north atlantic operating co. v. huang - zig zag trademark complaint.pdf

8/16/2019 North Atlantic Operating Co. v. Huang - Zig Zag trademark complaint.pdf

1/58

21671013.1

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

NORTH ATLANTIC OPERATINGCOMPANY, INC.; NATIONALTOBACCO COMPANY, L.P.,

Plaintiffs,v.

JINGJING HUANG; ALICE HUANG;EBAY SELLER HUAPUR_6233; ANLE

PAN; SUPER HOME VARIETY STORE,INC.; EBAY SELLER ANLPA91;ZHANGQI PAN; RYAN PAN; EBAYSELLER RYAN0201168; MIMI NGUYEN; EBAY SELLER MIMIFBABYY; EBAY SELLER HONESTFISHERMAN2015; EBAY

SELLER HONESTVALUES1; NAREK NAZARYAN; EBAY SELLER HOOKUPDEALSFORYOU; HARVEY

DAN; SPEEDZONE; EBAY SELLER HARDA-ENLHUI; JAIME ORTIZ; EBAYSELLER AUCTIONLEGENDS; KALEHUANG; KAL HUANG; EBAY SELLER

KYYSTORE; KAL HUANG; EBAYSELLER KALTEK-SHOP; ANDREWRUSSELL; EBAY SELLER DOLLARPLUSDISCOUNT1; GARY LO;EBAY SELLER

DISCOUNTVAPOR4YOU; FRANCISFERLAND; EBAY SELLER BESTDEALMONTREAL; DHGATESELLER JACKYHU; DHGATE SELLER KATHY0577; DHGATE SELLER CNGZSS; DHGATE SELLER CNGZSS1;JOHN DOES 1-10; and XYZ

CIVIL ACTION NO. 4:15-cv-

14013-TGB-DRG

FIRST AMENDED COMPLAINT

JURY TRIAL DEMANDED

4:15-cv-14013-TGB-DRG Doc # 188 Filed 05/13/16 Pg 1 of 58 Pg ID 1525


2/58

221671013.1

COMPANIES 1-10,

Defendants.

Plaintiff North Atlantic Operating Company, Inc. (“NAOC”), and its

affiliated company, Plaintiff National Tobacco Company, L.P. (“NTC”) (together,

“North Atlantic”), by and through their attorneys, bring this civil action against

Defendants JingJing Huang; Alice Huang; eBay Seller huapur_6233; Anle Pan;

Super Home Variety Store, Inc.; eBay Seller anlpa91; ZhangQi Pan; Ryan Pan;

eBay Seller ryan0201168; Mimi Nguyen; eBay Seller mimifbabyy; eBay Seller

honestfisherman2015; eBay Seller honestvalues1; Narek Nazaryan; eBay Seller

hookupdealsforyou; Harvey Dan; Speedzone; eBay Seller harda-enlhui; Jaime

Ortiz; eBay Seller auctionlegends; Kale Huang; Kal Huang; eBay Seller kyystore;

Kal Huang; eBay Seller kaltek-shop; Andrew Russell; eBay Seller

dollarplusdiscount1; Gary Lo; eBay Seller discountvapor4you; Francis Ferland;

eBay Seller bestdealmontreal; DHGate Seller jackyhu; DHGate seller kathy0577;

DHGate Seller cngzss; DHGate seller cngzss1; John Does 1-10; and XYZ

Companies 1-10, (collectively, “Defendants”) and in support thereof, allege as

follows:



3/58

321671013.1

NATURE OF THE ACTION

1. This is an anti-counterfeiting action against those who manufacture,

distribute, and/or sell counterfeit versions of North Atlantic’s highly popular ZIG-

ZAG® brand cigarette paper products in Michigan and nationwide.

2. As detailed herein, these counterfeiters have been distributing

purported ZIG-ZAG® brand cigarette paper products in packaging bearing North

Atlantic’s ZIG-ZAG® and NAOC® Trademarks and NAOC© Copyrights (as

these terms are defined herein), though such products are not distributed by North

Atlantic and are inferior versions of North Atlantic’s ZIG-ZAG® cigarette paper

products, sold without quality control or authorization.

3. The products the Defendants are distributing are not authentic, but are

in fact counterfeit products that can be distinguished from North Atlantic’s

authentic ZIG-ZAG® brand products. Ordinary consumers mistakenly purchase

these fake products at the point of sale.

4. North Atlantic has analyzed the products distributed by Defendants in

this action and has determined the counterfeit nature of the products and their

packaging. It is impossible for North Atlantic to verify the conditions under

which the counterfeit products are manufactured, and thus, North Atlantic has lost

the ability to control the quality and relative safety of products distributed under

its brand.



4/58

421671013.1

5. North Atlantic has also expended significant financial and human

capital investigating the counterfeit online sellers. As detailed below, North

Atlantic believes the Defendants in this action are large-scale distributors

responsible for manufacturing and/or importing the counterfeit products into the

United States, and for distributing the products at the wholesale and retail levels.

6. North Atlantic now brings this action for:

a. Trademark infringement, in violation of Section 32 of the Lanham

Act (15 U.S.C. § 1114);

b. False designation of origin and trademark and trade dress

infringement, in violation of Section 43 of the Lanham Act (15

U.S.C. § 1125(a));

c. Copyright infringement, in violation of the Copyright Act of 1976

(17 U.S.C. §§ 101 et seq.);

d. Improper use, reproduction, or imitation under MCL § 429.42;

e. Unfair competition under MCL § 445.903; and

f. Unfair competition under Michigan common law.

JURISDICTION AND VENUE

7. This Court has original subject matter jurisdiction over North

Atlantic’s Lanham Act claims pursuant to 28 U.S.C. §§ 1331, 1338 and 15 U.S.C.

§ 1121.



5/58

521671013.1

8. This Court has subject matter jurisdiction over North Atlantic’s

Michigan state law claims pursuant to 28 U.S.C. § 1338(b) and 28 U.S.C. §

1367(a).

9. Personal jurisdiction is proper in this judicial district because each

Defendant has had continuous, systematic, and substantial contacts within the

State of Michigan, including doing business in Michigan and directing sales and

advertising efforts through the Internet into the State of Michigan, and sending

infringing articles to purchasers in the State of Michigan.

10. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391,

in that a substantial part of the events giving rise to the claim occurred within this

judicial district.

PARTIES

The Plaintiffs

11. NAOC is a corporation organized and existing under the laws of the

State of Delaware with an office and principal place of business at 5201

Interchange Way, Louisville, Kentucky 40229.

12. NTC is a limited partnership organized and existing under the laws of

the State of Delaware with an office and principal place of business at 5201

Interchange Way, Louisville, Kentucky 40229.



