States and worldwide as
the identifier of Zeltiq and its high quality goods and services.
C. J. Scott Cronan, d/b/a Texas Laser Source
21. On information and belief, TLS leases certain devices to doctors and “medi spas”
for use in connection with cosmetic medical procedures, such as laser hair removal and cosmetic
skin treatments.
22. On information and belief, TLS is advertising “Zeltiq Coolsculpting
(Cryolipolysis)” as a device available for rent from TLS. A true and correct copy of a TLS
brochure is attached as Exhibit B.
23. On information and belief, Cronan and other TLS personnel are administering
medical treatments purporting to be genuine ZELTIQ COOLSCULPTING services.
24. On information and belief, neither Cronan nor any other TLS personnel are
medical doctors or otherwise trained to operate medical devices.
25. TLS has not purchased a ZELTIQ COOLSCULPTING device from Zeltiq or its
distributors, nor does Zeltiq have any record of existing Physician Providers seeking Zeltiq’s
consent to a transfer of a ZELTIQ COOLSCULPTING device to TLS pursuant to the terms of
the MSA.
26. Neither Cronan nor any other TLS employee or representative is an authorized,
trained provider of ZELTIQ COOLSCULPTING services, nor are they licensed to use Zeltiq’s
trademarks and service marks.
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27. On information and belief, TLS distributes marketing materials purporting to
advertise “Coolsculpting by Zeltiq,” which contains, among other things, a logo and trade dress
previously used by Zeltiq, as well as “before and after” images owned by Zeltiq or its authorized
Physician Providers. A true and correct copy of these materials is attached as Exhibit C.
28. TLS is not licensed to use the marks ZELTIQ, COOLSCULPTING, or any other
Zeltiq intellectual property in connection with any goods or services that it offers, nor is it
authorized to license the use of the marks to others.
D. Nassau Bay Dermatology and Dr. Jeanne Paz, M.D.
29. On Tuesday, December 6, 2011, Dr. Paz and Nassau Bay held an “open house,”
the advertisement for which stated, “We are happy to introduce our new non-invasive fat
reduction laser [sic] Coolsculpting by Zeltiq.” A true and correct copy of this advertisement is
attached as Exhibit D.
30. TLS was one of several vendors promoting various goods and services at the open
house.
31. TLS representative Janeé Wimberly described the services she was promoting at
the open house as “Coolsculpting,” and the manufacturer of the “laser device” used in the
procedure as “Zeltiq.”
32. Wimberly distributed materials to open house attendees that identified the process
as the FDA-approved “Zeltiq Coolsculpting” procedure developed by Zeltiq’s licensors. A copy
of these materials is attached as Exhibit E.
33. Wimberly indicated that TLS recently purchased the “Coolsculpting” device,
which it would soon offer to Dr. Paz’s patients.
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34. On information and belief, Wimberly is administering medical treatments
purporting to be ZELTIQ COOLSCULPTING services.
35. On information and belief, Wimberly is not a medical doctor or otherwise trained
to operate medical devices.
36. Neither Dr. Paz nor Nassau Bay are authorized Zeltiq Physician Providers or
owners of a ZELTIQ COOLSCULPTING device, nor is Dr. Paz or any other Nassau Bay
employee a trained provider of ZELTIQ COOLSCULPTING services.
37. Neither Dr. Paz nor Nassau Bay are licensed to use the ZELTIQ or
COOLSCULPTING marks, or any other Zeltiq intellectual property in connection with any
goods or services they offer.
38. Dr. Paz’s and Nassau Bay’s description of Zeltiq’s goods and services as a “fat
reduction laser” is a materially false statement, as cryolipolysis does not involve lasers.
E. Transformation MediSpa
39. On information and belief, Transformation MediSpa offers a procedure it purports
to be Zeltiq’s CoolSculpting services.
40. On information and belief, Transformation MediSpa distributes marketing
materials purporting to advertise “Coolsculpting by Zeltiq” containing, among other things, a
logo and trade dress owned and previously used by Zeltiq, and “before and after” images owned
by Zeltiq and/or its authorized Physician Providers. A true and correct copy of these materials is
attached as Exhibit F.
41. On information and belief, Transformation MediSpa acquired the marketing
materials it distributes from TLS.
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42. On information and belief, TLS representatives, including but not limited to
Cronan, are currently administering cryolipolysis treatments that they purport to be
“Coolsculpting by Zeltiq” services at Transformation MediSpa.
