`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Platinum Performance, Inc.,
`
`V.
`
`Canidae Comoratiom
`
`Opposer,
`
`Applicant.
`
`\-./\-./%/\&\_/\.é\-_-/\-/N./\.d’
`
`)
`
`Opposition No, 91153715
`
`Mark: C7-XNTDAE PLAETTNUM
`
`Serial No. 78/070,906
`
`Filed: June 25, 2001
`
`Published: June 25, 2002
`
`IIummummmummmuulmum
`
`10-22-2003
`
`0PPOSER'S MOTION TO SUSPEND
`
`On October 20, 2003, Opposer, Platinum Perfonnance, Inc. filed a Complaint against
`
`Applicant, Canidae Corporation,
`
`in the United States District Court, Central District of
`
`Califomia. A copy of the Complaint is attached hereto as Exhibit A. This pending litigation
`
`involves the same marks and parties at issue in the above-identified opposition, and will have a
`
`significant if not dispositive impact on the opposition.
`
`In view of the above, Opposer requests that the above-identified opposition be suspended
`
`pending the outcome of the District Court Action..
`
`/0 -' 30 - 0 3
`Date
`
`PLATINUM PERFORMANCE, INC.
`
`By its attorneys,
`
`
`
`Reg. N . 39,721
`MERCHANT & GOULD P.C.
`P.O. Box 2910
`
`Minneapolis, Minnesota 55402-9944
`Telephone: (612) 332-5300
`
`
`
`\:5‘
`
`ll'
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing OPPOSER'S MOTION TO SUSPEND
`
`was served upon the following attorney of record for Applicant by First Class Mail, this 20th day
`
`of October, 2003:
`
`Sandra V. Scavo
`
`Fitch, Even, Tabin & Flannery
`120 South LaSalle Street, Suite 1600
`
`Chicago, IL 60603-3406
`
`
`
`CERTIFICATE OF MAILING
`
`I hereby certify that OPPOSER'S MOTION TO SUSPEND is being deposited with the
`
`U.S. Postal Service by First Class Mail, in an envelope addressed to the Commissioner for
`
`Trademarks, Attn: T.T.A.B., 2900 Crystal Drive, Arlington, VA 22202-3513, this 20th day of
`
`October, 2003.
`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`
`
`PLATINUM PERFORMANCE,
`
`INC. ,
`
`
`
`V.
`
`PLA[N'1'lFF(S)
`
`CANIDAE COR?0RATION ,.
`
`TO:
`
`THE ABOVE-NAMED DEI-‘ENDANT(S):
`
`YOU ARE HEREBY SUMMONED and required to file with this court and serve upon plaintiff’s attorney
`Brenton ‘Ll. Hornet
`, whose addxess is:
`
`do STERNBERC, "T.-IORNER & ASSOCIATES _-.
`A Professional Law Corporation
`4195 E. Thousand Oaks Blvd., Suite 235
`I-Iesclake Village, CA 91362
`
`i.
`
`amended compliant U counterclaim El cross—claim
`an answer to the K3 complaint El
`days after serviocof this Summons upon you, exclusive
`which is herewith served upon you within 20
`of the day of service. Ifyou fail to do so, judgement by default will be taken against you for the relief
`demanded in the complaint.
`
`§
`
`_
`
`Clerk, U.S. District Court
`
`Dated:
`
`
`
`By:
`
`Deputy Clerk
`
`(Seal cfthe Court)
`
`cv-om (OW!)
`
`summoms
`
`30-;
`
`50:12:
`
`£006 05 int;
`
`'
`
`a<2<2II8<2908=><F-‘j
`
`
`
`
`
`CJ
`
`Brenton L. Homer (CA Bar. No. 92399)
`STERNBERG, I-IORNER & ASSOCIATES
`4195 East Thousand Oaks Blvd., Suite 235
`Westlake Village, CA 91335
`Telephone: (805) 381-0700
`
`Of Counsel:
`
`Scott W. Johnston
`
`Thomas R. Johnson
`MBRCI-IAN? & GOULD P.A.
`3200 IDS Center
`80 South Eighth Street
`Minneapolis, MN 55402-2215
`Telephone (612) 332-5300
`
`N THE UNITED STATES DISTRICT COURT
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
`) Civil Action No.
`)
`) COMPLAINT AND DEMAND
`
`; FORJURY TRIAL
`
`)
`
`) )
`
`) )
`
`PLATINUM PERFORMANCE, ]NC.,
`
`,8
`
`P1‘‘'‘‘‘'_‘fl"’-
`V_
`19
`2° CANIDAE CORPORATION,
`
`Defendant.
`
`
`COMPLAINT
`
`Plaintiff, Pkltinum Performance, Inc. (“P]atinum"), by and through its undersigned
`
`0 attorneys alleges as follows:
`
`-1-
`
`PLAINTIFFS OOMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`2o'a
`
`60:VT 2005 oz 130
`
`'
`
`'L;
`
`a22II8290s=XEd
`
`
`
`
`
`15
`
`16
`
`17
`
`g_.
