UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`In re
`
`Application Serial No. 76/496166
`of RMF GLOBAL, INC.
`for the mark ELIOTEX
`F'ld M h10,2003
`P‘u;hS°h’‘edf‘(’)’r°Oppmon on May 18) 2004
`
`Class Being Opposed: 22
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _x
`
`,
`,
`,
`,,
`mmnmlmmumuamuumuummm
`
`1 O-:29-2004
`
`U.S. Parental ‘I‘Mofc/'rp_1 Ma" RFD‘ Dt M‘.
`
`ELIOTEX SRL,
`
`Opposition No. 91160941
`
`V-
`
`RMF GLOBAL, INC.’
`
`Opposer,
`
`'
`
`'
`
`Applicant.
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _X
`
`MOTION TO SUSPEND
`
`INTER PARTES PROCEEDING
`
`Opposer Eliotex, SRL (“Opposer” or “Eliotex”) moves to suspend the above
`
`captioned proceeding pending the disposition of Civil Action No. 04 0593 (the “Civil
`
`Action”) filed by Applicant RMF Global, Inc. (“Applicant”) and Innovative Designs, Inc.
`
`against Opposer
`
`in the United States District Court
`
`for
`
`the Western District of
`
`Pennsylvania on April 20, 2004.
`
`In the Civil Action, Applicant seeks,
`
`inter alia, a
`
`declaration of non-infringement of the ELIOTEX trademark from the court. For its part,
`
`Opposer has not yet filed its own Answer and Counterclaim, alleging,
`
`inter alia,
`
`291208.1
`
`[3327o/3}
`
`
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`In re
`
`Application Serial No. 76/496166
`of RMF GLOBAL, INC.
`for the mark ELIOTEX
`F'ld M h10,2003
`P‘u;hS°h’‘edf‘(’)’r°Oppmon on May 18) 2004
`
`Class Being Opposed: 22
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _x
`
`,
`,
`,
`,,
`mmnmlmmumuamuumuummm
`
`1 O-:29-2004
`
`U.S. Parental ‘I‘Mofc/'rp_1 Ma" RFD‘ Dt M‘.
`
`ELIOTEX SRL,
`
`Opposition No. 91160941
`
`V-
`
`RMF GLOBAL, INC.’
`
`Opposer,
`
`'
`
`'
`
`Applicant.
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _X
`
`MOTION TO SUSPEND
`
`INTER PARTES PROCEEDING
`
`Opposer Eliotex, SRL (“Opposer” or “Eliotex”) moves to suspend the above
`
`captioned proceeding pending the disposition of Civil Action No. 04 0593 (the “Civil
`
`Action”) filed by Applicant RMF Global, Inc. (“Applicant”) and Innovative Designs, Inc.
`
`against Opposer
`
`in the United States District Court
`
`for
`
`the Western District of
`
`Pennsylvania on April 20, 2004.
`
`In the Civil Action, Applicant seeks,
`
`inter alia, a
`
`declaration of non-infringement of the ELIOTEX trademark from the court. For its part,
`
`Opposer has not yet filed its own Answer and Counterclaim, alleging,
`
`inter alia,
`
`291208.1
`
`[3327o/3}
`
`
`
`
`
`trademark infringement because that activity may have been considered a waiver of its
`
`right to arbitrate (Declaration of Elio Cattan (Cattan Dec’l at '13)). The Civil Action is
`
`itself currently stayed by the District Court pending resolution of an arbitration in Italy
`
`on various related State law issues, but the ownership of the trademark which is the
`
`subject of this proceeding will either (1) be determined in the arbitration in Italy; or (2)
`
`in the Civil Action after the arbitration is resolved}
`
`FACTS
`
`In or about early 1998, Elio Cattan, the owner of 100% of the stock of Opposer
`
`Eliotex, came up with the fanciful trademark ELIOTEX (a composite of his first name
`
`ELIO and the first part of the word “TEXTILE”) as the name of a new technical insulating
`
`fabric. (“Cattan Dec’l”) at '16). Substantially simultaneously with his decision to use the
`
`mark ELIOTEX, Opposer obtained all rights in United States Patent Application Serial
`
`No. 09/016,998 which eventually matured into Patent No. 6,083,999 (“the ‘999
`
`Patent”) (Cattan Dec’l at '17). Copies of the Assignment and the ‘999 Patent are attached
`
`to the Cattan Dec’l at Exhibits C and D).
`
`On or about June 11, 1999, Opposer and Applicant entered into a distribution
`
`agreement (the “Distribution Agreement”) wherein Opposer granted Applicant the right
`
`to distribute ELIOTEX labeled fabric pursuant to certain terms and conditions.
