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Civil Action No.: 1:15-cv-10181-DJC







ARDUINO, LLC,


Plaintiff,


-v-


ARDUINO S.R.L. f/k/a SMART PROJECTS
S.R.L.; GHEO SA; CC LOGISTICS, LLC;
MAGYC NOW LTD; DOG HUNTER INC.; DOG
HUNTER LLC; DOG HUNTER AG; TULYP
HOLDING SA; GIANLUCA MARTINO;
FEDERICO MUSTO; and DOES 1-10,

Defendants.



Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 1 of 12

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS







ANSWER AND AFFIRMATIVE DEFENSES TO

ARDUINO S.R.L.’S COUNTERCLAIMS

Pursuant to Fed. R. Civ. P. 8, Plaintiff/Counterclaim-Defendant, Arduino, LLC

(“Arduino”), by and

through

its undersigned counsel, as and for

its Answer

to

Defendant/Counterclaim-Plaintiff Arduino S.R.L. f/k/a Smart Projects S.R.L.’s Counterclaims

(“Smart Projects”), responds and states as follows:

PARTIES

1.

2.

3.

4.

5.

Arduino admits the allegation of Paragraph 1 of the Counterclaims.

Arduino admits the allegation of Paragraph 2 of the Counterclaims.

JURISDICTION AND VENUE

Arduino admits the allegation of Paragraph 3 of the Counterclaims.

Arduino admits the allegation of Paragraph 4 of the Counterclaims.

Arduino admits the allegation of Paragraph 5 of the Counterclaims.

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 2 of 12

6.

7.

Arduino admits the allegation of Paragraph 6 of the Counterclaims.

Arduino admits the allegation of Paragraph 7 of the Counterclaims.

FACTUAL BACKGROUND

8.

Arduino admits the allegation that Smart Projects manufactures computer

hardware. Arduino lacks knowledge and information sufficient to form a belief as to the truth of

the remaining allegations in Paragraph 8 of the Counterclaims, and therefore denies the same.

9.

10.

Arduino denies the allegations set forth in Paragraph 9 of the Counterclaims.

Arduino lacks knowledge and information sufficient to form a belief as to the

truth of the allegations in Paragraph 10 of the Counterclaims, and therefore denies the same.

11.

12.

13.

Arduino denies the allegations set forth in Paragraph 11 of the Counterclaims.

Arduino denies the allegations set forth in Paragraph 12 of the Counterclaims.

Arduino lacks knowledge and information sufficient to form a belief as to the

truth of the allegations in Paragraph 13 of the Counterclaims, and therefore denies the same.

14.

15.

16.

17.

18.

Arduino denies the allegations set forth in Paragraph 14 of the Counterclaims.

Arduino admits the allegations set forth in Paragraph 15 of the Counterclaims

Arduino denies the allegations set forth in Paragraph 16 of the Counterclaims.

Arduino denies the allegations set forth in Paragraph 17 of the Counterclaims.

Arduino admits the allegations set forth in the first sentence of Paragraph 18 of

the Counterclaims. Arduino denies the allegations set forth in the second sentence of Paragraph

18 of the Counterclaims. Arduino denies the allegations set forth in the third sentence of

Paragraph 18 of the Counterclaims.

19.

Arduino denies the allegations set forth in Paragraph 19 of the Counterclaims.

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 3 of 12

20.

Arduino admits that it is no longer working with Smart Projects as a

manufacturing partner. Arduino denies the remaining allegations set forth in Paragraph 20 of the

Counterclaims.

21.

22.

Arduino denies the allegations set forth in Paragraph 21 of the Counterclaims.

Arduino denies the allegation set forth in Paragraph 22 of the Counterclaims that

“Arduino LLC is not the rightful owner of any ARDUINO trademarks.” Arduino admits the

remaining allegations set forth in Paragraph 22 of the Counterclaims.

23.

Arduino admits the allegations set forth in the first sentence of Paragraph 23 of

the Counterclaims. Arduino denies the allegations set forth in the second sentence of Paragraph

23 to the extent that it states the incorrect registration date and registration number. Arduino

admits that on the basis of U.S. Trademark Application No. 85/144,567, the USPTO, on March

20, 2012, issued U.S. Registration No. 4,113,794 to Arduino LLC. Registration No. 4,113,794

speaks for itself.

24.

Arduino denies the allegations set forth in Paragraph 24 of the Counterclaims,

except that Arduino admits that Smart Projects initiated a proceeding before the TTAB seeking

cancellation of Arduino’s registrations.

25.

26.

