Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA67026
`ESTTA Tracking number:
`02/17/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91168716
`Defendant
`Key-Trak, Inc.
`Key-Trak, Inc.
`6700 Hollister
`Houston, TX 77040
`
`Correspondence
`Address
`
`MARK A. TIDWELL
`JACKSON WALKER L.L.P.
`112 E.PECAN, SUITE 2100
`SAN ANTONIO, TX 78205
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Motion to Suspend for Civil Action
`Mark A. Tidwell
`mtidwell@jw.com, zwilliams@jw.com, tadolph@jw.com
`/Mark A. Tidwell/
`02/17/2006
`Motion to Suspend.pdf ( 31 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 168716
`
`Serial No. 78413635
`
`
`
`I hereby certify that this Motion to Suspend
`Proceedings was tiled through the Electronic
`System for Trials and Appeals (ESTTA) of
`the Trademark Trial and Appeal Board on
`the M day of February 2006
`
`
`
`
`
`§
`
`§ §
`
`§ {
`
`,5
`§
`§
`
`Key Systems, lnc.
`Opposer
`
`vs.
`
`Key«Trai<, lnc.,
`Applicant
`
`COMEVIESSIONER FOR TRADEMARKS
`2900 Crystal Drive
`Arlington, Virginia 22202-3514
`
`
`
`_»l\/Earl: Tidweii
`
`I
`
`g f;
`
`’ papeijgg
`
`perso niaili
`
`Signature
`
`
`APPLICANT’S MOTION TO SUSPEND PROCEEDINGS
`
`Pursuant
`
`to 37 C.F.R. §2.1l7, Key—Trak,
`
`lnc., Applicant, moves to suspend the
`
`opposition pending between it and the Opposer Key Systems, inc.
`
`More than a year and a half ago, on June 9, 2004 Applicant filed a lawsuit against
`
`Opposer that, when finally adjudicated or settled, will fully resolve all matters at issue in the
`
`opposition. That lawsuit, Key Tmk, Inc. 1:. Key Syszems, Inc. Civil Action No. H—04—2234 (SD.
`
`Tex) (the “Action”), is currently pending in the United States District Court for the Southern
`
`District of Texas.
`
`The Action includes (i) Applicant’s claims of ownership of the mark
`
`KeyKeeper
`
`(the “Mark”) for the goods set forth in the publication, (ii) Applicant’s claim that
`
`Opposes has infringed Applicant’s exclusive right in the Mark, and (iii) Opposer’s defenses to
`
`such allegations. As such the Action encompasses the issues raised in the opposition.
`
`

`
`Applicant is the owner of the Mark. Applicant acquired ownership of the Mark from the
`
`original owner, Endurance Electronics Pty. Ltd. (“Endurance”). Opposer was a North American
`
`distributor for Endurance.
`
`As part of its defense in the Action, Opposer has asserted a counterclaim seeking among
`
`other things a declaratory judgment that it is the first user in US. commerce of the Mark and that
`
`it
`
`is the owner of the Mark. Opposer aiso contends that Applicant was fraudulent
`
`in its
`
`application for registration of the Mark in regards to ownership. These are the same claims
`
`which Opposer is making in the instant opposition. Opposer’s claims in the instant opposition
`
`are incorporated Within the claims raised by the Appiicant in the Action and ‘oy the counterclairns
`
`raised by the Opposer.
`
`Copies of the Second Amended Complaint and Counterclaini (Exhibit A), and Defendant
`
`Key Systems Inc.’s Answer, Affirmative Defenses and Counterclairn to Plaintiff’ s Second
`
`Amended Complaint (Exhibit B) are attached hereto.
`
`The District Court will be deciding the same issues in the Action that the Trademark Trial
`
`and Appeal Board is asked to determine in the opposition.
`
`Suspending the opposition
`
`proceeding wil} therefore save the Opposer and the Applicant time and expense, and reduce the
`
`burden on the resources of the US. Patent and Trademark Office.
`
`The Board routinely grants motions to suspend pending the outcome of a pending civil
`
`action which may be dispositive of the inter partes proceeding. 37 CPR. 2.1 l7(a); T.M.B.P.
`
`§5l0.02(a); See also Marie Claire Album S./I. v. Kruger Gmbff &: Co. KG, 29 U.S.P.Q.2D 1792
`
`(T.T.A.B. }993)( (suspending opposition. pending disposition of civil action); Jennifer Lopez v.
`
`Giow Industries, Opposition No. 91154310 (T.T.A.B. April 9, 2003)(suspending opposition
`
`pending disposition of civii action); Black Box Corporation of Pen.rzsylvarzz'a and BB
`
`