`
`5.
`
`Venue is proper in this district under 28 U.S.C. §§1391 and/or 1392.
`
`1ur:PAarrEs
`
`Plaintiff, Plafinum Performance, Inc., is a California corporation located at 67
`
`Defendant, Canidae Corporation, ("Cani_dae"), is a California corporation located
`110 N. Lincoln Avenue, Corona, California 92882.
`
`BACKGROUND
`
`Platinum is a leading provider ofnutritional products, including nutritional
`I
`7.
`_ supplements for humans and animals.
`
`
`
` j'
`you
`
`aim 200865.130.
`
`A
`
`'
`
`’
`
`as:2II'82so8:><Pd
`
`PLA.lN'I'lFF'S COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`
`
`
`
`8.
`
`Platinum has been using the mark "PLATINUM" since at least as early as
`
`‘4
`15
`
`15
`
`Plaunum duly registered PLATINUM PERFORMANCE as a trademark for
`l 1.
`11l.llI1tlDI1al supplements for use by humans and performance annuals In International Class 5 111
`
`1998, based on an application filed February 10, 1997. Registration No. 2,132,598 has not been
`eanceled, is valid, and is now in full force and effect.
`
`I9
`
`12.
`Platinum is the owner ofthe mark PLATINUM BAR, having adopted and used
`said mark on or in connection with nutritional supplements for humans, and in the marketing and
`sale thereofin interstate commerce, since at least as early as November 13, 2000.
`
`Platinum duly registered PLATINUM BAR as a trademark for nutritional
`13.
`supplements for humans in International Class 5 in the United States Patent and Trademark
`Office. Registration No. 2,476,090 issued August 7, 2001, based on an application filed
`
`
`
`PLMNTIFFS COMPLAINT
`AND DEVIAND FOR JURY TRXAI.
`
`0I:17I
`
`2003 05 no
`
`a92II82S08=><1?d
`
`e g
`
`o-s
`
`
`
`
`
`
`
`fi_|
`
`
`
`February 26, 1998. Registration No. 2,476,090 has not been canceled, is valid, and is now in full
`
`force and effect.
`
`14.
`
`_ Platinum is the owner ofthe mark PLATINUM POWER, having adopted and
`
`used said mark on or in connection with nutritional supplements for humans, and in the
`
`marketing and sale thereofin interstate commerce, since at least as early as January 17, 2003.
`
`15.
`
`Platinum duly registered PLATINUM POWER as a trademark for nutritional
`
`supplements for humans in International Class 5 in the United States Patent and Trademark
`
`Office. Registration No. 2,737,157 issued on July 15, 2003 based on an application filed Octob
`
`6, 1999. Registration No. 2,737,157 has not been canceled, is valid, and is now in full force and
`efi'ect.
`
`16.
`
`Platinum also has adopted numerous additional PLATINUM rnarm, including the
`
`marks PLATINUM MOTILITY PLUS, PLATINUM GENTLE, and PLATINUM
`
`TRANQUILITY and has filed applications for registration ofsaid marks for nutritional
`
`supplements for use by humans and animals. P1atinum’s applications for said marks are pending.
`
`.17.
`
`The above referenced marks (hereinafter "the PLATINUM marks") and their
`
`registrations and/or application numbers are shown in Table 1 below:
`
`
`
`
`§7
`
`CE
`
`BAR
`
`
`
`
`PLATINUM POWER
`
`PLATINUM MOTILITY PLUS
`
`
`TABLE 1
`
`Registrationl
`
`Application
`
`
`N0.
`
`2,476,090
`
`2,737,157
`78/281,481
`-4-
`
`
`
`Registration
`
`Date
`
`January 27 1993
`
`August 7, 2001
`
`July 15, 2003
`
`
`
`
`PLAINTIFFS common
`AND DEMAND FOR JURY TRIAL
`
`90-d I
`
`o::p1' goog oz rag
`
`A€£II8€9O8=X9j
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pmmwrwomm
`
`Platinum has advertised and sold nutritional products for humans and animals
`1.
`i using the PLATINUM marks in California and nationwide.
`
`Platinunfs nunitional products for humans and animals emphasize the high
`2.
`nutritional value ofthe products and specifically phasize that the products contain Omega-3
`and Omega-6 Essential Fatty Acids, Glucosamine Sulfate, and Antioxidants. Attached as Exhibi
`A are samples ofPlatinu.u1's use of the PLATINUM marks.
`
`4.
`
`As a result ofsaid use and promotion, Platinunfs PLATINUM marks have
`
`developed and represent valuable goodwill inuring to the benefit ofPlatinum.
`
`‘.1:
`
`53533537333
`
`20
`
`Specifically, Defendant has used the mark "PLATINUM DIET" in connection with the sale ofits
`
`pmducts.
`
`Defendant has also filed for federal trademadc registration ofthe marks
`5.
`"CANlDAE PLATINUM" (Serial No. 78/070,906) and "FILIDAE PLATINUM" (Serial No.
`
` . .
