Kwikspace Guam v. Reaction - Complaint

I
D'STR,CTCOURT^FGUAM
R. Marsil Johnson, GBA No. 13009

BLAIR STERLING JOHNSON & MARTINEZ. P.C.
2
3
mv08am
238 Archbishop Flores St. Ste. 1008

Hagatna. Guam, 96910
PM671) 477-7857
P. (671)472-4290
CLERK OF COURT
lmarsjohnson^ bsjmlavv.com
4
Philip P. Mann, WSBA No: 28860 (Pro Hue Vice Forthcoming)

MANN LAW GROUP
6
7
1218 Third Avenue. Suite 1809
Seattle, Washington 98101

Ph. (206) 436-0900
F. (866)341-5140
phil@mannlawiiroup.com
Attorneysfor PlaintiffKwikSPACE Guam, Inc.
10
IN THE DISTRICT COURT OF GUAM

11
12
KWIKSPACE GUAM, INC.
Cause No.
16-00 0 79
Plaintiff,
13
COMPLAINT
v.
14
15
DEMAND FOR JURY TRIAL
REACTION CO.
Defendant.
16
17
Plaintiff KwikSPACE Guam, Inc.
("KwikSPACE") and as for its complaint
18
against complains of Defendant Reaction Co. ("Reaction") alleges as follows:

19
NATURE OF LAWSUIT
20
1.
This is a claim for patent infringement arising under the patent laws of the United
21
States, Title 35 of the United States Code.

22
2.
This is also a claim for trade dress infringement and dilution, injury to business
23
reputation, unfair competition, and false designation of origin arising under the Trademark
24
Act of 1946, 15 U.S.C. 1051 etseq, (2004)("Lanham Act").

25
3.
Reaction is making, using, offering-for-sale, importing, renting, and/or offering-
26
for-renl various modular structures made from cargo containers which infringe
27
COMPLAINT - 1
Case 1:16-cv-00079 Document 1 Filed 11/08/16 Page 1 of 12
KwikSPACE's various forms of intellectual property, misleading consumers, and are

2
interfering with KwikSPACE's business practices.
THE PARTIES
4.
KwikSPACE is engaged in the business of developing, manufacturing and selling, and
renting-out modular, internationally-standardized ("ISO") buildings.
5.
principal place of business at Bldg. 17-3311 Corsair Rd. Tiyan Barrigada, Guam 96921.
Upon information and belief, Reaction is engaged in the business of making, using,
10
11
Plaintiff KwikSPACE is a Guam Corporation headquartered in Piti, Guam.
Upon information and belief, Defendant Reaction is a Guam corporation with a
importing, distributing, selling, and offering-for-sale and rental modular ISO buildings.
6.
Upon information and belief, Reaction transacts business and has provided to
12
customers in this judicial district and throughout the territory of Guam modular ISO
13
buildings.
14
JURISDICTION AND VENUE
15
7.
16
States Code. This Court's jurisdiction over this action is proper under the above statute
17
under 35 U.S.C. 271 el seq. and 15 U.S.C. 1125(a). This Court has supplemental
IS
jurisdiction over the related state claims pursuant to 38 U.S.C. 1367.
19
8.
This action arises under the patent laws of the United States, Title 25 of the United
Venue is proper under 28 U.S.C. 1391(b) and (c). Defendant has purposefully
20
availed itself of the privilege of transacting extensive business in the territory of Guam.
21
This Court has exclusive jurisdiction over the subject matter of the Complaint under 28
22
U.S.C. 1338(a) and (b).
23
9.
24
Personal Jurisdiction over the Defendant is proper in this Court. Venue in this
judicial district is proper under 28 U.S.C. 1391(b), (c) as well as 1400(b).
25
26
27
COMPLAINT - 2
BACKGROUND OF THE CONTROVERSY

2
10.
KwikSPACE has offered a range of industrial services to customers in Guam and
Micronesia since 1994. Among other services, KwikSPACE makes, sells, and rents-out
modular ISO buildings to be used in a variety of applications.
11.
Recognizing that the Pacific Islands receive a high number of shipping containers
and that wind-resistant structures are essential yet costly, KwikSPACE set out to develop
a way to convert these containers into affordable, customizable structures. While some
customers were satisfied with only using one converted shipping container for certain uses,
many others felt the need to have additional space, as well as the need for the structures to
10
II
withstand harsh conditions.
12.
Recognizing this long-felt need, KwikSPACE's vice president Mr. Peter Gill III and
12
president Mr. Peter Gill ("the Gills") set out to develop a safe and effective means for
13
attaching cargo containers lengthwise and outfitting the resulting "double-wide" structure
14
into a variety of formats. Eventually, the Gills developed a means of fastening the cargo
15
containers that also maintained their structural capacity to withstand most typhoons and
16
earthquakes.
17
18
19
13.
To protect his inventions and designs, and develop a business, the Gills set out
obtain several United States patents.