43. On information and belief, no Transformation MediSpa personnel are medical
doctors or otherwise trained to operate medical devices.
44. Transformation MediSpa is not an authorized owner of a ZELTIQ
COOLSCULPTING device, nor is it a trained provider of ZELTIQ COOLSCULPTING
services.
45. Transformation MediSpa is not licensed to use the ZELTIQ or
COOLSCULPTING marks, or any other Zeltiq intellectual property in connection with any
goods or services that it offers.
F. Zeltiq’s Inability to Exercise Quality Control O ver Defendants’ Cryolipolysis Services
46. On information and belief, the cryolipolysis services offered by Defendants do not
meet Zeltiq’s high standards for services rendered under Zeltiq’s ZELTIQ and
COOLSCULPTING marks.
47. On information and belief, the cryolipolysis services offered by Defendants using
Zeltiq’s device are not in compliance the FDA’s approval of the device for use only on the flank
region.
48. On information and belief, Defendants may be offering and providing
cryolipolysis services to individuals who are not proper candidates for the treatment, which is
likely to lead to unsatisfactory results and, as a result, damage to the good will associated with
Zeltiq’s brand.
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49. Zeltiq lacks the means to ensure the treatments administered by Defendants to
patients who believe they are receiving authentic ZELTIQ COOLSCULPTING services meet
Zeltiq’s quality standards, and are in compliance with FDA approval.
50. Defendants’ description of Zeltiq’s CoolSculpting device and procedure as
involving “lasers” is a material misrepresentation of the nature of Zeltiq’s goods and services.
51. Defendants’ unauthorized and improper use of Zeltiq’s trademarks and service
marks in connection with cryolipolysis treatments performed by untrained, unlicensed parties
unaffiliated with Zeltiq is likely to diminish the reputation of Zeltiq, and the value of its
intellectual property and the good will associated therewith.
52. As a result of Defendants’ actions, Zeltiq was required to hire the law firms of
Thompson Hine, LLP and Locke Lord, LLP, and is obligated to pay their attorneys a reasonable
fee for their services.
COUNT I FEDERAL TRADEMARK INFRINGEMENT (15 U.S.C. § 1114)
(Temporary Restraining Order, Preliminary and Permanent Injunctive Relief, and Damages)
53. Zeltiq incorporates by reference as if fully stated herein the allegations contained
in paragraphs 1 through 52.
54. Defendants’ unauthorized use in commerce of Zeltiq’s ZELTIQ and
COOLSCULPTING trademarks and service marks in connection with the advertising,
marketing, and provision of cryolipolysis treatments, as alleged herein, is likely to cause
confusion, to cause mistake, or to deceive consumers as to the source, origin, affiliation,
connection or association of Defendants’ services, and is likely to cause consumers to mistakenly
believe that Defendants’ cryolipolysis treatments have been authorized, sponsored, approved,
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endorsed, or licensed by Zeltiq, or that Defendants are in some way affiliated with Zeltiq or the
goods and services that Zeltiq offers under its marks.
55. Defendants’ acts, alleged herein, constitute federal trademark infringement in
violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
56. By reason of Defendants’ actions, Zeltiq has suffered irreparable harm to its
valuable trademarks and service marks and the goodwill associated therewith. Zeltiq has been,
and unless Defendants are preliminarily and permanently restrained from their actions, will
continue to be irreparably harmed.
57. As a direct and proximate result of Defendants’ conduct, Zeltiq has suffered and
will continue to suffer damages in an amount to be proven at trial.
COUNT II TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
(15 U.S.C. § 1125(a)(1)(A)) (Temporary Restraining Order, Preliminary and
Permanent Injunctive Relief, and Damages)
58. Zeltiq incorporates by reference as if fully stated herein the allegations contained
in paragraphs 1 through 57.
59. Defendants’ unauthorized use in commerce of Zeltiq’s ZELTIQ and
COOLSCULPTING trademarks and service marks and other proprietary materials of Zeltiq in
connection with the advertising, marketing, and provision of cryolipolysis treatments, as alleged
herein, is likely to cause confusion, to cause mistake, or to deceive consumers as to the source,
origin, affiliation, connection or association of Defendants’ services, and is likely to cause
consumers to mistakenly believe that Defendants’ cryolipolysis treatments have been authorized,
sponsored, approved, endorsed, or licensed by Zeltiq, or that Defendants are in some way
affiliated with Zeltiq or the goods and services that Zeltiq offers under its marks.
