Professional Documents
Culture Documents
Defendants.
/
Counter-Plaintiff,
v.
Counter-Defendants.
/
INTRODUCTION
1. This action arises out of Counter-Defendants blatant attempts to exploit for their
respected progressive electronic music artist and producer, Joel Zimmerman, whose stage name is
deadmau5 (pronounced dead mouse). Over the course of his storied career, deadmau5 has
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released scores of critically acclaimed and chart-topping albums and singles, garnered millions of
fans, won multiple prestigious music industry awards, and given record-breaking performances at
some of the worlds most legendary venues, festivals, and award ceremonies. Indeed, deadmau5
has achieved national and international fame and had near ubiquity at all relevant times in his,
PhD, and is commonly referred to as Prof. Meowingtons, and Meowingtons has become
widely recognized in his own right and gained substantial fans and followers on social media.
used MEOWINGTONS as a trademark in commerce in the United States in 2011 through his
wholly-owned entities, including Ronica Holdings Limited (Ronica) and then Counter-Plaintiff,
performances and related services, deadmau5 has, through Prof. Meowingtons Ltd., used it on
consumer goods. As a result of this widespread and continuous use of the MEOWINGTONS mark
and public exposure and commercial success, valuable goodwill has accrued in the
MEOWINGTONS mark.
5. In the years between deadmau5s first use of the MEOWINGTONS mark in 2011
and Counter-Defendants first purported use of the same mark in April of 2014, deadmau5 sold
Hax Tour, which played across the United States and Canada, released a Meowington Hax Tour
Trax album, and released a Meowington Hax video. During this period, deadmau5 also sold
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Prof. Meowingtons Ltd. was formed on September 11, 2015 for the purpose of, among other
things, owning and commercializing the intellectual properties and business to which the
MEOWINGTONS mark pertains, which was done through Ronica Holdings Limited before.
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caused actual confusion in the marketplace, with customers mistaken and confused into believing
that Counter-Defendants are affiliated with deadmau5. This is a point that is unequivocally
admitted and affirmatively asserted by Counter-Defendants in the Complaint (Dkt. No. 1 at 25,
69, 77).
already started to tarnish the reputation and goodwill associated with the mark. For example,
according to the Better Business Bureau, Counter-Defendants business activities under the
MEOWINGTONS mark are so untrustworthy and the products they offer so inferior that their
business was rated F.2 Given the perceived affiliation and admitted confusion between Counter-
Defendants on the one hand and Counter-Plaintiff and deadmau5 on the other, the goodwill and
reputation associated with the MEOWINGTONS mark are and continue to be irreparably
damaged.
10. Despite deadmau5 and Counter-Plaintiffs prior use of the MEOWINGTONS mark
in connection with headphones, music, musical performances, and apparels which Counter-
Defendants recognized and admitted in the Complaint (Dkt. No. 1 at 31) on information and
2
See copies of complaints submitted to the Better Business Bureau about Counter-Defendants
business activities attached hereto as Exhibit 13.
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belief, they fraudulently procured the registration of the MEOWINGTONS mark shown in
11. Even worse, they have sued deadmau5, Ronica, and Prof. Meowingtons Ltd. for
purported first use by several years somehow infringes their purported trademark rights in the
MEOWINGTONS mark.
12. Despite deadmau5 and Prof. Meowingtons Ltd.s repeated efforts to resolve the
dispute amicably with Counter-Defendants, they refuse to acknowledge and remedy their
wrongdoing. Instead, they brought this meritless trademark infringement action against deadmau5
Prof. Meowingtons Ltd., and Ronica, thereby necessitating this Counterclaim Complaint. Because
Prof. Meowingtons Ltd. has been harmed and will continue to be harmed unless Counter-
Defendants are enjoined from their infringing activities, Prof. Meowingtons Ltd. brings this
Counterclaim Complaint, seeking, among other things, actual damages, punitive damages, and
injunctive relief.
THE PARTIES
13. Counter-Plaintiff Prof. Meowingtons Ltd. is a Canadian corporation with its
principal place of business at 16000 Ventura Boulevard, Suite 600, Encino, California 91436.
wholly-owned and controlled by Joel Zimmerman p/k/a deadmau5.3 It was formed on September
11, 2015 for the purpose of, among other things, owning and commercializing the intellectual
properties and business to which the MEOWINGTONS mark pertains. Along with its predecessor,
Meowingtons Ltd.
