`
`DENNIS P. O'KEEFE‘
`MARK A. KOS LOWE‘
`PAU LETTE R. CAREY++
`ROBERT D. SKENE"
`NICHOLAS J. BERGMAN‘”
`
`
`' RESIDENT MANAGER
`" ALSO ADMITTED IN NY
`"' ALSO ADMITTED IN NY. CA
`9 ONLY ADMITTED IN NY, FL. DC
`u ONLY ADMITTED IN NY
`
`BUCHMAN & O’BRIEN, LLP
`5|O THORNALL STREET, SUITE 200
`
`EDISON, NEw JERSEY 08837
`AT METROPARK
`TELEPHONE (732) 632-9463
`FACSIMILE (732) 632-8760
`WWW.BEV-ALC-LAW.COM
`
`October 6, 2003
`
`TTQE
`
`ATTORNEYS AT LAW ENGAGED IN
`PRACTICE AS A NEW YORK
`LIMITED LIABILITY PARTNERSHIP
`
`
`BIB-6860440
`NEW YORK. NY
`0 ZOE-6386854
`WASHINGTON. DC
`SAN FRANCISCO, CA O 4I5—398-O44O
`
`Box TTAB
`
`Shelley Jamison
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`Re:
`
`Opposition No. 91156850
`
`Dear Ms. Jamison:
`
`Per your request, we enclose a copy of the Exhibit which accompanied Opposer’s Motion
`end the referenced proceeding.
`
`to Susp
`
`Cordially,
`
`BUCHMAN & O’BRIEN, LLP
`
`By:
`
`Paulette R. Carey
`
`PRC/lfb
`J:\Tri-Vin Impons\PRC\com100603.wpd
`
`CC:
`
`David Heasley (without enclosures)
`
`

`

`1
`
`l
`,
`
`
`
`I1§AO 440 (Rev 10/93) [MD Rev. 02/2001] Summons in a Civil Action
`
`
`UNITE-D STATES DISTRICT COURT
`
`_
`FOR THE DISTRICT OF NIARYLAND
`
`
`
`'
`
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`_
`'
`~
`SUMMONS IN A CIVIL CASE
`.
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`m
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`-~v:NrVAL, S.A.R.L- ‘
`Lieudit La Sablette
`44330 MOUZILLO
`France
`.
`N
`
`‘
`
`Plaintiff
`
`.V.
`
`~
`
`TRI—VIN IMPORTS,
`One Park Avenue
`Mount Vernon, NY fiOSSO
`
`INC.
`
`Defendant
`
`’
`
`(Name and address of Defendant)
`
`_
`Serve on:
`Joao A; Oliveira
`Chief Executive Officer
`1 Park Avenue
`Mount Vernon, NY 10550
`
`YOU ARE HEREBY SUMlVIONED and required to serve upon PLAINTIFF-’8 ATTORNEY (name and address)
`
`_
`
`David 'K. Heasley
`Silverbe‘rg, Goldman 8: Bikoff, LLP
`'1101 30th Street, NW
`Suite 120
`—
`Washington, DC 20007
`
`’
`
`days after service of this
`an afisWer to 'the complaint which is herewith served upon you,
`summons upon you, exclusive of the day of service. If you fail to do so, judgment by default will be taken against you for the
`relief demanded in the complaint. YOu must also file your answer With the Clerk ofthis Court Within a reasonable period of time
`after Service.
`
`.
`
`a g a); r ,1;
`
`Felicia C. Cannon
`CLERK
`
`v
`‘1’};
`/’ JZZ
`m— .
`(By) DEPUTY CLERK '
`“A
`
`‘
`
`DATE
`
`‘
`
`‘
`
`_
`
`._
`
`

`

`
`
`QAO 440 (Rev 10/03) [NED Rev. 02/2001] Summons in a Civil Action
`*
`~
`-
`RETLBN OF SERVICE
`
`“
`
`Service of the Summons and complaint Wes made by DATE
`' men)
`NAME OF SERVERdam/7")
`
`TITLE
`
`Check one box beiow to indicate Qupropn'az‘e ‘mez‘hod qfser‘vice
`
`D Served personally upon the defendant. Place Where ‘
`
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`
`‘
`
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`
`[1 Left copies thereof at the defendant’
`discretion then residing therein.
`Name of person with whom the summons and complaint were
`
`'
`
`-
`
`s dWelling house or usual place of abode with a person of suitable age and
`
`D. Returned
`
`'
`
`_
`
`.
`
`
`
` 5141mm OF SERVICE FEES
`
`‘DECIARA'HON OF SERVER
`
`s of America that the foregoing infdrmation
`I declare under penalty of perjury under the laws of the United State
`contained in the Return Of Service and Statement of Service Fees is true and correct.
`
`Executed
`
`Date
`
`.
`
`'
`Signature ofServer
`
`‘
`
`‘
`
`4
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`
`.
`
`______/
`Address ofServer
`_
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`
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`