Arduino admits the allegations set forth in Paragraph 25 of the Counterclaims.

Arduino admits that there is a pending lawsuit between the parties in Italy. Smart

Projects mischaracterizes that lawsuit, and therefore, Arduino denies the remaining allegations

set forth in Paragraph 26 of the Counterclaims.

27.

Arduino admits that an Italian court denied a preliminary injunction with respect

to a subset of marks at issue in this action, but not including the ARDUINO word mark. Arduino

denies the remaining allegations set forth in Paragraph 27 of the Counterclaims.

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 4 of 12

28.

Arduino admits that the denial of a preliminary injunction regarding a subset of

marks at issue in this action was affirmed by an Italian court. Arduino denies the remaining

allegations set forth in Paragraph 28 of the Counterclaims.

29.

The documents from the Italian proceedings speak for themselves. Arduino denies

the allegations set forth in Paragraph 29 of the Counterclaims.

30.

The documents from the Italian proceedings speak for themselves. Arduino

denies the characterization set forth by Smart Projects in Paragraph 30 of the Counterclaims.

Arduino further lacks knowledge and information sufficient to form a belief as to the accuracy of

the translation set forth in Paragraph 30 of the Counterclaims.

31.

The documents from the Italian proceedings speak for themselves. Arduino

denies the characterization set forth by Smart Projects in Paragraph 31 of the Counterclaims.

Arduino further lacks knowledge and information sufficient to form a belief as to the accuracy of

the translation set forth in Paragraph 31 of the Counterclaims.

32.

The documents from the Italian proceedings speak for themselves. Arduino

denies the characterization set forth by Smart Projects in Paragraph 32 of the Counterclaims.

Arduino further lacks knowledge and information sufficient to form a belief as to the accuracy of

the translation set forth in Paragraph 32 of the Counterclaims.

33.

The documents from the Italian proceedings speak for themselves. Arduino

denies the characterization set forth by Smart Projects in Paragraph 33 of the Counterclaims.

Arduino further lacks knowledge and information sufficient to form a belief as to the accuracy of

the translation set forth in Paragraph 33 of the Counterclaims.

34.

The documents from the Italian proceedings speak for themselves. Arduino

denies the characterization set forth by Smart Projects in Paragraph 34 of the Counterclaims.

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 5 of 12

Arduino further lacks knowledge and information sufficient to form a belief as to the accuracy of

the translation set forth in Paragraph 34 of the Counterclaims.

35.

36.

37.

38.

39.

Arduino denies the allegations set forth in Paragraph 35 of the Counterclaims.

Arduino denies the allegations set forth in Paragraph 36 of the Counterclaims.

Arduino denies the allegations set forth in Paragraph 37 of the Counterclaims.

Arduino denies the allegations set forth in Paragraph 38 of the Counterclaims.

Arduino denies the allegations set forth in Paragraph 39 of the Counterclaims.

COUNT I

Cancellation of Arduino LLC’s U.S. Trademark Registrations.

Nos: 3,931,675 and No. 4,113,794

40.

Arduino repeats each of its responses to Paragraphs 1-39 of the Counterclaims as

if set forth herein.

41.

42.

Arduino admits the allegations set forth in Paragraph 41 of the Counterclaim.

Paragraph 42 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 42 of the Counterclaims.

COUNT II

Cancellation of Arduino LLC’s U.S. Trademark Registrations.

Nos: 3,931,675 and No. 4,113,794

43.

Arduino repeats each of its responses to Paragraphs 1-42 of the Counterclaims as

if set forth herein.

44.

Paragraph 44 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 44 of the Counterclaims.

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 6 of 12

COUNT III

Trademark Infringement and False Designation of Origin in Violation of § 43(a) of

the Lanham Act (15 U.S.C. § 1125(a))

45.

Arduino repeats each of its responses to Paragraphs 1-44 of the Counterclaims as

if set forth herein.

46.

Paragraph 46 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 46 of the Counterclaims.

47.

Paragraph 47 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 47 of the Counterclaims.

48.

Paragraph 48 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 48 of the Counterclaims.

COUNT IV

Federal Unfair Competition and False Advertising under 15 U.S.C. § 1125(a)

49.

Arduino repeats each of its responses to Paragraphs 1-48 of the Counterclaims as

if set forth herein.

50.

Paragraph 50 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 50 of the Counterclaims.

51.

Arduino denies the allegations set forth in Paragraph 51 of the Counterclaims.

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 7 of 12

52.

Paragraph 52 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 52 of the Counterclaims.

53.

Paragraph 53 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 53 of the Counterclaims.

54.