14.
KwikSPACE is the owner by assignment of U.S. Design Patent No. D6803047
20
("the '047 patent"), which issued May 21, 2013 and is attached to this Complaint as
21
Exhibit A. Representative Figures 1 and 2 of the '047 patent are excerpted and rotated
22
below:
, '-'.:.
23
24
25
26
27
COMPLAINT - 3
15.
KwikSPACE is the owner by assignment of U.S. Design Patent No. D727531 ("the
'531 patent"), which issued on April 21, 2015 and is attached to this Complaint as Exhibit
B. Representative Figures 1 and 2 of the '531 patent is excerpted and rotated below:
4
8
FIG.2
9
10
FIG, I
16.
To further distinguish itself from competitors, since 1995, KwikSPACE has been
11
using a distinctive beige/cream color scheme on all o\' its wind-rated ISO modular
12
buildings. This unique and non-functional color identifies the origin of KwikSPACE's
13
products to its consumers. Demonstrative photographs of KwikSPACE's distinctive and
14
recognizable color scheme are excerpted below:
15
16
17
18
19
20
21
17.
At least as early as August 2014, KwikSPACE began to publicly identify its
22
intellectual property protection in news publications such as the Marianas Variety
23
newspaper, as well as the Guam Contractor's Association's Construction News Bulletin.
24
True and accurate copies of these articles are attached to this Complaint as Exhibit C. A
25
demonstrative advertisementfront the September 2015 issue of the Bulletin (Vol. 56, Issue
26
9) is reproduced below:
27
COMPLAINT - 4
KwikSPACE
Engineered ISO Solutions"
2
Intellectual Property Notice
Ther'lnwmijU.S. Patents applyto SwikSW.
3
4
; .ilngbut not Umltrato:
U.S. Pal. Nn 0681.047
U.S. Pel. No. 9.068.170
US. rat. No. 8.8J9.57*
US. >>at N
,769.891
U.S. Pat. No. 0727.531
US. P. No. 9,00,71*
US
64Q^9
jtN
Ad< ,nlt-
i ptndlng Inth US. and elsrt>tra.
5
6
7
8
18.
At least as early as 2015, Reaction has been making, using, selling, renting-out,
offering-for-sale, and distributing in commerce wind-resistant ISO modular buildings
10
bearing a cream color scheme, and exterior design, similar or identical in shade and/or
11
design used by KwikSPACE. Such use of the patented designs and/or cream color scheme
12
on wind-resistant ISO modular building by Reaction is likely to cause confusion as to the
13
source of the wind-resistant ISO modular buildings by falsely suggesting to consumers that
14
wind-resistant ISO modular buildings supplied by Reaction are sourced by KwikSPACE
15
when, in fact, they are not.
16
19.
On or about August 2015, KwikSPACE learned that Reaction had made, sold,
17
offered for sale, rented, offered for rental, and/or used single-wide units ("Accused Single
18
Units") that are substantially similar to the patented design shown in the '531 patent.
19
20.
On or about September 2015, KwikSPACE learned that Reaction had made, sold,
20
offered for sale, rented, offered for rental, and/or used double-wide units ("Accused Double
21
Units") that are substantially similar to the patented design shown in the '047 patent.
22
//
23
24
//
25
26
//
27
COMPLAINT - 5
1
2
21.
A demonstrative side-by-side comparison of KwikSPACE's protected trade dress
is shown below, with Reaction's imitating trade dress shown on the right:
KwikSPACE's Distinctive Trade Dress
Reaction's Imitation
i ii
5
6
40' Double Wide

Office Container
9
10
11
12
22.
A demonstrative chart comparing KwikSPACE's distinctive trade dress with
Reaction's infringing trade dress is attached as Exhibit D.
23.
The products made, used, offered, sold, distributed, and/or rented-out by Reaction
13
are not made, sold, or offered by KwikSPACE. Nor is Reaction associated or connected
14
with KwikSPACE or licensed, authorized, sponsored, endorsed or approved by
15
KwikSPACE in any way.
16
24.
Upon present information and belief, many of the products made, used, offered,
17
sold, distributed, and/or rented-out by Reaction do not have adequate footing to withstand
18
strong typhoon winds, thereby endangering the users of these products and risking millions
19
of dollars in damage.
20
25.
On or about October 6, 2015 Defendant Reaction was notified via certified letter
21
that its double unit and single unit wind resistant modular ISO buildings infringe the '047
22
patent and the '531 patent, respectively. In that letter, KwikSPACE demanded that Reaction
23
cease and desist the use, sale, rental, and manufacture of its wind-resistant modular ISO
24
25
buildings. A true and accurate copy of that letter is attached to this Complaint as Exhibit
E.
26
27
COMPLAINT-6
26.
Instances of actual confusion have already occurred and are likely to continue
occurring unless use by Reaction of KwikSPACE's distinctive cream color scheme is
enjoined by this Court.
27.
On or about December 7, 2015 KwikSPACE received a call from a point of contact
at the United Slates Marine Corps concerning a container unit that had a defective door
knob and defective air conditioning unit. Upon prompt inspection, KwikSPACE learned
that the unit was not KwikSPACE property and that it most likely belonged to Reaction.
A true and accurate redacted copy of KwikSPACE's email correspondence with a
representative from the United States Air Force regarding this event is attached as Exhibit
10
F.
11
28.
12
working at Hangar 5 at Anderson Air Force Base ("AAFB") that one of the AAFB's cream-
13
colored portable cargo units was leaking fuel from the generator. A KwikSPACE
14
representative arrived at Hangar Five only to discover that the unit in question belonged to
On or about late February 2016, KwikSPACE was notified by an individual
15 Reaction - not KwikSPACE.

16
17
29.
On or about March 1, 2016, a KwikSPACE representative photographed the
defective units in Hangar 5 in question as shown below:
18
19
20
21
22
23
24
25
26
27
COMPLAINT-7
KwikSPACE
- J.
4
5
6
7
30.
Police Department that a confusingly similar, cream-colored portable cargo unit was
10
dangerously close to striking a traffic light during transit. Upon information and belief, this
11
unit actually belonged to, and/or was managed by, Reaction.
12
31.
13
for policeescort services several days in advanceof making any delivery. This has hindered
14
KwikSPACE's ability to efficiently conduct its operations to this day.
On or about August or September 2016, KwikSPACE was informed by the Guam
As a result of this careless transport by Reaction, KwikSPACE must now arrange
15
32.
16
infringement of the '047 patent and the '531 patent. In this letter, KwikSPACEalso notified
17
Reaction that Reaction was unlawfully using KwikSPACE's protected trade dress. Namely,
18
Reaction was notified that it must cease and desist its use of KwikSPACE!s source-
19
identifying cream color scheme, and confusingly similar patented designs, on its modular
20
ISO buildings. A true and accurate copy of this correspondence is attached as Exhibit G.
21
22
33.
On or about September 2, 2016 KwikSPACE again notified Reaction of its
As of the date of this filing, Reaction has not provided any substantive response to
either the October 6, 2015 letter or the September 2, 2016 letter.
23
COUNT I
24
25
26
INFRINGEMENT OF THE 047 PATENT UNDER 35 U.S.C. 271 et sea
34.
KwikSPACE hereby repeats and incorporates by reference Paragraphs 1-32 above
as if fully set forth herein.
27
COMPLAINT - 8
35.
A representative comparison chart demonstrating the substantial similarity
between the patented design the '047 patent and Reaction's double-wide unit ("Accused
Double Units") is attached as Exhibit H and excerpted below:
4
5
'-i N\
V,
6
7
8
36.
Reaction's infringement of the '047 patent has injured and will continue to injure
10
KwikSPACE unless and until the Court enters an injunction prohibiting further
11
infringement and, specifically, enjoining further sale, use or offer for sale of products that
12
are substantially similar to the claimed design of the '047 patent.
13
37.
14
to be willful in that Reaction was placed on actual notice of the '047 patent at least as early
15
as October 15, 2015 but have taken no action to avoid continued infringement of the '047
16
patent.
Upon information and belief, Reaction's infringement of the '047 patent is believed
17
COUNT II
18
19
20
21
INFRINGEMENT OF THE '531 PATENT UNDER 35 U.S.C. $ 271 et sea
38.