`
`Teclmologies, Inc. v. Better Box C0mmum'Caz‘i0ns Limited, Opposition No. 107,800 Opposition
`
`No. 107,801, (T.T.A.B. March 29, 2002)(suspending opposition pending disposition of civil
`
`action).
`
`Therefore, Applicant respectfully requests that its motion to suspend be granted.
`
`Respectfully Submitted,
`
`
`
`Mark Tidwell
`
`Registration No. 37,456
`State Bar No. 0928900
`
`1401 McKinney Street, Suite 1900
`Houston, TX 77002
`
`(713) 752—420
`(713) 752-4221 —Fax
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and complete Copy of the foregoing Motion to Suspend Proceedings
`has been served on Key Systems by mailing said copy on the 3 Z
`day of February 2006, via
`First Class Mail, postage prepaid to:
`
`Steven R. Scott
`
`Brown & Michaels, PC
`
`400 M&T Bank Building
`118 North Tioga Street
`
`Ithaca, New York 14850
`
`

`
`EXHIBIT A
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF TEXAS
`
`Key-Trak, inc.
`
`Piaintiffl
`
`V.
`
`Key Systems, Inc.
`Defendant.
`
`0O'3€-O'J=0'-H-'0'v>Vv0'=00‘.~<oO'P
`
`CIVIL ACTEON NO. H—O4-2234
`
`JURY TRIAL DEMANDED
`
`SECOND AMENDED COMPLAINT AND ANSWER TO COUNTERCLAIM
`
`1.
`
`Piaintiff, Key—Trak,
`
`inc.
`
`(“i<.ey~'l‘rak”)
`
`files
`
`this Second Amended
`
`Compiaint against Defendant, Key Systems,
`
`Inc. (“Defendant”), aileging violations of the
`
`Lanham Act, trademark infringement under Texas common iaw, trademark dilution under the
`
`Texas statute, copyright infringement, unfair competition, and breach of contract. Key-Trak
`
`seeks damages and iost profits, a permanent injunction, destruction of infringing materials,
`
`i)efendant’s profits, punitive and exeinpiary damages, attorneys’ fees, and other relief.
`
`PARTIES
`
`2.
`
`At the time of filing the originai Complaint, Key-Trak was a Fiorida
`
`corporation having its principal piace of business at 6700 Hollister, Houston, Texas 77040.
`
`Since then, Key~Tralc has merged into Key Control Holding, In c., a Delaware corporation having
`
`its principal place of business at 6700 Hollister, Houston, Texas W040.
`
`3.
`
`On information and beiief, Defendant is a New York corporation having
`
`its principal place of business at 7635 Glacier Hill, Victor, NY 14564. Defendant has been
`
`served and has answered.
`
`

`
`JURISDICTION
`
`4.
`
`This court has federai claim and diversity jurisdiction under 15 U.S.C.
`
`§§1i21-«E127, 17' U.S.C. §§101 gt §_eg., and 28 I§.S.C. §§}331, 1332, and 136'f{a). The amount
`
`in controversy exceeds $75,300.
`
`VENUE
`
`5.
`
`On information and belief, Defendant does business in this judicial
`
`district. On information and beiief, the matters in controversy arise out of activities undertaken
`
`by Defendant in this judicial district, inciuding, but not iirnited to, contracting with a Houston
`
`distributor to sell the system that is a subject of this suit, using the marks that are a subject of this
`
`suit, and distributing software that
`
`is a subject of this suit. On information and beiief,
`
`Defendant’s Houston distributor resides in this district and offers for sale and has sold in this
`
`district infringing goods and services. For at least those reasons, Venue is proper in this judicia}
`
`district under 28 U.S.C. §139} (b).
`
`RELATED LITIGATION
`
`6.
`
`A patent infringement case, fried on August 4, 2005 by the undersigned
`
`counsei, is pending before this Court against, among other parties, Key Systems, Inc., styled Key
`
`Cantroi Hoiding, Inc. v. Innovative Programming Systems, Inc. at 31., Cause No. H—O5-2683 (the
`
`“Patent
`
`Infringeinent Litigation”).
`
`The Patent
`
`Infringement Litigation relates to ailegcd
`
`infringement of U.S. Patent No. 6,693,538 (the “S38 i’atent”), entitled “Object Carriers for an
`
`Object Controi and Tracking System,” which was previously assigned to Key Trait, Inc. and
`
`ownership rights thereto were obtained by Key Control Hoiding, Inc. through a merger. The
`
`aileged acts of infringement include the manufacture and sale of certain key tracking products,
`
`including the “Autokey” object tracking system, which is one of the products at issue in this
`
`tradematk and copyright infiringernent action.
`
`

