I
`
`NIXON PEABODY LLP
`ATTORNEYS AT LAW
`
`TTAB
`
`100 Summer Street
`
`Boston, MA 02110-2131
`(617) 345-1000
`Fax: (617)345-1300
`
`Michelle A. Massicotte, Esq.
`Direct Dial:
`(617)345-1341
`E-Mail: mmassic0tte@nixonpeabody.com
`
`April 28, 2005
`
`Trademark Trial and Appeal Board
`Commissioner for Trademarks
`P. O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Re:
`
`Diamond Staffing Solutions, Inc. v. Diamond Staffing, Inc.
`Opposition No.2 91162785
`App. Ser. No.: 78/326,647
`
`Dear Sir/Madam:
`
`With respect to the above-referenced matter, enclosed please find the following:
`
`1. Notice of Appearance of Counsel;
`
`2. Opposer’s Motion for Suspension of Proceedings due to Pending Civil Action in triplicate;
`
`3. Memorandum of Law in Support of Opposer’s Motion for Suspension of Proceedings due to
`Pending Civil Action in triplicate; and
`
`4. Return Post Card.
`
`Please acknowledge your receipt of this letter and the foregoing documents by date-stamping the
`enclosed self-addressed, postage-paid postcard and returning it to me. If you require additional
`information, please contact me at (617) 345-1341.
`
`Ve
`
`ly yo rs
`
`Mic el A.
`
`assicotte
`
`1
`En“ °S”reS
`CCI
`
`Nicholas G. Papastavros, Esq.
`Michael L. Cornell, Esq.
`
`BOS 1 487986 I
`
`ll|||llll|||lllll||llll||||lll|||lllll|l||llll||||
`
`04'23'2005
`U.S. Patent & TMOTCITM Mail Rcpt Dt. #72
`
`’\'Y - BOSTON. MA - BL'Fli\lO, NY - C/\R.")l\ ( ITY. \Y - HARTFORD, ("T - .\1r\\(llESTER, \H - .\1LlEA\,\/A
`Al BA\Y,
`.\l l.\’ YORK, NV - ORANGE ('()L.VTY, (‘A -PH1lAl)EL|’HlA, PA - PR()Vll)Fi\(’F, RI
`- R()( HFSHR, NV - SAN FR/\\I( lS(‘l). ("A - \NASHl\.‘(3TON, D(
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DIAMOND STAFFING SOLUTIONS, INC.
`
`Opposer,
`
`v.
`
`DIAMOND STAFFING, INC.
`
`Applicant.
`
`Opposition No. 91162785
`
`App. Ser. No. 78/326647
`
`NOTICE OF APPEARANCE OF COUNSEL
`
`Nicholas G. Papastavros, Michelle A. Massicotte, Michael L. Cornell and Nixon Peabody
`
`LLP hereby enter their appearance on behalf of Opposer, Diamond Staffing Solutions, Inc.
`
`Please direct all communications to Opposer to:
`
`Nicholas G. Papastavros
`Nixon Peabody LLP
`100 Summer Street
`
`Boston, MA 021 10
`
`(617) 345-1318 (telephone)
`(866) 947- 1 71 5 (facsimile)
`
`Respectfully submitted,
`
`NIXON PEABODY LLP
`
` .
`
`apastavr s
`Mic elle A. Massicotte
`
`Mic ael L. Cornell
`
`100 Summer Street
`
`
`
`Boston, MA 02110
`(617) 345-1000 (telephone)
`(866) 947-1715 (direct facsimile)
`
`Dated: April 28, 2005
`
`B05 1 4869961
`
`

`
`
`
`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R. 1.10
`
`“Express Mail“ Mailing Label Number:
`Date of Deposit:
`April 28, 2005
`
`EL 948121912 US
`
`I hereby certify that this paper is being deposited in triplicate with the United States Postal Service “Express Mail“ service under 37 C.F.R.
`§1.l0 on the date indicated above and is addressed to Box TTAB, Commissioner for Trademarks, P.O. Box 1451 , Alexandria, VA 22313-1451.
`
`Michelle A. M ssicotte
`Typed nam of erso m ' gpaper
`
`
`
`Si
`
`atureo
`
`erson
`
`ilingpaper
`
`BOS1486996. 1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`DIAMOND STAFFING SOLUTIONS, INC.
`
`Opposer,
`
`v.
`
`Opposition No. 91162785
`
`DIAMOND STAFFING, INC.
`
`:
`
`App. Ser. No. 78/326,647
`
`Applicant.
`
`
`OPPOSER’S MOTION FOR SUSPENSION OF PROCEEDINGS
`DUE TO PENDING CIVIL ACTION
`
`Pursuant to Trademark Rule 2.1l7(a), Opposer, Diamond Staffing Solutions, Inc.
`
`(“Opposer”), respectfully requests that the Board suspend this Opposition proceeding. In support
`
`of this motion, Opposer states that the Opposer and Applicant are engaged in civil litigation in
`
`the District of Massachusetts (Civil Action No. O5-40046-FDS) (the “Litigation”). The
`
`Litigation is a trademark infringement action relating to the same mark at issue in the Opposition
`
`proceeding (DIAMOND STAFFING). As such, the outcome of the Litigation will have a
`
`bearing on the Opposition proceeding. In support of this motion, Applicant relies on the
`
`accompanying memorandum of law.
`
`BOS 1 487005.]
`
`

