Lifted Limited v. Novelty - Complaint

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 1 of 16
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO
Civil Action No. _____________
LIFTED LIMITED, LLC, a Colorado limited liability company,
Plaintiffs,
v.
NOVELTY INC., an Indiana corporation,
Defendant.
COMPLAINT AND JURY TRIAL DEMAND
Plaintiff Lifted Limited, LLC (Lifted or Plaintiff), by way of Complaint against

Defendant Novelty Inc. (Novelty or Defendant), alleges as follows:
NATURE OF THE ACTION
1.
This is an action to combat Noveltys infringement of a United States design
patent in violation of 35 U.S.C. 271, Noveltys federal trade dress infringement and unfair
competition in violation of 15 U.S.C. 1125(a), Noveltys violation of the Colorado Consumer
Protection Act, C.R.S. 6-1-101 to 115, and Noveltys trade dress infringement, unfair
competition, and unjust enrichment in violation of the common law of the State of Colorado.
2.
As a direct and proximate result of Noveltys unlawful manufacture, distribution,
promotion, advertising, offering for sale and/or sale of infringing products, Lifted is irreparably
harmed. As such, Lifted seeks a preliminary and permanent injunction and damages adequate to
compensate for the infringement and to disgorge ill-gotten gain by Novelty, including, without
1
limitation, Noveltys profits, costs, and attorneys fees as authorized by Federal and Colorado
law.
PARTIES
3.
Plaintiff Lifted Limited, LLC is a limited liability company organized and
existing under the laws of the State of Colorado, having Business ID. No. 20101408637 with the
Colorado Secretary of State, and having a principal place of business at 2695 Patterson Rd. Ste
2-324, Grand Junction, CO 81506.
4.
Defendant Novelty Inc. is a corporation organized and existing under the laws of
Indiana, having Business ID No. 198510-855 with the Indiana Secretary of State, and having a
principal place of business at 351 W. Muskegon Dr., Greenfield, IN 46140.
JURISDICTION AND VENUE
5.
This action arises under the United States Patent Act, 35 U.S.C. 101, et seq.,
the Lanham Act, 15 U.S.C. 1051, et seq., the Colorado Consumer Protection Act, C.R.S. 61-101, et seq., and the principles of common law in the State of Colorado and pertaining to trade
dress infringement, unfair competition, and unjust enrichment. Thus, this Court has jurisdiction
over this action based on 28 U.S.C. 1331 and 1338, 15 U.S.C. 1121, and has supplemental
jurisdiction over the Colorado common law claims pursuant to 28 U.S.C. 1367 because such
claims are so related to the federal claims that they form part of the same case or controversy and
derive from a common nucleus of operative facts.
6.
This Court also has diversity jurisdiction over this action between Lifted and
Novelty pursuant to 28 U.S.C. 1332(a) because there is diversity of parties, as Lifted is a

citizen of Colorado and Novelty is a citizen of Indiana, and the amount in controversy exceeds
$75,000 exclusive of interests and costs.

7.
This Court has general and specific personal jurisdiction over Novelty pursuant
to the Colorado Long-Arm Statute, C.R.S. 13-1-124, and the United States Constitution.
Novelty has consented personal jurisdiction because Novelty conducts regular business within
this judicial district, the activities giving rise to Lifteds claims occurred in this judicial district,
and Lifted has been damaged in this judicial district by Noveltys conduct
8.
Venue is proper in this judicial district under 28 U.S.C. 1391 and 1400
because a substantial portion of the events giving rise to the claim occurred in this judicial district.
BACKGROUND
Lifteds Business and Intellectual Property Rights
9.
Lifted was formed in 2010 and is in the business of designing, manufacturing,
promoting, marketing, advertising, distributing and selling smoking accessory devices and
products, including its flagship Toker Poker Smoking Tool (the Toker Poker), throughout
the United States and internationally.
10.
Lifted has expended substantial resources in designing, manufacturing,
promoting, marketing, advertising, distributing and selling its products and brand, and has built a
valuable business based on demand for its distinctively-styled, quality smoking accessory
devices and products.
11.
Lifted is the lawful assignee of all right, title, and interest in and to United States
Design Patent No. D662,655 (the 655 Patent). The United States Patent Office duly and
legally issued the 655 Patent on June 26, 2012. A true and correct copy of the 655 Patent is
attached hereto as Exhibit 1.
12.
In 2013, Lifted introduced the Toker Poker line of smoking accessory devices, in
the distinctively shaped and the 655 patented design depicted below:
13.
The patented design consists of a solid colored and uniquely shaped plastic
lighter sleeve which incorporates a unique combination of smoking accessory tools. The overall
appearance created by the combination of the foregoing elements, as depicted in the photo in
Paragraph 12 above, will hereinafter be referred to as the Toker Poker Trade Dress.
14.
Lifted owns substantial common law rights to the Toker Poker Trade Dress as it
is distinctive and is not functional.

