'
`
`lllllllIllllIllll||||lIIHIlllllllllllllllllllllll
`
`05-10-2002
`U.S. Pawn: & TMOTO/TM Mail ficpt Dt. #22
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BOX TTAB NO FEE
`
`In the Matter of Application Serial No. 76/292,792: CAR-TEL
`Published in the Official Gazette of November 13, 2001
`
`3
`‘(:3
`
`OppositionNo.9ll51l90
`
`) ’
`
`5
`)
`>
`)
`)
`)
`
`INTERTEL INCORPORATED,
`
`Opposer,
`v.
`
`OPTION COMMUNICATIONS, L.L.C.
`
`Applicant.
`
`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS
`
`Opposer, Intertel Incorporated (“Intertel”) hereby moves the Trademark Trial and
`
`Appeal Board for an order suspending proceedings herein pending resolution of Civil
`
`Action No. 0lC9446, Option Communications, LLC v. Intertel, Incorporated, which has
`
`been filed in the United States District Court for the Northern District Of Illinois (hereafier
`
`referred to as the “Civil Action”). The grounds for this motion are as follows:
`
`1.
`
`Applicant, Option Communications, LLC (“Option”), on December 11,
`
`2001 filed the Civil Action against Intertel alleging, inter alia, that Intertel, through use of
`
`its trademark CARTA-DE ORO, infringed Options’s rights in the alleged trademark CAR-
`
`TEL.
`
`2.
`
`Intertel has filed an Answer in the Civil Action, which currently is in the
`
`discovery stage. A copy of Defendant’s Answer To Complaint For lnjunctive And Other
`
`Relief, which contains plaintiffs allegations, defendant’s answer to each of plaintiffs
`
`allegations and defendant’s affinnative defenses is attached hereto as Exhibit A
`
`:3
`
`V
`
`{-3
`3"?
`‘I3
`:3
`3,
`E‘ E5:
`9-°
`N
`co
`
`

`
`
`
`3.
`
`In the Civil Action, Intertel has alleged that the term “Car—Tel” is a common
`
`descriptive or merely descriptive term as applied to Option’s goods, telephone cards, and
`
`is without acquired distinctiveness and incapable of distinguishing Option’s cards from
`
`telephone cards of others. Exhibit A, Seventh Affirmative Defense, paragraph 11.
`
`Intertel has also alleged that Option has used and is continuing to use the symbol ® in
`
`connection with its alleged CAR—TEL mark without owning a federal
`
`trademark
`
`registration for CAR—TEL. Exhibit A, Sixth Affirmative Defense, paragraphs 8- 10.
`
`3.
`
`Resolution of the above issues in the Civil Action will resolve the issues
`
`involved in this proceeding, namely, whether Option has any trademark rights in the term
`
`CAR—TEL and whether Option’s use of ® is improper.
`
`WHEREFORE, Intertel respectfully requests that the Board suspend this proceeding
`
`pending resolution of Civil Action No. OIC9446.
`
`Respectfiilly submitted,
`
`SMART & BOSTJANCICH
`
`By
`
`iflwufiu/'\
`John Bostj ancich
`Patricia S. Smart
`
`19 South LaSalle Street
`
`Suite 1300
`
`Chicago, Illinois 60603
`(312) 857-2424
`
`Attorneys for Opposer
`
`

`
`
`
`F
`
`CERTIFICATE OF SERVICE
`
`I, John Bostjancich, an attorney, hereby certify that
`
`I served a copy of the
`
`foregoing Opposer’s Motion To Suspend Proceedings this 7th day of May, 2002 on
`
`Jeffrey H. Brown, D’Ancona & Pflaum, 111 East Wacker Drive, Suite 2800, Chicago,
`
`Illinois, by first class mail, postage prepaid.
`
`WULM‘
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States Postal Service as
`first class mail in an envelope addressed to: Commissioner for Trademarks, Box TTAB NO FEE, 2900
`Crystal Drive, Arlington, Virginia 22202-3513 on May 7, 2002.
`
`We "°“hrw-mt
`
`

