TTAB
`
`Docket No. 24670.010
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re Application Serial No. 79/015,424
`For Mark: ION
`
`Published in the Official Gazette December 5, 2006
`
`Opposer,
`
`V
`
`Opposition No. 91174884
`
`BOARDS & MORE HOLDING S.A.,
`
`Applicant.
`
`MOTION ON CONSENT To SUSPEND PROCEEDING
`AND FOR EXTENSION OF TIME To FILE ANSWER
`
`llllllllllllllllllllllllllllllllllllllllllllllllll
`
`03_20_2007
`U.S. Patent &.TMO1cITM Mail Hon DL 11%
`
`In a motion dated March 2, 2007, Applicant, by and through counsel, moved for an Order
`
`to suspend the proceedings in this matter for a period of six (6) months until September 2, 2007.
`
`Opposer’s counsel, David L. May, Esq., consented to that motion to suspend in a phone
`
`conversation with Sujata Chaudhri, counsel for applicant. The additional time was requested
`
`because Opposer is involved in a civil proceeding entitled Estate ofPearson v. 360, Inc. , No.
`
`6:06 cv-00331-PCF—JGG, which involves Opposer’s mark on which Opposition NO. 91174884 is
`
`based.
`
`24670/010/7832442
`
`Z
`“Express Mail” Mailing Label Number
`I hereby certify that this paper or fee is being deposited with the United States
`Postal Service “Express Mail Post office to Addressee“ service under 37
`C.F.R. 1.10 on the date indicated above and is addressed to the Commissioner for
`Trademarks, P.. Box 145], Alexangirginia 2231 -145] 0
`~
`8 a a/z
`
`0
`
`

`
`In response to the March 2, 2007 motion, the Board issued an order dated March 8, 2007
`
`requesting that the parties submit copies of the pleadings in the civil action to enable it to
`
`determine whether the final determination of the civil action will have a bearing on the issues
`
`before the Board. Accordingly, the parties herewith submit a copy of (i) the Verified Complaint
`
`for Injunctive Relief, Damages, Declaratoy [sic] Judgment and Demand for Jury Trial and (ii)
`
`Defendants’ Answer and Affirmative Defenses, and 360, Inc.’s Counterclaim in the civil
`
`proceeding. Opposer is a defendant in the civil action which involves, among other things, an
`
`adjudication of the ownership of the mark ION. The parties respectfully submit that the
`
`requested suspension is proper because the final determination in the civil action will have a
`
`bearing on the issues before the Board. Thus, the parties renew their motion on consent for an
`
`order to suspend the proceeding in this matter for a period of six (6) months until September 2,
`
`2__fl.
`
`If the Board grants this motion, in the event that the matter is taken out of suspense,
`
`Applicant’s time to answer or otherwise respond to the Notice of Opposition should be reset as
`
`should the discovery and trial periods.
`
`In the event that the Board denies this motion, Applicant requests that its time to file an
`
`answer or otherwise respond to the Notice of Opposition be thirty (30) days after such denial.
`
`Dated: New York, New York
`March 20, 2007
`
`COWAN, LIEBOWITZ & LATMAN, P.C.
`Attorneys for Applicant
`
`By
`
`I Q,
`
`Antonio Borrelli
`
`1133 Avenue of the Americas
`New York, New York 10036-6799
`(212) 790-9200
`
`24670/010/7832442
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing MOTION ON CONSENT was sent via first class mail,
`postage prepaid to Opposer's counsel, David L. May, Esq., Nixon Peabody LLP, 401 9”‘ Street,
`
`N.W., Suite 900, Washington, DC 20004 2128 on March 20, 2007.
`
`By:
`
`I
`Antonio Borrelli
`
`24670/010/7832442
`
`