`
`BACKGROUND FACTS
`
`Plaintiff Key~Trak
`
`7.
`
`Key-Trak’s Business: As part of its business, Plaintiff Key—Tral< builds
`
`and sells key control systems and provides rotated services. One exarnpie is a system for
`
`limiting access to certain keys based on a user’s identification. Apartment communities,
`
`hospitals, military bases, government facilities, schools and commercial properties may use these
`
`Key~Trai<; systems to limit access to assets by controlling who has access to the keys to those
`
`assets.
`
`8.
`
`The KeySafe System: One Key-Trak key control system is the Keysafe
`
`System. The KeySafe System includes a large cabinet, and inside the cabinet is a key panel that
`
`can hold numerous keys in locked slots. Key~Tralc proprietary software controls access to the
`
`keys based on 2 user identification. For example, the KeySafe System may permit one person to
`
`have access to three keys and another person to have access to fifteen keys.
`
`9.
`
`The Key—Tz-air Works: For many years,
`
`the software in the Keysafe
`
`System included two software programs designated as the Keyiieeper program and the
`
`KcyPo§ler program. {The Key/Keeper and KeyPoller software are hereinafter referred to as the
`
`“Key—Trak Works”) Key—Trak (and its predecessor-io~interest) is, and at all relevant times has
`
`been, the owner of the copyright in the Key-Trak Works. K.ey~Tral< has met the statutory
`
`requirements for registering the copyright in the “KeyKeeper” and “K.eyPoIler" programs.
`
`10.
`
`The Key-—Tre2k Marks: Key-Trait and its predecessor«~in~interest have long
`
`used the trademarks “Key'Poller” and “Keykleeper” in connection with the KeyKeeper program
`
`and the KeyPoHer program and collectively in m.ar1{eting the KeySafe System. Key-Trek has
`
`filed appiications for federal registration for the “KeyPolier" and “KeyKeeper" marks with the
`
`US. Patent and Trademark Office.
`
`(The “KeyPol1er” and “K.eyl{eeper” marks are hereinafter
`
`-3-
`
`

`
`referred to as the “Key-Trak Marks”) The Key-Trait Marks are distinctive inherently and as a
`
`result of marketplace significance. The Key—Trak Marks are valuable assets of Key-Tralc’s
`
`business.
`
`l 1.
`
`Key»-TI-ak’s Ownership of the Key-Trek Works and the Key—~Trak Marks:
`
`Key-Trait acquired all rights to the Keysafe System, the Key-Trek Works, and the Key-Tralc
`
`Marks from Endurance Eiectronics Proprietary Ltd. of Australia (“Endurance Electronics”) in
`
`October 2002. For many years before Key-Trak purchased its rights, Endurance Electronics had
`
`made the KeySafe System in Austraiie and had sold the system worldwide.
`
`Defendanfs Wrongful Acts that have Harmed Plaintiff Key-Trak
`
`12.
`
`Defendant.‘ has No .Rights to the Key Trait Works or the Key-Tmk
`
`Marks: Before Key~’l‘ral< purchased its rights, Endurance Electronics frequently sold KeySafe
`
`Systems in the United States through Defendant. After Key-Trak purchased Endurance’s rights,
`
`K.ey—Trak ceased seies of KeySafe Systems to Defendant. Defendant has no independent or
`
`surviving right to make or sell the i<ZeySafe System or to make, copy, modify, distribute, offer for
`
`sale, or sell the Key-Trak Works. Defendant is not authorized to provide any goods or services
`
`under the Key-Trak Marks.
`
`13.
`
`Defendant’s Wrongful’ Use of the Key—Trak Works: On information and
`
`belief, Defendant, without authority, (1) has created derivative works from and has modified the
`
`Key~Trak Works, (2) has begun to make, have made, copy, modify, distribute, offer for sale, and
`
`sell
`
`the Key-Tralc Works (or derivative works), and (3) includes the Key-Trek Works (or
`
`derivative works) in systems offered for sale and sold in this district and elsewhere in the United
`
`Siates.
`
`14.
`
`})efendam"s Wrongful’ Use of the Key-Trek M’ar-ks‘: Without authority,
`
`Defendant uses Key-Tral<’s “KeyKeeper” and “I<1eyPoiler” marks in its advertising, product
`
`.4-
`
`

