throbber
Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA28069
`
`Filing d9-I33
`
`03/1 1/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91160022
`Defendant
`International Mulch Company, Inc.
`International Mulch Company, Inc.
`3585 Tree Court Industrial Blvd.
`§ St. Loius, MO 63122
`
`Joseph E. Walsh, Jr.
`C
`Harness, Dickey & Pierce, PLC
`orrespondence 3
`Address
`3 7700 Bonhoninie, Suite 400
`g St. Louis, MO 63105
`
`Submission
`
`Motion to Suspend for Civil Action
`
`Ffler's Name
`
`Filer's e—mail
`
`Jennifer E. Hoekel
`jhoekel@senniger.corn, bclark@senniger.corn,
`jdonnelly@senniger.corn, sleonard@senniger.con1,
`§ aharVey@senniger.corn
`
`Signature
`Date
`
`/JEH/
`03/11/2005
`
`Attachments
`
`exhibi~4.pdf ( 12 pages )
`i eXhibi~2.pdf ( 11 pages )
`
`

`
`INTM 9020
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 78/180,710
`
`Published in the Trademark Office Gazette on March 2, 2004
`
`GREEN EDGE ENTERPRISES, L.L.C.,
`
`Opposer,
`
`V
`
`INTERNATIONAL MULCH COMPANY, INC.,
`
`Applicant.
`
`\/\/\/\/\/\/\/\/¢
`
`Opposition No. 91160022
`Mark: RUBBERIFIC
`
`CERTIFICATE OF El.liCTRONI(" SUBMISSION
`
`I hereby certify that this Motion to Suspend is being
`submitted electronically through the lilectronic System for
`'l"rademai‘l< Trials and Appeals (ESTTA) on this l ltli day of
`March, 2005.
`
`/
`
`.lohn D. Donne y
`
`MOTION TO SUSPEND
`
`In accordance with 37 CFR §2.l l7(a), the Applicant hereby requests that the Board
`
`suspend the pending Opposition until the termination oftwo pending civil lawsuits filed in the
`
`United States District Court for the Eastern District of Missouri, Eastern Division, styled
`
`Ilzzerncmonal Mulch Company, Inc. v. Green Edge Enterprises, N0. 4:04—cv—0l l05—MLM (filed
`
`on August 19, 2004) and Green Edge Enterprises, LL. C. v. International Mulch Company, Inc,
`
`et ul., No. 4:04—cv—0l 30l—MLM (filed on September 9, 2004). Exhibits A and B respectively.
`
`These lawsuits in the U.S. District Court for the Eastern District of Missouri involve
`
`issues that are in common with the Opposition action before the TTAB. Critical to this
`
`Opposition, the District Court matters involve trademark infringement counts involving the
`
`trademark “Rubberific" which is the focus ofthis Opposition, and which will require the Court to
`
`determine ownership rights in the "Rubberific" mark. Under 37 CFR §2.l l7(a), the TTAB may
`
`

`
`suspend an Opposition where, as here, there are issues in common, and those issues would have a
`
`direct bearing on the matter before the TTAB. This Regulation applies squarely here. To
`
`continue the Opposition proceedings in this forum would surely duplicate the parties‘ efforts in
`
`the U.S. District Court cases, and could potentially result in conflicting outcomes. Thus, the
`
`Appellant respectfully requests that the TTAB grant its Motion to Suspend, which will allow the
`
`parties to focus on the trademark infringement allegations in the aforementioned lawsuits before
`
`the US. District Court for the Eastern District of Missouri. This request to suspend is made in
`
`good faith for the purpose ofpursing the above civil litigation.
`
`In view ofthe foregoing, it is respectfully requested that the Board grant the Motion to
`
`Suspend.
`
`Dated this 11th day of March, 2005.
`
`Respectfully submitted,
`
`SENNIGER POWERS
`
`By
`
`lark
`. Bennet,
`Jennifer E. Hoeke
`
`5: 7%
`
`1
`
`Attorneys for Applicant
`One Metropolitan Square, 16th Floor
`St. Louis, Missouri 63102
`
`(314) 231-5400
`
`(314) 231-4342 (Facsimile)
`bclark((Dsenniger.coni
`jhoekelgcllsennigertcom
`
`

`
`CERTIFICATE OF SERVICE
`
`1 certify that the foregoing document is being deposited with the United States Postal
`Service as First Class mail, postage prepaid, this 1 1th day of March, 2005, for service upon the
`
`following:
`
`Scott Greenberg
`
`Sandberg, Phoenix Von Gontard, P.C.
`
`One City Center
`15”‘ Floor
`
`St. Louis, MO 63l0l—l880
`
`

