Industria DE Alimentos Zenu S.A.S. v. Latinfood U.S. Corp. et al

BRIEF in Opposition

D.N.J.December 5, 2016

REED SMITH LLP Formed in the State of Delaware Peter D. Raymond, Esq. (admitted pro hac) Sarah Levitan, Esq. 599 Lexington Avenue New York, New York 10022 Tel: (212) 521-5400 Tracy Zurzolo Quinn, Esq. Princeton Forrestal Village 136 Main Street, Suite 250 Princeton, New Jersey 08540 Tel: (609) 987-0050 Attorneys for Plaintiff Industria de Alimentos Zenú S.A.S. UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY INDUSTRIA DE ALIMENTOS ZENÚ S.A.S. Plaintiff, v. LATINFOOD U.S. CORP. d/b/a ZENÚ PRODUCTS CO. and WILSON ZULUAGA, Defendants. Civil Action No. 2:16-cv-06576-KM-MAH Motion Date: December 19, 2016 PLAINTIFF INDUSTRIA DE ALIMENTOS ZENÚ S.A.S.’ MEMORANDUM OF LAW IN OPPOSITION TO DEFENDANTS’ MOTION TO DISMISS PLAINTIFF’S COMPLAINT Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 1 of 26 PageID: 222 - i - TABLE OF CONTENTS Page PRELIMINARY STATEMENT .................................................................................................... 1 ALLEGATIONS IN THE COMPLAINT ...................................................................................... 3 ARGUMENT .................................................................................................................................. 6 I. Motion To Dismiss Standard .............................................................................................. 6 II. Use In The United States Is Not A Requisite Element For Plaintiff’s Claims Under Section 43(a) Of The Lanham Act Or State Analogs .............................................. 7 A. Plaintiff’s Claim For False Association Under Section 43(a) And Unfair Competition Under N.J. Stat. 56:4-1 And 56:4-2 ................................................... 9 B. Plaintiff’s Claim For Trade Dress Infringement Pursuant To Section 43(a) ........ 10 III. Section 14(3) Of The Lanham Act Does Not Contain A Use Requirement And Plaintiff Has Adequately Pled Its Claim For Source Misrepresentation .......................... 12 IV. Plaintiff Has Sufficiently Alleged Its False Advertising Claim Under Any Pleading Standard, Whether Regular or Heightened ........................................................ 14 V. The Inter-American Convention Does Create A Private Right of Action, And Plaintiff Has Sufficiently Pled Its Claims Pursuant To It ................................................. 16 VI. Mr. Zuluaga Is a Proper Party To This Action and Plaintiff Has Sufficiently Pled Its Claims Against Him ..................................................................................................... 18 CONCLUSION ............................................................................................................................. 21 Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 2 of 26 PageID: 223 - ii - TABLE OF AUTHORITIES Cases Page(s) Arista Records, Inc. v. Flea World, Inc., 356 F. Supp. 2d 411 (D.N.J. 2005) ..........................................................................................19 Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009) ...............................................................................................2, 6, 14, 15 Babbit Elecs. v. Dynascan Corp., 38 F.3d 1161 (11th Cir. 1994) .................................................................................................19 Bacardi Corp. v. Domenech, 311 U.S. 150 (1940) .................................................................................................................17 Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) ...................................................................................................2, 6, 14, 15 Belmora LLC v. Bayer Consumer Care AG (Flanax), 819 F.3d 697 (4th Cir. 2016) ........................................................................................... passim Borecki v. Easter Int’l Mgm’t Corp., 694 F. Supp. 47 (D.N.J. 1988) .................................................................................................19 City of Miami v. Bank of Am. Corp., 800 F.3d 1262 (11th Cir. 2015) .................................................................................................7 Daetwyler v. Input Graphics, Inc., 608 F. Supp. 1549 (E.D. Pa. 1985) ....................................................................................14, 15 Donsco, Inc. v. Casper Corp., 587 F.2d 602 (3d Cir. 1978)...............................................................................................18, 20 Elan Pharma Int’l Ltd. v. Lupin Ltd., Civ. No. 09-1008, 2010 WL 1372316 (D.N.J. March 31, 2010) ...............................................6 Empresa Cubana Del Tabaco v. Gen. Cigar Co., Inc., 753 F.3d 1270 (Fed. Cir. 2014)......................................................................................7, 13, 14 Fair Wind Sailing, Inc. v. Dempster, 764 F. 3d 303 (3d Cir. 2014)....................................................................................................12 Garza v. Lappin, 253 F.3d 918 (7th Cir. 2001) ...................................................................................................17 Gross v. German Found. Indus. Initiative, 549 F.3d 605 (3d Cir. 2008).....................................................................................................16 Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 3 of 26 PageID: 224 - iii - Ideal Toy Corp. v. Plawner Toy Mfg., 685 F.2d 78 (3d Cir. 1982).......................................................................................................12 Lexmark Int’l v. Static Control Components, 134 S. Ct. 1377 (2014) ..................................................................................................... passim Lundgren v. AmeriStar Credit Sols., 40 F. Supp. 3d 543 (W.D. Pa. 2014) ..........................................................................................8 Mannington Mills, Inc. v. Congoleum Corp., 595 F.2d 127 (3d Cir. 1979).....................................................................................................17 Medellin v. Texas, 552 U.S. 491 ............................................................................................................................16 Muhlenberg College v. Sportswear, Inc., Civ. Action No. 13-7197, 2015 WL 713842 (E.D. Pa. Feb. 19, 2015) ...................................13 Mycone Dental Supply Co. v. Creative Nail Design, Civ. No. 11-4380, 2012 WL 3599368 (D.N.J. Aug. 17, 2012) ...................................14, 15, 16 N.J. Physicians United Reciprocal Exch. v. Boynton & Boynton, Inc., 141 F. Supp. 3d 298 (D.N.J. 2015) ..................................................................................7, 8, 14 Peterson v. Imhof, Civ. No. 2:13-cv-00537, 2013 WL 5567561 (D.N.J. Oct. 