`

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`
`1
`
`UNTITED STATES DISTRICT CGURT g
`OFFICE or THE CLERK-
`DISTRICT OF MARYLAND
`
`Felicia C. Cannon, Clerk
`
`John A. Cerino, ChiefDeputy
`
`Reply to Southern Division Address
`
`TO:
`
`Party or Counsel
`
`' FROM.-
`
`Clerk .gf Court.
`
`SUBJECT:
`
`' Disclosure of Corporate Interest
`
`Within ten ('10) days of receipt of this notice, please advise the Clerk, in writing, of the‘presence,
`if any, of any undisclosed corporate interest pursuant to Local Rule 103.3, which, «for your
`. convenience, has been printed on the reverse side of this memo.
`’
`
`If there is no such interest please complete and sign the note below. If there is suCh an interest, set
`it forthin detail, in writing.
`
`5.3a;
`
`This information is requiredto inform the Judge to whom this case is assigned of any possible need _
`for disqualification from hearing this Case.
`
`Very truly yours, ‘
`
`' Felicia C. Cannon, Clerk
`
`Clerk:
`
`I certify, as a party/counsel in Civil Action No.
`
`that
`
`_(name ofparty) is not an affiliateor parent of any corporation, and no corporation, uninCorpOrated
`\
`
`association, partnership or other business entity, not a party to the case,. has a financial interest in
`
`the outcome of this litigation as this litigation as set forth in Local Rule 103.3. -
`
`
`
`Signature of Attorney or Party
`
`U.S. District Court Disclosure of Corporate lntercst (Rev. 10/200 l)
`
`
`
`Northern Division - 44l5 US. Courthouse - 101 W. Lombard Street ’ Baltimore, ‘Marylarid 2120l - 410—962—2600
`f
`Southfern Division ° 240 US. Courthouse ' 6500 Cherrywood Lane - Greenbelt, Maryland 20770 - 301—344-0660
`iii
`
`

`

`
`
`1N TEE UNITED STATES. DESTRICT COURT
`'
`FOR THE DISTRICT OF
`
`LOCAL RULE 193.3
`
`DJ
`
`Disclosure of Affiliations and Financial Interest
`
`When filing an initial pleading or promptly after learning ofthe information to be disclOSed,
`counsel shall submit to the Clerk tWO c0pies of a written statement (separate from any pleading)
`containing the following information:
`‘
`'4
`
`a}
`
`Corporate affiliations. .The identity of any parent or other affiliate of a corporate
`party and the description of the relationship between the party and such affiliates.
`.
`.
`r,
`
`case, which may have any financial interest whatsoever 1
`and the nature of its financial interest. The term “financial interest in the outcOrne
`of the litigation” includes a potential obligation of an insurance company or other
`person to represent or to indemnify any party to the case. Any notice given to the '
`Clerk under this Rule shall not be considered as an admission by the insurance
`company or other person that it does in' fact haVe. an obligation to defend the
`litigation or to indemnify a party or as a waiVer of any rights that it might have in
`connection with the subject matter of the litigation.
`‘
`
`55"" n
`
`

`

`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MARYLAND
`
`Plaintiff
`'
`
`VS.
`
`*
`
`I
`
`2
`Civil Action No:
`
`Defendant
`
`_
`‘ ****** l
`
`CONSENT TO PROCEED
`'
`>
`BEFORE A UNITED STATESMAGISTRATE JUDGE
`
`In accordance With the provisions of Title 28 U.S'.C. § 63 6(c), the parties tothe above-
`captioned civil matter hereby voluntarily ’WaiVe their rights to proceed before a United States
`‘ District Judge and consent to haVe a United States Magistrate Judge condUct any and all further
`pr'oceedings in the case, including trial, and order the entry of a finaljudgment.
`
`
`
`
`
`ORDER OF REFERENCE
`
`,that the
`day of
`IT Is HEREBY ORDERED this
`
`.r
`.
`for all
`,
`above-captioned matter be referred to United States 'Magistrate‘ludge
`proceedings and the entry ofjudgment in accordance with Title 28 U_.S.C. § 636(0) and the
`foregoing consent of the parties.
`
`.
`
`
`
`20
`
`-
`
`.
`
`-
`
`.
`
`United States District Judges
`
`US. District Court (Ravi 117.000)
`
`.
`
`é
`
`
`
`
`
`