`
`
`
`WHEREFORE, Opposer respectfully requests that this motion be granted and that the
`
`above-captioned proceedings be suspended pending a decision in the Litigation.
`
`Respectfully submitted,
`
`NIXON PEABODY LLP
`
` . Papastavros
`
`Mic elle A. Massicotte
`
`Michael L. Cornell
`
`100 Summer Street
`
`
`
`Boston, MA 02110
`(617) 345-1000 (telephone)
`(866) 947-1715 (direct facsimile)
`
`Dated: April 28, 2005
`
`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R. 1.10
`
`“Express Mail” Mailing Label Number:
`Date of Deposit:
`April 28, 2005
`
`EL 948121912 US
`
`Typed name of person rnailin paper
`
`I hereby certify that Opposer ‘s Motion for Suspension ofProceedings is being deposited in triplicate with the United States Postal Service
`“Express Mail” service under 37 C.F.R. §1.10 on the date indicated above and is addressed to Box TFAB, Commissioner for Trademarks, PO.
`Box 1451, Alexandria, VA 22313-1451.
`
`Michelle A. Massicotte
`
`CERTIFICATE OF SERVICE PURSUANT TO 37 CFR 2.119
`
`I hereby certify that Opposer '5 Motionfor Suspension ofProceedings has been served by First Class Mail to Addressee on this 28th
`day ofApril, 2005 upon:
`
`Mary C. Casey
`The Harbor Law Group
`48 Maple Avenue
`Shrewsbury, MA 01545
`
`BOSl487005.l
`
`
`
`.Ma icotte
`
`
`Mich le
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`DIAMOND STAFFING SOLUTIONS, INC.
`
`Opposer,
`
`v.
`
`Opposition No. 91162785
`
`DIAMOND STAFFING, INC.
`
`App. Ser. No. 78/326,647
`
`Applicant.
`
`1
`
`OPPOSER’S MOTION FOR SUSPENSION OF PROCEEDINGS
`DUE TO PENDING CIVIL ACTION
`
`Pursuant to Trademark Rule 2.1 17(a), Opposer, Diamond Staffing Solutions, Inc.
`
`(“Opposer”), respectfully requests that the Board suspend this Opposition proceeding. In support
`
`of this motion, Opposer states that the Opposer and Applicant are engaged in civil litigation in
`
`the District of Massachusetts (Civil Action No. O5-40046-FDS) (the “Litigation”). The
`
`Litigation is a trademark infiingement action relating to the same mark at issue in the Opposition
`
`proceeding (DLAMOND STAFFING). As such, the outcome of the Litigation will have a
`
`bearing on the Opposition proceeding. In support of this motion, Applicant relies on the
`
`accompanying memorandum of law.
`
`BOSl48700$.l
`
`

`
`WHEREFORE, Opposer respectfully requests that this motion be granted and that the
`
`above-captioned proceedings be suspended pending a decision in the Litigation.
`
`Respectfully submitted,
`
`NIXON PEABODY LLP
`
` . Papastavros
`
`Mic elle A. Massicotte
`
`Michael L. Cornell
`
`100 Summer Street
`
`
`
`Boston, MA 02110
`(617) 345-1000 (telephone)
`(866) 947-1715 (direct facsimile)
`
`Dated: April 28, 2005
`
`
`
`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R. §I.I0
`
`
`
`“Express Mail" Mailing Label Number:
`Date of Deposit:
`April 28, 2005
`
`EL 948121912 US
`
`
`
`i
`
`Michelle A. Massicotte
`Typed name of person mailin paper
`
`
`
`I hereby certify that Opposerk Motion for Suspension ofProceedings is being deposited in triplicate with the United States Postal Service
`“Express Mail” service under 37 C .F.R. §1.10 on the date indicated above and is addressed to Box TTAB, Commissioner for Trademarks, P.O.
`Box 1451, Alexandria, VA 22313-1451.
`
`CERTIFICATE OF SERVICE PURSUANT TO 37 CFR § 2.119
`
`I hereby certify that Opposeris Motionfor Suspension ofProceedings has been served by First Class Mail to Addressee on this 28th
`day of April, 2005 upon:
`
`Mary C. Casey
`The Harbor Law Group
`48 Maple Avenue
`Shrewsbury, MA 01545
`
`BOSl487005.1
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`DIAMOND STAFFING SOLUTIONS, INC.
`
`Opposer,
`
`v.
`
`Opposition No. 91162785
`
`DIAMOND STAFFING, INC.
`
`App. Ser. No. 78/326,647
`
`Applicant.
`
`
`OPPOSER’S MOTION FOR SUSPENSION OF PROCEEDINGS
`DUE TO PENDING CIVIL ACTION
`
`Pursuant to Trademark Rule 2.117(a), Opposer, Diamond Staffing Solutions, Inc.
`
`(“Opposer”), respectfully requests that the Board suspend this Opposition proceeding. In support
`
`of this motion, Opposer states that the Opposer and Applicant are engaged in civil litigation in
`
`the District of Massachusetts (Civil Action No. 05-40046-FDS) (the “Litigation”). The
`
`Litigation is a trademark infiingement action relating to the same mark at issue in the Opposition
`
`proceeding (DIAMOND STAFFING). As such, the outcome of the Litigation will have a
`
`bearing on the Opposition proceeding. In support of this motion, Applicant relies on the
`
`accompanying memorandum of law.
`
`BOSl487005.l
`
`