`
`.
`'
`'
`0'
`CIVILCOVERSHEET
`\I$-M (Rev. lIrI)5)
`d
`rsas re
`or other
`"’he :1544civil coverslteetandthe infomation contained herein neitherre lace notsupplement thefilin and sen/"cc of Ieatlin
`{iiitlatevtils’
`pgletk of
`liy local rules ofcourt This form, approved by the Judicial Conference 0 the United States in Septembir I914. is: reauiied for tghse use oft
`the civil docket sheet.
`(SEE INSTRUCTIONS on THE mavens: or THE FORM.)
`NOTICE: Attorneys MUST Indicate All Re~lIled Cases Below,
`
`
`‘DEFENDANTS
`I. (a) PLAINTIFFS
`ESTATE OF PEARSON
`r
`)"
`l<EE: 360,
`INC. d/b/a wAy£.RE§5L and an SELTZER
`C“. '
`I
`*7‘ A
`av’:-"-A...
`5.31
`'3‘
`‘G K :I:xf‘¥ -it
`‘H
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`'
`“$34:
`ounty of estdence ot
`DU'engaritC_'._,,_ar.,
`.
`. PLAINTIFF CASES ONLY)
`NOTE:
`'IN LAND CONDEMNATION CASES. USE THE LOCATION OF THE ‘FRACT
`LAND INVOLVED.
`
`.
`
`C
`
`
`
`Attorneys (lfKi-town)
`
`
`
`
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEVT IN US. PLAINTIFF CASES)
`
`(C) Attorney's (Finn Name. Address. and Telephone Number)
`
`ROBERT J . VAN DER WALL , P . A.
`1320 sourn n1x1£ HIGHWAY, suxrz 1275
`CORAL GABLES, FL 33145
`(305) 358-6000
`
`
`MlAMI- DADE 0 MONROE D BROWARD D PALM BEACH D MARTIN 0 ST. LUCIE 0 INDIAN RIVER D OKEECHOBEE
`
`HIGHLANDS
`(d) Check County Where Action Arose:
`
`‘
`
`‘
`
`
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`C)
`I U.S. Government
`-_
`5 3
`Federal Question
`Plairttifi’
`(U.S. Goventnient Not a Parry)
`
`U I U.S. Crovemrnent
`Defendant
`
`O 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(PIace an 'X"\~t'g0ne Box for Plait-ttiII
`(For Diversity Chm Only)
`I and One Bo'tFfot Defendant)
`rrr mgr
`.
`_
`_
`-
`.—-__-
`.
`’. yn,-‘ — DE,-
`I
`0 I
`Incorporated or Principal Plaeef-' 0
`D I
`Citizen ofThis State
`0
`
`of Business In This State
`;_,_,-
`
`
`
`
`
`
`
`
`Citizen ofAnother State 0
`
`2
`
`D 2
`
`Incorporated dirt! Principal Pltcjea 0 5
`of Bu.siness'_ In Another State
`‘
`'
`
`I3
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`D 5
`—:‘. O 6
`Foreign Nation
`D 3
`3
`D
`Citizen or Subject of a
`
`
`CountForei ‘‘
`
` IV. NATURE OF SUIT PIaeean“X"inOneBoxOnl
`TM
`
`D 400%: Reapportiortment
`PERSONAL INJURY
`PERSONAL INJURY U 610 Agriculture
`0 422 Appeal 28 USC I58
`0 H0 Insurance
`D d to Antitrust
`-
`D 3!!) Airplane
`U 362 Personal Injury -
`D 610 Other Food & Drug
`O 423 Withdrawal
`0 I20 Marine
`0 430 Bank and Bartltirsg
`D J15 Airplane Product
`Med. Malpractice
`U 625 Drug Related Seizure
`23 USC I57
`0 I30 Miller Act
`0 450 Commerce
`Liability
`0 365 Personal Injury —
`of Property 2I USC RI
`CI I40 Negotiable Instrument
`D 460 Deportation
`‘
`0 I50 Rocovery of Overpayrnatt O 320 Assault. Libel J:
`Product Liability
`0 610 Liquor Laws
`'
`U 470 Raelteteer Influenced and
`0 I20 Copyrights
`& Eaiforcement ofludgmertt
`Slander
`CI
`36! Asbesos Personal 0 640 RR. & Truck
`Corrupt Otganintiorls
`0 ISI Meditate Act
`0 330 Federal Employers’
`Injury Product
`0 650 Airline Regs.
`O 830 Patent
`D 480 Consumer Credit
`CI 660 Occupational
`E 840 ‘Trademark
`0 I52 Recovery of Defaulted
`Liability
`Liability
`
`
`
`O 490 Cablelsal TV
`Safety/Health
`Student Loans
`0 340 Marine
`PERSONAL PROPERTY
`. :,
`D 8 I0 Selective Service
`0 690 Other
`(Exel. Veterans)
`D 345 Marine Product
`0 370 Other Fraud
`5'
`
`
`0- 350 SecuritieslCurnmodities/
`- 0 I53 Recovery ofOvupayrnent
`Liability
`0 an TNIII in Lending
`Exchange
`0 7I0 Fair Labor Standards
`of Veteran's Benefits
`O 350 Motor Vehicle
`D 380 Other Personal
`CI II6I HIA ( I39SII)
`O 875 Customer Challenge
`Act
`CI
`I60 Stockholders’ Suits
`0 355 Motor Vehicle
`Propaty Damage
`D 862 Black Lung (91))
`I2 usc mo
`0 I90 Other Contract
`Product Liability
`0 385 Property Damage
`0 720 LaIaorIMgrnt. Relations 0 as: DIWC/DIWW (d0S(;))
`CI 890 Other Statutory Actions
`0 I95 Contract Product Liability 0 360 Other Personal
`Product Liability
`0 730 Labor/Mgmtleporting D 864 SSID Title XVI
`
`
`
`D 891 Agricultural Acts
`O 865 RSI 405 -,
`C1 I96 Franchise
`In’
`& Disclosure Act
`0 892 Economic Stabilization Act
` U 740 Railway Labor Act
`
`D 893 Environmental Matters
`0 870 Taxes (U.S. Plaintiff
`D 5l0 Motions to Vacate D 790 Other Labor Litigation
`0 U0 Land Condemnation
`0 MI Voting
`.
`D 894 Energy Allocation Act
`0 791 Errrpl. Rel. Inc.
`or Defendant)
`0 220 Foreclosure
`D 442 Errrployrnent
`Sentence
`
`
`
`
`
`
`0 I95 Freedom of Information
`Habeu Corptu:
`Security Act
`0 HI IRS—Tttird Party
`0 230 Kent Lease & Ejectmem
`0 £43 Housing]
`
`Act
`26 USC 7609
`D 240 Torts to Land
`Acaornmodations
`0 530 General
`CI 900Appeal of Fee Detemtination
`Cl 245 Tort Product Liability
`0 M4 Welfare
`0 533 Death Penalty
`Under Equal Mess:
`ct 290 All Other Real Property
`0 445 Amer. w/Disabilities - 0 seo Mandamus a Other
`I0 «IUSIICZ
`D 550 Civil Right!
`Ernploymem
`
`D 446 Amer, wlDisaI>ilities - O 555 Prison Condition
`0 950 Constitutionality of
`
`Other
`State Statutes
`D 440 Other Civil Rights
`
`V. ORIGIN
`(Place an -x‘ in One Box Only)
`AP 3' ‘° Dl5"l°‘
`M I Original
`0 2 Rernoved from
`C) 3
`Proceeding
`State Court
`Judmcm
`
`
`
`
`
`
`
`VI. RELATED/RE-FILED
`
`CASIt‘.(S).
`
`3
`
`in
`
`‘i§§...t‘,.".';‘.‘;?’“‘
`
`
`
`
`
`
`
`D 4 Reinstated or C)
`Re—l'tled-
`Reopened
`(see VI below)
`ti) Re-filed Case 0 YES D NO
`mpg;‘
`
`'
`
`rie
`
`5
`
`C] 6 Multidistrict O 7
`Ltttgatton
`(specify)
`b) Related Cases 0 YES 3 NO
`Iggggg
`
`tatement of Cause (Do not cite jurisdictional statutes unless
`
`
`
`VII. CAUSE OF
`ACTION
`
`):
`
`'
`it‘
`mm”
`
`LENGTH OF TRIAL vi
`
`VIII. REQUESTED IN
`COMPLAINT;
`UNDER F.R.C.P. 23
`ABOVE INFORMATION IS TRUE & CORRECT T0
`THE BEST OF MY KNOWLEDGE
`FOR OFFICE USE ONLY
`
`.__._:.__.__
`AMOUNT
`RECEIPT ll
`IFI’
`
`D CHECK IFTHISIS
`
`‘
`,1-Hm? as on)
`
`.5”,
`
`CHECK YES only ifdetttanded in complaint:
`JURY DEMAND:
`xxves 0 N0
`pm;
`
`
`
`
`
`
`
`
`