3
The MEOWINGTONS mark was always wholly owned by Mr. Zimmerman, first through his
wholly owned entity Ronica Holdings Limited, and then through Counter-Plaintiff. In the factual
summary, deadmau5 is meant to include all of Mr. Zimmermans wholly owned entities.
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at 20 John Street, Suite 318, Toronto M5V0G5, Canada, and with a registered agent for service of
Meowingtons, LLC has marketed and offered, and continues to market and offer, services and
is from Toronto, Canada, and currently resides in the Southern District of Florida. On information
and belief, Bassiri has been at all relevant times, and currently is, a Manager of Counter-Defendant
Meowingtons, LLC. Bassiri has marketed and offered, and continues to market and offer, services
and products under the MEOWINGTONS mark without Meowingtons Ltd.s authorization or
consent throughout the United States. According to the USPTO database, Bassiri submitted
Application 86/338,038 to register MEOWINGTONS and made the following statement under
The signatory believes that to the best of the signatorys knowledge and belief, no
other person has the right to use the mark in commerce, either in the identical
to deceive. The signatory being warned that willful false statements and the like are
that such willful false statements and the like may jeopardize the validity of the
made of his/her own knowledge are true and all statements made on information
who is from Toronto, Canada,4 and currently resides in the Southern District of Florida. Hutchison
4
There is another Scott Hutchison, the frontman of Scottish indie rock band Frightened Rabbit;
that Scott Hutchison is not a Counter-Defendant. deadmau5 has no dispute with Frightened Rabbit.
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has been at all relevant times, and currently is, a Manager of Counter-Defendant Meowingtons
LLC. Hutchison has marketed and offered, and continues to market and offer, services and
products under the MEOWINGTONS mark without Meowingtons Ltd.s authorization or consent
throughout the United States. Prior to the alleged first use of the MEOWINGTONS mark by
Meowingtons, LLC on April 1, 2014, Hutchison was a DJ in the Toronto area under the name
Hutch. During that period, Hutchison posted photographs of himself playing deadmau5 tracks,
as shown below, as early as April 16, 2010. It is simply inconceivable that Hutchison, as a manager
of Meowingtons, LLC and a Toronto-area DJ, was unaware of the existence of MEOWINGTONS
as of April 1, 2014.
17. This is a counterclaim for trademark infringement and false association under the
Trademark Act of 1946, as amended, 15 U.S.C. 1051 et seq. (the Lanham Act), and for
18. This Court has jurisdiction over the Lanham Act claims pursuant to 15 U.S.C.
1121 and 28 U.S.C. 1331 and 1338. Supplemental jurisdiction exists over the Florida common
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19. Venue lies in this district under 28 U.S.C. 1391(b) and (c) because the parties are
located in and/or transact their affairs in this judicial district, and/or a substantial part of the events
or omissions giving rise to the claim occurred in this judicial district, and all the parties are subject
to this Courts personal jurisdiction. Both individual Counter-Defendants have indicated to the
Florida Secretary of State that they reside in Fort Lauderdale, and the LLC Counter-Defendant
lists its address as within the District. Moreover, Plaintiff initiated this action in this judicial
district.
20. deadmau5s prolific career as an artist, composer, performer, and producer has been
both ground- and record-breaking. Today, deadmau5 is universally recognized as one of the most
dominant figures in the electronic dance music (EDM) movement that has swept the United States
and the globe over the past decade and a half. deadmau5 has graced the cover of VIBE, Rolling
Stone, Inked and NME, among others. As noted by USA Today and Your EDM magazine, over
the past 14 years, deadmau5 has dominate[d] the EDM scene in large part due to his efforts to
painstakingly curat[e] and develop[] an iconic, recognizable brand. Attached as Exhibit 2 are
true and correct copies of the aforementioned USA Today and Your EDM articles.