15.
Lifted has expended considerable resources advertising and promoting the Toker
Poker Trade Dress. Lifteds advertising of the Toker Poker draws attention to the Toker Poker
Trade Dress, and encourages consumers to associate the Toker Poker Trade Dress with Lifted
and the Toker Poker brand. A true and correct copy of an example of such advertising is
attached hereto as Exhibit 2.
16.
Lifteds Toker Poker has earned significant commercial success since its
introduction in 2013.
17.
Lifteds Toker Poker has also garnered significant unsolicited press attention
since its introduction. Much of that press attention has focused on its unique design.
18.
Through Lifteds continual, exclusive use of the Toker Poker Trade Dress, and
the considerable time, effort, and money spent advertising and promoting the Toker Poker Trade
Dress, the Toker Poker Trade Dress has come to serve primarily as an identifier of the single
source of Lifteds product in the minds of consumers.
19.
The Toker Poker Trade Dress has built up extensive goodwill and acquired
secondary meaning among the relevant trade and public as a symbol identifying Lifted as the
source of origin of the Toker Poker products.
Noveltys Unlawful Conduct
20.
Novelty is in the business of manufacturing and distributing various products,
including smoking accessory devices and products.

21.
Upon information and belief, Novelty promotes, markets, advertises, distributes,
and sells its products in the United States, including this judicial district. Novelty also promotes,
markets, and advertises its products nationwide through its website www.noveltyliquidators.com.
22.
Upon information and belief, Novelty was aware of Lifteds products and the
commercial success of the Toker Poker, and sought to imitate and trade off the design of Lifteds
products.
23.
As evidenced by the materials attached hereto as Exhibit 3, Novelty is
promoting, marketing, advertising, and offering for sale its Midnight Smoker Utility Tool using
the design below (the Infringing Design):
24.
The Infringing Design infringes the design claimed in the 655 Patent.
25.
The Infringing Design infringes the Toker Poker Trade Dress.
26.
On November 14, 2016, Lifted notified Novelty of its infringement of the 655
Patent and the Toker Poker Trade Dress sought to reach an amicable resolution to this matter. A
copy of the letter that provided such notice is attached hereto as Exhibit 4.
27.
On November 30, 2016, Novelty responded to Lifteds initial letter but
summarily denied all of the issues raised without seeking further communication with Lifted. A
copy of this letter is attached hereto as Exhibit 5.
28.
Upon information and belief, Novelty adopted, is using, and intends to continue
6
to use, the Infringing Design despite actual knowledge of Lifteds exclusive right in the design
claimed in the 655 Patent.
29.
Upon information and belief, Novelty adopted, is using, and intends to continue
to use, the Infringing Design despite actual knowledge of Lifteds substantial use of, and
exclusive right in, the Toker Poker Trade Dress.
30.
Lifted has not consented to, or authorized in any way, Noveltys use of the
design claimed in the 655 Patent.

31.
Lifted has not consented to, or authorized in any way, Noveltys use of the Toker
Poker Trade Dress.

32.
Lifted has no control over the nature, quality, or pricing of the goods provided
by Novelty using the Infringing Design.

33.
Novelty has misappropriated Lifteds substantial property rights in the design
claimed in the 655 Patent and the Toker Poker Trade Dress, as well as the substantial goodwill
associated therewith. Unless restrained and enjoined by this Court, such conduct will permit
Novelty to gain an unfair competitive advantage over Lifted, permit Novelty to enjoy the selling
power of the Toker Poker Trade Dress, and will allow Novelty to palm off products as those
being produced, sponsored, or authorized by Lifted.
34.
If Novelty is permitted to continue using, promoting, marketing, advertising,
distributing and selling products using the Infringing Design, its actions will continue to cause
irreparable injury to Lifted and to the consuming public for which there is no adequate remedy at
law.
CLAIM I
(Infringement of U.S. Design Patent No. D662,655 35 U.S.C. 271)
35.
Lifted restates and incorporates by reference the allegations set forth in the
paragraphs above as though fully set forth herein.

36.
Lifted owns all right, title and interest to the 655 Patent.
37.
Novelty makes, uses, sells, offers for sale and/or imports into the United States
for subsequent sale or use, products that infringe directly and/or indirectly the design claimed in
the 655 Patent.
38.
An ordinary observer would be deceived into believing that the Infringing
Design is the same as the 655 patented design.

39.
Noveltys infringing acts were committed willfully, with full knowledge of
Lifteds rights, and with the intention of causing harm to Lifted.

40.
Novelty has infringed the 655 Patent through the aforesaid acts, and will
continue to do so unless enjoined by this Court. Noveltys wrongful conduct has caused Lifted
to suffer irreparable harm resulting from the loss of its lawful patent rights to exclude others
from making, using, selling, offering for sale, and importing the patent invention. Lifted is
entitled to injunctive relief pursuant to 35 U.S.C. 283.
41.
Lifted is entitled to recover damages adequate to compensate for the
infringement, including Noveltys profits pursuant to 35 U.S.C. 289. Lifted is entitled to

recover any other damages as appropriate pursuant to 35 U.S.C. 284.
CLAIM II
(Trade Dress Infringement and False Designation of Origin 15 U.S.C. 1125(a))
42.