6/58

621671013.1

13. NAOC and NTC are the exclusive licensees of the world-famous

ZIG-ZAG® brand cigarette paper products in the United States, and as such, have

full authority to enforce ZIG-ZAG® intellectual property rights as defined herein.

14. Together, NAOC and NTC exclusively manufacture, market,

distribute, and sell authentic, high quality ZIG-ZAG® brand products, including

ZIG-ZAG® Orange (defined herein) in the United States.

The Defendants

15. In its original Complaint, North Atlantic named a total of seventy-one

(71) separately identified Defendants. In the intervening months, North Atlantic

has settled with many of these Defendants and this Court has dismissed this action

as to forty (40) of them. North Atlantic herein amends its original Complaint, in

part, to remove these forty dismissed Defendants from the case caption. The

Defendants identified below comprise the remaining and newly named Defendants

against whom North Atlantic continues to assert its allegations herein.

16. Upon information and belief, Defendant JingJing Huang (“J. Huang”)

is a citizen of New York, residing at 2412 149 th Street, Whitestone, New York

11357.

17. Upon information and belief, J. Huang is involved in the sale and

distribution of counterfeit ZIG-ZAG® Orange cigarette paper products to

consumers, including individuals, retailers, wholesalers, and other distributors, in



7/58

721671013.1

Michigan and nationwide, and may be responsible for manufacturing and/or

importing counterfeit ZIG-ZAG® Orange cigarette paper products into the United

States.

18. Upon information and belief, Defendant Alice Huang (“A. Huang”) is

a citizen of New York, residing at 2412 149th Street, Whitestone, New York

11357.

19. Upon information and belief, A. Huang is involved in the sale and





States.

20. Upon information and belief, Defendant eBay Seller huapur_6233

(“huapur_6233”) is an eBay account associated with the email address

[email protected], and may also be associated with the physical address

2412 149th Street, Whitestone, New York 11357.

21. Upon information and belief, huapur_6233, through the operator(s) of

said account, is involved in the sale and distribution of counterfeit ZIG-ZAG®

Orange cigarette paper products to consumers, including individuals, retailers,

wholesalers, and other distributors, in Michigan and nationwide.


mailto:[email protected]:[email protected]


8/58

821671013.1

22. Upon information and belief, Defendant Anle Pan (“A. Pan”) is a

citizen of New York, residing at 14717 16th

Road, Whitestone, New York 11357.

23. Upon information and belief, A. Pan is involved in the sale and





States.

24. Upon information and belief, Defendant Super Home Variety Store,

Inc. (“Super Home”) is company located at 14717 16 th Road, Whitestone, New

York 11357.

25. Upon information and belief, Super Home is involved in the sale and





States.

26. Upon information and belief, Defendant eBay Seller anlpa91

(“anlpa91”) is an eBay account associated with the email address



9/58

921671013.1

[email protected], and may also be associated with the physical

address 14717 16th

Road, Whitestone, New York 11357.

27. Upon information and belief, anlpa91, through the operator(s) of said

account, is involved in the sale and distribution of counterfeit ZIG-ZAG® Orange

cigarette paper products to consumers, including individuals, retailers,


28. Upon information and belief, Defendant ZhangQi Pan (“Z. Pan”) is a

citizen of New York, residing at 2412 149 th Street, Whitestone, New York 11357.

29. Upon information and belief, Z. Pan is involved in the sale and





States.

30. Upon information and belief, Defendant Ryan Pan (“R. Pan”) is a

citizen of New York, residing at 2412 149 th Street, Whitestone, New York 11357.

31. Upon information and belief, R. Pan is involved in the sale and







10/58

1021671013.1


States.

32. Upon information and belief, Defendant eBay Seller ryan0201168

(“ryan0201168”) is an eBay account associated with the email address


2412 149th Street, Whitestone, New York 11357.

33. Upon information and belief, ryan0201168, through the operator(s) of




34. Upon information and belief, Defendant Mimi Nguyen (“Nguyen”) is

a citizen of Texas, residing at 9411 Fern Wood Forest, Houston, Texas 77040.

35. Upon information and belief, Nguyen is involved in the sale and





States.

36. Upon information and belief, Defendant eBay Seller mimifbabyy

(“mimifbabyy”) is an eBay account associated with the email address




11/58


12/58

1221671013.1



42. Upon information and belief, Defendant Narek Nazaryan

(“Nazaryan”) is a citizen of California, residing at 316 North Cedar Street, Apt. 3,

Glendale, California 91206.

43. Upon information and belief, Nazaryan is involved in the sale and





States.

44. Upon information and belief, Defendant eBay Seller

hookupdealsforyou (“hookupdealsforyou”) is an eBay account associated with the

email address [email protected], and may also be associated with the

physical address 316 North Cedar Street, Apt. 3, Glendale, California 91206.

45. Upon information and belief, hookupdealsforyou, through the

operator(s) of said account, is involved in the sale and distribution of counterfeit

ZIG-ZAG® Orange cigarette paper products to consumers, including individuals,

retailers, wholesalers, and other distributors, in Michigan and nationwide.




13/58

1321671013.1

46. Upon information and belief, Defendant Harvey Dan (“Dan”) is a

citizen of New York, residing at 13691 37th

Avenue, No. 2, Flushing, New York

11354.

47. Upon information and belief, Dan is involved in the sale and


wholesalers, retailers, and other distributors in Michigan and nationwide, and may

be responsible for manufacturing and/or importing counterfeit ZIG-ZAG® Orange

cigarette paper products into the United States.

48. Upon information and belief, Defendant Speedzone (“Speedzone”) is

a fictitious business name associated with an address at 13691 37 th Avenue, No. 2,

Flushing, New York 11354.

49. Upon information and belief, Speedzone is involved in the sale and



Michigan and nationwide.

50. Upon information and belief, Defendant eBay Seller harda-enlhui

(“harda-enlhui”) is an eBay account associated with the email address


13691 37th Avenue, No. 2, Flushing, New York 11354.




14/58

1421671013.1

51. Upon information and belief, harda-enlhui is involved in the sale and



Michigan and nationwide.

52. Upon information and belief, Defendant Jaime Ortiz (“Ortiz”) is a

citizen of Virginia, residing at 9621 8th Bay Street, Apt. 4, Norfolk, Virginia

23518.

53. Upon information and belief, Ortiz is involved in the sale and





States.

54. Upon information and belief, Defendant eBay Seller auctionlegends

(“auctionlegends”) is an eBay account associated with the email address

[email protected], and may also be associated with the physical address 9621

8

th

Bay Street, Apt. 4, Norfolk, Virginia 23518.

55. Upon information and belief, auctionlegends, through the operator(s)

of said account, is involved in the sale and distribution of counterfeit ZIG-ZAG®




15/58

1521671013.1



56. Upon information and belief, Defendant Kale Huang (“Kale Huang”)

is a citizen of New York, residing at 1836 83 rd Street, Brooklyn, New York 11214.

