Volkswagen Group of America v. Varona - Complaint

Case 1:19-cv-24838-MGC Document 1 Entered on FLSD Docket 11/22/2019 Page 1 of 22
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
VOLKSWAGEN GROUP OF AMERICA,

INC.,
Plaintiff,
Civil Action No. ___________________
v.
ANDY VARONA and VEROTEC

WHEELS, INC.,
Defendants.
VERIFIED COMPLAINT
Plaintiff Volkswagen Group of America, Inc. (“VWGoA” or “Plaintiff”), on behalf of
Audi AG, alleges as follows for its complaint against Defendants Andy Varona and Verotec
Wheels, Inc. (collectively, “Defendants”).
NATURE OF THE SUIT
1. This is a civil action for trademark infringement, trademark counterfeiting,
trademark dilution, false designation of origin, and unfair competition under the Lanham Act. 15
U.S.C. §§ 1114, 1116, 1117, 1125(a).
2. This is also a civil action for patent infringement arising under the patent laws of
the United States, including, but not limited to, 35 U.S.C. §§ 101, et seq., including 35 U.S.C. §
271.
3. Plaintiff files this action against Defendants that trade upon Audi’s world-
renowned reputation by selling unauthorized and unlicensed counterfeit products and using
counterfeit versions of Audi’s federally-registered trademarks. Plaintiff has been, and continues
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to be, irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable
trademarks as a result of Defendants’ willful actions and seeks injunctive and monetary relief.
4. Plaintiff also files this action against Defendants based upon Defendants’
infringement of United States Design Patent No. D721,028 S (the “’028 patent”) by importing,
manufacturing, offering for sale, and/or selling products incorporating the design of the ’028
patent. Such infringement is both deliberate and willful.
5. Plaintiff’s claims against the Defendants are based on: (1) the Defendants’ misuse
of Audi’s federally-registered trademarks to market and sell counterfeit products; (2) the
Defendants’ advertising, offer for sale, and actual sales of such products to consumers in this
Judicial District; (3) the Defendants’ use of instrumentalities in this District to promote and sell
counterfeit products including through use of online marketplaces, such as eBay, via Defendants’
eBay seller account “oemwheelsdirect”; and (4) Defendants’ infringement of the ’028 patent.
THE PARTIES
6. Plaintiff Volkswagen Group of America, Inc. (“VWGoA”) is a New Jersey
corporation with its principal place of business in Herndon, Virginia.
7. Audi AG is a corporation organized under the laws of Germany with its principal
place of business in Ingolstadt, Germany. Audi AG is a world-famous automobile manufacturer
that, through Plaintiff, sells Audi automobiles and genuine parts and accessories (“Audi
Products”) through a network of licensed Audi dealerships in Florida and throughout the United
States. Under agreement with Audi AG, Plaintiff polices and enforces Audi’s trademarks in the
United States. Plaintiff Volkswagen Group of America, Inc. and Audi AG are referred to herein,
together, or individually as “Audi.”
8. Defendant Verotec Wheels, Inc. is a Florida corporation with its principal place of
business at 6619 South Dixie Highway #243, Miami, Florida 33143. A true and correct copy of
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Verotec Wheels Inc.’s corporation profile from the Florida Department of State website is
attached to the Verified Complaint as Exhibit 1.
9. Defendant Andy Varona (aka Hector Andy Varona and Hector DeVarona) is an
individual and the CEO of Defendant Verotec Wheels, Inc., and is a moving, conscious, and
active force behind the infringing acts, and actively participated in and approved the acts of
infringement as alleged herein. On information and belief, Defendant Varona resides in Miami,
Florida.
JURISDICTION AND VENUE
10. This Court has original subject matter jurisdiction over the claims in this action
pursuant to 15 U.S.C. § 1051, et seq., 15 U.S.C. § 1121, 28 U.S.C. § 1331, and 28 U.S.C. §
1338(a)-(b).
11. The Defendants have targeted sales to Florida residents by operating an Online
Store that offers shipping within the United States, including Florida and this District, and
accepts payment in U.S. dollars. Plaintiff confirmed, via test purchases made by Plaintiff’s
investigators, that the Defendants ship their infringing and counterfeit products to residential
addresses in this District. On information and belief, the Defendants have sold additional
products, beyond those purchased by Plaintiff’s investigators, that infringe the ’028 patent or
bear counterfeit versions of Audi’s federally-registered trademarks to residents of Florida. The
Defendants are committing tortious acts in Florida, are engaging in interstate commerce, and
have wrongfully caused Plaintiff substantial injury in the State of Florida.
12. This Court has personal jurisdiction over Defendants because they have
committed and continue to commit acts of infringement in violation of 35 U.S.C. § 271 in this
District, and place infringing products into the stream of commerce, with the knowledge or
understanding that such products are sold in the State of Florida, including in this District. The
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acts by Defendants cause injury to Plaintiff within this District. Upon information and belief,
Defendants derive substantial revenue from the sale of infringing products within this District,
expect their actions to have consequences within this District, and derive substantial revenue
from interstate commerce.
13. Defendants acts of infringement giving rise to this cause of action occur in this
District, including Defendants’ acts in violation of 35 U.S.C. § 271. Defendant Verotec Wheels,
Inc. is a Florida corporation registered with the Florida Department of State, with its principle
place of business in Miami, Florida. See Exhibit 1. On information and belief, Defendant Varona
resides in Miami, Florida.
14. Venue is proper over Defendants in this Court pursuant to 28 U.S.C. § 1391(b)
and (c), and 28 U.S.C. § 1400(b).
FACTUAL BACKGROUND
15. Audi is a world-famous automobile manufacturer that sells Audi automobiles and
genuine parts and accessories through a network of licensed Audi dealerships. In addition to the
physical car lots operated by its licensees, Plaintiff also operates various websites, including
without limitation audiusa.com and audicollectionusa.com, through which consumers can
purchase genuine Audi parts, automotive accessories, and personal goods directly from Audi.
16. Audi uses its trademarks in connection with the marketing of Audi vehicles,
accessories, parts, and services. Audi is the owner of numerous federally-registered trademarks
for automobiles, parts, accessories, and a long list of related services and merchandise, including
the following representative sample, collectively referred to as the “Audi Trademarks”:
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Registration Mark Reg. Date Date of First Relevant

No. Use in Goods/Services
Commerce
0906525 January 26, June 1955 Automobiles;
1972 Automobile engines
3007305 October 18, December 31, Automobile wheels

2005 1970
3201037 January 23, January 22, Automobiles and

2007 1936 structural parts therefor
0708352 AUDI December 44(E) Automobiles and
13, 1960 structural parts thereof
2083439 July 29, April 1995 Automobiles and
1997 structural parts
therefor; Automobile
dealership services
4284786 February 5, 44(E) Vehicles and their

2013 structural parts; Repair
maintenance and
servicing of vehicles
4995364 AUDI July 12, 66(A) Motor vehicle
2016 maintenance, repair,
and servicing
17. Audi’s world-famous and distinctive trademarks symbolize the Audi brand and its
marketability, reputation, and goodwill. Audi first registered AUDI as a trademark with the
United States Patent and Trademark Office (or “USPTO”) in 1960 (U.S. Reg. No. 0,708,352),
and has subsequently obtained numerous other registrations for that mark. Audi first registered
the AUDI RINGS trademark with the USPTO in 1971 (U.S. Reg. No. 0,906,525) and has also
obtained numerous other registrations for that mark. True and correct “status” copies of the Audi
Trademark registrations, obtained from the Trademark Status Document Retrieval (TSDR)
database of the United States Patent and Trademark Office, are attached hereto as Exhibit 2.
Audi’s registrations for the Audi Trademarks are valid, unrevoked, subsisting, and many are
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incontestable. These registrations constitute prima facie evidence of Audi’s exclusive ownership
of the Audi Trademarks pursuant to 15 U.S.C. § 1057(b).
18. Audi extensively and continuously uses the Audi Trademarks on advertisements,
vehicles, automobile accessories, apparel, and other products to identify the source of Audi’s
goods and services. In addition to producing high-quality vehicles, Audi produces automotive
parts and accessories for its vehicles, including without limitation, wheels that bear or are in the
form of the AUDI RINGS mark. Defendants’ counterfeit merchandise competes directly with
Audi’s genuine goods.
19. Audi has spent hundreds of millions of dollars and has expended significant effort
in advertising, promoting, and developing the Audi Trademarks throughout the world. As a result
of such advertising and expenditures, Audi has established considerable goodwill in its
trademarks. The distinctive Audi Trademarks have become widely known and recognized
throughout the world as a symbol of high quality automotive goods and services. The goodwill
associated with the Audi Trademarks is of incalculable and inestimable value to Audi.
20. Audi has further protected its innovative designs through design patents issued by
the United States Patent and Trademark Office (the “USPTO”), including but not limited to the
asserted design patent, D721,028 S (the “’028 patent”). A true and correct copy of the ’028
patent is attached to the Verified Complaint as Exhibit 3.
21. Audi owns the ’028 patent, titled “Vehicle Wheel Rim,” which was duly issued
on January 13, 2015 by the USPTO.
Defendants’ Violations of the AUDI RINGS mark
22. On information and belief, Defendants registered the eBay seller ID
“oemwheelsdirect,” through which Defendants advertise, offer for sale, and sell wheels bearing
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counterfeits of Audi’s world-famous trademarks, including, but not limited to, the AUDI RINGS
trademark.
23. As of June 2019, the eBay store “oemwheelsdirect” had 35 counterfeit Audi
wheel sets for sale. Each wheel had the AUDI RINGS mark on the center wheel cap and the
product descriptions indicated that the wheels and center wheel caps were “OEM,” representing
to consumers that the wheels were manufactured by Audi. A true and correct copy of a printout
of the “oemwheelsdirect” eBay store webpage listing Defendants’ products for sale is attached to
the Verified Complaint as Exhibit 4.
24. Each product offered for sale on the “oemwheelsdirect” eBay store contained the
following disclaimer in its description: “many brands and designs are from direct supplier and
manufacturers for trade show purposes only and are not sold through the dealers nor owned by
them as OEM thus why you are getting over a 70% savings on most brands.”
25. In June 2019, Plaintiff was informed that Defendants were suspected of operating
a counterfeiting ring, and importing and selling counterfeit parts and accessories bearing the
Audi Trademarks in the United States. Plaintiff began an investigation of Defendants at that
time.
26. In July 2019, Plaintiff’s investigator purchased infringing and counterfeit products
from the “oemwheelsdirect” eBay store to determine their authenticity, among other things.
27. In July 2019, the Defendants shipped the goods purchased by Plaintiff’s
investigator to a residential address in Florida. True and correct copies of the mailing labels for
each item are attached to the Verified Complaint as Exhibit 5. True and correct copies of
photographs of Defendants’ products, including counterfeit AUDI RINGS, as received by the
investigator, are shown in Exhibit 6.
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28. Plaintiff has inspected the goods sold by the Defendants and have confirmed that
they are counterfeit.
Audi Trademark Infringing and Counterfeit