21. Since 2002, deadmau5 has released over 100 solo and collaborative albums, EPs,
and singles, and has had his works featured in dozens more compilation albums. His album
while(1<2) debuted atop Billboard magazines Dance/Electronic Albums chart in the summer of
2014 as deadmau5s second consecutive No. 1 album following >album title goes here<.
while(1<2) also rose to number 9 in the top 20 of Billboards Top 200 and number 4 on Billboards
5
As used in this Counterclaim, deadmau5 refers to Mr. Zimmerman and his team in their
professional capacity. Where Mr. Zimmerman is being referred to in his personal capacity, he is
simply referred to by name.
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Digital Albums chart, and was nominated for a Grammy in the Best Dance/Electronic Album
category.
22. In addition to audio works, deadmau5 has released for sale DVDs containing
footage from two of his more momentous performances to date: deadmau5 live @ earls court,
and Meowingtons Hax 2k11 TORONTO, which he named after his cat, Meowingtons.
23. The second DVD Meowingtons Hax 2k11 TORONTO contains footage from
the final stop of deadmau5s record-setting Meowingtons Hax North American tour, which
launched on August 5, 2011 at Lollapalooza in Chicago and concluded on November 5, 2011 with
a show at Torontos Rogers Centre (about 500 yards from Bassiris home at the time). During this
tour, deadmau5 became the first electronic music artist to headline the Lollapalooza music festival
as well as the first Canadian musical artist (of any genre) to headline the stadium-sized Rogers
Centre (formerly known as the SkyDome, home of the Blue Jays). Attached hereto as Exhibit 3
are true and correct copies of the cover of the Meowingtons Hax 2k11 TORONTO DVD, a printout
of the iTunes product page for the DVD, and articles from the Toronto Star and Examiner.com
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24. On July 1, 2014, deadmau5 served as Grand Marshal in the Canada Day parade put
on by Niagara Falls, Ontario, and was given the key to the city.
25. deadmau5, through his wholly-owned and controlled holding companies, owns
several trademarks related to the deadmau5 name and brand, including MEOWINGTONS, and
has sought to exploit the reach of his brand through a highly successful and profitable licensing
and merchandising program using his music and intellectual properties in or on a wide range of
goods. deadmau5 is extremely selective in choosing licensees, and carefully controls and monitors
the quality of the licensed products and services produced by these licensees as they are a reflection
26. Goods bearing deadmau5s marks have been offered through nationwide chains
such as Target, Hot Topic, Spencers Gifts, Forever 21, Party City, Tillys, and Torrid, as well as
through music merchandising companies that specialize in selling artists merchandise to fans and
novelty stores. For example, until very recently, major music merchandiser LiveNation and its
subsidiaries operated deadmau5s official online store, handled merchandise sales at deadmau5s
concerts, and were the largest sellers of deadmau5 merchandise through other outlets. deadmau5
II. deadmau5s Prior Use of the MEOWINGTONS Mark and Senior Rights Thereto
A. Origin of the MEOWINGTONS Name and Its Introduction to the World
27. In January 2010, Mr. Zimmerman adopted a black and white cat from the Toronto
Humane Society. Because of the cats incessant meowing, he named the cat Prof. Meowingtons,
Meowingtons dating back to January 2010 are on YouTube, many of them with hundreds of
thousands of views.
29. In or about April 2010, deadmau5 created a separate Facebook account for
Meowingtons that has over 95,000 likes, and in June 2010, deadmau5 posted a photo album
titled me ow ing tons on his deadmau5 Facebook page, which has nearly 9 million likes,
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account has approximately 31,000 followers and is a verified account a status reserved only
for celebrities, public figures, and other accounts of public interest. Meowingtons also has a second
Twitter account, @meowingtons, as well as his own verified Instagram account, @meowingtons,
which has over 19,000 followers. Attached hereto as Exhibits 4, 5 and 6 are true and correct copies
of Meowingtons Facebook, Twitter, and Instagram account profiles, respectively. Attached hereto
as Exhibit 7 is a true and correct copy of the search results for Meowingtons on YouTube.