`go'd
`
`0I‘it7I. 2006 055.30 i
`
`h
`
`I
`
`assttéésoszxed
`
`-5-
`
`PLAINTIFFS COMPLAINT
`AND DEMAND son JURY TRIAL
`
`
`
`
`
`
`
`including on the Internet and at animal shows.
`
`7.
`
`Defendant and Platinum market and sell their goods in similar and/or overlapping
`
`channels of trade.
`
`8.
`Just as Platinum had been doing for years, Defendant now is promoting and
`selling nutritional products for animals, including products for dogs, using the mark
`
`"PLATINUM", "PLATINUM DIET", and/or "CANIDEA PLATINUM DIET." While
`
`Defendant calls its product "pet food," Defendant promotes the nutritional benefits of its
`
`products, including claims that its products contain "SUPER FORTIFIED Antioxidants
`
`Vitamins, Balanced Omega 6 & 3 fatty acids, Glucosamirie .
`
`. ." Attached hereto as Exhibit B is
`
`a printout ofDefendant's promotional material.
`
`9.
`
`Defendant's marketing also emphasizes the nutritional benefits ofits products by
`
`highlighting the use ofmany of the same ingredients that Platinum’s nutritional supplements
`
`have, including Omega-3 and Omega-6 Essential Fatty Acids, Glucosamine Sulfate, and
`
`Antioxidants. Attached hereto as Exhibit C are copies ofDefendant's advertising wherein
`
`Defendant uses the PLATINUM mark to promote its products.
`
`10. When a typical Internet search is performed for the terms PLATINUM and
`
`OMEGA, the search results in entries for both Platinum's website and Defendant's website within
`
`a few entries of each other.
`
`11.
`
`‘ Upon information and belief, Defendant has marketed and sold its pet food
`
`products using the PLATWUM mark in California and interstate commerce.
`
`so it
`
`I
`
`tr‘:-1}“:
`
`20oz 03 too.
`
`'
`
`azsttsssoszxea
`
`PLAINTIFPS COMPLA.l'N'l‘
`AND DEMAND FOR JURY TRIAL
`
`
`
`
`
`
`
`12.
`
`Upon information and belief, Defendant is promoting and selling its pet food
`products using the PLATINUM mark nationwide.
`
`PLATJNUM mark in the
`
`United States before February 26, 1998.
`
`18.
`
`Platinum has priority with respect to the PLATINUM mark by more than five
`(5) years prior to Defendant's filing date ofits application for federal trademark registration.
`
`21.
`Upon information and belief, Defendant’
`5 business is located approximately 50
`miles irom Platinum's business headquarters furtherincreasing the likelihood that thepurchasers
`-7-
`PLA]NI'IFF‘S COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`60 '6
`
`H
`
`I ”iI'l7I _ 200: oz 1.30.
`=
`
`a22I182<308=><Pd
`
`
`
`
`
`CI
`
`and/or users ofsuch goods will be confused or deceived as to source or origin ofthe Defendant's
`
`products.
`
`22.
`
`On July 30, 2002, Platinum notified Defendant ofP1atinLnn's superior rights in
`
`and to the maxi: PLATINUM, ofits objections to Defendants infringing use ofthe PLATINUM
`
`mark, and asked Defendant to cease and desist any such use.
`
`COUNT I
`Federal Trademark Infringement
`
`23.
`
`This cause ofaction arises Imder Section 32 ofthe Lanham Act, 15 U.S.C. §1 114.
`
`Jurisdiction is founded on 28 U.S.C. §§l331 and 1338, as well as 15 U.S.C. §1 121.
`
`24.
`
`Platinum herebyrepeats and realleges the preceding paragraphs ofthis Complaint
`
`as if fully set forth herein.
`
`25.
`
`Defendant has used in commerce marks, logos and slogans identical or
`
`confusingly similar to Platinun-1's federally-registered PLATINUM marks, logos and slogans in
`
`connection with the sale, distribution, or marketing ofits products, in a manner likely to cause
`
`cortfiision, to cause mistake, or to deceive as to source or origin, among purchasers and members
`
`of the trade.
`
`
`
`26.
`Upon information and belief, Defendant was aware ofPlatinum andfor its
`PLATINUM marks before adopting the PLATINUM mark for its products. Despite such
`
`awareness, Defendant has adopted and used the PLATINUM marks.
`
`27.
`
`28.
`
`Defendant's actions constitute trademark infiingement under 15 U.S.C. §l 114.
`
`Defendant's actions were taken in willful, deliberate, and/or intentional disregard
`
`ofPlatinum's rights. The case is exceptional under the Federal Trademark Act, 15 U.S.C.
`
`§§10Sl etsg.
`
`-8-
`
`PLAINTIFPS COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`' or-.3 ""t'1:vt
`
`2005 03450‘
`
`"’z'22tIasso8:$<Ed
`
`
`
`
`
`2_9.
`
`Platinum has been damaged by the acts ofDefendant. Platinum has suffered, and,
`
`ifthe acts ofDefendant are allowed to continue, will continue to sufier, irreparable injury for
`
`‘ which Platinum has no adequate remedy at law.