`
`INC. d/b/a WAVE REBEL,
`360,
`L9
`a corporation, and ED
`:3
`SELTZER, an individual
`’/I
`°9“
`jgfl.
`.
`'
`Defendants.
`/ (6) ;. 3‘
`
`
`_
`
`,.
`-p-
`
`"r.-
`
`\'I
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF FLORIDA
`
`MIAMI DIVISION
`
`ESTATE OF PEARSON,
`
`Plaintiff,
`
`V
`
`-.
`
`..
`x';;'.\‘\
`
`BI{'OWN{uDG -
`~_
`;_"_'
`""
`
`1
`
`-.,
`
`
`
`
`
`VERIFIED COMPLAINT FOR INJUNCTIVE RELIEF,
`DAMAGES, DECLARATOY JUDGMENT AND DEMAND FOR JURY TRIAL
`
`,--:=»
`
`COMES NOW, Plaintiff, ESTATE OF PEARSON,
`
`(hereinafter "the
`
`ESTATE"),
`
`by
`
`and through its undersigned counsel,
`
`and sues
`
`Defendants 360,
`
`INC. d/b/a WAVE REBEL,
`
`a corporation,
`
`and ED
`
`SELTZER, an individual, alleging as follows:
`
`PARTIES
`
`1.
`
`The
`
`ESTATE
`
`is
`
`the Estate
`
`of Eric Todd Pearson,
`
`(hereinafter
`
`"Pearson") who died Cfll or about May’ 18,
`
`2005 in
`
`Melbourne, Florida.
`
`The ESTATE is an open probate proceeding
`
`pending in Brevard County, Florida. The personal representative of
`
`the ESTATE is Alice Orvis
`
`(hereinafter
`
`"Orvis"), mother of
`
`the
`
`decedent, Pearson.
`
`

`
`CASE NO.
`
`2.
`
`Upon information and belief, 360,
`
`INC. d/b/a WAVE REBEL
`
`.(hereinafter
`
`"WAVE REBEL"),
`
`is a corporation of
`
`the State of
`
`California having its principal place of business at 14380 Industry
`
`Circle, La Mirada, California 90638.
`
`3.
`
`Upon
`
`information and belief, Defendant
`
`ED
`
`SELTZER
`
`(hereinafter,
`
`"SELTZER"), is an individual residing in the State of
`California and having an address at 14380 Industry Circle, La
`Mirada, California 90638. Upon information and belief, SELTZER is
`the moving, active and conscious force behind the conduct of WAVE
`
`REBEL that is subject of this Verified Complaint.
`
`JURISDICTION, VENUE AND PROCESS
`
`to
`This Court has subject matter jurisdiction pursuant
`4.
`§
`Section 43(a) of the Lanham Act, 15 U.S.C.
`§ 1125(a), 28:U.S.C.
`§
`1338(a) relating to an action upon a trademark, and 28 U.S.C.
`1331 for a federal question under the laws of
`the United States
`which include the Lanham Act and the Declaratory Judgment Act, 28
`U.S.C. §§ 2201 et seq.
`The doctrine of supplemental jurisdiction
`is also invoke for claims arising under the common law of Florida.
`5.
`Venue is appropriate under 28 U.S.C.
`§ 1391(b), since it
`a civil action wherein jurisdiction is not
`founded solely on
`diversity of citizenship and is brought in the judicial district in
`
`which a substantial part of the claim arose.
`6.
`Service of process is accordance with Fed. R. Civ. P. 4.
`
`