`
`
`
`WHEREFORE, Opposer respectfully requests that this motion be granted and that the
`
`above-captioned proceedings be suspended pending a decision in the Litigation.
`
`Respectfully submitted,
`
`NIXON PEABODY LLP
`
` . Papastavros
`
`Mic elle A. Massicotte
`
`Michael L. Cornell
`
`100 Summer Street
`
`
`
`Boston, MA 02110
`(617) 345-1000 (telephone)
`(866) 947-1715 (direct facsimile)
`
`Dated: April 28,2005
`
`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R. 1.10
`
`“Express Mail" Mailing [Abel Number:
`Date of Deposit:
`April 28, 2005
`
`EL 948121912 US
`
`Typed name of person mailin paper
`
`I hereby certify that Opposer '3 Marionfor Suspension ofProceedings is being deposited in triplicate with the United States Postal Service
`“Express Mail” service under 37 C.F.R. §l .10 on the date indicated above and is addressed to Box TTAB, Commissioner for Trademarks, P.O.
`Box 1451, Alexandria, VA 22313-1451.
`
`Michelle A. Massicotte
`
`CERTIFICATE OF SERVICE PURSUANT TO 37 CFR § 2.119
`
`I hereby certify that Opposer ‘s Motionfor Suspension ofProceedings has been served by First Class Mail to Addressee on this 28th
`day of April, 2005 upon:
`
`Mary C. Casey
`The Harbor Law Group
`48 Maple Avenue
`Shrewsbury, MA 01545
`
`BOS1 487005. 1
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DIAMOND STAFFING SOLUTIONS, INC.
`
`Opposer,
`
`v.
`
`Opposition No. 91162785
`
`DIAMOND STAFFING, INC.
`
`:
`
`App. Ser. No. 78/326,647
`
`Applicant.
`
`MEMORANDUM OF LAW IN SUPPORT OF
`
`OPPOSER’S MOTION FOR SUSPENSION OF PROCEEDINGS
`
`Opposer, Diamond Staffing Solutions, Inc. (“Opposer”), by and through its attorneys,
`
`submits this memorandum in support of its motion for suspension of the above-identified
`
`proceeding.
`
`INTRODUCTION
`
`Opposer moves that this opposition proceeding be suspended pending the disposition of
`
`Civil Action No. O5-40046-FDS filed by Opposer in U.S. District Court for the District of
`
`Massachusetts (the “Litigation”). A copy of the Complaint from the Litigation is attached hereto
`
`as Exhibit A. The relevant facts follow.
`
`STATEMENT OF FACTS
`
`Since May, 2002, Opposer has used the marks DIAMOND STAFFING and DIAMOND
`
`STAFFING SOLUTIONS (the “Marks”) in commerce in connection with “professional staffing
`
`services.” (See Application Serial Nos. 78/330,998 and 78/331011 attached hereto as Exhibit B.)
`
`From Applicant’s extensive promotional efforts and use of the Marks in connection with the
`
`BOSl486998.l
`
`

`
`described services for over three years, the Marks have acquired significant good will and
`
`recognition in the professional staffing industry.
`
`During the year 2003, Diamond Staffing, Inc. (“Applicant”) formerly known as Ultimate
`
`Personnel, began to use the mark DIAMOND STAFFING to identify “employment, hiring,
`
`recruiting, placement and staffing services.” (See Exhibit A, 119). Applicant filed Application
`
`Serial No. 78/326,647 of the mark DIAMOND STAFFING on November 12, 2003. (See
`
`Application Serial No. 78/326,647 attached hereto as Exhibit C.) In a letter from Opposer’s
`
`counsel dated December 5, 2003, Opposer alerted Applicant to the likelihood of confusion
`
`created by Applicant’s use and registration of the mark DIAMOND STAFFING, and demanded
`
`that Applicant immediately cease using the DIAMOND STAFFING mark. (See Exhibit A, 1ll4).
`
`Applicant refused to cease use of the mark DIAMOND STAFFING in a written response to
`
`Opposer dated December 23, 2003. (See Exhibit A, 1115). As a result of Applicant’s continued
`
`use of the mark DIAMOND STAFFING, Opposer has suffered several instances of actual
`
`confusion, including being wrongly named as defendant in a discrimination action filed with the
`
`Massachusetts Commission Against Discrimination (MCAD) against Applicant. (See Exhibit A,
`
`1117). Frustrated by Applicant’s blatant disregard for the obvious confusion between Applicant’s
`
`use of the DIAMOND STAFFING mark and Opposer’s Marks, Opposer filed a Complaint in the
`
`United States District Court for the District of Massachusetts against Applicant, alleging
`
`trademark infringement under 15 U.S.C. § 1I25(a), impoundment and destruction under 15
`
`U.S.C. § 1118 and unfair and deceptive acts and practices under Mass. Gen. Laws. ch. 93A.
`
`U.S.C. § 1125(d). (See Exhibit A, W21-34). The Litigation is currently pending.
`
`Opposer now brings before the Board this Motion for Suspension of the Proceedings in
`
`the present Opposition. As the likelihood of confusion between Applicant’s use of DIAMOND
`
`STAFFING and Opposer’s Marks is an issue that necessarily will be addressed in the Litigation,
`
`BOSl486998.1
`
`