`
`COUNT II
`Federal Unfair Comgetifion
`
`30.
`
`This cause ofaction arises under Section 43(a) ofthe Lanham Act, 15 U.S.C.
`
`§1125(a). Jurisdiction is founded on 28 U.S.C. §§1331 and 1338, as well as 15 U.S.C. §l121.
`
`31.
`
`Platinum hereby repeats and realleges the preceding paragraphs ofthis Complaint
`
`as if fully set forth herein.
`
`32.
`
`Upon infonnation and belief, Defendant was aware ofP1atinum and./or its
`
`PLATINUM marks before adopting the PLATINUM mark for its products. Despite such
`
`awareness, Defendant has adopted and used the PLATINUM marks.
`
`33.
`
`Upon information and belief, Defendant's adoption ofthe PLATINUM mark was
`
`34.
`
`Defendant has used, on or in connection with goods, 21 man: which is likely to
`
`cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association
`
`ofDefendant with Platinum, or as to the origin, sponsorship, or approval ofDefendant's goods,
`
`or commercial activities by Platinum.
`
`A
`
`-35.
`
`Defendant's acts constitute a false designation oforigin and misrepresentation in
`
`violation of Section 43(3) of the Lanham Act, 15 U.S.C. §l125(a).
`
`
`
`26
`
`27
`28
`
`36.
`
`Upon information and belief, Defendant's acts were taken in willful, deliberate
`
`and/or intentional disregard ofPlatiuuufs rights. This case is exceptional under the Lanham Act.
`
`_ 37.
`
`Defendant's actions have caused damage to Platinum.
`
`-9-
`
`PI..AIN'I‘IFF'S COMPLA1'Nl'
`AND DEMAND FOR JURY TRIAL
`
`II'cl
`
`II:l7I
`
`£005‘ 06 130
`
`.J_££II8€S08!XE'i
`
`
`
`
`
`38.
`
`Platinum has suffered irreparable harm, for which it has no adequate remedy at
`
`law, and will continue to sufier irreparable injury unless and until Defendant's infringing acts are
`
`enjoined by this Court.
`
`COUNT III
`State Statutog; Unfair Competition
`
`39.
`
`This cause of action arises under Cal. Bus. & Prof. Code §§l7200, et seq.
`
`Jurisdiction is founded upon 28 U.S.C. § 1338, or alternatively, supplemental jurisdiction as
`
`stated in 28 U.S.C. §l367 or upon principles of pendent and ancillary jurisdiction.
`
`40.
`
`Platinum hereby repeats and realleges the preceding paragraphs of this Complaint
`
`as if fully set forth herein.
`
`41.
`
`Platinum owns common law trademark rights in the mark PLATINUM by virtue
`
`of its use of the PLATINUM mark in connection with the sale of animal and human nutritional
`
`products since at least as early as November 1, 1996.
`
`
`
`42.
`
`Defendant's use of the mark PLATINUM constitutes unlawful, unfair, or
`
`lraudulent business practice in violation of California Business & Professional Code §§l7200, at
`
`£1
`
`43.
`
`Upon information and belief; Defendant has engaged in this illegal conduct
`
`.
`
`willfiilly, deliberately and intentionally.
`
`44.
`
`Upon information and belief, Defendant has engaged in this illegal conduct in
`
`_ wanton, willful, or reckless disregard of Platinu.m's rights and interests.
`
`45.
`
`' Platinum has been damaged by the acts of the Defendant. Platinum has suffered
`
`and ifthe acts ofDefendant are allowed to continue, Platinum will continue to suffer irreparable
`
`injury for which Platinum has no adequate remedy at law.
`
`-10-
`
`PLAIN'l'll-‘F‘S COMPLAINT
`AND DEMAND FOR may TRIAL
`
`51 ‘C;
`
`aI:l7I
`
`9005 02; 130
`
`a££II8€908‘-><P_J.
`
`
`
`
`
`COUNT IV
`common Law Unfair Competition and Trademark Infringement
`
`46.
`
`This cause of action arises under federal and California common law. Jurisdictio
`
`is founded upon 28 U.S.C. §l338, or alternatively, under supplemental jurisdiction as stated in
`
`28 U.S.C. §1367 or upon principles of pendent and ancillary jurisdiction.
`
`47.
`
`Platinum hereby repeats and realleges the preceding paragraphs ofthis Complaint
`
`as if fully set forth herein.
`
`48.
`
`Platinum owns common law trademark rights in the mark PLATINUM by virtue
`
`of its use of the PLATINUM mark in connection with the sale of animal and human nutritional
`
`products since at least as early as November 1, 1996.
`
`49.
`
`Defendant's activities complained of constitute forms of common law unfair
`
`competition, and trademark infringement, in violation of Platinum's common law rights.
`
`50.
`
`Upon infonnation and belief, Defendant has engaged in this illegal conduct
`
`willfully, deliberately and intentionally.
`
`51.
`
`Upon information and belief, Defendant has engaged in this illegal conduct in
`
`wanton, willful, or reckless disregard of Platinuin's rights and interests.