`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE NORTHERN DISTRICT OF ILL
`
`EASTERN DIVISION
`
`)
`
`))
`
`)
`)
`)
`)
`)
`
`) )
`
`)
`
`OPTION COMMUNICATIONS, LLC,
`an Illinois limited liability company,
`
`Plaintiff,
`
`v.
`
`INTERTEL, INC.
`an Illinois corporation,
`
`Defendant.
`
`1'-*= ~~.:
`
`1 2 2002
`
`A
`tm?iCl»’2z“~i;;-
`@§;‘}:.~‘.'J£a. 525.3. .‘c:;.;n'w.«.-‘m evuufiwy
`
`Civil Action No. 01C 9446
`
`Honorable James B. Moran
`
`DEFENDANT’S ANSWER TO
`
`COMPLAINT FOR INJUNCTIVE AND OTHER RELIEF
`
`Defendant, Intertel, Inc., hereby responds to the Complaint for Injunction and
`
`Other Relief of Plaintiff Option Communications L.L.C. as follows:
`
`THE PARTIES
`
`LLC
`Communications,
`Option
`Plaintiff,
`l .
`(‘‘Plaintiff’ or “Option") is a limited liability company organized
`and existing under the laws of the State of Illinois and has its
`principal place of business at 4055 W. 26th Street, Chicago, IL
`60623.
`
`1.
`
`Defendant admits the allegations of Paragraph 1 of the Complaint.
`
`Defendant, Intertel Inc. (“Defendant” or “Interte1"),
`2.
`is a corporation organized and existing under the laws of the State
`of Illinois and has its principal place of business located at 1931 S.
`Canalport Avenue, Chicago, IL 60616.
`
`2.
`
`Defendant admits the allegations of Paragraph 2 of the Complaint.
`
`%
`
`EXHIBIT A
`
`

`
`
`
`I‘
`
`IURISDICTION AND VENUE
`
`This Court has jurisdiction because this is a civil
`3.
`action brought under the Copyright Act of 1976, 17 U.S.C. §§ 101,
`et seq. and the Lanham Act, 15 U.S.C. §§ 1051 - 1127, jurisdiction
`being conferred in accordance with 15 U.S.C. § 1121, 17 U.S.C. §
`501 and 28 U.S.C. §§ 1331 and 1338(a) and (b).
`
`3.
`
`Defendant admits the allegations of Paragraph 3 of the Complaint.
`
`jurisdiction over
`supplemental
`This Court has
`4.
`Plaintiff’ s state law claims pursuant to 28 U.S.C. § 1367.
`
`4.
`
`Defendant admits the allegations of Paragraph 4 of the Complaint.
`
`Venue is proper in this judicial district pursuant to
`5.
`under 28 U.S.C. § 139l(b) and 139l(c).
`
`5.
`
`Defendant admits the allegations of Paragraph 5 of the Complaint.
`
`BACKGROUND
`
`Plaintiff markets and distributes pre-paid telephone
`6.
`calling cards through independent distributors and retail outlets, as
`well as through direct sales to the public.
`
`6.
`
`Defendant admits the allegations of Paragraph 6 of the Complaint.
`
`Since at least as early as December, 1996, Plaintiff has used
`7.
`its Car—TelTM mark in connection with its pre-paid telephone calling card
`products.
`
`7.
`
`Defendant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 7 of the Complaint and therefore denies
`
`same.
`
`

`
`
`
`8. For five years, Plaintiff has continuously offered its pre-paid
`telephone calling cards for sale under the mark Car-Telm throughout most
`of the United States.
`
`8.
`
`Defendant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 8 of the Complaint and therefore denies
`
`same.
`
`including Plaintiffs,
`Pre-paid telephone calling cards,
`9.
`provide pre-paid telephone services through a telephone company. The
`quality and rate-per-minute of the telephone service received by the
`consumer varies greatly from one pre-paid telephone calling card brand to
`another, depending on the rate, type and quality of the telephone service
`provided by the telephone company associated with a particular pre-paid
`telephone calling card.
`Through Plaintiffs efforts at providing high
`quality pre-paid telephone calling cards, as well as its extensive marketing
`efforts, Plaintiffs Car-TelTM pre-paid telephone calling cards have -become
`associated with high quality telephone services at a competitive rate.
`
`9.
`
`Defendant admits the allegations of Paragraph 9 of the Complaint, except
`
`Defendant admits that pre~paid telephone calling cards, including Plaintiffs, may provide
`
`services through a telephone company, that the quality and rate of services may vary and
`
`that the aforesaid variance may be due in part to the factors identified in Paragraph 9.
`
`the customer support and customer service
`In addition,
`10.
`associated with a pre-paid telephone calling card can vary greatly from
`one pre-paid telephone calling card to another, depending on the quality of
`the customer service provided by the originator of the pre-paid telephone
`calling card.
`Through Plaintiffs efforts at providing high quality
`customer support and service, as well as its extensive marketing efforts,
`Plaintiffs Car-Telm pre~paid telephone calling cards have become
`associated with high quality customer support and service.
`
`10.
`
`Defendant denies the allegations of Paragraph 10 of the Complaint, except
`
`that Defendant admits that the quality of customer service can vary.
`
`