`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF MISSOURI
`EASTEILN DIVISION
`
`INTERNATIONAL MULCH
`
`COMPAINW, INC._.
`
`Plai;1_tilT,
`
`GREEN EDGE ENTERPRISES, L.L.C,
`
`Defendant.
`
`V
`
`g
`
`V
`
`I
`
` \_/9/\/\/5
`
`in
`
`))
`
`)
`
`l
`
`COMPLAINT
`
`JURY TRLAL DEMANDED
`
`Plaintiff International Mulch Co. (“Intemational Mulch”), for its Complaint
`
`against Green Edge Enterprises, L.L.C. (“Green Edge”), states as follows:
`
`The Parties
`
`1.
`
`lntemational Mulch Company, Inc. is a corporation organized and existing
`
`under the laws ofthe State of Missouri, having its principal place ofbusiness at l Mulch
`
`Lane, St. Louis, MO 63044.
`
`2.
`
`Green Edge Enterprises, L.L.C., is a corporation organized and existing
`
`under the laws ofthe State of Missouri, having its principal place ofbusiness at 12058
`
`Craigview Coun, St. Louis, MO 63146.
`
`
`
`

`
`Jurisdiction and Venue
`
`1.
`
`This is an action alleging trademark infringement, unfair competition, and
`
`tonious interference under 15 USC. §§ 1114 and 1125 and Missouri common law. This
`
`action also seeks a declaratoryjudgment pursuant to 28 L7.S.C. §§ 2201 and 2202. This
`
`Coun has subject matterjurisdiction under 28 USC. §§1331, 1338, 1367, 2201, 2202,
`
`and 15 USC. § 1121. The Court also has supplementaljurisdiction pursuant to 28
`
`USC. 6; 1367 over the state law claims.
`
`4.
`
`Personal jurisdiction is proper in this District because Green Edge has
`
`transacted business and committed tortious acts within the State of Missouri out of which
`
`this action arises. Mo. Rev. Stat. §506.500.
`
`3.
`
`Venue is proper in this Court under 28 USC. §l39l(b) because Green
`
`Edge resides in this judicial district and because a substantial portion ofthe events giving
`
`rise to the claim occurred in this distnct.
`
`Factual Background
`
`6.
`
`International Mulch engages in, among other things, the distnbution and
`
`sale ofsynthetic mulch in Missouri and throughout the United States.
`
`7.
`
`In furtherance ofthat business, lntemational Mulch entered into a License
`
`Agreement with Green Edge on July 26, 2002 (the “License Agreemenf’).
`
`8.
`
`Pnor to entry ofthe License Agreement, Green Edge registered
`
`trademarks for “Rubberific Mulch” with the U.S. Patent and Trademark Office as Serial
`
`Nos. 76/227026 and 76/228466.
`
`Iv
`
`

`
`9.
`
`In the License Agreement, Green Edge conveyed all ofits right, title and
`
`interest (including its goodwill) in the Rubberific Mulch trademarks to International
`
`Mulch. Green Edge agreed to execute assignment documents completing the transfer of
`
`ownership rights to International Mulch. Copies ofthe trademark application and
`
`assignment information for these marks are attached hereto as Exhibits One and Two.
`
`10.
`
`The U.S. Patent and Trademark Office determined that Trademark
`
`Application Serial Number 76/228466 met all the requirements for federal registration
`
`and issued a Certificate ofRegistration for the trademark. The Registration Number is
`
`266552.
`
`ll.
`
`On or about December 23, 2002, Green Edge, without the knowledge of
`
`International Mulch or its permission, abandoned Serial No. 76/227026.
`
`12.
`
`In October 2002, International Mulch applied for a trademark registration
`
`for the mark “Rubbenf1cT“.”
`
`13.
`
`Intemational Mulch has satisfied its obligations under the License
`
`Agreement and has the sole right to use the Rubberific Mulch)?’ and Rubbeiificm
`
`trademarks.
`
`14.
`
`Since 2001, International Mulch has offered to sell, sold and continues to
`
`sell products under the trademarks Rubberific Mulch® and Rubberif1cTM in almost every
`
`state in the country.
`
`