`
`(Cattan
`
`Dec’l at '18). A copy of the Distribution Agreement is attached to the Cattan Dec’l at
`
`Exhibit E. The Distribution Agreement included an arbitration clause dictating that
`
`1 In '118 of the Answer in this Proceeding, Applicant wrote “Applicant submits that it filed a civil action in
`the U.S. District Court for the Western District of Pennsylvania concerning matters potentially relevant to the
`subject matter of this Opposition Proceeding.” (Emphasis Added).
`
`29120s.1
`
`_2_
`
`
`
`
`
`disputes surrounding the agreement be resolved in an arbitration proceeding in Italy.
`
`On September 21, 2004, the Court in the Civil Action stayed the Civil Action in favor of
`
`the agreed resolution of certain claims in arbitration in Italy. A copy of the Order and
`
`Memorandum Opinion staying the Civil Action is attached to the Cattan Dec’l as Exhibit
`
`B. For a short while, Applicant indeed purchased ELIOTEX fabric from Opposer and sold
`
`the same in the United States, but the relationship soon deteriorated”.
`
`(Cattan Dec’l at
`
`‘l9).
`
`Applicant’s initial use in the United States of fabric under the trademark ELIOTEX
`
`was pursuant to the Distribution Agreement. Thus, any goodwill or trademark rights
`
`which existed from Applicant’s early sales inured to the benefit of Opposer. This was
`
`clear from the very wording of the Distribution Agreement, where Cattan granted to
`
`Applicant, during the term of the Distribution Agreement: “the sole right to utilize the
`
`Eliotex name and logo in the use of its sales and promotional literature and materials.”
`
`That limited grant from Cattan to Applicant expired when the limited Distribution
`
`Agreement expired. Since then, any use by Applicant of the ELIOTEX trademark has
`
`been infringing on Opposer’s rights.
`
`Even if, assuming arguendo, the Distribution Agreement were silent on ownership
`
`of the ELIOTEX trademark, the ELIOTEX trademark would be owned by Cattan/Opposer,
`
`not Applicant. See McCarthy, McCarthy on Trademarks and Unfair Competition, §16:49
`
`(“Where ownership as between a foreign manufacturer and an exclusive U.S. distributor
`
`In addition to claims directed to the ‘999 Patent and the ELIOTEX trademark, allegations of State law
`2
`torts relating to contract have been alleged by both parties against the other in the Civil Action.
`
`29l208.l
`
`_3_
`
`
`
`
`
`..
`
`is at issue, absent an agreement to the contrary, the rights remain with the foreign
`
`manufacturer.”).
`
`Applicant’s filing on March 10, 2003 of the current trademark application for the
`
`mark ELIOTEX is in direct contravention of Opposer’s clear and unequivocal rights in
`
`that mark.
`
`ARGUMENT
`
`Suspension of proceedings before the Trademark Trial and Appeal Board
`
`(“TTAB”) is governed by 37 C.F.R. § 2.117(a), which states:
`
`Whenever it shall come to the attention of the [TTAB] that a
`party or parties to a pending case are engaged in a civil
`action which may have a bearing on the case, proceedings
`before the Board may be suspended until termination of the
`civil action....
`
`In this case, disposition of the Civil Action will determine the ultimate issue before
`
`the TTAB in this Opposition Proceeding, namely, whether Applicant is entitled to a
`
`trademark registration resulting from the ‘166 Application.
`
`In addition, it will settle
`
`issues which are not the subject of the Opposition Proceeding. Where both a proceeding
`
`and a civil action are pending relative to the same trademarks and parties, and the civil
`
`action may have a bearing on the issues surrounding the TTAB proceeding, the Board
`
`will typically suspend the TTAB proceeding pending resolution of the civil action. §e_e,
`
`gg, TTAB Manual of Procedure (TBMP), §510.02(a); see also, e.g., Geneological Inst. of
`
`Am. v. Thi-Dai Phan, 145 F. Supp.2d 68, 70, FN. 1 (D.D.C. 2001)(noting that TTAB
`
`granted motion to suspend opposition proceeding pending determination of action);
`
`2912os.1
`
`_4_
`
`
`
`National Ass’n of Profl Baseball Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143,
`
`1145 (10th Cir. 2000) (noting that TTAB granted request by Plaintiff to suspend
`
`opposition proceedings pending outcome of judicial proceedings); Cash v. Brooks, 906 F.
`
`Supp. 450, 451 (E.D. Tenn. 1995) (noting that TTAB indicated its normal practice is to
`
`suspend its proceedings pending disposition of related civil matters); Opticians Ass’n of
`
`Am. v. Indep. Opticians ofAm., 734 F. Supp. 1171, 1181 (D.N.J. 1990) (noting that power
`
`to stay proceedings resides only in Board itself and flows from power of court to
`
`schedule disposition with goal of promoting fair and efficient adjudication), rev’d on
`
`other grounds, 920 F.2d 187 (3d Cir. 1990); Sonora Cosmetics v. L’Oreal S.A., 631 F.