`
`
`
`On November 15, 2001, the graphic design and arrangement
`11.
`of Option’s Car-Telm pre-paid telephone calling card, including an Aztec
`icon, a map, and all of the card's other graphic and textual elements and
`arrangements thereof, was registered as United States Copyright No. VA
`1-101-824. True and correct copies of the Certificate of Registration and
`the Car—TelTM pre-paid telephone calling card are attached hereto as
`Exhibit A and Exhibit B.
`
`11.
`
`Defendant denies the allegations of Paragraph 11 of the Complaint, except
`
`that Defendant admits that United States Copyright Registration No. VA l~l0l-824
`
`issued effective November 15, 2001 for a work entitled “CAR-TEL Phone Card”, that a
`
`copy of the Certificate of Registration is attached to the Complaint as Exhibit A and that
`
`a copy of a Car-Tel pre-paid telephone calling call
`
`is shown in Exhibit B to the
`
`Complaint, and specifically denies Plaintiffs description of the elements allegedly
`
`protected by copyright, and further notes that Defendant is without sufficient knowledge
`
`or information to state whether the deposit submitted in support of the copyright
`
`application and the item shown in Exhibit B are the same and therefore denies same.
`
`Plaintiff’ s Car-TelTM pre-paid telephone calling card mark
`12.
`and design depicts the phrase "Car"-Tel" written in a stylized printing style
`or typeface, in distinctive print wherein the top of the letters are an orange
`color, fading into a yellow color at the bottom of the letters. The images of
`a hand, a map, an Aztec icon, the phrase ;;;YA BASTA!!!, a medallion
`depicting the number of minutes associated with the card, and other
`distinctive elements are also incorporated and depicted on the front of the
`Car-Telm pre-paid telephone calling card.
`
`12.
`
`Defendant denies the accuracy of the description of Plaintiffs Car—Tel
`
`phone card in the allegations of Paragraph 12 of the Complaint and states that Plaintiffs
`
`Car-Tel phone card speaks for itself.
`
`

`
`
`
`Plaintiff enjoys widespread recognition and fame associated
`13.
`with its Car-TelTM pre—paid telephone calling card design and marks
`(collectively, the “Car—TelTM Marks") by virtue of active promotion and
`, marketing via television, radio and print.
`
`13.
`
`Defendant denies the allegations of Paragraph 13 of the Complaint.
`
`Over the course of many years, Plaintiff has spent a
`14.
`considerable amount of money and effort to establish the good will and
`renown of the Car-TelTM Marks. Today,
`the Car-Telm Marks have
`become associated in the minds of consumers with Plaintiff as a high
`quality and reputable provider of pre—paid telephone calling cards and the
`services associated with them.
`
`14.
`
`Defendant is without knowledge or infonnation sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 14 of the Complaint and therefore denies
`
`same.
`
`From 1999 through September 21, 2001, Defendant was
`15.
`actively engaged as a "master distributor" of Plaintiff’ s pre—paid telephone
`calling cards, including the Car-TelTM pre—paid telephone calling cards.
`
`15.
`
`Defendant denies the allegations of Paragraph 15 of the Complaint, except
`
`that Defendant admits that among other cards sold and distributed by Defendant,
`
`Defendant has distributed and sold Plaintiff’ s pre—paid telephone calling cards, including
`
`the Car-Tel cards.
`
`As a master distributor, Defendant would purchase Car-
`16.
`Telm pre—paid telephone calling cards
`from Plaintiff and sell and
`distribute the cards, at a profit to Defendant, primarily to grocery stores
`and other retail outlets throughout the State of Illinois and other states.
`
`

`
`
`
`I 16.
`
`Defendant denies that Defendant received the benefits of a “master”
`
`distributor for Plaintiff, but otherwise admits the allegations of Paragraph 16 of the
`
`Complaint.
`
`These grocery stores and other retail outlets associated
`17.
`Defendant with Plaintiffs products,
`including the Car-TelTM pre-paid
`telephone calling cards,
`through Defendant's
`long association with
`Plaintiff as a master distributor of Plaintiffs pre-paid telephone calling
`card products.
`
`17.
`
`Defendant denies the allegations of Paragraph 17 of the Complaint, except
`
`that Defendant admits that some retailers may associate Plaintiffs products, including the
`
`Car—Tel pre-paid telephone calling cards, with Defendant, as a result of Defendant’s
`
`former marketing and sale of Plaintiffs cards.
`
`During the period of time that Defendant was engaged as a
`18.
`master distributor for Plaintiff, Defendant purchased from Plaintiff and
`then sold to retail outlets, in excess of $1,000,000.00 worth of Car-TelTM
`pre-paid telephone calling cards.
`
`18.
`
`Defendant denies the allegations of Paragraph 18 of the Complaint, except
`
`that defendant admits that during the period it distributed Plaintiffs cards it purchased
`
`and sold Car—Tel pre-paid telephone calling cards with a retail price in excess of
`
`$1,000,000.
`
`On September 18, 2001, Defendant made its final purchase
`19.
`of Car—TelTM pre-paid telephone calling cards. On or about September 21,
`2001, Defendant began to actively solicit, market, sell and distribute
`Defendant's own pre-paid telephone calling card products, under the name
`"Carta—De Oro," to the same clients who had previously purchased
`Plaintiffs Car—TelTM pre-paid telephone calling cards through Defendant.
`
`