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60. Defendants’ acts, alleged herein, constitute infringement and unfair competition
in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).
61. By reason of Defendants’ actions, Zeltiq has suffered irreparable harm to its
valuable trademarks and service marks and the goodwill associated therewith. Zeltiq has been,
and unless Defendants are preliminarily and permanently restrained from their actions, will
continue to be irreparably harmed.
62. As a direct and proximate result of Defendants’ conduct, Zeltiq has suffered and
will continue to suffer damages in an amount to be proven at trial.
COUNT III FALSE ADVERTISING AND FALSE DESIGNATION OF ORIGIN
(15 U.S.C. § 1125(a)(1)(B)) (Temporary Restraining Order, Preliminary and
Permanent Injunctive Relief, and Damages)
63. Zeltiq incorporates by reference as if fully stated herein the allegations contained
in paragraphs 1 through 62.
64. Defendants’ advertisement and promotion of cryolipolysis treatments using
Zeltiq’s name and the ZELTIQ and COOLSCULPTING marks constitutes a misrepresentation of
the nature, characteristics, and qualities of their services and commercial activities.
65. Defendants’ acts, alleged herein, constitute false advertising and false designation
of origin in violation of Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B).
66. By reason of Defendants’ actions, Zeltiq has suffered irreparable harm to its
valuable trademarks and service marks and the goodwill associated therewith. Zeltiq has been,
and unless Defendants are preliminarily and permanently restrained from their actions, will
continue to be irreparably harmed.
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67. As a direct and proximate result of Defendants’ conduct, Zeltiq has suffered and
will continue to suffer damages in an amount to be proven at trial.
APPLICATION FOR TEMPORARY RESTRAINING ORDER AND PRELIMINARY INJUNCTION
68. Zeltiq incorporates by reference as if fully stated herein the allegations contained
in paragraphs 1 through 67.
69. Immediate relief is necessary in order to restrain Defendants from using Zeltiq’s
registered trademarks and service marks in connection with the advertising and promotion of
services not affiliated with or endorsed by Zeltiq, which activity constitutes trademark
infringement, unfair competition, false advertising and false designation of origin. Absent entry
of a temporary restraining order and a preliminary and permanent injunction, Zeltiq has no
adequate remedy at law against Defendants and their unauthorized misuse of Zeltiq’s valuable
intellectual property. Absent immediate relief, Zeltiq will suffer continuing, irreparable harm to
its intellectual property and the goodwill associated therewith from Defendants’ illegal activities.
70. Zeltiq asks the Court to enter a temporary restraining order, preliminary
injunction, and permanent injunction restraining the Defendants from:
(i) using the marks ZELTIQ, COOLSCULPTING, and/or any other confusingly similar mark or colorable imitation thereof in connection with the promotion, advertisement, display, sale, offer for sale, manufacture, production, circulation, or distribution of any goods or services offered by any of the Defendants;
(ii) performing any act, making any statement, or distributing any materials that are likely to lead members of the public to believe that any service or product performed, distributed, leased, or sold by Defendants is associated or connected with Zeltiq, or is sold, licensed, sponsored, approved or authorized by Zeltiq, including but not limited to statements that defendants are offering cryolipolysis treatments that are “FDA-Approved,” or involve technology developed at Harvard University or Massachusetts General Hospital by Drs. Richard Rox Anderson and Dieter Manstein;
(iii) reproducing, displaying distributing, or creating derivative works from any text, graphics, photographs, or other materials that are owned by and/or emanate from
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Zeltiq or its authorized Physician Providers concerning “cryolipolysis” and the results therefrom; and
(iv) otherwise taking any action likely to cause public confusion, mistake, or deception as to the connection, affiliation, sponsorship, approval, or other association of defendants’ goods or services with Zeltiq or its goods or services.
71. To obtain a preliminary injunction, Zeltiq must show (1) a substantial likelihood
that it will prevail on the merits, (2) a substantial threat that it will suffer irreparable injury if the
injunction is not granted, (3) that its threatened injury outweighs the threatened harm to
Defendants, and (4) that granting the preliminary injunction will not disserve the public interest.