`
`Supp. 626 (S.D.N.Y. 1986) (Noting Commissioner of Patent’s view that since TTAB
`
`determinations of the validity of registrations are merely advisory to the courts, it is
`
`preferable for the TTAB to stay its own proceedings where parallel litigation occurs in
`
`the district court); The Other Tel. Co. v. Conn. Nat’l Tel. Co., 181 U.S.P.Q. 125 (T.T.A.B.
`
`1974). Such suspension should be ordered here.
`
`The decision to suspend this proceeding should not be altered due to the fact that
`
`the Civil Action is itself suspended. The Court in the Civil Action retains jurisdiction to
`
`reopen the Civil Action when appropriate, and all
`
`issues,
`
`including the issue of
`
`trademark ownership which will be determinative in this Proceeding, will be determined
`
`by the Civil Action in due course.
`
`It should also be noted that although the Discovery
`
`period has started, neither party has yet served or taken any discovery.
`
`Suspension of this Proceeding is appropriate because the Board’s determination in
`
`the instant proceeding of Applicant’s right to register the ELIOTEX mark would not be res
`
`29l208.1
`
`_5_
`
`
`
`
`
`judicata or binding on the District Court’s determination in the Civil Action of Applicant’s
`
`right to fie that mark.
`
`Tuvache, Inc.
`
`v. Emilio Pucci Perfumes Int’l, 152 U.S.P.Q. 574,
`
`575 (S.D.N.Y. 1967) (“Patent Office determination of the right to register would not be
`
`res judicata or binding on this Court
`
`in the suit challenging the right
`
`to use the
`
`[marks]”). However, the District Court’s determination of the Civil Action would be
`
`binding on the TTAB. See E.& J. Gallo Winery v. F. & P. S.p.A., 899 F.Supp. 465, 468
`
`(E.D.Ca. 1994) (stating that record made in PTO is admissible but not binding on District
`
`Court); see also, Manganaro Foods, Inc. v. Manganaro’s Hero Boy, Inc., 2001 TTAB LEXIS
`
`671, *1, *3-*4 (T.T.A.B. 2001)(stating that in absence of any clear ruling from court
`
`TTAB will suspend proceedings until court has ruled on request); and Tokaido v. Honda
`
`Assoc., 179 U.S.P.Q. 861, 863 (T.T.A.B. 1973) (“[W]hile a decision by the District court
`
`would be binding upon the Patent Office, a decision by the Trademark Trial and Appeal
`
`Board would only be advisory in respect to the disposition of the case pending in the
`
`District Court”....”better policy to suspend proceedings herein until the civil suit has been
`
`finally concluded”); Goya Foods, Inc. v. Tropicana Prod., 846 F.2d 848, 854 (2d Cir.
`
`1988) (outcome of PTO’
`
`s registration decision would not affect
`
`the legal standard
`
`applied in infringement claim or scope of required fact—finding; district court still must
`
`determine the validity and priority of the marks and the likelihood of consumer
`
`confusion).
`
`29120211
`
`_6_
`
`
`
`
`
`For
`
`the foregoing reasons, Opposer
`
`respectfully requests
`
`that Opposition
`
`No. 91160941 be suspended.
`
`Respectfully submitted,
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`Attorneys for Opposer
`90 Park Avenue
`
`New York, NY 10016
`
`Tel:
`
`(212) 336-8000
`
`(212) 336-8001
`Fax:
`Email: ptodocket@are1aw.com
`
`Dated: October 29, 2004
`
`By @ E
`
`New York, NY
`
`Chester Rothstein
`
`5 9055/5
`Express Mail" Mailing Label No.:
`Date of Deposit:
`/0/ 57-7 /5 $‘
`I hereby certify that this paper or fee is being deposited with
`the United States Postal Service "Express Mail" service under 37
`CFR 1.10 on the date indicated above and is addressed to the
`Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA
`22202-3514.
`
`
`
`Millie Velazquez
`
`
`29l208.1
`
`_7_
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Inre
`
`Application Serial No. 76/496166
`of RMF GLOBAL, INC.
`for the mark ELIOTEX
`
`Filed on March 10, 2003
`
`Published for Opposition on May 18, 2004
`
`Class Being Opposed: 22
`
`____________________ _ _x
`
`ELIOTEX SRL,
`
`Opposition No. 91 160941
`
`V‘
`RMF GLOBAL, INC.,
`
`I
`
`i
`'
`
`Opposer,
`
`Applicant
`
`DECLARATION
`OF ‘M0 CATIAN
`
`1, ELIO CATTAN, hereby declare and state as follows:
`
`1.
`
`I am President and sole stockholder of Eliotex SRL, Opposer in the above-
`
`referenced action.