`
`
`
`the outcome of the Litigation will impact the Opposition. Accordingly, the Opposition should be
`
`suspended as a matter of course pending the determination of the Litigation.
`
`ARGUMENT
`
`Pursuant to 37 C.F.R. § 2.1 17(a):
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal Board
`that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action or the other Board
`proceeding.
`
`Civil actions pending in federal district court are common circumstances for suspension
`
`requests in Board proceedings. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
`
`PROCEDURE (TBMP) § 510.02(a) and cases cited therein. Suspension of a Board proceeding is
`
`appropriate even if the civil case may not be dispositive of the Board proceeding, so long as the
`
`ruling will have a bearing on the rights of the parties in the Board proceeding. See Martin
`
`Beverage Co. Inc. v. Colita Beverage Company, 169 USPQ 568,570 (TTAB 1971); see also
`
`General Motors Corp, v. Cadillac Club Fashion Inc., 22 USPQ2d 1933 (TTAB 1992); see also
`
`Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125 (TTAB 1974).
`
`Furthermore, as a District Court ruling will be binding on the Board, and the Board’s ruling will
`
`be advisory at best to the court, suspension of a Board proceeding is appropriate when a civil
`
`litigation is pending. See Tokaido v. Honda Associates Inc., 179 USPQ 861 (TTAB 1973)
`
`(where the civil action was brought after a cancellation proceeding before the Board, the Board
`
`determined that the cancellation proceeding should still be suspended pending the resolution of
`
`the civil action because the court’s decision would be binding on the Board). Accordingly,
`
`suspension of Board proceedings is necessary to avoid duplication in analysis and determination
`
`of issues that are common between civil actions in federal court and Board proceedings.
`
`BOS1486998.1
`
`

`
`
`
`In the present case, the same parties are involved in the Litigation and the Opposition and
`
`the dispute in each focuses upon likelihood of confusion created by Applicant’s use of a mark to
`
`Opposer’s Marks, namely the mark DIAMOND STAFFING, in connection with highly related
`
`services in the staffing industry. As the outcome of the Litigation will have bearing upon the
`
`Opposition, for purposes ofjudicial economy and fairness, the Opposition should be suspended
`
`pending the determination of the Litigation.
`
`CONCLUSION
`
`For all of the reasons stated herein, the above-captioned proceeding should be suspended
`
`pending the outcome of the Litigation.
`
`Respectfully submitted,
`
`NIXON PEABODY LLP
`
`
`
`
`
`Nic olas G.
`Mic elle A.
`
`apastavros
`assicotte
`
`Mic ael L. Cornell
`
`100 Summer Street
`
`Boston, MA 02110
`(617) 345-1000 (telephone)
`(866) 947-1715 (direct facsimile)
`
`Dated: April 28, 2005
`
`CERTIFICATE OF EXPRESS MAIL UNDER 37 C.F.R. 1.10
`
`Michelle A. Massicotte Si aureofp on mailin paer
`
`“Express Mail” Mailing Label Number:
`Date of Deposit:
`April 28, 2005
`
`EL 948121912 US
`
`I hereby certify that this Memorandum ofLaw in Support of Opposer '5 Motionfor Suspension ofProceedings is being deposited in triplicate
`with the United States Postal Service “Express Mail” service under 37 C.F.R. §l .10 on the date indicated above and is addressed to Box TTAB,
`Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
`
`BOSl486998.l
`
`

`
`CERTIFICATE OF SERVICE PURSUANT TO 37 CFR 2.119
`
`I hereby certify that this Memorandum ofLaw in Support of Opposer ‘s Motionfor Suspension ofProceedings has been sewed by First
`Class Mail on this 28th day of April, 2005 upon:
`
`Mary C‘ Casey
`The Harbor Law Group
`48 Maple Avenue
`Shrewsbury, MA 01545
`
`
`
`BOS1486998.l
`
`

