7-Eleven v. 7-24 Hours C Stores - Trademark Complaint PDF

TUCKER ELLIS LLP
Cleveland Columbus Denver Los Angeles San Francisco
Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 1 of 14 Page ID #:1
1 TUCKER ELLIS LLP

Howard A. Kroll - SBN 100981
2 howard.kroll@tuckerellis.com
David J. Steele - SBN 209797
3 david.steele@tuckerellis.com
515 South Flower Street
4 Forty-Second Floor
Los Angeles, CA 90071-2223
213.430.3400
5 Telephone:
Facsimile:
213.430.3409
6
PIRKEY BARBER PLLC
7 Stephen P. Meleen (pro hac vice to be submitted)
smeleen@pirkeybarber.com
8 Elizabeth M. Stafki (pro hac vice to be submitted)
estafki@pirkeybarber.com
9 600 Congress Avenue, Suite 2120
Austin, TX 78701
10 Telephone: 512. 322.5200
Facsimile: 512.322.5201
11
Attorneys for Plaintiff
12 7-ELEVEN, INC.
13
14
UNITED STATES DISTRICT COURT
15
CENTRAL DISTRICT OF CALIFORNIA
16 7-ELEVEN, INC.
Case No. 8:16-cv-0612
17
PLAINTIFFS COMPLAINT FOR

TRADEMARK INFRINGEMENT,
DILUTION, UNFAIR COMPETITION
AND UNJUST ENRICHMENT;
DEMAND FOR JURY TRIAL
18
19
20
21
)
)
)
Plaintiff,
)
)
v.
)
ITSS LLC d/b/a 7-24 HOURS C STORE; )
)
AMRO MOHAMMED AHMED, and
)
YOULAN HE
)
)
Defendants.
22
23
Plaintiff 7-Eleven, Inc. (7-Eleven or Plaintiff) files this Complaint against
24 Defendant ITSS LLC d/b/a 7-24 Hours C Store, Amro Mohammed Ahmed and Youlan
25 He (collectively, Defendants).
PARTIES
26
27
1.
Plaintiff is a Texas corporation having its principal place of business at 3200
28 Hackberry Road, Irving, Texas 75063.

PLAINTIFFS COMPLAINT
2.
Defendant ITSS LLC d/b/a 7-24 Hours C Store is a California limited
2 liability company having a business address at 2401 West Lincoln Avenue, Suite D,
3 Anaheim, California 92801.
4
3.
Defendant Amro Mohammed Ahmed is the owner of defendant ITSS LLC
5 d/b/a 7-24 Hours C Store.

6
4.
Defendant Youlan He is the owner of defendant ITSS LLC d/b/a 7-24 Hours
7 C Store.
8
9
NATURE OF ACTION AND JURISDICTION

5.
This is an action for trademark infringement, dilution, unfair competition,
TUCKER ELLIS LLP
10 and unjust enrichment under the Trademark Act of 1946, as amended, 15 U.S.C. 1051
11 et seq. (Lanham Act), and for trademark infringement, dilution, unfair competition, and
12 unjust enrichment under the laws of the State of California.
13
6.
This Court has jurisdiction over this action under Section 39 of the Lanham
14 Act, 15 U.S.C. 1121, and Title 28 of the United States Code, 1331 and 1338, and
15 supplemental jurisdiction over 7-Elevens claims under state law under 28 U.S.C.
16 1367(a).
17
7.
On information and belief, Defendants regularly conduct business in
18 California and a substantial part of the events giving rise to the acts complained of herein
19 occurred in this District. Therefore, venue is proper in this District pursuant to 28 U.S.C.
20 1391(b).
21
FACTS
22 I.
7-Elevens Trademarks
23
8.
Since long before the acts of Defendants complained of herein, 7-Eleven has
24 been engaged in the business of, among other things, offering convenience store services
25 and products, either directly or through its licensees (collectively, 7-Eleven), to the
26 general public at various locations throughout the United States.
27
9.
Since at least as early as 1946, 7-Eleven has continuously used the name
28 and mark 7-ELEVEN in commerce in connection with a variety of products and services,
2
1 including the sale and promotion of convenience store services and various other related
2 products and services.
3
10.
For many years 7-Eleven has frequently and continuously used the
4 7-ELEVEN name and mark in a stylized, multicolored logo format. A common display
5 of the logo, shown below, features the text ELEVEN centered across a large numeral
6 7 with a curved vertical shank (the 7-ELEVEN Logo). The 7-ELEVEN Logo is
7 typically displayed in a combination of orange, red, green, and white, as shown below.
8
9
TUCKER ELLIS LLP
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15
11.
The 7-ELEVEN Logo is displayed, among other places, on signage for its
16 convenience stores and gas stations.

