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 UNITED STATES DISTRICT COURT

 SOUTHERN DISTRICT OF FLORIDA

IT’S A NEW 10, LLC, a Florida Limited

Liability Company,

Plaintiff,

v.

FIT & GLOW, INC., a Florida corporation;

and FIT & GLOW HEALTHCARE

PRIVATE, LTD., a Foreign Limited

Liability Company of India,

Defendants.

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___ Civ. _________ (___)

 ECF Case

 JURY TRIAL DEMANDED

COMPLAINT

Plaintiff It’s a New 10, LLC (“Plaintiff” or “It’s a New 10”), by and through its

undersigned attorneys, hereby alleges and avers as follows:

The Parties

1. Plaintiff It’s a New 10, LLC is a limited liability company organized under the

laws of the state of Florida with a principal place of business at 4613 North University Drive,

#478 Coral Springs, Florida 33067.

2. Upon information and belief, Defendant Fit & Glow, Inc. is corporation organized

and existing under the laws of the State of Florida.

3. Upon information and belief, Defendant Fit & Glow Healthcare Private Ltd. (“Fit

& Glow” or “Defendant”) is a foreign limited liability corporation of India with its principal

place of business located at India No. 10, 1

st Floor, Oil Mill Road, Arvind Nagar Kammanahalli

Bangalore Chennai, Karnataka, India 560033.

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4. Upon further information and belief, Defendants are selling, advertising and

promoting products that are the subject of this Complaint in retail stores throughout Florida and

on websites accessible in Florida, including in this judicial district, and throughout the United

States.

Jurisdiction and Venue

5. This Court has jurisdiction over the subject matter of this action under Section

39(a) of the Lanham Act, 15 U.S.C. §1121 and Sections 1331, 1332(a)(1), 1338(a), 1338(b) and

2201 of the Judicial Code, 28 U.S.C. §1331, 1338(a) and (b), and under principles of pendent

jurisdiction. The Court also has supplemental jurisdiction pursuant to the provisions of 28 U.S.C.

§1367.

6. Personal jurisdiction is proper in this district because Defendants have either

engaged in business activities in, and directed to, this judicial district and is doing business in the

State of Florida and this judicial district or have intentionally committed a tortious act within this

district and/or has committed a tortious act outside of the State of Florida causing injury to

Plaintiff within this judicial district. Defendants intentionally directed their infringing activities

to the State of Florida and this judicial district, sell and/or advertise and promote infringing

products for sale on websites accessible in Florida, including the infringing products, identified

herein, within the State of Florida and in this judicial district, and the exercise of personal

jurisdiction would be otherwise constitutionally permissible over Defendants.

7. Venue is proper in this district pursuant to 28 U.S.C. §1391(b) because upon

information and belief a substantial part of the events giving rise to Plaintiff’s claim occurred in

this district, including, inter alia, Defendants committed trademark infringement in this judicial

district and sold, advertised and/or promoted their infringing products in this district through

retail stores or websites accessible in this judicial district. Plaintiff resides in this judicial district,

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conducts a substantial part of its business in this district, and Plaintiff has been injured in this

district by Defendants’ infringing activities.

Plaintiff’s Trademark Rights

8. Plaintiff It’s a New 10 is a nationally recognized leader in the innovation and sale

of a full line of women’s and men’s hair care products, including but not limited to, innovative

hair care formulas for leave-in hair products that are left in the hair and do not need to be washed

out. Plaintiff is the owner of the well-known and top-selling “It’s a 10 Miracle” hair care product

line.

9. Plaintiff manufactures and sells several collections of professional hair care

products, including a “conditioning collection,” which includes Plaintiff’s top-selling It’s a 10

Miracle Leave-In Product, a “keratin collection,” and a “defrizzing collection.” The hair care

products sold in Plaintiff’s collections are referred to herein collectively as “It’s a 10 Miracle

Hair Products.”

10. Plaintiff promotes and sells all of its It’s a 10 Miracle Hair Products under the It’s

a 10 trademark in combination with a family of Miracle-formative marks.

11. It's a New 10 has long-standing common law rights in its It’s a 10 trademark and

Miracle Formative Marks and is the owner of numerous federal U.S. trademark registrations for

It's a 10 and for numerous MIRACLE-formative marks for hair care products as identified below

(collectively “the Registrations”).