30. Meowingtons fame has been recognized by media outlets such as Toronto Life
magazine, who in November 2011 published an article about deadmau5, noting that Meowingtons
has become a starring character in Zimmermans online universe, and further noting that the cat
has his own Facebook page with tens of thousands of fans. A photo of deadmau5 wearing his
iconic mau5head and holding Meowingtons is featured prominently at the top of the article, a true
31. Like deadmau5, Meowingtons has also gained his fair share of unsolicited media
and fan attention. For example, in 2012, photos of celebrity cat Meowingtons were featured on
poshpetsblog.com. Also in 2012, a fan created a tumblr fanblog dedicated to Meowingtons titled
Fuck Yeah Meowingtons, which features hundreds of photos of Meowingtons along with
deadmau5. True and correct copies of these blog posts are attached hereto as Exhibit 9.
32. Beginning in 2011, deadmau5 and his management team began taking steps to
convert Meowingtons (the cat)s rising fame into a commercial and artistic opportunity. This
transformation took a number of forms, all of which were aimed at turning the name of
6
As used in this Counterclaim, Meowingtons refers to the cat, and MEOWINGTONS refers to
the mark as used in commerce.
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33. First, in the fall of 2011, deadmau5 launched a groundbreaking North American
music tour utilizing the MEOWINGTONS mark the Meowingtons Hax Tour. As discussed
above, the Meowingtons Hax Tour began on August 5, 2011 at Lollapalooza in Chicago. During
this tour, deadmau5 became the first electronic music artist to headline Lollapalooza. Promotional
materials and merchandise (e.g., posters, t-shirts, etc.) for the tour, examples of which are depicted
below, bear the MEOWINGTONS mark as well as cartoon images of Meowingtons wearing a
34. As part of the promotion for the Meowingtons Hax Tour, on August 25, 2011,
deadmau5 released a compilation album on his mau5trap label titled Meowingtons Hax Tour Trax,
which includes tracks from renowned music artists including himself, Skrillex, Tommy Lee, DJ
Aero, and Feed Me. The front and back cover of the album prominently bear the
MEOWINGTONS mark and images of Meowingtons and deadmau5 similar to the artwork used
35. In connection with the Meowingtons Hax Tour and continuing to the present,
deadmau5 marketed extensive merchandise featuring the MEOWINGTONS mark, both on its own
and as a secondary source indicator in connection with Meowingtons and deadmau5. To date,
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commerce in the United States alone. A significant portion of those sales pre-date Plaintiffs
36. For example, in November of 2011, deadmau5 began causing Meowington Hax t-
shirts to be shipped in interstate commerce to Hot Topic: ultimately, more than 16,000 units of
these shirts were sold throughout the United States. On information and belief, Hot Topic has more
37. The Meowingtons Hax tour ended on November 5, 2011, with a 20,000-strong
crowd at Torontos Rogers Centre (formerly known as the SkyDome, and home of the Blue Jays),
which is a mere mile away from OCAD (Ontario College of Arts and Design), where Bassiri was
then attending her third year of college. deadmau5 was the first Canadian musical artist of any
38. Despite the tour ending in 2011, deadmau5 continued to promote the
MEOWINGTONS mark from 2012 to the present, independently of any particular event. Simply
by way of example:
be transported in interstate commerce to Spencers, another retailer that, on information and belief,
has more than 500 stores across America. More than 6,500 units of that shirt alone have been sold
in interstate commerce.
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company, to design and sell limited edition high-end MEOWINGTONS branded headphones the
first ever headphones designed specifically for cats. The marketing materials bear the
below.
Indeed, the headphones themselves bear the MEOWINGTONS mark as depicted below.
The commercial for the MEOWINGTONS headphones, in which Meowingtons appears (available
at https://www.youtube.com/watch?v=YEk-Gp2uojM and
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e. Beginning in 2011, merchandise bearing the MEOWINGTONS mark was also sold
at deadmau5 tours. Thousands of units of MEOWINGTONS merchandise were sold under the
2012 album >album title goes here<. This album debuted at number 6 on the Billboard 200 and
at number 1 on Billboard magazines Dance/Electronic Albums chart. The album also peaked at
g. On March 19, 2013, deadmau5, through Ultra Records, released for sale a DVD
titled Meowingtons Hax 2k11 TORONTO, which features live footage from the final stop of the
momentous Meowington Hax Tour at the Rogers Center. The DVD cover bearing the
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by Mr. Zimmerman, filed U.S. Trademark Application Serial No. 86/719,048 for the mark PROF.
