‘I’
`
`; 175
`
`‘.111:::!‘x-
`
`“ii?-.T
`
`08-14-2003
`u.s.mnnt&TMO'°'TM W‘ '‘°°‘°'- ‘'22
`
`W6
`
`BOX: TTAB NO FEE
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Before the Trademark Trial and Appeal Board
`
`IN RE:
`
`.
`
`Application SN 78/117,939
`
`Trademark:
`
`UNCLAIMED DIAMONDS
`
`Applicant:
`
`Published:
`
`Bond Jewelers, Inc.
`
`July 15, 2003
`
`Attorney Docket No:
`
`30061 19-0001/02US
`
`W
`
`REQUEST TO SUSPEND PROCEEDINGS § 2.117
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Dear Sir or Madam:
`
`1‘
`
`‘:3
`
`,
`,
`“°
`
`1-»
`
`On behalf of Rosdebor International, Inc. of Philadelphia, PA, we request
`
`that further proceedings in this matter be suspended pending the termination of the civil
`
`action filed in the Eastern District of Pennsylvania styled Bond Jewelers Inc. v.
`
`Rosdebor International, Inc., et al., Civil Action No. 03-3502, (USDC ED of PA).
`
`Applicant is plaintiff in the above litigation in which the mark that is
`
`subject to this application has been asserted against the potential Opposer. A copy of the
`
`Complaint filed in the above action is attached as Exhibit 1. In answer to the Complaint,
`
`potential Opposer has asserted that the claimed mark is invalid as being generic and has
`
`filed a Motion for Summary Judgment which is now pending before the Court.
`
`PHDATA ll32726_l
`
`

`
`Y)
`
`'1!)
`
`As the above litigation is likely to have a significant bearing on the
`
`registrability of the claimed mark, potential Opposer requests that any opposition
`
`proceedings be suspended pending the outcome of the litigation.
`
`Respectfully submitted,
`
`DER HARRISON SEGAL & LEWIS LLP
`
`SCHN
`
`Dated: August 8, 2003
`600 Mt Street, Suite 3600
`
`Philadelphia, PA 19103
`(215) 751-2622 (voice)
`(215) 972-7677 (fax)
`jmeyer@schnader.com (Internet)
`
`ATTORNEYS FOR POTENTIAL OPPOSER
`
`PHDATA l132726_l
`
`

`
`Certification Under 37 CFR 1.8
`
`I hereby certify that this paper or fee is being deposited with the United
`
`States Postal Service with sufficient postage as first-class mail under 37 CFR 1.8 on the
`
`date indicated below addressed to:
`
`Commissioner for Trademarks
`BOX TTAB NO FEE
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Craig J. J. Snyder, Esquire
`67 Wall Street, Suite 2211
`New York, NY 10005
`
`Anna M. Durbin, Esquire
`50 Rittenhouse Place
`
`Ardmore, Pa 19003-2276
`
`Date: August 12, 2003
`
` Z 1
`
`Name: Maria Thompson
`
`PHDATA l l32726_1
`
`

`
`
`
`
`
`
`
`JS 44 (Rev. 3/99)
`
`I
`CIVIL COVER SHEET
`The J5-44 civil cavervsheet and Information contained herein neither replace I-tor supnlamertt the filing and service at pleadings or other papers as ‘-;
`by law. except as prowacu by local rt.tIB§ c_It_cc_>urt. Thrs torm. approved by tho Judlcrai Conlerencu of me Untied States In September 1974. is required to
`o the Clerk of Court for the purpose at tmttaltng the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`1. (a) PLAINTIFFS
`DEFENDANTS
`Bond Jewelers, Inc.
`
`Rosedebor International, Inc.. Rosedeborcom. Inc., Samu ‘
`Vayner and Boris Vayner
`
`if
`
`(I3) COUNT?’ GI’ RESHDENCF OF FIRST IIBTEC PLAINTIFF _«
`IEXCEPT IN u.s. PLAINTIFF CASES)
`
`
`
`Philadelphia
`
`
`
`__
`CUIJNI v or wr SIDLHCE oi. LIRST ustco DEFENDANT _______ __
`If
`(IN u.s. PLAINTIFF CASES ONLY)
`NOTE IN LAND CZONDEMNATION cAsr.s, um IHI: LDCATION rt: I I,
`rrucr or LAND ~voI.\/an
`
`/I1‘ronNf.Y3 III" KN‘>W”3
`Unknown
`
`.
`
`I!-
`5.
`If
`,1
`
`(C) Atronutzvs IFIRM NAM_L wmzazs mu its PPHONE nuunem
`Law Offices of Anna M. Durbin
`50 Riitenhouse Place
`Ardmore. PA 19003-2276
`II. BASIS OF JURISDICTION
`
`(610) 649-8200
`temcz «N 1' IN ONE BOX arm;
`
`I U 5. Government
`_
`Plaintiff
`2 us, Government
`Detenctant
`
`X s Federal Question
`(U.S. Government Not a Party)
`a Dtvcrslty
`(Indicate Citizenship or Parties
`'" "em "D
`
`
`
`IV. NATURE OF SUIT (PLACE AN "
`"IN ONE BOX ONL Y)
`
`
`CONTRACT
`_ TORTS
`BANKRUPTCY __"I
`FQ_I_-2fEITURElPENALTY[
`
`:0 .,,“.,,,.,c,
`95 RSON/XI-. INJURY
`1?‘? Anpo.tI- 75 USS '|5.’-
`to Aqtcytt-m;
`II
`PERSONAL INJURV
`
`
`20 M,,,,,“.