`
`,-ow‘
`
`ALLEGATIONS COMMON TO ALL COUNTS
`
`CASE NO.
`
`7.
`
`"This case concerns certain activities of Pearson during
`
`the last decade of his life.
`
`8.
`
`This
`
`case
`
`further’ concerns certain conduct of
`
`the
`
`Defendants that mostly have occurred since Pearson died which has
`
`necessitated the filing of this action by the ESTATE.
`9.
`During at
`least
`the 1990's, Pearson was an enthusiast
`
`an
`and became
`sports, particularly surfing,
`regarding water
`innovator
`regarding improving the speed and nmneuverability of
`
`BodyBoards. The term "BodyBoard" refers to a device that supports,
`
`a surfer in ocean waves, but is shorter than a surf board
`
`and is
`
`»
`
`anot generally stood upon when in use in the surf.
`Qt
`
`,
`
`10. During the 1990's
`time period Pearson developed and
` tested a superior concept for a shallow trimaran design PodyBoard
`that provided measurable improvements in speed, maneuverability and
`
`performance compared to then existing designs.
`
`11.
`
`In the summer of 1999, Pearson sought legal counsel for
`
`the intellectual property protection of his innovative and unique
`shallow trimaran inventive BodyBoard.
`h
`12. On August 24, 1999 Pearson filed a patent application in
`the United States Patent and Trademark Office (hereinafter "PTO"),
`
`application serial number 09/382,111 fqrmhis BodyBoard.
`
`

`
`13.
`
`During the pendency of his patent, Pearson sought
`
`licensees to manufacture and sell his patent pending BodyBoard
`
`design.
`
`‘On or about February 4, 2000, Pearson entered into a
`14.
`license agreement with the Defendants for a term of five years with
`
`one year automatic extensions thereafter.
`The license agreement
`provided for terminations for cause and also for terminations at
`the end of the five year period and at
`the end of any one year
`extension thereafter upon the giving of 90 days notice prior to the
`
`expiration of the term in question, i e., either the five years or
`
`any one year extension thereafter.
`
`15.
`
`On March 20,
`
`2001
`
`the PTO issued U.S. Patent No.
`
`’389 patent
`(hereinafter "the ’389 patent").’ The
`6,203,389 B1
`thereupon became the subject of
`the foregoing described license
`
`agreement.
`16.
`
`A true and correct copy of the ’389 patent is attached to
`
`A true and correct copy of
`the complaint as Plaintiff's Exhibit 1.
`the license agreement dated February 4, 2000 is attached to the
`Compliant as Plaintiff's Exhibit 2.
`i
`17. During the(late 1990's’Pearson developed and adopted the
`trademark "ION and Design“ (hereinafter referred to as 'ION') for
`the design of his BodyBoard¢w While the trademark ION was nod?
`
`
`i
`
`registered by Pearson, it was use
`V
`.r
`substantial publicity in national publications and designs wasi
`.
`- -rt"-*-~
`-»\_ _.
`‘
`propagated as a result of the license and the mark ION was orally._~_
`
`
`
`_I'\
`
`-4-
`
`

`
`CASE NO.
`
`licensed to the Defendants as adjunct agreement
`
`to the license
`
`agreement?. However, ownership of the trademark ION was retained by
`
`Pearson and became an asset of the ESTATE upon Pearson's death.
`
`The Defendants used the ION trademark pursuant to oral license from
`
`Pearson during the life of
`
`that agreement, but
`
`they acquired no
`
`ownership interest in the ION trademark thereby. Examples of thes
`publicity and national publications for advertising and pdblicitv
`purposes are attached to the Complaint as Plaintiff's Exhibits 3,i
`4, 5,
`6 and 7.
`,1
`
`18.
`
`In November of
`
`1998,
`
`before
`
`any contact with the
`
`led to the license agreement with WAVE REBEL,
`:Defendants that
`Pearson along with his friend, Jay Gurecki,
`traveled to Hawaii to
`
`make a video of the use of the BodyBoard using the trademark ION.
`The video was used in commerce for publicizing and advertising the
`
`ION'BodyBoard that Pearson was actively selling. A CD of the video
`is available to be played in open court at the evidentiary hearing
`
`on Plaintiff's Motion for a Preliminary Injunction and at trial.
`
`19.
`On numerous occasions prior
`to his death, Pearson
`expressed reservations concerning the manufacturing technigues,
`and sales volume of the Defendants during the life of the license
`
`agreement.
`
`As a material aspect of
`
`those reservations, Pearson
`
`undertook, with the assistance of intellectual property counsel in
`
`the United States and abroad the filing of patent applications on
`
`the BodyBoard in overseas locations, particularly in the People's
`
`Republic of China,
`
`(hereinafter the "PRC").
`
`A copy of
`
`the PRC
`
`-5-
`
`

