Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 1 of 32

Harris A. Wolin
Myers Wolin, LLC
225 Broadway Suite 2400
New York, New York 10007
Email: harris.wolin@myerswolin.com
Attorneys for Plaintiff
Sea Star Beachwear, LLC

IN THE UNITED STATES DISTRICT COURT FOR THE

SOUTHERN DISTRICT OF NEW YORK

SEA STAR BEACHWEAR, LLC

Plaintiff, Civil Case No. ______________________

v. Civil Action

COMPLAINT,
TARYN ROSE INTERNATIONAL INC. DESIGNATION OF TRIAL COUNSEL
AND JURY DEMAND
Defendant. Document Electronically Filed

Plaintiff Sea Star Beachwear, LLC (herein after “Sea Star”) by way of Complaint for

Damages against Defendant Taryn Rose International Inc. (“Taryn Rose”), allege as follows:

NATURE OF THE ACTION

1. This is an action by Sea Star for infringement of United States Patent Nos.

D799,176S and D784,664S (collectively the “Sea Star Patents”). A copy of the Sea Star Patents

are attached hereto as Exhibit A and B respectively.

2. Sea Star seeks to collect damages from Defendant as a result of the infringement.

3. Specifically, Plaintiff seeks judgment against Defendant that Defendant infringed

the Sea Star Patents.

 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 2 of 32

4. In addition, Plaintiff seeks damages caused by each claim, including but not

limited to permanent injunction, compensatory damages, enhanced damages, costs, expenses,

reasonable attorneys’ fees, pre-judgment interest, and post-judgment interest.

THE PARTIES

5. Sea Star is a Delaware corporation with its principal place of business of business

at 584 Broadway, #312, New York, New York 10012.

6. On information and belief, Taryn Rose is a California corporation located at 3040

East Ana Street, Rancho Dominguez, California 90221.

JURISDICTION AND VENUE

7. This action arises under the Patent Laws of the United States, Title 35, United

States Code §§101, et seq.

8. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1338(a)

and 2201(a).

9. This Court has personal jurisdiction over Taryn Rose because Taryn Rose

regularly transacts business in this District, inter alia, selling and offering for sale one or more

products that infringe the Sea Star Patent.

10. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391 and 1400.

BACKGROUND

11. Sea Star is shoe and bag design company headquartered in New York City. Sea

Star brings products to the marketplace through online sales and through retail stores.

12. Sea Star has developed many unique shoe and bag designs, launching in 2015.

Specifically, Sea Star’s products are water friendly and allow the wearer to transition from

 
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 3 of 32

swimming to rocky beaches to city pavement. The Sea Star products are comfortable and keep

the wearer cool.

13. On October 10, 2017, U.S. Patent No. D799,176S (“‘176 Patent”) entitled “Shoe”

was duly and legally issued by the U.S. Patent Office. All rights, title and interest in the patent

was assigned by the inventors to Sea Star.

14. A design patent application disclosing this shoe was filed on April 7, 2017, and

assigned Application No.: 29/599,963 (the “‘963 Application”). The Application issued as the

‘176 Patent.

15. Sea Star is marketing and selling its shoe covered by the '176 Patent under the

Seafarer Slingback brand. A picture of the Seafarer Slingback product is below:

16. On information and belief, prior to the release of the Seafarer Slingback product,

Taryn Rose did not market a similar slingback shoe.

17. On information and belief, after Sea Star released its Seafarer Slingback, Taryn

Rose used the Seafarer Slingback product as the basis for designing its own competing product.

18. On information and belief, Taryn Rose’s derivative product was released as early

as January 2019, under the style name QUIN (“the QUIN Shoe”). The QUIN Shoe style number

90875 is pictured below:

 
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 4 of 32

19. On January 21, 2019, Sea Star sent a cease and demand notice (the “Notice”) to

Taryn Rose. A true and correct copy of the Notice is attached hereto as Exhibit C.