`-<0 Airplane
`35? F¢':t¢MI Intwy -
`7¢ Other Fwd 5 Drug
`
`.39 mm 4;;
`1!: Airplane Product
`1:3 Wvlmtlanrog
`It/Icdt Malatitcltcn
`1‘; Dru Rréalttd suave
`
`
`
`
`-4° Ne90,,¢b1e,,,,,W,“,,,,,
`L'|IDtII|1
`ZGUSC I.II
`‘ 55 Pevsolul |_n,ury .
`at
`Ioperw 2| LISC M1
`
`sa ntmmmyot Overpayment
`I20 Anna;-It um 5
`—- -~---—-<-—-~ ---w
`Prov-Isl LIWII-Iv
`.10 Iicuo! La-vs
`
`
`
`
`A Evinrcer~.m1oi.It-6-,1!-‘Ital
`SI-ndm
`ma A,ts«.:... t=.».-m\.u
`no me. ti Tluuk
`WROPFRTY RIGHT§_
`I5! Mctoacavu MI
`#30 T 0.519‘-‘I. Frs!:\II:ye«:-
`tau Am M Regs.
`I"i\"Y "'W|‘G' I-‘O’-""1
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`52 huctmtytti Detnutted
`‘tuatvitty
`;;o Ogcupgumjgj
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`‘5é‘fg,°{,'MtE2g‘f“:,
`ut; u,...,,.,
`5a'cIyMcotlh
`nercsouat. PROPERTY
`tleaurti
`
`
`53 Ruawh, 0. Q,¢,p,,m,M
`14:: Hanna Imutvcl
`-140 other
`X I’
`"0 other Haunt
`"m"‘“"'
`
`(II Vuetitfi; B¢flF_IlI§
`-4
`I-‘3I’“I)
`I71 1.'uII'I In Lcnctttg
`If!) Motor vemm
`Is!) otr-at versot-.aI
`.
`‘60 smkhddufi 3”"
`if;-‘I Mum: V-flltcii
`. Property carnage
`‘
`'
`
`I?“ W!’ WW-‘CI
`Dru-taunt Ltatt-Iy
`,5: p,,,,,,,,, D,,,,,9.
`no Fair Labor Standards
`.z:-. V|At\3I1.\I‘I
`
`19$ Contact Product Lmt;-I-ty
`I60 om: Pmsom! trttury
`I"’°W¢I L'0D"”Y
`'67 “I“"" I “"9 5973}
`A“
`._..—-..:
`20 Lava:/ugmt Retutrum
`63 DI\VClDIWWW:vttt))
`REAL PROPS RTY
`CIVIL RIGHTS
`PRISONER PETITIONS
`I5‘
`"It: xv:
`‘''‘‘j‘'’'''‘'‘ “"
`7'0 Lnlmt-‘M mzi
`ring
`05 .
`(40 I3):
`" '
`to land CDttflfl‘N7:|"W'
`14; Vol-M,‘
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`4" 17'"l"l=1'“E'\'
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`M3 Itmtax.-I9;
`“.95” c.°”U5‘
`I
`'
`‘ Ax "U'...I.5'
`4o"ms.Io Lana
`Accotvtmocatrons
`'53‘ “'“"“
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`or rygtenuntz
`*'
`'
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`339. D5,... p,..,.ny
`90 other Labor Lu-nation
`no Tum. (U 5 m'_“_,,
`45 Tot! Produm lIImI‘IIv
`'
`' V'“'""°
`14¢ Mgnggu-N5 5. Omqy
`390 In! ctrIo- Rm! via.-tctty
`MI: 0010! cm: ’1I(z'Il‘.|
`M, cw” mom‘
`,1. PW, R“ [M
`
`
`.55 Prison C(>\‘\fliu't-1|
`-‘I’-4w-Iv An
`9". ‘\II‘;.‘f..w5‘tl.~:'‘I‘f-'(',‘l
`.......——.. . ——..
`...—_.
`_.......J.___........__.,..—._........—.-'.
`...—....,. .._......._.._.I
`(PLACE AN "X" IN ONE BOX ONLY)
`Transferred from
`Muiiidisttici
`another district
`Reinstaled or
`J Remandcd from
`I Removed Irnrn
`1 Original
`
`(speI=II_vI
`Lthgaitvn
`Reopened
`Aggauate Conn
`State Court
`Proceeding
`‘I'_IIC ..I s cIvI'. 5'IA‘I'UTE UNDER wt-ucn vou AI'-lI- I-ILINGAND wmre ttt-utzr sv.ArFMt'-N1 or cause.
`VI. CAUSE OF ACTION /r:~r=.
`l'lDI=HII'!If\MA| cw ATll7=l_ ztut mac ntuzpmrv .
`hft un-r FIT:
`15 U.S.C. Section 112S(a). 15 U.S.C. Seclion 1125(t:). Service mark infringement. service mark dilution and unfair competition.
`
`-
`
`
`
`
`
`
`
`
`
`.
`.