//
22
23
//
24
25
//
26
27
COMPLAINT - 9
39.
A representative comparison chart demonstrating the substantial similarity
between the patented design the '531 patent and Reaction's single-wide unit ("Accused
Single Units") is attached as Exhibit I and excerpted below:
5
6
t"
7
8
9
FIG. I
10
11
40.
12
KwikSPACE unless and until the Court enters an injunction prohibiting further
13
infringement and, specifically, enjoining further sale, use or offer for sale products that are
14
substantially similar to the claimed design of the '531 patent.
15
41.
Reaction's infringement of the '531 patent has injured and will continue to injure
Upon information and belief, Reaction's infringement of the '531 patent is believed
16
to be willful in that Reaction was placed on actual notice of its infringement of '531 patent
17
at least as early as October 15, 2015 but have taken no action to avoid continued
18
infringement of the '531 patent.
19
COUNT III
20
False Designation of Origin 15 U.S.C. $ 1125(a)
21
22
23
42.

43.
Reaction's use of confusingly similar imitations of KwikSPACE's beige/cream
24
trade dress is likely to deceive, confuse, and mislead prospective purchasers and purchasers
25
into believing that the cargo containers offered by Reaction originate from KwikSPACE,
26
which they do not. This likelihood of confusion, mistake, and deception engendered by
27
Reaction's misappropriation is causing irreparable harm to the goodwill built by
COMPLAINT- 10
KwikSPACE's trade dress and the reputation for quality that such trade dress embodies.
2
This is harm is particularly damaging with respect to those persons who perceive a defect
or lack of quality in Reaction's products.
44.
Such willful actions on the part of Reaction and/or Reaction are in violation of 15
U.S.C. 1125(a). Unless enjoined by this Court, Reaction's continued use of the cream
color scheme adopted and created by KwikSPACE is likely to confuse the consuming
public as to the source of KwikSPACE and Reaction's respective products and will result
in harm to KwikSPACE.
CLAIMS FOR RELIEF
10
45.
1I
Reaction and against their subsidiaries, affiliates, agents, servants, employees and all
12
persons in active concert or participation with them, granting the following relief:
13
14
15
WHEREFORE, KwikSPACE asks this Court to enter judgment against Defendant
a)
A declaration that Reaction has infringed the patents-in-suit as alleged
above.
b)
That Reaction and its officers, agents, employees, and all those persons
16
acting or attempting to act in active concert or in participation with them or acting
17
on their behalf be immediately, preliminarily and permanently enjoined from
18
further infringement of the patents-in-suit under 35 U.S.C. 283;
19
c)
An award of damages adequate to compensate KwikSPACE for the
20
infringement that has occurred, together with prejudgment interest from the date
21
infringement began;
22
d)
An award of its profits under 35 U.S.C. 289;
23
e)
An award of KwikSPACE's actual damages, including lost profits and/or a
24
reasonable royalty, and increased or enhanced damages as permitted under 35
25
U.S.C. 284;
26
f)
An award of increased damages as permitted under 35 U.S.C. 284;
27
COMPLAINT - I
g)
A declaration that this case is exceptional and an award to KwikSPACE of
its attorneys' fees and costs as may be appropriate and as provided by 35 U.S.C.
285;
h)
That Reaction and its officers, agents, employees, and all those persons
acting or attempting to act in active concert or in participation with them or acting
on their behalf be immediately, preliminarily and permanently enjoined from
further infringement of the patents-in-suit under 15 U.S.C. 1116;
i)
An award of Reaction's profits, KwikSPACE's actual damages it has
sustained, and the costs of the action under 15 U.S.C. 1117(a);
10
j)
Trebled damages pursuant to 15 U.S.C. 1117(b);
11
k)
An award of interest, including prejudgment interest, on all damages; and
12
I)
Such other and further relief as this Court or a jury may deem proper and
13
just
14
JURY DEMAND
15
KwikSPACE demands a trial by jury on all issues presented in this Complaint.
16
Dated this 8th day of November, 2016.
17
Respectfully submitted,
18
19
20
g&
R.MARSIL JOHNSON
BLAIR STERLING & JOHNSON &
21
MARTINEZ
A Professional Corporation
22 238 Archbishop Flores St. Ste. 1008
Hagatna, Guam, 96910
23
Ph.(671)477-7857
F. (671)472-4290
24 rmarsjohnson@bsj mlaw.com
25
JLU
,^,'H1
V^PHULIP P. MANN, WSBA No: 28860'(Pro

Hac Vice Forthcoming)
MANN LAW GROUP
1218 Third Avenue, Suite 1809
Seattle, Washington 98101

Ph. (206) 436-0900
F. (866)341-5140
phil@mannlawgroup.com
Attorneys for PlaintiffKwikSPACE Guam, Inc.
26
27
COMPLAINT- 12
EXHIBIT A
Case 1:16-cv-00079 Document 1-1 Filed 11/08/16 Page 1 of 22
Ill III I! II Nlll IIMIII llll INI

US00D683047S
(12) United States Design Patent oo, Patent No.:

Gill et al.
(54)
(45) Date of Patent:
WIND RESISTANT MODULAR ISO

BUILDING
(71)
Applicants:Peter E. Gill. Tamuning. GU (US);

Peter E. Gill, III. Milwaukee. Wl (US)
(72)
(73)
Inventors: Peter E. Gill. Tannming. GU (US):

Peter E. Gill, III. Milwaukee, Wl (US)
Assignee: KwlkspaceGuam, Inc.. llagatna. GU
(US)
(**)
Term:
(21)
Appl.No.: 29/439,854
(22)
Filed:
LOC(9)Cl
(52)
Dee. 17. 2012
25-03
U.S. CI.
1)25/22
Field of Classification Search
1)25/1 37:
52/79.1.79.4; 135/87,901
See application file for complete search history.