`
`13.
`
`lntemational Mulch has spent substantial sums advertising these marks in
`
`connection with the sale oftheir synthetic mulch products. International Mulch promotes
`
`its products in part through its website, wwwrubberificmulchcom.
`
`16.
`
`As a result ofthese activities, International Mulch has generated
`
`substantial goodwill in the Rubberific Mulch® and Rubberiticm marks. These marks are
`
`valuable assets ofIntemational Mulch and it has become known as the source of products
`
`bearing the Rubberific Mulch® and Rubberificm marks.
`
`17.
`
`Green Edge maintains a website at www.rubberific.co1n. a copy ofthe
`
`first page of which is attached as Exhibit Three. On this website, Green Edge advenises
`
`using the words Rubberificm Mulch.
`
`18.
`
`lntemational Mulch has leamed that Green Edge has recently purported to
`
`grant a license to a third party for the third party’s use ofRubberific IVIulCl1®011 synthetic
`
`mulch products.
`
`19.
`
`On or about March 30, 2004, Green Edge filed an Opposition to
`
`lntemational Mu1ch’s trademark application for Rubberiticm.
`
`20.
`
`Green Edge also purports to be the owner ofU.S. Patent No. 5,910,514,
`
`entitled “Synthetic Mu1ch"(“the ‘514 patent"), issued on June 8, 1999. A copy ofthe
`
`‘514 patent is attached hereto as Exhibit Four.
`
`21.
`
`Recently Green Edge sent correspondence to one or more oflntemational
`
`Mulch’s customers, claiming that International Mulch’s sale of certain products,
`
`

`
`including its products bearing the mark Rubbenfic Mulch’ ‘D: infringes the ‘S14 patent.
`
`This correspondence further claims that International Mulch had no legal right to use the
`
`trademark Rubberific Mulchfi’. Green Edge demanded that the customer(s) cease and
`
`desist purchasing colored rubber mulch from International Mulch.
`
`22.
`
`Upon infonnation and belief, Green Edge has contacted other International
`
`Mulch customers or distributors claiming that the offer or sale oflntemational Mulchs
`
`products bearing the mark Rubberific Mulchiii infringes the claims ofthe ‘S14 patent
`
`and/or that lnternational Mulch has no legal right to use the trademark Rubberific
`
`Mulchg.
`
`23.
`
`Green Edge sent such correspondence and made such representations with
`
`knowledge that the claims ofthe ‘S14 patent were and are invalid.
`
`24.
`
`At the time Green Edge sent the 1etter(s) referenced above, it was aware 01
`
`US. Patent No. 5,543,172 and knew or should have known that the ‘172 patent
`
`invalidated the claims of its ‘S14 patent.
`
`25.
`
`Green Edge was and is aware that a Court in this District had earlier found
`
`that the claims ofthe patent were invalid in light of other prior an references, but had
`
`vacated that decision on procedural grounds.
`
`26.
`
`Green Edge also knew when it sent such correspondence that International
`
`Mulch had the legal right to use the Rubberific Mulch‘? trademark.
`
`U:
`
`

`
`COUNT I
`
`Declaratory Relief for Patent Invalidity and Noninfringement of the ‘S14 Patent
`
`27.
`
`International Mulch realleges and incorporates by reference the allegations
`
`ofParagraphs 1 through 26 above.
`
`28.
`
`Green Edge purports to be the owner ofthe ‘514 patent.
`
`29.
`
`Green Edge has charged Intemational Mulch with infringement ofthe
`
`claims ofthe ‘S 14 patent by reason oflntemational Mulch’s alleged making, using,
`
`offering to sell. and selling ofits S}’1]Ill€llC mulch product.
`
`30.
`
`Green Edge has asserted that the sale by International Mulch's customers
`
`oflntemational Mulch‘s s_mthetic mulch product constitutes infringement ofthe claims
`
`ofthe‘51-1 patent.
`
`31.
`
`International Mulch has not infringed the claims ofthe ‘S14 patent.
`
`Intemational Mulch is not now infringing the claims ofthe ‘S1-1 patent.
`
`32.
`
`Each claim ofthe ‘S14 patent is invalid under the provisions of at least 35
`
`U.S.C. § 102,103 and/or ll2.
`
`COUNT II
`
`Trademark Infringement under 15 U.S.C. § 1114
`
`33.
`
`International Mulch realleges and incorporates by reference the allegations
`
`of Paragraphs 1 through 32 above.
`
`