57. Upon information and belief, Kale Huang is involved in the sale and





States.

58. Upon information and belief, Defendant Kal Huang (“Kal Huang 1”)

is a citizen of New York, residing at 1836 83rd

Street, Brooklyn, New York 11214.

59. Upon information and belief, Kal Huang 1 is involved in the sale and





States.

60. Upon information and belief, Defendant eBay Seller kyystore

(“kyystore”) is an eBay account associated with the email address



16/58

1621671013.1


83rd

Street, Brooklyn, New York 11214.

61. Upon information and belief, kyystore, through the operator(s) of said

account, is involved in the sale and distribution of counterfeit ZIG-ZAG® Orange

cigarette paper products to consumers, including individuals, retailers,


62. Upon information and belief, Defendant Kal Huang (“Kal Huang 2”)

is a citizen of New York, residing at 7405 18th Avenue, Brooklyn, New York

11204.

63. Upon information and belief, Kal Huang 2 is involved in the sale and





States.

64. Upon information and belief, Defendant eBay Seller kaltek-shop

(“kaltek-shop”) is an eBay account associated with the email address


18th Avenue, Brooklyn, New York 11204.


mailto:[email protected]:[email protected]:[email protected]:[email protected]


17/58

1721671013.1

65. Upon information and belief, kaltek-shop, through the operator(s) of




66. Upon information and belief, Defendant Andrew Russell (“Russell”)

is a citizen of Florida, residing at 851 NE 209 th Terrace, Apt. 206, North Miami

Beach, Florida 33179.

67. Upon information and belief, Russell is involved in the sale and





States.


dollarplusdiscount1 (“dollarplusdiscount1”) is an eBay account associated with

the email address [email protected], and may also be associated with

the physical address 851 NE 209

th

Terrace, Apt. 206, North Miami Beach, Florida

33179.

69. Upon information and belief, dollarplusdiscount1, through the





18/58

1821671013.1



70. Upon information and belief, Defendant Gary Lo (“Lo”) is a citizen

of California, residing at 2542 Pleasant Street, Oakland, California 94602.

71. Upon information and belief, Lo is involved in the sale and





States.


discountvapor4you (“discountvapor4you”) is an eBay account associated with the

email address [email protected], and may also be associated with the

physical address 2542 Pleasant Street, Oakland, California 94602.

73. Upon information and belief, discountvapor4you, through the




74. Upon information and belief, Defendant Francis Ferland (“Ferland”)

is a citizen of Canada, residing at 9-5060 Walkley, Montreal, Quebec H4V2M2.




19/58

1921671013.1

75. Upon information and belief, Ferland is involved in the sale and




exporting counterfeit ZIG-ZAG® Orange cigarette paper products into the United

States.

76. Upon information and belief, Defendant eBay Seller bestdealmontreal

(“bestdealmontreal”) is an eBay account associated with the email address

[email protected], and may also be associated with the physical

address 9-5060 Walkley, Montreal, Quebec H4V2M2.

77. Upon information and belief, bestdealmontreal, through the




78. Upon information and belief, Defendant DHGate Seller jackyhu

(“jackyhu”) is a citizen of China and is associated with the following address: GZ

Mald East Co., Ltd., Room 802, Block A, No. 18, Jichang Dongmen Street,

Jinzhong Heng Road, Baiyun District, Guangzhou 510000, China.

79. Upon information and belief, jackyhu is involved in the sale and





20/58

2021671013.1




States.

80. Upon information and belief, jackyhu has a pattern and practice of

masking his or her true identity in an effort to avoid detection in connection with

the sale of a variety of counterfeit goods, including ZIG-ZAG® Orange cigarette

paper products.

81. Upon information and belief, Defendant DHGate Seller kathy0577

(“kathy0577”) is a citizen of China who may be associated with the address GZ

Mald East Co., Ltd., Room 802, Block A, No. 18, Jichang Dongmen Street,

Jinzhong Heng Road, Baiyun District, Guangzhou 510000, China.

82. Upon information and belief, kathy0577 is involved in the sale and





States.

83. Upon information and belief, kathy0577 has a pattern and practice of




21/58

2121671013.1


paper products.

84. Upon information and belief, Defendant DHGate Seller cngzss

(“cngzss”) is a citizen of China who may be associated with the address GZ Mald

East Co., Ltd., Room 802, Block A, No. 18, Jichang Dongmen Street, Jinzhong

Heng Road, Baiyun District, Guangzhou 510000, China.

85. Upon information and belief, cngzss is involved in the sale and





States.

86. Upon information and belief, cngzss has a pattern and practice of



paper products.

87. Upon information and belief, Defendant DHGate Seller cngzss1

(“cngzss1”) is a citizen of China who may be associated with the address GZ Mald

East Co., Ltd., Room 802, Block A, No. 18, Jichang Dongmen Street, Jinzhong

Heng Road, Baiyun District, Guangzhou 510000, China.



22/58

2221671013.1

88. Upon information and belief, cngzss1 is involved in the sale and





States.

89. Upon information and belief, cngzss1 has a pattern and practice of



paper products.

90. North Atlantic believes that many of the aforementioned Defendants

are related to each other but does not yet know the details or extent of any such

relationships, and therefore sues these Defendants as separate individuals and

entities. North Atlantic will amend this Complaint as appropriate to allege the true

names and relationships between and among the Defendants if it ascertains the

same.

91. North Atlantic does not know the true names and capacities of the

Defendants sued herein as John Does #1 through #10, and therefore sues these

Defendants by such fictitious names. North Atlantic will amend this Complaint to

allege the true names and capacities of these Defendants if it ascertains the same.



23/58

2321671013.1

92. North Atlantic does not know the true names and capacities of the

Defendants sued herein as XYZ Companies #1 through #10, and therefore sues

these Defendants by such fictitious names. North Atlantic will amend this

Complaint to allege the true names and capacities of these Defendants if it

ascertains the same.

FACTS COMMON TO ALL CLAIMS

North Atlantic’s ZIG-ZAG® Brand Products

93.Since 1938, North Atlantic and its predecessor-in-interest have continuously

distributed ZIG-ZAG® brand cigarette paper products in the United States.

94.In 1997, North Atlantic was established to be the exclusive United States

distributor of authentic ZIG-ZAG® brand cigarette paper products.

95.Authentic ZIG-ZAG® brand cigarette paper products come in several

varieties, which differ in thickness, quality of paper, size, and the like.

96.Among the cigarette paper products distributed by North Atlantic in the

United States are ZIG-ZAG® 1¼ Size French Orange (“ZIG-ZAG® Orange”)

(shown below).