`
`I submit this Declaration in support of Opposer's Motion
`
`to Suspend Inter Partes Proceeding.
`
`2.
`
`Opposer and Applicant are parties to Civil Action No. 04 0593 (the ‘Civil
`
`Action”) filed by Applicant RMF Global, Inc. (“Applicant”) and Innovative
`
`Designs, Inc. against Opposer in the United States District Court for the
`
`314951
`
`[33270/3]
`
`
`
`Western District of Pennsylvania. A copy of the Complaint is attached
`
`hereto as Exhibit A.
`
`Opposer has not yet filed its Answer/Counterclaim, as that may have been
`
`considered a waiver of its right to arbitrate, as discussed below.
`
`On September 21, 2004, the Court in the Civil Action agreed with Opposer
`
`that claims in the Civil Action must be arbitrated in Italy, and thus stayed
`
`the Civil Action in favor of the agreed resolution of certain claims in
`
`arbitration ir1 Italy. A copy of the Order and Memorandum Opinion staying
`
`the Civil Action is attached hereto as Exhibit B.
`
`The ownership of the trademark which is the subject of this proceeding will
`
`be determined either (1) hr the arbitration proceeding in Italy; or (2) in the
`
`Civil Action after the arbitration proceeding is resolved.
`
`In or about early 1998, I came up with the fanciful trademark ELIOTEX as
`
`a composite as my first name, ELIO, and the first portion of the word
`
`"TEXtile."
`
`Substantially simultaneously with my decision to use the mark ELIOTEX, I
`
`obtained all
`
`rights in the United States Patent Application Serial
`
`No. 09/016998 which eventually matured into United States Patent
`
`Registration No. 6,083,999 (“the ‘999 Patent”). A copy of the Assignment
`
`is attached hereto as Exhibit C, and a copy of the ‘999 Patent is attached
`
`hereto as Exhibit D.
`
`2914951
`
`
`
`8.
`
`On or about June 11, 1999, Opposer and Applicant entered into a
`
`distribution agreement
`
`(the “Distribution Agreement”) where Opposer
`
`granted Applicant the right
`
`to distribute ELIOTEX labeled fabric (the
`
`“ELIOTEX Fabric”) pursuant to certain terms and conditions. A copy of the
`
`Distribution Agreement is attached hereto as Exhibit E.
`
`9.
`
`For a short while, Applicant
`
`indeed purchased ELIOTEX Fabric from
`
`Opposer and sold the same in the United States, but the relationship soon
`
`deteriorated.
`
`10.
`
`The Distribution Agreement included an arbitration clause dictating that
`
`disputes
`
`surrounding the agreement be resolved in an arbitration
`
`proceeding in Italy.
`
`Under penalty of perjury, I hereby declare the foregoing statements to be true and
`
`correcttothebestofmyknowiedge. J
`Dated: October"‘o7[[ .2004
`' / %
`
`Elio Cattan
`
`291495.:
`
`_3_
`
`
`
`
`
`
`
`PFlGIHR=
`
`3
`
`U A0 440 (low. it/0|) summon in. a Civil Anion
`
`
`.4 «.—....~...._. . ._.... .»..__ -..
`
`
`
`
`Iimstom
`
`District of
`
`liennnylvaudu
`
`UNITED STATES DISTRICT COURT
`
`INC. AND
`11.113. GLOBAL.
`INNOVATIVE nxsxcun,
`INC.
`
`81.10 D- cnfiw REID EI.I0.'I'J-‘I3 8R1;
`
`V.
`
`SUMMONS IN ACIVIL CASE
`
`CASE NUMBER:
`
`M 9593
`
`T01 (Nnmo and uddtau 1! Dvfandnmj
`
`Elia D. Cattan
`11 Princess Grace Avenue
`Columbia Bouidance
`Monaco, flotnte Carlo 98000
`
`YOU ARE IJERILBY SUMMONED and required to serve on PLAlN I IF F‘S ATTORNEY (mum: ruul oddrcul
`
`LKECE TISEHAN
`PUSQLDO G LMIPL
`Attnt Patrick Bore]:
`Citix.-mus Bank Building, 30th Floor
`525 William Penn Placer
`
`Pittsburgh. PA 15219
`08
`
`BILRKBCH. PPIEDLANDER,
`OOPLIN G hRO)I0l|'F LLP
`nttna Gregory 8. Kalocouria
`2300 BP Tower
`
`ZDD Public Square
`Clovultmd. Ohio 44114-2378
`US
`
`days uflcr service
`t"°ntY (29)
`an answer to the cdmplaim which la sewed on you with this summons. within
`of this summons on you. exclusive oflhe day of service. If you fa!!!" to do an. judgment by dg.-fault will be Iukcn Against you for
`Ihcarclicf demanded in Ihu complaint. Any unxwur that you serve on the panius to this uution must bu mad with {he Clerk of this
`Court within 11 rcasomblc period of lime uller acrvloc.