U.S. Reg. No. 3,201,037 Product
29. As shown above, Defendants’ infringing and counterfeit wheel product that was
advertised, offered for sale, and sold via the eBay store “oemwheelsdirect” bears the world-
famous Audi Trademarks, including, but not limited to, the AUDI RINGS mark.
30. Defendants are in no way affiliated with, authorized by, or sponsored by Audi,
and have no authority to use the Audi Trademarks to identify the goods and services that they
advertise, promote, or sell. Nor are Defendants authorized to make, use, sell, offer to sell, or
import products using the Audi Marks.
31. The Defendants facilitate their sales by falsely stating on the “oemwheelsdirect”
eBay store that their products are “authentic,” “OEM,” and “factory”—which they are not.
32. The Defendants further deceive consumers by using the Audi Trademarks and
images of Audi’s automobiles on the “oemwheelsdirect” eBay store, while using strategic item
titles and descriptions that will trigger their listings when consumers enter Internet search terms
for Audi Products.
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33. Defendants’ use of the Audi Trademarks in conjunction with the manufacture,
importation, advertisement, promotion, and sale of their unauthorized products bearing the Audi
Trademarks constitutes misappropriation of the Audi Trademarks, and is likely to cause potential
purchasers of Defendants’ products and services, as well as the public at large, to believe that
Defendants’ products are affiliated with, authorized, sponsored, or endorsed by Audi. In
addition, Defendants’ wrongful use of the Audi Trademarks, or confusingly similar versions
thereof, dilutes, tarnishes, and whittles away the distinctiveness of the Audi Trademarks.
34. Defendants continue to use the Audi Trademarks, and/or intentionally similar
versions thereof, willfully with actual knowledge of Audi’s prior adoption and use of the Audi
Trademarks and with the intent to mislead and deceive consumers and the general public. In so
doing, Defendants have caused irreparable damage to the Audi Trademarks and to Audi’s
goodwill and reputation.
35. Audi exercises great care and exerts substantial effort to control the nature and
quality of the genuine goods and services offered under the Audi Trademarks.
36. Defendants are not subject to Audi’s quality control specifications, and do not pay
royalties to Audi.
37. Defendants’ unauthorized use of the Audi Trademarks, or confusingly similar
versions thereof, is likely to cause confusion as to the source and/or sponsorship of Defendants’
products and services. In addition, Defendants’ unauthorized use of the Audi Trademarks, as
alleged above, dilutes and blurs the distinctiveness of the marks.
38. Based on experience, Plaintiff is informed and believes that unless this Court
enters a preliminary and permanent injunction in this case, Defendants will simply dispose of or
divert the counterfeit goods bearing the Audi Trademarks and all evidence relating to the
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manufacture, importation, advertisement, and sale of the counterfeit goods, and will disclaim any
knowledge of the persons from whom they bought and to whom they sold such counterfeit
goods.
Defendants’ Infringement of the ’028 Patent
39. In recognition of the commercial success of the wheel design of the ’028 patent,
Defendants copied the ’028 patent design. The design of Defendants’ wheels is the same, or
substantially the same, as the design of the ’028 patent. The designs are so similar as to be nearly
identical such that an ordinary observer, giving such attention as a purchaser usually gives,
would be so deceived by the substantial similarity between the designs so as to be induced to
purchase Defendants’ products believing them to be substantially the same as the design
protected by the ’028 patent.
40. As the side-by-side comparison below reveals, Defendants have misappropriated
Audi’s patented vehicle wheel rim designs, constituting infringement of the ’028 patent.
U.S. Design Patent D721,028 S Infringing and Counterfeit

Product
41. As shown above, Defendants’ wheel has a design that is the same, or substantially
the same as the design of the ’028 patent.
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42. Audi has not granted a license or any other authorization to Defendants to make
use, offer for sale, sell, or import wheels that embody the design patented in the ’028 patent
which is proprietary to Audi.
43. In spite of the rights of Plaintiff, Defendants willfully and knowingly infringed
Plaintiff’s rights, including as to the ’028 patent.
44. Defendants’ wrongful conduct and infringing activities will continue unless
enjoined by this Court.
COUNT I: TRADEMARK INFRINGEMENT AND COUNTERFEITING

(15 U.S.C. § 1114)
45. Plaintiff hereby re-alleges and incorporates by reference the general allegations
set forth above in Paragraphs 1-44.
46. The present action against the Defendants is in-part based on their unauthorized
use in commerce of infringing and counterfeit imitations of the federally-registered Audi
Trademarks in connection with the sale, offering for sale, distribution, and/or advertising of
infringing goods.
47. The Audi Trademarks are distinctive.
48. The Defendants have sold, offered to sell, marketed, distributed, and advertised,
and are still selling, offering to sell, marketing, distributing, and advertising products using the
Audi Trademarks without Plaintiff’s permission.
49. Audi’s United States registrations for its trademarks are in full force and effect.
See Exhibit 2. Upon information and belief, the Defendants have knowledge of Audi’s rights in
the Audi Trademarks and are willfully infringing, and intentionally using the Audi Trademarks.
The Defendants’ willful, intentional, and unauthorized use of the Audi Trademarks is likely to
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cause, and is causing, confusion, mistake, and deception as to the origin and quality of the
infringing and counterfeit products among the general public.
50. The Defendants’ activities constitute willful trademark infringement and
counterfeiting under Section 32 of the Lanham Act. 15 U.S.C. § 1114.
51. Defendants’ use of the Audi Trademarks, or confusingly similar variations
thereof, have been and continue to be done with the intent to cause confusion, mistake, and to
deceive consumers and members of the public concerning the source and/or sponsorship of
Defendants’ products and services. Defendants use the Audi Trademarks in connection with their
counterfeit products with the knowledge that their use of the Audi Trademarks is unauthorized.
Accordingly, this is an exceptional case within the meaning of 15 U.S.C. § 1117(a).
52. Plaintiff has no adequate remedy at law, and if the Defendants’ actions are not
enjoined, Plaintiff will continue to suffer irreparable harm to its reputation and the goodwill of its
marks.
53. The injuries and damages sustained by Plaintiff have been directly and
proximately caused by the Defendants’ wrongful reproduction, use, advertisement, promotion,
offering to sell, and sale of the counterfeit products.
54. As a direct and proximate result of Defendants’ conduct, Plaintiff is entitled to the
equitable remedy of an accounting for, and a disgorgement of, all revenues and/or profits
wrongfully derived by Defendants from their infringing and diluting use of the Audi Trademarks
pursuant to 15 U.S.C. § 1117. Alternatively, Plaintiff is entitled to statutory damages pursuant to
15 U.S.C. § 1117(c) of not less than $1000 and up to $2,000,000 per counterfeit mark per type of
goods sold, offered for sale, or distributed.
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COUNT II: FALSE DESIGNATION OF ORIGIN OR SPONSORSHIP

AND FALSE ADVERTISING
(15 U.S.C. § 1125(a))
56. Defendants have knowingly used the Audi Trademarks, or confusingly similar
variations thereof, in connection with the products and services that Defendants manufacture,
import, advertise, promote, and sell. Defendants’ actions render this case exceptional within the
meaning of 15 U.S.C. § 1117(a).
57. Defendants use the Audi Trademarks, and/or confusingly similar variations
thereof, in connection with counterfeit goods that they import and sell to consumers in the United
States.
58. Defendants’ use of the Audi Trademarks is likely to confuse, mislead, or deceive
customers, purchasers, and members of the general public as to the origin, source, sponsorship,
or affiliation of Defendants’ services and products, and is likely to cause such people to
mistakenly believe that Defendants are in some way affiliated with Audi and that their
counterfeit products and services have been authorized, sponsored, approved, endorsed, or
licensed by Audi.
59. Defendants’ acts constitute false or misleading descriptions, false advertising, and
false designations of the origin and/or sponsorship of Defendants’ goods in violation of Section
43(a) of the Lanham Act, as amended, 15 U.S.C. § 1125(a).
60. Plaintiff has no adequate remedy at law, and if Defendants’ actions are not
enjoined, Plaintiff will continue to suffer irreparable harm to its reputations and the associated
goodwill of the Audi Trademarks.
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equitable remedy of a preliminary injunction, a permanent injunction, an accounting for, and a
disgorgement of, all revenues and/or profits wrongfully derived by Defendants from their
infringing and diluting use of the Audi Trademarks pursuant to 15 U.S.C. § 1117.
COUNT III: TRADEMARK DILUTION