`

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`Afllfii CIVIL COVAR SEE»er
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`18 required for
`the use of the Cleric of Court for the purpose ofinitiating the civil docket sheet
`(SEE INSTRUCTIONS ON
`_
`3; (a) PLAJNWS
`DEENEANTS
`VlNIVAL S.A.R.L.,
`' TEE—VIN MORTSQ'
`One Park Avenue,
`Lieudit La Sablette, 44330 Mouzillon, France
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`(C) Attorney’s (Firm Name, Address, and Telephone Number)
`’ David K.- Heasley, Silverberg, Goldman & Bikoff,
`LLP, 1101 30th Street, NTW. Suite 120, Washington,
`
`DC. 20007
`
`n. BASIS OF JURISDICTION (rune-x-noirenoxony).
`
`Attorneys (If Known)
`
`.
`
`Robert D. Skene, Buchman & O'Brien, LL
`510 Thomall Street, Suite 200, Edison, NJ. 08837
`
`
`
`
`
`
`1H. CITXZENSEEP OF PRINCIPAL PARTIESéiace an “X” in One Box for
`(For Diversity Cases Only)
`Plaintiff and One Box for Defendant)
`P‘TF
`PTF
`DEF
`U 1
`Incorporated of Principal lee Cl 4
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`TORTS
`CONTRACT
`OTHER STATUTES
`FORFEITURE/PENALTY
`PERSONAL INJURY
`PERSONAL INJURY
`[I 110 Insurance
`[1 «Jo State Reapporiionrnenr'
`1]
`510 Agriculture
`{3 310 Airplane
`[:1 362 Pmonal Injury—
`I] 120 name
`[I 410 Antitrust
`[I
`620 other Food & Drug
`C] 315 Airplane Product
`Med .Malpractice
`D 130 WE Ac:
`E] 430 Banks and'Banking
`[:l 423 Withdrawal
`C]
`625 Drug Related Seizure
`Liability
`El 365 Personal Injury —
`D 140 Nego’n'able Instrummt
`E] 450 Commerce-ICC Reta/etc.
`28 USC 157
`ofProperty 2] USC 881
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`[j 150 Recovery ofOverpayment D 320 Assault Libel &
`Product Liability
`El 450 Dcpor‘iatiOn
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`D 630 Liquor Laws
`neQOin offudgm'ent
`Slander
`[j 353 Alecstos Personal
`[j 470 Racketeer quhienced and
`PROPERTY RIGHTS
`[1 540 rue 8: Truck
`Cl 151 Medicare Ad:
`D 330 Federal Employers’
`Injury Prbduct
`Corrupt Organim'n'ons
`Cl 820 c
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`650 Airline Regs.
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`[I 152 Recovery ofDefaulted
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`Liability
`[1 810 Selective Service
`[j 830 nipy‘zg“
`[3 560 Occupationel
`Snider: Loans
`E 340 Maine
`PERSONAL PROPERTY
`’ [j 850 Seemiiies/Comrnodiriesi
`84o :3 e.“
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`(Excl. Veterans)
`E] 345 Mfine Product
`C] 370 Other Fraud
`Hanna:
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`D 690 Other
`E] 153 Recovery ofOvarpaymmt
`Liability
`C] 371 Truth inLeading
`'
`E] 375 Customer Challenge
`‘
`of Veteran‘sBenefits
`[:1 350 Motor Vehicle
`E] ‘380 OtherPersonaJ
`12 Use 3410
`[j 160 Stockholders' Suits
`D 355 Motor Vehicle
`Prop I Darna e
`D 891 Agricultural Ac:
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`[3 190 OtherContract
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`D mL:bOr/wmt~R613flan: D 363 Ewe/Effigy“, (405(3)) E :3:
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`El 354 3333 Title X“
`g 395 rmnom o,-
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`730 Labor/NLgmLRepcrfing D 355 RSI (40>(g))
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`D 210 Land Condunnation
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`E] 510 Motions to Vacate
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`[j 220 Foreclosure
`[j 442 Employment
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`E] ‘ 740 RailwayLabor Act
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`l5 U.S.C.l 120 (fraudulent trademark registration) ;_ 15 USC. 125(a)(federal unfair competition; common law counts.
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`1N TEE WEED STATES DESTRIGT ‘6‘?
`FOR TEE DISTRICT OF MARYLénn g k
`(Southern Division)
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`VNVAL, SARL.
`K Lieudit La Sablette
`443 30 MOUZILLON
`France,
`'
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`
`Plaintiffi
`
`V-
`
`i
`
`-
`-
`TRI—VIN IMPORTS,- INC.
`One Bank AVenu'e
`I
`Mount Vernon, New York 105 5 O,
`
`' Defendant
`
`CGMPLAJNT
`
`Plaintiff Vinival= Sarl.) sues Defendant, Tri-Vin Imports, Inc, and states:
`
`
`
`1.
`
`. Plaintiff; Vinival, Sari. (“Vinival”) is a corporation organized and existing under
`
`the laws ofFrance. Based in the Loire Valley of France, Plaintifi prodUces
`
`bottles Wines)
`
`Which'it exports to countries around the world, including the United States. Plaintiff has eXpOrted _
`
`and distributed its wines into the United States through a number of importers and distributors
`
`' since at least as early as 1,988.
`
`:2.
`
`i Defendant, Tri—Vin Importsflnc. (“Iii—Vin”), is a corporation organized and
`
`existing under the laws of the State ofNew York, and having its principal o'fiices in Mount
`
`Vernon, New York. It has imported Wine produced by Plaintifffor distribution inthe United .
`
`States since 1999.
`
`