24/58

2421671013.1

97.Authentic ZIG-ZAG® Orange cigarette paper products are described as

easy rolling, slow-burning classic papers.

98.Authentic ZIG-ZAG® Orange products are manufactured in France using

the highest quality ingredients.

99.The products are then imported into the United States by North Atlantic and

are subject to strict and exacting quality control standards.

100. North Atlantic continually strives to ensure that all of its authentic

ZIG-ZAG® brand products, including ZIG-ZAG® Orange:

a. Are of uniform high quality;

b. Meet with North Atlantic’s precise quality standards; and

c. Properly display the ZIG-ZAG® and the NAOC® Trademarks

(defined herein) and other source identifiers.

101. If the products pass North Atlantic’s rigorous inspection, they are

sold directly to North Atlantic’s “direct accounts” (for the most part, variety

wholesale distributors throughout the United States).

102. North Atlantic’s direct accounts then distribute the products to

retailers and, in some cases, to other wholesale distributors.

103. Ultimately, the products are purchased and used by United States

consumers.



25/58

2521671013.1

North Atlantic’s ZIG-ZAG® and NAOC® Trademarks

104. As described below, all authentic ZIG-ZAG® Orange cigarette paper

products distributed by North Atlantic in the United States have continuously

displayed the following valid and subsisting trademarks, which appear on the

Principal Register in the United States Patent and Trademark Office (“USPTO”),

and which are incontestable:

a. Registration No. 610,530 for ZIG-ZAG (stylized)

b. Registration No. 1,127,946 for ZIG-ZAG (text)

c. Registration No. 2,169,540 for the Smoking Man Design

d. Registration No. 2,169,549 for the Smoking Man Design



26/58

2621671013.1

(together, the “ZIG-ZAG® Trademarks”) (true and accurate copies of the records

from the USPTO denoting the federal trademark registrations for the ZIG-ZAG®

Trademarks are annexed hereto as Exhibit A).

105. The exclusive distribution rights to the ZIG-ZAG® Trademarks are

held by North Atlantic pursuant to an exclusive trademark licensing/distribution

agreement with French company Bolloré, S.A., the trademark owner.

106. North Atlantic is also the owner of the federal trademark registrations

for the following NORTH ATLANTIC OPERATING COMPANY, INC. and Gear

Design trademarks, which appear on the Principal Register in the USPTO, and

which have become incontestable:

a. Registration Nos. 2,664,694 and 2,664,695

b. Registration Nos. 2,610,473 and 2,635,446

(together, the “NAOC® Trademarks) (true and accurate copies of the records from

the USPTO denoting the federal trademark registrations for the NAOC®

Trademarks are annexed hereto as Exhibit B).



27/58

2721671013.1

107. Like the ZIG-ZAG® Trademarks, the NAOC® Trademarks have

continuously been used on all authentic ZIG-ZAG® Orange cigarette paper

products distributed by North Atlantic in the United States.

108. Because of its tremendous sales history, and because of the exclusive,

lengthy, and extensive use of the ZIG-ZAG® and NAOC® Trademarks on goods

of superior quality, North Atlantic has developed substantial goodwill and a

reputation as the exclusive source of high-quality ZIG-ZAG® brand cigarette

paper products in the United States.

109. North Atlantic has also become known nationwide as the single

exclusive source of authentic ZIG-ZAG® brand cigarette paper products –

including ZIG-ZAG® Orange– and United States consumers naturally have come

to associate those products with North Atlantic.

110. As a result, the ZIG-ZAG® and NAOC® Trademarks are famous as a

matter of law.

North Atlantic’s NAOC© Copyright

111. North Atlantic also owns the federal copyright registration for the

visual material/computer graphic entitled “North Atlantic Operating Company,

Inc.” (the “NAOC© Copyright”) (a true and accurate copy of the registration

certificate issued by the U.S. Copyright Office to North Atlantic is annexed hereto

as Exhibit C).



28/58

2821671013.1

112. Currently, and at all relevant times, North Atlantic has been the

proprietor of all rights, title, and interest in and to the NAOC© Copyright.

113. The NAOC© Copyright also appears on all authentic ZIG-ZAG®

Orange cigarette paper products distributed by North Atlantic in the United States.

North Atlantic’s Highly Distinctive Product Packaging

114. The product packaging for North Atlantic’s authentic ZIG-ZAG®

Orange cigarette paper products is also highly distinctive.

115. As illustrated below, North Atlantic’s authentic ZIG-ZAG® Orange

product packaging features: (a) the ZIG-ZAG® and NAOC® Trademarks; (b) the

NAOC© Copyright; (c) gold-fill lettering and design elements; (d) French phrases

such as “Qualite Superieure” and “Braunstein Freres France”; and (e) the express

statement that such products are “Made in France” or “Imported French” and

“Distributed by North Atlantic Operating Company, Inc.”



29/58

2921671013.1

Booklet (inside) (Contains 32 Leaves of Paper)

(ZIG-ZAG® and NAOC® Trademarks and NAOC© Copyright)

Booklet (cover)

(ZIG-ZAG® Trademarks, including ZIG-ZAG® (stylized) and Smoking Man Design)



30/58

3021671013.1

Carton (Contains 24 Booklets)

(ZIG-ZAG® and NAOC® Trademarks and NAOC© Copyright)

Shipping Case (Contains 25 Cartons)



31/58

3121671013.1

(ZIG-ZAG® and NAOC® Trademarks and the NAOC© Copyright)

(“ZIG-ZAG® Orange Trade Dress”) (8 ½” x 11” versions of the above

photographs, and two additional photographs, are annexed hereto as Exhibit D).

116. Currently, and at all relevant times, North Atlantic has used the ZIG-

ZAG® Orange Trade Dress in commerce in the United States.

117. The ZIG-ZAG® Orange Trade Dress is arbitrary, non-functional, and

highly distinctive.



32/58

3221671013.1

118. The ZIG-ZAG® Orange Trade Dress has been extensively and

continuously used by North Atlantic, is inherently distinctive, and/or has become

distinctive through the acquisition of secondary meaning.

119. Upon information and belief, United States consumers who see the

ZIG-ZAG® Orange Trade Dress immediately associate it with North Atlantic.

Defendants’ Willfully Infringing Activities

120. Since early 2015, North Atlantic has been investigating the

distribution of counterfeit ZIG-ZAG® Orange over the Internet.

121. As a result of its investigation and subsequent litigation, North

Atlantic believes Defendants are responsible for manufacturing and/or importing

large quantities of counterfeit ZIG-ZAG® cigarette paper products into the United

States, and for distributing large quantities of counterfeit ZIG-ZAG® cigarette

paper products throughout the United States.

122. North Atlantic also believes that Defendants know that the purported

ZIG-ZAG® Orange cigarette paper products they are distributing are counterfeit,

but distribute them anyway to maximize their profits.