12. There are currently over 7,500 convenience stores throughout the United
17
18 States operated by 7-Eleven under 7-Elevens 7-ELEVEN name and mark, many of
19 which use the 7-ELEVEN Logo (7-Elevens 7-ELEVEN name and mark and 7-ELEVEN
20 Logo are referred to collectively as the 7-ELEVEN Marks).
13. 7-Eleven has annually sold billions of dollars of products and services in the
21
22 U.S. in its 7-ELEVEN stores under its 7-ELEVEN Marks, and has annually spent
23 millions of dollars advertising and promoting those products and services under the 724 ELEVEN Marks. As a result, 7-Eleven has developed goodwill, public recognition, and
25 strong rights in its 7-ELEVEN Marks, which consumers have come to know and trust as
26 symbols of quality and value.
27
28
3
14.
The 7-ELEVEN Marks are inherently distinctive, serving to identify and
2 indicate the source of 7-Elevens products and services to the consuming public, and to
3 distinguish 7-Elevens products and services from those of others.
4
15.
Additionally and alternatively, as a result of 7-Elevens frequent and
5 widespread use and promotion of the 7-ELEVEN Marks, the marks have become
6 distinctive to designate 7-Elevens goods and services, to distinguish 7-Elevens goods
7 and services from the goods and services of others, and to distinguish the source or origin
8 of 7-Elevens goods and services.
9
16.
As a result of extensive and widespread use and promotion by 7-Eleven, the
TUCKER ELLIS LLP
10 7-ELEVEN Marks have become extremely well known and widely recognized by
11 consumers in the State of California and throughout the United States to indicate the
12 source of 7-Elevens goods and services.
13
17.
As a result of 7-Elevens extensive and widespread use and promotion of the
14 7-ELEVEN Marks, 7-Eleven has developed valuable goodwill in the 7-ELEVEN Marks.
15
18.
The 7-ELEVEN Marks are famous.
16
19.
7-Eleven owns numerous federal trademark registrations for the 7-ELEVEN
17 Marks, including but not limited to the following:

18
19
MARK
20
REG.
NO.
DATE
718,016
07/04/1961
Retail grocery service
896,654
08/11/1970
Retail grocery store service
920,897
09/21/1971
Retail grocery store services
GOODS OR SERVICES
21
22
23
24
7-ELEVEN
25
26
27
28
4
1
2
REG.
NO.
DATE
1,035,454
03/09/1976
Sandwiches
1,288,594
08/07/1984
Gasoline
1,402,425
07/22/1986
Soft drinks for consumption on or

off the premises
1,702,010
07/21/1992
Coffee for consumption on or off

the premises
10/29/2002
Coffee for consumption on or off

the premises; soft drinks and
semi-frozen soft drinks for
consumption on or off the
premises
2,685,684
02/11/2003
Retail store services featuring

gasoline and retail store services
featuring convenience store items
2,834,419
04/20/2004
Retail convenience store services
7-ELEVEN
2,914,788
12/28/2004
Gasoline
7-ELEVEN
3,338,512
11/20/2007
Gift card services
MARK
GOODS OR SERVICES
3
4
5
6
7
8
9
TUCKER ELLIS LLP
10
11
12
13
7-ELEVEN
14
15
2,642,740
16
17
18
19
7-ELEVEN
20
21
22
23
24
25
26
27
28
5
1
2
MARK
REG.
NO.
DATE
GOODS OR SERVICES
06/23/2009

featuring the sale of food and
beverage products for
consumption on or off the
premises
09/08/2009

featuring food and beverage
products for consumption on or
off the premises
09/08/2009

