1) 2) 3) 4) 5) Aaron Aguilar Investigation Manager, Americas Global Security & Brand Protection
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- Olivia Barnett
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1 From: Sent: To: Subject: Daniels, Jason Friday, August 19, :16 AM Aguilar, Aaron RE: lce/hsl Meeting in Houston [ ] Thank you for the update. I will work on getting him the required documentation in the next week. lt might be helpful if you contact him and let him know we will both be out of the office next week but we will get him the information asap. Jason Fromr Aguilar, Aaron Sent: Friday, August 19, :46 AM To: Daniels, Jason Subject: ICE/HSI Meeting in Houston As discussed with you yesterday, the meeting with Sp Agent Lehmann went very well. HSI has agreed to present the case to an AUSA that has recently been assigned to handle lp cases, HSI will be conducting a review of the target's business activities and imporuexport records will be performed to determine if other violations may be occurring. To assist with their case preparation and enforcement strategy, SA Lehmann has requested UL to provide the following: A summary of the overall case, to include a timeline & investigative reports for past purchases An affidavit from the FUS inspector that visited Sky Blue and was asked to leave after he observed UL mark on the canisters and informed Sky Blue they could not use the UL mark on their producl until UL testing and authorization was granted. A copy of the C&D letter sent to Sky Blue and delivery confirmation of the letter. lf necessary, funds needed to perfor^m a purcha$e of goods directly from Sky Blue. This would most likely require the purchase of a pallet of canisters. lf necessary, securing a storage location & transportation of evidence purchase. SA Lehmann has scheduled a meeting for August SOth to be attended by UL, HS /Houston management & the AUSA" 1) 2) 3) 4) 5) Aaron Aguilar Investigation Manager, Americas Global Security & Brand Protection Undervvriters Laboratories, LLC I?Laboratory Dr Research Triangle Park, North Carolina u
2 VIA; United States Postal Service July 20, 2016 Mr. Jude J. Shao Sky Blue Butane 8710 Scranton St. Houston, Texas Re: Infringement of UL Intellectual Property (Our File ) Dear Mr. Shao, UL LLC ( UL ) is the owner of numerous trademarks and certification marks, including UL, UNDER\^ITERS LABORATORIES and the renowned UL-in-a-circle mark, as well as their corresponding U S. trademark registrations (the UL Marks ). Since 1894, UL has been evaluating, testing and certifying products to determine that products meet nationally recognized safety standards. The authorized application of a UL certification mark on a product signifies that the product complies with UL s safety requirements. We have become aware of Sky Blue Butane s unauthorized use of the UL Marks as well as false and misleading representations regarding UL certification on the website ( packaging, product, etc, as shown in the images in Schedule A attached to this letter. Products bearing counterfeit UL Marks or being falsely represented as having UL certification have not been tested or certified to any safety requirements. Such products may place the health and safety of the user at risk. Further, UL has not licensed or otherwise authorized Sky Blue Butane to use any of the UL Marks. UL has no record of certifying products on behalf of Sky Blue Butane. Sky Blue Butane s unauthorized use of the UL Marks constitutes a violation of our intellectual property rights which UL will take action to protect. Accordingly, we hereby demand that you: 1. Provide written confirmation that you will immediately and permanently cease and desist from any further use of the UL Marks and any other references to UL or UL certification on any and all materials, including the website ( packaging, product, etc. UL LLC 333 Pfingsten Road, Northbrook, IL USA T: / F: / W: ULcom DEPOSITION UL000408
3 2. Provide written confirmation that you will immediately and permanently cease and desist from any further importing, exporting, manufacturing, purchasing, selling, offering for sale, distributing, advertising or in any way dealing in any products using one or more of the UL Marks if those products have not been tested and certified and the use of the UL Marks authorized by a UL Services Agreement; 3. Identify each product ever manufactured, imported, exported, sold or to be sold, or advertised by Sky Blue Butane which in any way bears or references any one or more of the UL Marks, along with written confirmation that you will hold such inventory until an agreement can be reached on its disposition; 4. For each article identified