(15 U.S.C. § 1125(c))
63. The Audi Trademarks have become famous and distinctive worldwide through
Plaintiff’s continuous and exclusive use of them in connection with Audi’s products and
services.
64. Because Audi’s products and services have gained a reputation for superior
quality, durability, and performance, the Audi Trademarks have gained substantial renown.
65. Defendants have willfully and intentionally used and continue to use the Audi
Trademarks, or confusingly similar variations thereof, in connection with the advertisement,
promotion, and sale of Defendants’ products and services.
66. Defendants’ use of the Audi Trademarks, and confusingly similar variations
thereof, has caused and continues to cause irreparable injury to and actual dilution of the Audi
Trademarks’ distinctive quality in violation of Audi’s rights under 15 U.S.C. § 1125(c).
Defendants’ wrongful use of the Audi Trademarks dilutes, blurs, tarnishes, and whittles away the
distinctiveness of the Audi Trademarks.
67. Defendants have used and continue to use the Audi Trademarks, and confusingly
similar variations thereof, willfully and with the intent to dilute the Audi Trademarks, and with
the intent to trade on Audi’s reputation and the goodwill inherent in the Audi Trademarks.
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68. As a direct and proximate result of Defendants’ conduct, Plaintiff has suffered
irreparable harm to the Audi Trademarks.
69. Unless Defendants are enjoined, the Audi Trademarks will continue to be
irreparably harmed and diluted. Plaintiff has no adequate remedy at law that will compensate for
the continued and irreparable harm it will suffer if Defendants’ actions are allowed to continue.
70. Defendants have used and continue to use the Audi Trademarks, or counterfeits
thereof, willfully, with the intent to dilute the Audi Trademarks and trade on Audi’s reputation
and goodwill. Accordingly, this is an exceptional case within the meaning of 15 U.S.C. §
1111(a).
equitable remedy of an accounting for, and a disgorgement of, all revenues and/or profits
wrongfully derived by Defendants from their infringing and diluting use of the Audi Trademarks
pursuant to 15 U.S.C. § 1117.
COUNT IV: INFRINGEMENT OF

UNITED STATES DESIGN PATENT NO. D721,028 S
73. Audi’s United States Design Patent D721,028 S (the “’028 patent”) is valid and
enforceable.
74. Audi is the owner of all right, title, and interest in and to the designs covered by
the ’028 patent, and Audi is entitled to receive all damages and the benefits of all other remedies
for Defendants’ infringement.
75. Without permission or authorization from Audi, Defendants have imported,
manufactured, used, offered for sale, and/or sold and continue to import, manufacture, use, offer
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for sale, and/or sell including, without limitation, the infringing products, which embody the
design covered by the ’028 patent.
76. Defendants’ infringing products contain each and every aspect of the claimed
designs in the ’028 patent.
77. Defendants’ infringing products have an overall appearance that is confusingly
similar to the claimed designs in the ’028 patent.
78. Defendants’ infringing products have an overall appearance that is substantially
the same as the claimed designs in the ’028 patent.
79. Defendants have actual notice of the ’028 patent since at least November 22,
2019.
80. Defendants’ infringement of the ’028 patent has been and continues to be willful.
81. Defendants’ conduct has caused and will continue to cause Plaintiff substantial
damage, including irreparable harm, for which Plaintiff has no adequate remedy at law, unless
and until Defendant is enjoined from infringing the ’028 patent.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for judgment against Defendants as follows:
A. Under all claims for relief, that a preliminary and permanent injunction be issued
enjoining Defendants, their employees, agents, successors and assigns, and all those in active
concert and participation with Defendants, and each of them who receives notice directly or
otherwise of such injunctions, from:
(1) imitating, copying, or making unauthorized use of any of the Audi
Trademarks, counterfeits thereof, or any confusingly similar variations thereof;
(2) importing, manufacturing, producing, distributing, circulating, selling,
offering for sale, advertising, promoting, or displaying any service or product using any
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simulation, reproduction, counterfeit, copy, or any confusingly similar variation of any of
the Audi Trademarks;
(3) using any simulation, reproduction, counterfeit, copy, or confusingly
similar variation of the Audi Trademarks, or trade in connection with the promotion,
advertisement, display, sale, offering for sale, manufacture, production, circulation, or
distribution of any service or product;
(4) using any false designation of origin or false description, including
without limitation, any letters or symbols constituting the Audi Trademarks, or
performing any act, which can, or is likely to lead members of the trade or public to
believe that Defendants and/or any service or product manufactured, distributed or sold
by Defendants is in any manner associated or connected with Audi, or is sold,
manufactured, licensed, sponsored, approved, or authorized by Audi;
(5) transferring, consigning, selling, shipping, or otherwise moving any
goods, packaging or other materials in Defendants’ possession, custody or control
bearing a design or mark substantially similar to the Audi Trademarks;
(6) engaging in any other activity constituting unfair competition with Audi
with respect to the Audi Trademarks, or constituting an infringement of any or all of the
Audi Trademarks, or of Audi’s rights in, or to use or exploit, any or all of the Audi
Trademarks;
(7) registering, trafficking in, or using any domain names incorporating the
Audi Trademarks, or any confusingly similar variations thereof; and
(8) instructing, assisting, aiding or abetting any other person or business entity
in engaging in or performing any of the activities referred to in subparagraphs (1) through
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(7) above.
B. Under all claims for relief, for an order enjoining Defendants from selling,
distributing, discarding, giving away, or otherwise disposing of Defendants’ counterfeit goods
bearing the Audi Trademarks, and requiring Defendants to sequester said counterfeit goods,
including without limitation, any wheels or other goods bearing the Audi Trademarks as
described in this Verified Complaint in a separate and safe location at Defendants’ place or
places of business, as well as all business records related thereto, including any computers or
other digital media containing such business records to be made available for Plaintiff and its
representatives to examine, photograph, and/or copy any such goods and information;
C. For an order directing Defendants to deliver to Plaintiff and its counsel for
destruction all products, labels, tags, signs, prints, packages, videos, and advertisements in their
possession or under their control, bearing or using any or all of the Audi Trademarks or any
confusingly similar variation thereof, and all plates, molds, matrices and other means of making
the same, pursuant to 15 U.S.C. § 1118.
D. For an order directing such other relief as the Court may deem appropriate to
prevent consumers and the public in general from deriving the erroneous impression that any
service or product manufactured, sold or otherwise circulated or promoted by Defendants is
authorized by Plaintiff or related in any way to Audi’s products or services.
E. For an order directing Defendants to file with the Court and serve upon Plaintiff’s
counsel within thirty (30) days after entry of such judgment, a report in writing under oath,
setting forth in detail the manner and form in which Defendants have complied with the above.
F. For an order permitting Plaintiff, and/or auditors for Plaintiff, to audit and inspect
the books and records of Defendants for a period of six months after entry of final relief in this
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matter to determine the scope of Defendants’ past use of the Audi Trademarks, including all
revenues and sales related to Defendants’ use of the Audi Trademarks, as well as Defendants’
compliance with orders of this Court.
G. For an award of Plaintiff’s costs and disbursements incurred in this action,
including Plaintiff’s reasonable attorneys’ fees under 15 U.S.C. § 1117(a).
H. For an order requiring Defendants to file with the Court and provide to Plaintiff
an accounting of all sales and profits realized through Defendants’ use of the Audi Trademarks
and any counterfeits thereof.
I. For judgment in an amount equivalent to three times Defendants’ profits and
reasonable attorneys’ fees because of Defendants’ intentional, willful and knowing use of
counterfeits of the Audi Trademarks pursuant to 15 U.S.C. § 1117(b).
J. In the alternative, that Plaintiff be awarded statutory damages for willful
trademark counterfeiting pursuant to 15 U.S.C. § 1117(c)(2) of $2,000,000 for each and every
use of the Audi Trademarks.
K. For an award of interest, including pre-judgment interest on the foregoing sums.
L. For a judgment that Defendants have infringed the ’028 patent.
M. For a preliminary and permanent injunction enjoining Defendants and their
agents, officers, directors, employees and all persons in privity or active concert or participation
with them, directly or indirectly, from infringing, inducing others to infringe, or contributing to
the infringement of the ’028 patent.
N. For a judgment and award that Defendants account for and pay to Plaintiff
damages adequate to compensate for Defendants’ infringement of the ’028 patent, including lost
profits but in no event less than a reasonable royalty.
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O. For a judgment and award of Defendants’ total profits in an amount subject to
proof at trial, pursuant to 35 U.S.C. § 289.
P. For a judgment and award of any supplemental damages sustained by Plaintiff for
any continuing post-verdict infringement of the ’028 patent until entry of final judgment with an
accounting as needed.
Q. For a finding that Defendants’ infringement is willful and an award of increased
damages for willful infringement pursuant to 35 U.S.C. § 284.
R. For an order finding that this case is exceptional case under 35 U.S.C. § 285 and
awarding Audi its costs, expenses, and disbursements incurred in this action, including
reasonable attorneys’ fees as available by law to be paid by Defendants;
S. For an award of Plaintiff’s costs and disbursements incurred in this action,
including Audi’s reasonable attorneys’ fees under 15 U.S.C. § 1117(a).
T. For an order requiring Defendants to file with the Court and provide to Plaintiff
an accounting of all sales and profits realized through Defendants’ use of the Audi Trademarks
in connection with any of Defendants’ counterfeit goods.
U. For such other and further relief as the Court may deem just and proper.
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Date: November 22, 2019 Respectfully submitted,
/s/ Armando P. Rubio