`'
`
`I
`
`I
`. F -
`
`'
`
`
`
`V. ORIGIN
`
`I
`
`I
`I
`______
`_;_2'_rr_1_tT—'r< S‘IA Lit
`ICII: mate Ctgumtmtt-7
`
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`
` VII. REQUESTED IN
`A CLASS ACTION
`COMPLAINT:
`_ I
`VIl|.|F:EAL&AYTED CASE(5)(Scc Instructions): JUDGE. -
`5ICvNfl'IUFE OF v\"l1DRNF.-‘Y F R
`'43!‘
`.
`p/IVE
`I
`FOR OFFICE USE ONLY
`L’;
`
`*
`
`DEMA'ND
`‘
`
`’”’”"°""e R°""'
`
`D
`
`JURY DEMAND’
`W.,C,:FT N,_'M,”_,.{
`
`“F5
`
`,
`X "' I
`
`—'‘Z‘‘’ If
`
`REC-HPT L:-:—————— AMOUNL.-I
`
`APVLVING IF“-———--:——.
`
`I—.....
`
`.|UL7GE—-——-:- .j- -...-_ MA‘-G. JUDGE
`
`"
`III. CITIZENSHIP OF PRINCIPAL’ PARTIES (PLACE AN 'x' IN ONE nox con NNTIIT
`AND ONE BOX ran OEFENDANI ‘If;
`(For Diversity Cases Only)
`PTF DEF
`it DEF
`Citizen at This Stale
`Incorpuraiad or Principai Place
`4
`oi Business In This State
`Incorrmratoc and Pnncinal Place
`oi Business In Anoihm State
`Furalgn Nation
`
`Citizen oi Another State
`Citizen Gt‘ Subject of a
`Fotot n Counlr
`
`L’
`
`2
`
`,_,
`
`:.
`
`
`
`

`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PF.Nl\’SVl.,\’ANlA
`
`
`
`E M 4\lAGElVlE'\lT TRACK ESIGNATION F RM
`
`
`
`Bond Jewelers,
`
`inc,
`
`2
`
`CNN. ACTION
`
`V.
`
`.
`
`.
`
`.
`
`-
`;
`
`Rosedebor International, Inc.,
`Rosedebor.c:oItt,
`Inc.», Samuel Vayner,
`and Boris Vayner
`In accordance with the Civil Justice Expettse and Delay Reduction Pltm ofthis court. counsel for
`plaintiff shall complete ta case Mztnag<:mcntTr:tt;k Designation l-‘orrn in all civil cases at the time
`offiling the complaintand serve 21 copy on all dcfctidants. (See ,8 1:03 ofthe plan set forth on the
`reverse side ofthis form.) in the event. that a defendant does not ngrt:.t2 with the pluintifircgttrtling
`said designation. that defendant shall, with its First appearance. submit to the clerk of coun and
`serve on the plaintifi' and all othci'p2n1ies, a case managcntent track designation form specifying
`the track to which that defendant bL‘.llCV€S the case should be assigned.
`
`N0-
`
`SELECT ONE OF THE FOLLOVVINC CASE MANAGEMENT TRACKS:
`
`(at)
`
`(bl
`
`(c)
`
`(ti)
`
`(6)
`
`(f)
`
`Habeas Corpus -- Cases brought under 28 U.S.C‘.
`§224l through 92255.
`
`Social Security -~ Cases requesting review ofa
`decision ofthe Secretary ofl-lealth and lluman
`Services denying plainlil'TSncial Security Benefits.
`
`Arbitration —- Cases required to be designatcd for
`arbitration under Local Civil Rule 53.2.
`
`Asbestos -- Cases involving claims for personal
`injury or property damage from exposure to
`asbestos.
`
`Special Management -— Cases that do not fall into
`tracks (ti) through (d) that are commonly referred
`to as complex and that need special or intense:
`niunaigeiiient by the court.
`(Sec reverse side of
`this form for at detailcd explanation of special
`mztnagt-.‘.mt:nt cases.)
`
`t"
`
`)
`
`(
`
`(
`
`)
`
`)
`
`t"
`
`l
`
`(
`
`)
`
`Staiidarcl Mzmagemtznt ~- C‘-ases that do not fall ‘
`to
`'
`any one nfthc other tracks.
`
`
`Attorney-at-law
`_?,)4ttwr7'lr’.F
`Al1orne_v for
`
`D it:
`
`"V
`
`((‘i\'. 660] 7/95
`
`

`
`
`
`
`
`
`
`UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA -- DESIGNATION FORM to be used by counsel to indicat: the category of I14: case f-
`purpose or assignment to tppropriate calendar.
`
`.
`
`:5»
`‘L.
`
`I
`
`Address oi Piaintitt:
`
`Bond Jewelers, 113 South 8th Street, Philadelhia, PA 1106
`Rosedebor Intemauona ,
`. ,
`0 1 South =
`Street,
`- . loor,
`Addttss of Daiandant: .5 _:‘==:
`,. =4?
`_
`_ _ :_,_ _
`._ _, _
`E:
`' _
`_ ___ ,___
`3 . ,
`_ _
`__
`-
`.