MARK REG. NO. DESCRIPTION OF GOODS

IT'S A 10 MIRACLE LEAVE

IN PRODUCT

4578758 IC 003 Hair care preparations; hair styling

preparations; hair care products, namely, hair gels and

conditioners.

IT'S A 10 3420182 IC 003 A full line of hair care products, namely,

shampoos, and conditioners styling gels, hair lotions

and hair sprays.

IT’S A 10 HAIRCARE 5426017 IC 003. Hair shampoos, hair conditioners, hair leavein conditioners, hair sprays, hair gels, hair creams,

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MARK REG. NO. DESCRIPTION OF GOODS

hair conditioning masks, hair styling paste, hair oil,

hair lotion, hair pomade, hand cream.

MIRACLE LEAVE IN

PRODUCTS

3,446,682 IC 003. A full line of hair care products, namely,

shampoos, conditioners, styling gels, hair lotions and

hair sprays.

MIRACLE HAIR MASK 3,760,933 IC 003. Hair care products, namely, a hair conditioner

and strengthener.

MIRACLE LEAVE IN

PLUS KERATIN

4,082,539 IC 003. Hair care products, namely, styling,

nourishing and protective sprays.

MIRACLE STYLING MOUSSE 4,537,870 IC 003. Hair styling aids, namely, hair mousse.

MIRACLE SILK 4,556,470 IC 003. Hair care products, namely, shampoos and

conditioners.

MIRACLE SILK SMOOTHING

BALM

4,672,156 IC 003. Hair care products, namely, hair styling

balms.

MIRACLE SILK SHAMPOO 4,705,180 IC 003. Hair care products, namely, shampoos.

MIRACLE SILK HAIR MASK 4,705,175 IC 003. Hair care preparations; hair care products,

namely, hair masks.

MIRACLE LEAVE IN FOR

BLONDES

4,404,247 IC 003. Hair care preparations; hair care products,

namely, hair conditioner, hair cream, hair gel, and hair

lotion.

MIRACLE LEAVE IN LITE 4,276,330 IC 003. Hair care products, namely, leave in

conditioning aids.

MIRACLE SHAMPOO PLUS

KERATIN

4,210,868 IC 003. Hair care products, namely, shampoos.

MIRACLE OIL PLUS

KERATIN

4,210,866 IC 003. Hair care products, namely, oil preparation for

hair.

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MARK REG. NO. DESCRIPTION OF GOODS

MIRACLE VOLUME

SHAMPOO

4,210,867 IC 003. Hair care products, namely, shampoos.

MIRACLE FINISHING SPRAY 4,210,865 IC 003. Hair care products, namely, styling sprays.

12. The foregoing marks are collectively referred to herein as the It’s a 10

Trademark and Miracle Marks.

13. Representative It’s a 10 Miracle Hair Products using the It’s a 10 Trademark

and Miracle Marks are depicted in Image 1 below.

IMAGE 1

(Plaintiff’s It’s a 10 Miracle Defrizzing Collection)

 

14. Plaintiff also has established long-standing common law rights in the It’s a 10

Trademark and Miracle Marks as a result of continuous, exclusive and substantial use of the

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It’s a 10 Trademark and the Miracle Marks in interstate commerce on or in connection with

its It’s a 10 Miracle Hair Products commencing in 2006.

15. Plaintiff also has established common law trademark rights in a list of 10 benefits

appearing on many of the It’s a 10 Miracle Hair Products.

16. Plaintiff has spent millions of dollars to date on the advertising and promotion of

the It’s a 10 Miracle Hair Products and has invested an immeasurable amount of time and

effort in the development of its unique brand and product line.

17. Plaintiff’s sales of the It’s a 10 Miracle Hair Products line have exceeded

$400 million since 2006 which includes Plaintiff’s top-selling products at issue in this action.

18. Plaintiff’s It’s a 10 Miracle Hair Products have earned substantial recognition

among professional salons and consumers as high-quality products, receiving glowing reviews

not only from consumers, but celebrities alike.