(56)
112012
Kind ol al
Carroll
5279.9
D25/22
1/2003 Bradley
52/79.1
2005/0066589 Al *
3 2005
Bedell el al
52/79.1
2005/026277S Al*
2010.0043308 Al*
12/2005
22010
Allen et al
Koeble
52/79.1
52/79.1
* cited by examiner
PrimaryExaminer Eric Goodman
(74) Attorney, Agent, or Firm Donald .1. Ersler
DESCRIPTION
USPC
(58)
8 2010
1)671.229 S *
2003 0009954 Al*
(57)
CLAIM
The ornamental design for a wind resistant modular ISO
building, as shown and described.
14 Years
(51)
7.765.745 B2 *
US D683,047 S
** May 21, 2013
References Cited
U.S. PATENT DOCUMENTS
1)226.074 S
1/1973 Glisson
1)259.740 S
6/1981
Levin
4.957.323 A
1)390.970 S
*
*
9 1990
2 199S
Johnson
Abrams
1)25 IS
D25 II
296 24.39
1)25 22
6.862.S47 B2*
3 2005 Bigelow
52 79.1
1)621.954 S *
8 2010 Plumbyetal
1)25 33
FIG. 1 is a top perspective view ol'a wind resistant modular

ISO building incorporating our new design:
l'I( i. 2 is a bottom perspective view ofa wind resistant modu

lar ISO building;
FIG. 3 is a front view of a wind resistant modular ISO build
ing:
FIG. 4 is a left side or right side view of a wind resistant
modular ISO building:
FIG. 5 is a top plan view of a wind resistant modular ISO
building: and.
FIG. 6 is a bottom plan view of a wind resistant modular ISO
building.
The broken line showing is included for the purpose of illus
trating portions of the article and forms no part ofthe claimed
design.
1 Claim, 6 Drawing Sheets
U.S. Patent
May 21, 2013
Sheet 1of 6
US D683,047 S
0\ \ t
U.S. Patent
May 21, 2013
Sheet 2of 6
US D683,047 S
U.S. Patent
May 21, 2013
Sheet 3of 6
US D683,047 S
CO
F:
H=H!
II
l= = :
-H
il
Ur.
HI
rJ
II
3h4
-LL=____JJ-
1_J
U.S. Patent
May 21, 2013
Sheet 4 of 6
US D683,047 S
n
=1
M
u
U.S. Patent
May 21, 2013
Sheet 5 of6
US D683,047 S
U.S. Patent
May 21, 2013
Sheet 6 of 6
US D683,047 S
r~"
o
P
Td
I
L_
EXHIBIT B
Ill III IIII11 III I III IIII III

US00D727531S
(12) United States Design Patent (h Patent No.:

Gill et al.
(54)
WIND RESISTANT MODULAR ISO

BUILDING
(71) Applicants:Peter E. Gill, Tamuning, GU (US):

Peter E. GUI, III. New York. NY (US)
(72)
US D727,531 S
(45) Date of Patent:
Inventors: Peter E. Gill. Tamnning. GU (US):

Peter E. Gill, III. New York. NY (US)
(73)
Assignee: Kwikspace Guam, Hagatna. GU (US)
(**)
Term:
(21)
Appl. No.: 29/496,369
(22)
Piled:
3.S45.592
1)259.740
4.342. ISO
D26S.702
RE31.746
** Apr. 21,2015
6 1981
l'alena
levin
8 1982
Gibson el al
4 1983
Todd
1-
11 1984
9 1990
II 1974
S
A
4.957.323 A
D390.970 S
D42I.3II s
D4S9.460 S
1)532.525 S
7.712.265 B2
1)683.047 S
,;
Dimmer etal
Johnson
52 93.2
D25/I1
52/745.2
D25/22
296'9S
2%'24.39
2/1998
Abiams
D25 22
2 2000
52004
Kalka
Gardneretal
D25/22
D25 16
II 2006
Caldwell
1)2522
5 2010
Overmyeretal
5'2013
(iill el al.
52/143
cited by examiner
14 Years
Primary Examiner
Garth Rademaker
Assistant Examiner Samanlha Q I awrence
(74) Attorney. Agent, or Firm Donald J. Ersler
Jul. 11,2014
Related U.S. Application Data
(63) Continuation-in-part of application No. 14/143.057.

filed on Dec.30.2013. which is a continuation-in-part
(57)
CLAIM
The ornamental design for a wind resistant modular ISO
building, as shown and described.
of application No. 13/870.141. filed on Apr. 25. 2013.

DESCRIPTION
now Pat. No. 8.640.396.
(51)
(52)
LOC(10)CI
U.S. CI.
25-03
D25/32: D25/22
FIG. 2 is a front view of the wind resistant modular ISO
(58)
Field of Classification Search
building:
USPC
1)25/1 37:52/79.1.79.4:135/87.901
FIG. 3 is a left side view of the wind resistant modular ISO
FIG, 1 is a top perspective view of a wind resistant modular

ISO building showing our new design:
USPC
See application file for complete search history.
building, the right side view being identical thereto: and.
FIG. 4 is a top plan view of the wind resistant modular ISO

(56)
References Cited
building.
The broken lines shown in the drawings illustrate portions of

the wind resistant modular ISO building that forms no part of
U.S. PATENT DOCUMENTS
3,236,014 A *
2 1966 Edgar
52 270
D221.06S S
7 1971
Yasuhara et al
D25 22
1)226.074 S
1/1973
Glisson
D25 IS
the claimed invention.
1 Claim, 4 Drawing Sheets
U.S. Patent
Apr. 21, 2015
Sheet 1of 4
US D727,531 S
K\\\\\V
0A\\\\\\\\V\
U.S. Patent
Apr. 21, 2015
US D727,531 S
Sheet 2 of 4
!| '
,..
''
;j
;| . I ;
. . .
l i
I
!
1 j
I :
9 i
| :
j
1
1
*-Ns
J
1
5
1
1 -
i
i
! Z.
1
j ...
i
3
:
-
i
1
\
i
"X.
\
1
***t
U.S. Patent
Apr. 21, 2015
Sheet 3of4
US D727,531 S
'E
I ,::
I F
o
fa
U.S. Patent
Apr. 21, 2015
Sheet 4of4
US D727,531 S
EXHIBIT C
8/8/2014
9:57:02AM
Innovations mark Kwikspace structures, company granted third patent