`
`52.
`
`Platinum has been damaged by the acts of Defendant. Platinum has suffered and
`
`if the acts ofDefendant are allowed to continue, Platinum will continue to snlfer irreparable
`
`injury for which Platinum has no adequate remedy at law.
`
`COUNT V
`
`Dilution -State
`
`53.
`
`This cause of action arises under California Dilution Statute, Cal. Bus. & Pmf.
`
`Code (514330, et sgg. Jurisdiction is founded on 28 U.S.C. § 1333, or alternatively, upon
`
`principles of supplemental, pendent, and ancillaryjurisdiction.
`
`27
`
`28
`
`-11-
`
`PLAIN'l‘lFF‘S COMPLAINT
`AND DEMAND FOR IURY TRIAL
`
`SI "d
`
`ZI:l7I
`
`‘.2005 05 130
`
`d€€ll8‘ZSO8=X9;l
`
`
`
`
`
`54.
`
`Platinum hereby repeats and realleges the preceding paragraphs of this Complaint
`
`as if fully set forth herein.
`
`55.
`
`Platinum's extensive and exclusive use of the PLATINUM marks has resulted in
`
`the PLATINUM marks becoming famous among the consuming public and the marks have
`
`acquired considerable value.
`
`56.
`
`Defendant's use ofthe mark PLATINUM is likely to injure P1atimun's business
`
`reputation and impair the effectiveness of the PLATINUM marks.
`
`57.
`
`58.
`
`Defendant's acts constitute violations Cal. Bus. & Prof. Code §14330, et sg.
`
`Upon information and belief, Defendant has engaged in this illegal conduct in
`
`wanton, willful, or reckless disregard ofP1atinum's rights and interests.
`
`59.
`
`60.
`
`Defendant's acts have caused damage to Platinum.
`
`Platinum has sufiered irreparable injury, for which it has no adequate remedy at
`
`law, and will continue to sufier irreparable injury unless and until Defendant's use of the
`
`PLATINUM mark is enjoined hy the court.
`
`COUNT VI
`
`Deceptive Trade Practices
`
`61.
`
`This cause ofaction arises under California's Unfair Competition Statute, Cal.
`
`Bus. & Prof. Code§§17200, er seq. Jurisdiction is founded on 28 U.S.C. §1338, or alternatively,
`
`upon principles of supplemental, pendent, and ancillary jurisdiction.
`
`62.
`
`Platinum hereby repeats and realleges the preceding paragraphs of this Complaint
`
`as if fully set forth herein.
`
`63.
`
`Defendant's use of the mark PLATINUM constitutes deceptive, untrue or
`
`misleading advertising in violation ofCalifornia Business &. Professional Code §§17200, et sg.
`
`II
`
`n—- La-‘I
`
`
`
`sssissesense:
`
`.12.
`
`PLAlNTIFF'S COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`I?T'd
`
`H
`
`‘Z“I.!l7I
`
`€005 OZ 130
`
`E21 IB€SO8= X9.:l
`
`
`
`
`
`64. Defdant's acts constitute violations Cal. Bus. & Prof. Code§§l7200, et seq.
`
`65.
`
`Defendant has caused damage to Platinum.
`
`66.
`
`Platinum has suffered irreparable injury, for which it has no adequate remedy at
`
`law, and will continue to suffer irreparable injury unless and until Defendant's deceptive trade
`
`practices are enjoined by the court.
`
`COUNT VII
`
`Opposition to Application Serial No- '78/070,276
`
`67.
`
`Platinlnn hereby incorporates the foregoing paragraphs by reference as if fully set
`
`forth herein.
`
`68.
`
`This counterclaim arises under the Lanharn Act, 15 U.S.C. 1051 et seq.
`
`Jurisdiction is founded on 28 U.S.C. §§ 1331, 1332 and 1338 as well as 15 U.S.C. § 1121.
`
`69.
`
`This Court has the authority to deterrnine the right to registration, order the
`
`cancellation ofregistrations, in whole or in part, restore canceled registrations, and otherwise
`
`rectify registrations of any party to this action pursuant to Section 37 of the Lanharn Act,
`
`15 U.S.C. §l1l9 et seq.
`
`70.
`
`Defendant filed an application for trademark registration ofthe mark "CANIDAE
`
`PLATINUM" as reflected in trademark application Serial No. 78I070,906, filed June 25, 2001,
`
`by Canidae Corporation and published in the Qfificial Gazette on June 25, 2002.
`
`71.
`
`Platinum opposed said application. The opposition was assigned Opposition No.
`
`153,715 and is currently pending. On October 20, 2003, Platinum filed a motion to suspend said
`
`Opposition pending the outcome of this Federal District Court action.
`
`72.
`
`Defendant's use of the mark "CANIDAE PLATINUM“ is confusingly and
`
`deceptively similar to Platinunrs previously used and registered PLATINUM marks.
`
`._.
`
`._.