MEOWINGTONS, covering certain goods and services in International Classes 9, 16, 18, 21, 24,
25, 28, and 41. On May 19, 2016, the USPTO issued an Office action refusing registration because
of a likelihood of confusion with the mark shown in the Subject Registration for
Meowingtons LLC, spent her teen years and early twenties in Toronto, Canada, before moving to
the Fort Lauderdale area in or about 2014. While in Toronto, Bassiri attended OCAD (Ontario
42. Although deadmau5 has garnered extensive fame in the United States and
worldwide well beyond those knowledgeable of EDM, he cut his musical teeth in Toronto, and his
level of fame there is analogous to Bruce Springsteen in New Jersey or Gloria Estefan in Miami.
43. On information and belief, Hutchison, a manager of Meowingtons, LLC, was at all
relevant times a DJ based in Toronto, Canada, under the name Hutch, who played deadmau5
tracks in connection with his work at least as early as April 2010 (see 16, supra). It is not
conceivable that a Toronto-area DJ (particularly one who had featured deadmau5 in his work)
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using MEOWINGTONS mark on meowingtons.com as their online retail store featuring cat-
themed products.
46. Meowingtons, LLC claims in its Complaint in this matter (Dkt. No. 1 at 10) that
it took various diligent steps prior to, and upon launching her Meowingtons [sic] business such
as conducting trademark, domain name and corporate name searches. A cursory look at Google
47. Google permits users to conduct date-limited searches, thus making it possible to
reproduce what a search looked like in 2013 or 2014, when Counter-Defendants purported
using the date range June 30, 2013 through March 31, 2014 (immediately before Counter-
Defendants purported first date of use). Of the ten links on the first page, six reference deadmau5,
and two more (the meowingtons corp site and the meowingtons theme) expressly reference
deadmau5 in context.
meowingtons using the date range June 30, 2013 through March 31, 2014 (immediately before
the purported first date of use), but limited to Canadian results. The top 5 results all reference
deadmau5.
50. Thus, a simple Google search of Meowingtons at the time would have shown
both a link to deadmau5 and his use of MEOWINGTONS in commerce in connection with, at the
adopting the MEOWINGTONS mark, they would have promptly uncovered deadmau5s use of
the mark.
MEOWINGTONS and deadmau5s use of the MEOWINGTONS mark since at least before using
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and of the valuable goodwill associated with deadmau5s brands and marks, including the
MEOWINGTONS mark, intentionally chose and adopted the MEOWINGTONS mark for their
business in order to trade on this valuable goodwill and have been using the MEOWINGTONS
Bureau website, with negative reviews and complaints about Counter-Defendant and
www.meowingtons.com, including complaints about poor customer service, false and misleading
54. Indeed, Counter-Defendants appear to be using the very existence of this dispute in
an effort to draw attention to the meowingtons.com site. Promptly upon filing this lawsuit,
Counter-Defendants shopped stories about the fact that they had sued deadmau5 to numerous
publications including, without limitation, the New York Times, The Hollywood Reporter, and
several Village Voice Media publications, in an effort to draw further attention (and presumably
business) to the meowingtons.com site. Not content to simply trade on deadmau5s and Counter-
Plaintiffs goodwill in business, Counter-Defendants have initiated this lawsuit and concomitant
media strategy in an effort to use the very fact of this dispute to trade on deadmau5s fame and
Meowingtons popularity. Indeed, within three days of filing the Complaint, Counter-Defendants
posted on their website If theres any time for women entrepreneurs to prevail its now. I wont
be bullied into submission over something Ive worked so hard for, about the instant lawsuit they
instituted, seeking community support and inviting people to share the post and leave comments.
55. On or about July 15, 2014, Counter-Defendants filed U.S. Trademark Application
Serial No. 86/338,038 (Application) for the standard character mark MEOWINGTONS,
covering the following services in International Class 35: Retail store and online retail store
services for men and women featuring cat themed accessories and clothing, namely, t-shirts, tank
tops, crop tops, sweatshirts, hooded sweatshirts, bathing suits, cardigans, blouses, dresses, pants,
pyjamas [sic], shorts, skirts, rompers, panties, bras, thongs, jumpers, leggings, sweatpants, knitted
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woven or knitted underwear, lingerie, jackets, scarves, baseball hats, five panel hats, caps, socks,
stockings, pantyhose, rings, necklaces, earrings, bracelets, purses, handbags, shoulder bags, clutch
bags, tote bags, wallets, slippers, shoes, sandals, flats, boots, running shoes, ties, bows, bandanas,
MEOWINGTONS mark in commerce was on April 1, 2014 years after deadmau5s first use of
the mark in commerce. Attached hereto as Exhibit 14 is a true and correct copy of the Application.