20. On April 25, 2017, U.S. Patent No. D784,664S entitled “Shoe” was duly and

legally issued by the U.S. Patent Office. All rights, title and interest in the patent was assigned by

the inventors to Sea Star.

21. A design patent application disclosing this shoe was filed on March 11, 2016, and

assigned Application No.: 29/557,755, (the “Application”). The Application issued as the ‘664

Patent.

22. Sea Star began offering for sale its shoe which is marketed and sold under the

Beachcomber Espadrille® brand in July 2015. A picture of the Beachcomber Espadrille®

product is below:

 
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 5 of 32

23. On information and belief, prior to the release of the Beachcomber Espadrille®

product, Taryn Rose did not market an espadrille shoe.

24. On information and belief, after Sea Star released its Beachcomber Espadrille®,

Taryn Rose used the Beachcomber Espadrille® product as the basis for designing its own

competing product.

25. On information and belief, Taryn Rose’s derivative product was released as early

as March 26, 2019, under the Quincy Shiny SCUBA brand. The Quincy Shiny SCUBA style

number 90877 is pictured below:

26. At all times relevant hereto, the ‘176 Patent and ‘664 Patent were listed on the Sea

Star website providing notice to the public that these shoe designs are protected by United States

Patents (“Website Notice”).

 
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 6 of 32

COUNT I – Infringement of the ‘176 Patent

27. Sea Star repeats and re-alleges Paragraphs 1-26 hereof as if fully set forth herein.

28. Taryn Rose has infringed and continues to infringe the claims of the ‘176 Patent

by making using, and/or marketing products, including, but not limited to, its QUIN Shoe style

number 90875.

29. Taryn Rose received actual notice of the ‘176 Patent through the receipt of the

Notice.

30. On information and belief, any continuing infringement of the ‘176 Patent by

Taryn Rose despite knowledge of the ‘176 Patent is and continues to be willful and deliberate.

31. As a result of Taryn Rose’s infringement, Sea Star has suffered monetary

damages in an amount not yet determined, and will continue to suffer damages in the future.

COUNT II – Infringement of the ‘664 Patent

32. Sea Star repeats and re-alleges Paragraphs 1-26 hereof as if fully set forth herein.

33. Taryn Rose has infringed and continues to infringe the claims of the ‘664 Patent

by making using, and/or marketing products, including, but not limited to, Quincy Shiny

SCUBA style number 90877.

34. Taryn Rose received notice of the ‘664 Patent through the Website Notice.

35. On information and belief, any continuing infringement of the ‘664 Patent by

Taryn Rose despite knowledge of the ‘664 Patent is and continues to be willful and deliberate.

36. As a result of Taryn Rose’s infringement, Sea Star has suffered monetary

damages in an amount not yet determined, and will continue to suffer damages in the future.

 
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 7 of 32

PRAYER FOR RELIEF

WHEREFORE, Sea Star prays for judgment and relief against Taryn Rose as follows:

A. Declaring that Taryn Rose has infringed one or more claims of the each of

the Sea Star Patents;

B. Directing that Taryn Rose account for and pay to Sea Star all damages

arising out of Taryn Rose’s infringement of the Sea Star Patents, pursuant to 35 U.S.C. § 284, in

an amount to be determined but not less than a reasonable royalty;

C. Declaring that Taryn Rose’s infringement of the Sea Star Patents has been,

and continues to be, willful and deliberate;

D. Awarding Sea Star enhanced damages for Taryn Rose’s willful

infringement;

E. Directing Taryn Rose to pay Sea Star’s costs, expenses and reasonable

attorneys’ fees pursuant to 35 U.S.C. §§ 284 and 285;

F. Awarding Sea Star pre-judgment and post-judgment interest on the

damages awarded to it by reason of Taryn Rose’s infringement;

G. Issuing a permanent injunction enjoining Taryn Rose and its officers,

directors, agents, servants, affiliates, employees, divisions, branches, subsidiaries, parents,

distributors, resellers, retailers and all other parties acting in active concert therewith from

infringement of the Sea Star Patents, or such other equitable relief the Court determines is

warranted; and

H. Granting Sea Star such other and further relief as the Court may deem just

and proper.