`
`35333255
`
`IN)C
`
`26
`
`2'7
`28
`
`-13-
`
`PLAINTIFFS COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`‘QI'dl’
`
`it VI
`
`.2005 oz 130
`
`u
`
`4
`
`léettaéécefixes
`
`
`
`
`
`73.
`
`The goods and services provided by Platinum under its PLATINUM marks are
`
`closely related to the goods listed in Defendant's application for registration of the mark
`
`"CANIDAE PLATINUM." Both parties‘ products are promoted and sold as nutritional products
`
`for animals, including dogs.
`
`74.
`Defendant's products appear to have many of the same ingredients that Platinunfs
`nutritional supplements have, including Omega-3 and Omega-6 Essential Fatty Acids,
`
`Ghlcosamine Sulfate, Flax Seed, and Antioxidants.
`
`75.
`
`Upon information and belief, Defendant intends to use the "PLATINUM" term
`
`across a variety ofproducts, with a descriptive term to indicate the type of animal for which the
`
`product is designed.
`
`76.
`
`Due to the similarity between Defendant's claimed mark, CANIDAE
`
`PLATINUM, and Platinunfs previously used and duly registered PLATINUM marks, the related
`
`nature of the goods and services of the respective parties, customers and potential customers are
`
`likely to believe that Defendants products originate from Platinum, resulting in a likelihood of
`
`confusion in the marketplace, and damage to Platinum.
`
`77.
`
`The use and registration by Defendant of the mark CANIDAE PLATINUM for
`
`‘ Defendant's goods is likely to cause confusion or to cause mistake or deception in the trade, and
`
`among purchasers and potential purchasers, with Platinum’s previously used and duly registered
`
`PLATINUM marks, again resulting in damage to Platinum.
`
`78.
`
`Because of the related nature of the goods, and the similarity of the marks, use an
`
`registration ofthe term CANIDAE PLATINUM by Defendant is likely to cause confusion,
`
`mistake, or deception that Defendant's goods are those of Platinum, or are otherwise endorsed,
`
`PLAINTTFFS COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`9I'd
`
`iétévt
`
`2005 oz 45¢‘
`
`"'i2:tté:9o8:x9a
`
`\O
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`v-I 9
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`335353355:
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`I0I0
`
`25
`
`'25
`
`27
`
`D28
`
`
`
`
`
`sponsored, or approved by Platinum for use with Platinum’s products causing filrther damage to
`
`Platinum.
`
`79.
`
`IfDefendant is granted registration of the mark herein opposed, it
`
`would thereby obtain at least a primajizcie exclusive right to the use of its alleged mark. Such
`
`registration would be a source of further damage and injury to Platinum.
`
`80.
`
`Registration of the mark shown in Application Serial No. 78/070,906 will result '
`
`damage to Platinum u‘.l1dG'.l' the provisions of Section 2(a) and Z([l) of the U.S. Trademark Act, 15
`
`U.S.C. Section 1052, pursuant to the allegations stated above.
`
`81.
`
`The foregoing facts justify denying registration of Defendant's Application Serial
`
`No. 78/070,976, pursuant to Sections 37 of the Lanham Act, 15 U.S.C. §1l19 et seq.
`
`WHEREFORE, Plaintiff, Platinum Performance, Inc., prays that the Court enter an
`
`order:
`
`A.
`
`Permanently enjoining and restraining the Defendant, Cauidae Corporation, its
`
`directors, officers, agents, servants, employees, subsidiaries, affiliates, and all persons in active
`
`concert or participation With, through, or under Defendant fiom:
`
`1.
`
`committing any acts of unfair competition and from implying a
`
`false designation of origin or a false description or representation With
`
`respect to P1atinum's PLATINUM marks;
`
`2.
`
`committing any acts of unfair competition by passing off or
`
`inducing or enabling others to sell or pass off goods which are not
`
`Platinum‘s goods as those of Platinum;
`
`-15—
`
`PLA}NI‘[E‘F‘S COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`ND
`
`.-.._up—L--nbeit‘LI-'|I0I-*Q
`
`:—--—.--—I-\O011--JO»U’:
`
`22
`
`23
`
`26
`
`27
`
`28
`
`AI ‘cl
`
`QIIPI
`
`£005 DZ 3:30
`
`i‘2<2II8‘v.‘9O8=><‘3;l
`
`
`
`
`
`3.
`
`using in any manner packaging, labels, signs. literature, display
`
`cards, or other packaging, advertising, or promotional materials, or other
`
`materials related to Defendants goods, bearing the PLATJNUM marks an
`
`any other mark, word, or name confusingly siniilar to PIal:i11u.m's
`
`PLATINUM-marks;
`
`4.
`
`irialsing any statements on promotional materials or advertising for
`
`Defendant's goods which are false or rriisleadjng as to source or origin;
`
`5.
`committing any acts ofdeceptive or unlawful trade practices
`calculated to cause members ofthe trade orpurchasing public to believe
`
`that Defendants goods are the goods ofPlatinum or are sponsored by or
`
`associated with, or related to, or connected with, or in some way endorsed
`
`10
`
`:1
`
`12
`
`13
`
`
`
`14
`15
`::
`13
`19
`
`or pronioted by Platinum under the supervision or control ofPlatinum.