`
`34.
`
`lntemational Mulch is the owner ofTrademark Registration No. 2665542.
`
`35.
`
`Green Edge has been advertising synthetic mulch products through its
`
`website using the domain name www\'.11ibberific.com and is using lntemational Mulch's
`
`trademark Rubberific Mulchg in such advertising.
`
`36.
`
`Green Edge’s ongoing use of“Rubberif1c Mulch” and maintenance of its
`
`\\'\\'\\'.rL1bb€rlflC.COl]] website as described above is likely to cause, has caused and, unless
`
`enjoined by this Court, will continue to cause confusion in the minds ofconsumers as to
`
`the relationship or affiliation between the parties.
`
`37.
`
`By reason of Green Edge’s violations of Section 32(1) ofthe Lanham Act
`
`described above. lntemational Mulch has suffered and will continue to suffer injury and
`
`damages.
`
`38.
`
`By reason ofGreen Edge’s conduct. it has caused and, unless such
`
`conduct is enjoined by the Court, will continue to cause, irreparable harm to lntemational
`
`Mulch for which there is no adequate remedy at law.
`
`COUNT III
`
`Unfair Competition under 15 U.S.C. §1125
`
`39.
`
`lnternational Mulch realleges and incorporates by reference the allegations
`
`of Paragraphs 1 through 38 above.
`
`40.
`
`The Rubbenfic Mulchij and RubberificT“ marks have become uniquely
`
`associated with and identifies lntemational Mulch.
`
`

`
`41.
`
`Green Edge’s use of“Rubberif1c Mulch” and “Rubbenfic” is a deliberate
`
`and willful copying oflnternational Mulch’s marks.
`
`42.
`
`Upon infomtation and belief, in adopting “Rubberific Mulch" and
`
`“Rubberific.” Green Edge’s intent was to deceive, mislead and confuse consumers to
`
`enable it to trade offoflntemational Mulch’s reputation and goodwill.
`
`43.
`
`Green Edge’s unconsented to and otherwise unauthorized use of
`
`“Rubberific Mulch” and “Rubberific,” on and in connection with marketing, advertising,
`
`promoting, offering for sale, and selling its goods and services, constitutes a false
`
`designation oforigin that wrongly suggests to the trade, consumers and relevant
`
`purchasing public that such goods emanate from, are endorsed, provided, or sponsored
`
`by, or in some way associated or connected with lntemational Mulch.
`
`44.
`
`Green Edge’s unconsented to and otherwise unauthorized use of
`
`“Rubberific Mulch” and “Rubberific” on and in connection with marketing, advertising,
`
`promoting, offering for sale, and selling its goods and services is likely to cause
`
`confusion in the marketplace as to the affiliation, connection, or association between
`
`International Mulch and Green Edge.
`
`45.
`
`By reason of Green Edge’s violations of Section 43(a) ofthe Lanham Act
`
`as set forth above. lntemational Mulch has suffered and will continue to suffer injury and
`
`damages.
`
`

`
`46.
`
`By reason ofits conduct, Green Edge has caused and, unless such conduct
`
`is enjoined by the Court, will continue to cause, irreparable harm to International Mulch
`
`for which there is no adequate remedy at law.
`
`COUNT IV
`
`Unfair Competition under Missouri Common Law
`
`47.
`
`International Mulch realleges and incorporates by reference the allegations
`
`of Paragraphs 1 through 46 above.
`
`48.
`
`Green Edge’s actions constitute common law unfair competition in
`
`violation ofIntemational Mulch’s rights.
`
`49.
`
`Green Edge’s acts are willful and deliberate.
`
`50.
`
`International Mulch is suffering, and will continue to suffer, damages and
`
`irreparable harm due to Green Edge’s unfair competition, including irreparable liami to
`
`its goodwill.
`
`51.
`
`Green Edge’s use ofthe Rubberific Mulchg and Rubberificw marks is
`
`outrageous and demonstrates its evil motive and reckless indifference to International
`
`Mulcli’s rights, warranting the imposition of punitive damages.
`
`COUNT V
`
`Tortious Interference
`
`