`'
`”
`‘ “ “
`-
`‘
`6
`Place of Accident. Incident or Transaciioie hla” A
`
`
`Defendant’ 5 addresses above and the intern:-2t(”59 "'°"‘""" 5"” ‘"°' “""“"""“ 5"‘“"’
`
`u
`
`'1
`- "ét'Iade1ph.ia
`
`,
`_ 1 NO
`1'
`'; ,
`‘
`'
`
`Does lhis catseinvolve mulidistrict Iltgaiion possibilities?
`RELATED CASE. IF ANY.‘
`
`mfl
`
`mfl
`
`Case Number
`
`
`Judge
`
`Date Terminated: _
`
`._
`
`1.F
`
`.
`
`Civil cases act deemed related when yes is arswerad to any of the tollowlng questions:
`
`1
`
`isthiscaserelatedtopropenyinciuoeahaneariiernumberedsuitpendingorwithinoneyearpreviouslytctrrrnnatcdactionInIriscourt?
`actioninthis court’
`terminatedaction inthis court?
`
`YESD
`
`2, Does this case invnlvolhe same issue at fact or growout oi the same transaction as aprior 5'-Iii Pt-‘'‘‘J'''‘9 *1 WW1" We Y93"P"<?V‘°"*-“Y “-"""'"5‘
`
`3. Does this case invoive the vaiictity or infringe:-nent ot a patent airaady in suit or any earlier numbered case pendng nr within one Vt‘-at t"€tV10*-'1'»
`.-~
`
`‘v'es..i
`
`iu'3'§$
`
`r
`CIVIL. (Piacc L]
`
`in ONE CATEGOVY ONLY)
`
`Yes!-I
`
`Nag;
`
`iit ii1I
`
`i
`
`ii
`
`5i tAiVi
`
`i I1
`
`.
`
`‘
`
`use
`
`A, Federal Ql£tSUOI'i Cases‘
`Indemnity Cmtr.-tat. Marina Contract. and,Ati Otter contracts
`FELA
`Jones Act-Personat iniury
`
`P9N.-
`
`Antitrust
`Patent
`5,
`Labar-Management Rutaiioi-is
`8.
`7. U Civil Rigits
`8_ B Habeas Corpus
`9.
`1.-.] Securities Actts) Cases
`i
`"'1
`social security Review Cases
`1o_ __i
`11.}? Ailothei FudraralOu6tion Cases'I‘.i.‘adaTiark ~ LarLha.m Pct
`(Please specify)
`
`£3. Diversity Juirsdictiort Cases.‘
`1. L]
`insurance Contract and other Conracts
`7,.
`Airplane Personal injury
`3.
`Assault, Defamation
`A H i~/ignite: F-"c-‘sonatinjury
`5, D Motor Vehicle Personal injury
`8.
`other Personai injury (Please specify)
`7 D Products Liabtiity
`B.
`Prouucts i.iabiiity—-I\sbt:stU5
`9. D
`All other Diversity C5595
`
`(Please specify)
`
`ARBITRATION CERTIFICATION
`(Chock appiupriate Category)
`
`;
`
`
`. counsel of record do hereby certify:
`1.
`Anna M‘ Durbln
`E Pursuant to Local Civil Rule 53.2. Section 3(c)(2). that to the nest oi my knowledge and Detiet. the damages |'¢,(:tJ\'Ot3ble in this cwii act: ;
`wceed the sum at 51.50.000.00 exmusi/e of inteiesi and costs;
`'7
`Q Raiici on-L-,r than mor-teary damages is soughl.
`
`DA1'E:Ju.n€
`5 1
`
`/*~/\§
`
`
`
`30 555
`
`AUOVHEV ' D 3
`Attorney at-Law
`NOTE: A trial de novo will be a trial byjury oniy if there has been compliance with F.R.C.P. 38.
`
`
`-.
`
`‘
`
`-4
`
`_
`
`‘E
`
`g or withinone yea’ previouslyterrninated action in {hi it oui1
`.u.......
`
`30555
`
`
`
`
`
`
`
`
`
`.._.__....._,s.—_.A.;..._._.—._.-A«-2‘-U‘
`
`i c.ertifytha1.tn myknowtet-1ge,tha,wititin caseis not related to an
`except as noted above.
`,
`‘
`DATE:
`June 5, 2003
`
`civ. 5:5 (sass
`
`
`
`Atioliiuyei-Law
`
`Attomey|.D.11
`
`

`
`
`
`UNITED STATES DISTRICT COURTFOR THEEASTERN DISTRICT OF PENNSYLVANIA
`
`UMMONS IN A CIVIL ACTION
`
`I
`
`I
`
`BOND JEWELERS, INC.
`
`’
`
`CIVIL ACTION NO. 03-3502
`
`v.
`
`ROSEDEBOR INTERNATIONAL, INC.,
`ROSEDEBOKCOM, INC., SAMUEL VAYNER AND
`BORIS VAYNER
`
`TO: (NAME AND ADDRESS OF
`DEFENDANT)
`
`I04 5ou‘H\ Xmfircéi
`3'3 Floor
`Wiiiotdciflyhla, m Hm
`
`YOU
`
`HEREBY SUMMONED and required to serve upon
`
`Plaintiffs Attomey (Name and Address)
`
`ANNA M. DURBIN, ESQ.