`Requiring that Defendant deliverup to Platinum any and all C0nIaJI161'S, signs,
`B
`packagingmaterials, printingplates, and advertising orpromotional materials and anymaterials
`used in the preparation thereof, which in any way unlawfully use or make reference to Platinum
`or to the
`marks in connection with Defendant's goods.
`
`C.
`
`Requiring that Defendant, within thirty (30) days after service ofnotice in entry 0
`
`judgrnent or issuance of an injunction pursuant thereto, file with the Court and serve upon
`
`PIatinum's counsel a written report under oath setting forth details ofthe manner in which
`
`Defendant has complied with the Court's order pursuant to paragraphs A and B above.
`
`D.
`
`Requiring Defendant to account and pay over to Platinum all damages sustained
`
`' by Platinum, Defendant's profits, punitive damages, attorneys fees, and costs, and ordering that
`the amount ofdamages awarded Platinum be increased three times the amount thereof.
`
`-16-—
`
`PLAINTIFFS COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`31-4 M M ‘stint
`
`900: oz no
`
`aS:£ll8£S08=><9:l
`
`
`
`
`
`E.
`
`Denying registration to Defendant of the maxi: "CANIDAE PLATINUM" as set
`
`forth in Application Ser. No. 78/070,976.
`
`F.
`
`Awarding Platinum such other relief as the Coun may deem just and proper.
`
`PLATINUM PERFORMANCE, INC.
`
` By its Attorneys,
`
`
`
`Bre on L. Home CA Bar. No. 92399)
`STERNBERG, HORNER & ASSOCIATES
`4195 East Thousand Oaks Blvd., Suite 235
`Westlake Village, CA 91335
`Telephone: (805) 381-0700
`
`
`
`E533E.GI3§
`
`20
`
`Scott W. Johnston, #247558
`Thomas R Johnson #242032
`MERCHANT & GOULD P.C.
`80 South Eighth Street, Suite 3200
`Minneapolis, Minnesota 55402-2215
`Telephone: (612) 332-5300
`
`-17..
`
`PLAINTIFFS COMPLAINT
`AND DEMAND FOR JURY TRIAL
`
`6I'd
`
`_
`
`17-I:17I
`
`2002: 0: no
`
`-:c_'£'..%_:'..r..=..
`
`:.
`
`&£QII829O81XEd
`
`
`
`
`
`EXHIBIT A
`
`
`
`
`
`Canine Nutrition Center
`
`Page 1 of2
`
`PL N U M Your Source for Preventative.
`
`PERFORMANCE
`
`Therapeutic and Sports Nutrition
`
`MY ACCOUNT
`
`SHOP
`
`SHOPPING CM
`
`Psugcz
`
`HUMAN NUTRITION
`
`ANlMAl NUTRITION
`
`RESEARCH AND EDUCATION
`
`PLATINUM COMMUNITY
`
`SHOWS AND EVENTS
`
`.
`
`.
`
`.
`
`r
`
`canine nutrition
`
`,.~’
`
`
`Building Health, Performance
`and Longevity through Nutrit
`
` 3 P
`
`canine nutrition center
`
`products
`
`how to order
`
`why platinum
`
`platinum community
`
`research and education
`
`FESOU F065
`
`Platinum Performance Canine nutritionals are veterinary
`developed formulas designed to improve the health and
`longevity of your dog. Platinum Performance nutritional
`products are based on quality. research and clinical results.
`
`
`
`products
`Platinum Performance Canine Wellness and Performance
`formula simplifies canine nutrition by addressing nutritional
`deficiencies that affect most domesticated clogs today. Each
`highly palatable scoop of Platinum Performance provides dogs
`with a specific blend of fresh Omega-3 Essential Fatty Acids,
`Trace Minerals. Glucosamine Sulfate. Antioxidants. Vitamins.
`Amino Acids. and Fiber. Click Here for Products
`
`Our complete line of nutritional support formulas are
`specifically developed for use with Platinum Performance
`Canine Wellness and Performance Formula. making
`supplementing your dog's diet easier and more effective,
`without the risk of over supplementing.
`
`How to Order
`Platinum Performance
`
`Platinum Community
`The Platinum Community is a
`
`http1//www.platinurnperformancenet/animal/canine/index.cfm
`
`latinum Perform
`Canine
`
`
`
`clinically develop-
`foundation formu
`nutritional suppor
`more featured prt
`
`3 success «
`
`
`
`Trixie
`Trixie was just dc
`comes natural to
`especially a chan
`leaped seven fee
`catch a disc and
`wrong way — on
`dislocating her Ie
`more story »
`
`Product Categori-
`Choosa a Categ
`
`0 events
`
`h.-V27
`
`10/18/2003
`
`
`
`
`
`Canine Nutrition Center
`
`Page 2 of 2
`
`Veterinary Medic.