 
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 8 of 32

DEMAND FOR JURY TRIAL

Sea Star hereby demands trial by jury on all issues in its Complaint.

DESIGNATION OF TRIAL COUNSEL

 
These Plaintiff hereby designates Harris A. Wolin, Esq. as trial counsel.

MYERS WOLIN, LLC

Dated: April 16, 2019 By: /s/ Harris A. Wolin

Harris A. Wolin
Myers Wolin, LLC
225 Broadway Suite 2400
New York, New York 10007
Email: harris.wolin@myerswolin.com
Attorneys for Plaintiff
Sea Star Beachwear, LLC

 
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 9 of 32

 
 
 
Exhibit A
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 10 of 32
HATAKAMA ULOGAMA HINDU BA IT
USOOD799176S

(12 ) Leva
United
et al.
States Design Patent (10) Patent No.: US D799,176 S
(45 ) Date of Patent: * * Oct . 10 , 2017

(54) SHOE 21/48 ; A43B 21/50 ; A43B 21/51; A43B

21/ 52 ; A43B 21 /54
(71)
@ Applicant: Sea Star Beachwear, LLC , New York , See application file for complete search history.
NY (US) (56 ) References Cited
(72 ) Inventors: Michael Leva , New York , NY (US);
@ U .S . PATENT DOCUMENTS
Lida E . Fitzgerald , New York , NY D135 ,339 S * 3/ 1943 Hanson ... D2/919
D170 , 107 S * 8 / 1953 Baroumes D2 /918
(US) D252.297 S * 7 / 1979 Castaner Vinas .............. D2/ 927
D333,376 S * 2 / 1993 Raffe .... .. .. ........ .. . .. . .. . . . D2/ 969
(73) Assignee : Sea Star Beachwear, LLC , New York ,
@ D377, 264
D517, 784 S *
S * 1/ 1997 Wunsch
3/ 2006 Wilkenfeld ........
D2/947
D2 /902
NY (US ) D530 ,888 S * 10 / 2006 Kim ........ D2/ 896
D609 ,885 S * 2/ 2010 Briggs D2/910
(* * ) Term : 15 Years (Continued )
(21) Appl.No.: 29/599,963 OTHER PUBLICATIONS
These Statement-Making Espadrilles Are About to Change Your
(22 ) Filed : Apr. 7, 2017 Summer Shoe Game, posted at evo .com , earliest date available :
May 15 , 2017 , [online ], acquired on Jun . 20 , 2017 . Available from
Related U .S . Application Data Internet, < URL : https://www .popsugar. com /fashion /Graphic- Espa
drilles- 43536810 # photo - 43536857. *
(63) Continuation - in -part of application No. 29/557,755 , (Continued )
filed on Mar . 11, 2016, now Pat. No. Des. 784,664 .
(51) LOC (10 ) CI. .... .............. 02-04 Primary Examiner — Cathron Brooks
(52 ) U .S. CI. Assistant Examiner - Aula Soroush
(74) Attorney , Agent, or Firm — Graham Curtin , P.A .
USPC ............... D2/923
(58 ) Field of Classification Search (57) CLAIM
USPC . .. . .. .. .. .. ... .. . ............ D2 /896 – 945
The ornamental design for a shoe, as shown and described .
CPC ...... A43B 21 /00 ; A43B 21/02 ; A43B 21/025 ;
A43B 21/03 ; A43B 21/04 ; A43B 21 /06 ; DESCRIPTION
A43B 21/08; A43B 21 /18 ; A43B 21/ 20 ;
A43B 21/ 22 ; A43B 21 /24 ; A43B 21/26 ; FIG . 1 is a perspective view of a shoe showing our new
A43B 21/ 265; A43B 21 /28 ; A43B design ;
21 /285 ; A43B 21/ 30 ; A43B 21 /32 ; A43B FIG . 2 is a side elevation view thereof;
FIG . 3 is a side elevation view thereof;
21/36 ; A43B 21/37 ; A43B 21 /38 ; A43B FIG . 4 is a top plan view thereof ;
21/ 39; A43B 21/ 40 ; A43B 21/42 ; A43B FIG . 5 is a front elevation view thereof; and ,
21/433 ; A43B 21/437 ; A43B 21 /44 ; A43B FIG . 6 is a back elevation view .
21/45 ; A43B 21/46 ; A43B 21 /47 ; A43B (Continued )