`
`,.....\
`
`patent application serial no. 01 8 23025.3 filed on September 12,
`
`CASE NO.
`
`2003 is attached to the Complaint as Plaintiff's Exhibit 8.
`
`An
`
`English translation of the PRC patent application is also attached
`
`to the Verified Complaint as Plaintiff's Exhibit 9.
`
`20.
`
`Because of
`
`the reservations above described held by
`
`Pearson concerning the nwnufacturing,
`
`and sales volume of
`
`the
`
`Defendants pursuant
`
`to the license agreement, Pearson sought
`
`alternatives to the Defendants including possible manufacture of
`the BodyBoard in the PRC pursuant to the PRC patent application and
`also with a United States individual by the name of Dave Rubin
`
`(hereinafter "Rubin") who was a former employee of the Defendants.
`
`Rubin was in the process of pursuing new and innovative techniques
`
`
`
`in the form of the
`for economically producing a quality product
`BodyBoard covered by the '389 patent at
`the time of Pearson's
`death. That fact was known to Pearson and his family at the time
`
`of his passing.
`
`21. Upon Pearson's sudden and untimely death, his family
`
`the BodyBoard
`determined to continue with the exploitation of
`described and claimed by the '389 patent and the trademark lON.
`Accordingly, a part of the reason for opening the ESTATE was the
`
`conveyance of Pearson's patent to the a member of the family for
`the purpose of continuing the exploitation thereof.
`A copy of the
`assignment of
`the '389 patent
`is attached to the Complaint as
`
`Plaintiff's Exhibit 10.
`
`15
`
`

`
`,-nI"\
`
`22. Based upon the reservations that Pearson held concerning
`
`CASE NO .
`
`the Defendants at the time of his death. which reservations were
`
`shared by his family,§€fidecision was made to terminate the license
`
`agreement with the Defendants in accordance with its terms. This
`
`required notice be given ninety (90) days prior to the expiration
`of the first one year extension of
`the license agreement, which
`expiration is February 4, 2006. Accordingly,
`the ESTATE instructed
`its intellectual property counsel to provide the termination notice
`to the Defendants, and a copy of the termination letter is attached
`
`to the Complaint as Plaintiff's Exhibit 11.
`23.
`A dialog between the ESTATE and the Defendants resulting
`from the termination notice indicated that the Defendants intended
`continue to use the ION trademark in the sale of BodyBoards even
`though the design thereof would be modified so as not to infringe
`
`the ’389 patenti
`24.
`In the weeks thereafter the ESTATE considered what action
`
`to take concerning this assertion by the Defendants of right to own
`or use the trademark ION concerning manufacture, use and sale of
`BodyBoards not covered by the ’389 patent.
`In that time period it
`was discovered that on November 16, 2005 .the Defendants filed at
`least two trademark registration applications in the PTO for the
`trademark ION. These applications are necessarily invalid because
`they falsely and fraudulently claim that
`the Defendants own the
`trademark ION and have an exclusive right to use thereof when the
`Defendants knew, or should have known,
`that the mark was owned by
`
`»-'7"~
`
`

`
`Plaintiff that the trademark applications filed in the PTO by the
`
`Def€ndant§=are null and void and shall be declared abandoned.
`
`CASE NO.
`
`28.
`
`It has also come
`
`to the attention of Plaintiff that
`
`Defendants have been an Exhibitor at
`
`the SURF EXPO Trade Show in
`
`Orlando, Florida during the period of January 13-15, 2006 using the
`ION designation.
`At
`that
`same
`trade show, Rubin was also an
`
`Exhibitor using the ION trademark that has been orally licensed to
`him by the ESTATE.
`V1‘.
`
`29. Confusion of" trade show attendees was essentially
`
`inevitable and well exceeds the trademark threshold of a likelihood
`
`of confusion.
`
`reason
`By
`30.
`Defendants, Plaintiff
`
`aforementioned
`the
`of
`has
`been
`and will
`
`the
`of
`conduct
`be
`seriously and
`
`irreparably injured,
`
`and unless
`
`the Defendants are restrained
`
`therefrom, Plaintiff will continue to be so injured. Plaintiff has
`
`no adequate remedy at
`
`law.
`
`Unless Defendants are permanently
`
`such conduct, Plaintiff will be without
`enjoined from further
`redress, and its trademark and the goodwill of associated therewith
`
`will be severely and irreparably injured to the extent that mere
`
`money damages could not compensate the Plaintiff and will result in
`
`a dilution of Plaintiff's mark forever.
`
`31. As
`
`a
`
`consequence of
`
`the Defendants’
`
`aforementioned
`
`Conduct, Plaintiff has been required to retain litigation counsel,
`
`and is obligated to pay said counsel a reasonable attorney's fee.
`
`-9-
`
`