43.
Lifteds use of the Toker Poker Trade Dress predates any alleged use by Novelty
in the United States.

44.
Lifteds Toker Poker Trade Dress has built up extensive goodwill and acquired
45.
Lifteds Toker Poker Trade Dress is not functional.
46.
Noveltys unauthorized use of the Infringing Design is likely to cause confusion,
mistake, or deception among consumers or potential consumers as to the source or origin of

Lifteds goods and whereby those consumers or potential consumers would be led to mistakenly
believe that Novelty is affiliated with, related to, sponsored by, or connected with Lifted.
47.
Lifted has not authorized, licensed, or otherwise condoned or consented to
Noveltys use of the Toker Poker Trade Dress.

48.
The aforesaid acts of Novelty constitute trade dress infringement, false
designation of origin, and false and misleading descriptions and representations in violation of 15
U.S.C. 1125(a).
49.
Noveltys infringing and unlawful acts were committed willfully, with full
knowledge of Lifteds rights, and with the intention of deceiving and misleading the public and
causing harm to Lifted.
50.
Novelty has infringed the Toker Poker Trade Dress through the aforesaid acts,
and will continue to do so unless enjoined by this Court. Noveltys wrongful conduct has caused
Lifted to suffer irreparable harm resulting from the loss of its lawful intellectual property rights
and Lifted is entitled to injunctive relief pursuant to 15 U.S.C. 1116.

51.
As a direct and proximate result of Noveltys infringing and unlawful acts,
Lifted has suffered and will continue to suffer damages in an amount that is not presently
ascertainable, but will be established at trial.
CLAIM III
(Trade Dress Infringement Colorado Common Law)
52.

53.
Lifteds use of the Toker Poker Trade Dress predates any alleged use by Novelty
in the United States.

54.
Lifteds Toker Poker Trade Dress has built up extensive goodwill and acquired
55.
Lifteds Toker Poker Trade Dress is not functional.
56.
Noveltys unauthorized use of the Infringing Design is likely to cause confusion,
mistake, or deception among consumers or potential consumers as to the source or origin of

Lifteds goods and whereby those consumers or potential consumers would be led to mistakenly
believe that Novelty is affiliated with, related to, sponsored by, or connected with Lifted.
57.
Lifted has not authorized, licensed, or otherwise condoned or consented to
Noveltys use of the Toker Poker Trade Dress.

58.
The aforesaid acts of Novelty constitute trade dress infringement in violation of
common law.
59.
Noveltys infringing acts were committed willfully, with full knowledge of

10
Lifteds rights, and with the intention of deceiving and misleading the public and causing harm
to Lifted.
60.
61.
Unless enjoined by this Court, the acts of Novelty complained of herein will
cause Lifted to suffer irreparable harm for which there is no adequate remedy at law.
CLAIM IV
(Unfair Competition Colorado Common Law)
62.

63.
The aforesaid acts of Novelty constitute unfair competition in violation of
common law as Novelty copied Lifteds products and misappropriated Lifteds Toker Poker
Trade Dress, and this conduct has deceived or confused and is likely to continue to deceive or
confuse the public because of the difficulties in distinguishing between Lifteds and Noveltys
products.
64.
Noveltys unlawful acts were committed willfully, with full knowledge of
Lifteds rights, and with the intention of deceiving and misleading the public and causing harm
to Lifted.
65.
66.
11
CLAIM V
(Deceptive Trade Practices Colorado Consumer Protection Act, 6-1-101 to 115)
67.

68.
The acts of Novelty complained of herein constitute deceptive trade practices
pursuant to C.R.S. 6-1-105, as Novelty has knowingly passed off its goods as Lifteds by
infringing the Toker Poker Trade Dress; as Novelty has knowingly made false representations as
to the source, sponsorship, approval, or certification of its goods by infringing the Toker Poker
Trade Dress; and/or as Novelty has knowingly made a false representation as to affiliation,
connection, or association with or certification by Lifted through Noveltys infringement of the
the Toker Poker Trade Dress.
69.
Upon information and belief, the acts of Novelty complained of herein have
caused and will continue to cause confusion, mistake, or deception among consumers or
potential consumers as to the source or origin of Noveltys goods and the sponsorship or
endorsement of those goods by Lifted.
70.
Upon information and belief, the acts of Novelty complained of herein have
caused and will continue to cause confusion, mistake, or deception among consumers or
potential consumers as to the source or origin of Lifteds goods and the sponsorship or
endorsement of those goods by Novelty.
71.
Noveltys unlawful acts were committed willfully, with full knowledge of
Lifteds rights, and with the intention of deceiving and misleading the public into believing that
Noveltys products are somehow related to or affiliated with those of Lifted.
12
72.
Lifted has a legally protectable interest in the Toker Poker Trade Dress.
73.
including, without limitation Noveltys infringement of the Toker Poker Trade Dress, Lifted has
suffered and will continue to suffer harm to its goodwill and business reputation.
74.
75.
CLAIM VI
(Unjust Enrichment Colorado Common Law)
76.