8, 2013) ..............................6, 17, 18 Phillips v. Cty. of Allegheny, 515 F.3d 224 (3d Cir. 2008).................................................................................................6, 18 Rose Art Indus. v. Swanson, 235 F.3d 165 (3d Cir. 2000).....................................................................................................11 Sunset Fin. Res., Inc. v. Redevelopment Grp., 2006 WL 3675384 (D.N.J. Dec. 12, 2006) ..............................................................................20 Video Pipeline, Inc. v. Buena Vista Home Ent’mt, Inc., 210 F. Supp. 2d 552 (D.N.J. 2002) ............................................................................................7 Youssef v. Dep’t of Health & Senior Servs., 423 Fed. Appx. 221 (3d Cir. 2011) ............................................................................................1 Statutes 15 U.S.C. § 1064 ............................................................................................................................12 15 U.S.C. § 1064(3) .......................................................................................................................12 15 U.S.C. § 1125(a) ............................................................................................................... passim Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 4 of 26 PageID: 225 - iv - 15 U.S.C. § 1127 ................................................................................................................2, 8, 9, 15 46 Stat. 2907 ..............................................................................................................................5, 17 46 Stat. 2907, Art. 1 .......................................................................................................................17 46 Stat. 2907, Art. 7 .................................................................................................................16, 17 46 Stat. 2907, Art. 8 .................................................................................................................16, 17 46 Stat. 2907, Art. 12 ...............................................................................................................16, 17 46 Stat. 2907, Art. 16 .....................................................................................................................16 46 Stat. 2907, Art. 17 ...............................................................................................................16, 17 46 Stat. 2907, Art. 18 ...............................................................................................................16, 17 46 Stat. 2907, Art. 30 .....................................................................................................................17 46 Stat. 2907, Art. 31 ...............................................................................................................16, 17 Rules Fed. R. Civ. P. 12(b)(6)................................................................................................................1, 6 Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 5 of 26 PageID: 226 - 1 - Plaintiff Industria de Alimentos Zenú S.A.S. (“Plaintiff”), by its counsel Reed Smith LLP, submits this memorandum of law in support of Plaintiff’s opposition to the motion to dismiss filed by defendants Latinfood U.S. Corp. d/b/a Zenú Products Co. (“Latinfood”) and Wilson Zuluaga (together with Latinfood, “Defendants”), pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. PRELIMINARY STATEMENT Defendants’ motion to dismiss reflects a pervasive misunderstanding of the current state of the law, supported by a selective reading of cases. Defendants insist that several of Plaintiff’s claims should be dismissed for its failure to plead an element—use of the trademark in the United States—which recent case law has clarified is not required. Moreover, Defendants attempt to impose a heightened pleading standard upon Plaintiff when cornerstone Supreme Court jurisprudence has rendered that standard superfluous. With respect to Plaintiff’s claim under the General Inter-American Convention for Trade Mark and Commercial Protection, Defendants ignore the fact that the treaty specifically created private rights of action for the claims asserted here. Finally, Defendants have misread the theory under which Plaintiff asserts claims against Defendant Zuluaga and disregard well-established case law regarding the personal liability of officers who direct or control wrongful acts.1 First, Defendants contend that Plaintiff’s claims for false association, unfair competition, trade dress infringement and source misrepresentation should be dismissed for Plaintiff’s failure to allege its use of the ZENÚ mark in the United States. But Plaintiff’s use in the United States is not a requisite element for any of the claims Defendants seek to dismiss on that basis. For 1 It should also be noted that Defendants’ motion contains many irrelevant details from outside the pleadings, including prior proceedings before the Trademark Trial and Appeal Board, which cannot be considered on a motion to dismiss. See Youssef v. Dep’t of Health & Senior Servs., 423 Fed. Appx. 221, 223-24 (3d Cir. 2011). Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 6 of 26 PageID: 227 - 2 - each of Plaintiff’s claims made pursuant to Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and state analog, recent case law, spurred by the Supreme Court’s holding in Lexmark Int’l v. Static Control Components, 134 S. Ct. 1377 (2014), has clarified that use in the United States is not a required element of such claims. Instead, to maintain such claims a plaintiff must show that: (i) it falls within the enumerated interests the Lanham Act seeks to protect; and (ii) a defendant’s conduct has proximately caused damage to the plaintiff. Plaintiff has more than sufficiently established these elements in the Complaint. Indeed, this case falls squarely within the zone of interests set forth in 15 U.S.C. § 1127 to prevent deceptive and misleading conduct and unfair competition, and Plaintiff has adequately alleged the resulting economic harm and harm to its goodwill. Plaintiff’s claim for source misrepresentation made pursuant to Section 14(3) is properly pled for much the same reason. With respect to Plaintiff’s claim for false advertising, Defendants contend it should be dismissed because it purportedly is subject to a heightened pleading standard that Defendants contend Plaintiff has failed to meet. Defendants do not define this supposed standard, nor do they explain how Plaintiff has fallen short. Regardless, since the Supreme Court confirmed the plausible pleading standard in Iqbal and Twombly, any reason for a heightened pleading standard for a false advertising claim has