`

`
`
`. NATURE or: TEE ACTION AND RELIEF SOUGHT
`
`.am; fraud unfair competition and tortious
`This is a civil action for,
`3.
`interference with corrtractual and economic relationships.
`Vinival, is the owner of.
`
`, certain trademarks that it places on its wine bottles. Plaintiff‘s trademarks consist of the words
`
`“13m & EAT? / “BORE & MANGER” and designs depicting the food (e.g., pasta, fish, etc.)
`
`i
`
`that complements the Wine contained in each bottle. (See, e.g., Exhibit A.) Plaintifi is the Owner of
`. all right, title and interest in and to these trademarks in the United States. Plaintiffhas filed .
`applications to register certain ofthese trademarks
`the US. Patent and Trademark Office.
`Plaintiffis also the owner ofthe trademark f‘IEAN B-ALMONT”, which is the subject ofpending
`U.S. AppliCation No. 76/447,466 (‘Eichz'bz’t'DJ
`‘
`4.
`‘ Since at least as early as June 25,1999, Plaintifi has used its aforementioned
`
`trademarks in commerce on wine bottles distributed in the United States.
`
`Since on or about June 25, 1999, Defendant TIi—Vin and other US. importers have
`5.
`imported and distributed in therU‘nited States bOttles ofwine produced by Plaintiffand bearing ‘
`Plaintiffs aforementioned trademarks.
`‘
`‘6.
`On or about July 2, 1999, Defendant, acting without Plaintiffs~knowledge or
`authorization; filed applications with the US. Patent and Trademark Ofiice to register three of
`. Plaintiff’s trademarks -.—'depicting_ lamb, fish and chicken—— icor use on wines. In its applications,
`which it filed under oath3 Defendant claimed that it was the owner ofthese trademarks and that it
`
`had used these trademarks on wine in commerce since June 25, 1999, when itbeg'an'importing
`and distributing Plaintiffs wines. As part ofits applications, Defendant. attached Plaintifs
`promotional materials, showmg Plaintiffs trademarks on Plaintif3 wine bottles. (Exhibit A.)
`
`-2-
`
`
`
`