***

AUREL
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FILE
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 11 of 32

US D799 ,176 S
Page 2

The broken lines in the drawings illustrate threading that D784 ,664 S * 4 /2017 Leva .............................. D2/923
D785, 296 S * 5 / 2017 Lucia D2/896
form no part of the claimed design . The dot- dash lines show D787, 165 S * 5 / 2017 Sassi ........... ............ 12/896
portions of the shoe and form no part of the claimed design .
1 Claim , 3 Drawing Sheets OTHER PUBLICATIONS
‘Noa ' Espadrille Sandal, posted at nordstrom .com , earliest date
reviewed : May 18 , 2016 , [online ], acquired on Jun . 20 , 2017 .
Available from Internet, < URL : http ://shop .nordstrom . com /s/toni
(56 ) References Cited pons-noa - espadrille-sandal-women /
4384608 ? origin = keywordsearch -personalizedsort
U . S . PATENT DOCUMENTS & fashioncolor= BLACK % 20FABRIC % F % 20BLACK
% 20SUEDE> *
D640 ,861 S * 7 / 2011 Wilkenfeld D2/896 “ Ter ’ Slingback Espadrille Sandal, posted at nordstrom .com , earliest
D649, 752 S * 12 / 2011 Kampff . D2/911
date reviewed : May 18, 2016 , [online], acquired on Jun. 20 , 2017 .
D650 ,973 S * 12/2011 Panariello ................... D2 /919 Available from Internet, < URL : http ://shop .nordstrom .com /s/toni
D653,841 S * 2 /2012 Menezes ..... D2/923
pons-ter- slingback - espadrille -sandal-women /
D719 , 325 S * 12 /2014 Sassi .... D2 /919 3970067 ? origin = keywordsearch - personalizedsort
D724 ,825 S * 3 / 2015 Kampff ... . ... ... .. D2 /929
D730 ,636 S * 6 / 2015 Della Valle .... ... .. . D2 /939 & fashioncolor =NAVY % 20LINEN > *
D738 ,599 S * 9 / 2015 Sassi ............... D2/929
D783 ,242 S * 4 /2017 Arzegar .................... D2 /923 * cited by examiner
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 12 of 32

U . S . Patent Oct. 10, 2017 Sheet 1 of 3 US D799 ,176 S

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 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 13 of 32

atent Oct. 10, 2017 Sheet 2 of 3 US D799,176 S

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 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 14 of 32

U . S . Patent Oct. 10, 2017 Sheet 3 of 3 US D799 ,176 S

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Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 15 of 32

 
 
 
Exhibit B
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 16 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 17 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 18 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 19 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 20 of 32
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 21 of 32

 
 
 
Exhibit C
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 22 of 32
MYERS WOLIN, LLC
ATTORNEYS AT LAW
100 HEADQUARTERS PLAZA
WEST TOWER – 7TH FLOOR
MORRISTOWN, NJ 07960-6834
(PH) 973-828-1284
(FAX) 866-864-3947

HARRIS A. WOLIN
DIRECT DIAL: 973-828-1284
harris.wolin@myerswolin.com

WITHOUT PREJUDICE
SUBJECT TO FRE 408

January 21, 2019

Via Email to customerservice@shop.tarynrose.com

Via Email to info@authenticbrandsgroup.com
Confirmation by FedEx

Taryn Rose
3040 East Ana Street
Rancho Dominguez, CA 90221

Re: Potential Infringement of U.S. Patent D 779,176

Our Ref.: SEAS 8855

To Whom it May Concern:

We are intellectual property counsel to Sea Star Beachwear, LLC (“Sea Star” or “our Client”). Our Client
is a globally-recognized designer and supplier of resort and summer water sport shoes and clothing for
men, women and children. Its products can be found at www.seastarbeachwear.com. The purpose of this
letter is to make you aware of our Client’s rights and to prevent you from infringing upon such rights in
the future.