57. On or about July 15, 2014, Bassiri submitted a Declaration in support of said
The signatory believes that to the best of the signatorys knowledge and belief, no
other person has the right to use the mark in commerce, either in the identical
to deceive. The signatory being warned that willful false statements and the like are
that such willful false statements and the like may jeopardize the validity of the
made of his/her own knowledge are true and all statements made on information
58. On information and belief, at the time Bassiri submitted the foregoing Declaration,
she was aware of deadmau5s right to use the MEOWINGTONS mark in commerce, and that
Counter-Defendants use of said mark in commerce in connection with the services covered in the
Subject Registration would be likely to cause confusion or mistake or to deceive. As such, Counter-
false and material statements to the USPTO. Attached hereto as Exhibit 15 is a true and correct
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above is likely to cause confusion, mistake, and/or deception as to the origin, sponsorship, or
approval of the goods marketed and sold by Counter-Defendants, their services, and commercial
activities in that the public, the trade, and others are likely to believe that Counter-Defendants
goods are provided, sponsored, approved, licensed, authorized or endorsed by, or affiliated with,
or in some other way legitimately connected to deadmau5 and Counter-Plaintiffs goods and
services that are promoted, offered, and/or sold in connection with the MEOWINGTONS mark.
60. Counter-Defendants have admitted as much in the Complaint in this matter, stating
MEOWINGTONS mark and Counter-Defendants use of the mark: Because of the similarity
between Plaintiffs Mark and Defendants Marks and the similar goods and/or services: (i)
prospective consumers are likely to be deceived, mistaken, or confused as to the source or origin
of the respective goods and/or services of the parties; (ii) the distinctiveness of Plaintiffs Mark is
being diluted; and/or (iii) Defendants have caused the likelihood of direct consumer confusion,
initial interest confusion, reverse confusion and/or forward looking confusion. Dkt. No. 1 at
25.
designates the origin of their goods and services. Furthermore, their use of the mark prevents
deadmau5 and Counter-Plaintiff from controlling the nature and quality of goods and services
provided thereunder and places the valuable reputation and goodwill of deadmau5 and Counter-
Plaintiff in the hands of Counter-Defendants, over whom deadmau5 and Counter-Plaintiff have no
control.
63. Indeed, there are several incidents where consumers have actually confused
Counter-Defendants goods and services as having originated with deadmau5 and Counter-
Plaintiff:
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Meowingtons: @meowingtons @deadmau5 You have a store?! Wow! Except I dont see your
b. Another consumer sent the following Twitter message to deadmau5, along with a
you behind this meowingtons fashion site? Lol uh-oh I smell lawsuit.
c. Yet another consumer sent the following Twitter message to deadmau5 with a
shop? @deadmau5 looks like someone has another legal battle to fight lol.
example, one consumer posted: I <3 my new ring from @meowingtons! Another consumer
Tweeted: I got my kitty ring in from @meowingtons too. Attached hereto as Exhibit 16 are true
and correct copies of the aforementioned Twitter posts, or tweets, in addition to several other
looks identical to Meowingtons, and indeed one user tagged @deadmau5 in the comments.
Attached hereto as Exhibit 17 is a true and correct copy of this Instagram post and the
aforementioned comment.
65. On information and belief, Counter-Defendants actions were calculated and willful
from the outset and reflect an intent to confuse consumers and profit from the goodwill associated
66. As part of its good faith efforts to resolve this dispute without litigation, Counter-
Plaintiff repeatedly requested that Counter-Defendants limit their use and registration of the
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MEOWINGTONS mark without deadmau5s consent or authorization. Their bad faith denial and
Meowingtons, LLC has sued deadmau5 and Meowingtons Ltd. in an effort to bar use that it
trademark infringement and false association in violation of federal and state law.