`

`
`
`Defendant thereby fraudulently obtained three federal trademark registrations from the US.
`
`Patent and TrademarkOfice: Supplemental Registration Nos. 1380,13 8, 2,3 80:139 and
`_ 2,380,140. (Exhibirfi) -
`I
`7.
`'
`iBeginning in or about My 2002, Plaintifiinforrned Defendant that Defendant’s
`Sales ofPlaintiffs “DRINK AND EAT”/ “BOIRE & MANGER” brand. of wines were low,
`
`declining: and unsatisfactory; below Plaintifi’ s expedations. Plaintiff therefore indicated that it
`
`was contemplating increasing its use of other importers/distributors for this brand in the United
`
`__States. Plaintiff also informed Defendant that it intended to change its system for importation and
`
`distribution ofits Wines from a three-tier'systern (from importers to distributors to retailers) to a
`two—tier system (from importer/distributors to retailers). Plaintifffurther indicated that it was
`increasing the price ofthe ;;DRB\1K AND EAT”/ “BORE & MANGER” brand ofwines to all of
`its importers, including Defendant.
`V
`v
`I
`
`. 8.
`
`In response) Defendant asserted that it was entitled to be Plaintiffs exclusive
`
`importer and distributor ofwine in the United States. In an effort- to coerce Plaintiffto sell the
`
`‘TDRINK AND EAT”/ “B OIRE & MANGER” brand of wines exclusively to Defendant at the
`
`previous low price, Defendant revealed to Plaintifithat it had procured the three registratiOns of
`Plaintiff’s trademarks from [the US. Patent and Trademark Office, and proposed to transfer the
`three registrations to Plaintifiif and only ifPlaintiff agreed to designate Defendant as the sole and
`eX'clusive importer ofPlaintfis wines. Alternatively, Defendant'dernanded thatiPlaintiffpay
`Defendant 3200500000 to transfer the three registrations to Plaintifii IfPlaintiff did not
`
`' capitulate to these demands, Defendant threatened to record its three fraudulently Obtained
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`trademark registrations with the U. S. Customs Service, preventing Plaintiff" s shipments fiom
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`-3-
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`

`

`
`
`
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`imported into the United States by other importers.
`
`9.
`
`Upon learning ofDefendant’s fraudulently procured registrations, Plaintiff
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`immediately demanded that Defendant transfer these registrations to Plaintiff, but Defendant
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`failed and refused to do so.
`
`'
`lO.
`IfPlaintifi‘ does not give in to Defendant’s demands, Defendant has also threatened :
`to “enforceits trademark rights” in the trademark “lEAN BALMONT” against Plaintiff, which
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`has been exporting and distributing “LEAN BALMONT” Wine to the United States for several
`
`years. The “JEAN BALMONT” trademark is, in fact, owned by Plaintifl‘, and is the subject of
`
`Plaintifi’s pending application with the US. Patent and Trademark Ofiice, Application Serial No.
`
`76/447,466. (Exhibit D.) ‘
`
`' 11.
`
`The acts ofDefendant complained of herein have caused and threaten to continue
`
`to cause irreparable injury to Plaintiff"s goodwill, and Plaintifi”will continue to be irreparany '
`
`injured unleSs it is afiorded declaratory, equitable and legal remedies against Defendant.
`
`12.
`
`Plaintiff seeks declaratory relief, declaring that it is the sole owner ofthe -
`
`aforementioned trademarks, and that Defendant hascommitted fraud upon the US. Patent and
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`Trademark Ofiice by fraudulently procuring registrations of s trademarks. Plaintiff also _
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`seeks preliminary and permanent injunctive relief enjoining Defendant from filing any documents
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`with the US. Customs service or any other g0vernmental agency that Would impede Plaintiffs
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`eirpcitation ofWines into the United States,'and requiring Defendant to transfer the three subject
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`federal trademark registrations to Plaintiff Without charge. Plaintifi additionally seeks an order
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`directing Defendant not to mtertfere With Plaintiffs present and fiiture contractual and economic
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`relationships With other importers and distributors. Plaintiifalso seeks an award of damages
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`-4-
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`

`

`
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`against Defendant, plus attorneys’ fees and costs.
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`'i mnisntcrrois AND vnmrn
`
`i This court has jurisdiction over the subject matter ofthis actiOn pursuant to 15
`13.
`U.S.C. § 1121, 28 U.S.C. §§ 1331, 133 8(a), 1338(b)-; and under this Court’s supplemental
`jurisdiction pursuant to 28 U.S.C.§ '1367.
`i
`14,
`Venue is proper under 28 U.S.C. ,§1391.(b). Defendant has cendiJcted substantial
`and contimioUs business in this jurisdiction, including the sale and distribution ofnumerous cases
`ofwine bearing Plaintifi’s trademarks, and has purposelyavailed itself ofthe benefits and
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`protection of the laws of this jurisdiction, such that it could reasonably anticipate being haled into
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`court here.
`
`_
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`-
`_
`-
`_
`COUNT}
`.
`FALSE OR‘FRAUDIHJENT TRADEMARK REGISTRATION
`15 U.S.C.§ 1120. Section 38 of the Lanham Act '
`
`15-.
`
`Plaintiff incorporates by reference all factual averments set forth in the preceding
`
`paragraphs of the Complaint.
`
`"\
`
`Plaintiff owns the word trademarks “DRINK & EAT” and “BORE & GER”
`16.
`for use on Wines. Plaintiff also owns the designtradeinarks depicting foods (such as lamb, beef,
`chicken, fish, and pasta) to be paired With the wines in its bottles.
`
`17.
`
`Plaintiff has used the aforementioned Word and design trademarks on wine
`
`I
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`in commerce with the United States since at least as earlyas June 25, 1999.
`
`.18.
`
`Plaintiffhas ~filed Applications with the United States Patent and
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`Trademark Office to register certain ofthe aforementioned trademarks in the United States,
`
`(Emma) _
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`
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`