`
`C/l.EllK
`
`4.5
`(By) DEPUTY CLERK
`
`K‘
`
`MAY 14 ‘(U04
`
`DATE
`
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`
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`PFHSINFH 5
`
`COPY
`
`IN THEIJNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`R.M.F. GLOBAL, INC. AND INNOVATIVE
`DESIGNS,INC.,
`
`,
`,
`Plamtzjjiv,
`
`Vs-
`
`ELIO D. CATTAN AND ELIOTEX SRL,
`Defendam
`
`_
`,
`_
`Civil Action No.:
`
`Judge:
`
`Q 5
`
`)
`)
`)
`)
`)
`)
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`3 DEMAND FOR JURY TRIAL
`
`$5,;
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`COMPLMNT
`
`Plaintiffs, R.M.F. Global, Inc. (“RMF Global") and Imiovative Designs, Inc. (“IDI"), for
`
`their complaint against defendants, Elia D. Cattan and Eliotex srl (collectively “Cattan"), allege
`
`as follows: ’
`
`The Parties
`
`1.
`
`Plaintiff RMF Global is a Pennsylvania corporation having its principal place of
`
`business at 223 North Main Street, Suite 2, Pittsburgh, PA 15215.
`
`2.
`
`Plaintiff IDI is a Delaware corporation having its principal place of business at
`
`223 North Main Street, Suite l, Pittsburgh, PA 15215.
`
`3.
`
`On information and belief, defendant Elio D. Cattan is a citizen of Italy having a
`
`personal address of 11 Princess Grace Avenue, C0iL11I1bl3. Residence, Monaco, Monte Carlo
`
`98000.
`
`4.
`
`On information and belief, defendant Eliotcx srl is an Italian corporation having a
`
`principal place of business at Via Soderini 47, Milano, Italy.
`
`
`
` l
`
`PFt|3IHR=
`
`Jurisdiction and Venue
`
`5.
`
`This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331, 1338, 2201
`
`and 2202, as a declaratory judgment arising under the Patent Laws, Title 35 of the United States
`
`Code and under the Trademark Act of 1946, Title 15 of the United States Code. This Court also
`
`has jurisdiction under 28 U.S.C. § 1332(a)(2) because the matter in controversy exceeds the sum
`
`or value of $75,000, exclusive of interest and costs, and is between citizens of one state and
`
`citizens of a foreign state. Subject matter jurisdiction is also proper under the supplemental
`
`jurisdiction provisions of28 U.S.C. § 1367.
`
`6..
`
`Elio D. Cattan and Eliotex srl are subject to personal jurisdiction in the State of
`
`Pennsylvania and in this judicial district.
`
`7.
`
`Venue is proper in thisjudicial district under 28 U.S.C. § 1391.
`
`Background Facts
`
`8.
`
`On information and belief, Elia D. Cattan is the owner by assignment of U.S.
`
`Patent No. 6,083,999 (“the ‘999 patent”), entitled “Process for the Preparation of a Super
`
`Lightweight Foamed Sheet," which issued on July 4, 2000. A true copy of the ’999 patent is
`
`attached as Exhibit A.
`
`9.
`
`On information and belief, Elio D. Cattan is the director and sole proprietor of
`
`Eliotex srl.
`
`10.
`
`RMF Global markets
`
`a material having thermal
`
`insulation and buoyancy
`
`properties sold under the trademark ELIOTEX (“ELIOTEX material”). The ELIOTEX material
`
`is a high quality foamed sheet material comprised of low-density polyethylene.
`
`
`
`
`‘J4.
`
`PFlGlNfi=
`
`11.
`
`On information and belief, RMF Global was the first user of the ELIOTEX mark
`
`in the United States in connection with the ELIOTEX material. At least as early as 1999, RMF
`
`Global has used the ELIOTEX mark in interstate commerce on an exclusive basis and has come
`
`to be known as the source of the ELIOTEX material. Based on the foregoing, RMF Global has
`
`acquired and owns the goodwill in the ELIOTEX mark.
`
`12.
`
`RMF Global exclusively sells and distributes the ELIOTEX material to IDI under
`
`an agreement between RMF Global and IDI. [DI manufactures and sells apparel, sporting goods,
`
`accessories, and other specialty products incorporating the ELIOTEX material throughout the
`
`United States to distributors and retailers.
`
`In a select market segment, IDI sells the ELIOTEX
`
`material to apparel and accessory manufacturers.
`
`13.
`
`On information and belief, Cattan has repeatedly threatened legal action against
`
`RMF Global and ml for the alleged infringement of the ‘999 patent and trademark rights
`
`associated with the ELIOTEX mark.