evaporated. Even were that not the case, Plaintiff has enumerated specific examples of misleading statements or conduct from Defendants. As a result, Plaintiff has provided Defendants with sufficient notice of the claim against them to an extent that would satisfy even a heightened pleading standard. Next, Defendants challenge Plaintiff’s claims made pursuant to the IAC by stating that treaties generally do not create private rights of action. However, Defendants ignore the clarification that often follows this rule—that a treaty can explicitly create a private right of Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 7 of 26 PageID: 228 - 3 - action, and that private right, when created, should be enforced by the courts. Indeed, most if not all of the cases cited by Defendants state this exception. The IAC is such a treaty—it explicitly, in several instances, creates private rights of action, and does so specifically for most if not all of Plaintiff’s IAC claims. Defendants’ motion to dismiss those claims is without merit. Finally, Defendants contend that Mr. Zuluaga should be dismissed entirely from the action because Plaintiff has failed to plead the elements for piercing the corporate veil. It is well- established however, that when a corporate officer has directed or controlled wrongful acts, (s)he may be held personally liable for those acts and no piercing of the corporate veil is required. Plaintiff’s Complaint details how Mr. Zuluaga was the mastermind of the scheme to coopt Plaintiff’s mark, trade dress and goodwill and created Latinfood to serve his aims. Moreover, as sole director of Latinfood, Mr. Zuluaga controls virtually every action of the company. Nowhere is this more evident than in Defendants’ fraudulent registration of the ZENÚ mark, where Mr. Zuluaga provided information and signed the fraudulent documentation on behalf of the company. Because Plaintiff sets forth numerous allegations regarding misconduct by Mr. Zuluaga personally, Plaintiff’s claims against him cannot be dismissed. In sum, and as set forth more fully below, Defendants have failed to assert any viable grounds for dismissal of any of Plaintiff’s claims, and their motion should be denied in its entirety. ALLEGATIONS IN THE COMPLAINT Plaintiff’s complaint (“Complaint”) details the deceptive and misleading scheme launched by Mr. Zuluaga, through his company Latinfood, to unfairly capitalize on the goodwill Plaintiff has built in its ZENÚ brand for more than sixty years. (Compl. ¶¶ 1, 3.) Indeed, Mr. Zuluaga’s business model appears to be based entirely upon deceiving consumers into believing Defendants’ products are those of, or associated with, Plaintiff. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 8 of 26 PageID: 229 - 4 - Plaintiff is a Colombian company which, for decades, has manufactured and sold meat, sausage, beans and other packaged food products in Colombia and elsewhere under the ZENÚ trademark. (Id. ¶ 1.) These products, in their familiar red and white packaging, are among the most popular meat, sausage, beans and other pre-packaged foods in Colombia. (Id. ¶ 2.) The quality of Plaintiff’s products and its marketing efforts have generated significant goodwill for Plaintiff’s ZENÚ-branded products amongst Colombians and other Latin Americans. (See id.) Defendants observed a demand for products like Plaintiff’s in the United States and sought to fill the gap that should rightfully be filled by Plaintiff through improper means. (See id. ¶ 32.) Defendants have actively sought to mislead the public into believing their products are those of, or affiliated with, Plaintiff. Defendants’ misleading tactics have included a wholesale hijacking of Plaintiff’s well-known trade dress and packaging. This includes the prominent display of the ZENÚ mark in red stylized type, underscored by a brushstroke line (id. ¶¶ 21, 54, 87); red and white packaging (id. ¶¶ 2, 6, 21, 54); diagonal labeling convention (id. ¶¶ 21, 54); photographs of the food on a white background (id. ¶¶ 21, 87); and colorful band at the base of its products (id. ¶ 54). Consumers have come to associate this packaging with Plaintiff’s trusted brand. (See id. ¶¶ 2, 6, 20, 23-25, 63, 82, 89.) Defendants have also attempted to mislead consumers through various means, including labelling and statements on their website, into believing that their products are those of, or affiliated with, Plaintiff. Thus, Defendants, conducting business as “Zenu Products US Inc.” (see id. ¶¶ 58, 77), and operating a website similar to Plaintiff (see id. ¶¶ 7, 34, 55, 62, 78), tout that they hold an “exclusive distribution agreement” with a major Colombian manufacturer (see id. ¶¶ 7, 34, 79). Moreover, Latinfood sales representatives explicitly advise store owners that Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 9 of 26 PageID: 230 - 5 - Latinfood has exclusive rights to distribute ZENÚ-marked products in the United States (see id. ¶ 60). Defendants have also employed more subtle tactics to suggest an association with Plaintiff -- Defendants state, for example, that their products are part of “una deliciosa tradición,” or a delicious tradition (see id. ¶ 62), and their labels contain a “linea de exportacion” designation, which translated from Spanish means “export line” (see id. ¶ 59). This designation has caused the products sold by Defendants, many of which are manufactured in the United States (id. ¶ 61), to be sold in the “imported” section of markets (see id. ¶¶ 8, 59), thus further misleading consumers into believing that these products come from Plaintiff in Colombia. Additionally, Defendants, at Mr. Zuluaga’s direction and behest, have secured the registration of the ZENÚ mark in the United States using false attestations, including that Defendants were entitled to the exclusive use of the ZENÚ mark (id. ¶ 45), and the submission of images of Plaintiff’s products as Defendants’ specimens (id. ¶ 43). This fraudulent registration has blocked any registration by Plaintiff and prevents it from selling its well-known products in the United States. (See id. ¶¶ 9, 30, 48, 49.) In addition to this substantive economic injury, Defendants’ sale of its imposter ZENÚ products undoubtedly confuses consumers and harms the reputation and goodwill of Plaintiff’s ZENÚ brand. (See id. ¶¶ 4, 35, 53, 63, 82, 91.) As a result of Defendants’ improper conduct, Plaintiff brought claims for false association, false advertising, trade dress infringement and source misrepresentation, along with several claims asserted pursuant to the General Inter-American Convention for Trade Mark and Commercial Protection, 46 Stat. 2907 (“IAC”). Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 10 of 26 PageID: 231 - 6 - ARGUMENT I. Motion To Dismiss Standard In assessing a motion to dismiss pursuant to Rule 12(b)(6), the Court must accept all well-pleaded factual allegations as true and must draw all reasonable inferences in the plaintiff’s favor. See Peterson v. Imhof, Civ. No. 2:13-cv-00537, 2013 WL 5567561, at *2 (D.N.J. Oct. 8, 2013). A plaintiff need not assert a “heightened fact pleading of specifics,” but instead must present “enough facts to raise a reasonable expectation that discovery will reveal evidence of’ the necessary element.” See Phillips v. Cty. of Allegheny, 515 F.3d 224, 234 (3d Cir. 2008). A claim is facially plausible when the factual content pleaded “allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009). This plausibility standard is “a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Id. at 1950. Significantly, “a motion to dismiss for failure to state a claim should be granted only if the party asserting the claim is unable to articulate ‘enough facts to state a claim to relief that is plausible on its face.’ ‘The defendant bears the burden of showing that no claim has been presented.’” Elan Pharma Int’l Ltd. v. Lupin Ltd., Civ. No. 09-1008, 2010 WL 1372316, at *2 (D.N.J. March 31, 2010) (Citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007) and Hedges v. United States, 404 F.3d 744, 750 (3d Cir. 2005)). Under this well-established standard, Defendants have failed to meet their burden, Plaintiff’s Complaint is more than sufficient and Defendants’ motion should be denied. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 11 of 26 PageID: 232 - 7 - II. Use In The United States Is Not A Requisite Element For Plaintiff’s Claims Under Section 43(a) Of The Lanham Act Or State Analogs Defendants contend that Plaintiff’s First, Third and Fourth Causes of Action should be dismissed because Plaintiff has not pled use of its ZENÚ mark in the United States.2 To support this argument, Defendants rely heavily on a single allegation in the Complaint—that Plaintiff cannot offer its products for sale in the United States (see Mot. to Dismiss at 12 & ns.1, 2)—yet disregard that it is Defendants’ fraudulent registration of the ZENÚ mark that prevents Plaintiff from legally using its ZENÚ mark here. While Defendants’ contention regarding Plaintiff’s lack of use in the United States may be true, it is of no import—none of Plaintiff’s claims requires such use. Critically, in 2014, the Supreme Court in Lexmark Int’l v. Static Control Components, 134 S. Ct. 1377 (2014), changed the analytical framework within which Lanham Act claims are evaluated.3 See N.J. Physicians United Reciprocal Exch. v. Boynton & Boynton, Inc., 141 F. Supp. 3d 298, 304 (D.N.J. 2015) (acknowledging that Lexmark changed the “analytical framework” for claims under the Lanham Act). As a result, the cases cited by Defendants to support their use argument, all of which pre- 2 Though not included in Defendants’ heading, it appears that Defendants also may have intended to use this argument to support a motion to dismiss Plaintiff’s Eighth Cause of Action for Unfair Competition under N.J. Stat. 56:4-1 and 56:4-2. However, if Plaintiff has adequately pled its false association claim under the Lanham Act—which it has—then it has satisfied its burden on its state unfair competition claim. See Video Pipeline, Inc. v. Buena Vista Home Ent’mt, Inc., 210 F. Supp. 2d 552, 564–65 (D.N.J. 2002). Defendants also did not raise this argument with respect to Plaintiff’s claim for false advertising made pursuant to Section 43(a) of the Lanham Act. 3 The Lexmark court also clarified that while its analysis was often framed as a “standing” issue, the Court was interpreting the scope of the private remedy created by Congress. See Lexmark, 134 S. Ct. at 1386-88. In other words, the Court established the elements of the statutory cause of action. See id.; Empresa Cubana Del Tabaco v. Gen. Cigar Co., Inc., 753 F.3d 1270, 1274 (Fed. Cir. 2014); City of Miami v. Bank of Am. Corp., 800 F.3d 1262, 1273-74 (11th Cir. 2015). Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 12 of 26 PageID: 233 - 8 - date Lexmark, are no longer good law.4 See Belmora LLC v. Bayer Consumer Care AG (Flanax), 819 F.3d 697, 708-10 (4th Cir. 2016); see also N.J. Physicians, 141 F. Supp. 3d at 304. After Lexmark, a party bringing any claim under Section 43(a) must establish two elements: (1) they fall within the zone of interest protected by the Lanham Act set forth in Section 45, 15 U.S.C. § 1127; and (2) they have an injury proximately caused by violations of the Lanham Act—in other words, demonstrate an “economic or reputational injury flowing directly from the deception wrought” by defendant’s conduct. See Flanax, 819 F.3d at 707-08; Lexmark, 134 S. Ct. at 1391; see also Lundgren v. AmeriStar Credit Sols., 40 F. Supp. 3d 543, 551 n.4 (W.D. Pa. 2014) (stating that Lexmark factors should apply to claims of false association under Section 43(a)(1)(A) as well as false advertising under Section 43(a)(1)(B)). The Lanham Act specifically sets forth the zone of interests Congress intended the Act to protect. Section 45, 15 U.S.C. § 1127, states that the Lanham Act intends to encompass, among others: (i) “the deceptive and misleading use of marks” in commerce; (ii) the protection of persons engaged in commerce against unfair competition; and (iii) the provision of “rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations.” Crucially, commerce as used in this Section, and across the Lanham Act, is not confined to commerce in the United States. Flanax, 819 F.3d at 707 n.5, 709 n.6. Notably absent from Lexmark or the explicit language of the Lanham Act is any requirement of use in the United States. Indeed, since Lexmark, courts have clarified that “§ 43(a) actions do not require, implicitly or otherwise, that a plaintiff have first used its own mark in United States commerce.” Flanax, 819 F.3d at 710. Instead, it is the defendant’s use of a 4 In addition, many of the cases cited by Defendants analyze causes of action not asserted by Plaintiff here, and thus involve different use requirements. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 13 of 26 PageID: 234 - 9 - mark in commerce, rather than the plaintiff’s, that underlies a claim pursuant to § 43(a). Id. at 708. In sum, Defendants’ contention that Plaintiff’s claims should be dismissed for its failure to plead use in the United States does not accurately reflect the state of the law. A. Plaintiff’s Claim For False Association Under Section 43(a) And Unfair Competition Under N.J. Stat. 56:4-1 And 56:4-2 Plaintiff has adequately pled the Lexmark elements and thus has met its burden on its false association and New Jersey statutory unfair competition claims. Section 45 of the Lanham Act indicates that the Lanham Act is intended to make “actionable the deceptive and misleading use of marks” and protect “against unfair competition.” 