`

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`19.
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`Since 1999, Defendant, Tri—Vin, as one ofs importers, has imported and
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`distributed in the United States wine produced by Plain‘d'i bearing Plainnifi"s aforementioned
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`trademarks.
`
`20.
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`As one ofPlaintitf’s importers and distributors of wines, Defendant knew, should
`
`have known, or had reason to know ofPlaint‘f’s ownership of and rights in and to its trademarks‘
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`_"' for use on wines.
`
`21.
`
`Plaintiff has not authorized or licensed Defendant to register any of
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`1
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`Plaintiff s trademarks.
`
`On or about July 2, 1999, Defendant, acting without Plaintifl’s authorization or
`'22.
`knowledge, filed applications with the US. Patent and Trademark Office tor‘register' three of
`Plaintifi’s design trademarks -—de‘picting lamb, fish and chicken—- for use on wines. In its
`
`——applications, which it filed under oath, Defendant claimed that it was the owner ofthe marks and
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`had uSed these marks on wine in commerce since lune 25, 1999, when it began importing and
`distributing Plaintifs wines. As. part iofits applications, Defendant attached Plaintiffs
`promotional materials, showing Plaintiff3 design trademarks on Plaintifi’s wine bottles.
`
`23.
`
`I'Defendant, as one ofPlaintiff"s importers and distributors, has not used the subject
`
`trademarks in commerce or acquired any" trademark rights in the Subject trademarks, Which remain
`the property ofPlaintiffVinival. The US. Patent and Trademark Office Trademark Manual,of
`Examining Procedure prmddes in pertinient part that:
`_
`
`A distributor, importer or other distributing agent ofthe goods of a manufacturer or
`producer does not acquire a right of ownership in the manufacturer’s or producer’s mark
`merely because it moves the goods in trade.
`A party that merely/distributes goods
`bearing the mark of a manufacturer or producer is neither the oWner nor a related—
`company user of the mark.
`
`
`
`
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`

`

`
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`Trademark Manual of Examining Procedure §12O 1 . 06(a).
`
`- 2"
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`Defendant intentionally misrepresented to the US. Patent and Trademark Ofice
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`that it was the owner of Plaintifi"s subject deéign trademarks, and intentionally concealed and
`
`tyithheld the information that Plaintiff is the manufacturer and producer that owns the subject
`design trademarks. By so doing, Defendant committed fraud upon‘the US. Patent and Trademark
`Officer, and procured three federal trademark registrations on the Supplemental Register, Nos.
`
`3
`7
`2 380 13 8, 2,380,139 and 2,3 80,140, through false or fiaudulent means.
`25.
`Recently, on or about October 9, 2002, Defendant revealed to Plaintiffthat it had
`
`obtained the three subject federaltradema-rk registrations.
`25.
`Plaintiff immediately responded by letter on October 10, 2002, informing
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`Defendant that “...Tri Vin was not authorized to register our bottle designs With the US Patent
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`and Trademark Office. All three registrations should be assigned to Vinival as soOn as possible.”
`
`' (Exhibit C.)
`27.
`
`Defendant has failed and refiised to assign the three subject trademark
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`registrations-to Plaintiff.
`28. I
`Defendant’s procurement ofthese registrations by false or fraudulent means has
`caused and Will continue to cause irreparable damage to Plaintiff. Defendant’s three fraudulently;
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`' procured federal registrations will prevent Plaintiff 5 applications for federal registration ofits
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`trademarks from progressing to registration. Further, Defendant has threatened to record its three
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`fraudulently-procured registrations With the US. Customs Serr/ice in an effort to block Plaintifi’s .
`eXpOitation ofwines into the United States thrOugh other importers or distributors. Defendant’s
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`fraudulent registration ofPlaintiff“ s trademarks undermines the source—identifying purpose of
`
`-7-
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`