19. The It’s a 10 Miracle Hair Products have also generated substantial attention

and praise in various famous publications and magazines, including, but not limited to:

Cosmopolitan, Fitness Magazine, Good Housekeeping, In Style, In Touch, Ladies’ Home

Journal, Life & Style, Latina Magazine, Lucky Magazine, Martha Stewart Wedding Magazine, O

magazine, OK! Magazine, People Magazine, Redbook, SELF Magazine, Seventeen, Star

Magazine, Teen Vogue, and US Magazine.

20. It’s a 10 New 10’s predecessor, It’s a 10, Inc., was the exclusive supplier of hair

care products for the Miami Heat (i.e., a professional basketball team of the National Basketball

Association based in Miami, Florida), further enhancing the popularity of this already successful

It’s a 10 hair care line.

21. The It’s a 10 Miracle Hair Products have also won numerous awards, including

but not limited to, the Oprah 2019 Fall Beauty Awards, September 2019 Total Beauty Award,

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Cosmopolitan Beauty Award, New Beauty Choice Award, Parent Mom Knows Best Beauty

Award, Life & Style the Best of Beauty, Teen Vogue Beauty Award, OK Magazine Spring Beauty

Award and the Destination and Honeymoon Beauty Award.

22. Plaintiff promoted its It’s a 10 Miracle Hair Products by broadcasting a

promotional commercial during the live 2017 Super Bowl which reached millions of viewers.

23. As a result of Plaintiff’s considerable promotional efforts and sales, it has

achieved huge commercial success and the It’s a 10 Trademark and Miracle Marks are widely

recognized by consumers and the beauty industry as indicating the source of Plaintiff’s It’s a 10

Miracle Hair Products.

24. The It’s a 10 Trademark and Miracle Marks, and the goodwill associated

therewith, are of inestimable value to Plaintiff.

Defendants’ Infringing Acts

25. Defendants sell and promote a line of hair care products. Long subsequent to

Plaintiff’s adoption and use of its It’s a 10 Miracle-formative marks, Defendants adopted and

began use of a confusingly similar mark of 10 in 1 Miracle for women’s hair care and shampoo

products which, similar to Plaintiff, includes a list of 10 benefits on the packaging and the same

color scheme (“Defendants’ Infringing Products”).

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26. Defendants’ Infringing Products are depicted in Image 2 below.

IMAGE 2

(Defendant’s Infringing Products)

27. Upon information and belief, Defendants’ Infringing Products are sold in stores

and advertised on the internet in proximity to the It’s a 10 Miracle Hair Products. Defendants’

Infringing Products are discussed in online blogs and forums along with the It’s a 10 Miracle

Hair Products.

28. When the respective products are sold and advertised in the same channels of

trade and same websites, a side by side comparison of the products is appropriate to establish

trademark infringement. Image 3 below is a side by side comparison of representative products

of It’s a 10 Miracle Hair Products and Defendants’ Infringing Products.

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IMAGE 3

Plaintiff’s Products Defendants’ Infringing Products

29. Defendants’ Infringing Products are likely to continue to cause confusion,

including initial-interest confusion, point-of-sale confusion and post-sale confusion, and to

deceive consumers as to whether there is an affiliation, connection or association between

Plaintiff and Defendants’ Infringing Products.

30. Plaintiff is suffering irreparable injury to its valuable trademark rights.

Defendants’ conduct has caused and, if allowed to continue, will continue to cause irreparable

damage to Plaintiff’s business, reputation and goodwill. Plaintiff’s damages are not yet

ascertained.

31. The foregoing acts of infringement have been and continue to be deliberate,

willful and wanton, constituting an exceptional case within the meaning of 15 U.S.C. §1117.

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COUNT I

Registered Trademark Infringement

(15 U.S.C. § 1114)

32. Plaintiff repeats and re-alleges all of the allegations contained in the preceding

paragraphs as if fully set forth herein.

33. Plaintiff’s It’s a 10 Trademark and Miracle Mark are federally registered

trademarks that are inherently distinctive, nonfunctional and/or have acquired secondary

meaning in the marketplace.

34. Defendants, without authorization from Plaintiff, have promoted, distributed, sold

and/or offered for sale products that use a trademark that is confusingly similar to Plaintiff’s

It’s a 10 Trademark and Miracle Marks.