123. The key to Defendants’ scheme is the use of packaging that mimics

the packaging of authentic ZIG-ZAG® Orange distributed by North Atlantic;

namely, packaging that bears reproductions of the ZIG-ZAG® and NAOC®

Trademarks and unauthorized, unlicensed copies of the NAOC© Copyright, and



33/58

3321671013.1

that contains papers and packaging that are not manufactured pursuant to or

subject to North Atlantic’s strict quality control standards.

124. Furthermore, Defendants are obtaining and reselling purported ZIG-

ZAG® Orange products at prices far below the lowest available price North

Atlantic offers to its authorized dealers.

125. There are differences between authentic and counterfeit products,

including, but not limited to:

a. Cartons of counterfeit ZIG-ZAG® Orange are not distributed by

Defendants in branded shipping cases;

b. The overall print quality of the counterfeit cartons and booklets is

poor;

c. When laid flat, counterfeit cartons of ZIG-ZAG® Orange are slightly

shorter in height compared to authentic cartons of ZIG-ZAG®

Orange;

d. When laid flat, counterfeit booklets of ZIG-ZAG® Orange papers are

slightly longer compared to authentic cartons of ZIG-ZAG® Orange;

and

e. The glue line on the counterfeit papers is darker and thicker.

There are many additional differences between counterfeit and authentic products

that make it possible for North Atlantic’s product quality personnel to tell them



34/58

3421671013.1

apart. However, consumers who purchase the counterfeit products and use them

are unlikely to be able to tell the difference. Thus, any disappointment or harm

they experience from purchasing and using the counterfeit products is likely to be

attributed falsely to North Atlantic.

126. Similarly, North Atlantic cannot vouch for the counterfeit products’

safety or quality, since they have not, by definition, been subjected to North

Atlantic’s strict and exacting quality control tests.

127. North Atlantic also cannot tell what conditions the counterfeit

products have been subjected to, and it cannot vouch for the quality of the

ingredients used to manufacture them.

128. On information and belief, Defendants have been selling counterfeit

ZIG-ZAG® Orange to wholesalers and retailers in large quantities for significant

profits, as well as directly to individual consumers.

129. When Defendants sell counterfeit ZIG-ZAG® Orange to other

wholesalers, upon information and belief, those secondary wholesalers then in turn

sell the counterfeit ZIG-ZAG® Orange to retailers.

130. Regardless of whether there are intermediate wholesalers, once

retailers obtain the counterfeit ZIG-ZAG® Orange, they sell the counterfeit ZIG-

ZAG® Orange in the same retail outlets where consumers would expect to find



35/58

3521671013.1

authorized ZIG-ZAG® Orange, thereby directly competing with North Atlantic’s

authentic products.

131. Sales of counterfeit ZIG-ZAG® cigarette paper products replace sales

of authentic ZIG-ZAG® cigarette paper products one-for-one.

132. None of the Defendants are authorized or licensed to sell or distribute

any products bearing the ZIG-ZAG® or NAOC® Trademarks; nor are any of the

Defendants authorized or licensed to sell or distribute any product packaging that

simulates North Atlantic’s product packaging or that displays reproductions or

exact copies of the NAOC© Copyright.

133. Yet, upon information and belief, Defendants have done so willfully

to earn thousands of dollars’ worth of profits from counterfeit ZIG-ZAG® Orange,

in deliberate disregard of consumers’ health and safety.

Defendants’ Sale and Distribution of Counterfeit Products Through eBay

134. Based on an undercover investigation, as well as through information

obtained as a result of bringing this action, North Atlantic has evidence showing

that the Defendants are willfully selling and distributing counterfeit ZIG-ZAG®

Orange cigarette paper products in this Judicial District.

135. North Atlantic has confirmed that within the last year, Defendants

have collectively distributed hundreds of cartons of counterfeit ZIG-ZAG®



36/58

3621671013.1

Orange to wholesalers, retailers, and individual consumers, including to North

Atlantic’s own investigators.

136. North Atlantic has obtained samples of the counterfeit ZIG-ZAG®

Orange products sold directly from the Defendants. North Atlantic has obtained

sworn testimony and documentary evidence proving Defendants are responsible

for these counterfeit products. The details of North Atlantic’s investigation to date

are set forth below.

137. In the summer and fall of 2015, while surveying Internet

marketplaces where ZIG-ZAG® cigarette paper products are sometimes sold,

investigators working on behalf of North Atlantic identified various sellers on

eBay that were offering ZIG-ZAG® Orange at below market-value prices. Each

of these eBay sellers are named as the “eBay Seller” Defendants herein.

Additional eBay sellers were named as defendants in the original Complaint in this

action, and have since been dismissed from the litigation as a result of entering

into confidential settlement agreements.

138. Through its investigators, North Atlantic purchased cartons of ZIG-

ZAG® Orange from the eBay Seller Defendants. Payments for each of the

transactions were made through PayPal.

139. The prices at which the eBay Seller Defendants sold the purported

ZIG-ZAG® Orange products were significantly lower than the lowest published



37/58

3721671013.1

price available to wholesalers purchasing directly from North Atlantic. Attached

as Exhibit E is a list of the eBay Seller Defendants’ identifying details, dates of

purchases and receipt of the purported ZIG-ZAG® Orange, and cost per unit sold.

140. Each purchase from the eBay Seller Defendants was shipped to North

Atlantic’s investigators in Michigan, within this judicial district.

141. Each of the ZIG-ZAG® Orange cigarette paper products purchased

from the eBay Seller Defendants was subsequently sent from North Atlantic’s

investigators in Michigan to North Atlantic’s Quality Control Department in

Louisville, Kentucky. Quality control personnel there examined the products and

confirmed that they were counterfeit, rather than genuine in nature.

142. Upon information and belief, the eBay Seller Defendants knew when

they sold counterfeit ZIG-ZAG® Orange cigarette paper products to North

Atlantic’s undercover investigators that these products were not manufactured,

marketed, advertised, distributed, or sold by North Atlantic, and that they were

poor-quality imitations of North Atlantic’s authentic ZIG-ZAG® products.

143. Upon information and belief, the eBay Seller Defendants knew when

they sold counterfeit ZIG-ZAG® Orange cigarette paper products to North

Atlantic’s undercover investigators that these products were infringing, and knew

that they had no rights to sell or otherwise distribute counterfeit ZIG-ZAG®

products in packaging very similar to the ZIG-ZAG® Orange Trade Dress.



38/58

3821671013.1

144. After initiating this litigation, several of the eBay Seller Defendants

disclosed to North Atlantic their suppliers of the counterfeit ZIG-ZAG® Orange

cigarette paper products they had sold to North Atlantic’s investigators.