Armando P. Rubio (Fla. Bar No. 478539)
FIELDS HOWELL LLP
9155 S. Dadeland Blvd., Suite 1012
Miami, FL 33156
Phone: 786.870.5610
Fax: 855.802.5821
arubio@fieldshowell.com
Of Counsel:
Nicholas J. Nowak (pro hac vice pending)

Monica Riva Talley (pro hac vice pending)
Daniel S. Block (pro hac vice pending)
Matthew M. Zuziak (pro hac vice pending)
STERNE KESSLER GOLDSTEIN & FOX, P.L.L.C.
1100 New York Ave., N.W., Suite 600
Washington, D.C. 20005-3934
Telephone No.: (202) 371-2600
Facsimile No.: (202) 371-2540
mtalley@sternekessler.com
nnowak@sternekessler.com
dblock@sternekessler.com
mzuziak@sternekessler.com
Attorneys for Plaintiff Volkswagen Group of

America, Inc.
21
VERIFICATION OF VERIFIED COMPLAINT
I, under penalty of perjury of the laws of the United States declare:
I am employed by Volkswagen Group of America, Inc. as and I have
read, and am familiar with, and have personal knowledge of the contents of the foregoing Verified
Complaint; and that the allegations thereof are true and correct or, to the extent that matters are not
within my personal knowledge, that the facts stated therein have been assembled by authorized
personnel, including counsel, and that I am informed that the facts stated therein are true and
correct.
Executed on November 11, 2019
22
Case 1:19-cv-24838-MGC Document 1-1 Entered on FLSD Docket 11/22/2019 Page 1 of 3
Exhibit 1
11/21/2019
Case Detail by on
1:19-cv-24838-MGC Document 1-1 Entered Entity Name Docket 11/22/2019 Page 2 of 3
FLSD
Florida Department of State D C
Department of State / Division of Corporations / Search Records / Detail By Document Number /
Detail by Entity Name

Florida Profit Corporation
VEROTEC WHEELS INCORPORATED
Filing Information
Document Number P12000031413

FEI/EIN Number 45-5177452
Date Filed 04/02/2012
State FL
Status ACTIVE
Last Event REINSTATEMENT
Event Date Filed 11/08/2016
Principal Address
6619 South Dixie Highway

#243
MIAMI, FL 33143
Changed: 02/09/2019
Mailing Address

#243
MIAMI, FL 33143
Changed: 11/08/2016
Registered Agent Name & Address
Morris, Will Law Office LLP

1200 NW 78 Ave, Suite 300
Suite 300
Doral, FL 33126
Name Changed: 02/09/2019
Address Changed: 02/09/2019

Officer/Director Detail
Name & Address
Title CEO
search.sunbiz.org/Inquiry/CorporationSearch/SearchResultDetail?inquirytype=EntityName&directionType=Initial&searchNameOrder=VEROTECWHEE… 1/2
11/21/2019
Case Detail by on
1:19-cv-24838-MGC Document 1-1 Entered Entity Name Docket 11/22/2019 Page 3 of 3
FLSD
Varona, Hector Andy
#243
MIAMI, FL 33143
Annual Reports
Report Year Filed Date

2017 04/12/2017
2018 03/10/2018
2019 02/09/2019
Document Images
02/09/2019 -- ANNUAL REPORT View image in PDF format
11/08/2016 -- REINSTATEMENT View image in PDF format
04/02/2012 -- Domestic Profit View image in PDF format
Florida Department of State, Division of Corporations
search.sunbiz.org/Inquiry/CorporationSearch/SearchResultDetail?inquirytype=EntityName&directionType=Initial&searchNameOrder=VEROTECWHEE… 2/2
Exhibit 2
11/21/2019
Case Status Search
1:19-cv-24838-MGC Document 1-2 Entered onSN 0906525
FLSD Docket 11/22/2019 Page 2 of 26
BULK DATA: Since May 7 at 12 a.m., the TSDR Application Programming Interface (API) has not included all information. Images of
trademark registration certificates issued since July 2016 and some office actions are absent in the API. Customers who need to
retrieve a copy of a registration certificate or an office action should download it directly from the TSDR documents tab.
INTERMITTENT SYSTEM ISSUES: Due to high-volume usage, you may experience intermittent issues on the Trademark Status and
Document Retrieval (TSDR) system between 6 – 8 a.m. ET. Refreshing your web browser should resolve the issue. If you still need
assistance accessing a document, email teas@uspto.gov and include your serial number, the document you are looking for, and a
screenshot of any error messages you have received.
STATUS DOCUMENTS MAINTENANCE Back to Search Print
Generated on: This page was generated by TSDR on 2019-11-21 10:38:06 EST
Mark:
US Serial Number: 72336890 Application Filing Date: Sep. 03, 1969
US Registration Number: 906525 Registration Date: Jan. 26, 1971
Register: Principal
Mark Type: Trademark
TM5 Common Status LIVE/REGISTRATION/Issued and Active

Descriptor:
The trademark application has been registered with the Office.
Status: The registration has been renewed.
Status Date: Jan. 24, 2011
Mark Information
Mark Literal Elements: None
Standard Character Claim: No
Mark Drawing Type: 2 - AN ILLUSTRATION DRAWING WITHOUT ANY WORDS(S)/ LETTER(S)/NUMBER(S)
Design Search Code(s): 26.01.02 - Circles, plain single line; Plain single line circles
26.01.16 - Circles touching or intersecting
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: AUTOMOBILES, AUTOMOBILE RADIATORS, STEERING WHEELS, AND WHEEL CAPS
International Class(es): 012 U.S Class(es): 019 - Primary Class
Class Status: ACTIVE
Basis: 1(a)
First Use: Jan. 22, 1936 Use in Commerce: Jun. 1955
For: AUTOMOBILE ENGINES
International Class(es): 012 U.S Class(es): 023 - Primary Class
https://tsdr.uspto.gov/#caseNumber=0906525&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch 1/3
11/21/2019
Case Status Search
Basis: 1(a)
First Use: Jan. 22, 1936 Use in Commerce: Jun. 1955
Basis Information (Case Level)
Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: AUDI AKTIENGESELLSCHAFT
Owner Address: D-85045

INGOLSTADT GERMANY
Legal Entity Type: CORPORATION State or Country Where GERMANY

Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: SUSAN B. FLOHR Docket Number: 116315.00139
Attorney Primary Email trademarks@blankrome.com Attorney Email Authorized: Yes

Address:
Correspondent
Correspondent SUSAN B. FLOHR

Name/Address: Blank Rome LLP
1825 Eye Street NW
Washington, DISTRICT OF COLUMBIA UNITED STATES 20006
Phone: 202.420.2200 Fax: 202.420.2201
Correspondent e-mail: trademarks@blankrome.com Correspondent e-mail Yes

Authorized:
Domestic Representative
Domestic Representative SUSAN B. FLOHR Phone: 202.772.5800

Name:
Fax: 202.772.5858
Domestic Representative e- trademarks@blankrome.com Domestic Representative e- Yes

mail: mail Authorized:
Prosecution History
Date Description Proceeding Number
Jun. 24, 2019 NOTICE OF SUIT
11/21/2019
Case Status Search
Dec. 20, 2017 NOTICE OF SUIT
Jul. 20, 2016 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jan. 25, 2012 NOTICE OF SUIT
Jan. 24, 2011 REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS) 77315
Jan. 24, 2011 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Jan. 20, 2011 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 77315
Jan. 14, 2011 TEAS SECTION 8 & 9 RECEIVED
Oct. 15, 2009 NOTICE OF SUIT
Sep. 19, 2008 CASE FILE IN TICRS
Sep. 13, 2002 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Feb. 15, 2001 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
Feb. 15, 2001 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Aug. 29, 2000 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Feb. 26, 1991 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Jan. 28, 1991 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
Jan. 22, 1991 REGISTERED - SEC. 9 FILED/CHECK RECORD FOR SEC. 8
Feb. 28, 1977 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
TM Staff and Location Information
TM Staff Information - None
File Location
Current Location: GENERIC WEB UPDATE Date in Location: Jan. 24, 2011
Assignment Abstract Of Title Information - Click to Load
Proceedings - Click to Load
11/21/2019
Case Status Search
Mark:
US Serial Number: 78339523 Application Filing Date: Dec. 11, 2003
US Registration Number: 3007305 Registration Date: Oct. 18, 2005
Register: Principal

Descriptor:
Status Date: Oct. 17, 2015
Publication Date: Jul. 26, 2005
Mark Information
Description of Mark: The mark consists of four interlocking rings.
26.01.30 - Circles, exactly four circles; Four circles
Related Properties Information
Claimed Ownership of US 0906525, 2073484, 2083439 and others