`
`

`
`
`
`UNITED STATES DISTRICT COUR~'l?
`FOR THE DISTRICT OF MASSACHUSETTS
`
`1"!
`
` DIAMOND STAFFING SOLUTIONS INC.,
`
`Plaintiff,
`
`V’
`
`Civil Action No.
`
`
`
`DIAMOND STAFFING, INC.,
`RECEIPT
`AMOUNT
`Defendants.
`
`SUMMON8 |88UED..__.._.......
`LOCAL RULE 4.1
`
`WAIVER FORM
`-/
`VERIFIED COMPLAINT
`MQF assuED.._..__..»{._——
`BY D?W..oLK. ..
`
`
`_
`..
`0 5 :4 0 O 4 6 —-
`
`..:~.
`
`INTRODUCTION
`
`Since May, 2002, plaintiff Diamond Staffing Solutions, Inc. (“Plaintiff”) has
`
`quickly grown from a start-up business placing personnel in one chain ofj ewelry storm
`
`to a fast-growing business which places temporary and permanent personnel with
`
`wholesale and retail establishments in the jewelry industry nationwide. Plaintiffhas now
`
`provided staffing services to approximately tens of renowned customers under the
`
`Diamond StaffingSM mark (hereinafter “Diamond StaffingsM”) and has been repeatedly
`
`profiled in leading jewelry industry publications along with its founder and Chief
`
`Executive Officer, Suzanne DeVries.
`
`The Defendant, Diamond Staffing, Inc. (“Defendant”) is a company formerly
`
`known as Ultimate Personnel. As Plaintiff’s business began to blossom in the summer
`
`and fall of 2003, Defendant, on information and belief‘, took note of Plaintiffs success,
`
`and, on information and belief, determined to capitalize on Plaintiffs reputation and
`
`success by changing its name from Ultimate Personnel to Diamond Staffing, Inc. This
`
`BOS1473039.l
`
`1
`
`

`
`
`
`name change is causing substantial confusion in the marketplace, given the identical
`
`“Diamond Staffing” name, similar staffing services offered by the companies, and
`
`overlapping customer base.
`
`Plaintiff accordingly petitions this Court to enjoin on a preliminary and permanent
`
`basis Defendant’s service mark infringement, to order impoundment of all infringing
`
`items, including labels, brochures, advertisements, and wrappers, and to award Plaintiff
`
`damages, including but not limited to damages stemming from Defendant’s unfair trade
`
`practices.
`
`JURISDICTION AND VENUE
`
`1.
`
`This Court has federal question jurisdiction over this matter pursuant to 28
`
`U.S.C. §§ 1331 and 1338(a).
`
`2.
`
`Venue is proper in this jurisdiction pursuant to 28 U.S.C. 1391 (b) & (c).
`
`PARTIES
`
`3.
`
`Plaintiff, Diamond Staffing Solutions, Inc. (“Plaintiff”) is a Delaware
`
`corporation with a principal place ofbusiness at 5 Remington Court, Derry, NH.
`
`4,
`
`Plaintiff is in the business ofproviding permanent and temporary staffing
`
`to retail and wholesale business entities in the jewelry industry.
`
`5.
`
`On information and belief, the Defendant, Diamond Staffing, Inc., is a
`
`Massachusetts corporation with a principal place ofbusiness at 146 West Boylston Drive,
`
`Worcester, MA.
`
`6,
`
`On information and belief, the Defendant is also in the business of
`
`providing professional staffing services, to a cross—section ofbusiness sectors, including
`
`but not limited to companies in the jewelry industry.
`
`BOSl473039.l
`
`2
`
`

`
`
`
`FACTS
`
`7.
`
`Plaintiff first used Diamond StaffingSM in commerce in May 2002, in
`
`connection with providing staffing services in the jewelry industry.
`
`8.
`
`When Plaintiff first used Diamond Staff1ngSM in commerce in May 2002,
`
`Defendant’s company was known as “Ultimate Personnel.”
`
`9.
`
`Upon information and belief, Defendant changed its name from Ultimate
`
`Personnel to Diamond Staffing, Inc. in or about November 2003.
`
`10.
`
`In its applications for federal and state trademark recognition of Diamond
`
`Staffingsm, Defendant has admitted that it first used Diamond Staffingsm on November 8,
`
`2003.
`
`1 1.
`
`Plaintiffs use of Diamond StaffingsM more than 18 months prior to the
`
`first use of the mark by the Defendant gives Plaintiff common law rights to the exclusive
`
`use of the mark.
`
`12.
`
`Between May 2002 and November 2003, Plaintiff built substantial
`
`goodwill and name recognition for Diamond Staff1ngSM in the jewelry industry through
`
`news articles, stories and profiles published throughout the U.S., sponsorship and
`
`attendance at national trade shows, as well as by virtue ofthe high quality of its
`
`professional staffing services. Indeed, Plaintiffs founder and President, Suzanne
`
`DeVries (“DeVries”) is a contributing writer to the jewelry industry trade magazine
`
`Professional Jeweler and has been quoted as an industry leader in various other major
`
`trade publications such as JCK and In Your Store. Examples of the goodwill established
`
`by Plaintiffprior to the Defendant’s first use of Diamond StaffingSM in November 2003
`
`are attached hereto at Exhibit A.
`
`BOSl473039.l
`
`3
`
`