145. Defendants DHGate Seller jackyhu, DHGate Seller kathy0577,

DHGate Seller cngzss, and DHGate Seller cngzss1 (collectively, the “DHGate

Seller Defendants”) were identified by multiple eBay Seller Defendants as the

source of their counterfeit ZIG-ZAG® Orange cigarette paper products.

146. As a result of information provided by certain eBay Seller

Defendants, North Atlantic knows that the DHGate Seller Defendants have each

sold significant quantities of counterfeit ZIG-ZAG® Orange which ended up

being delivered within this judicial district.

147. Upon information and belief, the DHGate Seller Defendants knew

when they sold counterfeit ZIG-ZAG® Orange cigarette paper products to

American consumers, retailers, and wholesalers that these products were not

manufactured, marketed, advertised, distributed, or sold by North Atlantic, and

that they were poor-quality imitations of North Atlantic’s authentic ZIG-ZAG®

products.

148. Upon information and belief, the DHGate Seller Defendants knew

when they sold counterfeit ZIG-ZAG® Orange cigarette paper products to

American consumers, retailers, and wholesalers that these products were



39/58

3921671013.1

infringing, and knew that they had no rights to sell or otherwise distribute

counterfeit ZIG-ZAG® products in packaging very similar to the ZIG-ZAG®

Orange Trade Dress.

Defendants’ Distribution of Counterfeit ZIG-ZAG® Products is Willful

149. The Defendants’ adoption of the ZIG-ZAG® and NAOC®

Trademarks, the NAOC© Copyright, and the ZIG-ZAG® Orange Trade Dress is

not only unauthorized, but, as set forth in detail below, is intentional, willful, and

malicious, and was done in intentional, willful, and malicious disregard of North

Atlantic’s rights and consumers’ interests.

150. Upon information and belief, Defendants and their downstream

customers have been distributing counterfeit ZIG-ZAG® Orange cigarette paper

products in counterfeit packaging, knowing full well of North Atlantic’s prior,

exclusive rights in those products and packaging.

151. Upon information and belief, Defendants knew their activities

described above were illegal and violated North Atlantic’s trademark rights,

copyrights, and protected trade dress, but they engaged in these activities anyway

for their own financial gain, and to the detriment of consumers.

152. Upon information and belief, Defendants engaged and continue to

engage in their counterfeiting scheme with the specific intent to trade on and



40/58

4021671013.1

benefit from the goodwill and value established by North Atlantic and North

Atlantic’s reputation.

The Irreparable Harm to North Atlantic

153. Defendants’ willful misconduct, described above, is depriving North

Atlantic of the absolute right to control the quality of products distributed using its

ZIG-ZAG® and NAOC® Trademarks, NAOC© Copyright, and ZIG-ZAG®

Orange Trade Dress.

154. In so doing, Defendants are jeopardizing the enormous goodwill and

value associated with those Trademarks and the NAOC© Copyright, and with the

ZIG-ZAG® Orange Trade Dress, which North Atlantic and/or its predecessor-in-

interest have built up over the past century.

155. Exacerbating the risk of injury to North Atlantic is the fact that

Defendants’ counterfeit products are of a vastly inferior quality, compared with

North Atlantic’s authentic ZIG-ZAG® brand products, and are made with

materials of unknown origin, but yet look very similar to the average consumer.

156. Consumers deceived by Defendants’ simulated ZIG-ZAG® Orange

Trade Dress have and will purchase Defendants’ counterfeit products instead of

North Atlantic’s authentic products.



41/58

4121671013.1

157. Thus, consumers are likely to think less favorably of North Atlantic

than if they had purchased North Atlantic’s high-quality authentic products, as

they probably intended to do.

158. As a direct and proximate result of the foregoing, North Atlantic has

suffered and, unless Defendants’ conduct is enjoined by this Court, will continue

to suffer actual economic damages in the form of lost sales, revenues, and profits,

as well as immediate and irreparable harm for which it has no adequate remedy at

law.

COUNT ONE

(Federal Trademark Infringement in Violation of 15 U.S.C. § 1114)

159. North Atlantic realleges and incorporates by reference the allegations

in the preceding paragraphs of this Complaint, as if fully set forth herein.

160. In violation of 15 U.S.C. § 1114, Defendants used in commerce,

without North Atlantic’s consent, either a reproduction, counterfeit, copy, or

colorable imitation of the NAOC® Trademarks and the ZIG-ZAG® Orange Trade

Dress in connection with the sale, offering for sale, distribution, or advertising of

counterfeit ZIG-ZAG® Orange cigarette paper products, which is likely to cause

confusion, or to cause mistake, or to deceive.



42/58

4221671013.1

161. Defendants’ actions constitute willful infringement of North

Atlantic’s exclusive rights in and to the NAOC® Trademarks and the ZIG-ZAG®

Orange Trade Dress.

162. As a direct and proximate result of Defendants’ willful misconduct,

North Atlantic has suffered irreparable harm to the value and goodwill associated

with the NAOC® Trademark and the ZIG-ZAG® Orange Trade Dress and their

reputation in the industry.

163. Unless Defendants are restrained from further infringement of the

NAOC® Trademarks and the ZIG-ZAG® Orange Trade Dress, North Atlantic will

continue to be irreparably harmed.

164. North Atlantic has absolutely no adequate remedy at law that will

compensate for the continued, irreparable harm that it will suffer if Defendants’

willful misconduct is allowed to continue.


North Atlantic has suffered damages to the valuable NAOC® Trademarks and

ZIG-ZAG® Orange Trade Dress and other damages in an amount to be proved at

trial.

COUNT TWO

(False Designation of Origin and Trademark/Trade Dress Infringement

In Violation of 15 U.S.C. § 1125(a))



43/58

4321671013.1



167. In violation of 15 U.S.C. § 1125(a), Defendants, in connection with

the counterfeit ZIG-ZAG® Orange cigarette paper products, used in commerce a

slogan, trade dress, word, term, name, symbol, or device, or any combination

thereof, or a false designation of origin, false or misleading description of fact, or

false or misleading representation of fact, which was or is likely to cause

confusion or to cause mistake, or to deceive as to an affiliation, connection, or

association with North Atlantic.

168. Without limitation, Defendants have willfully infringed North

Atlantic’s exclusive rights in and to the ZIG-ZAG® and NAOC® Trademarks and

the ZIG-ZAG® Orange Trade Dress.


North Atlantic has suffered and is suffering irreparable harm to the value and

goodwill associated with the ZIG-ZAG® and NAOC® Trademarks and the ZIG-

ZAG® Orange Trade Dress, and North Atlantic’s reputation as a distributor of

high-quality ZIG-ZAG® brand cigarette paper products.