15 U.S.C. § 1127. Plaintiff alleges that Defendants use the ZENÚ mark, which Plaintiff began using more than sixty years ago (Compl. ¶ 1), in an effort to deceive and mislead consumers into believing their products are those of, or associated with, Plaintiff. These efforts have included:  Copying Plaintiff’s ZENÚ packaging (see id. ¶¶ 53-57);  Registering the ZENÚ mark for use in the United States for the same class of goods that Plaintiff sells (see id. ¶ 40);  Marketing themselves as importers of Colombian products and stating that they hold an “exclusive distribution agreement” with a major Colombian manufacturer (see id. ¶¶ 7, 34, 79);  Conducting business as “Zenu Products US Inc.” (see id. ¶¶ 58, 77);  Mimicking Plaintiff’s domain name and trade dress presented on Plaintiff’s website for the “Zenu Products US Inc” website (see id. ¶¶ 7, 34, 55, 62, 78);  Having Latinfood sales representatives advise store owners that Latinfood has full rights to the distribution of ZENÚ-marked products (see id. ¶ 60). Given the numerous misleading and deceptive actions by Defendants, and their clear intention to profit from Plaintiff’s established goodwill, Plaintiff’s claims could not fall more squarely within the Lanham Act’s zone of interests. See 15 U.S.C. § 1127; Flanax, 819 F.3d at 711. In addition, Plaintiff has alleged proximate cause through its allegations that Defendants have targeted Colombians and other consumers familiar with Plaintiff’s mark (see Compl. ¶¶ 32, Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 14 of 26 PageID: 235 - 10 - 72, 91, 128), damaged Plaintiff’s goodwill through their sale of mislabeled products that are subpar or different than those sold by Plaintiff (see id. ¶¶ 8, 41, 64-66, 74, 83), and have further harmed Plaintiff economically by foreclosing its registration and use of the ZENÚ mark in the United States. (Id. ¶¶ 9, 30, 48, 49, 66, 74, 83); c.f. Flanax, 819 F.3d at 708, 712. Allegations nearly identical to those in Plaintiff’s Complaint have been deemed sufficient for a false association claim to survive a motion to dismiss. In Flanax, the Fourth Circuit determined that the plaintiff, a manufacturer of a well-known pain reliever sold in Mexico under the FLANAX trademark and not sold in the United States with the FLANAX mark, had stated a claim where it had established that the defendant misled consumers, distributors and vendors into buying its FLANAX-branded pain reliever through suggesting a false association with plaintiff. 819 F.3d at 711-12. Moreover, the defendant’s targeting of a population that was already familiar with plaintiff’s FLANAX mark plausibly damaged the plaintiff. Id. at 712. Plaintiff in this case has similarly pled its claims and, as did the plaintiff in Flanax, should prevail on a motion to dismiss. Accordingly, because Plaintiff has pled the necessary elements for false association under the Lanham Act and unfair competition under N.J. Stat. 56:4-1 and 56:4-2, Defendants’ motion should be denied. B. Plaintiff’s Claim For Trade Dress Infringement Pursuant To Section 43(a) Defendants’ arguments are similarly defective when it comes to Plaintiff’s trade dress infringement claims. As with Plaintiff’s false association and unfair competition claims, Defendants contend that Plaintiff’s trade dress infringement claim, also made pursuant to Section 43(a) of the Lanham Act, must be dismissed for Plaintiff’s failure to allege use of its ZENÚ mark in United States commerce. As with Plaintiff’s other claims pursuant to Section 43(a), Plaintiff’s trade dress claim does not require use in the United States. See Flanax, 819 F.3d at 710 (“§43(a) actions do not require, implicitly or otherwise, that a plaintiff have first used its own mark in Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 15 of 26 PageID: 236 - 11 - United States commerce.”). As above, Plaintiff has adequately pled the relevant Lexmark factors on this claim. Plaintiff’s Complaint details how Defendants have copied its packaging and trade dress, bringing the claim within the Lanham Act’s stated zone of interests in preventing the deceptive and misleading use of protected materials. (See Compl.¶¶ 53-57.) As with Plaintiff’s false association claim, the copying of Plaintiff’s trade dress has proximately caused Plaintiff harm through loss of goodwill and the negative impact on its reputation. (See id. ¶¶ 8, 41, 64-66, 74, 83) In addition to the standard elements of a Section 43(a) claim, a claim for trade dress infringement has historically contained three additional elements: (i) the trade dress is nonfunctional; (ii) the trade dress is distinctive; and (iii) the defendant’s use of plaintiff’s trade dress is likely to cause confusion. Rose Art Indus. v. Swanson, 235 F.3d 165, 172 (3d Cir. 2000). Furthermore, when a plaintiff is alleging trade dress infringement across a line of products rather than a particular product, as Plaintiff does here, it must demonstrate that its products have the same “consistent overall look.” Id. Use in the United States is not a factor in any of these considerations. Plaintiff’s Complaint includes photographs in which the similarities between Plaintiff’s and Defendants’ packaging can be readily observed. (See Compl. Exs. A & B.) In addition, Plaintiff has outlined the consistent themes in the packaging of its products including: prominently featuring the ZENÚ mark in red stylized type, underlined by a brushstroke line (id. ¶¶ 21, 54, 87); the red and white packaging (id. ¶¶ 2, 6, 21, 54); diagonal labeling convention (id. ¶¶ 21, 54); photographs of the food on a white background (id. ¶¶ 2, 21, 87); and colorful band at the base of its products (id. ¶ 54). Thus, Plaintiff has pled that its products possess a consistent overall look. See Rose Art, 235 F.3d at 172. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 16 of 26 PageID: 237 - 12 - Plaintiff’s ZENÚ trade dress is non-functional because it is not essential to the use of Plaintiff’s food products. (See Compl. ¶ 86); Fair Wind Sailing, Inc. v. Dempster, 764 F. 3d 303, 310-311 (3d Cir. 2014) (“functional feature is one that is ‘essential to the use or purpose of the article,’ ‘affects the cost or quality of the article,’ or one that, if kept from competitors, would put them at a ‘significant non-reputation-related disadvantage.’ By contrast, a feature is nonfunctional where it ‘is unrelated to the consumer demand ... and serves merely to identify the source of the product’ or business.”) (internal citations omitted). Instead, the design and layout of Plaintiff’s labeling serves merely to identify the product. See Fair Wind, 764 F.3d at 311. Because Plaintiff has alleged that consumers have come to associate the packaging design with products from Plaintiff, Plaintiff has also established that its trade dress is distinctive and has acquired secondary meaning. (See Compl. ¶¶ 2, 20, 23-25, 63, 82, 89); Ideal Toy Corp. v. Plawner Toy Mfg., 685 F.2d 78, 82 (3d Cir. 1982) (“When the primary significance of the trade dress to a consumer is in designating not the product but its producer, the trade dress has acquired secondary meaning”). Finally, Plaintiff has alleged that Defendants’ use of Plaintiff’s trade dress is likely to cause confusion. (See Compl. ¶¶ 4, 35, 53, 63, 82, 91). Accordingly, Plaintiff has adequately pled its claim for trade dress infringement pursuant to Section 43(a) of the Lanham Act, and Defendants’ motion to dismiss this claim should be denied. III. Section 14(3) Of The Lanham Act Does Not Contain A Use Requirement And Plaintiff Has Adequately Pled Its Claim For Source Misrepresentation Defendants’ use argument also fails with respect to Plaintiff’s source misrepresentation claim pursuant to Section 14 of the Lanham Act, 15 U.S.C. § 1064(3). Section 14(3) empowers “any person who believes that he is or will be damaged…by the registration of a mark” to petition for the cancellation of the registration. 15 U.S.C. § 1064. This provision is to be Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 17 of 26 PageID: 238 - 13 - interpreted broadly, and if a plaintiff can show a “real interest” or “real commercial interest” in the registration, his claim should be heard. See Muhlenberg College v. Sportswear, Inc., Civ. Action No. 13-7197, 2015 WL 713842, at *4 (E.D. Pa. Feb. 19, 2015). Given the broad interpretation, a plaintiff need not even assert that the mark sought to be cancelled belongs to plaintiff, id. at *5, and sales in the United States are not necessary. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., Inc., 753 F.3d 1270, 1272, 1275 (Fed. Cir. 2014). Thus, to prevail on a claim for source misrepresentation, a party seeking the cancellation of the registration of a mark must (1) establish that the “registrant deliberately sought to pass off its goods as those of petitioner” and (2) “show economic or reputational injury flowing directly from the deception wrought by the defendant’s [conduct].” See Flanax, 819 F.3d at 714-15. As with Plaintiff’s other claims under the Lanham Act, use in the United States is not a requisite element for this claim. Plaintiff’s Complaint includes numerous allegations that Defendants have deliberately sought to pass off their goods as those of Plaintiff through their misappropriation of Plaintiff’s trademark, logo, trade dress and packaging design (see Compl. ¶¶ 3, 4, 6, 35, 43, 53, 54) and through their suggestions of an affiliation with Plaintiff. (See id. ¶¶ 3, 4, 6, 7, 35, 41, 53, 58, 59, 60, 61, 62, 63, 65, 71, 72, 77, 78, 79, 82, 90.) Indeed, Defendants went so far as to try to procure Plaintiff’s labels from its label maker (id. ¶ 57), and also submitted images of Plaintiff’s own products as samples for Defendants’ registration (id. ¶ 43). These allegations are more than enough to satisfy the “real interest” standard, particularly where a plaintiff need not even establish ownership in a mark. See Muhlenberg College, 2015 WL 713842, at *4, *5. Plaintiff has also alleged reputational and economic injury. Plaintiff has suffered harm to its goodwill from Defendants’ wrongful registration. (See Compl. ¶¶ 8, 41, 64-66, 74, 83.) Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 18 of 26 PageID: 239 - 14 - Moreover, Defendants’ wrongful registration of the ZENÚ mark has prevented Plaintiff from registering or using the mark in the United States. (See id. ¶¶ 9, 30, 48, 49, 74.) Indeed, a party seeking cancellation of a mark is damaged if that mark blocks its own registration and its desire to register the mark constitutes a legitimate commercial interest falling within the scope of Section 14(3). See Empresa Cubana, 753 F.3d at 1275. Because Plaintiff has adequately alleged the deliberate nature of Defendants’ acts and the injury those acts have caused, Plaintiff’s claim for source misrepresentation under Section 14(3) should not be dismissed. IV. Plaintiff Has Sufficiently Alleged Its False Advertising Claim Under Any Pleading Standard, Whether Regular or Heightened Without elaboration, Defendants state that Plaintiff’s claim for false advertising under Section 43(a)(1)(B) of the Lanham Act must be dismissed because Plaintiff has failed to meet the heightened pleading standard purportedly applicable to false advertising claims.5 Contrary to Defendants’ contentions, the Third Circuit has not established a heightened pleading standard for false advertising claims. See N.J. Physicians, 141 F. Supp. 3d at 304. While some courts in this Circuit have applied the “intermediate” pleading standard cited by Defendants and set forth in Daetwyler v. Input Graphics, Inc., 608 F. Supp. 1549 (E.D. Pa. 1985), courts in this District have questioned whether Daetwyler remains good law in light of the pleading standards subsequently set forth by the Supreme Court in Iqbal and Twombly. Mycone Dental Supply Co. v. Creative Nail Design, No. 11-4380, 2012 WL 3599368, at *5 (D.N.J. Aug. 17, 2012); N.J. Physicians, 141 F. Supp. 3d at 304, n.8. Indeed, Daetwyler requires that a defendant be provided with sufficient detail “regarding the nature of the alleged falsehoods to allow him to make a proper defense,” 608 F. Supp. at 1556, which aligns closely with the plausibility requirements set forth in Iqbal and Twombly. See Mycone Dental, 2012 WL 3599368, at *5; see also Twombly, 550 5 As referenced above, Defendants did not seek to have this claim dismissed on the basis of use. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 19 of 26 PageID: 240 - 15 - U.S. at 555 (plaintiff must provide fair notice of the claim and the grounds upon which the claim rests). As a result, the standard set forth in Daetwyler can be considered the same as the current default pleading standard — Daetwyler imposes no burden beyond that imposed by Iqbal and Twombly. See Mycone Dental, 2012 WL 3599368, at *5. Regardless, even if a heightened standard applied to claims for false advertising, Plaintiff has more than met any such standard. Plaintiff has satisfied the requisite Lexmark elements. First, Plaintiff’s claim for false advertising falls within the Lanham Act’s zone of interest by referencing Defendants’ “deceptive and misleading” use of the ZENÚ mark. 15 U.S.C. § 1127. Indeed, Plaintiff has identified numerous and specific misleading statements set forth by Defendants including:  Defendants market themselves as importers of Colombian products and state that they hold an “exclusive distribution agreement” with a major Colombian manufacturer (see Compl. ¶¶ 7, 79);  Defendants advertise that their products are part of “una deliciosa tradición” (see id. ¶ 62);  Defendants’ labels contain a “linea de exportacion” label, which translated from Spanish means “export line” (see id. ¶ 59);  Defendants’ goods are sold in the “imported” section of