08
HOME
09
2014
OPINION
Headlines:
SPORTS
Negotiations on (ax case bogs down
CNMI NEWS
PACIFIC
SETTINGS
SUBSCRIBE NOW!
SUNDAY VARIETY
SPECIAL
AD RATES
CONTACTS
Thank you for reading the Marianas Variety-Guam Edition, your local and regional newspaper. Kindly note that as of Friday,
August 1, 2014, our web content has moved to a metered system with the sped...read more
Innovations mark Kwikspace structures, company
MORE ARTICLES
granted third patent

FRIDAY, 08 AUG 2014 03:00AM
Innovations mark Kwikspace structures
Ba
BY FRANK WHITMAN | VARIETY NEWS
STAFF
Facebook
Twitter
StumbleUpon
Reddi!
Digg
Linkcdin
Google*
Pinterest
company granted third patent
QC
Friday. 08 Aug 2014 03 00am
While its products may retain the outward

appearance of standard shipping containers,
th...
OVER the past 20 years, Kwikspace Guam has built its business on
GPTAC offering no fee workshops
producing and leasing modular buildings from converted ISO shipping
Wednesday 06 Aug 2014 03.00am
containers While its products may retain the outward appearance of
All workshops are held in the UOG School of

Business and Public Administration and run
standard shipping containers, the company has continually improved the
structures with original techniques and design features that it has been
FHB reports S109 1M net income for first half
able to patent.
of 2014
Wednesday 06 Aug 2014 03 00am
The company secured its first patent - for the design of a wind-resistant
Second quarter net income of S55.9 million

was up 7.7 percent over the comparable
modular ISO building - in May 2013 That was followed on Feb 4 by a
quarte
more comprehensive utility patent for the same type of structure. The
units, comprising two containers joined side by side are designed to

withstand v\inds of 170 to 180 mph, according to Peter Gill, president and
owner of Kwikspace
Peter Gill, president and owner

of Kwikspace, says that for the
past 70 years, Kv/ikspace Guam
They can also be moved without disturbing contents
or structure finishing
has built its business on
producing and teasing modular
GTA introduces new voicemail services,

visual voicemail
Tuesday, 05 Aug 2014 03.00am
Effective today, customers can experience an

innovative, practical, and simple way to ma...
buildings from converted ISO
"The concept is that you're doing highly mobile, highly durable, highly
shipping containers. Photo by
finished products that can be rapidly deployed in any condition and
Frank Whitman / Variety
environment," Gill said "How do you build a unit so that you can liftit, twist
it, transport it, ground it and the (interior) walls are made out of drywall and the drywall doesn't crack'' That's
what this patent's about" The structures have proven to be typhoon insurable, he said
Black Construction wins Diego Garcia project

Tuesday 05 Aug 2014 03 00am
Work is expected to be completed by

November 2015 Fiscal 2014 Navy operation
and mainte...
Hawaiian Rock awarded S90M DOD contract
Monday 04 Aug 2014 03 00am
With the utility patent, the company was granted 18 claims of 26 it submitted. "It covers how the walls are
installed, how the doors are built, how the windows are built, how the floor structure is designed, how the
The work to be performed provides for the

construction, alteration, repair and/or
mainte...
ceiling's put in," Gill said. 'All those things are proprietary and contribute to this type of a product"
Guam PTAC offering no fee workshop
Wednesday. 30 Jul 2014 03 00am
On July 8, the US Patent Office granted Kwikspace Guam its third and most recent patent It is for a
All workshops are held in the UOG School of
structural footing that expands the number and nature of places the structure can be installed "It's got a ball
joint in here; it pivots back and forth," said Gill "When we did it (the old) way,-the property would have to be
Thursday
very level . So we came up with this ball joint concept Nowit doesn't have to be level; nothing has to be
level You can just accommodate it anyway you want
Business and Public Administration.
Bank of Flawaii releases Q2 financial results
Net income for the second quarter of 2014
Kwikspace buildings are leased for a variety of commercial purposes includingfield offices, kitchens,
was S41 5 million, an increase of S2.9

million..
restrooms andindoor warehouse office space "There are a lot of little companies that need extra space," he
said He has not ventured into the residential market, and has no plans to do so.
Guam PTAC offering no-fee workshops

Thursday. 24 Jul 2014 03 00am
All workshops are held in Room 129 of the
The company has four or five more patent applications "in the pipeline." Gill said While most are for
UOG School of Business and Public
features to enhance the container-based structures, one of the applications, dubbed ISO Sun, addresses
Administrati..
renev\able energy -it is for a frame holding photovoltaic panels that can be mounted on an ISO container
Triple J, Hagens announce partnership

Friday 18 Jul 2014 03 00am
"You can lift it with a heavy-duty forklift and put it on top of a container." he said. "It'sgot a plug system that
plugs into a main feeder line and it generates solar power The idea is to use the space on top of your
container to generate additional revenue." The angle of the panels can be crank-adjusted to take optimum
advantage of the sun's position. The frame does not require special permitting because Itis "a piece of
Solahart is a world Leader in Solar Hot Water
Systems and manufacturing since 1905,

intr.
Guam Premium Chocolate Made in Guam'
equipment out in the field."
enters market
The innovations v\ere originated by Gill in response to problems he faced in his business "You just have to
be aware that there's a problem and ifthere's a problem it shouldn't remain that way," he said. The first step
experience...
Friday 18 Jul 2014 03 00am
Through Suncare Distributors. Patterson
Enterprises has more than 20 years of
http://vwwv.mvg uam.corn/lccal/business/36337-inno\ations-mark-kvvikspace-structures-company^granted-third-patent.html#.U-\^mPldU\^
1/3
8/8/2014
Innovations markKwikspace structures, company granted third patent
is to look for an existing solution, and if none exists, then coming up with one
GPTAC no fee workshops

The details of the innovation design and the patent process are the purview of Gill's son, Peter Gill III,
development and investment associate for Kwikspace, who is an engineer and has offices in Milwaukee and
Administrati.
Washington, DC "(Securing the patents) is all the work of my son," Gill said "He does it all."
Chamber seminar to focus on construction
contracts
In its 20 years,Kwikspace has diversified into trucking, generator and forklift rental, and the sale of safety
Wednesday 09 Jul 2014 03 00am
equipment The different business lines cater to the same customers, Gill said "We have good relations with
The event will be held on Friday, July 11 at
(our customers); we know who they are," he said. 'So we asked, 'What service could we offer to them that
8 30 am in the Fort San Jose Ballroom
(me.
they could need?"
BankPacific turns 60
Tuesday. 08 Jul 2014 03 00am
The company also has a couple of employees devoted to monitoring and responding to federal government
It was 60 years ago on this day when
solicitations, particularly for safety equipment "We win one or two (federal contracts) a month," he said "We
BankPacific, then known as Guam Savings
do a good business on eBay and Amazon, too Simple things - we sold shackles to New Jersey yesterday "
and Loan As
Free SBA training workshop
As the company moves forward, it will continue to innovate. "Our logo says, '20 years of thinking inside the
Monday 07 Jul 2014 03 00am
box." Gill said "But really, we've spent 20 years thinking completely outside the box- but about the box."
Buy it or build it with SBA 504 Loan Program
SBA's financing for commercial property,.