77.
Lifted has unknowingly conferred a benefit upon Novelty at Lifteds expense, and Novelty
received and appreciated that benefit under circumstances when it would be inequitable and
unjust for Novelty to retain the benefit without the payment of its value.
78.
PRAYER FOR RELIEF
WHEREFORE, Lifted requests that judgment be entered in its favor and against
Novelty as follows:
79.
Declaring that the 655 Patent is valid and infringed by Noveltys use, offer for
13
sale, and sale of products incorporating the Infringing Design;

80.
Declaring that the Toker Poker Trade Dress is protectable and infringed by
Noveltys use, offer for sale, and sale of products incorporating the Infringing Design;
81.
Declaring that Noveltys infringement was knowing, intentional, and willful;
82.
Entering an Order preliminarily and permanently enjoining Novelty and
Noveltys successors, officers, agents and employees, and anyone acting in active concert or
participation with or at the behest or direction of any of them from:
a. Further infringing the 655 Patent by manufacturing, using, offering for
sale and/or selling any products that incorporate the design claimed in the
655 Patent;
b. Using (including, but not limited to, as a product design and/or in
connection with the promotion, marketing, advertising, and sale of
products) the Toker Poker Trade Dress, the Infringing Design, any
colorable imitation thereof, or any otherwise confusingly similar mark;
c. Doing any other act or thing likely to confuse, mislead, or deceive others
into believing that Novelty, or its products, are connected with, sponsored
by or approved by Lifted; and
d. Engaging in any other activity constituting unfair competition with Lifted,
or constituting an infringement of Lifteds rights in and to the 655 Patent
and the Toker Poker Trade Dress.
83.
Ordering that all labels, signs, prints, packages, wrappers, receptacles, and
advertisements in the possession of Novelty bearing the Infringing Design, or any colorable
14
imitation thereof, and all plates, molds, matrices, and other means of making the same, be
delivered to Lifted for destruction pursuant to 15 U.S.C. 1118;
84.
Ordering Novelty, pursuant to 15 U.S.C. 1116(a), to file with the Court and
serve on Lifteds counsel within 30 days after service of the injunction, a written report, sworn
under oath, setting forth in detail the manner and form in which Novelty has complied with the
injunction;
85.
Directing an accounting to determine Noveltys profits resulting from their
unlawful activities;
86.
Awarding Lifted compensation for any and all damages, injury or harm pursuant
to 35 U.S.C. 284, 15 U.S.C. 1117, and Colorado law;

87.
Ordering full restitution and/or disgorgement of all profits and benefits that may
have been obtained by Novelty as a result of its wrongful conduct pursuant to 35 U.S.C. 289
and 15 U.S.C. 1117;
88.
Awarding Lifted treble damages resulting from Noveltys willful and intentional
conduct pursuant to 25 U.S.C. 284 and 15 U.S.C. 1117;

89.
Awarding Lifted punitive and exemplary damages pursuant to Colorado law;
90.
Assessing Lifteds costs of this action and Lifteds attorneys fees against
Novelty pursuant to 35 U.S.C. 284-285 and 15 U.S.C. 1117; and

91.
Ordering or awarding any other such relief that the Court deems just and proper.
JURY DEMAND
Pursuant to Federal Rule of Civil Procedure 38, Lifted hereby demands a trial by jury of
all issues so triable.
15
Dated: December 20, 2016

By:
s/ Brian P. ODonnell
Brian P. ODonnell (SBN 46802)
Kent T. Dallow (SBN 43530)
Kilpatrick, Townsend & Stockton LLP
1400 Wewatta Street, Suite 600
Denver, CO 80202
bodonnell@kilpatricktownsend.com
kdallow@kilpatricktownsend.com
Attorneys for Plaintiff Lifted Limited, LLC
Defendants Name and Address:

Novelty Inc.
351 W. Muskegon Drive
Greenfield, IN 46140
68939386V.3
16
Case 1:16-cv-03135 Document 1-1 Filed 12/20/16 USDC Colorado Page 1 of 5
EXHIBIT 1

USO0D662655S
(12) United States Design Patent (10) Patent N0.2

Bodenchuk et al.
(54)
(45) Date of Patent:
LIGHTER HOLDERAND TOOL
(56)
(75) Inventors: Matthew Robert Bodenchuk,
eterson
4,745,661 A *
Reed, EdWards, CO (US)
D297,175
(Us)
(M)
Term:
14 Years
(21)
APP1~ N05 29/413,681
...... .. 24/313
. . . . ..
8/1988
Nitta
3/1997
Ichikawa
12/1998
DS66889 S
4/2008
D631,191
D27/l6l
.................... ..
5/1988 Wainscott ..
D378,442 S
D402,401
L1ftedL1m1ted,LLC, Edwards, CO
Jun. 26, 2012
goCUMENTS
Longmom, Cows); Leshe Rene
Ass1gnee:
4*
References Cited
D270 952
(73)
US D662,655 S
1/2011
D648,891 S
11/2011
Duke
..........
. ... ..
D27/161
.... .. D27/186
. . . . ..
D27/161
Luo
" D27/161
Luo . . . . .
. . . . ..
D27/161
Heger ........................ .. D27/161
* cited by examiner
Primary Examiner * Kevin RudZinski
(22) Filed:
(74) Attorney, Agent, or Firm * Patent LaW Of?ces ofRick
Martin, RC.
(57)
Feb. 17,2012
CLAIM
(51)
LOC (9) Cl. ................................................ .. 27-06
The Ornamentaldesignforalighterholderandwol,asshown
(52)
Us Cl
and descnbed'
I.
(58)
D27/172
.
......
.... ..
DESCRIPTION
Field of Classi?cation Search ............... .. D27/194,
D27/184, 189, 187, 186, 185, 100, 101, 183,