off the premises
03/15/2016

off the premises
3
4
3,644,842
5
6
7
8
3,679,337
TUCKER ELLIS LLP
10
11
3,679,341
12
13
14
4,917,149
15
16
17
18
These registrations are valid and subsisting, and, except for Trademark Registration
19 4,917,149, are incontestable, and therefore are conclusive evidence of the validity of those
20 registered marks and of their registration, of 7-Elevens ownership of those marks, and of 721 Elevens exclusive right to use those marks in commerce under 15 U.S.C. 1115(b).
22 II.
Defendants Unlawful Activities
23
20.
On information and belief, Defendants own or operate a convenience store,
24 located at 2401 West Lincoln Avenue, Suite D, Anaheim, California 92801 (the
25 Infringing Site).
26
21.
Defendants promote the products and services offered at the Infringing Site
27 under the name and mark 7-24 Hours (the 7-24 HOURS Mark). The 7-24 HOURS
28 Mark is presented in a format highly similar to that used by 7-Eleven with its 7-ELEVEN
6
1 Logo, featuring a large numeral 7 with a curved vertical shank partially bisected by the
2 numeral 24, as shown immediately below (the 7-24 HOURS Design). Similar to the
3 7-ELEVEN Logo, the 7-24 HOURS Design is depicted in the colors red, green, and
4 white. The 7-24 HOURS Mark and the 7-24 HOURS Design are collectively referred to as
5 the 7-24 HOURS Marks.
6
7
8
9
TUCKER ELLIS LLP
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16
17
18
19
20
21
22
23
24
25
26
27
28
7
22.
The 7-24 HOURS Design is prominently displayed at least on Defendants
2 signage at the Infringing Site, as shown above in paragraph 21.

3
23.
7-Eleven has notified Defendants of its trademark rights, and has attempted
4 to resolve this dispute with Defendants prior to filing this lawsuit. Defendants have
5 continued using the 7-24 HOURS Marks.
6
24.
On information and belief, Defendants have set out on a deliberate course of
7 conduct to deceive consumers into believing that the Infringing Site is connected,
8 associated, or affiliated with 7-Eleven in order to trade on 7-Elevens valuable goodwill.
9 Defendants efforts to deceive the public into believing that the Infringing Site is
TUCKER ELLIS LLP
10 affiliated with 7-Eleven include Defendants intentional use of the 7-24 HOURS Marks
11 in commerce at the Infringing Site, even though Defendants have no permission to do so
12 and is not currently affiliated with 7-Eleven in any way. Such efforts also include
13 duplicating various aspects of 7-Elevens stores in a way that further increases the
14 likelihood of consumer confusion and exacerbates the infringement.
15
25.
Defendants use of the 7-24 HOURS Marks is without the permission or
16 authority of 7-Eleven.
17
26.
Defendants unauthorized use of the 7-24 HOURS Marks began after the 7-
18 ELEVEN Marks became famous.

19
27.
On information and belief, Defendants Amro Mohammed Ahmed and
20 Youlan He are direct participants in and are a moving active conscious force behind the
21 infringements, dilution, and unlawful acts detailed in this Complaint.
22 III.
Effect of Defendants Activities on 7-Eleven and the Consuming Public
23
28.
Defendants unauthorized use of the 7-24 HOURS Marks is likely to cause
24 confusion, to cause mistake, or to deceive customers and potential customers of the

25 parties as to some affiliation, connection, or association of Defendants business with 726 Eleven, or as to the origin, sponsorship, or approval of Defendants goods and/or
27 services.
28
8
29.
Defendants unauthorized use of the 7-24 HOURS Marks falsely indicates to
2 the purchasing public that Defendants, their business, and their goods or services
3 originate with 7-Eleven, or are affiliated, connected, or associated with 7-Eleven, or are
4 sponsored, endorsed, or approved by 7-Eleven, or are in some manner related to 7-Eleven
5 or its goods or services.
6
30.
Defendants unauthorized use of the 7-24 HOURS Marks falsely designates
7 the origin of Defendants goods and services, and falsely or misleadingly describes and
8 represents facts with respect to Defendants and their goods and services.
9
31.
Defendants unauthorized use of the 7-24 HOURS Marks is likely to cause
TUCKER ELLIS LLP
10 dilution of 7-Elevens famous 7-ELEVEN Marks.

11
32.
Defendants unauthorized use of the 7-24 HOURS Marks enables
12 Defendants to trade on and receive the benefit and goodwill built up at great labor and
13 expense over many years by 7-Eleven, and to gain acceptance for Defendants goods and
14 services not solely on Defendants own merits, but on the reputation and goodwill of 715 Eleven and its marks, trade dress, goods, and services.
16
33.
Defendants unauthorized use of the 7-24 HOURS Marks removes from 7-
17 Eleven the ability to control the nature and quality of goods and services provided under
18 its marks, and places the valuable reputation and goodwill of 7-Eleven in the hands of
19 Defendants, over whom 7-Eleven has no control.
20
34.
Unless these unfair and deceptive practices and acts of unfair competition
21 by Defendants are restrained by this Court, they will continue, and will continue to cause
22 irreparable injury to 7-Eleven and to the public, for which there is no adequate remedy at
23 law.
24
35.
As a result of Defendants unauthorized use of the 7-24 HOURS Marks,
25 Defendants are being unjustly enriched at the expense of 7-Eleven and the public.
26 IV.
Willful Nature of Defendants Wrongful Acts
27
36.
On information and belief, Defendants acts of infringement, dilution, and
28 unfair competition complained of herein have been malicious, fraudulent, deliberate,