Please review the User Content Posting Rules
BOG officers attend fraud risk management
0 Comments
(0 Login
Marianas Variety Guam Edition
workshop
Thursday, 03 Jul 2014 03 30am
Sort by Best
Share OJ
Subjects covered are fraud risk management
Favorite -fa
and prevention The intensive program is

bem..
Start the discussion...
GPTAC offering no fee workshops

Thursday. 03 Jul 2014 03 30am
All workshops are held in room 129 of the

Administrati..
FHB report Guam economy stable, resilient.

promising
Be the first to comment
The long-awaited military realignment, which

would transfer thousands of troops and
School uniforms not mandatory
Guam PTAC offering no fee workshops
When in doubt, boil the water

I com mi
Yigo76 Totally agree!
depe...
WHATS THIS'/
ALSO ON MARIANAS VARIETY GUAM EDITION
Tuesday, 01 Jul 2014 03"00am
All workshops are held in room 129 of the
Mathew This shows that Gov Guam is more

Administrati...
independent-minded at arriving at a certain

conclusion, in this case, the safety of tap ...
Guam wins Most Romantic Tour award
GEC OKs pot referendum
'Apuron had no knowledge of National
i comment a day ago
Museum closure'
Friday, 27 Jun 2014 03 00am
Representatives from Guam Visitors Bureau

accepted the award at a presentation
Yigo76 If you thought people drive slow on

the back road now...
ceremony ..,
TimRohi I know NOTHING. NOTHING,
Guam PTAC offers no-fee workshops
NOTHING!
Tuesday 24 Jun 2014 03 00am

Administrati.
Chamber to host 10th Annual Small Business
Expo and Outreach Event

Monday, 23 Jun 2014 03 00am
Small business owners, managers, and

companies interested in making connections
with ind...
Docomo Pacific is an Apple iPhone

authorized reseller
Friday 20 Jun 2014 03 00am

For more information on the iPhone visit
wvwv.apple.com/iphone . .
Sgro awarded Top Women in Grocery
recognition
Tuesday. 17 Jun 2014 03.00am
The Progressive Grocer Top Women in

Grocery awards program recognizes the
leading role w
Chamber to host How to work with a prime

contractor' series
Monday, 16 Jun 2014 03:30am

"Flow to Work with a Prime Contractor" will be
presented by dck pacific guam LLC, DZS...
http://vwvvV.m\uam.conVlocal/business/36337-inno
2/3
% Story tips, rjhtfo submissions
business
rl orkJtti?SubmrimaiefWto
8 businvmvgy4ma>m
MARIANAS VARIETY GUAM EDITION
Pater CM.prwwtent and o*im * Kwthapac*. uys thai to. mo past 20 years. KwikspaceGuam has bu te business
*pcjcirândtaiaa^moduJaibuM^fcOT
rwNMw.yMi.
Innovations mark Kwikspace structures

11 permitting because it is
quipmeoj out in the
\Companygranted third patent
By Frank Whitman
e<i*omvguarooWf.
VtewtyNe** Staff
in," Oi
things
Tito imiovatiixts were origionseioprohWs business.

re thai
problem it shouldn't remain thai

brr*
...u the mmtl.
>lutkir, jrhi
Willi. . .
of the iiinovariwt
and the patent proct
hires *tth
opment and
UrJ .
jukec
it
and
,.
',nv
Variety
!
> x has
i
.-- teia
Md the
KM
The
v.i .-.-
I.'k
. IV
>
i id
oaa Mith X^
N
..-0. *<i
K> *$
cvvf.
'"- couple
ISO -.
.:.-.
. . ,v.w
-u
.,! V?
...
-v.
Î'lajaiiua
-:j|
. "^
W*fi?
IB-HIHJ
<ui engineer ailU
Milwaukee and
D.C. "(Securing
a\\ the work ofmy
i "He does it all."
&
x
'ersltled
/ears,Kw\kspace has
^trucking, genera.
^* equipnient
**&, and The
the
SSVmescerto
^TSaffsaid***** vvX"S with
:" ^sad 'wOW who
uvv'^' <ur ;"-<>upie
i*n
V
ONSIRUCH
JLUETIN
Build Op Insight
VOL 56 ISSUE 9 SEFTEMER 2015 GUAM CONTRACTORS' ASS


www.roaciionco.com
Birrlgada, GU 96921
BWfl. 17-3311 COrtalr tlyn
Efiai rgiatrargftajiat
(671)687-4896
I (671) 477-1016
Randy a Sagar, PrHd*nt
Short & LongTern Leasinf

150 mph-170 mph Wild Load
Sales & Rentals
Portable Officii & Storage Containers

Teflsten FabricStructures (TFSShelters)
n't -''-
www.rsactionco.com
Intellectual Property Notice
U.S. Pat. Ml
HOIK
tonal
U.S
pending in the U.S. and elsewhere.
U.S. Pat. HM.t-:
769,893
U.S
U.S. Pat No D583.047
The f;
;>;ii.
:". im<te<j to:
KwikSPACE
-.;
r u u CoHxt I 31 Kul-n e-miil. roor,iij-c i u
Tl:64'J.^;ii-.-fi
MiftM M rKfc
18ft B*jrt fit SacSon | yi'wlm B f***f *4arvien Guam %93^
(.'R^taaamilttad
Engineered ISO Solutions
iM^^litl
M-,ltli:l**""**'
-MUtt ig- fsrnaWw.ilniniriWwijiTt.-
Mta*miiwiaiVMWi
__, f^n IN kH wmtmtm M
Minn
- îi^lH
WWWL
dctirementji jJiiMijius for
EXHIBIT D
Reaction's Imitation
KwikSPACE's Distinctive Trade Dress
II
-mm"-"
40' Double Wide