`
`52.
`
`International Mulch realleges and incorporates by reference the allegations
`
`ofparagraphs I through 51 above.
`
`53.
`
`International Mulch had a substantial prospective business opportunity
`
`with certain ofits customers.
`
`54.
`
`Green Edge had knowledge ofthe prospective business opportunity.
`
`55.
`
`With knowledge ofsuch opportunity, Green Edge interfered with
`
`International Mulch’s full enjoyment ofthat opportunity.
`
`56.
`
`Green Edge’s conduct was unjustified and independently tonious.
`
`57.
`
`International Mulch has been hamied by Green Edge’s conduct.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintifflnternational Mulch Company, Inc. prays for the
`
`following relief:
`
`a.
`
`Judgment in its behalf and against Green Edge on each of Counts I
`
`through V.
`
`b.
`
`An injunction permanently enjoining Green Edge, as well as its officers,
`
`agents, servants, employees, and attomeys and those persons in active concert or
`
`participation with them who receive actual notice ofthe order, from using the marks
`
`Rubberific Mulch and Rubberific, or any term substantially likely to cause confusion,
`
`mistake, or deception with or related to International Mulch’s Rubberific Mulch}: or
`
`RUl)b€fllICW trademarks;
`
`IO
`
`

`
`c.
`
`An award of all Green Edge’s profits derived from the use ofthe names
`
`Rubberific i\4UlCl]:i and Rubberificm’ and a further award of damages in an amount
`
`adequate to compensate lntemational Mulch for Green Edge’s wrongful acts, and that
`
`such damages be trebled because ofthe willful nature ofthe acts described herein.
`
`d.
`
`An order requiring Green Edge to deliver up and destroy all
`
`advertisements, packaging, and promotional materials that contain the marks Rubberific
`
`Mulchgl and/or Rubberifiem’ or any other term likely to cause confusion, mistake, or
`
`deception as to lntemational Mulch’s marks referenced herein, whether in print media,
`
`contained on audio or videotape, or in any other form;
`
`.0
`
`An order requiring that Green Edge to deliver up and/or destroy, alter, or
`
`repackage all existing inventory of any products that contain, on the products themselves
`
`or on the products’ packaging, the marks Rubberific Mulchf’ and Rubberificm, or an_v
`
`other term likely to cause confusion, mistake, or deception as to International Mulch’s
`
`marks referenced herein, so as to eliminate from all such inventory all uses of any such
`
`infringing marks or designations;
`
`f.
`
`g.
`
`Judgment that the claims ofthe ‘S14 patent are invalid;
`
`Judgment that International Mulch’s manufacture, sale, ofits synthetic
`
`mulch does not infringe the claims ofthe ‘S 14 patent;
`
`h.
`
`An injunction pemianently enjoining Green Edge, as well as its officers,
`
`agents, servants, employees, and attorneys and those persons in active concert or
`
`participation with them who receive actual notice ofthe order, from further interference
`
`with lntemational Mulch’s business expectancies or business opportunities;
`
`i.
`
`An award of costs ofthis action;
`
`

`
`.J.A
`
`A declaration that this an exceptional ease. and that Intemational Mulch be
`
`awarded its reasonable attorney's fees;
`
`l<.
`
`1.
`
`An award of prejudgment interest;
`
`An award of punitive damages in a fair and reasonable amount sufficient
`
`to punish and deter Green Edge and others similarly situated from engaging in outrageous
`
`conduct or with reckless indifference to the rights oflnternational Mulch; and
`
`m.
`
`An award of such other relief as the Court may deemjust and equitable
`
`under the circumstances.
`
`SENNIGER POWERS
`
`1
`
`/
`
`By
`
`/
`
`4» ./w/
`
`J. Bennett Clarl;/#717440
`Jennifer E. Hoekel, #74338
`One Metropolitan Square, 16th Floor
`St. Louis, Missouri 63102
`
`(314) 231-5400
`(314) 231-4342 (Facsimile)
`
`Attorneys for Plaintifflnternational
`Mulch Company, Inc.
`
`

`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MISSOURI
`
`EASTERN DIVISION
`
`GREEN EDGE
`
`ENTERPRISES, LLC,
`
`Plaintiff,
`
`VS.
`INTERNATIONAL MULCH
`
`COMPANY, INC., et al.,
`
`)
`
`)
`
`;
`I
`i
`
`)
`
`Cause No. 4 O4CV01301 MLM
`JURY TRIAL DEMANDED
`
`AMENDED COMPLAINT
`
`For its first amended complaint, plaintiff Green Edge Enterprises, LLC
`
`(“Green Edge”) alleges:
`
`Count I —i Common Law Fraud
`
`Against All Defendants
`
`1.
`
`Green Edge is a Missouri limited liability company in good standing
`
`with its principal place of business in St. Louis County, Missouri.
`
`2.
`
`Defendant International Mulch Company, Inc. (“International Mulch”)
`
`is a Missouri corporation in good standing with its principal place ofbusiness in St.
`
`Louis County, Missouri.
`
`3.
`
`Defendant Michael T. Miller is an individual residing in St. Louis
`
`County, Missouri. He is a shareholder, director and officer of International Mulch.
`
`4.
`
`Defendant Cindy F. Miller is an individual residing in St. Louis
`
`County, Missouri. She is a shareholder, director and officer oflnternational Mulch.
`
`EXHIBIT
`
`Rabble:
`
`_:Ez__
`
`