`
`
`
`I 19.
`
`Defendant denies the allegations of Paragraph 19 of the Complaint, except
`
`that Defendant admits that in October 2001 it began to sell its CARTA-DE ORO pre-paid
`
`telephone calling cards and that the persons who purchased Defendant’s cards included
`
`persons who previously had purchased Car-Tel cards, as well as third party telephone
`
`cards, from Defendant.
`
`Defendant's Carta-De Oro pre-paid telephone calling card
`20.
`contains the same or substantially similar stylized letters, in the same color
`scheme,
`as Plaintiffs Car-TelTM pre-paid telephone
`calling card.
`Defendant's Carta-De Oro pre-paid telephone calling card also capitalizes
`on the design,
`individual elements,
`text and overall
`look and feel of
`Plaintiffs Car-TelTM pre-paid telephone calling card.
`
`20.
`
`Defendant denies the allegations of Paragraph 20 of the Complaint.
`
`Defendant’s Carta-De Oro pre-paid telephone calling card
`21.
`was intentionally produced with substantially similar design elements as
`Plaintiffs Car—TelTM pre-paid telephone calling card so Defendant could
`usurp and benefit from the goodwill, fame and reputation of Plaintiffs
`Car-TelTM pre-paid telephone calling card.
`
`21.
`
`Defendant denies the allegations of Paragraph 21 of the Complaint.
`
`Defendant adopted and began using its Carta~De Oro name
`22.
`or mark after Plaintiff adopted and began using its Car-Tell” Marks.
`
`22.
`
`Defendant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 22 and therefore denies same, but admits
`
`that Defendant first used the name and/or mark CARTA-DE ORO in September 2001.
`
`to
`On October 12, 2001, Plaintiff wrote to Defendant
`23.
`inform it of Plaintiffs rights in its Car-Te1TM Marks and its copyright in
`the graphic design and arrangement of the Car-TelTM pre-paid telephone
`calling card. Plaintiff sought a prompt written commitment
`from
`Defendant that Defendant would stop the marketing and distribution of the
`
`

`
`
`
`I confusingly similar Carta-De Oro cards. A true and correct copy of
`correspondence dated October 12. 2001, is attached as Exhibit C.
`
`23.
`
`Defendant denies that
`
`the CARTA-DE ORO card previously sold by
`
`Defendant was confusingly similar to Plaintiff’s Car-Tel card and further denies the
`
`allegations of Paragraph 23 of the Complaint to the extent they attempt to characterize the
`
`contents of the letter referred to therein, but admits that plaintiff's counsel sent Defendant '
`
`a letter dated October 12, 2001, a copy of which is Exhibit C to the Complaint.
`
`Defendant refused to provide the written commitment
`24.
`demanded by Plaintiff and continued its
`improper marketing and
`distribution of the Carta-De Oro card even after its receipt of the October
`
`12, 2001 letter.
`
`24.
`
`Defendant denies the allegations of Paragraph 24 of the Complaint,
`
`including the claim that its marketing and distribution of its CARTA-DE ORO card was
`
`in any way improper, and further states that upon receipt of the letter referred to herein,
`
`Defendant’s counsel contacted Plaintiff’ s counsel and,
`
`in an attempt to resolve this
`
`matter, made a commitment that Defendant would not reprint the CARTA-DE ORO card
`
`objected to by Plaintiff.
`
`After sending the October 12, 2001 letter, Plaintiff, through
`25.
`discussions and correspondence between Plaintiff’ s counsel and counsel
`for Defendant, reiterated its demand that Defendant cease and desist from
`its improper sales and marketing of the Carta-De Oro cards.
`
`25.
`
`Defendant denies that its marketing and distribution of its CARTA-DE
`
`ORO card was in any way improper, but admits that
`
`there were discussions and
`
`correspondence between Plaintiff’ s counsel and Defendant’s counsel regarding resolution
`
`of this matter, and that during those discussions and.communic_ations Plaintiff reiterated
`
`