`
`
`
`17.
`
`In September 2004, Plaintiff was named as a defendant in a discrimination
`
`action filed with the Massachusetts Commission Against Discrimination (MCAD). The
`
`complainant in MCAD action intended to sue Defendant but, due to the similarity of
`
`names, the complainant mistakenly sued the wrong party. In October 2004, the
`
`complainant amended her MCAD complaint to dismiss Plaintiff and bring charges of
`
`discrimination against Defendant. A copy of a letter to the MCAD outlining the
`
`complainant’s confusion is attached hereto as Exhibit F.
`
`18.
`
`Between December 5, 2003 and the filing of this action, Plaintiffs prior
`
`counsel contacted Defendant via email and in writing on multiple occasions in attempts
`
`to resolve the confusion and reach a business solution. Defendant refuses to cease and
`
`desist from using Diamond StaffingSM.
`
`19.
`
`After attempts to resolve this trademark dispute without the need for
`
`litigation, Plaintiff opposed Defendant’s federal trademark registration by filing a Notice
`
`of Opposition with the U.S. Patent and Trademark Office's Trademark Trial and Appeal
`
`Board on or about November 3, 2004. A copy of Plaintiff’ s opposition is attached hereto
`
`as Exhibit G.
`
`20.
`
`As a result of consumer confusion regarding the identities of the parties
`
`and as a result of Defendant’s conduct, Plaintiff’ s goodwill and reputation has been
`
`misappropriated by Defendant, causing Plaintiff damages as well as substantial hann
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`which carmot adequately be compensated for by monetary damages.
`
`3051473039.]
`
`5
`
`

`
`Count I — Trademark Infringement (15 U.S.C. § 1 125(a))
`
`21.
`
`Plaintiff repeats and realleges the allegations contained in paragraphs 1-
`
`20, gp_ra, as if fiilly set forth herein.
`
`22.
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`Plaintiffhas used the Diamond StaffingSM mark in commerce; the mark,
`
`by itself, is not functional in any way; and the mark is distinctive because, at a minimum,
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`it merely suggests the type of services Plaintiff provides.
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`23.
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`The Diamond Stafiingw mark has also acquired secondary meaning in the
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`minds of consumers in the jewelry industry through Plaintiff’s extensive advertising,
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`name recognition and rapidly increasing number of personnel placements.
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`24.
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`On information and belief, Defendant has chosen its name with the
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`intention of creating confusion with Plaintiff and to capture goodwill generated by
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`Plaintiff in the temporary and permanent personnel placement industry.
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`25.
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`Defendant’s provision of services utilizing the name “Diamond Staffing”
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`has caused and is likely to cause confusion, cause mistake, or deceive customers
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`concerning, among other things, the origin, sponsorship or approval of the personnel
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`services being provided.
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`26.
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`Plaintiff has suffered, and will continue to suffer, damages as a result of
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`Defendant’s conduct, as well as harm which cannot be adequately compensated for by
`
`money damages.
`
`Count II — Impoundment and Destruction (15 U.S.C. § 1 118)
`
`27.
`
`Plaintiff repeats and realleges the allegations set forth in Paragraphs 1-26,
`
`supra, as though fully set forth herein.
`
`BOS l473039.l
`
`6
`
`

`
`28.
`
`Based on Defendant’s unlawfiil activities, Plaintiffunderstands that
`
`Defendant is continuing to infringe Plaintiffs mark. Plaintiff requests that Defendant be
`
`required to retrieve and smrender for destruction all labels, signs, prints, packages,
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`wrappers, receptacles, and advertisements in its possession bearing the infringing mark.
`
`Count III - Unfair and Deceptive Acts and Practices (Mass. Gen. Laws ch. 93A)
`
`29.
`
`Plaintiff repeats and realleges the allegations contained in Paragraphs 1-
`
`28, g1pr_a, as though fully set forth herein.
`
`30.
`
`Plaintiff and Defendant are engaged in the conduct of trade or commerce
`
`within the meaning of Mass. Gen. Laws ch. 93A.
`
`31.
`
`Defendant’s unfair and deceptive business practices in the conduct of
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`commercial business occur primarily and substantially in Massachusetts.
`
`32.
`
`The foregoing conduct by Defendant constitutes unfair or deceptive acts
`
`and practices within the meaning of Mass. Gen. Laws ch. 93A.
`
`33.
`
`Through the unfair and deceptive acts and practices described herein,
`
`Plaintiff has been, and continues to be, damaged by Defendant’s activities and conduct.
`
`Plaintiff has also suffered damage to its reputation and other nonpecuniary harm. Unless
`
`Defendant’s conduct is enjoined, Plaintiff will continue to suffer irreparable injury that
`
`cannot adequately be calculated or compensated for by monetary damages. Accordingly,
`
`in addition to damages Plaintiff seeks injunctive relief pursuant to Mass. Gen. Laws ch.
`
`93A, § 11.
`
`34.
`
`By using Diamond Staffingsm and/or confusingly similar designations in
`
`connection with the sale, offering for sale, and/or advertising of services to the general
`
`public, Defendant has intentionally and knowingly violated Plaintiff’ s rights.
`
`BOSl473039.l
`
`7
`
`