`
`5.
`
`On June 8, 1999, Lee M. Greenberg and Judy A. Smith were duly and
`
`legally granted by the United States Patent and Trademark Office United States
`
`Patent No. 5,910,514 entitled “SYNTHETIC MULCH” (the “Mulch Patent”). The
`
`Mulch Patent claims synthetic mulch and methods for making synthetic mulch.
`
`6.
`
`Mr. Greenberg and Ms. Smith assigned the Mulch Patent to Green
`
`Edge, a company they owned and operated.
`
`7.
`
`On October 18, 2000, Green Edge and defendants Michael Miller and
`
`Cindy Miller (collectively the “Millers”) entered into a Dealership and Licensing
`
`Agreement by which Green Edge granted the Millers the right to use the Mulch
`
`Patent in order to manufacture and sell synthetic mulch (the “October 2000 License
`
`Agreement”). A copy of the October 2000 License Agreement is attached hereto as
`
`Exhibit 1.
`
`8.
`
`Pursuant to the October 2000 License Agreement, the Millers
`
`agreed to pay Green Edge a license fee of $1,005,000, which fee was to be paid
`
`according to the terms of a stated payment schedule. In addition, the Millers
`
`agreed to pay Green Edge a monthly royalty of $115 per every ton of synthetic
`
`mulch sold by them the previous month.
`
`9.
`
`On December 5, 2000, the Millers incorporated International Mulch
`
`and thereafter did business as International Mulch.
`
`10.
`
`The Millers failed to pay Green Edge the license fee and royalties as
`
`required by the October 2000 License Agreement.
`
`

`
`11.
`
`Green Edge demanded payment under the October 2000 License
`
`Agreement. In response, the Millers requested that the royalty payments be
`
`lowered.
`
`12.
`
`The Millers represented that they could not pay the required license
`
`fee and royalties to Green Edge because their business was not profitable. They
`
`claimed that they needed to find a new investor in order to raise the capital
`
`necessary to increase production and properly market the synthetic mulch. These
`
`representations were false when made.
`
`13.
`
`The Millers further represented to Green Edge that they had solicited
`
`potential investors, but that these potential investors declined to join in their
`
`venture because the royalty payments to Green Edge were too high and because the
`
`term of the October 2000 License Agreement was too short. These representations
`
`were false when made.
`
`14.
`
`The Millers further represented to Green Edge that if the royalty was
`
`lowered and the term of the license extended, they would bring in an investor and
`
`grow the business, which in the end, would produce increased royalties to Green
`
`Edge on a net basis. These representations were false when made.
`
`15.
`
`The Millers’ representations as outlined in paragraphs 12, 13 and, 14
`
`were material and Green Edge did not know their falsity. The Millers knew of the
`
`falsity of each of these representations, and made each of them intending that
`
`Green Edge rely thereon.
`
`

`
`16.
`
`In reliance on the truth of the Millers’ false representations as outlined
`
`in paragraphs 12, 13 and 14, Green Edge agreed to accept a reduced royalty, and on
`
`July 29, 2002, Green Edge and International Mulch entered into a License
`
`Agreement which reduced Green Edge’s monthly royalty to 5% of International
`
`Mulch’s sales and extended the term of the license (the “July 2002 License
`
`Agreement”). A copy of the July 2002 License Agreement is attached as Exhibit 2.
`
`17.
`
`As part of the July 2002 License Agreement, the Millers and
`
`International Mulch confirmed their intent to find an additional investor for their
`
`business. International Mulch, through Michael Miller, specifically represented
`
`they would “pursue a deal with a larger company to expand the manufacturing and
`
`distribution” of their synthetic mulch. These representations were false when
`
`made. They were material and Green Edge did not know of their falsity. The
`
`Millers and International Mulch knew of the falsity of each of these
`
`representations, and made each of them intending that Green Edge rely thereon.
`
`18.
`
`In reliance on the truth of the Millers’ and International Mulch’s
`
`false representations as outlined in paragraphs 12, 13, 14 and 17, Green Edge
`
`signed the July 2002 License Agreement.
`
`19.
`
`The Millers and International Mulch had no intention of finding new
`
`investors for their synthetic mulch business. Their representations in that regard
`
`were false and were made simply to create a pretext for claiming the need to reduce
`
`the royalty the Millers had previously agreed to pay Green Edge and to obtain an
`
`extended license to use the Mulch Patent.
`
`