1327/172 143 163 162 161 153 144 141
D27/156, 160, 139, 140, 154, 155, 157, 142,

D27/102, 130, 158, 159, 167, 173, 176, 180,
.
1327/181 193 219/220 431/253 344 131/70

131/58 66'1 73 283 47 49 187 174; D9/423>
FIG. 1 is a top perspective vieW our lighter holder and tool

Showing a Poker extended therefrom;
FIG. 2 1s a top plan view thereof;
1216315 a bottom plan View thereof;

FIG. 4 is a rear elevational vieW thereof;
FIG. 5 is a front elevational vieW thereof;
FIG. 6 is a right side elevational vieW thereof; and,

FIG. 7 is a left side elevational vieW thereof.
139/542 563 454 504; 138/34, 33, 105,
The broken line showing a cigarette lighter in the ?gures
D8/30 29 1' D7/416' 439/668- 206/236-
depicts an intended use for the lighter holder and tool that
i a
44/507
See application ?le for complete search history.
form no part of the claimed design.
1 Claim, 3 Drawing Sheets
US. Patent
Jun. 26, 2012
Sheet 1 of3
US D662,655 S
US. Patent
Jun. 26, 2012
Sheet 2 of3
US D662,655 S
Fig 2
Fig 3
Fig 5
US. Patent
Jun. 26, 2012
Sheet 3 of3
US D662,655 S
Fig 6
mawxvly
3.,21.
EXHIBIT 2
EXHIBIT 3
EXHIBIT 4

PHONE
OKER POKER
Poke it. Pack it. Puff it, Pass it.
Lifted Limited LLC

2695 Patterson Rd. Ste 2-324
Grand Junction, CO 81506
FAX
EMAIL
WEBSITE
303.304.9354
970.697.1331
matt@tokerpoker.com
www.tokerpoker.com
November 14,2016
Transmitted via FedEx and Fax

Novelty Inc.
Attn: Mr. Todd D. Green, President
351 W. Muskegon Dr.,
Fax: (317) 462-3749
Re:
Novelty Inc.'s Midnight Smoker Utility Tool
Dear Mr. Green:

I am the owner of Lifted Limited, LLC, ("Lifted"). As you may be aware, Lifted designs,
manufactures, and markets the Toker Poker Smoking Tool (the "Toker Poker"). It has come
to our attention that Novelty Inc. ("Novelty") sells the Midnight Smoker Utility Tool (the
"Midnight Smoker") and we are concerned that this product infringes Lifted's intellectual
property rights. Specifically, we have analyzed the Midnight Smoker and are concerned this
product infringes Lifted's design patent, U.S. Patent No. D662,655 (the '''655 Patent"), along
with Lifted's related protected trade dress.
The two products at issue, along with figures from the '655 Patent, are shown in the images
below:
Toker Poker (L); Midnight Smoker (R)_

Novelty Inc.
Mr. Todd D. Green, President
November 14, 2016
Page 2
Toker Poker (L); Midnight Smoker (R)
Fig 7
As shown from these images, Lifted's concerns are warranted because an ordinary observer,
familiar with the prior art designs, would be deceived into believing that the accused product is
the same as the patented design.
In addition, Lifted is concerned that the Midnight Smoker copies Lifted's protected trade dress
raising unfair competition concerns. Lifted has been manufacturing, marketing, and selling the
Toker Poker since at least 2013. Lifted has marketed and sold its product throughout the United
States through its website at www.tokerpoker.com. in addition to other online retailers such as
Amazon.com and physical retail locations. As a result, the Toker Poker has acquired substantial
value and is known to the consuming public and trade as identifying and distinguishing Lifted's
products from third party products.
Lifted recently became aware of Novelty's sale of the Midnight Smoker through Novelty's
website at
https://noveltyliquidators.com/ProductBrowse/ProductDetail.aspx?TID=960&PID=76046,
as
well as through physical retail locations such as Wal-Mart. Common law trade dress
infringement and unfair competition occurs when a party utilizes a trade dress that creates a
likelihood of consumer confusion. As you are undoubtedly aware, the Midnight Smoker is a
copy of Lifted's Toker Poker. In fact, at least one consumer has already confused the Midnight
Smoker as being a Lifted product.
Notwithstanding the above, Lifted prefers to reach an amicable resolution to this matter and
Lifted is willing to discuss a licensing arrangement with Novelty. We are available to touch base
with you at your convenience and request the courtesy of a response by November 21,
2016. Please feel free to communicate directly with me or with my counsel, whose contact
information is below. In the meantime, Lifted's rights and remedies remain reserved.
Enclosure: the '655 Patent