`so RITTENI-IOUSE PLACE
`
`ARDMORE, PA. 19003
`
`an answer to the complaint which is herewith served upon you, within 20 days afier service of this sumn ‘ nis upon
`you, exclusive of the day of service. If you fail to do so, judgment by default will be taken against you is‘? the relief
`demanded in the complaint. Any answer that you serve on the parties to this action must be filed with th _‘
`lerk of
`this Court within a reasonable period of time after service.
`
`I)/1ichae'1~E. Kunz, Clerk cs? 50 :1
`
`Date: JUNE 5, 2003
`
`

`
`
`
`
`N‘
`UNITEfi.stA*rEs DISTRICT COURT
`EASTERN DISTRICT 01: PENNSYLVANIA
`. . . . . . . . . . . . . . . _ . . . _ _ _ _ _ _ _ _ _ _ _ X .
`
`BOND JEWELERS. INC.
`
`- against —
`
`Plflllltiffl
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`'
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`Civil Action No.
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`COMPLAINT
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`0,3-—ss”o;;, it;
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`ROSEDEBOR INTERNATIONAL. INC,
`ROSEDEBORCOM, INC., SAMUEL
`VAYNER AND BORIS VAYNER,
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`Defendants.
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`Plaintiff, Bond Jewelers, Inc., by its undersigned attorneys, as and for its complaiii
`alleges as follows:
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`NATURE OF THE ACTION
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`This is an action arising from the adoption and use by defendants of plaintifi
`1.
`service marks “UNCLAIMED DIAMONDS", “UNCLAIMED JEWELR ” and “UNCLAIME
`GEMS” and trade name “UNCLAIMED DLAMONDS” in violation of Sections 43(A7 and 43(
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`ofthe Lanham Act (15 U.S.C.
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`1125(3), 15 U.S.C.
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`1125(6)) and related misconduct.
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`JURISDICTION AND VENUE
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`2. This Court has subject matter jurisdiction over Counts 1-V in this action (1) pursua.
`to 28 U.S.C. § 1331, since it is a civil action arising under the laws of the United States, and (' i
`pursuant to 15 U.S.C. § 1121, since it is an action arising under the Lanliani Act. This Coun :1‘
`subject matter jutisdiction ovcr Counts Vl—IX of this action, pursuant to 28 U.S.C. § 13670
`since they are is so related to claims in the action within the Court’s original jurisdiction
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`they form part of the same case or controversy under Article III of the U.S. Cionstitution.
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`3. Venue is proper in the Eastern District of Pennsyl\'zmia pursuant to 28 U __‘
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`1391 (b) in that (1) defendants reside in the Eastem District of Pcmisylvania, and (2) a substan ‘ "
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`part of the events giving, rise to the claim occurred in the Eastern District of Pennsylvania.
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`PARTIES
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`4. Plaintiff Bond Jewelers, Inc. is a Pennsylvania corporation with a principal. addres
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`113 South 8”“ Street. Philadelphia, Pennsylvania 19106.
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`5. Defendant Rosedebor International, Inc. is a Pen.nsylv2m.ia corporation with a princi
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`address at 104 South 8"‘ Street, 3'“ Floor, Philadelphia, Pennsylvania 19107.
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`19106. Upon iiifomiation and belief defendant Boris Vziyner conducts business at 104 South «-
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`Street, 3"d Floor, Philadelphia, Pennsylvania 19107.
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`FACTS COMMON TO ALL CLAIMS FOR RELIEF
`9. Plaintiff maintains a retail jewelry business at 113 South 8“ Street. Philadelpl
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`Pennsylvania 19106 under the trade name “UNCLAIMED DIAMONDS.”
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`10. Plaintiff maintains an internet website advertising its retail jeweliy services :=;:§
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`providing online jewelry ordering services under the service mark UNCLAIMED DIAMOND?"
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`11. Plaintiff owns the following intemet domain names:
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`unclairneddiarnonds.com
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`unclaimeddiamoncls.org
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`unclaimeddiarnondsus
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`unclaimeddiamonds.shop
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`unclainicdianiondscom
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`unclaimediamondsbiz
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`unclaimediamondsnet
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`unclainicdiam.onds.info
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`unclaimediamonds.org
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`unclainiediam.onds.sliop
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`unclaimediamonds.us
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`imclaimed-diamonds.com
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`unclaimed-diamondsbiz
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`unclaimed~dian1onds.net
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`unclaimed-diamondsinfo
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`unclaimed—diamo11ds.01'g
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`unc1aimed—diamonds.shop
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`unclaimed-diamonds.us
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`unclaimedj ewelry.c0m
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`unclainicdjewclry.biz
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`unclaimedjewe1ry.ne’t
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`unclaimedj cwelryinfo
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`unclaimedjewc1I'y.0rg
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`u nclaini edjcwel.ry.sl1op
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`Lmclaimedj ewe1ry.us
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`use in connection with its services at least as early as June 1996 and has continuously used
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`12. Plaintiff adopted the service mark and trade name “UNCLATMED DIAMONDS”
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`trade name and mark in connection with its services since that time.
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`13. Plaintiff adopted the service mark “UNC.LAll,VlED JEWELRY” for use in coimec
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`with its services at least as early as April 2002 and has continuously used the mark in conneo
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`with its services since that time.
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`14. Plaintiff adopted the service mark “UNCLAIMED GEMS" for use in connection w i
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`its services at least as early as April 2002 and has continuously used the mark in connection 9 .