Registrations:
Goods and Services
Note:
11/21/2019
Case Status Search
For: automobile cleaning preparations, namely sealer polish, wash and wax spray, leather cleaner, detailing spray and glass cle
International Class(es): 003 - Primary Class U.S Class(es): 001, 004, 006, 050, 051, 052
Basis: 1(a)
First Use: Dec. 31, 2000 Use in Commerce: Dec. 31, 2000
For: metal key rings and money clips
International Class(es): 006 - Primary Class U.S Class(es): 002, 012, 013, 014, 023, 025, 050
Basis: 1(a)
For: [ cutlery, namely, miniature pocket knives ]
International Class(es): 008 - Primary Class U.S Class(es): 023, 028, 044
Class Status: SECTION 8 - CANCELLED
Basis: 1(a)
For: sunglasses; PDA cases; mouse pads; protective car maintenance work gloves [; golf scopes ]
International Class(es): 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Basis: 1(a)
For: automobile wheels and valve stem caps; fabric tire covers
Basis: 1(a)
For: watches
International Class(es): 014 - Primary Class U.S Class(es): 002, 027, 028, 050
Basis: 1(a)
For: pens
International Class(es): 016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 05
Basis: 1(a)
For: leather goods, namely travel organizers in the nature of brief-case type portfolios, wallets, hand bags and briefcases; canva
luggage and duffle bags
11/21/2019
Case Status Search
Basis: 1(a)
For: beverage mugs; household gloves for car maintenance
Basis: 1(a)
For: stadium blankets
International Class(es): 024 - Primary Class U.S Class(es): 042, 050
Basis: 1(a)
For: apparel, namely sweater vests, caps, visors, sweatshirts, wind resistant jackets, camp shirts, woven shirts, sweaters, t-shirt
denim shirts, turtleneck shirts
Basis: 1(a)
For: golf bags, golf club covers, plastic toy cars for children, scale model replica cars for collectors
Basis: 1(a)
Filed No Basis: No
Owner Name: Audi A.G.
Owner Address: 85045

Ingolstadt GERMANY

Organized:
11/21/2019
Case Status Search
Attorney of Record
Attorney Name: Susan B. Flohr Docket Number: 116315.00160

Address:
Correspondent
Correspondent Susan B. Flohr

1825 Eye Street NW
Phone: 202.420.2200 Fax: 202.420.2201

Authorized:
Domestic Representative Susan B. Flohr Phone: 202.772.5870

Name:
Fax: 202.572.1407

Prosecution History
Oct. 17, 2015 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Oct. 17, 2015 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 76293
Oct. 17, 2015 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 76293
Oct. 15, 2015 TEAS SECTION 8 & 9 RECEIVED
Oct. 25, 2011 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Oct. 25, 2011 REGISTERED - PARTIAL SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 76293
Oct. 04, 2011 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED 76293
Oct. 25, 2011 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76293
Oct. 04, 2011 TEAS SECTION 8 & 15 RECEIVED
Oct. 18, 2005 REGISTERED-PRINCIPAL REGISTER
Jul. 26, 2005 PUBLISHED FOR OPPOSITION
Jul. 06, 2005 NOTICE OF PUBLICATION
May 27, 2005 LAW OFFICE PUBLICATION REVIEW COMPLETED 59272
May 16, 2005 ASSIGNED TO LIE 59272
May 09, 2005 APPROVED FOR PUB - PRINCIPAL REGISTER
May 09, 2005 EXAMINERS AMENDMENT E-MAILED 6328
May 09, 2005 EXAMINERS AMENDMENT -WRITTEN 76936
11/21/2019
Case Status Search
May 09, 2005 PREVIOUS ALLOWANCE COUNT WITHDRAWN
Apr. 22, 2005 WITHDRAWN BEFORE PUBLICATION
Jan. 26, 2005 LAW OFFICE PUBLICATION REVIEW COMPLETED 69350
Jan. 18, 2005 ASSIGNED TO LIE 69350
Jan. 11, 2005 APPROVED FOR PUB - PRINCIPAL REGISTER
Jan. 10, 2005 EXAMINERS AMENDMENT E-MAILED 6328
Jan. 10, 2005 EXAMINERS AMENDMENT -WRITTEN 76936
Jan. 06, 2005 AMENDMENT FROM APPLICANT ENTERED 70138
Dec. 27, 2004 CORRESPONDENCE RECEIVED IN LAW OFFICE 70138
Dec. 27, 2004 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Jul. 09, 2004 NON-FINAL ACTION E-MAILED 6326
Jul. 08, 2004 ASSIGNED TO EXAMINER 76936
Jan. 06, 2004 NEW APPLICATION ENTERED IN TRAM

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Oct. 17, 2015
11/21/2019
Case Status Search
1:19-cv-24838-MGC Document 1-2 Entered on SN 3201037
Mark:
US Serial Number: 78740119 Application Filing Date: Oct. 25, 2005
US Registration Number: 3201037 Registration Date: Jan. 23, 2007
Register: Principal

Descriptor:
Status Date: Jan. 12, 2017
Publication Date: Nov. 07, 2006
Mark Information
Description of Mark: The mark consists of four interlocking rings.
Color(s) Claimed: Color is not claimed as a feature of the mark.
Claimed Ownership of US 0906525, 2987328

Registrations:
Goods and Services
Note:
11/21/2019
Case Status Search
For: automobiles and structural parts therefor
Basis: 1(a)
First Use: Jan. 22, 1936 Use in Commerce: Jan. 22, 1936
Filed No Basis: No
Owner Name: AUDI A.G.
Owner Address: D-85045

Ingolstadt GERMANY

Organized:
Attorney of Record

Address:
Correspondent

1825 Eye Street NW
Phone: 202.420.2200 Fax: 202.420.2201

Authorized:
Domestic Representative Susan B. Flohr and all attorneys of Blank Rome Phone: 202-772-5800
Name: LLP
Fax: 202-772-5858

Prosecution History
11/21/2019
Case Status Search
Jan. 12, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Jan. 12, 2017 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 67110
Jan. 12, 2017 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 67110
Jan. 12, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 67110
Nov. 03, 2016 TEAS SECTION 8 & 9 RECEIVED
Jan. 23, 2016 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Feb. 05, 2013 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Feb. 05, 2013 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 68335
Feb. 05, 2013 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 68335
Jan. 22, 2013 TEAS SECTION 8 & 15 RECEIVED
Jan. 23, 2007 REGISTERED-PRINCIPAL REGISTER
Nov. 07, 2006 PUBLISHED FOR OPPOSITION
Oct. 18, 2006 NOTICE OF PUBLICATION
Sep. 26, 2006 LAW OFFICE PUBLICATION REVIEW COMPLETED 74189
Sep. 22, 2006 ASSIGNED TO LIE 74189
Sep. 14, 2006 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 08, 2006 EXAMINER'S AMENDMENT ENTERED 59554
Sep. 07, 2006 EXAMINERS AMENDMENT E-MAILED 6328
Sep. 07, 2006 EXAMINERS AMENDMENT -WRITTEN 68309
Aug. 24, 2006 TEAS/EMAIL CORRESPONDENCE ENTERED 73787
Aug. 09, 2006 CORRESPONDENCE RECEIVED IN LAW OFFICE 73787
Aug. 09, 2006 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Apr. 30, 2006 NON-FINAL ACTION E-MAILED 6325
Apr. 30, 2006 NON-FINAL ACTION WRITTEN 68309
Apr. 27, 2006 ASSIGNED TO EXAMINER 68309
Nov. 02, 2005 NOTICE OF DESIGN SEARCH CODE MAILED
Oct. 31, 2005 NEW APPLICATION ENTERED IN TRAM

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Jan. 12, 2017
11/21/2019
Case Status Search
Mark: AUDI No Image exists for this case.
US Serial Number: 72085460 Application Filing Date: Nov. 17, 1959
US Registration Number: 708352 Registration Date: Dec. 13, 1960
Register: Principal

Descriptor:
Status Date: Sep. 23, 2010
Mark Information
Mark Literal Elements: AUDI
Mark Drawing Type: 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Translation: The term "Audi" is derived from the Latin word "Audio", meaning "I Hear".
Foreign Information
Foreign Registration 342,358 Foreign Registration Date: Oct. 26, 1925

Number:
Foreign GERMANY
Application/Registration
Country:
Goods and Services
Note:
For: Automobiles, Including Motor Cars for Personal Use and Trucks, and Structural Parts Thereof, Including Automobile Heater
11/21/2019
Case Status Search
Ventilators, Locks and Closures for Automobile Coolers, and Automobile Safety Locks
International Class(es): 006, 011, 012 U.S Class(es): 019 - Primary Class
Basis: 44(e)
Filed Use: No Currently Use: No
Filed 44D: No Currently 44E: Yes
Filed 44E: Yes Currently 66A: No
Filed No Basis: No
Owner Name: AUDI AKTIENGESELLSCHAFT

INGOLSTADT GERMANY
Legal Entity Type: CORPORATION State or Country Where GERMAN DEMOCRATIC REPUBLIC
Organized:
Attorney of Record

Address:
Correspondent

1825 Eye Street NW
Phone: 202.420.2200 Fax: 202.420.2201

Authorized:
Domestic Representative SUSAN B. FLOHR

Name:
Prosecution History
Nov. 06, 2018 NOTICE OF SUIT
Dec. 20, 2017 NOTICE OF SUIT
11/21/2019
Case Status Search
Jan. 25, 2012 NOTICE OF SUIT
Sep. 23, 2010 REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS) 76533
Sep. 23, 2010 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Sep. 22, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76533
Sep. 21, 2010 TEAS SECTION 8 & 9 RECEIVED
Oct. 22, 2008 CASE FILE IN TICRS
Jan. 30, 2001 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS)
Jan. 30, 2001 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Jan. 09, 2001 RESPONSE RECEIVED TO POST REG. ACTION - SEC. 8 & 9
Dec. 28, 2000 POST REGISTRATION ACTION MAILED - SEC. 8 & 9
May 02, 2000 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Oct. 25, 1984 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Dec. 13, 1980 REGISTERED AND RENEWED (FIRST RENEWAL - 20 YRS)
File Location
Current Location: GENERIC WEB UPDATE Date in Location: Sep. 23, 2010
11/21/2019
Case Status Search
Mark: AUDI
US Serial Number: 75090951 Application Filing Date: Apr. 04, 1996
US Registration Number: 2083439 Registration Date: Jul. 29, 1997
Register: Principal
Mark Type: Trademark, Service Mark