Office Container
EXHIBIT E
WILLIAM J. BLAIR
LAW
OFFICES
TELEPHONE:
thomas c. sterling
Blair Sterling Johnson & Martinez
RICHARD L. JOHNSON
A PROFESS,ONAL CORPORATION
MARTIN F. DEINHART
23Q ARCHBISHOP FLORES ST STE I OOS
R MARc:ii inHNÔN
R. MARSIL JOHNSON
HAgAtNA, GUAM 969 10-5205
JEHAN'AD G. MARTINEZ
<e7i> 477-7.357
FACSIMtLE-
J-AC5IMILE.
(67 1 ) 472-4290
WRITER'S E-MAIL:
rmarsjohnson@kbsjlaw.com
CHRISTOPHER R. ODOCA
October 6, 2015
VIA CERTIFIED
MAIL
&
EMAIL
RETURN RECEIPT REQUESTED

ARTICLE #7011 2970 0004 2939 5588
Randy G. Sager
President
Reaction
Co.
P.O.
22917
Box
GMF
Barrigada, GU 96921
rgsager@ite.net
RE:
CEASE
Dear Mr.
AND
DESIST
Sager:
This
firm
represents
KwikSPACE
Guam,
Inc.
(hereafter
"KwikSPACE")
in
connection
with
Intellectual
Property
matters,
including the enforcement of
its
patents and
trademarks.
It has come to our attention that you have been
offering for sale and rental, single unit and double unit
wind resistant modular ISO buildings.
The wind resistant
modular ISO buildings you offer for sale and rental infringe
patent
nos.
D683047
and
D727531
(hereafter
"KwikSPACE
Patents"), which are owned by KwikSPACE.
Your products
infringe the KwikSPACE Patents, because the appearance of
your wind resistant modular ISO buildings are confusingly
similar to the KwikSPACE Patents.
Copies of the KwikSPACE
Patents
are
included with this
letter.
Consequently, we demand that you cease the use, sale,

rental and manufacture of your wind resistant modular ISO
buildings and make an accounting for all of them that you
have sold or have manufactured.
KwikSPACE would like to see
an amiable end to this situation.

However, if we do not hear
back from you within 7 business days, we will have no choice
law off.ces BLAIR STERLING JOHNSON & MARTINEZ,
To
Mr. Randy G. Sager
PROFESSIONAL
Date
CORPORATION
October 6,
2015
Page 2
but to pursue further legal action to enforce the KwikSPACE
Patents against you.
We look forward to your prompt response.
Very truly yours,

BLAIR STERLING
JOHNSON
&
MARTINEZ
A Professional Corporation
R.
Enclosure(s):
MARSIL
JOHNSON
As noted.
U70V4341Q-1S
G:\LTR\RMJ\032-R G SAGER RE CEASE AND DESIST.DCCX
EXHIBIT F
Fwd: Fwd: Confusion with regard to Reaction Co....
Subject: Fwd: Fwd: Confusion with regard to Reaction Co. containers at Center
Ramp
From: "Philip P. Mann" <phil@mannlawgroup.com>
Date: 10/18/2016 11:26 AM
To: "tim@mannlawgroup.com" <tim@mannlawgroup.com>
- Forwarded Message
Subject:Fwd: Confusion with regard to Reaction Co. containers at Center Ramp
Date:Wed, 21 Sep 2016 11:07:56 +1000
From:KwikSPACE <petereq3(a>kwikspace.com>
To:Phil Mann <phil(5)mannlawqroup.com>
FYI
Peter E. Gill,
III
Vice President
KwikSPACE Guam Inc. | KwikSafety

Office: 671-479-5925/35/45
Fax:
671-479-0900
P.O. Box 3278 - Hagatna, Guam 96932

Email: petereq3@kwikspace.com
[image: Description: signature 2014]
Întellectual Property Notice Under 35 U.S.C. 287(a):* The following U.S

Patents apply to KwikSPACE, including but not limited to: U.S. Pat.
NO.D683047, U.S. Pat. No.9068370, U.S. Pat. No.8640396, U.S. Pat.
No.8769893, U.S. Pat. NO.D727531, U.S. Pat. No.9003716, U.S. Pat.
No.8839574. Additional patents pending in the U.S and elsewhere.

Forwarded message
From: KwikSPACE Guam, Inc. <kwikspace@telequam.net>
Date: Wed, Dec 9, 2015 at 2:57 PM
Subje^^Cmrfusionwith regard to Reaction Co. containers at Center Ramp

To: I
Hi
1 of 2
H@us.af.mil
2nd Lt
10/18/2016 02:44 PM
Fwd: Fwd: Confusion with regard to Reaction Co....
KwikSPACE received a call from the Marines during the early hours of
December 07, 2015.
As usual, we immediately dispatched a team to address the reported broken

door knob and non-working air conditioner (which we were informed had not
worked in 5 days).
When our crew arrived at the site they reported that the office containers
were not KwikSPACE property.
We suspect that the two offices are in fact the property of Reaction Co. We
understand the confusion; as Reaction Co. has chosen to mimic their product
both in style, design and color.
It took some effort to convince the end users that these units had nothing
to do with KwikSPACE.
KwikSPACE spent six man hours on this call at a regular billing rate of
$65.00 per hour ($65.00 x 6 = $390.00).
We are not requesting payment, but rather a procedure to be developed to

distinguish between KwikSPACE Guam, Inc. and Reaction Co. offices currently
under contract.
Thank you for your time and attention to this annoying matter.
Best Regards,
[image: Mr]
Întellectual Property Notice Under 35 U.S.C. 287(a):* The following U.S.