`
`
`
`its demands that Defendant stop the sale and marketing of its CARTA-DE ORO card and
`
`Defendant
`
`informed Plaintiff that while it disputed Plaintiffs claim of wrongdoing,
`
`Defendant would not reprint its CARTA-DE ORO card and would modify its design
`
`before reprinting cards for sale.
`
`repeated
`Defendant has willfully ignored Plaintiffs
`26.
`demands to cease and desist, and continues to sell and market the Carta—
`De Oro pre-paid telephone calling cards which are confusingly similar to
`Plaintiff’ s Car-Telm pre-paid telephone calling cards.
`
`26.
`
`Defendant denies the allegations of Paragraph 26 of the Complaint, and
`
`specifically denies that the CARTA-DE ORO cards previously sold by Defendant are
`
`confusingly similar to Plaintiffs Car—Tel cards, and states that as promised, Defendant
`
`did not reprint the CARTA-DE ORO cards following its receipt of an objection from
`
`Plaintiff.
`
`Defendant's marketing and distribution of the Carta-De Oro
`27.
`pre-paid telephone calling card has created actual confusion in the
`marketplace.
`
`27.
`
`Defendant denies the allegations of Paragraph 27 of the Complaint.
`
`COUNT I
`
`Copy_11'ght Infringement
`
`Plaintiff repeats and realleges paragraphs 1 through 27 as
`28.
`though fully set forth in this count.
`
`28.
`
`Defendant repeats and realleges its answers to Paragraphs 1 through 27 of
`
`the Complaint as its answer to Paragraph 28 of the Complaint as though fully set forth in
`
`this paragraph.
`
`

`
`
`
`Plaintiff is the sole owner and proprietor of the copyright in
`29.
`the graphic design and arrangement of the Car-TelTM pre-paid telephone
`calling card.
`
`29.
`
`Defendant is without knowledge or information sufficient to form a belief
`
`as to the truth of the allegations of Paragraph 29 of the Complaint and therefore denies
`
`S3.I'I'lC.
`
`30. Defendant has intentionally utilized the design, text, visual elements
`and overall look and feel of Plaintiffs copyrighted graphic design and
`arrangement of the Car-TelTM pre-paid telephone calling card in
`connection with the Carta-De Oro pre-paid telephone calling card, thereby
`infringing Plaintiffs copyright and profiting from the use thereof to the
`detriment of Plaintiff.
`
`30.
`
`Defendant denies the allegations of Paragraph 30 of the Complaint.
`
`As a direct and proximate result of Defendant's conduct, Plaintiff
`31.
`has lost, and will continue to lose, substantial revenues from the wrongful
`infringement of its copyright.
`
`31.
`
`Defendant denies the allegations of Paragraph 31 of the Complaint.
`
`Plaintiff has already suffered irreparable injury for which it
`32.
`has no adequate remedy at law, and will continue to suffer such damage
`unless and until Defendant's infringement of Plaintiffs copyright
`is
`enjoined.
`
`32.
`
`Defendant denies the allegations of Paragraph 32 of the Complaint.
`
`Plaintiff is entitled to an injunction restraining Defendant
`33.
`and its respective officers, agents, employees and all persons acting in
`concert with them or any of them from engaging in any further such acts
`in violation of the copyright laws.
`
`33.
`
`Defendant denies the allegations of Paragraph 33 of the Complaint.
`
`10
`
`

`
`
`
`Plaintiff is further entitled to recover from the Defendant, at
`34.
`Plaintiffs election, either (a) statutory damages; or, (b) disgorgement of
`Defendant's profits and recovery of Plaintiffs damages,
`including
`attorneys‘ fees sustained, or which will be sustained, as a result of the
`Defendant's acts of infringement as alleged above. At present, the amount
`of such damages cannot be fully ascertained by Plaintiff
`
`34.
`
`Defendant denies the allegations of Paragraph 34 of the Complaint.
`
`COUNT II
`
`Violation of the Lanham Act ( 15 U.S.C § 1 125(3))
`
`Plaintiff repeats and realleges paragraphs 1 through 34 as
`35.
`though fully set forth in this count.
`
`35.
`
`Defendant repeats and realleges its answers to Paragraphs 1 through 34 of
`
`the Complaint as its answer to Paragraph 35 of the Complaint as though fully set forth in
`
`this paragraph.
`
`Plaintiff has protectable rights in the Car-TelTM Marks
`36.
`which have been and continue to be violated by Defendant.
`
`36.
`
`Defendant denies the allegations of Paragraph 36 of the Complaint.
`
`The Car—TelTM Marks have acquired distinctiveness in the
`37.
`minds of the relevant public by virtue of more than five years of
`continuous use and by virtue of Plaintiffs expenditure of substantial
`amounts of money to advertise and promote the Car-Te1TM Marks and
`Plaintiffs widespread use of the Car-TelTM Marks throughout the United
`States.
`
`37.
`
`Defendant denies the allegations of Paragraph 37 of the Complaint.
`
`Defendant is promoting and marketing its services in the field of
`38.
`pre-paid telephone calling cards under the infringing and confusingly
`similar Carta-De Oro name or mark, in the same channels of commerce,
`and to the same consumers, as does Plaintiff with its Car-TelTM pre-paid
`telephone calling cards.
`
`11
`
`