`
`In addition, representatives of Cattan have likewise
`
`threatened business partners, customers and prospective customers of RMF Global and/or IDI
`
`and discouraged them from dealing with RMF Global and/or IDI.
`
`Count I —— Declaration of Non—Infrlngement of Patent
`
`Paragraphs 1-13 are realleged and restated as if fully set forth.
`
`Cattan has accused RMF Global, IDI, and/or their customers of infringing the
`
`14.
`
`15.
`
`claims of the ‘999 patent for their sales and marketing activities relating to the ELIOTEX
`
`material and products incorporating same. For this reason, Cattan has engaged in activities
`
`causing RMF Global and IDI reasonable apprehension that they will face legal action for patent
`
`infiingement if they continue to market the ELIOTEX material and products incorporating same,
`
`
`
`
`PRGINR:
`3
`
`respectively. An actual controversy within the meaning of 28 U.S.C. 2201, er seq., exists ‘
`
`regarding the alleged infringement of the ‘999 patent.
`
`16.
`
`The importation, manufacture, use, sale, or offer for sale of the ELIOTEX
`
`material and/or the products incorporating same by RMF Global, [D1 and/or their customers does
`
`not infringe any valid claim of the ‘999 patent. Also, plaintiffs have not induced others to
`
`infringe or contributed to the infringement of any valid claim of the ‘999 patent. On information
`
`and belief, Cattan knows or should know that such activities by RMF Global, IDI and/or their
`
`customers do not infringe the ‘999 patent.
`
`Count II --—- Declaration of Invalidity of Patent
`
`Paragraphs 1-16 are realleged and restated as if fully set forth.
`
`On information and belief, the ‘999 patent is invalid and unenforceable because
`
`17.
`
`l8.
`
`the invention claimed therein fails to satisfy one or more of the conditions of patentability set
`
`forth in Title 35, Part 11, United States Code, including, without limitation, sections 101, 102,
`
`103, or 112, and the ‘999 patent was obtained through inequitable conduct before the U.S. Patent
`
`and Trademark Office. For example, and without limitation, the claims of the ‘999 patent are
`
`invalid under 35 U.S.C. § § 102 and/or 103 as unpatentable over U.S. Patent Nos. 4,746,564,
`
`4,761,328, and 4,952,352 issued to Shin (“the Shin patents“). True copies ofthe Shin patents are
`
`attached as Exhibits B-D.
`
`Count III -— Declaration of Non-Infringement of Trademark
`
`19.
`
`Paragraphs 1-18 are realleged and restated as if fully set forth.
`
`
`
` 4
`
`PQGINQ:
`
`20.
`
`Cattan hasaccused RMF Global, IDI, and/or their customers of infringing its
`
`rights in the ELIOTEX mark. For this reason, Cattan has engaged in activities causing RMF
`
`Global and IDI reasonable apprehension that they will face legal action for alleged trademark
`
`infringement of the ELIOTEX mark if they continue to market the ELIOTEX material and/or
`
`products incorporating same. An actual controversy within the meaning of 28 U.S.C. § 2201
`
`exists among the parties regarding the alleged trademark infringement.
`
`21.
`
`The sale or offer
`
`for sale of the ELIOTEX material and/or the products
`
`incorporating same by RMF Global, IDI and/or their customers under the ELIOTEX mark does
`
`. not infringe any rights of Cattan associated with the ELIOTEX mark. Also, plaintiffs have not
`
`induced others to infringe or contributed to the infringement of any rights of Cattan associated
`
`with the ELIOTEX mark. On iiifonnation and belief, Cattan lmows or should know that such
`
`activities by RMF Global, IDI and/or their customers do not constitute trademark infringement.
`
`Count IV — Tortious interference with Business and/or Contractual Relations
`
`22.
`
`Paragraphs 1-21 are realleged and restated as if fully set forth.
`
`23.
`
`Representatives of Cattun have contacted numerous customers and prospective
`
`customers of RMF Global and/or IDI and falsely claimed patent and trademark infringement,
`
`thereby discouraging them from dealing with RMF Global and/or IDI with regard to materials
`
`and products marketed and sold under the ELIOTEX mark. These claims are baseless, and
`
`Cattan knows or should know they are baseless.
`
`24.
`
`Cattan’s acts of contacting customers and prospective customers of RMF Global
`
`and/or IDI are intentional and willful, and designed to injure or destroy their business with these
`
`
`
` S
`
`PQGINQ:
`
`customers and prospective customers
`
`relating to the ELIOTEX material and products
`
`'1
`
`incorporating same.
`
`25.
`
`Cattan‘s activities of contacting customers and prospective customers of RMF
`
`Global and/or IDI was and is unjustified, and Cattan’s activities are undertaken without authority
`
`and without a privilege.