`

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`trademark protection> and creates the erroneous impression that any products bearing the subject
`
`trademarks are associated with Defendant. This places Plaintfis trademarks, reputation, and
`goodwill at risk ofserious injury and loss ofvalue.lPlaintifihas no control over Defendant’s use
`ofthe three subject trademarks: nor over the quality ofgoods Defendant provides under those
`marks. Since goods’under these marks are associated with Plaintiff, any defects in the quality of
`such goods will be attributed to Plaintifi iUnleSs Defendant is enjoined, PlaintiffWill Continue‘to
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`suffer irreparable damage which cannot be remedied by a monetary award alone.
`29.
`15 U.S.C.
`1120 prOvides that any person Who shall procure registration in the
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`US. Patent and Trademark Ofice of a mark by'a false or fraudulent declaration or representation,
`oral or writing, or by any false means, shall be liable in a civil action by any person injured
`
`r
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`therebyrfor any damages sustained in consequence thereof. 15 U.S.C. § 1119 further provides
`that the Court may determine the right to registration, order the cancellatiOn ofregistrations, and
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`» otherwise rectify the Register with respect to the registrations of any party. ' The Court may
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`exercise these powers under its «general grant ofjurisdiction over all actions arising under the
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`Lanharn Act. 15 Use. §112i
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`WHEREFOKE Plaintiff Vinival reSp ectfully requests entry ofjudgment against Defendant
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`for the remedies prayed in this Complaint.
`
`‘
`_
`COUNT n
`UNFAIR COMPETITION
`' 15 U.S.C. §'1i'25(a). Section 43(a) dram Lanham Act
`
`3 0.-
`
`Plaintiff incorpOrates by reference all factual averrnents set forth in the preceding
`
`paragraphs of the - Complaint.
`
`31.
`
`_ As an importer and distributor of Plaintiff s wines-Defendant knew,
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`-8;
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`

`
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`should have known or had reason to know ofPlaintifi‘ s ownership of and rights in and to its
`
`trademarks for use on Wine.
`
`32.
`
`Plaintiff has not authorized or licensed Defendant to use or register any of
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`Plaintifi“ s trademarks.
`
`33.
`
`Defendant has nonetheless willfiilly misappropriated and registered Plaintifi"3
`
`design trademarks- Defendant’s misuse ofPlaintiff3 design trademarks constitutes a false
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`designation of origin, false or misleading descriptiori‘offact) or false or misleading representation.
`— of fact that is likelyrto cause confusion, mistake, or deception as to the affiliatiorg connection or
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`association ofDefendant With Plaintiff, or as to the origin, sponsorship, or approval of.
`
`Defendant’s goods, services or activities
`
`Plaintifi: in violatiOn of Section 43 (a) of the Lanham
`
`Act, 15 use § 1i25(a)_
`
`34.
`
`Further, Defendant has threatened to record its three fiaudulently—obtained
`
`registrations with the US. Customs Service in an efiort to block Plaintiffs exportation ofWines
`into the United States through other importers and distributors, ifPlaintiff does not begin to use
`Defendant as the exclusive importer and distributor ofits Wines. Defendant thus intends to use its
`
`fraudulently-obtained registrations as a means of unfairly preventing competition by other
`importers and distributors, and ofmonopolizing importation ofPlaintifs Wines
`
`I 35.
`
`Defendant’s unauthorized registration, use, and threatened use ofthese
`
`._ registrations has caused and will continue to cause irreparable injury to Plaintiff, its name and
`
`reputation, and the gOOdivill that it has built up in its trademarks The presence ofDefendant’s
`three fiaudulently—obtained federal registrations may be cited by U._S. Patent andTrademark
`
`Office examining attorneys as a basis for refusal of Plaintiff" s applications for federal registration
`
`-9-
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`
`