9
1 willful, intentional, and in bad faith, with full knowledge and conscious disregard of 72 Elevens rights. In view of the egregious nature of Defendants actions, this is an
3 exceptional case within the meaning of Section 35(a) of the Lanham Act, 15 U.S.C.
4 1117(a).
5
First Cause of Action
(Infringement of Registered Marks)
37.
7-Eleven repeats the allegations in paragraphs 1 through 36 as if fully set
8 forth herein.
9
38.
The acts of Defendants complained of herein constitute infringement of 7-
TUCKER ELLIS LLP
10 Elevens federally registered trademarks in violation of Section 32 of the Lanham Act, 15

11 U.S.C. 1114.
12
39.
7-Eleven has been damaged by Defendants acts of federal trademark
13 infringement.
14
40.
Defendants infringement has been willful and in bad faith, making this an
15 exceptional case under 15 U.S.C. 1117.

16
Second Cause of Action
17
(Violation of Lanham Act Section 43(a))
18
41.
19 forth herein.
20
42.
The acts of Defendants complained of herein constitute trademark
21 infringement, false designation of origin, false or misleading descriptions or

22 representations of fact, and unfair competition in violation of Section 43(a) of the
23 Lanham Act, 15 U.S.C. 1125(a).
24
43.
7-Eleven has been damaged by Defendants acts of trademark infringement,
25 false designation of origin, false or misleading descriptions or representations of fact, and

26 unfair competition.
27
28
10
44.
Defendants acts of trademark infringement, false designation of origin, false
2 or misleading descriptions or representations of fact, and unfair competition have been

3 willful and in bad faith, making this an exceptional case under 15 U.S.C. 1117.
4
Third Cause of Action
(Federal Trademark Dilution)
45.
7 forth herein.
8
46.
The acts of Defendants complained of herein constitute dilution by blurring
9 of 7-Elevens famous 7-ELEVEN Marks in violation of Section 43(c) of the Lanham Act,
TUCKER ELLIS LLP
10 15 U.S.C. 1125(c).
11
47.
Defendants willfully intended to trade on the recognition of the famous 7-
12 ELEVEN Marks, and to harm the reputation of the famous 7-ELEVEN Marks.
13
48.
7-Eleven has been damaged by Defendants acts of federal trademark
14 dilution.
15
49.
Defendants acts of dilution have been willful and in bad faith, making this
16 an exceptional case under 15 U.S.C. 1117.

17
Fourth Cause of Action
18
(Unfair Competition Under California Law)
19
50.
20 forth herein.
21
51.
The acts of Defendants complained of herein constitute unfair competition in
22 violation of California Business and Professions Code 17200.

23
52.
7-Eleven has been damaged by Defendants acts of unfair competition under
24 California law.
25
Fifth Cause of Action
26
(Trademark Dilution Under California Law)
27
53.
28 forth herein.
11
54.
The acts of Defendants complained of herein constitute trademark dilution in
2 violation of California Business and Professions Code 14247.

3
55.
7-Eleven has been damaged by Defendants acts of trademark dilution under
4 California law.
5
Sixth Cause of Action
(Common Law Trademark Infringement)
56.
8 forth herein.
9
57.
The acts of Defendants complained of herein constitute trademark
TUCKER ELLIS LLP
10 infringement in violation of the common law of the State of California.

11
58.
7-Eleven has been damaged by Defendants acts of common law trademark
12 infringement.
13
Seventh Cause of Action
14
(Unjust Enrichment)
15
59.
16 forth herein.
17
60.
The acts of Defendants complained of herein constitute unjust enrichment of
18 Defendants at 7-Elevens expense.