markets (see id. ¶¶ 8, 59);  Latinfood sales representatives have advised store owners that Latinfood has full rights to the distribution of ZENÚ-marked products (see id. ¶ 60). When coupled with the allegations that Defendants have misappropriated Plaintiff’s trademark, logo, trade dress and packaging design (see id. ¶¶ 3, 4, 6, 35, 43, 53, 54), the above statements demonstrate that Defendants regularly suggest that they have an affiliation with Plaintiff to retailers and consumers, and this is false and misleading because no such affiliation exists (see id. ¶¶ 3, 4, 6, 35, 41, 53, 54, 61, 62, 63, 65, 71, 72, 79, 82, 90). Indeed, misleading statements as to the “nature, characteristics, qualities, [] geographic origin” or history of a product, like Plaintiff alleges here, have been identified as “hallmarks” of a false advertising claim. See Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 20 of 26 PageID: 241 - 16 - Flanax, 819 F.3d 713. As such, Plaintiff has established that its claim falls within the Lanham Act’s zone of interests. Second, Plaintiff has satisfied the proximate cause prong of its false advertising claim by pleading that Defendants’ misleading and false statements have injured Plaintiff’s reputation and hindered its potential sales. (See Compl. ¶¶ 2, 8, 9, 24, 30, 41, 49, 64-66, 74, 83.) Plaintiff has identified specific statements from Defendants, providing Defendants with the opportunity to explain and defend these actions, and thus, Plaintiff has sufficiently met its burden on a false advertising claim under any pleading standard. See Mycone Dental Supply, 2012 WL 3599368, at *6 (denying motion to dismiss false advertising claim when complaint alleged merely that defendant “‘falsely advertises’ and makes statements that are ‘false, misleading, and have the tendency to confuse the consuming public’”). Accordingly, Defendants’ motion to dismiss Plaintiff’s false advertising claim should be denied. V. The Inter-American Convention Does Create A Private Right of Action, And Plaintiff Has Sufficiently Pled Its Claims Pursuant To It Defendants contend that Plaintiff’s remaining claims, made pursuant to Articles 7, 8, 12, 16-18 and 31 of the IAC, are unsustainable because treaties generally do not create private rights of action in the United States. However, the IAC explicitly creates such private rights of action. Indeed, Defendants’ contention is belied by the very cases they cite. While Defendants quote portions of the cases stating that treaties generally do not create private rights of action, they omit the language that often follows, which confirms that, when private rights are explicitly contemplated by the treaties, those private rights are enforceable. See, e.g., Medellin v. Texas, 552 U.S. 491, 506 n. 3 (“Accordingly, a number of the Courts of Appeals have presumed that treaties do not create privately enforceable rights in the absence of express language to the contrary.”); Gross v. German Found. Indus. Initiative, 549 F.3d 605, 616 (3d Cir. 2008) (“when Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 21 of 26 PageID: 242 - 17 - no privately enforceable right is explicitly stated, courts look to the treaty as a whole to determine whether it evidences an intent to provide a private right of action.”); Garza v. Lappin, 253 F.3d 918, 924 (7th Cir. 2001) (“There are, of course, exceptions to this rule, but an international agreement can be considered to create judicially-enforceable private rights only where such rights are contemplated in the agreement itself.”). The IAC, unlike the treaties at issue in the cases cited by Defendants, does create private causes of action and does so explicitly in several provisions.6 See IAC Articles 1, 7, 8, 12, 17, 18, 30, 31. The broadest of these can be found in Articles 30 and 31 from the chapter entitled “Remedies,” which grant interested parties the ability to seek redress from the courts of signatory states for any conduct in violation of the treaty. Moreover, virtually all of the Articles under which Plaintiff presents claims specifically create private rights of action within them. See IAC Articles 7, 8, 12, 17, 18, 30. Thus it is clear that the IAC is an explicit exception to the general rule that treaties do not create private rights of action, and Plaintiff can pursue its claims under that treaty. In the alternative, Defendants contend that Plaintiff’s IAC claims must be dismissed because Plaintiff has failed to allege that Defendants knew of Plaintiff’s ZENÚ products and mark. Defendants’ contention is false. In paragraphs 43, 45, 47, 56 and 105 of the Complaint, Plaintiff alleges that Defendants knew of Plaintiff’s mark and this allegation must be taken as true for purposes of this motion. See Peterson, 2013 WL 5567561, at *2. In addition, even if this allegation were not made, only Articles 7 and 8 of the IAC contain any reference to a 6 Defendants cite a case called Mannington Mills, Inc. v. Congoleum Corp., 595 F.2d 127 (3d Cir. 1979) which discusses the “Convention for the Protection of Trademarks” signed on August 20, 1910, 38 Stat. 1811, which unlike the IAC, 46 Stat. 2907, was not self-executing. See Bacardi Corp. v. Domenech, 311 U.S. 150, 161 (1940), (establishing that the IAC was self- executing). The IAC was drafted to supersede the 1910 Convention and was signed on February 20, 1929. See Introduction to the IAC. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 22 of 26 PageID: 243 - 18 - defendant’s knowledge of the use of the mark and thus, Plaintiff’s other IAC claims are not affected by Defendants’ knowledge (or lack thereof) of Plaintiff’s mark. Moreover, Defendants’ contention that they did not know of Plaintiff’s ZENÚ mark strains credulity. As set forth in the Complaint, Defendants’ products possess the same logo, trade dress and packaging design (see Compl. ¶¶ 3, 4, 6, 35, 43, 53, 54.) In addition, Defendants attempted to procure Plaintiff’s own labels. (See id. ¶ 57.) Each of these allegations is substantiated by the photographs annexed to the Complaint. (See id. Exs. A & B.) These allegations and photographic proof overwhelmingly show that Defendants intended to copy Plaintiff. At the least, Plaintiff’s allegations and incorporation of photographs are sufficient to survive a motion to dismiss. See Peterson, 2013 WL 5567561, at *2 (on a motion to dismiss, a court must accept all well-pleaded factual allegations as true and must draw all reasonable inferences in plaintiff’s favor.); Phillips, 515 F.3d at 234 (plaintiff must present “enough facts to raise a reasonable expectation that discovery will reveal evidence of’ the necessary element”). Accordingly, Defendants’ challenge to Plaintiff’s IAC claims should be dismissed. VI. Mr. Zuluaga Is A Proper Party To This Action And Plaintiff Has Sufficiently Pled Its Claims Against Him Defendants contend