Novelty Inc.
Mr. Todd D. Green, President
November 14, 2016
Page 3
Sincerely,
Matt Bodenchuk
Owner / CEO
Lifted Limited LLC
3033049354
TokerPoker.com
~
~~~~,~~~~.~
cc:
Brian O'Donnell
bodonnell@kilpatricktownsend.com
Kilpatrick Townsend & Stockton LLP
Suite 600 I 1400 Wewatta Street I Denver, CO 80202
office 303 607 3219

111111111111111111111111111111111111111111111111111111111111111111111111111
USOOD662655S
(12)
United States Design Patent
(10)
Bodenchuk et aI.
(45)
(56)
(54)
LIGHTER
(75)
Inventors: Matthew Robert Bodenchuk,

Longmont, CO (US); Leslie Renea
Reed, Edwards, CO (US)
(73)
Assignee:
HOLDER AND TOOL
US D662,655 S
** Jun. 26, 2012
References Cited
U.S. PATENT OOCUMENTS
Lifted Limited, LLC, Edwards, CO

(US)
0270,952
4,745,661
0297,175
0378,442
0402,401
0566,889
0631,191
0648,891
* cited
(**)
Ternl:
14 Years
(21)
Appl. No.: 29/413,681
(22)
Filed:
(51)
LOC (9) Cl.
(52)
U.S. CI
(58)
Field of Classification Search

0271194,
027/184,189,187,186,185,100,101,183,
0271172,143,163,162,161,153,144,141,
0271156,160,139,140,154,155,157,142,
0271102,130,158,159,167,173,176,180,
0271181,193; 219/220; 431/253,344; 131170,
131158,66.1,73,283,47,49,187,174;
09/423,
09/542,563,454,504;
08/34,33, 105,
08/30,29.1; 07/416; 439/668; 206/236;
441507
See application file for complete search history.
S
A
S
S
S
S
S
S
*
*
*
*
10/1983
511988
8/1988
3/1997
12/1998
4/2008
112011
Peterson
Wainscott
Nitta
Ichikawa
Duke
Luo...
Luo
1112011 Heger..
..
027/161
24/3.13
027/161
027/186
027/161
027/161
027/161
027/161
by examiner
Primary Examiner - Kevin Rudzinski

(74) Attorney, Agent, or Firm - Patent Law Offices of Rick
Martin, P.C.
Feb. 17, 2012

.
Patent No.:
Date of Patent:
27-06
D27/172
(57)
CLAIM
The ornamental design for a lighter holder and tool, as shown
and described.
DESCRIPTION
FIG. 1 is a top perspective view our lighter holder and tool
showing a poker extended therefrom;
FIG. 2 is a top plan view thereof;
FIG. 3 is a bottom plan view thereof;
FIG. 4 is a rear elevational view thereof;
FIG. 5 is a front elevational view thereof;
FIG. 6 is a right side elevational view thereof; and,
FIG. 7 is a left side elevational view thereof.
The broken line showing a cigarette lighter in the figures
depicts an intended use for the lighter holder and tool that
form no part of the claimed design.
1 Claim, 3 Drawing Sheets
u.s. Patent
Jun. 26, 2012
Fig 1
Sheet 1 of 3
US D662,655 S
U.S. Patent
Jun. 26, 2012
US D662,655 S
Sheet 2 of 3
Fig 2
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Fig 4
Fig 5
u.s. Patent
Jun. 26,2012
t
i
US D662,655 S
Sheet 3 of3
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=-:-j
EXHIBIT 5
WHERE
1t..1t..ln\/
ATlnt..I
..-;,
..
'-' "r\.. '-' .---=.I
DRIVES IMPULSE
November 30, 2016

Mr. Matt Bodenchuk
Lifted Limited LLC
2695 Patterson Rd.
Ste 2-324
Grand Junction, CO 81506
Dear Mr. Bodenchuk:
I am in receipt of your letter dated November 14, 2016.
On your first concern about the Patent infringement I think your patent and our item speak for
themselves. Our lighter case is very different from your product. For instance, at the bottom of
our item there is a bottle opener. The basic product shape is consistent with a BIC lighter as both
are made to work with that lighter.
Our mold is unique and designed by our product
development team. We have sold many BIC cases in the past in many different shapes and styles.
I see no way there is a patent issue with our product.
As for the trade dress our lighter case is very different. Our product is marketed under Midnight
Smoker. There is no confusion between your item and ours. Our lighter case is a different shape
and has other uses such as a bottle opener function. The entire mold is different. The main
shape has similarities but only based on working with a BIC. Your case has unique debossed logos
in the side that differentiate your brand. We have none of these. Your shape is different in most
aspects.
dd Green
President
Novelty, Inc.
r'
NOVELTY INC.
1 '11
* 351 W. Muskegon Dr. * Greenfield,

www.noveltyinc.com
I'
IN
."
',',
46140
* (317) 462-3121

JS 44 (Rev. 11/15) District of Colorado Form
CIVIL COVER SHEET
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.)
I. (a) PLAINTIFFS
DEFENDANTS
LIFTED LIMITED, LLC, a Colorado limited liability company
NOVELTY INC., an Indiana corporation
Mesa
(b) County of Residence of First Listed Plaintiff
County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES)

NOTE:
(c) Attorneys (Firm Name, Address, and Telephone Number)
(IN U.S. PLAINTIFF CASES ONLY)

IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
Attorneys (If Known)
Kilpatrick Townsend & Stockton LLP, 1400 Wewatta Street, Suite 600,