19
61.
7-Eleven has been damaged by Defendants acts of unjust enrichment.
20
21
REQUEST FOR RELIEF
22
WHEREFORE, 7-Eleven requests that:
23
a)
Defendants, Defendants agents, servants, employees, attorneys, and all
24 those persons in active concert or participation with them, be preliminarily and

25 permanently enjoined from using the 7-24 HOURS Marks, any element thereof, and any
26 other name, mark, or trade dress confusingly similar thereto;
27
b)
Defendants, Defendants agents, servants, employees, attorneys, and all
28 those persons in active concert or participation with them, be required to immediately and
12
1 permanently remove the 7-24 HOURS Marks from the Infringing Site and to otherwise
2 eliminate all elements and instances of the 7-24 HOURS Marks from the Infringing Site;
3
c)
Defendants be ordered to file with this Court and to serve upon 7-Eleven,
4 within 30 days after the entry and service on Defendants of an injunction, a report in
5 writing and under oath setting forth in detail the manner and form in which Defendants
6 have complied with the injunction;
7
d)
7-Eleven recover all damages it has sustained as a result of Defendants
8 infringement, dilution, and unfair competition and that such damages be trebled;
9
e)
An accounting be directed to determine Defendants profits resulting from
TUCKER ELLIS LLP
10 Defendants activities, and that such profits be paid over to 7-Eleven, increased as the
11 Court finds to be just under the circumstances of this case
12
f)
7-Eleven recover its reasonable and necessary attorneys fees;
13
g)
7-Eleven recover the costs of this action and prejudgment and post-judgment
14 interest; and
15
h)
7-Eleven recover such other relief as the Court may find appropriate.
16
17 DATED: April 1, 2016
Tucker Ellis LLP
18
19
By:
20
21
/s/Howard A. Kroll
Howard A. Kroll
7-ELEVEN, INC.
22
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13
DEMAND FOR JURY TRIAL
2
3
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff 7-Eleven,
4 Inc. hereby demands a trial by jury on all issues so triable that are raised herein or that
5 hereinafter may be raised in this action
6
7 DATED: April 1, 2016
Tucker Ellis LLP
8
9
By:
TUCKER ELLIS LLP
10
11
/s/Howard A. Kroll
Howard A. Kroll
7-ELEVEN, INC.
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1150207.1

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TUCKER ELLIS LLP

Cleveland Columbus Denver Los Angeles San Francisco

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 1 of 14 Page ID #:1

1 TUCKER ELLIS LLP

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

Case No. 8:16-cv-0612

PLAINTIFFS COMPLAINT FOR

Plaintiff 7-Eleven, Inc. (7-Eleven or Plaintiff) files this Complaint against

Plaintiff is a Texas corporation having its principal place of business at 3200

28 Hackberry Road, Irving, Texas 75063.

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 2 of 14 Page ID #:2

Defendant ITSS LLC d/b/a 7-24 Hours C Store is a California limited

Defendant Amro Mohammed Ahmed is the owner of defendant ITSS LLC

5 d/b/a 7-24 Hours C Store.

NATURE OF ACTION AND JURISDICTION

This is an action for trademark infringement, dilution, unfair competition,

TUCKER ELLIS LLP

Cleveland Columbus Denver Los Angeles San Francisco

On information and belief, Defendants regularly conduct business in

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 3 of 14 Page ID #:3

TUCKER ELLIS LLP

Cleveland Columbus Denver Los Angeles San Francisco

16 convenience stores and gas stations.

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 4 of 14 Page ID #:4

The 7-ELEVEN Marks are inherently distinctive, serving to identify and

Additionally and alternatively, as a result of 7-Elevens frequent and

As a result of extensive and widespread use and promotion by 7-Eleven, the

TUCKER ELLIS LLP

Cleveland Columbus Denver Los Angeles San Francisco

As a result of 7-Elevens extensive and widespread use and promotion of the

The 7-ELEVEN Marks are famous.

7-Eleven owns numerous federal trademark registrations for the 7-ELEVEN

17 Marks, including but not limited to the following:

Retail grocery service

Retail grocery store service

Retail grocery store services

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 5 of 14 Page ID #:5

Soft drinks for consumption on or

Coffee for consumption on or off

Coffee for consumption on or off

Retail store services featuring

Retail convenience store services

Gift card services

TUCKER ELLIS LLP

Cleveland Columbus Denver Los Angeles San Francisco

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 6 of 14 Page ID #:6

Retail convenience store services

Retail convenience store services

Retail convenience store services

Retail convenience store services

TUCKER ELLIS LLP

Cleveland Columbus Denver Los Angeles San Francisco

Defendants Unlawful Activities

On information and belief, Defendants own or operate a convenience store,

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 7 of 14 Page ID #:7

TUCKER ELLIS LLP

Cleveland Columbus Denver Los Angeles San Francisco

Case 8:16-cv-00612 Document 1 Filed 04/01/16 Page 8 of 14 Page ID #:8

The 7-24 HOURS Design is prominently displayed at least on Defendants

2 signage at the Infringing Site, as shown above in paragraph 21.

On information and belief, Defendants have set out on a deliberate course of