Paragraph 54 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 54 of the Counterclaims.

55.

Paragraph 55 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 55 of the Counterclaims.

COUNT V

Trademark Dilution Under M.G.L.A. c. 110H § 13

56.

Arduino repeats each of its responses to Paragraphs 1-55 of the Counterclaims as

if set forth herein.

57.

58.

Arduino denies the allegations set forth in Paragraph 57 of the Counterclaims.

Paragraph 58 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations of Paragraph 58 of the Counterclaims to the extent they imply that Smart

Projects is the owner of the ARDUINO mark.

59.

Paragraph 59 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 8 of 12

denies the allegations of Paragraph 59 of the Counterclaims to the extent they imply that Smart

Projects is the owner of the ARDUINO mark.

60.

Paragraph 60 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 60 of the Counterclaims.

61.

Paragraph 61 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 61 of the Counterclaims.

COUNT VI

Common Law Unfair Competition

62.

Arduino repeats each of its responses to Paragraphs 1-61 of the Counterclaims as

if set forth herein.

63.

Paragraph 63 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 63 of the Counterclaims.

64.

Paragraph 64 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 64 of the Counterclaims.

COUNT VI

Common Law Unfair Competition

65.

Arduino repeats each of its responses to Paragraphs 1-64 of the Counterclaims as

if set forth herein.

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 9 of 12

66.

Paragraph 66 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 66 of the Counterclaims.

67.

Paragraph 67 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 67 of the Counterclaims.

68.

Paragraph 68 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 68 of the Counterclaims.

69.

Paragraph 69 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 69 of the Counterclaims.

70.

Paragraph 70 of the Counterclaims sets forth a legal conclusion that is not an

allegation of fact and does not require a response. To the extent a response is required, Arduino

denies the allegations set forth in Paragraph 70 of the Counterclaims.

ANSWER TO PRAYER FOR RELIEF

Plaintiff/Counterclaim-Defendant, Arduino, denies that Defendant/Counterclaim-

Plaintiff, Smart Projects, is entitled to the judgment and relief prayed for in its Prayer for Relief.

GENERAL DENIAL

Arduino denies each and every factual allegation in the Complaint that is not specifically

admitted or otherwise addressed in the preceding Paragraphs and demands strict proof thereof.





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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 10 of 12

AFFIRMATIVE DEFENSES

As and for its Affirmative Defenses to Defendant/Counterclaim-Plaintiff’s

Counterclaims, Arduino hereby alleges as follows:

First Affirmative Defense





Arduino owns and has valid rights in the ARDUINO marks worldwide.

Second Affirmative Defense

Defendant/Counterclaim-Plaintiff is not entitled to the relief requested in the

Counterclaims, in whole or in part, by virtue of the doctrines of estoppel, waiver, acquiescence,

and/or laches.

Third Affirmative Defense



Defendant/Counterclaim-Plaintiff’s Counterclaims fail to state a claim upon which relief

can be granted.

Fourth Affirmative Defense

Defendant/Counterclaim-Plaintiff is not entitled to any relief requested in the

Counterclaims because it comes to the Court with unclean hands.

RELIEF REQUESTED

WHEREFORE, Arduino prays for the following relief:

A. Dismissal of the Counterclaims with prejudice;

B. An award to Arduino of its costs and reasonable attorneys’ fees; and

C. Such other and further relief as the Court may deem just and proper.

JURY DEMAND

Arduino hereby demands a trial by jury on the Counterclaims and defenses so triable.







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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 11 of 12

Dated: October 2, 2015







































































Respectfully submitted,








/s/ John L. Welch
John L. Welch BBO#522040
WOLF, GREENFIELD & SACKS, P.C.
600 Atlantic Ave.
Boston, Massachusetts 02210
Telephone: (617) 646-8000
Email: [email protected]

Martin B. Schwimmer (pro hac vice)
Victoria Polidoro (pro hac vice)
Lori L. Cooper (pro hac vice)
LEASON ELLIS LLP
One Barker Avenue, Fifth Floor
White Plains, New York 10601
Telephone: (914) 288-0022
Email: [email protected]
Email: [email protected]
Email: [email protected]

Attorneys for Plaintiff

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Case 1:15-cv-10181-DJC Document 53 Filed 10/02/15 Page 12 of 12

CERTIFICATE OF SERVICE



I certify that this document filed through the ECF system will be sent electronically to the
registered participants as identified on the Notice of Electronic Filing (NEF) and paper copies
will be sent to those indicated as non-registered participants on this 2nd day of October, 2015.



/s/ John L. Welch
John L. Welch





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