`
`20.
`
`Consistent with their actual but hidden intent, the Millers and
`
`International Mulch did not solicit in good faith any potential investors for their
`
`synthetic mulch business.
`
`21.
`
`Green Edge would not have entered into the July 2002 License
`
`Agreement had it known that International Mulch did not intend to add a new
`
`investor and was damaged as a result ofits reliance on each of the Millers’ and
`
`International Mulch’s false representations as alleged herein.
`
`22.
`
`The Millers’ and International Mulch’s conduct as alleged herein was
`
`outrageous because of their evil motive or reckless indifference to the rights of
`
`others, thereby justifying an award of punitive damages against them.
`
`Wherefore, Green Edge Enterprises, LLC requests the Court enter judgment
`
`in its favor and against defendants International Mulch Company, Inc., Michael T.
`
`Miller and Cindy A. Miller, jointly and severally, for actual damages shown at trial
`
`to be fair and just, but not less than $1,000,000, and for punitive damages in an
`
`amount necessary to punish defendants and deter others from similar misconduct,
`
`but not less than $4,000,000. Green Edge Enterprises, LLC also requests the Court
`
`enter a judgment rescinding the July 2002 License Agreement, for its costs incurred
`
`herein and for such other and further relief as the Court deems proper.
`
`Count II - Negligent Misrepresentations
`Against International Mulch and the Millers
`
`23.
`
`Green Edge re-alleges the facts pleaded in paragraphs 1 through 22 as
`
`if fully set forth herein.
`
`

`
`24.
`
`International Mulch and the Millers, in the exercise of reasonable care,
`
`should have known of the falsity of each of the representations alleged in
`
`paragraphs 12, 13, 14 and 17 above, and made each of them intending that Green
`
`Edge rely thereon.
`
`25.
`
`Green Edge was damaged as a result of its reliance on each of
`
`the Millers’ and International Mulch’s false representations as alleged herein.
`
`26.
`
`The Millers’ and International Mulch’s conduct as alleged herein was
`
`outrageous because of their evil motive or reckless indifference to the rights of
`
`others, thereby justifying an award of punitive damages against them.
`
`Wherefore, Green Edge Enterprises, LLC requests the Court enterjudgment
`
`in its favor and against defendants International Mulch Company, Inc., Michael T.
`
`Miller and Cindy A. Miller, jointly and severally, for actual damages shown at trial
`
`to be fair andjust, but not less than $1,000,000, and for punitive damages in an
`
`amount necessary to punish defendants and deter others from similar misconduct,
`
`but not less than $4,000,000. Green Edge Enterprises, LLC also requests the Court
`
`enter a judgment rescinding the July 2002 License Agreement, for its costs incurred
`
`herein and for such other and further relief as the Court deems proper.
`
`Count III — Breach of Contract
`
`Against International Mulch
`
`27.
`
`Green Edge re-alleges the facts pleaded in paragraphs 1 through 22
`
`as if fully set forth herein.
`
`

`
`28.
`
`Beginning almost immediately after the July 2002 License Agreement
`
`was entered into, and continuing thereafter through the present, International
`
`Mulch, in breach of the Agreement, failed to pay Green Edge the license fee and
`
`royalties owed thereunder.
`
`29.
`
`In further breach of the 2002 License Agreement, International Mulch
`
`has failed to pursue a deal with a new investor in good faith and as agreed to
`
`therein.
`
`30.
`
`In further breach of the 2002 License Agreement, International Mulch
`
`has at all times relevant herein manufactured and sold synthetic mulch in
`
`Missouri, a state for which it was not authorized by Green Edge to manufacture and
`
`sell synthetic mulch.
`
`31.
`
`The foregoing breaches are material.
`
`32.
`
`Green Edge has been damaged as a result of International Mulch’s
`
`breaches of the July 2002 License Agreement.
`
`Wherefore, Green Edge Enterprises, LLC requests the Court enterjudgrnent
`
`in its favor and against defendant International Mulch Company, Inc. for actual
`
`damages shown at trial to be fair andjust, but not less than $1,000,000, for an
`
`Order rescinding the July 2002 License Agreement, for its costs incurred herein and
`
`for such other and further relief as the Court deems proper.
`
`Count IV — Patent Infringement
`Against International Mulch
`
`