COUNT I
(Trademark Infringement Under Section 43(a) of the Lanham Act)
69. Counter-Plaintiff refers to and incorporates the foregoing allegations as if fully set
forth herein.
mark is likely to cause confusion, mistake, or deception as to the source, origin, sponsorship, or
potential licensees, and others are likely to believe that Counter-Defendants are associated with or
related to deadmau5 and Counter-Plaintiff or that deadmau5 and Counter-Plaintiff authorized and
control the sale of Counter-Defendants goods, services, and commercial activities in the United
States.
Because of the similarity between Plaintiffs Mark and Defendants Marks and the similar goods
and/or services: (i) prospective consumers are likely to be deceived, mistaken, or confused as to
the source or origin of the respective goods and/or services of the parties; (ii) the distinctiveness
of Plaintiffs Mark is being diluted; and/or (iii) Defendants have caused the likelihood of direct
consumer confusion, initial interest confusion, reverse confusion and/or forward looking
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caused actual confusion, mistake, or deception as to the source, origin, sponsorship, or approval
Plaintiffs valid and subsisting common law mark in violation of Section 43(a) of the Lanham Act,
15 U.S.C. 1125.
Plaintiffs licensing program and injured the reputation and goodwill associated with the
MEOWINGTONS mark that deadmau5 and Counter-Plaintiff have built and their reputation with
customers and potential licensees by creating confusion about Counter-Defendants goods and
75. Counter-Defendants have been unjustly enriched as a direct and proximate result
of the actions alleged herein, which have also greatly and irreparably damaged Counter-Plaintiff.
Plaintiff and will continue to so damage Counter-Plaintiff unless restrained by this Court;
COUNT II
78. Counter-Plaintiff refers to and incorporates the foregoing allegations as if fully set
forth herein.
mark is likely to cause confusion, mistake, or deception as to the source, origin, sponsorship, or
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potential licensees, and others are likely to believe that Counter-Defendants are associated with or
related to deadmau5 and Counter-Plaintiff or that deadmau5 and Counter-Plaintiff authorized and
control the sale of Counter-Defendants goods, services, and commercial activities in the United
States.
deadmau5 and/or Counter-Plaintiff and constitute false association in violation of Section 43(a) of
Plaintiffs licensing program and injured deadmau5 and Counter-Plaintiffs reputation and
goodwill with consumers and potential licensees by creating confusion about Counter-Defendants
82. Counter-Defendants have been unjustly enriched as a direct and proximate result
of the actions alleged herein, which have also greatly and irreparably damaged Counter-Plaintiff.
Plaintiff and will continue to so damage Counter-Plaintiff unless restrained by this Court;
COUNT III
85. Counter-Plaintiff refers to and incorporates the foregoing allegations as if fully set
forth herein.
86. Counter-Plaintiff is the prior user, and has nationwide priority of right over the
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87. To the extent Counter-Defendants have used or are using the MEOWINGTONS
mark, such use is without Counter-Plaintiffs authorization and as such Counter-Defendants are
89. As set forth in detail above, that registration was obtained by fraud. Upon
information and belief, the declaration alleging, among other things, that Counter-Defendants
believed no other person has the right to use the mark in commerce, either in the identical form
or in such near resemblance as to be likely, when used on or in connection with the goods/services
of such other person, to cause confusion or mistake, or to deceive was made in bad faith and in
an attempt to perpetrate a fraud upon the USPTO because Counter-Defendants knew or acted in
reckless disregard of the truth that deadmau5 and Meowingtons Ltd. had the right to use the
MEOWINGTONS mark in commerce at the time Application No. 86/338,038 was filed.
90. Reasonably relying on the truth of such materially false statement, the USPTO
approved Application No. 86/338,038 for registration, issuing into Registration No. 4,711,265 on
91. Upon information and belief, the conduct of Counter-Defendants constitutes fraud
on the USPTO and therefore Registration No. 4,711,265 should be cancelled on this ground alone.
COUNT IV
92. Counter-Plaintiff refers to and incorporates the foregoing allegations as if fully set
forth herein.
93. Section 1(a) of the Lanham Act, 15 U.S.C. 1051(a), allows registration of
trademarks used in commerce and requires that an applicant make a verified statement that the
mark is in use in commerce before the filing of the application. Section 45 of the Act, 15 U.S.C.