in No. 3 above, provide us with all catalogs, promotional brochures, commercial stationary, stickers, nameplates and labels, or advertisements in any media whatsoever that reference any UL Marks; 5. For each article identified in No. 3 above, provide in writing the names and addresses of all your customers who ever purchased said products; 6. For each article identified in No. 3 above, provide in writing the names and addresses of all of your manufacturers, packaging and label printers; and 7. For each article identified in No. 3 above, provide a complete written accounting of the quantity ordered, quantity sold, and copies of all back-up documentation used in preparing the accounting, including but not limited to invoices and purchase orders. We must have your written confirmation of compliance with the demands of this letter by no later than August 12, 2016 to avoid the necessity of further action against your company. Please send your written response to my attention at 12 Laboratory Drive Research Triangle Park, North Carolina Assuming you meet these demands we will contact you regarding an appropriate resolution of this matter. Otherwise we may be forced to take further legal action, without further notice to you. This letter does not constitute a complete statement of our claims, rights or remedies in respect of this matter, all of which are hereby expressly reserved. Sincerely, Jason Daniels Senior Investigation Manager Global Security & Brand Protection Jason.Daniels@ul.com UL000409
4 From: Senl: To: Subject: Attachments: Aguilar, Aaron Monday, December 12, :19 PM 'Lehmann, Charles E' RE: Exemplar of Actual Authorization to utilize UL Trademark. sample Notice of Completion with lpl.pdf; Preparing for your UL Mark evaluation.pdf; DRAFT PUBLIo NOTIGE 2016 sky Blue Butane Fuel.pdf Agent Lehmann, The "sample Notice of Completion with IPI" is issued to a company whose product has been tested by UL and found to meet the tested UL standard. In addition, they have completed additional required measures that meet the requirements for authorization to apply the UL Mark on the tested goods. However, the Addendum stipulates that an Initial Product Inspection must be performed by UL Inspectors before products can be shipped. In the AEP's case, their canisters had only been tested and found to meet UL Standard for portable butane fuel canisters. Thus, a Certificate of Completion was issued to show the product, however, an IPI would've also been issued that required inspection of the manufacturing facilities prior to being given authorization to apply the UL Mmk and shipping product. The second document, "Preparing for your UL Mmk evaluation" illustrates the process in obtaining UL certification and how AEP fell short of fulfilling UL certification requirements. Lastly, I've attached a draft of the Public Notice for you and the AUSA that UL will be issuing notificafion the public of goods not certified by UL and possibly purchased or available for purchase in the marketplace. As you'll read the notice does not contain in references to this investigation. The Public Notice is being prepared for issuance in the very near future. If you have any questions, please do not hesitate in contacting me. Thank you. Best regards, Aaron Aguilar Investigation Manager, Americas Global Secrnity & Brand Protection Underwriters Laboratories, LLC 12 Laboratory Dr Research Triangle Park, North Carolina27709 T: T400 C: W: a E l.l ul000419
5 @ DRAFT DRAFT DRAFT DRAFT DRAFT DRAFT NOT FOR EXTERNAL DISTRIBUTION PUBLIC NOTICE Michelle Press Marketing Manager UL T: E: Michelle. Release No. 1 SPN-xx UL Ulf,arns of Counterfeit UL Mark on Sky Blue Butane Fuel (Release {5PN-xx) NORTIIBROOK, ll * Decamber $(r 2()16 - Thg followllg is a notification from UL that the Sky Blue Butane Fuel canister idenfified'below bears'a counterfeil UL Marft: The.Sky Blue Eutane fuel canigter has not been evaluated by UL to the appropriate Standards,for:Saf ty and. it is unknown if this $ky Blue Butana fuel catister sornplies with any safety requirernents. Note the markings on the counterfeit Sky Slue Bulane fuel canister. Nameof Produ{ti, Sky Blue Butane Fuel Disttibufor: American Energy Products(AEP) 8710 Scranton St Houston, TX77075 Bus. 30$ ldentification: The product bears a label with a counterfeit UL Listing Mark and the ul000424
6 Photos: The counterfeit product appears as follows: counterfeit Model Sold at: Hong Kong Maket Place, 99 Ranch Market, Hiep Thai Food Store, New Troung Nguyen, Jusgo Supermarket and directly thru Sky Blue Butane website. Keywords: Sky BIue Butane Fuel, American Energy Ptoducts, AEP ul000425
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