`
`
`
`38.
`
`Defendant denies the allegations of Paragraph 38 of the Complaint.
`
`39.
`
`Defendant's use of the name or mark Carta-De Oro and its
`
`imitation of the Car-TelTM Marks in interstate commerce has caused and is
`
`likely to further cause confusion, mistake or deception as to the source or
`origin of Defendants’ goods and/or result in the belief that Defendants’
`good and services are provided by, sponsored by, approved by, licensed
`by, or affiliated with or in some other way legitimately connected with
`Plaintiff, in violation of 15 U.S.C. § ll25(a).
`
`39.
`
`Defendant denies the allegations of Paragraph 39 of the Complaint and
`
`specifically denies that it has imitated any of Plaintiff’ s marks.
`
`The use by Defendant of the name or mark Carta-De Oro or
`40.
`any colorable imitation of the Car~TelTM Marks interferes with and will
`continue to interfere with Plaintiffs ability to use, enjoy and create further
`good will under its pre-paid telephone calling card and its marks.
`
`40.
`
`Defendant denies the allegations of Paragraph 40 of the Complaint.
`
`COUNT III
`
`Violation of the Lanham Act 15 U.S.C 1125 c
`
`Plaintiff repeats and realleges paragraphs 1 through 40 as
`41.
`though fully set forth in this count.
`
`41.
`
`Defendant repeats and realleges its answers to Paragraphs 1 through 40 of
`
`the Complaint as its answer to Paragraph 41 of the Complaint as though fully set forth in
`
`this paragraph.
`
`42.
`
`Plaintiffs Car-Telm Marks are famous marks.
`
`42.
`
`Plaintiff denies the allegations of Paragraph 42 of the Complaint.
`
`43.
`
`Defendant's use of the name or mark Carta-De Oro for its
`
`services in the field of pre-paid telephone calling cards began after the
`Plaintiffs use of the Car-TelTM Marks, and threatens to dilute, and has
`
`12
`
`

`
`
`
`H diluted, the distinctive quality of the famous Car-Telm Marks in violation
`ofthe Lanham Act, 15 U.S.C. § 1125(0).
`
`43.
`
`Defendant denies the allegations of Paragraph 43 of the Complaint.
`
`Defendant's intent in trading on Plaintiffs Car-Telm Marks
`44.
`and causing dilution of the famous Car—TelTM Marks is willful and
`deliberate.
`
`44.
`
`Defendant denies the allegations of Paragraph 44 of the Complaint.
`
`The goodwill of Plaintiffs business activities under the Car-
`45.
`Telm Marks is of enormous value, and Plaintiff has an inadequate remedy
`at
`law and will suffer irreparable harm should Defendants‘ actions as
`described herein be allowed to continue.
`
`45.
`
`Defendant
`
`is without
`
`information sufficient
`
`to admit or deny the
`
`allegations of Paragraph 45 of the Complaint regarding the value of Plaintiffs goodwill
`
`and therefore denies same, and otherwise denies the allegations of Paragraph 45.
`
`As a direct and proximate result of Defendant's dilution of
`46.
`the Car-TelTM Marks, Plaintiff has suffered damage and will continue to
`suffer damage unless Defendant's use of the name or mark Carta-De Oro
`is enjoined by this Court.
`
`46.
`
`Defendant denies the allegations of Paragraph 46 of the Complaint.
`
`COUNT IV
`
`Violation Of Illinois Consumer Fraud and Deceptive Business Practices Act
`
`Plaintiff repeats and realleges paragraphs 1 through 46 as
`47.
`though fully set forth in this count.
`
`47.
`
`Defendant repeats and realleges its answers to Paragraphs 1 through 46 of
`
`the Complaint as its answer to Paragraph 47 of the Complaint as though fully set forth in
`
`this paragraph.
`
`13
`
`