72. The facts provide ample support for granting the requested injunctive relief.
73. Zeltiq has a substantial likelihood of prevailing on the merits of its causes of
action, as demonstrated below:
A. Zeltiq Has a Substantial Likelihood of Prevailing on the Merits of its Cause of Action for Federal Trademark Infringement
74. Zeltiq has established that it owns the following valid and subsisting U.S.
trademark registrations:
MARK REG. NO. GOODS/SERVICES ZELTIQ 3,897,576 Medical devices, namely, apparatus
for tissue contouring and cellulite improvement; medical services, namely, procedures and services in the nature of tissue contouring and cellulite improvement.
COOLSCULPTING 3,921,045 Medical services, namely, procedures and services in the nature of tissue contouring and cellulite improvement.
COOLSCULPTING 3,957,850 Medical devices, namely, apparatus for tissue cooling, contouring and cellulite improvement; medical devices used to destroy fat cells.
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75. These federal registrations serve as prima facie evidence of Zeltiq’s exclusive
right to use the marks in U.S. commerce. Thus, Zeltiq has established that its trademarks are
legally protectable.
76. None of the Defendants are authorized to use Zeltiq’s marks in connection with
the sale of any goods or services. None of the Defendants have purchased a ZELTIQ
COOLSCULPTING device from Zeltiq or its distributors, nor has Zeltiq granted any existing
Physician Provider permission under the terms of the MSA to transfer Zeltiq’s device to any of
the Defendants. None of the Defendants are licensed to use the ZELTIQ and/or
COOLSCULPTING marks, or any other intellectual property owned by Zeltiq in connection
with any goods or services.
77. Since none of the Defendants possess any authority to use Zeltiq’s intellectual
property, each Defendant is engaged in activity that infringes Zeltiq’s registered marks.
Specifically:
(i) Defendant TLS is advertising a “Zeltiq Coolsculpting (Cryolipolysis)” device for rent, and distributes marketing materials purporting to advertise “Coolsculpting by Zeltiq” featuring a design mark and trade dress owned and previously used by Zeltiq, as well as before and after images owned by Zeltiq and its authorized Physician Providers;
(ii) Defendants Paz and Nassau Bay held an “open house,” the advertisement for which stated, “We are happy to introduce our new non-invasive fat reduction laser Coolsculpting by Zeltiq”;
(iii) Defendant TLS was one of several vendors at the open house;
(iv) a representative of Defendant TLS, Janeé Wimberly, described the services she was promoting at the open house as “Coolsculpting,” and the manufacturer of the “laser device” used in the procedure as “Zeltiq”;
(v) Wimberly distributed materials to open house attendees that identified the process as the FDA-approved “Zeltiq Coolsculpting” procedure;
(vi) Defendant Transformation MediSpa offers a procedure it purports to be “Coolsculpting, the trade name used by Zeltiq”;
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(vii) Defendant Transformation Medispa distributes marketing materials purporting to advertise “Coolsculpting by Zeltiq” containing, among other things, a design mark and trade dress previously used by Zeltiq, as well as “before and after” images owned by Zeltiq and/or its authorized Physician Providers; and
(viii) Defendant TLS representatives are currently administering cryolipolysis treatments that they purport to be “Coolsculpting by Zeltiq” services at Defendant Transformation MediSpa.
78. It is without question that Defendants’ unauthorized use in commerce of Zeltiq’s
ZELTIQ and COOLSCULPTING marks in connection with the provision of cryolipolysis
treatments is likely to cause confusion, to cause mistake, or to deceive consumers as to the
source, origin, affiliation, connection or association of Defendants’ services. Consumers are
likely to believe they are receiving Zeltiq-authorized COOLSCULPTING treatments that have
achieved FDA approval, and that Zeltiq has authorized Defendants to administer such treatments,
which is untrue. Therefore, Defendants’ unauthorized activities clearly infringe on Zeltiq’s
legally protectable marks, and that there is a substantial likelihood that Zeltiq will prevail on its
claims for trademark infringement against Defendants.
B. Zeltiq Has a Substantial Likelihood of Prevailing on the Merits of its Cause of Action for False Advertising and False Designation of Origin.
79. Zeltiq has demonstrated that it will prevail on its false advertising and false
designation claims against Defendants. First, Defendants are making false statements about the
treatments they are offering, including (i) advertisements and promotion of cryolipolysis
treatments using Zeltiq’s marks, including representations that the services provided are “Zeltiq
Coolsculpting treatments,” which constitutes a misrepresentation of the nature, characteristics,
and qualities of their services; (ii) materially false descriptions of Zeltiq’s goods and services as
a “fat reduction laser”; (iii) referring to Zeltiq as the manufacturer of the “laser device” used in
the “Coolsculpting” procedure; and, (iv) representing that the services Defendants are providing
are “FDA approved.”