Descriptor:
Status Date: Dec. 22, 2017
Mark Information
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Design Search Code(s): 26.01.15 - Three circles; Circles, exactly three circles
Claimed Ownership of US 0708352, 1079063, 1793869 and others

Registrations:
Goods and Services
Note:
For: automobiles and structural parts therefor
11/21/2019
Case Status Search
Basis: 1(a)
First Use: Apr. 1995 Use in Commerce: Apr. 1995
For: automobile dealership services, namely, retail sales of automobiles and structural parts therefor
Basis: 1(a)
First Use: Apr. 1995 Use in Commerce: Apr. 1995
Filed No Basis: No
Owner Name: Audi AG

Ingolstadt GERMANY

Organized:
Attorney of Record

Address:
Correspondent

1825 Eye Street NW
Phone: 202.420.2200 Fax: 202.420.2201

Authorized:
Domestic Representative Lalos & Keegan

Name:
Prosecution History
11/21/2019
Case Status Search
Dec. 22, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Dec. 22, 2017 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 74886
Dec. 22, 2017 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 74886
Dec. 21, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 74886
Nov. 27, 2017 TEAS SECTION 8 & 9 RECEIVED
Jul. 29, 2016 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Feb. 06, 2012 NOTICE OF SUIT
Aug. 04, 2007 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 70131
Aug. 04, 2007 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Aug. 04, 2007 ASSIGNED TO PARALEGAL 70131
Jun. 14, 2007 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Jun. 14, 2007 TEAS SECTION 8 & 9 RECEIVED
Mar. 08, 2007 CASE FILE IN TICRS
Sep. 28, 2002 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Aug. 16, 2002 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Aug. 16, 2002 PAPER RECEIVED
Jul. 29, 1997 REGISTERED-PRINCIPAL REGISTER
Dec. 19, 1996 EXTENSION OF TIME TO OPPOSE RECEIVED
Oct. 18, 1996 NOTICE OF PUBLICATION
Sep. 09, 1996 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 06, 1996 ASSIGNED TO EXAMINER 72505
File Location
Current Location: GENERIC WEB UPDATE Date in Location: Dec. 22, 2017
11/21/2019
Case Status Search
Mark: AUDI
US Serial Number: 85466938 Application Filing Date: Nov. 08, 2011
US Registration Number: 4284786 Registration Date: Feb. 05, 2013
Register: Principal

Descriptor:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Oct. 02, 2019
Mark Information
Mark Drawing Type: 3 - AN ILLUSTRATION DRAWING WHICH INCLUDES WORD(S)/ LETTER(S)/NUMBER(S)
Description of Mark: The mark consists of four interlocking rings horizontally placed and appearing above the word "AUDI".
Color(s) Claimed: Color is not claimed as a feature of the mark.
Foreign Information
Priority Claimed: Yes
Foreign Application 302011030104 Foreign Application Filing May 31, 2011

Number: Date:
Foreign Registration 302011030104 Foreign Registration Date: Aug. 11, 2011

Number:
Foreign GERMANY Foreign Expiration Date: May 31, 2021
11/21/2019
Case Status Search
Application/Registration
Country:
Goods and Services
Note:
For: [ (Based on 44(e)) Vehicles and their structural parts ]
Basis: 44(e)
For: (Based on Use in Commerce) Retail store services featuring automobiles, automobile parts and accessories; dealerships in
automobiles
Basis: 1(a)
First Use: Apr. 30, 2012 Use in Commerce: Apr. 30, 2012
For: (Based on 44(e)) Repair, maintenance and servicing of vehicles
Basis: 44(e)
Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed 44D: Yes Currently 44E: Yes
Filed No Basis: No
Owner Name: Audi AG

Ingolstadt GERMANY 85045

Organized:
Attorney of Record
Attorney Primary Email trademarks@blankrome.com Attorney Email Authorized: No
11/21/2019
Case Status Search
Address:
Correspondent

1825 Eye Street NW
Phone: 202.772.5870 Fax: 202.420.2201

bcraig@blankrome.com Authorized:
Domestic Representative - Not Found
Prosecution History
Oct. 03, 2019 POST REGISTRATION ACTION MAILED - SEC. 8 & 15 74886
Oct. 02, 2019 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 74886
Sep. 13, 2019 POST REGISTRATION ACTION CORRECTION 74886
Sep. 13, 2019 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 74886
Aug. 05, 2019 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Aug. 05, 2019 TEAS SECTION 8 & 15 RECEIVED
Feb. 05, 2018 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Feb. 05, 2013 REGISTERED-PRINCIPAL REGISTER
Nov. 20, 2012 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Oct. 31, 2012 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Oct. 16, 2012 LAW OFFICE PUBLICATION REVIEW COMPLETED 67287
Oct. 11, 2012 NOTICE OF ACCEPTANCE OF AMENDMENT TO ALLEGE USE E-MAILED
Oct. 10, 2012 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 10, 2012 USE AMENDMENT ACCEPTED 88222
Sep. 19, 2012 AMENDMENT FROM APPLICANT ENTERED 67287
Sep. 19, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 67287
Sep. 19, 2012 AMENDMENT TO USE PROCESSING COMPLETE 67287
Sep. 06, 2012 USE AMENDMENT FILED 67287
Sep. 06, 2012 PAPER RECEIVED
Aug. 21, 2012 UNRESPONSIVE/DUPLICATE PAPER RECEIVED 67287
Aug. 21, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 67287
Aug. 13, 2012 ASSIGNED TO LIE 67287
Aug. 06, 2012 TEAS RESPONSE TO OFFICE ACTION RECEIVED
May 07, 2012 ASSIGNED TO EXAMINER 88222
Feb. 21, 2012 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Feb. 21, 2012 NON-FINAL ACTION E-MAILED 6325
Feb. 21, 2012 NON-FINAL ACTION WRITTEN 78196
11/21/2019
Case Status Search
Feb. 01, 2012 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Feb. 01, 2012 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Feb. 01, 2012 TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED
Jan. 06, 2012 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332
Jan. 06, 2012 LETTER OF SUSPENSION E-MAILED 6332
Jan. 06, 2012 SUSPENSION LETTER WRITTEN 78196
Dec. 30, 2011 ASSIGNED TO EXAMINER 78196
Nov. 15, 2011 NOTICE OF DESIGN SEARCH CODE MAILED
Nov. 14, 2011 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Nov. 11, 2011 NEW APPLICATION ENTERED IN TRAM

File Location
Current Location: TMO LAW OFFICE 113 Date in Location: Oct. 03, 2019
11/21/2019
Case Status Search
Mark: AUDI
US Serial Number: 79170331 Application Filing Date: May 27, 2015
US Registration Number: 4995364 Registration Date: Jul. 12, 2016
Register: Principal

Descriptor:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Jul. 12, 2016
Publication Date: Apr. 26, 2016
Mark Information
Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Mark Drawing Type: 4 - STANDARD CHARACTER MARK
International Registration 0716147

Number:
International Registration Mar. 12, 1999

Date:
Goods and Services
Note:
For: Car radios, calculating machines for motor cars, spectacles, ski goggles, sound or image media, recorded or not, namely, v
audio cassettes and audio and video tapes featuring instructional automotive repair information and instructional informatio
to obtain information regarding real time traffic jams and the status of automotive navigation systems; apparatus for recordi
transmitting and reproducing sound or images
11/21/2019
Case Status Search
Basis: 66(a)
For: automobiles; motors for land vehicles
Basis: 66(a)
For: Jewellery, horological and chronometric instruments, namely, watches; key rings of precious metal
Basis: 66(a)
For: magazines and booklets featuring technical information concerning car maintenance, car information; stickers
Basis: 66(a)
For: Trunks and suitcases; umbrellas; leather and imitation leather goods, namely, purses, wallets, rucksacks
Basis: 66(a)
For: Special clothing for rally pilots, namely, protective clothing made with flameproof materials, only distributed in shop specializ
motorcycle sports and rallies, including boots and shoes
Basis: 66(a)
For: Car floor mats
Basis: 66(a)
For: Model cars, gymnastic and sporting apparatus, namely golf clubs, golf club bags
Basis: 66(a)
For: Motor vehicle maintenance, repair and servicing
Basis: 66(a)
Filed Use: No Currently Use: No

11/21/2019
Case Status Search
Filed 44E: No Currently 66A: Yes
Filed 66A: Yes Currently No Basis: No
Filed No Basis: No
Owner Name: AUDI AG
Owner Address: 85045 Ingolstadt

GERMANY
Legal Entity Type: JOINT STOCK COMPANY State or Country Where GERMANY
Organized:
Attorney of Record
Correspondent