`
`
`
`48.
`
`Defendant's use or imitation of the Car—TelTM Marks in
`
`connection with its pre-paid telephone calling cards constitutes unfair or
`deceptive trade practices under 815 ILCS 505 et. seq., in that Defendant:
`
`(a)
`
`passes off its goods and services as those of Plaintiff;
`
`(b)
`
`causes a likelihood of confusion or of misunderstanding as to the source,
`sponsorship, approval or certification of Defendant's goods and services;
`
`(c)
`
`causes a likelihood of confusion or of misunderstanding as to affiliation,
`connection or association with or certification by another;
`
`(cl)
`
`generally engages in conduct which similarly creates a likelihood of
`confusion or of misunderstanding; and
`
`(e)
`
`intends that the consuming public and others rely on its deceptive conduct
`and practices.
`
`48.
`
`Defendant denies the allegations of Paragraph 48 of the Complaint, and
`
`specifically denies that it has used a Car-Tel mark or imitation thereof.
`
`Defendant's acts have caused and, unless restrained, will
`49.
`continue to cause irreparable harm. damage and injury to both Plaintiff
`and consumers in the State of Illinois.
`
`49.
`
`Defendant denies the allegations of Paragraph 49 of the Complaint.
`
`COUNT V
`
`Violation of Illinois Uniform Deceptive Trade Practices Act
`
`Plaintiff repeats and realleges paragraphs 1 through 49 as
`50.
`though fully set forth in this count.
`
`50.
`
`Defendant repeats and realleges its answers to Paragraphs 1 through 49 of
`
`the Complaint as its answer to Paragraph 50 of the Complaint as though fully set forth in
`
`this paragraph.
`
`14
`
`

`
`
`
`51.
`
`Defendant's use or imitation of the Car-Tel” Marks in
`
`connection with its pre~paid telephone calling cards constitutes deceptive
`trade practices under 815 ILCS 510/2, in that Defendant:
`
`(a)
`
`passes off its goods and services as those of Plaintiff;
`
`(b)
`
`causes a likelihood of confusion or of misunderstanding as to the source,
`sponsorship, approval or certification of Defendant's goods and services;
`
`(c)
`
`causes a likelihood of confusion or of misunderstanding as to affiliation,
`connection or association with or certification by another; and
`
`((1)
`
`generally engages in conduct which similarly creates a likelihood of
`confusion or of misunderstanding.
`
`51.
`
`Defendant denies the allegations of Paragraph 51 of the Complaint, and
`
`specifically denies that it has used a Car-Tel mark or imitation thereof.
`
`Defendant's acts are willful, and have caused and, unless
`52.
`restrained, will continue to cause irreparable harm, damage and injury to
`Plaintiff.
`
`52.
`
`Defendant denies the allegations of Paragraph 52 of the Complaint.
`
`15
`
`

`
`
`
`First Affirmative Defense
`
`1.
`
`The CARTA-DE ORO card previously sold by Defendant,
`
`to which
`
`Plaintiff objected, is neither substantially similar to, nor likely to cause confusion With,
`
`Plaintiff’ s CAR-TEL card, as shown by the depictions of the cards set forth below,
`
`wherefore, Plaintiff is not entitled to any relief:
`
`.
`
`in lfg zismin
`
`CE
`.
`EN@A@@,¢>
`R@B@ y«y
`F@A@@E\\:
`EN TARJETAS TELEFDIIIGAS
`
`Ml QBL‘€]fl@@l QMBE [Nl© @E§C3flDER’lll'@l
`E‘xllURlUJllT@S !P®L‘i3 @@lNlE)X(fl@lNl
`De Méxiéo a
`Estados Unidos,
`d E d U ‘d
`
`\
`
`y a cualquierparte
`del mundo.
`
`_'
`
`A
`
`.
`
`'_
`;
`
`V
`
`A
` “ WE CCZKQ
`::rd:::::;':::
`,,
`'
`
`.
`
`«
`
`-
`
`S
`
`De MEXICO :2
`Estados Unidos
`isimplemente La Mejor!
`
`Para or-=-ens-r= 1—8ss~22s-6394
`
`.
`
`,._________ __.'."i'i";_““I“_"i*’E?tf"!3§‘;’§"’_‘f“E?_"...... __
`
`’
`
`\‘;de la comunl'9gcl6n S,‘ :
`V
`‘l_‘‘
`_
`I
`»
`
`‘
`
`‘
`
`’ /
`
`‘*3 DIE
`
`.
`
`j
`Descuemto X
`r'l.r'1;-’1.v-Ir'Lr’lr’l.r’l.r-'Lr"Lr us
`
`1' 1
`',__,
`._.,_
`
`kw‘
`
`.
`
`.
`A
`
`M%mm@m$.
`
`16
`
`