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80. Second, the false statements made by Defendants will clearly mislead consumers.
Consumers who encounter Defendants’ advertisements or promotional material, visit the
Defendants’ places of business, or attend their open houses will obtain false and materially
misleading information about the services Defendants offer. Such consumers will likely
mistakenly believe that Defendants’ cryolipolysis treatments have been authorized, sponsored,
approved, endorsed, or licensed by Zeltiq, or that Defendants are in some way affiliated with
Zeltiq, or the goods and services Zeltiq offers under its marks.
81. Third, the false statements are material representations intended by Defendants to
influence potential customers to purchase services from them. Defendants’ misrepresentations
regarding the “FDA approval” of their services, Defendants’ unauthorized use of Zeltiq’s marks
in advertisements and promotions of cryolipolysis treatments, and Defendants’ false descriptions
of Zeltiq’s goods and services as a “fat reduction laser” are intended to mislead potential
customers by making potential customers believe that Zeltiq has approved and that authorized
doctors are providing those services. Defendants’ only goal in making these material
misrepresentations is to deceive potential customers and induce them to buy Defendants’
services under false pretenses.
82. Fourth, it is undisputed that Defendants are selling and advertising the goods and
services at issue in interstate commerce.
83. Finally, Zeltiq is experiencing current and ongoing damage. Defendants’ false
statements relating to Zeltiq and its marks is likely to diminish Zeltiq’s reputation and the value
of its intellectual property. This is precisely the type of unsupervised, unregulated activity Zeltiq
seeks to prohibit by only entering into MSAs with authorized, trained Physician Providers,
thereby protecting both the safety of cryolipolysis patients and Zeltiq’s own valuable reputation.
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84. Zeltiq has demonstrated that Defendants’ actions have created a likelihood of
confusion among consumers as to the source, origin, affiliation, connection or association of
Defendants’ services with Zeltiq. This likelihood of confusion has irreparably harmed and will
continue to irreparably harm Zeltiq’s goodwill in its intellectual property and Zeltiq’s brand,
especially with the danger that Defendants’ patients will be dissatisfied with the quality of the
service they receive, and associate that negative experience with Zeltiq.
85. If the Court does not grant a Temporary Restraining Order and Preliminary
Injunction, Zeltiq will continue to suffer irreparable harm to the goodwill in its valuable marks.
Other remedies, including an accounting of Defendants’ damages, are insufficient to compensate
the damage to Zeltiq’s goodwill and brand.
86. The threat that Zeltiq will suffer irreparable harm outweighs any damage that an
injunction might cause the Defendants. The only conceivable “harm” that could come to
Defendants from issuance of a Temporary Restraining Order or Injunction is that they would
cease the reaping of any ill-gotten profits from their infringing and potentially dangerous
activities. This potential “harm” does not outweigh the irreparable harm Zeltiq will suffer to its
goodwill and ability to conduct business and protect its brands if Defendants are permitted to
continue unlawful activities.
87. Enjoining Defendants from their infringing and potentially dangerous activities
will not harm the public interest. The Lanham Act exists to ensure that the owner of a trademark
reaps the benefits of the goodwill of his business, and to protect the ability of consumers to
distinguish among competing products. Thus, it is in the public interest to safeguard against any
potential confusion between Zeltiq and the Defendants’ unauthorized activities.
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88. Enjoining Defendants from their infringing and potentially dangerous activities
will, in fact, protect the public. Cryolipolysis involves highly specialized services performed
through the use of devices incorporating patented technology that only Zeltiq and its authorized
Physician Providers are trained to properly administer. Defendants may be offering and
providing cryolipolysis services to individuals who are not proper candidates for the treatment
and who will likely have unsatisfactory results.
89. Moreover, Zeltiq lacks the means to ensure the cryolipolysis treatments
administered by Defendants to patients believing they are getting authentic ZELTIQ
COOLSCULPTING services are of the quality expected by Zeltiq and in compliance with FDA
approval. Although Defendants are advertising their services as “FDA approved”, they may not
be operating within the bounds of the FDA approval by having unlicensed, untrained individuals
performing the treatments. This is exactly the type of harm to the public that the FDA approval
process addresses, and the type of harm that the restrictions in Zeltiq’s MSA with authorized
Physician Providers seeks to avoid.