Patents apply to KwikSPACE, including but not limited to: U.S. Pat.
NO.D683047, U.S. Pat. No.9068370, U.S. Pat. No.8640396, U.S. Pat.
No.8769893, U.S. Pat. No.D727531, U.S. Pat. No.9003716, U.S. Pat.
No.8839574. Additional patents pending in the U.S and elsewhere.
2 of 2
10/18/2016 02:44 PM
EXHIBIT G
MannlawgrouP
1218 Third Ave .Suite 1809
Seattle. WA98101
September 2, 2016
[TEL] 206-436-0900
[WEB] v/v/wmannlsvvgroupcom
Writer's Direct: 206-855-8839
Mr. Randy G. Sager
Via Email
Reaction Co.
Bldg. 17-3311 Corsair Rd. Tiyan

Barrigada, Guam 96921
rgsager@ite.net
Re: KwikSPACE Guam Inc. - Reaction Co. Infringement of KwikSPACE Patents

Dear Mr. Sager:
We are patent infringement litigation counsel to KwikSPACE Guam Inc. and are charged with
enforcing KwickSPACE's various patents and other intellectual property rights.
On October 6, 2015, you were, via a certified letter from KwikSPACE's general counsel, Blair,
Sterling, Johnson and Martinez, formally placed on notice that your single unit and double unit
wind resistant modular ISO buildings infringe KwikSPACE's United States Design Patents Nos.
D6803047 and D727531. Based on our review, it appears that these products, and in particular
the double unit ISO buildings, not only infringe the '047 and '531 Design Patents but infringe one
or more claims of KwikSPACE's United States Patents No. 8,640,396 and No. 9,003,716 as well.
Copies of these patents are attached, as are copies of additional U.S. Patents owned by
KwikSPACE.
In addition to infringing the KwikSPACE patents, you have also been using a paint scheme on
your ISO buildings that is virtually identical to the cream color paint that has been used by
KwikSPACE for decades and that has now developed secondary meaning sufficient to serve as
KwikSPACE's exclusive trade dress. Your use of such a paint scheme is not only likely to cause
confusion as to the source of your products, it has already resulted in instances of actual
confusion resulting in harm to KwikSPACE's business and its reputation.
In view of the foregoing, we hereby demand that Reaction Co. immediately cease and desist
from any further infringement of the '047 and '531 Design Patents, the '396 and 716 Utility
Patents and refrain from using a paint scheme likely to cause confusion with KwikSPACE and its
products. In addition, we will require an accounting of all sales made of the infringing products,
including an accounting of all profits realized by Reaction Co. through sales of the infringing
products.
PATENT, TECHNOLOGY AND INTELLECTUAL PROPERTY LITIGATION
Mr. Randy G. Sager

September 2, 2016
Page 2
We further demand your written assurance that Reaction Co. will accede to these demands within
seven business days following your receipt of this letter. Any failure to do so may result in
immediate formal legal action against you without further notice.
Very trul
rs,
MAN
GROUP
PPM/ast

Kwikspace Guam v. Reaction - Complaint

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Kwikspace Guam v. Reaction - Complaint

Uploaded by

Copyright:

Available Formats

I

R. Marsil Johnson, GBA No. 13009

238 Archbishop Flores St. Ste. 1008

Philip P. Mann, WSBA No: 28860 (Pro Hue Vice Forthcoming)

1218 Third Avenue. Suite 1809

Seattle, Washington 98101

Attorneysfor PlaintiffKwikSPACE Guam, Inc.

IN THE DISTRICT COURT OF GUAM

KWIKSPACE GUAM, INC.

DEMAND FOR JURY TRIAL

Plaintiff KwikSPACE Guam, Inc.

("KwikSPACE") and as for its complaint

against complains of Defendant Reaction Co. ("Reaction") alleges as follows:

States, Title 35 of the United States Code.

Act of 1946, 15 U.S.C. 1051 etseq, (2004)("Lanham Act").

Reaction is making, using, offering-for-sale, importing, renting, and/or offering-

Case 1:16-cv-00079 Document 1 Filed 11/08/16 Page 1 of 12

KwikSPACE's various forms of intellectual property, misleading consumers, and are

interfering with KwikSPACE's business practices.

KwikSPACE is engaged in the business of developing, manufacturing and selling, and

renting-out modular, internationally-standardized ("ISO") buildings.

Plaintiff KwikSPACE is a Guam Corporation headquartered in Piti, Guam.

Upon information and belief, Defendant Reaction is a Guam corporation with a

JURISDICTION AND VENUE

jurisdiction over the related state claims pursuant to 38 U.S.C. 1367.

U.S.C. 1338(a) and (b).

judicial district is proper under 28 U.S.C. 1391(b), (c) as well as 1400(b).

Case 1:16-cv-00079 Document 1 Filed 11/08/16 Page 2 of 12

BACKGROUND OF THE CONTROVERSY

KwikSPACE has offered a range of industrial services to customers in Guam and

modular ISO buildings to be used in a variety of applications.

withstand harsh conditions.

obtain several United States patents.

KwikSPACE is the owner by assignment of U.S. Design Patent No. D6803047

Case 1:16-cv-00079 Document 1 Filed 11/08/16 Page 3 of 12

products to its consumers. Demonstrative photographs of KwikSPACE's distinctive and

recognizable color scheme are excerpted below:

At least as early as August 2014, KwikSPACE began to publicly identify its

intellectual property protection in news publications such as the Marianas Variety

newspaper, as well as the Guam Contractor's Association's Construction News Bulletin.

Case 1:16-cv-00079 Document 1 Filed 11/08/16 Page 4 of 12

Engineered ISO Solutions"

; .ilngbut not Umltrato:

U.S. Pal. Nn 0681.047

U.S. Pel. No. 9.068.170

US. rat. No. 8.8J9.57*

U.S. Pat. No. 0727.531

US. P. No. 9,00,71*

i ptndlng Inth US. and elsrt>tra.

offering-for-sale, and distributing in commerce wind-resistant ISO modular buildings

on wind-resistant ISO modular building by Reaction is likely to cause confusion as to the

wind-resistant ISO modular buildings supplied by Reaction are sourced by KwikSPACE

when, in fact, they are not.

Case 1:16-cv-00079 Document 1 Filed 11/08/16 Page 5 of 12

A demonstrative side-by-side comparison of KwikSPACE's protected trade dress

KwikSPACE's Distinctive Trade Dress

40' Double Wide

A demonstrative chart comparing KwikSPACE's distinctive trade dress with

Reaction's infringing trade dress is attached as Exhibit D.

with KwikSPACE or licensed, authorized, sponsored, endorsed or approved by

KwikSPACE in any way.

Case 1:16-cv-00079 Document 1 Filed 11/08/16 Page 6 of 12

occurring unless use by Reaction of KwikSPACE's distinctive cream color scheme is

enjoined by this Court.