Denver, Colorado 80202; Telephone: 303.571.4000; Attorneys of
Record: Brian O'Donnell and Kent Dallow
II. BASIS OF JURISDICTION (Place an X in One Box Only)

1
U.S. Government
Plaintiff
Federal Question
(U.S. Government Not a Party)
U.S. Government
Defendant
Diversity
(Indicate Citizenship of Parties in Item III)
III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff

(For Diversity Cases Only)
PTF
Citizen of This State
1
DEF
1
and One Box for Defendant)

PTF
DEF
Incorporated or Principal Place
4
4
of Business In This State
Citizen of Another State
Incorporated and Principal Place

of Business In Another State
Citizen or Subject of a
Foreign Country
Foreign Nation
IV. NATURE OF SUIT (Place an X in One Box Only)

CONTRACT
TORTS
110 Insurance
120 Marine
130 Miller Act
140 Negotiable Instrument
150 Recovery of Overpayment
& Enforcement of Judgment
151 Medicare Act
152 Recovery of Defaulted
Student Loans
(Excludes Veterans)
153 Recovery of Overpayment
of Veterans Benefits
160 Stockholders Suits
190 Other Contract
195 Contract Product Liability
196 Franchise
REAL PROPERTY
210 Land Condemnation
220 Foreclosure
230 Rent Lease & Ejectment
240 Torts to Land
245 Tort Product Liability
290 All Other Real Property
PERSONAL INJURY
310 Airplane
315 Airplane Product
Liability
320 Assault, Libel &
Slander
330 Federal Employers
Liability
340 Marine
345 Marine Product
Liability
350 Motor Vehicle
355 Motor Vehicle
Product Liability
360 Other Personal
Injury
362 Personal Injury Medical Malpractice
CIVIL RIGHTS
440 Other Civil Rights
441 Voting
442 Employment
443 Housing/
Accommodations
445 Amer. w/Disabilities Employment
446 Amer. w/Disabilities Other
448 Education
FORFEITURE/PENALTY
PERSONAL INJURY
365 Personal Injury Product Liability
367 Health Care/
Pharmaceutical
Personal Injury
Product Liability
368 Asbestos Personal
Injury Product
Liability
PERSONAL PROPERTY
370 Other Fraud
371 Truth in Lending
380 Other Personal
Property Damage
385 Property Damage
Product Liability
PRISONER PETITIONS
Habeas Corpus:
463 Alien Detainee
510 Motions to Vacate
Sentence
530 General
535 Death Penalty
Other:
540 Mandamus & Other
550 Civil Rights
555 Prison Condition
560 Civil Detainee Conditions of
Confinement
625 Drug Related Seizure

of Property 21 USC 881
690 Other
BANKRUPTCY
422 Appeal 28 USC 158
423 Withdrawal
28 USC 157
PROPERTY RIGHTS
820 Copyrights
830 Patent
840 Trademark
LABOR
710 Fair Labor Standards
Act
720 Labor/Management
Relations
740 Railway Labor Act
751 Family and Medical
Leave Act
790 Other Labor Litigation
791 Employee Retirement
Income Security Act
SOCIAL SECURITY
861 HIA (1395ff)
862 Black Lung (923)
863 DIWC/DIWW (405(g))
864 SSID Title XVI
865 RSI (405(g))
FEDERAL TAX SUITS

870 Taxes (U.S. Plaintiff
or Defendant)
871 IRSThird Party
26 USC 7609
IMMIGRATION
462 Naturalization Application
465 Other Immigration
Actions
OTHER STATUTES
375 False Claims Act
376 Qui Tam (31 USC
3729(a))
400 State Reapportionment
410 Antitrust
430 Banks and Banking
450 Commerce
460 Deportation
470 Racketeer Influenced and
Corrupt Organizations
480 Consumer Credit
490 Cable/Sat TV
850 Securities/Commodities/
Exchange
890 Other Statutory Actions
891 Agricultural Acts
893 Environmental Matters
895 Freedom of Information
Act
896 Arbitration
899 Administrative Procedure
Act/Review or Appeal of
Agency Decision
950 Constitutionality of
State Statutes
V. ORIGIN (Place an X in One Box Only)

1 Original
Proceeding
2 Removed from
State Court
Remanded from
Appellate Court
4 Reinstated or
Reopened
5 Transferred from
Another District
(specify)
6 Multidistrict
Litigation
Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
35 U.S.C. Section 271; 15 U.S.C. Section 1125(a)
VI. CAUSE OF ACTION Brief description of cause:
AP Docket
CHECK IF THIS IS A CLASS ACTION

VII. REQUESTED IN
UNDER RULE 23, F.R.Cv.P.
COMPLAINT:
VIII. RELATED CASE(S)
(See instructions):
IF ANY
JUDGE
DATE
CHECK YES only if demanded in complaint:

Yes
No
JURY DEMAND:
DEMAND $
DOCKET NUMBER
SIGNATURE OF ATTORNEY OF RECORD
s/ Brian P. O'Donnell
12/20/2016
FOR OFFICE USE ONLY
RECEIPT #
AMOUNT
Print
APPLYING IFP
Save As...
JUDGE
MAG. JUDGE
Reset
AO 440 (Rev. 06/12) Summons in a Civil Action
UNITED STATES DISTRICT COURT

for the
DISTRICT
OFDistrict
COLORADO
__________
of __________
LIFTED LIMITED, LLC, a Colorado limited liability
company,
Plaintiff(s)
v.
NOVELTY INC., an Indiana corporation
Defendant(s)
)
)
)
)
)
)
)
)
)
)
)
)
Civil Action No.
SUMMONS IN A CIVIL ACTION

To: (Defendants name and address)
Novelty Inc.
351 W. Muskegon Drive
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 plaintiffs attorney,
whose name and address are:
Brian O'Donnell, Esq.
Kilpatrick Townsend & Stockton LLP