35. On information and belief, the foregoing acts of Defendants were willful and

Defendants intended to cause, has caused and is likely to continue to cause confusion, mistake,

and deception among consumers, the public and the trade who recognize and associate Plaintiff’s

It’ a 10 Trademark and Miracle Marks with Plaintiff, all in violation of 15 U.S.C 1114.

36. The foregoing illegal acts of Defendants have caused irreparable injury to

Plaintiff and will continue to cause irreparable injury to Plaintiff’s business and goodwill.

Plaintiff is also entitled to damages under 15 U.S.C. 1117.

COUNT II

Common Law Trademark Infringement

(15 U.S.C. 1125(a)

37. Plaintiff repeats, re-alleges and incorporates by reference all of the allegations

contained in the preceding paragraphs as if fully set forth herein.

38. Defendants’ use in commerce of Defendants’ Infringing Products in order to

profit off the goodwill and reputation associated with the It’ a 10 Trademark and Miracle

Marks was intended to cause, and is likely to continue to cause confusion, mistake and

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deception among consumers as to whether Defendants’ Infringing Products are affiliated with,

sponsored or approved by Plaintiff.

39. Defendant’s use of 10 benefits on the packaging of Defendants’ Infringing

Products infringes Plaintiff’s common law rights in its listing of 10 benefits.

40. As a direct and proximate result of Defendant’s infringement, Plaintiff has

suffered, and will continue to suffer, irreparable injury and monetary loss to its business. Plaintiff

is entitled to damages.

COUNT III

False Designation of Origin and False Advertising

(15 U.S.C. §1125(a))

41. Plaintiff repeats, re-alleges and incorporates by reference all of the allegations

contained in the preceding paragraphs as if fully set forth herein.

42. Plaintiff’s It’ a 10 Trademark and Miracle Marks are distinctive, have been

used throughout the United States and elsewhere, and are well known to distributors in the trade

and consumers as an indicator of source of It’ a 10 Hair Miracle Products. 

43. Defendants’ promotion, distribution, sale, and offering for sale of Defendants’

Infringing Products, which use confusingly similar trademarks, constitutes false designation of

origin or sponsorship of such goods and is likely to confuse, mislead, and deceive consumers and

other purchasers, and members of the public as to the origin of the goods or to cause said persons

to believe that the goods have been sponsored, approved, authorized or licensed by Plaintiff or

are in some way affiliated with Plaintiff, all in violation of 15 U.S.C. § 1125(a). Plaintiff has

suffered and will continue to suffer irreparable injury and is also entitled to damages under 15

U.S.C. 1117.

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COUNT IV

Violation of Florida Deceptive Acts and Unfair Trade Practices Act

Pursuant to Florida Statute § 501.201

44. Plaintiff repeats, re-alleges and incorporates by reference all of the allegations

contained in the preceding paragraphs as if fully set forth herein.

45. Defendants’ use of a mark virtually identical to the It’s a 10 Trademark and

Miracle Marks coupled with the use of 10 benefits for use in connection with identical goods is

clearly intended to deceive Florida consumers as to the origin of Defendants’ goods and to

mislead customers into believing that Defendants’ goods have been sponsored, approved,

authorized or licensed by Plaintiff or are in some way affiliated or connected with Plaintiff in

violation of Florida Statute §502.201.

46. Defendants’ use of a confusingly similar mark in selling, advertising and

promoting hair products using a mark virtually identical to Plaintiff’s marks constitutes unfair

methods of competition and unfair or deceptive acts or practices in the conduct of any trade or

commerce in contravention of Florida state law.

47. As an actual and proximate result of Defendants’ deceptive activities, Plaintiffs

have been damaged to an amount according to proof at the time of trial and shall be entitled to

costs and attorney fees in addition thereto as provided in §502.2105.

COUNT V

Unfair Competition Under Common Law of Florida

48. Plaintiff repeats, re-alleges and incorporates by reference all of the allegations

contained in the preceding paragraphs as if fully set forth herein.

49. Defendants intended to profit off the goodwill associated with Plaintiff’s It’ a 10

Trademark and Miracle Marks through the use of its 10 in 1 Miracle mark which is

confusingly similar to Plaintiff’s It’ a 10 Trademark and Miracle Marks. Defendants acted in

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bad faith and intended to deceive consumers as to the origin of Defendants’ goods and to mislead

customers into believing that Defendants’ goods have been sponsored, approved, authorized or

licensed by Plaintiff or are in some way affiliated or connected with Plaintiff.