`
`26.
`
`By engaging in the conduct set forth above, Catum has tortiously interfered with
`
`existing and prospective business or contractual relations between RMF Global and/or IDI and
`
`their customers and/or prospective customers.
`
`27.
`
`The wrongful conduct of Cattan has damaged RMF Global and IDI in an amount
`
`that is not presently known but will be proved at trial.
`
`28.
`
`Upon information and belief, Cattan will continue its wrongful conduct unless
`
`enjoined.
`
`29.
`
`As a direct result of the wrongful conduct of Cattan, RMF Global and l.DI are
`
`suffering, and unless injunctive relief is granted, will ‘continue to suffer
`
`immediate and
`
`irreparable harm for which there is not adequate remedy at law.
`
`Count V — Common Law Unfair Competition
`
`Paragraphs 1-29 are realleged and restated as if fully set forth.
`
`The foregoing acts of Cattan constitute unfair competition.
`
`On information and belief, Cattan's unfair competition has been willful and
`
`30.
`
`3]..
`
`32.
`
`intentional.
`
`33.
`
`The unfair competition of Cattan has damaged RMF Global and/or IDI in an
`
`amount that is not presently known but will be proved at trial.
`
`
`
` 6
`
`PF-lGIl*H3=
`
`34.
`
`On information and belief, Cattan will continue to engage in unfair competition,
`
`and IDI will be irreparably damaged thereby, unless enjoined by this Court.
`
`WI-IEREFORE, RMF Global and ID] pray that this Court enter judgment that:
`
`(a)
`
`RMF Global and IDI have not infringed, induced others to infringe, or contributed
`
`to the infringement of any claim of the ‘999 patent;
`
`(b)
`
`(c)
`
`each and every claim of the ‘999 patent is invalid and unenforceable;
`
`Cattan,
`
`its officers, employees, agents and servants, and all persons in active
`
`concert with any of them, be preliminarily and permanently enjoined from charging RMF
`
`Global,
`
`IDI and/or
`
`their customers or prospective customers, directly or
`
`indirectly, with
`
`infringement of the ‘999 patent;
`
`(d)
`
`Cattan has no protectable trademark rights in the ELIOTEX mark in the United
`
`States;
`
`(e)
`
`Cattan,
`
`its officers, employees, agents and servants. and all persons in active
`
`concert with any of them, be preliminarily and permanently enjoined from charging RMF
`
`Global,
`
`IDI and/or their customers or prospective customers, directly or
`
`indirectly, with
`
`infringement of the ELlOTEX mark;
`
`(0
`
`an accounting be made of RMF Global's and lDI's damages arising out of the
`
`wrongful conduct of Cattan and that it be awarded such an amount;
`
`(g)
`
`RMF Global and IDI be awarded punitive damages for Cattaifs acts of tortious
`
`interference and unfair competition;
`
`(h)
`
`this is an exceptional case under 15 U.S.C. § 285, and that RMF Global a.nd IDI
`
`be awarded their reasonable attorneys fees, expenses and costs in this action; and
`
`
`
` 7
`
`PFIGINRZ
`
`(i)
`
`this Court grant to RMF Global and [D] such other and further relief as may be",
`
`just and proper under the circumstances.
`
`JURY TRIAL DEMANDED.
`
`DATED: fig
`
`04
`
`Respectfully submitted,
`
`- A
`
`3
`
`Steven M. Auvil (0063827)
`Gregory S. Kolocouris (0074806)
`BENESCH, FRIEDLANDER,
`COPLAN & ARONOFF LLP
`2300 BP Tower
`
`200 Public Square
`Cleveland, Ohio 44114-2378
`
`Telephone: (216) 363-4500
`Facsimile: (216)363-4588
`E-mail: s;1uvil(c0bfca.com
`E-mail: gkolocouris@bfca.com
`
`POM éwz
`
`Patrick Sorek
`PA ID 41827
`
`Leech Tishman Fuscaldo & Lampl, LLC
`525 William Penn Place, 30th Floor
`Pittsburgh, Pennsylvania l52l9
`412-261-1600
`
`Attorneys for Plaintiffs
`RMF Global, Inc. and
`Innovative Designs, Inc.
`
`
`
`
`
`
`
`A
`
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`IN THE UNITED STATES DISTRICT COURT
`
`R.M.F. GLOBAL, INC., ET AL.,
`
`Plaintiffs,
`
`V.
`
`O4cv05 93
`
`ELIO D. CATTAN, ET AL.,
`
`Defendants.
`
`Therefore, this dijyiof September, 2004, IT IS HEREBY ORDERED that
`
`ORDER
`
`defendants’ motion to dismiss is denied without prejudice.