1400 Wewatta Street, Suite 600
Denver, CO 80202
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 individuals 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 individuals 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 $
I declare under penalty of perjury that this information is true.
Date:
Servers signature
Printed name and title
Servers address
Additional information regarding attempted service, etc:
0.00

Lifted Limited v. Novelty - Complaint

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Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 1 of 16

IN THE UNITED STATES DISTRICT COURT

COMPLAINT AND JURY TRIAL DEMAND

Plaintiff Lifted Limited, LLC (Lifted or Plaintiff), by way of Complaint against

This is an action to combat Noveltys infringement of a United States design

As a direct and proximate result of Noveltys unlawful manufacture, distribution,

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 2 of 16

Plaintiff Lifted Limited, LLC is a limited liability company organized and

Novelty pursuant to 28 U.S.C. 1332(a) because there is diversity of parties, as Lifted is a

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 3 of 16

$75,000 exclusive of interests and costs.

Lifted was formed in 2010 and is in the business of designing, manufacturing,

Lifted has expended substantial resources in designing, manufacturing,

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 4 of 16

is distinctive and is not functional.

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 5 of 16

Novelty is in the business of manufacturing and distributing various products,

including smoking accessory devices and products.

Upon information and belief, Novelty promotes, markets, advertises, distributes,

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 6 of 16

As evidenced by the materials attached hereto as Exhibit 3, Novelty is

The Infringing Design infringes the Toker Poker Trade Dress.

On November 30, 2016, Novelty responded to Lifteds initial letter but

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 7 of 16

design claimed in the 655 Patent.

Poker Trade Dress.

by Novelty using the Infringing Design.

Novelty has misappropriated Lifteds substantial property rights in the design

If Novelty is permitted to continue using, promoting, marketing, advertising,

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 8 of 16

paragraphs above as though fully set forth herein.

An ordinary observer would be deceived into believing that the Infringing

Design is the same as the 655 patented design.

Noveltys infringing acts were committed willfully, with full knowledge of

Lifteds rights, and with the intention of causing harm to Lifted.

Lifted is entitled to recover damages adequate to compensate for the

infringement, including Noveltys profits pursuant to 35 U.S.C. 289. Lifted is entitled to

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 9 of 16

paragraphs above as though fully set forth herein.

in the United States.

Lifteds Toker Poker Trade Dress is not functional.

Noveltys unauthorized use of the Infringing Design is likely to cause confusion,

mistake, or deception among consumers or potential consumers as to the source or origin of

Lifted has not authorized, licensed, or otherwise condoned or consented to

Noveltys use of the Toker Poker Trade Dress.

The aforesaid acts of Novelty constitute trade dress infringement, false

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 10 of 16

and Lifted is entitled to injunctive relief pursuant to 15 U.S.C. 1116.

As a direct and proximate result of Noveltys infringing and unlawful acts,

paragraphs above as though fully set forth herein.

in the United States.

Lifteds Toker Poker Trade Dress is not functional.

Noveltys unauthorized use of the Infringing Design is likely to cause confusion,

mistake, or deception among consumers or potential consumers as to the source or origin of

Lifted has not authorized, licensed, or otherwise condoned or consented to

Noveltys use of the Toker Poker Trade Dress.

The aforesaid acts of Novelty constitute trade dress infringement in violation of

Noveltys infringing acts were committed willfully, with full knowledge of

Case 1:16-cv-03135 Document 1 Filed 12/20/16 USDC Colorado Page 11 of 16

As a direct and proximate result of Noveltys infringing and unlawful acts,

paragraphs above as though fully set forth herein.

The aforesaid acts of Novelty constitute unfair competition in violation of

Noveltys unlawful acts were committed willfully, with full knowledge of

As a direct and proximate result of Noveltys infringing and unlawful acts,