`
`brochures and software.
`
`In its product brochures, Defendant faiseiy claims that the Keykieeper
`
`mark is its own mark and faisely claims that the Keyiieeper sofiware is its own software.
`
`Defendant has wrongfuliy used these marks in commerce, without authority, in connection with
`
`its key control systems. Defendant’s actions misappropriate the Key~'i‘ral< Marks and constitute
`
`unfair competition,
`
`tradernark infringement, false designation of origin, false or misleading
`
`description of fact, and false or misleading representation of fact.
`
`15.
`
`Likefihood of Confusion and Other Efi”ecrs: Defendanfs use of the Key-
`
`Trak Marks or similar marks likely confuses customers as to the origin of the systems provided
`
`under those marks; suggests a false connection with Keyffrak; indicates sponsorship, licensing
`
`or approvai by Key—Trak of Defendanfs use of the Key—Trak Marks and confusingly similar
`
`marks; and are Iikeiy to damage the value of the Key»-Trak Marks. Defendanfs actions also have
`
`the likelihood of tarnishing, and blurring the distinctive value of the Key~Trai< Marks as
`
`indications of source.
`
`16.
`
`1)efendant’s bodfaith: Go infonnation and belief, Defendant adopted the
`
`Key-Trait Marks in bad faith, with full knowledge of Key-Trai<’s (and its pretiecessofs) prior
`use and ownership ofthe Key-Trak Marks and with full knowledge that its actions would likely
`
`confuse, mislead, and deceive the public into beiieving that Defcodanfs goods and services
`
`originate from, or are sponsored or approved by Key-Trak, or that the parties are otherwise
`
`affiliated in business.
`
`FIRST CAUSE OF ACTION
`
`Key-Trak’s Lanham Act Claims
`
`17.
`
`18.
`
`Key-Traic incorporates by reference paragraphs 1 to 16.
`
`Defendanfs wrongful adoption and use of the Key-Trak Marks or similar
`
`mazrks constitutes unfair competition, trademark infringement, faise designation of origin, false
`
`-5-
`
`

`
`or misleading description of fact, and false or misleading representation of fact in violation of
`
`§43(a}(l)ofthe Lanham Act (15 U.S.C. §l l25(a){l).).
`
`19.
`
`As a proximate result of the acts of Defendant, Key-Trek has suffered and
`
`wilt continue to suffer damage to its business, goodwill, reputation and profits, white Defendant
`
`profits at Key~Trak‘s expense.
`
`20.
`
`Key—Trak has no adequate remedy at law against Defendanfs above-
`
`described actions. Unless Defendant is permanently enjoined, Key-Trek will continue to suffer
`
`irreparable harm.
`
`21.
`
`Defendants violations of Section 43(a}(i)(A) of the Lanliarn Act were
`
`deliberate and fraudulent in that Defendant was fully aware that its activities were unlawful.
`
`Key—'i“rai< is entitled to enhanced damages up to three times the amount of its actual damages.
`
`22.
`
`Defendanfs actions render this an exceptional ease, and the court should
`
`award Key-Trak its reasonable attorneys’ fees in connection with this action.
`
`SECOND CAUSE OF ACTION
`
`Key-Trakfs Common Law Trademark Infringement Ciaim
`
`23.
`
`Key-Trait incorporates by reference paragraphs 1 to 22.
`
`24.
`
`Defendanfs actions constitute trademark infringement of the Keyffrak
`
`Marks under Texas common iaw.
`
`25.
`
`As a proximate result of the acts of Defendant, Key-Trak has stzffered and
`
`will continue to suffer damage to its business, goodwili, reputation and profits, while Defendant
`
`profits at Key~Trak’s expense.
`
`26.
`
`Key—Tral< has no adequate remedy at iaw against Defendants trademark
`
`infringement. Unless Defendant is permanently enjoined, Key—Trak will continue to suffer
`
`irreparable iiann.
`
`

`
`27.
`
`Defendanfs wrongful use of the Key-Trait Marks was willful, ti-audulent,
`
`malicious, and grossly negligent, and Key-Trek is entitled to exemplary damages under Tex. Civ.
`
`Prac. & Rem. §41.003, including reasonable attorneys. fees.
`
`23.
`
`Key—Tra1< is entitled to recover from Defendant its reasonable attorneys’
`
`fees in connection with this action.
`
`THIRD CAUSE OF ACTION
`
`Key—Trak’s Tex. Bus. & Cam. §16.29 Claim
`
`Key—Tra1c incorporates by reference paragraphs 1 to 28.
`
`Defendant’s conduct is likely to dilute and injure the business reputation
`
`29.
`
`30.
`
`of Key-Trek and the distinctiveness and quality of the Key—Trak Mezks, and constitutes a
`
`violation of the Tex. Bus. & Com. §16.29.
`
`31.
`
`Key-Trek has no adequate remedy at law against Defendantis violations of
`
`Tex. Bus. & Com. §I6.29. Unless Defendant is permanently enjoined, Key—Tra1< will continue to
`
`suffer irreparable hann.
`
`FOURTH CAUSE OF ACTION
`
`Key-Trak’s Copyright Infringement Claim
`
`32.
`
`Key—Trak incorporates by reference paragraphs 1 to 31.
`
`33.
`
`Defendanfs actions constitute infringement of Key—’I‘rak’s copyrights in
`
`the the “KeyKeeper” and “KeyPo1§er” computer programs in violation of 17 U.S.C. §lO6.
`
`34.
`
`As a proximate result of Defencianfs copyright infringement, Key~Trak
`
`has suffered and will continue to suffer damage to its business, goodwiil, reputation and profits,
`
`while Defendant profits at Key~’i‘ral<’s expense.
`
`