ZIG-ZAG® and NAOC® Trademarks and the ZIG-ZAG® Orange Trade Dress,

North Atlantic will continue to be irreparably harmed.



44/58

4421671013.1


compensate for the continued and irreparable harm they will suffer if Defendants’



North Atlantic has suffered damages to the valuable ZIG-ZAG® and NAOC®

Trademarks and the ZIG-ZAG® Orange Trademarks and other damages in an

amount to be proved at trial.

COUNT THREE

(Federal Copyright Infringement in Violation of 17 U.S.C. §§ 101 et seq.)



174. Currently, and at all relevant times, North Atlantic has been the sole

proprietor of all right, title, and interest in and to the NAOC© Copyright. As

provided by 17 U.S.C. § 106, North Atlantic has the exclusive right to, inter alia,

reproduce, distribute, publicly display, and create derivative works from the

NAOC© Copyright.

175. North Atlantic has registered its claim to copyright in the NAOC©

Copyright. North Atlantic possesses a copyright registration certificate for the

NAOC© Copyright dated October 11, 2002.



45/58

4521671013.1

176. Defendants, acting independently and in conspiracy with one another,

have directly infringed the NAOC© Copyright by unlawfully reproducing,

transmitting, distributing, publicly displaying, and creating derivative works based

on the NAOC© Copyright, all in violation of North Atlantic’s exclusive rights

under 17 U.S.C. § 106.

177. Upon information and belief, the foregoing actions of Defendants in

violation of North Atlantic’s rights have been willful and intentional, executed

with full knowledge of North Atlantic’s exclusive rights in the NAOC©

Copyright, and in conscious disregard of those rights.

178. North Atlantic is entitled to recover from Defendants the profits that

Defendants obtained through infringements of the NAOC© Copyright, as well as

North Atlantic’s damages from those infringements, or, at North Atlantic’s

election, statutory damages pursuant to 17 U.S.C. § 504.

179. North Atlantic is also entitled to recover costs and attorneys’ fees

from Defendants pursuant to 17 U.S.C. § 505.

180. Defendants’ willful infringements of North Atlantic’s NAOC©

Copyright has caused, and unless enjoined by this Court, will continue to cause,

irreparable injury to North Atlantic, which is not fully compensable in monetary

damages. North Atlantic is therefore entitled to preliminary and permanent



46/58

4621671013.1

injunctions prohibiting Defendants from further infringing North Atlantic’s

NAOC© Copyright.

COUNT FOUR (Improper Use under MCL § 429.42)



182. In violation of MCL § 429.42, Defendants used in commerce, without

North Atlantic’s consent, either a reproduction, counterfeit, copy, or colorable

imitation of the NAOC® Trademarks and the ZIG-ZAG® Orange Trade Dress in

connection with the sale, offering for sale, or advertising of counterfeit ZIG-

ZAG® Orange cigarette paper products, which is likely to cause confusion, or to

cause mistake, or to deceive.

183. Also in violation of MCL § 429.42, Defendants, in connection with



thereof, or a false designation of origin, false or misleading representation of fact,

which was or is likely to cause confusion or to cause mistake, or to deceive as to

an affiliation, connection, or association with North Atlantic.



47/58

4721671013.1

184. Defendants’ actions constitute willfully improper use, reproduction,

or imitation of North Atlantic’s exclusive rights in and to the NAOC Trademarks®

and the ZIG-ZAG® Orange Trade Dress.





186. Unless Defendants are restrained from further use, reproduction, or

imitation of the NAOC® Trademarks and the ZIG-ZAG® Orange Trade Dress,

North Atlantic will continue to be irreparably harmed.





North Atlantic has suffered damages to the valuable NAOC® Trademarks and the


trial.



48/58

4821671013.1

COUNT FIVE

(Unfair Competition under MCL § 445.903)



190. In violation of MCL § 445.903, Defendants used in commerce,

without North Atlantic’s consent, either a reproduction, counterfeit, copy, or

colorable imitation of the NAOC® Trademarks and the ZIG-ZAG® Orange Trade

Dress in connection with the sale, offering for sale, or advertising of counterfeit

ZIG-ZAG® Orange cigarette paper products, which is likely to cause confusion,

or to cause mistake, or to deceive.

191. Also in violation of MCL § 445.903, Defendants, in connection with



thereof, or a false designation of origin, false or misleading representation of fact,

which was or is likely to cause confusion or to cause mistake, or to deceive as to

an affiliation, connection, or association with North Atlantic.

192. Defendants’ actions constitute unfair, unconscionable, or deceptive

methods, acts or practices in conduct of trade or commerce and interfere with

North Atlantic’s exclusive rights in and to the NAOC Trademarks® and the ZIG-

ZAG® Orange Trade Dress.



49/58

4921671013.1





194. Unless Defendants are restrained from further unfair, unconscionable,

or deceptive methods, acts or practices in conduct of trade or commerce that

interferes with North Atlantic’s exclusive rights to the NAOC® Trademarks and

the ZIG-ZAG® Orange Trade Dress, North Atlantic will continue to be irreparably

harmed.





North Atlantic has suffered damages to the valuable NAOC® Trademarks and the


trial.

COUNT SIX(Common Law Unfair Competition)





50/58

5021671013.1

198. In violation of the common law of the State of Michigan and

elsewhere, Defendants have unfairly competed with North Atlantic by

manufacturing, selling, offering for sale, and/or distributing counterfeit ZIG-

ZAG® Orange cigarette paper products and therefore appropriating a distinctive

portion of the ZIG-ZAG® and NAOC® Trademarks and the ZIG-ZAG® Orange

Trade Dress.

199. Defendants’ willful misconduct caused confusion and uncertainty in

North Atlantic’s business by deceiving and misleading the public, who with such

reasonable care and observation as the public generally are capable of using and

may be expected to exercise, is likely to mistake Defendants’ counterfeit products

with those sold by North Atlantic.






NAOC® Trademarks and the ZIG-ZAG® Orange Trade Dress, North Atlantic will

continue to be irreparably harmed.



51/58

5121671013.1





North Atlantic has suffered damages to the valuable NAOC® Trademarks and


trial.

WHEREFORE, North Atlantic respectfully requests the Court to enter

judgment in its favor and against Defendants, and each of them, and award North

Atlantic relief as follows:

1. For judgment that:

a. Defendants have violated Section 32 of the Lanham Act, 15 U.S.C. §

1114;

b. Defendants have violated Section 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a);

c. Defendants have violated the Copyright Act of 1976, 17 U.S.C. §§

101 et seq.;

d. Defendants have violated MCL § 429.92;

e. Defendants have violated MCL § 445.903;



52/58

5221671013.1

f. Defendants have unfairly competed with North Atlantic, in violation

of Michigan common law; and

g. In all instances, Defendants acted in bad faith, willfully, intentionally,

and/or in malicious disregard of North Atlantic’s lawfully protected

rights.