`Annual Conventic
`July 19th-23rd. 2:
`Denver, CO
`
`newslett :
`g sign-up
`
`[I] request a
`
`13 tell a frier
`
`great place to read client
`success stories, newsletters.
`and to view our show and
`events calendar.
`
`Research 8. Education
`At Platinum Performance, we
`understand the importance of
`critical research not only in
`the development of new
`health-promoting products,
`but also in the advancement
`of our understanding of
`companion animal health. In
`this section you will find
`several resources to help you
`learn more about canine
`nutrition and health.
`
`Canine supplements are
`available through licensed
`veterinarians and factory
`direct. Click here to locate a
`
`veterinarian near you, or to
`order online.
`
`Why Platinum
`When choosing a Platinum
`Performance nutritional
`
`program you can be assured
`that you are providing your
`dog with the highest quality
`and most effective nutrition
`available, click here to learn
`more.
`
`Resources
`Enter our canine resources
`
`center to read frequently
`asked questions about your
`dog's nutrition program, view
`our nutritional glossary, and
`request product education
`resources.
`
`Horne > Animal Nutrition > Canine >
`
`r: so. i-r ~.---
`
`Q HAVE AN IDEA? SHARE IT WITH US.
`
`-
`
`- ~rfl$ uxww‘-i '=rIr-=r
`
`SITE MAP I PRIVACYITERMS OF USE I 0 2003 PLATINUI
`
`http://www.platinumperformance.netfanima1/canine/index.cfm
`
`10/ 1 8/2003
`
`
`
`
`
`CPP-generic/nut'1_found/extra_condition
`
`Page 1 of 4
`
`P
`
`N U M Your Source for Preventative,
`
`PEIil"ORMf\NCE
`
`Therapeutic and Sports Nutrition
`
`MY ACCOUNT
`
`SHOP
`
`SHOPPING CA5
`
`i5Ey_RC’H 77 *7 A ~ - _—_
`
`HUMAN NUTRlTlON
`
`ANIMAL NUTRFHON
`
`RESEARCH mo EDUCATION
`
`PLATINUM COMMUNITY
`
`SHOWS AND BTENTS
`
`‘
`
`Q”3"‘"Y3
`Size:
`
`1 lb. s
`
`ship 1-0: ship t.
`
`ADD‘
`
`_
`C) teil a fner
`
`platinum performanceT"" canine
`complete canine nutritional foundation
`
`,
`
`
`
`_
`r
`
`'
`
`Platinum Performance“*‘ Canine
`Wellness and Performance Formula
`was clinically developed to be a
`foundation formula for daily nutritional
`su
`ort. Platinum Performance“
`pp
`Canine is a synergistic formula which
`addresses multiple nutritional
`defienciencies and imbalances that are
`common in most modern canine diets.
`These deficiencies are often the risk
`factors that lead to disease and unsoundness. Experience has
`shown that nutritional supplementation is far more effective
`when these defienciencies are addressed. Platinum
`Performance“ Canine Formula contains nutrient
`combinations that are essential for proper cell function,
`modulate the inflammatory response, promote healing,
`support cardiovascular and joint function, and provide overall
`wellness to your patients. Platinum Performance?” Canine
`Formula is an essential nutritional foundation for both
`
`canine nutrition
`
`F
`
`v products
`
`product categories
`mercantile
`request a product catalog
`how to order
`
`why platinum
`
`platinum community
`
`research and education
`
`FBSOU FCES
`
`preventative and interventional nutritional applications in
`veterinary practice.
`
`Platinum Performance” Canine Wellness and Performance
`formula combines fresh bioactive long and short chain
`Omega-3 Essential Fatty Acids:
`cm ALA: 900mg per scoop
`
`El DHA: 20mg per scoop
`
`El Contains a 2:1 ratio of Omega~3 to Omega-6 Essential
`Fatty Acids to correct fatty acid imbalances.
`El Provides more than 20 trace minerals essential for normal
`cellular division, function and tissue structure.
`
`El Contains 200mg of Glucosamine Sulfate per scoop for
`prevention of joint disease.
`
`D Features multiple free radical scavenging antioxidants
`necessary for proper Omega-3 supplementation
`protocols.
`
`El Contains high—quality soluble and insoluble fiber for
`digestive health.
`
`El Also provides water and fat soluble vitamins required for
`optimum cellular metabolism.
`:1 Other features of the Platinum Performance Canine
`Wellness and Performance formulas:
`
`El Contains 20mg of Carnitine per 100 grams
`
`ci Contains 10mg of Taurine per 100 grams
`
`El Contains 125mg of Arginine per 100 grams
`
`http://www.p1atinumperformance.netlanima1/canine/products/productcategories/product.c . ..
`
`10/ 1 8/2003
`
`
`
`
`
`CPP-generic/nut‘l_found/extra_condition
`
`Page 2 of 4
`
`o Contains 330mg of Glutamine per 100 grams
`
`ingredients
`
`Flax Seed, Flax Oil, Rice Bran, Whey Protein, Sunflower
`Seed, Soy Flour, Cane Molasses, Performance Minerals”,
`Calcium Carbonate, Bio
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