`
`35.
`
`Key—Trak has no adequate remedy at law against Defendant’s copyright
`
`infringement. Unless Defendant is permanently enjoined pursuant to l7 U.S.C. §502, Keyffrak
`
`will continue to suffer irreparable harm.
`
`36.
`
`Key-Trak is entitled to recover from Defendant its full costs, including
`
`reasonable attorneys’ fees in connection with this action, pursuant to 1'? USE. §505.
`
`FIFTH CAUSE 0F ACTION
`
`Key-Trak’s Unfair Competition Claim
`
`Key—Tral<; incorporates by reference paragraphs 1 to 36.
`
`Defendant is attempting to pass off goods and services as those of Key-
`
`37.
`
`38.
`
`Trak. Defendarifs wrongful actions relating to the Key-Trait Marks and the Key—"£‘ral< ‘Works
`
`constitute unfair competition in violation of the common law of the State of Texas.
`
`39.
`
`As a proximate result of Defendar1t’s unfair competition, Keyifrak has
`
`suffered and will continue to suffer damage to its business, goodwill, reputation and profits,
`
`while Defendant profits at Key-Tra§<’s expense.
`
`40.
`
`Key~"I‘rak has no adequate remedy at law against this unfair competition.
`
`Unless Defendant is permanently enjoined, Key-Trak will continue to suffer irreparable harm.
`
`41.
`
`Defendant’s unfair cornpetition was willful, fraudulent, malicious, and
`
`grossly negligent, and Key-Trak is entitled to exemplary damages under Tex. Civ. Prac- & Rem.
`
`§4l .003, including reasonable attorneys fees.
`
`SIXTH CAUSE OF ACTEON
`
`Key-Trak’s Breach of Contract Claim
`
`Key-Trak incorporates by reference paragraphs 1 to 41.
`
`in the event this Court determines that Defendant possessed an implied
`
`42.
`
`43.
`
`license to use the Key—Trak Marks, ancifor “KeyKeeper” and “K63/P0ll61”” computer programs,
`
`Key-Trak asserts as an alternative ground for relief only that Defendant breached the terms of
`
`-3-
`
`

`
`any such Eicense through continued use of the Key-Trak Marks, andfor “KeyKeeper” and
`
`“KeyPo1le1” computer programs beyond the termination of such iicense by Key-Trek and
`
`through faiinre to make required payments.
`
`44.
`
`As a proximate result of Defendant’s breach of contract, Key—Tra1< has
`
`suffered and wiil continue to suffer damages, inciuding but not iirnited to licensing fees, lost
`
`profits, toss of business, loss of goodwili and reputation, and other costs and expenses.
`
`45.
`
`As a result of the aforementioned, Key-Trek has necessarily engaged the
`
`undersigned attorneys to prosecute this action, thus incurring attorneys’ fees and costs, and
`
`continue to the present to expend sums for said purposes. Accordingly, pursuant to Tex. Civ.
`
`Prac. & Rem. Code § 38.001 st 5136]., Piaintiffs are entitled to recovery of their reasonabie and
`
`necessary attorneys’ fee 5 incurred in connection with this iawsuit.
`
`AFFIRMATIVE DEFENSE
`
`46-
`
`Defendant is equitably estopped to assert ownership of the copyrights and
`
`trademarks at issue in this action. During negotiations for the possible pnrchase of Defendant
`
`and Endurance, Defendant expressly represented to Key-Trek that Endurance was the owner of
`
`the copyrights and trademarks. Key-Trak purchased certain assets of Endurance, including the
`
`KeySafe System, and the copyright and trademarks in KeyKeeper and Kc}/Feller
`
`from
`
`Endmance, paying substantial consideration, based in part upon that representation.
`
`JURY DEMAND
`
`47.
`
`Key«Trak demands a trial by jury.
`
`ANSWER TO COUNTERCLAIM
`
`48.
`
`Paragraphs 1
`
`to 44, 61, 91, 92, 97 and 98 of Defendanfis Amended
`
`Answer, Affirmative Defenses and Counterciaim are not subject to being admitted or denied.
`
`