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`its services since that time.
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`l5. Plaintiff has continuously used the UNCLAIMED DIAMONDS service m.ar1«;
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`interstate commerce since at least June 1996.
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`interstate commerce since at least April 2002.
`17. Plaintiff has continuously used the UNCLAJMED JEWELRY service mark
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`interstate commerce since at least April 2002.
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`l8. Defendants maintain a business across the street from plaintiffs business at
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`South 8"‘ Street, 3"“ Floor, Philadelphia, Pennsylvania 19107.
`19. Defendants maintain an internet retail jewelry business and online ordering sc ’i
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`under the domain name “rosedebor.com.“
`20. Defendants established an online retail jcwe1I'y“st0re” on the internet auction web
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`known as “ebay” under the name UNCLAIMED DIAMONDS.
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`Zl. Defendants established an online retail jewelry “store” on the intemet auction we 1.1
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`known as “ebay” under the name UN CLAIMED JEWELRY.
`22. Defendants established an online retail jewelry “store” on the intemet auction welt
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`known as “ebay” under the name UNCLAIMED GEMS.
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`23. Upon infomiation and belief, clefendants established their online “stores" on ‘
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`with actual knowledge that plaintiff was using the UNCLAIMED DIAMONDS sewice i.iiai'1<:;'-E5;
`trade name and its UNCLALMBD JEWELRY and UNCLAIMED GEMS marks for its servic j;,.- ii
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`24. Since long prior to defendants’ establishment of their on1ine“stores"’ on “ebay” 7-‘ti
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`continuing to the present, plaintiff has continuously and exte. ,
`promoted its jewelry services and made significant sales of jewelry in US. commerce under
`UNCLAIMED DIAMONDS service mark and trade name and us’ UNCLAIMED JEWEL.
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`and UNCLALMED GEMS service marks.
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`25. As a result of the sales, advertising and promotion of goods and services under i
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`PJ0. < (0E. (I) noD. Eno! G. o :—I Q3':
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`plaintiff.
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`26. As a result of the sales, advertising and promotion of goods and services kinder
`UNCLAIMED DIAMONDS trade name and service mark and the UNCLAIMED .iEwEL‘f;
`and UNCLAIMED GEMS service marks,
`the service marks and trade name have becr. c
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`O T‘E ['11U E 0Z :2 U1
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`-‘-3:’93C-(D UE 0 §D:
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`{II('02. OQ 231*’:5 % c: 2Ol‘'‘>E (T:or E >Z 8
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`DLAMONDS trade name and service mark and UNCLAIMED JEWELRY and UNCLAHK
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`GEMS service marks.
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`GEMS services mark and are advertised and promoted through similar media of commuriicati
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`30.
`The marks UNCLAUVIED DIAMONDS, UNC‘LA'H\’1ED _|l_i\VELRY
`UNCLAIMED GEMS adopted by defendants are identical
`to plaintiff’s UNCLAIM
`DIAMONDS trade name and service mark and UNCLAIMED JEWELRY and UNCLA
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`GEMS service marks.
`31. As a result of defendants’ adoption of the marks UNCLAIMED DIAMON‘.l
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`UNCLAHVIED JEWELRY and UNCLAIMED GEMS, the public is likely to be confused .
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`deceived into the mistal<en belief that defendants‘ services have their origin with plaintiff, or
`such services were approved, endorsed or sponsored by plaintiff of are associated in some
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`with plaintiff’ 5 services.
`32. As a result of defendants’ adoption of the marks UNCLAIMED DIAMO
`UNCLAIMED JEWELRY and UNCLAIMED GEMS,
`the public has been confusecl
`deceived into the mistaken belief that defendants‘ services have their origin with plaintiff, or it
`such services were approved, endorsed or sponsored by plaintiff‘ or are associated in some
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`with plaintiff’ s sewiccs.
`33. Plaintiff has been damaged and will continue to be damaged by defendants’ ado}
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`the marks UNCLAIMED DIAMONDS‘, UNCLAIM ED JEWELRY
`and use of
`UNCLAIMED GEMS because the marks are so similar to those ofplaintiff that, when applii-;
`the applicable services, it has caused and is likely to continue to cause confusion. or to
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`mistake or to deceive, and falsely suggest a connection with plaintiff.
`34. Plaintiffs valuable goodwill in its trade name and service marks has been damag,
`and will continue to be damaged by defendants’ adoption of the marks UNCTLAIM
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`DLAMONDS, UNCLAIMED JEWELRY and UNCLAIMED GEMS.
`35. Defendants’ adoption of the UNCLAIMED DIAMONDS mark has diluted i
`distinctive quality of plaintifi’s UNCLAIMED DIAMONDS service mark,
`thus clamagi ,1],
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`plaintiff.
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`COUNT I
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`Misleading Use of a Service Mark and Unfair Competition
`in Violation of Section 431A) of the Lanham Act
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`36. Plaintiff repeats and realleges each and every allegation contained in paragraplit
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`through 35 as though set forth fully herein.
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`service mark in connection with their services.
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`38. Defendants have used and continue to use in commerce the LINCLAT
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`DLAJVIONDS service mark in connection with their services.
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`39. Defendants’ use of the UNCL/.&IMED DIAMONDS service mark in connection 1: ii
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`their services is likely to cause confusion, or to cause mistake or to deceive as to the affiliati
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`connection, or association of the defendants with plaintiff.