`
`
`
`Accordingly, Plaintiff is entitled to a judgment of up to three times its damages, together
`
`with reasonable attorneys’ fees, pursuant to Mass. Gen. Laws ch. 93A, § 1 1.
`
`WHEREFORE, Diamond Staffing Solutions, Inc. respectfully requests that this
`
`Court grant the following relief:
`
`(1)
`
`Preliminary and permanent injunctive reliefpursuant to 15 U.S.C. §
`
`l125(c) enjoining Diamond Staffing, Inc. fi'om:
`
`0 Offering staffing services under the name “Diamond Staffing” or “Diamond Statfmg,
`Inc.”, with or without the SM symbol;
`
`- Offering staffing services under such a name as to falsely relate or connect, or tend to
`relate or connect, such name to Diamond Staffing Solutions, Inc. or Diamond
`SM,
`Staffing
`,
`
`o Engaging in any other activity calculated to cause purchasers of services to believe
`that the staffing services offered by Diamond Staffing, Inc. are actually those of
`Diamond Staffing Solutions, Inc.;
`
`0 Directing Diamond Staffing, Inc. to file with the Court and serve upon Diamond
`Staffing Solutions, Inc. within thirty days from the service on the defendant of such
`injunction a report in writing under oath setting forth in detail the maimer and form in
`which the defendant has complied with the injunction;
`
`(2) Order Defendant to retrieve and surrender for destruction all labels, signs,
`
`prints, packages, wrappers, receptacles, and advertisements in its possession bearing the
`
`infringing mark;
`
`(3) Enter judgment in Diamond Staffing Solutions, Inc.’s favor on each of the
`
`counts asserted herein and award it damages in an amount to be determined at trial,
`
`doubled and trebled where appropriate pursuant to Mass G. L. 93A and/or other
`
`applicable law;
`
`BOSl473039.l
`
`3
`
`

`
`(5)
`
`Award Diamond Staffing Solutions, Inc. the costs incurred in bringing this
`
`action, including its reasonable attomeys' fees; and
`
`(6)
`
`Award Diamond Staffing Solutions, Inc. such further relief as the Court
`
`deems just, proper and equitable.
`
`Date: March 10, 2005
`
`DIAMOND STAFFING SOLUTIONS, INC.
`
`By its attorneys,
`5 1/‘
`>
`.
`‘’/Z/(,
`Nicholas G. Papastavros (BBO#635742)
`Michael L. Cornell (BBO # 651405)
`NIXON PEABODY LLP
`100 Summer Street
`
`Boston, MA 021 10-2131
`(617) 345-1000 (telephone)
`(617) 345-1300 (facsimile)
`
`3os1473o39.1
`
`9
`
`

`
`VERIFICATION
`
`1, Suzanne DeVries hereby state under the pains an penalties of perjury that I am
`the President of Diamond Staffing Solutions, Inc. and that the allegations contained
`herein are true to the best of my knowledge, except as to those allegaticms made: ups:-11
`information and belief, and as to those allegatio;/1,3, I believe them to be true.
`
`-’ 1'‘
`
`"'5' iii‘)/05
`
`Date:
`
`BOSl464872.l
`
`9
`
`