`
`49.
`
`K.ey—Tra§< admits the averments of Paragraphs 63 to 65, 82, 90, 93, and 94
`
`of Defendant’s Amended Answer, Affrrmative Defenses and Counterelairn.
`
`50.
`
`Key~Trak denies the avermenis of Paragraphs 45 to 60, 79:0 81, and 89 of
`
`Defendant’s Amended Answer, Affinnative Defenses and Ceunterelaim.
`
`5}-
`
`Upon information and belief, Keyffrak admits the avernients of Paragraph
`
`62 of Defendanfs Amended Answer, Affirmative Defenses ané Coimterclaim.
`
`52.
`
`Upon information and belief, Key-Trak denies
`
`the avennents of
`
`Paragraphs 66 to ’?8, 83 to 88, 95, 96 of Defendar1t’s Amended Answer, Affinnative Defenses
`
`and Ceunterclairn.
`
`PRAYER FOR RELIEF
`
`53.
`
`Keyffrak prays that the Court award judgment against Defendant as
`
`follows:
`
`A.
`
`Permanently enjoining Defendant, and all other persons,
`
`firms or
`
`corporations in active concert or participation with it:
`
`E.
`
`2.
`
`3.
`
`from infringement and diietien of the Key-Trak Marks,
`
`from unfeiriy competing with Keyffrak, and
`
`from using,
`
`in any manner,
`
`the Key~Trak Marks or variants
`
`thereof, or any other trademark or trade name that contains the
`
`I(ey~Trak Marks, or any name or mark confusingly similar to the
`Key-Trak Marks.
`T
`
`B.
`
`Ordering Defendant to surrender for destruction all signs, business cards,
`
`forms, invoices and the like, printed materials and marketing materials
`
`hearing or constituting infringement of the Key~'1‘rak Marks;
`
`-10-
`
`

`
`Ordering Defendant to cease copying and distribution of any copies of the
`
`Key-Trak Works or any modifications, derivative works, or variants
`
`thereofi and ordering Defendant
`
`to destroy ail existing copies thereof
`
`pursuant to 17 U.S-C. §503;
`
`Ordering pursuant to 15 U.S.C. §I116(a), that within thirty (30) days afier
`
`entry of the injunction, Defendant, shali file with the Coast and serve upon
`
`Key—Trak a report in writing under oath setting forth in detail the manner
`
`and form in which Defendant has cornpiied with the injunction;
`
`Awarding Key-Trek damages, Eicensing fees and other payments due,
`
`andlor Eost profits sustained as a reset: of Defenda11t’s. wrongful acts;
`
`Awarding Key—Trak recovery of Defendant’s profits made as a result of its
`
`wrongful acts;
`
`Awarding Key—Trak enhanced damages (up to trebie damages) pursuant to
`
`Section 35 ofthe Lanham Act, 15 U.S.C. §1I1?;
`
`Awarding Key-Trek exempkary damages under Tex. Civ. Prac. & Rem.
`
`§41.003 (including reasonable attorneys fees) for Defendanfs wiliful,
`
`fiauduient, maiicioos,
`
`and
`
`grossiy
`
`negligent
`
`acts of
`
`trademark
`
`infxingeznent and unfair competition;
`
`Awarding Key-Trek reasonable attorneys’ fees for an exceptional case,
`
`pursuant to E5 U.S.C. § 111’?(a);
`
`Awarding Key-Trek reasonabie attorneys’ fees under copyright iaw (35
`
`U.S.C. §S05);
`
`Awarding Key-TraI~:
`
`its costs of this action pursuant
`
`to 15 U.S.C.
`
`§
`
`1Il7(a) and 35 U.S.C. §5OS;
`
`-11..
`
`

`
`Granting Key—Trak such oiher and further relief as the court deems just
`
`and proper; and
`
`Denying ali
`
`relief
`
`requested
`
`in Defendanfs Amended Answer,
`
`Affinnative Defenses and Counterclaim.
`
`-12-
`
`

`
`Respectfully submitted,
`
`JACKSON ‘WALKER L.L.P.
`
`;L_,#_
`Thomas H. Adolph
`Feé. LED. N0. 2181
`State Bar No. 0928900
`
`E401 McKinney Street, Suite 1900
`Heusion, TX 77002
`
`(713) ?52-4208
`(713) 752—42?.l—Fax
`
`Attorney««-in—Charge for Key—Trak, Inc.
`
`OF COUNSEL:
`
`John Edwards
`State Bar No. 24002040
`
`Zola-Mari C. Williams
`State Bar No. 24048890
`
`JACKSON WALKER L.L.P.
`
`1401 Mcliimaey, Suite 1900
`Houston, Texas 77010
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of this document was electronically served on the following
`
`counsel on August @005:
`
`
` Brock Akers
`Grant 8. Palmer
`Phillips & Akers
`3 Daniel E. Rhynhart
`M00 Phoenix Tower
`5 Emily 3. Bamhari
`Daniel L. Stackhouse
`
`
`
`3200 Southwest Freeway
`Houston, TX 7702?
`
`BLANK ROME LLP
`
`One Logan Square
`18m and Cherry Streets
`l Ph1'ladelghia,PA 19103
`
`
`
`Torn Adolph
`
`4Dl3190v.3
`
`-13-
`
`