1127, defines use in commerce of a mark in connection with services when it is used or
displayed in the sale or advertising of services and the services are rendered in commerce, or the
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services are rendered in more than one State or in the United States and a foreign country and the
person rendering the services is engaged in commerce in connection with the services.
94. Upon information and belief, Counter-Defendants had not used the mark
Application No. 86/338,038, and resulting Registration No. 4,711,265, as of April 1, 2014 as
declared under oath in the Application and required under Sections 1(a) and 45 of the Lanham Act,
4,711,265, are void ab initio, and Registration No. 4,711,265 should be cancelled on this ground
alone.
COUNT V
(Cancellation of Trademark Registration No. 4,711,265 for Likelihood of Confusion)
96. Counter-Plaintiff refers to and incorporates the foregoing allegations as if fully set
forth herein.
97. As set forth in detail above, Meowingtons Ltd. has continuously and exclusively
used the MEOWINGTONS mark in connection with its sale of consumer goods and its provision
of related services prior to Counter-Defendants claimed April 1, 2014 date of first use in
commerce of the identical mark MEOWINGTONS. As such, Meowingtons Ltd. has priority.
98. The MEOWINGTONS mark is recognized and relied upon by the relevant
consumers and public as identifying Meowingtons Ltd.s goods and services, and as distinguishing
them from the goods and services of others, and has come to represent and symbolize extremely
as registered in Registration No. 4,711,265 and as admittedly used in connection with Counter-
Defendants goods and services causes confusion, mistake, and/or deception and falsely designates
100. Accordingly, Registration No. 4,711,265 should be cancelled on this ground alone.
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COUNT VI
101. Counter-Plaintiff refers to and incorporates the foregoing allegations as if fully set
forth herein.
MEOWINGTONS mark.
103. On information and belief, Counter-Defendants registered the domain name in bad
faith with an intent to profit from the use of the MEOWINGTONS mark, in violation of 15 U.S.C.
1125(d), because Counter-Defendants knew or acted in a reckless disregard of the truth that
deadmau5 and Meowingtons Ltd. had the right to use the MEOWINGTONS mark in commerce
Plaintiff is entitled to all other remedies available under the Lanham Act, including but not limited
permitted by 15 U.S.C. 1117(d), treble damages, and costs and attorneys fees.
COUNT VII
105. Counter-Plaintiff refers to and incorporates the foregoing allegations as if fully set
forth herein.
106. Counter-Plaintiff has adopted and used the MEOWINGTONS mark throughout
Florida since at least as early as 2011 in connection with headphones, music, musical
performances, and apparels, and in marketing, advertising, and sales to identify Counter-Plaintiff
as the source of high quality headphones, music, musical performances, and apparels.
is actually causing and continues to cause customer confusion as to the source or the origin of their
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108. Upon information and belief, Counter-Defendants also use the MEOWINGTONS
mark in the domain name, www.meowingtons.com, to either intentionally divert and drive internet
traffic and potential consumers to their website and/or to appear related to or affiliated with
Florida law and have infringed Counter-Plaintiffs common law rights in the MEOWINGTONS
mark.
and will continue to cause damage to Counter-Plaintiff including, but not limited to, irreparable
Counter-Defendants as well as all other remedies available including, but not limited to,
follows:
1. For a temporary and permanent injunction prohibiting Counter-Defendants from:
other words or elements, or any other mark confusingly similar to the MEOWINGTONS mark, in
registration, trademark, service mark, trade name, domain name, trade designation, or other indicia
of origin or source containing the MEOWINGTONS mark, whether alone or in combination with
other words or elements, or any other mark confusingly similar to the MEOWINGTONS mark,
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of the MEOWINGTONS mark or false association therewith and cybersquatting, and all costs of
this action, attorneys fees, and treble damages as provided by 15 U.S.C. 1117;
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CERTIFICATE OF SERVICE
I HEREBY CERTIFY that, on this 12th day of May 2017, I electronically filed the
foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing
document is being served this day on all counsel of record on the attached service list via
manner for those counsel or parties who are not authorized to receive electronically Notices of
Electronic Filing.
SERVICE LIST
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