`

`
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`of its trademarks Defendant’s false designation ofitself as the origin ofPlaintifi7s goods
`
`undermines the very source—identifying purpose of trademark protection, and creates the
`
`erroneous impression that any products bearing the subject trademarks are associated with
`Defendant. This places Plaintifi’s trademarks, reputation, and goodwill atrile ofserious injury
`
`and loss 'of value. Defendant has also made spurious claims that it owns Plaintiff’s “JEAN
`
`BALMONT” trademark, and has threatened to ‘enforce its rights’ in that trademark against
`
`- Plaintiff, preVer'iting Plaintifi from exporting wines under that trademark into the United States
`through other distributors. Unless Defendant is enjoined, Plaintiffwill continue to surfer
`irreparable damage which cannot be remedied by a monetary award alone.
`I
`56.
`Plaintifiseeks reliefpursuant to Section 44(h) ofthe Lanham Act, which provides
`that citizensofforeign nations with which the United States has a trademark, trade name, or
`
`‘
`
`unfair competition treaty, ‘shall be entitled to efiective protection against unfair competition, and
`
`the remedies provided in this chapter [the Lan‘riam Act, 15 U.S.C. §1051 et seq] for infringement
`
`of marks shall be available so far as they may be appropriate in repressing acts ofunfair
`competition.” 15 U.S.C. § 1‘126(h)4. The limited States and France are parties to the International
`Convention:for the Protection ofIntellectual Property, 21 VU.SI.T. 1583, T.I.A.S. No. 6923.
`is therefore entitled to protection ofits trademark rights.
`-
`PlaintiffVinival reSpectfiilly requests entry ofjudgment against Defendant
`Iii—Vin for the remedies prayed in this Complaint.
`-
`
`'
`
`COUNT E1
`COlVMON LAW TORTIOUS INTERFERENCE WITH CONTRACT
`
`37.
`
`Plaintiff incorporates by reference all factual averments set forth in the preceding
`
`-10-
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`

`

`
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`paragraphs of the Complaint.
`
`38.
`
`Plaintiff has used in the past, continues to use, and intends to continue to use
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`a'nurnber of United States importers and distributors of its Wines other than Defendant.
`39.
`Plaintiffhas informed Defendant, and Defendant has actual notice and knowledge,
`that Plaintiffintends to Continue exporting and distributing its products in the United States
`
`through contractual relationships vvith importers andidistributors other than Defendant, and to
`
`increase the number of importers and distributors Plaintifi uses in the United States.
`-
`40.
`Defendant has interfered and threatened to interfere
`Plaintifi’s contractual
`' relationships with other importers and distributors by threatening to record its three fraudulently
`obtainedtrademark registrations With the US. Customs Service, thereby preventing Plaintifi7s.
`shipments fiombeing imported into the United States. Defendant has also made spurious claims
`I that it owns Plaintiffs “JEAN BALMONT” trademark, and has threatened to ‘enforce its rights’
`
`in that trademark against Plaintiff, preventing Plaintifi fiorn exporting Wines under that trademark
`
`into the United States through other distributors.
`41.
`Defendant’s aforementioned acts ofinterference are undertaken for the‘wrongfiil
`
`purpose ofpreventing Plaintififrom continuing contractual relationships with. other importers and
`distributors in the United States.
`i
`
`‘
`
`‘
`
`42.
`
`Defendant’s acts of interference are undertaken through dishonest, unfair, and
`
`improper means.
`
`43,
`
`Plaintiff oWns the trademarks which Defendant has fraudulently registered on the
`
`United States Supplemental Register, Nos. 2,380,13 8, 2,380,139 and 2,3 80,140. Plaintiff also
`
`owns the “JEAN BALMONT” trademark. Exhibit D.)
`
`-11_
`
`
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`

`

`44.
`
`Defendan‘fis aforesaid wrongful acts have and Will injure Plaintifi’s contractual and
`
`prospective economic relationships with other importers and distributors. Defendant’s
`undertaking to recOrd its fraudulently—obtained registrations with the US. Customs Service; and
`
`its threats to “enforce its trademark rights” in the “JEAN BALMONT” trademark, threaten
`imminent litigation and harm to Plaintiffand any other importers or distributors with Whom .
`Plaintiff endeavors to transact business. Defendant’s wrongful acts would naturally tend to
`
`discourage prudent business persons from continuing contractual relationships with Plaintiff
`because the Wines that are the subject oftheir dealings may be irnpounded at port or subject to
`claims oftrademark infiingernent. Unless restrained and enjoined; Defendant’s acts will Cause
`Plaintiffirreparable injury that cannot be redressedby a monetary award alone.
`
`WIEEREFORE Plaintiff Vinival respectfully requests entry ofjudgment against Defendant
`
`Tri—Vin for the remedies prayed in this Complaint.
`
`COUNT IV
`C