`
`EXHIBIT B
`
`

`
`Case 4:04—ev—02234 Document 82
`
`Filed 1212712005
`
`Page ‘I of 13
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`KEY-TRAK, INC.
`
`V.
`KEY SYSTEMS, INC.
`
`§
`
`g
`E
`
`CIVIL ACTION NO. H-04-2234
`JURY TRIAL DBMANDED
`
`DEFENDANT KEY SYSTEMS INCRS ANSWER, AFFIRMATIVE DEFENSES
`AND COUNTERCLAIM TO PLAINTIFFS SECOND AMENDED COMPLAINT
`
`Defendant/Cou:nter—Plairitiff Key Systems, Inc. ("Key Systenis"), by its undersigned counsei,
`
`submits this Answer, Affirmative Defenses and Coanterclairn to Plaintiffs Second Amended Complaint
`
`("Complaint"), and avers as follows:
`
`ANSWER
`
`l.
`
`Paragraph 1 of the Complaint is not sub} eat to being admitted or denied; however,
`
`Defendant denies that Plaintiff is entitled to any relief in this action.
`
`2.
`
`3.
`
`4.
`
`Defendant admits the ailegations in paragraph 2 of the Complaint.
`
`Defendant admits the allegations in paragraph 3 of the Complaint.
`
`Defendant admits the allegation in paragraph 4 of the Complaint that this Court has
`
`proper jurisdiction; however, Defendant denies the merits of the claims asserted against it.
`
`5.
`
`Defendant admits the allegation in paragraph 5 of the Complaint that Venue of this action
`
`is proper; however, Defendant denies having committed any wrongful acts upon which venue is
`
`allegedly based.
`
`6.
`
`Defendant denies the allegations in paragraph 6 of the Complaint; except that Defendant
`
`is without knowledge or information sufficient to form a belief as to what rights, if any, that Plaintiff
`
`acquired in a merger as described in paragraph 6 of the Complaint.
`
`12273200601/2145i423v.1
`
`

`
`Case 4:04—cv~02234 Document 82
`
`Filed 1212772005
`
`Page 2 of 13
`
`7.
`
`Defendant admits the allegation in paragraph 7 of the Complaint that Plaintiff sells key
`
`control systems. Defendant is without knowiedge or information sufficient to form a belief as to the
`
`truth of the other allegations in paragraph 7 of the Complaint.
`
`8.
`
`Defendant is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations in paragraph 8 of the Complaint.
`
`9.
`
`Defendant is without knowledge or information sufficient to form a belief as to the truth
`
`ofthe allegations in paragraph 9 of the Complaint concerning Plaintiff’ s alleged microchip, or that
`
`Plaintiff has used the “KeyKeeper” and “KeyPoller” programs in a Keysafe System. Defendant denies
`
`the remaining allegations in paragraph 9 of the Complaint.
`
`l0.
`
`Defendant is without knowledge or information sufficient to form a belief as to the truth
`
`of the allegations in paragraph 10 of the Complaint concerning §’laintiff’ s alleged microchip, or
`
`concerning Plaintiffs alleged use of the terms “K.eyPoller” and “KeyKeeper” for a KeySafe System.
`
`Defendant admits the allegations in paragraph 10 of the Complaint that Plaintiff has filed applications
`
`for federal registration of “KeyPoller” and “l{eyKeeper” with the U.S. Patent & Trademark Office;
`
`however, Defendant denies the validity of said applications. Defendant denies the remaining allegations
`
`in paragraph 10 of the Complaint.
`
`1].
`
`Defendant denies the allegations in paragraph 11 of the Complaint that Plaintiff “acquired
`
`all rights .
`
`.
`
`. to the Key—Tral< Works, and the Key~Trak Mari-is from Endurance Electronics.” Defendant
`
`is without knowledge or information sufficient to form a belief as to the truth of the remaining
`
`allegations in paragraph 11 of the Complaint.
`
`12.
`
`Defendant denies the allegations in paragraph 12 of the Complaint; except that Defendant
`
`is without knowledge or information sufficient to form a belief as to what rights, if any, that Plaintiff
`
`acquired from Endurance Electronics Proprietary Ltd. of Australia (“Endurance Electronics”).
`
`i22732.0660l/2I45lt$23v.I
`
`