that all claims against Mr. Zuluaga should be dismissed because Plaintiff has failed to plead facts to support corporate veil piercing. Plaintiff, however, does not seek to hold Mr. Zuluaga liable through allegations of piercing the corporate veil. Instead, Plaintiff’s claims are premised on the well-settled doctrine that corporate officers can be personally liable for trademark infringement and unfair competition, among other torts, if the officers directed or controlled the wrongful acts. See, e.g., Donsco, Inc. v. Casper Corp., 587 F.2d 602, 606 (3d Cir. 1978) (finding grounds for personal liability of company’s president under Lanham Act, Section 43(a), particularly where officer was “central figure” in the Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 23 of 26 PageID: 244 - 19 - corporation); Arista Records, Inc. v. Flea World, Inc., 356 F. Supp. 2d 411, 417 (D.N.J. 2005) (rejecting affirmative defense of doctrine of corporate immunity and noting that individual defendants could be jointly and severally liable with corporate defendant where officers materially contributed to and had the ability to supervise or control the infringement); Borecki v. Easter Int’l Mgm’t Corp., 694 F. Supp. 47, 60 (D.N.J. 1988) (corporate officer could be personally liable for torts where there was evidence he controlled corporation and “was at least [its] dominant, if not sole, shareholder”); Babbit Elecs. v. Dynascan Corp., 38 F.3d 1161 (11th Cir. 1994) (“a corporate officer who directs, controls, ratifies, participates in, or is the moving force behind the infringing activity, is personally liable for such infringement without regard to piercing of the corporate veil”). Plaintiff’s Complaint details that Mr. Zuluaga is principal and sole shareholder of Latinfood (Compl. ¶ 12), and indeed, Mr. Zuluaga’s declaration admits as much. (Zuluaga Decl. ¶ 1, ECF No. 14-1.) Plaintiff’s Complaint describes the level of control exerted by Mr. Zuluaga, and alleges that Latinfood is essentially synonymous with Mr. Zuluaga. Indeed, Mr. Zuluaga has personally controlled and/or directed Latinfood’s wrongful acts at the center of Plaintiff’s claims, including creating Latinfood, and personally promoting it as an importer of Colombian products (Compl. ¶¶ 5, 31, 34) and masterminding Latinfood’s misleading marketing strategy (id. ¶¶ 3-5, 7, 41, 53, 54, 65). Furthermore, Mr. Zuluaga controlled the fraudulent registration process for the ZENÚ mark. Mr. Zuluaga first filed the application to register the ZENÚ mark knowingly supported by false attestations not for Latinfood, but for another company he owned. (Compl. ¶¶ 37, 37 n.2, 42-46.) In the application, Mr. Zuluaga submitted specimens of Plaintiff’s products and swore that his other company was entitled to use the ZENÚ mark in the United States even though Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 24 of 26 PageID: 245 - 20 - Plaintiff’s ZENÚ-branded products had become well-known in the United States. (Id. ¶¶ 43- 46). Mr. Zuluaga then purported to assign the trademark rights to Latinfood with a nunc pro tunc assignment. (See id ¶ 37 n.2.) All of this activity indicates that the fraudulent ZENÚ registration at the heart of Plaintiff’s action has remained within Mr. Zuluaga’s personal control at all times, regardless of its purported corporate owner. Indeed, the documents annexed to Defendants’ motion to dismiss further support Plaintiff’s contention.7 When there is such close control of a company, and when a corporate officer or director personally controls the infringing acts of his or her company, the corporate form cannot be used as a shield to protect the principal wrongdoers from liability. Donsco, 587 F.2d at 606; Sunset Fin. Res., Inc. v. Redevelopment Grp., Nos. 05-2914 & 05-2915, 2006 WL 3675384, at *4 (D.N.J. Dec. 12, 2006). Plaintiff specifically alleges in its Complaint that each of Latinfood’s wrongful acts were done at Mr. Zuluaga’s direction (see, e.g., Compl. ¶¶ 31, 34, 41, 43-47, 53, 65), and such allegations are sufficient to survive a motion to dismiss. See Sunset Fin. 2006 WL 3675384 at *5 (motion to dismiss denied where complaint contained allegations that misdeeds were conducted “by and through” principal); see also Donsco, 587 F.2d at 606 (corporate officer found liable where plaintiff alleged and demonstrated that the principal “authorized and approved” the wrongful acts). Accordingly, Plaintiff has properly asserted claims against Mr. Zuluaga and Defendants’ motion to dismiss him from suit should be denied. 7 Defendants elaborate on the registration and transfer of the ZENÚ registration in their motion to dismiss. (See 5-6). Initially, Mr. Zuluaga filed the application to register the ZENÚ mark, purporting to act in his capacity as principal of HWZ Distributors, Inc. (“HWZ”) (see Zuluaga Decl. Ex. A). Then, Mr. Zuluaga, acting pro se on behalf of both entities involved, purported to assign the registration from HWZ to Zenu Products, Inc., a non-existing company (see Ingber Decl. Ex. A at 10-11, ECF No. 14-2). This improper assignment was then remediated by the nunc pro tunc assignment to Latinfood. In sum, for a period of time, the ZENÚ registration was essentially held by Mr. Zuluaga individually because the purported corporate owner never existed or had ceased to exist. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 25 of 26 PageID: 246 - 21 - CONCLUSION For the foregoing reasons, Defendants’ motion to dismiss should be denied in its entirety, along with such other and further relief as the Court deems just and proper. Dated: New York, New York REED SMITH LLP December 5, 2016 By: /s/ Sarah Levitan Peter D. Raymond, Esq. (admitted pro hac) Sarah Levitan, Esq. 599 Lexington Avenue New York, New York 10022 Tel: (212) 521-5400 Fax: (212) 521-5450 Tracy Zurzolo Quinn, Esq. Princeton Forrestal Village 136 Main Street, Suite 250 Princeton, NJ 08540 Tel: (609) 987-0050 Fax: (609) 951-0824 Attorneys for Plaintiff Industria de Alimentos Zenú S.A.S. Case 2:16-cv-06576-KM-MAH Document 15 Filed 12/05/16 Page 26 of 26 PageID: 247 UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY INDUSTRIA DE ALIMENTOS ZENÚ S.A.S. Plaintiff, v. LATINFOOD U.S. CORP. d/b/a ZENÚ PRODUCTS CO. and WILSON ZULUAGA, Defendants. Civil Action No. 2:16-cv-06576-KM-MAH CERTIFICATION OF SERVICE I HEREBY CERTIFY that on this 5th day of December 2016, I caused copies of Plaintiff Industria de Alimentos Zenú S.A.S.’ Memorandum of Law in Opposition to Defendants’ Motion to Dismiss Plaintiff’s Complaint and this Certification of Service to be served to all counsel of record via ECF. Reed Smith LLP By: /s/ Sarah Levitan Sarah Levitan, Esq. 599 Lexington Avenue New York, New York 10022 Tel: (212) 521-5400 Fax: (212) 521-5450 Dated: December 5, 2016 Case 2:16-cv-06576-KM-MAH Document 15-1 Filed 12/05/16 Page 1 of 1 PageID: 248