`
`
`
`wsu (Rev. H/04)
`
`CIVIL COVER SHEET
`
`The IS 44civil coversheetandthe informationcontainedhereinneithertefplacc norsu plement the filingand serviceofpleadingsorot.hefrdt:apersas
`e use 0
`_ by local rules ofcourt. This form, approved by the Judicial Conference 0
`the United tales in September I974, is required for
`e Clerk of
`the civil docket sheet.
`(SEE INSTRUCHONS oN Tina REVERSE or me FORM.)
`
`by law. exceptasprovided
`ourt for the purpose ofinitiating
`
`1. (a)
`
`PLAINTIFFS
`
`DEFENDANTS
`
`Diamond Staffing solutions, Inc.
`
`(b) County ofResidence ofFirst Listed Plaintiff
`(EXCEPT IN U.s. PLAINTIFF CASES)
`
`
`
`Diamon0SP£fing4Irfl
` a~
`
`,
`049w
`
`
`
`NOTE:
`
`ce t . j—
`
`County of Residence of First ListedDefendant
`(IN us. I-‘l..‘AIN'I'Il-‘F CASES ONLY)
`_
`IN LAND CONDEMNATION CASES. use THE LOCATION OF THE
`LAND [NVOLVl_ZD. _
`5 S31 2
`
`Attorneys (IfKnown)
`
`-
`"
`
`‘
`
`v
`' 5
`_
`,--_
`1-;
`Z
`fl,
`_
`y
`31,.‘
`III. CITIZENSHIP OF PRINCIPAL’ Pl'ARTIES'(l=leoe an 4‘x" in one Box for Plaintiff
`(For Diversity Cues Only)
`and One Box for Defendant)
`PIT
`DEF
`rrr
`DEF
`CI
`l
`D l
`CI 4 X3 4
`
`(c) Attorney's (Firm Name, Address, and Telephone Number) (517) 345‘100°
`Nicholas G. Papastavros Nixon -' Peabod
`LLP
`.
`11
`100 _SumI_rter_.
`Michael L. Corne
`3°51-_°n,«~MA. 0 110. :
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`D 1
`us. Govemrnent
`)0 3 I-‘ederel Question
`Plgimjfi‘
`(us. oovemrnent Not | Party)
`
`El 2
`
`U.S. Government
`D°“'*"““‘
`
`CI 4 Diversity
`(Indicate Citizenship ofPa.rties in ltern Ill)
`
`Citizen of Another State
`
`D 2
`
`D 2
`
`Citizen orsubject of:
`Forei Coun
`
`U 3
`
`U 3
`
`Incorporated and rrineipei Place
`°’ B“""“’ I“ A“°“"‘ 5"“
`Foreign Nluion
`
`9 5 D s
`
`D 6
`
`Cl 6
`
`Citizen omtir State
`
`Incorporated or Principal Place
`ofliusinus In This State
`
`
`
`
`
`
`0 422 Appeal 28 USC 158
`Cl 423 Withdrawal
`28 USC 157
`
`
`
`
`
`
`
`
`
`
`
`or Defendant)
`0 371 lRS—Third Party
`26 USC 7609
`
`
`
`
`
`V. ORIGIN
`35 1
`Original
`Proceedin
`
`filpJ>:alfi:>mDistfict
`Transferred from
`(Place an "x" in One Box only)
`'3 5 another district 5 5 Multidistriet D 7 Magistrate
`D 4 Reinstated or
`5 3 Removed from
`D 3 Remanded from
`s i
`Jud nt
`Liti ation
`Reo ned
`State ourt
`A - llate urt
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictions! statutes unless diversity):
`15 USC ~ 112 5
`VI. CAUSE OF ACTION Bfiefdcsmpu-on cram:
`
`Trademark Infringement
`VII. REQUESTED IN
`I CHECK n-‘ THIS IS A cLAss ACTION
`DEMAND 5
`CHECK YES only ifdemanded in complaint:
`COMPLAINT,
`UNDER F.R.C.P. 23
`JURY DEMAND:
`CI Yes D No
`
`VIII. RELATED CASE(S)
`(see mmfim):
`IF ANY
`JUDGE
`DOCKET NUMBER
`
`mm
`_
`SIGNATURE or AITORNEY OF RECORD
`
`Elli/Kr’
`
`FOR OFFICE USE ONLY
`
`///ML
`
`RECEIPT fl
`
`
`
`AMOUNT
`
`
`
`JUDGEAPPLYING IFP MAG. JUDGE
`
`
`
` PERSONAL INJURY
`0 400 State Renpportionment
`D I I0 Insurance
`PERSONAL INJURY
`C3 610 Agriculture
`
`Cl 410 Antitrust
`362 Personal Injury -
`Cl 310 Airplznc
`CI 120 Marine
`0 620 other Food & Drug
`U 430 Banks and Banking
`Med. Malpractice
`0 315 Airplane Product
`0 I30 Miller Act
`D 625 Drug Related Seizure
`CI 450 Commerce
`CI 355 Personal Injury —
`Liability
`D I40 Negotiable lnstrllmem
`omopeny 21 use ssl
`Cl 460 Deportation
`Product Liability
`Cl 150 Recovery ofOverpayment U 320 Assault. Libel &
`CI 630 Liquor Laws
`CI 470 Racketeer Influenced and
`U 368 Asbestos Personal
`& I-ktfolwrnent ofJudgment
`Slander
`Cl 820 Copyright:
`U 640 R.R. & Truck
`
`
`Comlpt Organizations
`Injury Product
`U 151 Medicare Act
`Cl 330 Federal Employers‘
`Cl 650 Airline Regs.
`U 830 Potent
`
`
`U 480 Consumer Credit
`Liability
`0 152 Recovery ofDefaulted
`Liability
`Cl 660 Occupational
`
`D 490 Cabldsat TV
`PERSONAL PROPERTY
`Smdem Loans
`0 340 Marine
`Snfety/Health
`
`0 810 Selective Service
`0 370 Other Fraud
`(Excl. Veterans)
`U 345 Marine Product
`0 690 Other
`
`D 850 Securities/Comrnodit.ies/
`D 371 Truthiltbending
`Cl is: ReooveryofOvet'p1yment
`_ : o :
`Exchange
`CI 380 Other Personal
`D 350 Motor Vehicle
`of Veteran‘: Benefit:
`I 86] HIA (13955)