`
`
`
`
`
`2. On information and belief, Plaintiff or its principle, Roberto Garza, recently
`
`initiated, financed or approved the marketing and sale of a KARTEL-DE ORO card
`
`which is shown below next to Defendant’s CARTA-DE ORO card:
`
`Slum Lfsazma
`{Paw tuumexiaficn
`
`fififi@©
`
`D’
`
`mm tlfiamos
`Eseouiullmlos
`
`Fllllllll
`
`no descuenta
`por conexlén.
`
`a MIEXIICO y
`De MEXICO a
`Estados Unidos
`
`‘La: larifas earresponden a llamadas desde cualquler (alémno panlcula!
`
`no descuenta
`por conexion.
`.‘ De Estados Unidos
`a EWEXHCD 3/
`De MEXICO a
`Estados Unidos
`
`isimplemente La Meiolrl
`Para ordenar: 1-888-332-8637
`
`ESE
`
`©C!I@
`
`@@
`
`all
`:"L/Lr’l.
`
`

`
`
`
`3.
`
`The similarity of the KARTEL-DE ORO card to Defendant’s CARTA-DE
`
`ORO card is greater than any similarity between Defendant’s CARTA-DE ORO card and
`
`Plaintiffs CAR—TEL card.
`
`4.
`
`The KARTEL-DE ORO card and Defendant’s CARTA-DE ORO card are
`
`substantially and confusingly similar, and Plaintiff has unclean hands and is estopped
`
`from any claim against Defendant’s marketing or sale of its CARTA-DE ORO card.
`
`

`
`
`
`Third Affirmative Defense
`
`5.
`
`Defendant, solely in an effort
`
`to resolve this matter, has ceased the
`
`distribution and sale of the CARTA-DE ORO card objected to by Plaintiff, and instead is
`
`marketing and selling the DE ORO card depicted below, to which Plaintiff has indicated
`
`it has no objection; accordingly Plaintiffs request for injunctive relief is moot:
`
`5
`_
`»_..;_-..J
`COMPRE LA MEJOR
`
`ngéogaog I
`
`i
`
`xtrwn
`
`f k
`
`iHél7“l“é}€0fl;7lqa3T:é6fifi:€/r5_ygla,dnfuTUfQ‘L5i9:yI
`
`

`
`
`
`Fourth Affirmative Defense
`
`6.
`
`Plaintiffs claim of copyright infringement is based upon similarity of
`
`elements of the parties’ respective cards which are ideas, scenes a faire or other elements
`
`which are not protectable by copyright.
`
`Fiflh Affirmative Defense
`
`7.
`
`Plaintiffs requests for statutory damages and attorney fees under the
`
`Copyright Act is barred by statute, since the complained of activity commenced prior to
`
`the date of Plaintiffs copyright registration, 17 U.S.C. § 412.
`
`Sixth Affirmative Defense
`
`8.
`
`Plaintiff has used, and is continuing to use, the symbol ® on its Car-Tel
`
`pre-paid telephone calling cards, immediately following the word Car-Tel.
`
`9.
`
`Plaintiff commenced its aforesaid use of the ® without obtaining a federal
`
`registration of the mark Car-Tel.
`
`10.
`
`Plaintiffs aforesaid use constitutes a misrepresentation and misuse of the
`
`federal registration notice in violation of the Lanham Act and unclean hands, barring the
`
`claims asserted herein..
`
`Seventh Affirmative Defense
`
`11.
`
`The term Car-Tel is a common descriptive or merely descriptive term as
`
`applied to telephone cards and is without acquired distinctiveness and incapable of
`
`distinguishing Plaintiff’ s cards from telephone cards of others.
`
`20
`
`

`
`
`
`Eighth Affirmative Defense
`
`12.
`
`The design of Plaintiffs telephone card is merely descriptive or
`
`ornamental and is without acquired distinctiveness and incapable of distinguishing
`
`Plaintiffs cards from telephone cards of others.
`
`Ninth Affirmative Defense
`
`13.
`
`Neither Plaintiffs alleged Car—Tel mark nor the design of Plaintiffs card
`
`is a famous mark within the meaning of 15 USC § 1125(0), and therefore neither is
`
`eligible for protection under that Section.
`
`Tenth Affirmative Defense
`
`14.
`
`For the reasons set forth above, Plaintiffs claims are baseless and, on
`
`information and belief, Plaintiff filed suit against Defendant not to protect any alleged
`
`copyright or trademark rights, but rather to interfere with Defendant’s sale of cards which
`
`compete with Plaintiffs cards; Plaintiffs conduct constitutes copyright misuse,
`
`trademark misuse and unclean hands, barring the claims asserted herein.
`
`21
`
`

`
`
`
`REQUEST FOR DISMISSAL AND AWARD
`OF ATTORNEY FEES
`
`Wherefore, Defendant requests that this case be dismissed an