`40. Defendants’ use of the UNCLAIMED DIAMONDS service niark in Connection Vt
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`their services has caused confusion, mistake or deception as to the origin. sponsorship,
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`approval ofdefendants’ services by plaintiff.
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`UNCLAIMED DLAMONDS service mark in connection with‘ their services.
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`42.
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`Defendants have used,
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`in connection with their services. names and fail
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`designations of origin which are likely to ‘cause confusion. or to cause mistake, or to deceive .
`to the affiliation, connection, or association of defendants with plaintiffs, or plaintif.
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`sponsorship or approval of defendants‘ services.
`43. Defendants’ acts are in violation of Section 43(A) ofthe Lanham Act (15 U.S.C‘. § ‘
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`ll2S(a)).
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`44. Defendants’ acts were intentional and willful.
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`45. Plaintiff is entitled to an order enjoining defendants’ further misleading use ofg
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`UNCLAIMED DIAMONDS service mark.
`46.Plaintiff is entitled to damages as a result of defendants’ misleading use of_
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`UNCLAHVIED DIAMONDS service mark.
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`‘COUNT 1'1
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`Misleading Use of a Service Mark and Unfair Competition
`in Violation of Section 43§A) of the Lantiam Act
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`47. Plaintiff repeats and reallcges each and every allegation contained in paragrapl
`through 46 as though set forth fully herein.
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`48. Plaintiff has never authorized defendants to use its UNCLAIMED JEWEL.
`service mark in connection with their services.
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`49. Defendants have used and continue to use in commerce the UNCL./\l‘l\'. 5;.
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`JEWELRY service mark in connection with their services.
`50. Defendants’ use of the UNCLAIMED JEWELRY service mark in connection
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`their services is likely to cause confusion,’ or to cause mistake or to deceive as to the aiffilia
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`connection. or association of the defendants with plaintiff.
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`Sl. Defendants’ use of the UNCLAIMED JEWELRY service mark in connection w it-fi
`their services has caused confusion, mistake or deception as to the origin, sponsorship, _?ii
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`approval of defendants’ services by plaintiff.
`52. Plaintiff has suffered damages as a result of defendants’ wrongful use of -
`UNCLAIMED JEWELRY servicemark in connection with their services.
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`53.
`Defendants have used,
`in connection with their services, names and fai.
`designations of origins which are likely to. cause confusion, or to cause mistake, or to deceive
`to the affiliation, connection, or association of defendants with plaintiffs. or plainti
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`sponsorship or approval of defendants’ services.
`54, Defendants’ acts are in violation of Section 43(A) ofthe Lanlmam Act (15 U.S.C.‘.. §
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`1125(a)).
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`55. Defendants’ acts were intentional and willful.
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`56. Plaintiff is entitled to an order enjoining defendants‘ funher misleading use o
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`UNCLAIMED JEWELRY service mark.
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`57. Plaintiff is entitled to damages as a result of defendants’ misleading use of
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`UNCLAIMED JEWELRY service mark.
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`COUNT III
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`Misleading Use of a Service Mark and Unfair Competition
`in Violation of Section 433A) of the Lanham Act
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`58. Plaintiff repeats and realleges each and every allegation contained in paragrapi
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`through 57 as though set forth fully herein.
`59. "Plaintiff has never authorized defendants to use its UNCLAIMED GEMS. serti
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`mark in connection with their services.
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`60. Defendants have used and continue to use in commerce the UNCLAIMED GE
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`service mark in connection with their services.
`61. Defendants’ use of the UNCLAIMED GEMS service mark in connection with
`services is likely to cause confusion, or to cause mistake or to deceive as to the affiliat-it
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`connection, or association of the defendants with plaintiff.
`62. Defendants’ use of the UNCLAIMED GEMS service mark in c.cmnec’('ion with iaij.
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`services has caused confusion, mistake or deception as to the origin, sponsorship, or approva
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`defendants’ services by plaintiff.
`63. Plaintiff has suffered damages as a result of defendants’ w1'on5._>,ft1l use of ii‘
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`UNCLAIMED GEMS service mark in connection with their services.
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`in connection with their services, names and f- ;.
`Defendants have used,
`64.
`designations of origins which are likely to’ cause confusion, or to cause mistake, or to deceiv
`to the affiliation, connection, or association of defendants. with plaintiffs, or plainti
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`sponsorship or approval of defendants’ services.
`65. Defendants’ acts are in violation of Section 43(A) of the Lanhain Act (l5 U.S.C. §
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`1l25(a)).
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`66. Defendants’ acts were intentional and willfiil.
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`67. Plaintiff is entitled to an order enjoining defendants" further misleading use its
`UNCLAIMED GEMS service mark.
`68. Plaintiff is entitled to damages as a result of defendants’ misleading use 19 'ts
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`UNCLAIMED GEMS service mark.
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`COUNT IV
`Adoption and Use of a Misleading Trade Name
`in Violation of Section 431A) of the Lanham Act.
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`69. Plaintiff 1‘epea1's and rcalleges each and every allegation contained in pai'agruph.
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`through 68 as though set forth fully herein.
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`70. Plaintiff has never authorized defendants to use its UNCLAIMED DIAMONDS tr
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`name (the “Trade Name”).