`
`CASE NO.
`
`32. Upon information relief, by the acts complained of,
`
`the
`
`Defendants.have made substantial profit
`
`to which they are not
`
`entitled in equity and good conscience.
`
`COUNT I
`
`- FEDERAL TRADEMARK INFRINGEMENT
`
`33. Plaintiff repeats and alleges paragraphs 1-32 as if fully
`
`set forth at this point.
`
`34. Defendants’ conduct in the use of the designation ION and
`
`its logo constitutes
`
`infringement of Plaintiffls common
`
`law
`
`trademark as described in violation of Section 43(a) of the Lanham
`
`Act, 15 U.S.C.
`
`§ 1l25(a).
`
`35. Plaintiff asserts that
`
`infringement has been willful,
`
`
`
`wanton, and deliberate because Defendants knew or should have known
`that Pearson owned the ION trademark and its logo in respect of
`
`Plaintiff's interstate commerce therewith.
`
`WHEREFORE, Plaintiff
`
`demands
`
`joint
`
`and several
`
`judgment
`
`against the Defendants as follows.
`THAT, preliminarily during the pendency of this action,
`
`and permanently thereafter,
`directors, agents,
`servants,
`
`and any officers,
`the Defendants
`employees,
`and attorneys,
`and all
`
`persons in active concert were participation of any of them, will
`receive actual notice of the courts order by personal service or
`
`otherwise, be enjoined and restrained from in any manner, either
`
`directly or indirectly:
`
`-10-
`
`

`
`.....~.\
`
`f?x
`
`CASE NO.
`
`A.
`
`(1) committing any act which infringes Plaintiff's
`
`common law.trademark ION;
`
`(2) selling or offering for sale any product or
`
`service utilizing the trademark or designation ION and its logo or
`
`any confusingly similar mark or designation when engaging in any
`
`advertising utilizing the same including on the Internet;
`
`(3) continuing to prosecute in the PTO any trademark
`
`registration applications or allowing such applications to issue as
`registrations
`-V
`B.
`§ 1118,
`
`the Defendants
`
`That, pursuant
`
`to 15 U.S.C.
`
`be
`
`required
`
`to
`
`deliver
`
`up
`
`for “destruction
`
`all
`
`signs,
`
`advertisements, stationery,
`
`invoices, business cards, or any other
`
`materials disseminated to or available to the public, wherever
`located in the possession, custody, or control of the Defendants
`during the designation ION,
`and its logo or any reproduction,
`
`counterfeit,
`
`copy, colorable imitation, or
`
`infringement of
`
`the
`
`same.
`
`C.
`That
`the Defendants be required to file with the
`Court and serve on Plaintiff's counsel within thirty (30) days
`after service of any preliminary injunction or final
`injunction
`
`issued herein, or within such reasonable time as the Court shall
`
`direct, a report in writing and under oath setting forth in detail
`
`and manner and form in which Defendants have complied with such
`
`injunctions.
`
`-11-
`
`

`
`CASE NO.
`
`D.
`
`That
`
`the Plaintiff have
`
`and receive its actual
`
`damages trebled.
`
`E.
`
`That
`
`the Plaintiff have and :receive Defendants’
`
`profits,
`
`its costs, and reasonable attorney's fees and any or all
`
`other remedies provided by 15 U.S.C.
`
`§ 1117.
`
`F.
`That
`this Court enter an accounting of profits
`received by Defendants as a consequence of their wrongful acts and
`
`award Plaintiff a judgment for such profits.
`G.
`That
`the Plaintiff have and received free and post
`
`judgment interest.
`
`H.
`
`That
`
`the Plaintiff have such other relief as the
`
`Court deems just and proper.
`
`COUNT II - FALSE DESIGNATION OF ORIGIN
`
`36. Plaintiff repeats and realleges paragraphs 1 through 32
`
`as if fully set forth at this point.
`37.
`The Defendants aforesaid conduct utilizing the trademark
`
`ION and its logo has been a false designation of origin, and/or a
`false or misleading description of
`fact,
`and/or
`a
`false or
`misleading misrepresentation of
`fact
`that
`is likely to cause
`confusion,
`cause mistake or
`to deceive as to the affiliation,
`
`connection, or association of the Defendants with the Plaintiff or
`as to the origin, sponsorship, or approval of the Defendants’ goods
`
`and services or commercial activities by the Plaintiff.
`
`-12-
`
`