`
`Case 4:04—cv~02234 Document 82
`
`Filed ’l2l27/2005
`
`Page 3 of 13
`
`13.
`
`14.
`
`Defendant denies the ailegations in paragraph 13 of the Compiaint.
`
`Defendant admits the allegations in paragraph 14 of the Complaint that it uses the terms
`
`“KeyKeeper” and “KeyPol1er” in connection with its software. Defendant denies the remaining
`
`allegations in paragraph 14 of the Complaint.
`
`15.
`
`16.
`
`Defendant denies the ailegations in paragraph 15 of the Complaint.
`
`Defendant denies the ailegations in paragraph 16 of the Complaint.
`
`1?.
`
`Paragraph 17 of the Complaint is not subject to being admitted or denied. Defendant
`
`incorporates herein its answers to paragraphs 1-16 above.
`
`18.
`
`Defendant denies the allegations in paragraph 13 of the Complaint.
`
`I9.
`
`Defendant denies the allegations in paragraph 19 of the Complaint.
`
`20.
`
`Defendant denies the allegations in paragraph 20 of the Complaint.
`
`21.
`
`Defendant denies the ailegations in paragraph 21 of the Complaint.
`
`22.
`
`Defendant denies the allegations in paragraph 22 of the Compiaint.
`
`23.
`
`Paragraph 23 of the Complaint is not subject to being admitted or denied. Defendant
`
`incorporates herein its answers to paragraphs 1-22 above.
`
`24.
`
`Defendant denies the allegations in paragraph 24 of the Complaint.
`
`25.
`
`Defendant denies the aliegations in paragraph 25 of the Complaint.
`
`26.
`
`Defendant denies the allegations in paragraph 26 of the Complaint.
`
`27.
`
`Defendant denies the allegations in paragraph 27 of the Complaint.
`
`28.
`
`Defendant denies the ailegations in paragraph 28 of the Complaint.
`
`29.
`
`Paragraph 29 of the Compiaint is not subject to being admitted or denied. Defendant
`
`incorporates herein its answers to paragraphs 1-28 above.
`
`30.
`
`Defendant denies the allegations in paragraph 30 of the Complaint.
`
`122732.0069ii2145i423v.1
`
`

`
`Case 4:O4~ov—O2234 Document 82
`
`Filed 12/2?f2005
`
`Page 4 of 13
`
`3}.
`
`32.
`
`Defendant denies the allegations in paragraph 31 of the Complaint.
`
`Paragraph 32 of the Complaint is not subject to being admitted or denied. Defendant
`
`incorporates herein its answers to paragraphs l—3l above.
`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`Defendant denies the allegations in paragraph 33 of the Complaint.
`
`Defendant denies the allegations in paragraph 34 of the Complaint.
`
`Defendant denies the allegations in paragraph 35 of the Complaint.
`
`Defendant denies the allegations in paragraph 36 of the Complaint.
`
`Paragraph 37 of the Complaint is not subject to being admitted or denied. Defendant
`
`incorporates herein its answers to paragraphs l——36 above.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`Defendant denies the allegations in paragraph 38 of the Complaint.
`
`Defendant denies the allegations in paragraph 39 of the Complaint.
`
`Defendant denies the allegations in paragraph 40 of the Complaint.
`
`Defendant denies the allegations in paragraph 41 of the Complaint.
`
`Paragraph 42 of the Complaint is not sebj ect to being admitted or denied. Defendant
`
`incorporates herein its answers to paragraphs l-~4l above.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`48.
`
`49.
`
`50.
`
`51.
`
`Defendant denies the allegations in paragraph 43 of the Complaint.
`
`Defendant denies the allegations in paragraph 44 of the Complaint.
`
`Defendant denies the allegations in paragraph 45 of the Complaint.
`
`Defendant denies the allegations in paragraph 46 of the Complaint.
`
`Paragraph 47 of the Complaint is not subject to being admitted or denied.
`
`Paragraph 48 of the Complaint is not subject to being admitted or denied.
`
`Paragraph 49 of the Complaint is not subj ect to being admitted or denied.
`
`Paragraph 50 of the Complaint is not subj ect to being admitted or denied.
`
`Paragraph 51 of the Complaint is not subject to being admitted or denied.
`
`l22732.€i£]60l/2I45l423v.l
`
`4
`
`

`
`Case 4:O4~cv—O2234 Document 82
`
`Filed 1212712005
`
`Page 5 of ‘E3
`
`52.
`
`53.
`
`Paragraph 52 of the Complaint is not subject to being admitted or denied.
`
`Paragraph 53 of the Complaint is not subject to being admitted or denied; however,
`
`Defendant denies that Plaintiff is entitled to any of the relief that Plaintiff requests in this action.
`
`Affirmative Defenses
`
`54.
`
`Defendant incorporates by reference Paragraphs 1 through 53 above as if set forth fully
`
`herein.
`
`55.
`
`Plaintiff has faiied to state a claim for which relief can be granted.
`
`56.
`
`Plaintiffs claims are barred, in whole or in part, by express license, implied license
`
`and/or license by estoppel.
`
`57.
`
`Plaintiffs claims are barred, in whole or in part, by limitations and/or laches.
`
`58.
`
`Plaintiff’ 5 claims are barred, in whole 01‘ in part, by the equitable doctrine of unclean
`
`hands.
`
`59.
`
`Plaintiffs claims are barred, in whole or in part, by the doctrines of waiver, cstoppel
`
`and/or acquiescence.
`
`60.
`
`Plaintiffs claims are barred, in whole or in part, because Defendant