90. The Temporary Restraining Order and Preliminary Injunction requested by Zeltiq
will prevent Defendants from administering cryolipolysis treatment services for which they are
neither trained, nor authorized, thereby protecting unsuspecting consumers from deception,
unsatisfactory results that they will associate with Zeltiq, and possible physical injury.
PRAYER FOR RELIEF
WHEREFORE, Zeltiq respectfully requests the following relief:
A. That Defendants, their affiliates, officers, directors, agents, representatives,
attorneys, and all persons acting or claiming to act on their behalf or under their direction or
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authority, and all persons acting in concert or participation therewith, be temporarily restrained
and preliminarily and permanently enjoined from:
(i) using the marks ZELTIQ, COOLSCULPTING, and/or any other confusingly
similar mark or colorable imitation thereof in connection with the promotion, advertisement,
display, sale, lease, offer for sale or lease, manufacture, production, circulation, or distribution of
any goods or services offered by any of the Defendants;
(ii) performing any act, making any statement, or distributing any materials that are
likely to lead members of the public to believe that any service or product performed, distributed,
leased, or sold by Defendants is associated or connected with Zeltiq, or is sold, licensed,
sponsored, approved or authorized by Zeltiq, including but not limited to statements that
Defendants are offering cryolipolysis treatments that are “FDA-Approved,” or involve
technology developed at Harvard University or Massachusetts General Hospital by Drs. Richard
Rox Anderson and Dieter Manstein;
(iii) reproducing, displaying distributing, or creating derivative works from any text,
graphics, photographs, or other materials owned by and/or emanating from Zeltiq or its
authorized Physician Providers concerning “cryolipolysis” and the results therefrom that is likely
to cause confusion, mistake, or deception as to the source, origin, affiliation, connection, or
association of Defendants’ goods or services with Zeltiq; and
(iv) otherwise taking any action likely to cause public confusion, mistake, or
deception as to the connection, affiliation, sponsorship, approval, or other association of
Defendants’ goods or services with Zeltiq or its goods or services;
B. For an order awarding damages pursuant to 15 U.S.C. § 1117, including but not
limited to each Defendants’ profits associated with its sale of services in connection with Zeltiq’s
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ZELTIQ or COOLSCULPTING marks, Zeltiq’s damages, costs, and treble damages pursuant to
15 U.S.C. § 1117;
C. For an order directing each Defendant to provide a full written accounting of all
treatments sold to consumers in connection with Zeltiq’s ZELTIQ or COOLSCULPTING marks;
D. For an order requiring each Defendant to issue corrective advertising to all
customers, potential customers, and other recipients of its prior false advertising in a form and
manner directed by the Court;
E. For an order directing Defendants to deliver to Zeltiq for destruction all materials
in their possession or under their control bearing or using Zeltiq’s ZELTIQ or
COOLSCULPTING marks or any other mark confusingly similar thereto, or any other Zeltiq
intellectual property;
F. For an order directing Defendants to file with this Court, and serve upon Zeltiq’s
counsel within thirty days after entry of such judgment, a written report under oath, setting forth
in detail the manner and form in which it has complied with such judgment;
G. For an award of Zeltiq's costs and disbursements incurred in this action;
H. For an order awarding attorneys’ fees for violation of the Lanham Act, or as
otherwise allowed by law or equity;
I. For an award of interest, including prejudgment and post judgment interest at the
statutory rate; and
J. Any other additional relief as the Court deems just and proper.
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Date: February 8, 2012 Respectfully submitted,
_____/s/ Nathan C. Dunn____________ Nathan Dunn State Bar No. 24036509 Southern District No. 33428 LOCKE LORD LLP 2800 JPMorgan Chase Tower 600 Travis Houston, Texas 77002 Phone: (713) 226-1383 [email protected]
Of Counsel: Carrie A. Shufflebarger* (Ohio Bar No. 0081141) Heather M. Hawkins* (Ohio Bar No. 0078569) Thompson Hine LLC 312 Walnut Street Fourteenth Floor Cincinnati, Ohio 45202 (513) 352-6700 (513) 241.4771 (facsimile) [email protected] [email protected]. * Counsel will file motions for admission pro hac vice.
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