`
`CASE NO.
`
`38. Plaintiff alleges that it has been and continues to be
`
`damaged by the aforesaid conduct of the Defendants in violation of
`
`15 U.S.C.
`
`§ 1125(a).
`
`WHEREFORE, Plaintiff
`
`demands
`
`joint
`
`and several
`
`judgment
`
`against Defendants as follows:
`
`5
`and permanently thereafter,
`
`A. That, preliminarily during dependency on this action,
`.-.
`and any officers,
`
`the Defendants
`
`directors,
`agents,
`servants,
`employees
`and attorneys,
`and all
`persons in active concert or participation with any of them, who
`receive actual notice of the Court's order by personal service or
`
`otherwise, be enjoined and restrained from in any manner, either
`
`directly or indirectly,
`
`from making any statement or representation
`
`mm‘
`
`or committing any act which is likely to lead the public or
`individual members of
`the public to believe that
`the Defendants
`are,
`in any manner, directly or indirectly, associated or connected
`
`with or licensed, authorized,
`
`franchised, or approved by or on
`
`behalf of the Plaintiff, or to believe that any product or service
`
`offered for sale or distribution by Defendants or either of them
`
`are services or products manufactured, marketed and/or sold by the
`
`Plaintiff;
`
`B.
`
`That, pursuant to 15 U.S.C.
`
`§ 1118,
`
`the Defendants
`
`deliver
`to
`required
`be
`advertisements, stationery,
`
`signs,
`all
`destruction
`for
`up
`invoices, business cards, or any other
`
`materials disseminated to or available to the public, wherever
`
`located in the possession, custody, or control of the Defendants
`
`-13..
`
`

`
`CASE NO.
`
`during the designation ION,
`
`and its logo or any reproduction,
`
`C0Unt€rfeiC,
`
`COPY, Colorable imitation, or
`
`infringement of
`
`the
`
`same .
`
`C.
`
`That
`
`the Defendants be required to file with the
`
`Court and serve on Plaintiff's counsel within thirty (30) days
`
`after service of any preliminary injunction or final
`n
`
`injunction
`
`issued herein, or within such reasonable time as the Court shall
`
`direct, a report in writing and under oath setting forth in detail
`and manner and form in which Defendants have complied with such
`
`injunctions.
`
`D.
`
`That
`
`the Plaintiff have and received its actual
`
`damages trebled.
`
`D.
`
`That
`
`the Plaintiff have and received Defendants’
`
`profits, its costs, and reasonable attorney's fees and any or all
`
`-other remedies provided by 15 U.S.C.
`
`§ 1117.
`
`F.
`
`That
`
`this Court enter an accounting of profits
`
`received by Defendants as a consequence of their wrongful acts and
`
`award Plaintiff a judgment for such profits.
`
`’ G.
`
`That
`
`the Plaintiff have and received free and post
`
`judgment interests.
`H.
`That
`
`the Plaintiff have such other and federally
`
`relief as the Court deemed just and proper.
`
`-14-
`
`

`
`CASE NO.
`
`COUNT III — DECLARATORY JUDGMENT
`
`39. ‘Plaintiff repeats and realleges paragraphs 1 thru 32 as
`
`if fully set forth at this point.
`
`40.
`
`An actual controversy has arisen between the Plaintiff
`
`and the Defendants concerning ownership of the designation ION and
`
`the right to register that designation as a trademark in the PTO.
`'WHEREFORE, Plaintiff demands the Declaratory Judgment of this
`
`Court as follows:
`A.
`That Plaintiff is the owner of all right, title and
`
`interest in the designation ION;
`
`B.
`
`That Plaintiff has
`
`the right
`
`to register
`
`that
`
`designation as a trademark with the PTO
`C.
`That the registration applications of the Defendants
`concerning the designation ION are null and void ab initio.
`D.
`That the PTO is directed to declare the registration
`
`applications for the designation ION by WAVE REBEL, Serial Nos.
`
`78755453 and 78755548, abandoned.
`
`COUNT IV - COMMON LAW UNFAIR COMPETITION
`
`41. Plaintiff repeats and realleges paragraphs 1 thru 32 as
`
`if fully set forth at this point.
`42.
`The aforesaid conduct of
`
`the Defendants constitutes
`
`comon law unfair competition under the laws of Florida.
`43.
`The
`aforesaid conduct
`has been willful wanton and
`
`malicious.
`
`-15-
`
`

`
`CASE NO.
`
`WHEREFORE, Plaintiff
`
`demands
`
`joint
`
`and
`
`several
`
`judgment
`
`against the Defendants as follows:
`
`A.
`
`That
`
`the Plaintiff have and receive compensatory
`
`damages.
`
`damages.
`
`.
`
`B.
`
`That
`
`the Plaintiff
`
`have
`
`and .receive punitive
`
`C.
`
`D.
`
`That the Plaintiff have and receive court costs.
`
`That
`
`the Plaintiff have and receive pre and post
`
`judgment interest.
`E.
`That the Plaintiff have such further relief and the
`
`court deems just and proper.
`
`TRIAL BY JURY IS DEMANDED OF ALL ISSUES TRIABLE AS OF RIGHT BY
`
`JURY.
`
`Respectfully submitted,
`
`ROBERT J. VAN DER WALL, P.A.
`Gables One Tower
`
`
`
`C:\...\PEARSON\PLEADING.O08\COMPLAIN.VER
`
`{.61-‘_
`
`-15-
`
`