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`71. Defendants have used and continue to use the Trade Name in commerce.
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`b ii. 6
`72. Defendants’ use of the Trade Name is likely to cause confusion. or to cause mist M
`or to deceive as to the affiliation, connection, or association ofthc defendants with plaintiff.
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`73. Defendants’ use of the Trade Name has caused confusion, mistake or deception
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`the origin, sponsorship, or approval of defendants‘ services by plaintiff.
`74. Plaintiff has suffered damages as a result of deft-zndants’ wrongful use of the Trc
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`Name.
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`75. Defendants have used, in connection with their services, names and false designati if s
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`of origins which are likely to cause confusion, or to cause rnistalce, or to deceive as to
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`affiliation, connection, or association of defendants with plaintiffs, or p1ai.ntifi“s sponsorshit
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`approval of defendants’ services.
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`76. Defendants‘ acts are in violation ofsection 43(A) oftlie Lanham Act (15 t.3.S.C“. § ut...
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`78. Plaintiff is entitled to an order enjoining Qteferidants further misleading use 0._§4¢.o-«>x.\......_._....=....-.
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`1125(a)).
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`77, Defendants’ acts were intentional and willful.
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`Trade Name.
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`COUNT V
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`Service Mark Dilution
`in Violation of Section 431C) of the Lanham Act
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`through 79 as though set forth fully herein.
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`81. Plaintiffs UNCLAIMED DIAMONDS mark is distinctive and famous.
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`82. Defendants commenced commercial use of plaintiffs famous UNCLAI
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`80. Plaintiff repeats and realleges each and every allegation contained in 13£iIagI'apl't~.'
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`DIAMONDS mark after it became famous.
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`83. Defendants’ unauthori7.,cd commercial use of pla-intifl“'s famous UNCLAI
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`DIAMONDS mark has diluted the distinctive quality of the mark.
`84. Defendants willfully intended to trade on plaintiffs reputation or to cause dilution
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`its famous UNCLAIMED DIAMONDS mark.
`85. Defendants’ acts are in violation of Section 43(C) of the Lanhann Act (15 U.S.C. §
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`1125(c)).
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`86. Plaintiff is entitled to an order enjoining further dilution of its UNCILAIM
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`DIAMONDS service mark.
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`87. Plaintiff is entitled to damages as a result of defendants’ dilution of its LINCTLA
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`DIAMONDS service mark.
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`COUNT VI
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`Service Mark Infringement
`in Violation of 54 RA. (IS.
`‘ 1123
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`88. Plaintiff repeats and reallegcs each and every allegation contained in p:iragraph
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`through 87 as though set forth fully herein.
`89. Plaintiff is the owner ofthe service mark UNCLAIMED DIAMONDS, which mar
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`registered under Chapter 11 of Title 54 of the Pennsylvania Consolidated Statutes.
`90. Plaintiff has mover authorized defendants to use its UNCLAIMED DIAMOND?
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`service mark in connection with their services.
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`91. Defendants have used and continue to use plaintiff's UNCLAIMED DIAMON
`service mark in advertising of its services in a manner likely to cause confusion or mistake o‘.
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`deceive as to the source of such services.
`92. Defendants’ use of plaintiff’ s UNCLAIMED DIAMONDS service mark was
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`remains in bad faith with the intent to cause confusion or mistake or to deceive.
`93. Plaintiff has suffered damages as a result of defendants’ wrongful use of ti
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`UNCLAIMED DLAM ONDS mark in connection with their services.
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`94, Defendants’ acts are in violation ofS4 P.A. C.S. § 1123.
`95. Pl.ain,tiff is entitled to an order enjoin.i_ng defendants’
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`UNCLAIMED DIAMONDS mark.
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`further use of plaint
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`three times dcfeitdants’ pr '7
`96. Plaintiff is entitled to a judgment for an amount
`derived from their use of plaintiffs UNCLAIMI-JD DIAMONDS mark and the clamages suffr
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`by plaintiff as well as reasonable attorneys‘ fees.
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`through 96 as though set forth fully herei 11..
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`COUNT VII
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`Service Mark Infringement
`in Violation of 54 P.A. C.S. § 1123
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`97. Plaintiff repeats and realleges each and every allegation contained in paragraph
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`deceive as to the source of such services.
`101. Defendants’ use of plaintiff's UNCLATMED JEWELRY service in-a1'k was
`remains in bad faith with the intent to cause confusion or mistake or to deceive.
`102. Plaintiff has suffered damages as a result of defendants’ wrongful use of
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`UNCLAIMED JEWELRY mark in connection with their scI'\«it:.es.
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`103. Defendants‘ acts are in violation of54 P.A. C.S. § I123.
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`104. Plaintiff is entitled to an order enjoining defendants’
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`further use of plain.
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`UNCLAITVIED JEWELRY mark.
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`105. Plaintiff is entitled to a judgment for an amount three times defendants‘ p H
`derived from their use of plaintiffs UNCLAIMED JEWELRY mark and the dzunages suffo-
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`by plaintiff as well as reasonable attorneys’ fees.
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`COUNT VIII
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`‘ 1123
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`Service Mark Infringement
`in Violation oi'S4 P.A. C.S.
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`106. Plaintiff repeats and realleges each and every alleg