`
`33.
`
`Green Edge re-alleges the facts pleaded in paragraphs 1 through 22
`
`as if fully set forth herein.
`
`34.
`
`Pursuant to the July 2002 License Agreement, International Mulch
`
`agreed that Green Edge could terminate the License Agreement ifit materially
`
`breached the contract and thereafter failed to cure the breach within thirty days of
`
`notice from Green Edge.
`
`35.
`
`Beginning almost immediately after the July 2002 License Agreement
`
`was entered into, International Mulch failed to pay Green Edge the license fee and
`
`royalties owed under the July 2002 License Agreement. It also failed to pursue a
`
`deal with a new investor as agreed to therein, improperly modified a trademark
`
`assigned to International Mulch as part of the License Agreement and
`
`manufactured and sold synthetic mulch in unauthorized locations.
`
`36.
`
`On November 27, 2002, Green Edge notified International Mulch of its
`
`defaults and demanded they be cured within thirty days.
`
`37.
`
`International Mulch failed to cure its defaults within thirty days and
`
`on January 7, 2003, Green Edge notified International Mulch that the License
`
`Agreement would terminate in thirty days, or on February 7, 2003.
`
`38.
`
`On February 7, 2003, the License Agreement terminated by its own
`
`terms. International Mulch thereafter had no right to manufacture or sell synthetic
`
`mulch as claimed in the Mulch Patent owned by Green Edge.
`
`39.
`
`From February 7, 2003 through the present, International Mulch has
`
`manufactured and sold synthetic mulch throughout the United States, including in
`
`

`
`this district, infringing one or more claims of the Mulch Patent without license or
`
`authority from Green Edge.
`
`40.
`
`On or before February 7, 2003, International Mulch had actual notice
`
`of the Mulch Patent. On August 22, 2003, this Court declared that the Mulch
`
`Patent is valid and enforceable as part of the Judgment entered in a case brought
`
`by International Mulch; Green Edge Enterprises, LLC, et al. v. DSM Landscape
`
`Products, et (11,, case no. 4:O2CVO0482 MLM.
`
`41.
`
`International Mulch’s infringement of the Mulch Patent was and
`
`remains willful, and has damaged Green Edge and has caused and will continue to
`
`cause irreparable harm to Green Edge.
`
`VVherefore, Green Edge Enterprises, LLC requests the Court enterjudgrnent
`
`in its favor and against defendant International Mulch Company, Inc. for actual
`
`damages shown at trial to be fair and just, but not less than $1,000,000, which
`
`damages should be trebled pursuant to 35 U.S.C. § 284, and for Green Edge’s
`
`litigation expenses incurred herein, including its costs and attorney and expert
`
`witness fees. Green Edge also requests the Court enter an Order permanently
`
`enjoining International Mulch Company, Inc., its shareholders, directors, officers,
`
`employees and agents, and all those in concert with them, from manufacturing
`
`and/or selling synthetic mulch processed from any mean or method claimed by
`
`Green Edge Enterprises, LLC in United States Patent number 5,910,514; and
`
`for such other and further relief as the Court deems proper.
`
`

`
`Count V - Trademark Infringement
`Against International Mulch Company,_Inc.
`
`42.
`
`Green Edge re-alleges the facts pleaded in paragraphs 1 through 22
`
`and 34 through 41 as if fully set forth herein.
`
`43.
`
`As part of the July 2002 License Agreement, Green Edge assigned to
`
`International Mulch its interest in the “Rubberific” and “Rubberific Mulch”
`
`trademarks.
`
`44.
`
`Despite the termination of the July 2002 License Agreement,
`
`International Mulch has used the “Rubberific” and “Rubberific Mulch” trademarks
`
`from February 7, 2003 through the present without any license or authority from
`
`Green Edge.
`
`45.
`
`International Mulch’s infringement of Green Edge’s trademarks has
`
`damaged Green Edge and has caused and will continue to cause irreparable harm
`
`to Green Edge.
`
`46.
`
`International Mulch’s infringement of Green Edge’s trademarks was
`
`and remains willful and in bad faith.
`
`Wherefore, Green Edge Enterprises, LLC requests the Court enter judgment
`
`in its favor and against defendant International Mulch Company, Inc. for actual
`
`damages shown at trial to be fair and

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