`
`IT IS FURTHER ORDERED that this action is stayed pending arbitration, and
`
`defendants’ motion in the alternative for an extension of time to answer the complaint is
`
`denied as moot.
`
`The clerk shall mark this docket admin
`
` atively closedjfi
`
`
`
`Arthur J. Schwab
`
`United States District Judge
`
`cc:
`
`All counsel of record as listed below
`
`Gregory S. Kolocouris, Esquire
`Steven M. Auvil, Esquire
`Benesch, Friedlander, Coplan & Aronoff LLP
`2300 BP Tower
`
`200 Public Square
`Cleveland, OH 44114-2378
`
`‘Either party may reinitiate proceedings by filing a petition to reopen if and when it
`becomes necessary, pursuant to the above Memorandum Opinion and Order.
`
`
`
`
`
`Patrick Sorek, Esquire
`Leech, Tishman, Fuscaldo & Lampl
`Citizens Bank Building
`525 William Penn Place. 30th Floor
`
`Pittsburgh, PA 15219
`
`James 0. Guy, Esquire
`125 Wolf Road
`
`Suite 306
`
`Albany, NY 12205
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`R.M.F. GLOBAL, INC., ET AL.,
`
`Plaintiffs,
`
`v.
`
`04cvO5 93
`
`ELIO D. CATTAN, ET AL.,
`
`Defendants.
`
`September 21, 2004
`
`MEMORANDUM OPINION
`
`This is a declaratory judgment action. Plaintiffs, RMF Global, Inc. (RMF) and
`
`Innovative Designs, Inc. (IDI), have filed a five count complaint against Elio D. Cattan
`
`(“Cattan”) and Eliotex, SRL (“Eliotex”) asking this Court to: (I) declare that they did not
`
`infringe on U.S. Patent No. 6,083,999 (the ‘999 patent), entitled “Process for the Preparation
`
`of a Super Lightweight Foamed Sheet;” (2) declare that the ‘999 patent is invalid and
`
`uneforceable; (3) declare that plaintiffs have not infringed on defendants’ rights in the
`
`ELIOTEX trademark; (4) enjoin defendants from further tortious interference with
`
`plaintiffs’ business and contractual relations; and (5) enjoin defendants from engaging in
`
`unfair competition. Plaintiffs seek equitable relief, damages and attomey’s fees.
`
`Defendants have filed a motion to dismiss (doc. no. 8) arguing that the “exclusive
`
`agency, distribution and marketing agreement” (“the agreement”), signed by the parties or
`
`their agents, contains a clause compelling arbitration before the Italian Arbitration
`
`Association. Defendants ask this Court to either (1) dismiss this case with prejudice or
`
`without prejudice; or (2) stay this action pending arbitration.
`
`In the alternative, defendants
`
`
`
`
`
`request an extension of time to answer plaintiffs’ complaint. For the reasons that follow, the
`
`Court will stay this action pending arbitration.
`
`Unless otherwise indicated, the following facts are not in dispute. Joseph Riccelli
`
`(“Riccelli”) formed RMF, a corporation having its principal place of business in Pittsburgh,
`
`Pennsylvania. Riccelli is the sole shareholder and owner of RMF.
`
`RMF sought to contract with defendant Eliotex, an Italian Corporation, for the rights
`
`to market and distribute the ELIOTEX product in the United States. On June 1 l, 1999,
`
`RMF and Eliotex entered into an agreement for the marketing and distribution of the
`
`ELIOTEX product. The agreement, which was actually drafted by RMF/Riccelli’s attorney,
`
`was signed by Riccelli on behalf of RMF and, defendant Elio D. Cattan (“Cattan”), who is
`
`the president of Eliotex, signed the agreement on behalf of corporate defendant Eliotex.
`
`On June 25, 2002, Riccelli incorporated [DI in the state of Delaware for the purpose
`
`of selling apparel, sporting goods, and other specialty products incorporating the ELIOTEX
`
`material. Riccelli is the Chairman of the [DI Board of Directors, its Chief Executive Officer
`
`and the majority shareholder, and Riccelli’s son and his brother are respectively the vice-
`
`president and president/director of IDI. IDI is a company with limited operations and no
`
`revenues. It has sustained losses since its inception.
`
`According to defendant Cattan,’ multiple disputes have arisen between Eliotex and
`
`RMF including but not limited to RMF’s creation of IDI to “circumvent” the licensing
`
`agreement. Defendant Cattan claims that the agreement requires that these disputes, as well
`
`as all allegations raised in the complaint, be resolved through arbitration.
`
`‘Plaintiffs have not yet effectuated service on corporate defendant Eliotex.
`
`2
`
`
`
`
`
`Paragraphs 3, 5 and 11 of the agreement state:
`
`The parties agree that neither shall undertake any effort, nor tolerate or
`cooperate in the undertaking of any effort by any t
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