`
`‘F.
`
`CASE NO.
`
`DECLARATION VERIFYING COMPLAINT
`
`Pursuant
`
`to 28 U S.C.
`
`§ 1746, Alice Orvis in her capacity as
`
`personal representative of the Estate of Pearson, under penalty of
`
`perjury, states as follows:
`
`am the Personal
`I
`and
`is Alice Orvis,
`name
`My
`1.
`Representative of the Estate of Pearson, Plaintiff, THE"ESTATE.‘
`2.
`I am the authorized agent of the Plaintiff in the above-
`
`entitled action,
`
`I have authorized and directed the filing of this
`
`action,
`
`I have read the foregoing Verified Complaint and know the
`
`contents thereof, and I represent
`
`the same to be true of my own
`
`knowledge, except as to matters therein stated to be alleged upon
`information and belief, and as to those matters I have a good faith
`
`belief that they are true.
`3.
`I am over the age of eighteen (18) years, have personal
`knowledge of the matters set forth herein, and if called upon to do»
`
`so, could and would competently testify to those matters.
`
`I declare under penalty of perjury that the foregoing is true
`
`and correct.
`
`
`Executed on January 23
`
`, 2006
`
`
`
`
`
`ALICE ORVIS
`
`-17..
`
`

`
`US 6,203,389 B1
`(10) Patent No.:
`(12) United States Patent
`Pearson
`(453 Date of Patent:
`Mar. 20, 2001
`
`
`Us006203389B1
`
`(54) B0DY~‘1;~0I‘-RD
`
`(76)
`
`Inventor: Eric Todd Pearson. 101 Treetop Dr..
`Melbourne. FL (us) 32951
`~.
`
`( *) Nance:
`
`Subject to any disclaimer. the term of this
`patent is extended or adjusted under 35
`U.S.C. 154(1)) by 0 days.
`
`(212 AWL N°" 09383111
`(32) Filed:
`Aug_ 14’ 1999
`(51)
`Int. Cl.’ .................................. B63B 35/73
`(S7) U.S. CL ..................
`.
`........... 441/65
`
`(5%) Field of Search .........«..........
`_, 441/55, 74; 114/290;
`])21/769, 770
`
`Pn'mar_v £2caminer—-Sherman Basinger
`(74) Attorney, Agent, or Fimt——Robert J. Van Der Wall
`
`ABSFRACY
`57)
`Disclosed is a substantially rigid to semi-rigid. lightweight
`bodyboard. having a durable. slick outer skirt on the lower
`surface. a conventional upper surface and a specially shaped
`lower surface for maximized speed. maneuverability. and
`performance. The lower surface of the bodyboard at the nose
`has a slightly rounded or elliptical shape that-is almost aflat
`surface which changes to a shallow trimaran hull shape in
`the rear two thirds of the bodyboard. The shallow uimaran
`includcs a ccnwx mm and two sid¢1.u115 each scpmmd by 3
`channel and is characterized by. inverse sharp edged chines
`at the inside edges of the side hulls to provide grip. tracking
`and maneuverability. The shallow trimaran is also modified
`by edge sltegs termed inftns that end abruptly before the tail
`to provide the bodyhoand incredible hold and eliminate slide
`out. The shallow trimaran effect is tapered out with a slope
`so that it tends to flatten out towards the tail. which causes
`a _pl§n_ins effect scheming lift and also trapping air to
`minimize wetted surface ma and reduce fncnon. The
`sidehulls of the shallow trimaran have :1 lesser draft than the
`center hull such that lateral leaning causes one channel and
`adjacem sidehull to come out of the water to reduce wetted
`set“ M "dud": ‘n‘°fi°" and "‘°“‘"‘_"_““5 ‘rm
`20 Clainu, 1
`Sheet
`
`
`
`(56)
`
`References Cited
`
`-
`
`'
`
`'
`US‘ PATENT DOCUMENTS
`n21ne9
`D. 194.646 *
`2/1963 Del Mar.
`D. 220.979 '
`6/1971 Belik .........
`...... D2tn69
`
`.
`- D21/759
`D. 305.144 ‘ 12/1989 Shanclec
`9/1957 Lt Mam? ~-
`---~- 114390
`3-343-154 "
`54334-390 ‘
`7/1993 M°““‘ ---
`~-~- “"55
`§:$§33 -
`31333 i‘,:',,°.;.;;"..............................: ";i§’n°Z
`" cited by examiner
`
`

`
`
`
`U.S. Patent
`
`Mar. 20, 2001
`
`US 6,203,389 B1
`
`I4
`
`/10
`
`I22
`
`22;
`
`25
`/.0
`I6
`
`I4
`40 38 '36 I6 I2 35 38
`
`EI6~
`FIG. 4
`
`/‘O
`:40
`
`FIG. 5
`
`‘Z 26 FIG. 6'?
`.4
`,,O
`
`F
`; ;
`I2 30 20
`2 3QI
`8
`FIG. 7
`
`0
`
`/'4 ’/
`
`‘0
`
`24
`.
`FIG 2
`33
`
`I4
`
`‘2
`
`I6
`
`40
`
`,0
`\
`
`22
`
`I4
`
`_
`
`38 3° 30 28 |‘\8 28 30 20 38
`. FIG. 8
`
`35
`20
`
`35 /‘O40
`2
`I5
`I2
`FIG. 9
`
`4
`FIG. IO
`
`24
`F16. 3
`
`

`
`US 6,203
`
`,389 B1
`
`'7at
`
`1
`BODYBOARD
`
`BACKGROUND OF THE INVENTION
`
`to further minimized drag. and the front edge of the body-
`board is curved forwardly for improved wave penetration.
`Finally. when t