Sea Star invests heavily in developing and protecting its valuable intellectual property assets, including
unique product designs for its products. One of such products is the Seafarer Slingback™ found at
https://www.seastarbeachwear.com/collections/womens/products/seafarer-slingback-womens-black:
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 23 of 32

Taryn Rose
January 21, 2019
Page 2
WITHOUT PREJUDICE
SUBJECT TO FRE 408

The Seafarer Slingback™ is covered by U.S. Patent D 799,176 (“the ‘176 Patent”) for a “Shoe.” A copy
of the ‘176 Patent is attached hereto as Exhibit A and incorporated herein, with a representative figure
shown below. The ‘176 Patent entitles Sea Star to prevent others from making, using or selling a shoe
with a similar design, and in particular a design that is likely to lead an ordinary consumer into believing
that both designs originate from the same source.

Our Client has become aware that you intend to start selling a shoe under the brand TARYN ROSE and
the style name QUIN (“the QUIN Shoe”), as shown from pictures obtained by our Client in the attached
Exhibit B and incorporated herein.

We believe that the QUIN Shoe, if sold in the US, will infringe the ‘176 Patent and will be an attempt to
compete with Sea Star using Sea Star’s patented design without right or license. Although Sea Star is
confident in its legal position, it believes that this matter should be resolved in a business-like manner,
and we would welcome an opportunity to engage in a dialogue. However, in the meantime, we must
request that you immediately:
 Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 24 of 32

Taryn Rose
January 21, 2019
Page 3
WITHOUT PREJUDICE
SUBJECT TO FRE 408

1. Cease and desist from making, using, selling, offering to sell, distributing, or importing
the QUIN Shoe into the US and any other shoe incorporating Sea Star’s patented design
and provide written confirmation of the same;

2. Remove the QUIN Shoe from all US-directed websites, catalogs and from any
marketing/advertising collateral;

3. Provide an accounting of the QUIN Shoe actually sold in the US;

4. Represent in writing that the QUIN Shoe has not and will not be sold into the US and that
any US-bound inventory will be held pending our client’s claim; and

5. If the QUIN Shoe has been sold in the US by any third parties, provide us with the
identity of all entities that have sold, offered for sale, or currently have unsold inventory
of all relevant QUIN Shoe product.

Please note that Sea Star prefers to settle matters like this on an amicable basis and is hopeful that any
future controversy can be avoided. However, while an amicable resolution is always preferable, Sea Star
will not hesitate to vigorously defend its intellectual property rights if it ultimately becomes necessary.

This letter is written without prejudice to our client’s rights and remedies, all of which are reserved.

We look forward to hearing from you no later than January 25, 2019.

Very truly yours,

MYERS WOLIN, LLC

Harris A. Wolin

cc: Sea Star Beachwear, LLC

Attachments – Exhibits A and B

Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 25 of 32

Taryn Rose
January 21, 2019
Exhibit A
WITHOUT PREJUDICE
SUBJECT TO FRE 408

EXHIBIT A
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 26 of 32

Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408

EXHIBIT B
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 27 of 32

Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 28 of 32

Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 29 of 32

Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 30 of 32

Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 31 of 32

Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408
Case 1:19-cv-03411 Document 1 Filed 04/17/19 Page 32 of 32

Taryn Rose
January 21, 2019
Exhibit B
WITHOUT PREJUDICE
SUBJECT TO FRE 408