2. For an order enjoining Defendants, their affiliates, subsidiaries, parents, and

their respective officers, agents, servants, attorneys, and employees, and all

persons in active concert or participation with them, and mandating that

Defendants forever cease and desist and refrain from, anywhere in the

world:

a. Directly or indirectly importing, manufacturing, distributing,

advertising, promoting, making, purchasing, offering for sale, or

selling any counterfeit ZIG-ZAG® brand cigarette paper products,

including, but not limited to, ZIG-ZAG® Orange, or any ZIG-ZAG®

brand products not sold under the authority of North Atlantic, or any

packaging for same, containing infringing ZIG-ZAG® or NAOC®

Trademarks or the NAOC© Copyright, or any colorable imitation

thereof, or simulating the ZIG-ZAG® Orange Trade Dress;

b. Selling or passing off, or inducing or enabling others to sell or pass

off, any of North Atlantic’s products, or products not authorized by



53/58

5321671013.1

North Atlantic, not produced, imported, and distributed under the

control or supervision of North Atlantic, and/or approved for sale in

the United States, under the ZIG-ZAG® or NAOC® Trademarks or

the NAOC© Copyright or the ZIG-ZAG® Orange Trade Dress;

c. Committing any acts calculated to cause purchasers to believe that

counterfeit or infringing ZIG-ZAG® brand cigarette paper products

are sold under the control or supervision of North Atlantic when they

are not;

d. In any way infringing or damaging the ZIG-ZAG® or NAOC®

Trademarks, the NAOC© Copyright, or the ZIG-ZAG® Orange

Trade Dress;

e. Importing, shipping, delivering, distributing, returning, or otherwise

disposing of, in any manner, products or inventory not authorized by

North Atlantic to be sold or offered for sale in the United States

bearing the ZIG-ZAG® or NAOC® Trademarks, the NAOC©

Copyright, or ZIG-ZAG® Orange Trade Dress;

f. Otherwise unfairly competing with North Atlantic in any manner;

g. Attempting, causing, or assisting any of the above-described acts,

including, but not limited to, enabling others to conduct the scheme

described above, or by passing along information to others to allow



54/58

5421671013.1

them to import, manufacture, distribute, advertise, promote, make,

purchase, offer for sale, or sell counterfeit or infringing ZIG-ZAG®

brand cigarette paper products, including, but not limited to, ZIG-

ZAG® Orange; and

h. Destroying or disposing of any documents, records, or electronically-

stored information related to the import, manufacture, distribution,

advertisement, promotion, making, purchase, offers to sell, or sale of

any product that has been or is intended to be sold in packaging

containing the ZIG-ZAG® or NAOC® Trademarks or the NAOC©

Copyright or simulating the ZIG-ZAG® Orange Trade Dress.

3. For an order enjoining Defendants and their agents, employees,

representatives, successors, and assigns from forming or causing to be

formed any corporation, partnership, or other entity that engages in any of

the conduct described above.

4. For an order requiring Defendants to cooperate with North Atlantic in good

faith in its investigation of counterfeit sales at their retail and wholesale

establishments, including, without limitation, by:

a. Permitting North Atlantic representatives or their designees to

conduct inspections of Defendants’ inventories of cigarette paper

products to determine whether any cigarette paper products bearing



55/58

5521671013.1

the ZIG-ZAG® or NAOC® Trademarks or the NAOC© Copyright,

or housed in any packaging simulating the ZIG-ZAG® Orange Trade

Dress, are counterfeit, and to retain possession of any such counterfeit

products;

b. Responding to reasonable requests for information about Defendants’

source(s) of ZIG-ZAG® brand cigarette paper products; and

c. Cooperating with North Atlantic representatives or their designees in

their investigations of any source(s) of ZIG-ZAG® brand cigarette

paper products.

5. For an order:

a. Requiring Defendants to account for and pay over to North Atlantic

all profits derived from their wrongful misconduct to the full extent

provided for by Section 35(a) of the Lanham Act, 15 U.S.C. §

1117(a);

b. Requiring Defendants to account for and pay to North Atlantic

enhanced damages resulting from their wrongful misconduct to the

full extent provided for by Section 35(b) of the Lanham Act, 15

U.S.C. § 1117(b);



56/58

5621671013.1

c. Awarding North Atlantic damages, or statutory damages in an amount

not less than $2 million ($2,000,000) per trademark pursuant to

Section 35(c) of the Lanham Act, 15 U.S.C. § 1117(c);

d. Requiring Defendants to account for and pay to North Atlantic all

profits derived from their wrongful misconduct, to the full extent

provided for by the Copyright Act, 17 U.S.C. § 504;

e. Awarding North Atlantic damages, or statutory damages in an amount

not less than $150,000 per infringement of the NAOC© Copyright

which occurred after the filing of its copyright application against

each of the Defendants separately and jointly;

f. Awarding North Atlantic damages to the full extent provided by

Michigan state statutory and common law;

g. Awarding North Atlantic its costs of suit, including reasonable

attorneys’ fees; and

h. Such other and further relief as this Court deems just and proper.

DEMAND FOR JURY TRIAL

North Atlantic hereby demands trial by jury of all issues so triable under the

law as provided by Rule 38(a) of the Federal Rules of Civil Procedure.



57/58

5721671013.1

Respectfully submitted,

North Atlantic Operating Company, Inc.; National Tobacco Company, L.P.

Date: May 13, 2016 By: /s/ Andrew M. PauwelsHONIGMAN MILLER SCHWARTZAND COHN LLP

J. Michael Huget (P 39150)Deborah J. Swedlow (P 67844)Andrew M. Pauwels (P 79167)315 E. Eisenhower Parkway, Suite 100Ann Arbor, Michigan 48108

Phone: (734) [email protected] [email protected]@honigman.com

Marcella [email protected] Rothaus

[email protected]

1270 Avenue of the Americas, 25th Floor New York, NY 10020(212) 307-5500(212) 307-5598 fax

Attorneys for Plaintiffs

North Atlantic Operating Company, Inc.

and National Tobacco Company, L.P.


mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]


58/58

INDEX OF EXHIBITS

Exhibit A – U.S. trademark registration certificates for the ZIG-ZAG®Trademarks

Exhibit B – U.S. trademark registration certificates for the NAOC® Trademarks

Exhibit C – U.S. Copyright Office registration certificate for the NAOC©Copyright

Exhibit D – Photographs of ZIG-ZAG® Orange Trade Dress

Exhibit E – Chart identifying Defendants’ names, dates of each purchase of purported ZIG-ZAG® Orange, and cost per unit sold


north atlantic operating co. v. huang - zig zag trademark complaint.pdf

Documents