50. Defendants’ actions constitute unfair methods of competition and unfair or

deceptive acts or practices in the conduct of any trade or commerce in contravention of Florida

law.

51. As an actual and proximate result of Defendants’ deceptive activities, Plaintiff has

suffered and will continue to suffer irreparable harm and has also been damaged in an amount

according to proof at the time of trial, and shall be entitled to damages, costs and attorney fees in

addition thereto.

COUNT VI

Unjust Enrichment

52. Plaintiff repeats, re-alleges and incorporates by reference all of the allegations

contained in the preceding paragraphs as if fully set forth herein.

53. Defendants intentionally used, and continues to use, a trademark that is

confusingly similar to Plaintiff’s It’ a 10 Trademark and Miracle Marks in order to divert

consumers to Defendant’s Infringing Products and to profit off the goodwill associated with

Plaintiff’s It’ a 10 Trademark and Miracle Marks.

54. As a result of Defendants’ infringing activities, a monetary benefit has been

conferred upon Defendants. Defendants voluntarily realized and retained such benefit.

55. Defendants have been unjustly enriched at Plaintiff’s expense, and the present

circumstances as well as principles of equity are such that it would be inequitable to allow

Defendants to retain such monetary benefits without requiring the Defendants to make restitution

to Plaintiff for damages related thereto.

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PRAYER FOR RELIEF

WHEREFORE, Plaintiff demands as follows:

1. Defendants, their agents, subsidiaries, servants, employees, attorneys,

representatives, successors and assigns and all persons, firms, or corporations in active concert or

participation with Defendants be enjoined and restrained preliminarily and permanently from:

(a) directly or indirectly infringing Plaintiff’s It’s a 10 Trademark and/or

Miracle Marks;

(b) distributing, advertising, selling, or offering Defendants’ products for sale

using the 10 in 1 Miracle mark or any derivative thereof, including but not

limited to any mark comprised of MIRACLE, or the terms 10 and MIRACLE;

(c) using a list of 10 benefits on Defendants’ packaging;

(b) engaging in any conduct that is likely to confuse, mislead, or deceive

consumers to believe that Defendants or Defendants’ Infringing Products

are sponsored, approved, licensed or in any way connected or affiliated with

Plaintiff; and

(c) otherwise competing unfairly with Plaintiff in any manner.

2. Defendants be required to deliver for destruction to Plaintiff’s counsel all goods in

its possession or under its control, including Defendants’ Infringing Products, and any

promotional and advertising material related thereto, and any other unauthorized items that

infringe Plaintiff’s It’s a 10 Trademark and Miracle Marks.

3. Defendants be required to account for and to pay to Plaintiff all of Defendant’s

profits and all of Plaintiff’s damages resulting from Defendant’s foregoing infringing and unfair

activities;

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4. Plaintiff recover from Defendants its costs of this action, reasonable attorneys’

fees, and prejudgment and post-judgment interest;

5. Plaintiff recover from Defendants punitive damages;

6. Plaintiff be awarded damages under 15 U.S.C. 1117 and enhanced damages under

15 U.S.C. 1117 for willful infringement;

7. Plaintiff be awarded its actual damages caused by Defendants’ unlawful conduct; and

8. Plaintiff be entitled to any and all further relief as the Court may deem just and

proper under the circumstances.

DEMAND FOR JURY TRIAL

Plaintiff hereby demands a trial by jury on all issues triable to a jury.

Dated: April 28, 2020

Respectfully submitted,

 Michael J. Sacks

Michael J. Sacks/

Michael J. Sacks FBN: 65625

The Sacks Firm

7210 Wisteria Avenue

Parkland, FL 33076

(954)575-8691

email: msacks@bellsouth.net

/Edward P. Kelly/

Edward P. Kelly (to be admitted pro hac vice)

Tiajoloff & Kelly LLP

The Chrysler Building, 37th floor

405 Lexington Avenue

Florida, Florida 10174

212 490 3285

212 490 3295 (fax)

email: ekelly@tkiplaw.com

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