1825 Eye Street NW
Phone: 202.420.2200 Fax: 202.420.2201

Authorized:
Domestic Representative - Not Found
Prosecution History
Mar. 28, 2019 INTERNATIONAL REGISTRATION RENEWED
Oct. 12, 2016 FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
Aug. 12, 2016 NOTIFICATION OF POSSIBLE OPPOSITION - PROCESSED BY IB
Jul. 12, 2016 REGISTERED-PRINCIPAL REGISTER
Apr. 26, 2016 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Apr. 26, 2016 PUBLISHED FOR OPPOSITION
Apr. 20, 2016 NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
Apr. 20, 2016 NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
Apr. 06, 2016 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Mar. 18, 2016 LAW OFFICE PUBLICATION REVIEW COMPLETED 68123
Mar. 10, 2016 DATA MODIFICATION COMPLETED 68123
Mar. 10, 2016 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 10, 2016 EXAMINER'S AMENDMENT ENTERED 88888
Mar. 10, 2016 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
11/21/2019
Case Status Search
Mar. 10, 2016 EXAMINERS AMENDMENT E-MAILED 6328
Mar. 10, 2016 EXAMINERS AMENDMENT -WRITTEN 68356
Mar. 09, 2016 ASSIGNED TO LIE 68123
Mar. 08, 2016 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Feb. 25, 2016 FINAL REFUSAL MAILED
Feb. 25, 2016 FINAL REFUSAL WRITTEN 68356
Feb. 24, 2016 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Feb. 24, 2016 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Feb. 24, 2016 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Oct. 21, 2015 CORRECTION SENT TO IB
Oct. 21, 2015 CORRECTION CREATED FOR IB
Oct. 02, 2015 REFUSAL PROCESSED BY IB
Sep. 11, 2015 NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
Sep. 11, 2015 REFUSAL PROCESSED BY MPU 72629
Sep. 11, 2015 NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
Sep. 10, 2015 NON-FINAL ACTION WRITTEN 68356
Sep. 09, 2015 ASSIGNED TO EXAMINER 68356
Aug. 12, 2015 APPLICATION FILING RECEIPT MAILED
Aug. 08, 2015 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Aug. 06, 2015 SN ASSIGNED FOR SECT 66A SUBSEQ DESIG FROM IB
International Registration Information (Section 66a)
International Registration 0716147 International Registration Mar. 12, 1999

Number: Date:
Intl. Registration Status: REQUEST FOR EXTENSION OF PROTECTION Date of International Aug. 06, 2015
PROCESSED Registration Status:
Notification of Designation Aug. 06, 2015 Date of Automatic Feb. 06, 2017
Date: Protection:
International Registration Mar. 12, 2029

Renewal Date:
First Refusal Flag: Yes

File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Jul. 12, 2016
Exhibit 3
USOOD721028S
(12) United States Design Patent (10) Patent No.: USD721,028 S

Lemke (45) Date of Patent: Jan. 13, 2015
(54) VEHICLE WHEEL RIM D539,724 S * 4/2007 Muzzarelli................... D12,211
D542,207 S * 5/2007 Gauffres ... D12,211
(75) Inventor: Peter Lemke, Munich (DE) D592,119 S * 5/2009 Heizmann ... D12,211
D606,921 S * 12/2009 Thorsten ... D12,211
D612,790 S * 3/2010 Tant et al. ...... D12,211
(73) Assignee: Audi AG, Ingolstadt (DE) D623,115 S * 9/2010 Juergens et al. D12,211
D626,053 S * 10/2010 Groom ... D12,211
(**) Term: 14 Years D629,346 S * 12/2010 Szews ... D12,211
D638,771 S * 5/2011 Chung ........... D12,211
(21) Appl. No. 29/429,416 D646.212 S * 10/2011 Ettensberger . D12,211
D648,254 S * 1 1/2011 Barry ................. D12/209
(22) Filed: Aug. 10, 2012 D663,670 S * 7/2012 Juergens et al. ............. D12,211
D669,008 S * 10/2012 von Holzhausen et al. . D12/211
D673,100 S * 12/2012 Mueller-Stolz .............. D12,211
(30) Foreign Application Priority Data D682,179 S * 5/2013 Badstuebner ...... D12,211
D684,912 S * 6/2013 Yamashita ..... D12/209
Feb. 10, 2012 (EM) ....................... OO1989 914-OOO1 D710,780 S * 8/2014 Borkert ........................ D12,211
(51) LOC (10) Cl. ................................................ 12-16 * cited by examiner
(52) U.S. Cl.
USPC ......................................................... D12/211 Primary Examiner — Stacia Cadmus
(58) Field of Classification Search (74) Attorney, Agent, or Firm — Lucas & Mercanti, LLP:
CPC .............. B60B 7/00, B60B 7/02; B60B 7/04; Klaus P. Stoffel
B60B 7/01; B60B 7/06; B60B3/02; B60B
3/04; B60B3/06; B60B 3/10, B60B 1700; (57) CLAM
B60B 1/08; B60B 1/10, B60B 1/12 The ornamental design for a vehicle wheel rim, as shown and
USPC ................................................. D12/204-213 described.
See application file for complete search history.
DESCRIPTION
(56) References Cited
FIG. 1 is a front view of the vehicle wheel rim of the present
U.S. PATENT DOCUMENTS invention;
D453,134 S * 1/2002 Murkett et al. .............. D12/209
FIG. 2 is a front, left side perspective view thereof;
D486,769 S * 2/2004 Gallert ......................... D12/209 FIG. 3 is a side view thereof, and,
D506,717 S * 6/2005 Gallert ......................... D12/209 FIG. 4 is a front, right side perspective view thereof.
D524,220 S * 7/2006 Scheu .......................... D12,211
D533,826 S * 12/2006 Scheu .......................... D12,211 1 Claim, 4 Drawing Sheets
U.S. Patent Jan. 13, 2015 Sheet 1 of 4 USD721,028S
Fig. 1
&
Fig. 3

Exhibit 4
Appendix I
https://www.ebay.com/p/20-AMG-OEM-S550-CL-S-2019-Model-MERCEDES-Rims-Wheels-Black-Set-of-
4-S63-S65/626610206?iid=273839204090 (the item was not available on July 30, 2019)
4
Additional seller information as provided on eBay
Additional items for sale by eBay seller oemwheelsdirect
5
Exhibit 5
Appendix II
The images below depict the one representative package (of the four) received on Wednesday, July 24,
2019, from the return address of OEM Wheels Direct, 7212 NW 25th St, Miami FL 33122.
UPS – 1ZRV40230339353546
7
Exhibit 6
The images below depict one representative item (of the four) received 20 AUDI RS 2017-19 WHEELS
RIMS NEW OEM RS5 A5 A6 A7 A8 MADE IN GERMANY from the eBay seller oemwheelsdirect.
9
10
11
12
13
14
8.5JX20H2 ET33 DOT-E JUUL

2030598666 BBS
690KG
15
17 18
C CW03
16
H C04
ET 33
17
999
20X8.5J
18
JUUL VIA
19
3-482
20
Case 1:19-cv-24838-MGC Document
JS 44 (Rev. 06/17) FLSD Revised 06/01/2017 1-7 COVER
CIVIL EnteredSHEET
on FLSD Docket 11/22/2019 Page 1 of 2
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose
of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.) NOTICE: Attorneys MUST Indicate All Re-filed Cases Below.
I. (a) PLAINTIFFS VOLKSWAGEN GROUP OF AMERICA, INC. DEFENDANTS ANDY VARONA and VEROTEC WHEELS, INC.
(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Armando P. Rubio, Esq., Fields Howell, LLP, 9155 S. Dadeland Blvd.,
Suite 1012, Miami, Florida 33156 (786) 870-5600
(d) Check County Where Action Arose: ✔ MIAMI- DADE MONROE BROWARD PALM BEACH MARTIN ST. LUCIE INDIAN RIVER OKEECHOBEE HIGHLANDS
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff)
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government ✔ 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4
of Business In This State
2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a 3 3 Foreign Nation 6 6

Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only) Click here for: Nature of Suit Code Descriptions
CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 625 Drug Related Seizure 422 Appeal 28 USC 158 375 False Claims Act
120 Marine 310 Airplane 365 Personal Injury - of Property 21 USC 881 423 Withdrawal 376 Qui Tam (31 USC
130 Miller Act 315 Airplane Product Product Liability 690 Other 28 USC 157 3729 (a))
140 Negotiable Instrument Liability 367 Health Care/ 400 State Reapportionment
150 Recovery of Overpayment 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS 410 Antitrust
& Enforcement of Judgment Slander Personal Injury 820 Copyrights 430 Banks and Banking
151 Medicare Act 330 Federal Employers’ Product Liability ✘ 830 Patent 450 Commerce
152 Recovery of Defaulted Liability 368 Asbestos Personal 835 Patent – Abbreviated 460 Deportation
New Drug Application
Student Loans 340 Marine Injury Product ✘ 840 Trademark 470 Racketeer Influenced and
(Excl. Veterans) 345 Marine Product Liability LABOR SOCIAL SECURITY Corrupt Organizations
153 Recovery of Overpayment Liability PERSONAL PROPERTY 710 Fair Labor Standards 861 HIA (1395ff) 480 Consumer Credit
of Veteran’s Benefits 350 Motor Vehicle 370 Other Fraud Act 862 Black Lung (923) 490 Cable/Sat TV
160 Stockholders’ Suits 355 Motor Vehicle 371 Truth in Lending 720 Labor/Mgmt. Relations 863 DIWC/DIWW (405(g)) 850 Securities/Commodities/
190 Other Contract Product Liability 380 Other Personal 740 Railway Labor Act 864 SSID Title XVI Exchange
195 Contract Product Liability 360 Other Personal Property Damage 751 Family and Medical 865 RSI (405(g)) 890 Other Statutory Actions
196 Franchise Injury 385 Property Damage Leave Act 891 Agricultural Acts
362 Personal Injury - Product Liability 790 Other Labor Litigation 893 Environmental Matters
Med. Malpractice 791 Empl. Ret. Inc. 895 Freedom of Information
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS Security Act FEDERAL TAX SUITS Act
210 Land Condemnation 440 Other Civil Rights Habeas Corpus: 870 Taxes (U.S. Plaintiff 896 Arbitration
220 Foreclosure 441 Voting 463 Alien Detainee or Defendant) 899 Administrative Procedure
230 Rent Lease & Ejectment 442 Employment 510 Motions to Vacate 871 IRS—Third Party 26 Act/Review or Appeal of
Sentence USC 7609
240 Torts to Land 443 Housing/ Other: Agency Decision
Accommodations
245 Tort Product Liability 445 Amer. w/Disabilities - 530 General IMMIGRATION 950 Constitutionality of State
Statutes
290 All Other Real Property Employment 535 Death Penalty 462 Naturalization Application
446 Amer. w/Disabilities - 540 Mandamus & Other 465 Other Immigration
Other 550 Civil Rights Actions
448 Education 555 Prison Condition
560 Civil Detainee –
Conditions of
Confinement
V. ORIGIN (Place an “X” in One Box Only)
✔ 1 Original 2 Removed 3 Re-filed 4 Reinstated 5 Transferred from 6 Multidistrict 7 Appeal to 8 Multidistrict
Proceeding from State (See VI or another district Litigation
District Judge Litigation 9 Remanded from
Appellate Court
Court below) Reopened (specify) Transfer
from Magistrate – Direct
Judgment File
VI. RELATED/ (See instructions): a) Re-filed Case YES ✔ NO b) Related Cases YES ✔ NO
RE-FILED CASE(S) JUDGE: DOCKET NUMBER:
Cite the U.S. Civil Statute under which you are filing and Write a Brief Statement of Cause (Do not cite jurisdictional statutes unless diversity):
VII. CAUSE OF ACTION Trademark infringement, Lanham Act 15 USC 1114, 1116, 1125(a) and patent infringement 35 USC 271
LENGTH OF TRIAL via days estimated (for both sides to try entire case)
VIII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION
DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER F.R.C.P. 23
JURY DEMAND: Yes ✔ No
ABOVE INFORMATION IS TRUE & CORRECT TO THE BEST OF MY KNOWLEDGE
DATE SIGNATURE OF ATTORNEY OF RECORD
November 22, 2019
FOR OFFICE USE ONLY

RECEIPT # AMOUNT IFP JUDGE MAG JUDGE
JS 44 (Rev. 06/17) FLSD Revised 06/01/2017
INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
Authority For Civil Cover Sheet

The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I. (a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and then the
official, giving both name and title.
(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the “defendant” is the location of the tract of land involved.)
(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment,
noting in this section “(see attachment)”.
II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an “X” in
one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box.
Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the
Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and
box 1 or 2 should be marked. Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4
is checked, the citizenship of the different parties must be checked. (See Section III below; federal question actions take precedence over diversity cases.)
III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
section for each principal party.
IV. Nature of Suit. Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature
of suit code that is most applicable. Click here for: Nature of Suit Code Descriptions.
V. Origin. Place an “X” in one of the seven boxes.
Original Proceedings. (1) Cases which originate in the United States district courts.
Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441. When the
petition for removal is granted, check this box.
Refiled (3) Attach copy of Order for Dismissal of Previous case. Also complete VI.
Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or multidistrict
litigation transfers.
Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this
box is checked, do not check (5) above.
Appeal to District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judge’s decision.
Remanded from Appellate Court. (8) Check this box if remanded from Appellate Court.
VI. Related/Refiled Cases. This section of the JS 44 is used to reference related pending cases or re-filed cases. Insert the docket numbers and the
corresponding judges name for such cases.
VII. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553
Brief Description: Unauthorized reception of cable service
VIII. Requested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Rule 23, F.R.Cv.P.
Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
Date and Attorney Signature. Date and sign the civil cover sheet.
AO 440 (Rev. 06/12) Summons in a Civil Action

for the
Southern District
__________ District of
of Florida
__________
VOLKSWAGEN GROUP OF AMERICA, INC. )

)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
ANDY VARONA and VEROTEC WHEELS, INC. )
)
)
)
Defendant(s) )
SUMMONS IN A CIVIL ACTION
To: (Defendant’s name and address) Andy Hector Varona

6619 South Dixie Highway #243
Miami, Florida 33143
A lawsuit has been filed against you.
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are:
Armando P. Rubio, Esq.
Fields Howell LLP
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)
Civil Action No.
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
This summons for (name of individual and title, if any)

was received by me on (date) .
’ I personally served the summons on the individual at (place)

on (date) ; or
’ I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
’ I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)
on (date) ; or
’ I returned the summons unexecuted because ; or
’ Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
I declare under penalty of perjury that this information is true.
Date:
Server’s signature
Printed name and title
Server’s address
Additional information regarding attempted service, etc:

AO 440 (Rev. 06/12) Summons in a Civil Action

for the
Southern District
__________ District of
of Florida
__________
VOLKSWAGEN GROUP OF AMERICA, INC. )

)
)
)
Plaintiff(s) )
)
v. Civil Action No.
)
ANDY VARONA and VEROTEC WHEELS, INC. )
)
)
)
Defendant(s) )
SUMMONS IN A CIVIL ACTION
To: (Defendant’s name and address) Verotec Wheels Incorporated

c/o Registered Agent
Morris, Will Law Office LLP
1200 NW 78 Avenue, Suite 300
Doral, Florida 33126
A lawsuit has been filed against you.
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are:
Armando P. Rubio, Esq.
Fields Howell LLP
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)
Civil Action No.
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
This summons for (name of individual and title, if any)

was received by me on (date) .
’ I personally served the summons on the individual at (place)

on (date) ; or
’ I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
’ I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)
on (date) ; or
’ I returned the summons unexecuted because ; or
’ Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
I declare under penalty of perjury that this information is true.
Date:
Server’s signature
Printed name and title
Server’s address
Additional information regarding attempted service, etc:

Volkswagen Group of America v. Varona - Complaint

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Case 1:19-cv-24838-MGC Document 1 Entered on FLSD Docket 11/22/2019 Page 1 of 22

UNITED STATES DISTRICT COURT

VOLKSWAGEN GROUP OF AMERICA,

ANDY VARONA and VEROTEC

Plaintiff Volkswagen Group of America, Inc. (“VWGoA” or “Plaintiff”), on behalf of

Wheels, Inc. (collectively, “Defendants”).

NATURE OF THE SUIT

1. This is a civil action for trademark infringement, trademark counterfeiting,

U.S.C. §§ 1114, 1116, 1117, 1125(a).

patent. Such infringement is both deliberate and willful.

6. Plaintiff Volkswagen Group of America, Inc. (“VWGoA”) is a New Jersey

corporation with its principal place of business in Herndon, Virginia.

place of business in Ingolstadt, Germany. Audi AG is a world-famous automobile manufacturer

together, or individually as “Audi.”

attached to the Verified Complaint as Exhibit 1.

JURISDICTION AND VENUE

bear counterfeit versions of Audi’s federally-registered trademarks to residents of Florida. The

have wrongfully caused Plaintiff substantial injury in the State of Florida.

from interstate commerce.

resides in Miami, Florida.

and (c), and 28 U.S.C. § 1400(b).

without limitation audiusa.com and audicollectionusa.com, through which consumers can

the following representative sample, collectively referred to as the “Audi Trademarks”:

Registration Mark Reg. Date Date of First Relevant

3007305 October 18, December 31, Automobile wheels

3201037 January 23, January 22, Automobiles and

4284786 February 5, 44(E) Vehicles and their

of the Audi Trademarks pursuant to 15 U.S.C. § 1057(b).

Audi’s genuine goods.

patent is attached to the Verified Complaint as Exhibit 3.

on January 13, 2015 by the USPTO.

Defendants’ Violations of the AUDI RINGS mark

22. On information and belief, Defendants registered the eBay seller ID

the Verified Complaint as Exhibit 4.

photographs of Defendants’ products, including counterfeit AUDI RINGS, as received by the

investigator, are shown in Exhibit 6.

they are counterfeit.

Audi Trademark Infringing and Counterfeit

import products using the Audi Marks.

for Audi Products.

Defendants’ products are affiliated with, authorized, sponsored, or endorsed by Audi. In

goodwill and reputation.

37. Defendants’ unauthorized use of the Audi Trademarks, or confusingly similar

alleged above, dilutes and blurs the distinctiveness of the marks.

Defendants’ Infringement of the ’028 Patent

would be so deceived by the substantial similarity between the designs so as to be induced to

protected by the ’028 patent.

40. As the side-by-side comparison below reveals, Defendants have misappropriated

U.S. Design Patent D721,028 S Infringing and Counterfeit

the same as the design of the ’028 patent.

which is proprietary to Audi.

Plaintiff’s rights, including as to the ’028 patent.

enjoined by this Court.

COUNT I: TRADEMARK INFRINGEMENT AND COUNTERFEITING

set forth above in Paragraphs 1-44.

use in commerce of infringing and counterfeit imitations of the federally-registered Audi

47. The Audi Trademarks are distinctive.

Audi Trademarks without Plaintiff’s permission.

infringing and counterfeit products among the general public.

50. The Defendants’ activities constitute willful trademark infringement and

counterfeiting under Section 32 of the Lanham Act. 15 U.S.C. § 1114.

51. Defendants’ use of the Audi Trademarks, or confusingly similar variations

Accordingly, this is an exceptional case within the meaning of 15 U.S.C. § 1117(a).

proximately caused by the Defendants’ wrongful reproduction, use, advertisement, promotion,