Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA118896
`ESTTA Tracking number:
`01/10/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`Opposer Information
`
`Name
`Granted to Date
`of previous
`extension
`Address
`
`YolandaEustaquio
`01/10/2007
`
`1401 East 11th Avenue
`Hialeah, FL 33010
`UNITED STATES
`
`Attorney
`information
`
`Andres F. Quintana
`Quintana Law Group, APC
`21900 Burbank Boulevard, Third Floor
`Woodland Hills, CA 91367
`UNITED STATES
`andres@qlglaw.com
`Applicant Information
`
`Application No
`Opposition Filing
`Date
`Applicant
`
`78732125
`01/10/2007
`
`Publication date
`Opposition
`Period Ends
`
`09/12/2006
`01/10/2007
`
`Hernandez, Claudia G
`13400 Saticoy Street #8
`North Hollywood, CA 91605
`UNITED STATES
`Goods/Services Affected by Opposition
`
`Class 003. First Use: 2005/09/20 First Use In Commerce: 2005/09/20
`All goods and sevices in the class are opposed, namely: Skin Cream
`
`Related
`Proceedings
`
`Hernandez v. Eustaquio et al, and Related Counterclaim, United States District
`Court, Central District of California, Case No. CV05-8616 AJG (SHx).
`
`Attachments
`
`1.10.07 TTB Notice of Opposition.pdf ( 68 pages )(3648389 bytes )
`
`Signature
`Name
`Date
`
`/andres quintana/
`Andres F. Quintana
`01/10/2007
`
`

`
`Andres F. Quintana (SBN 190525)
`QUINTANA LAW GROUP_
`A Professional Law Corporation
`The Warner Center
`21900 Burbank Boulevard, Third Floor
`Woodland Hills, California 91367
`Telephone: 818) 992-31 14
`Facsimile:
`( 18) 992-3116
`Email: andres@qlglaw.com
`
`Attorneys for Defendants and Counterclaimants_
`Pro-Mex Distributor, LLC and Yolanda Eustaquio
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In The Matter of Trademark Application
`Serial No. 78732125 For The Mark
`
`QUADRYDERN N.F. Published in the
`Official Gazette on September 12, 2006,
`
`NOTICE OF OPPOSITION OF
`OPPOSER YOLANDA EUSTA UIO
`TO TRADEMARK APPLICAT ON,
`SERIAL NO. 78732125
`
`YOLANDA EUSTAQUIO, an
`individual,
`
`Opposer,
`
`vs.
`
`HERNANDEZ, an
`
`Applicant,
`
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`28
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`Quintana Law
`Group, APC
`
`

`
`THE PARTIES
`
`\D®\lO\UI-BO-ll»)!-A
`
`The Opposer is YOLANDA EUSTAQUIO (“Eustaquio”), owner of Promex
`
`Distributor, LLC, a Florida Limited Liability Company, located at 1401 East 11"‘
`
`Avenue, Hialeah, Florida 33010. Eustaquio is also the registered owner of registered
`
`trademark for CREMA CUADRIDERMA, in International Class 005 for Cream For
`
`Itching And Inflammation, Anti-Fungus And Anti-biotic (Trademark Registration
`
`Number 2906539). (E Exhibit “2” hereto.)
`
`The Applicant
`
`is CLAUDIA HERNANDEZ (“Hernandez”),
`
`the owner of
`
`Productos Zapotol located at 13400 Saticoy Street #8, North Hollywood, California
`
`10
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`91605. Hernandez is attempting to register the alleged QUADRYDERN N.F. mark
`
`11
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`12
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`13
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`14
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`15
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`16
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`through serial number 78732125. (Exhibit “1” hereto.)
`
`BRIEF STATEMENT OF GROUNDS
`
`A.
`
`There Is A Pending Federal Lawsuit Between The Parties Relevant
`
`To The Registrability of the Mark.
`
`There a pending federal lawsuit between applicant Hernandez and Eustaquio
`
`before the U.S. District Court, Central District of California, entitled Hernandez v.
`
`17 Eustaguio et al, and Related Counterclaim, Case No. CV05-8616 AJG (SHx).
`
`18
`
`Specifically, applicant Hernandez initially filed a Complaint seeking a Declaratory
`
`19 Relief of Non-Infringement regarding her use of the QUADRYDERN N.F. mark.
`
`20 Opposer Eustaquio filed a Counterclaim alleging, among other things, that applicant
`
`2] Hernandez’s use of QUADRYDERN N.F. (the mark pending before this Board)
`
`22
`
`23
`
`24
`
`25
`
`infringes on Opposer Eustaquio’s registered CREMA CUADRIDERMA trademark
`
`and trade dress. (Exhibit 6 hereto contains a copy of the Counterclaim).
`
`Fact discovery in the federal case is set to close on January 31, 2007 and expert
`
`discovery regarding the likelihood of confusion between the Opposer Eustaquio’s
`
`26
`
`registered CREMA CUADRIDERMA mark and applicant Hernandez’s pending
`
`27 QUADRYDERN N.F. mark will conclude by the end of March 2007. Trial in this
`
`28
`
`dispute is set to begin on June 26, 2007. More importantly, the trial in this case is
`
`Quintana Law
`Group, APC
`
`_2_
`
`

`
`I
`
`likely to resolve
`
`the dispute whether
`
`applicant Hemandez's use of
`
`the
`
`QUADRYDERN N.F. mark infringes on the trademark and trade dress of Opposer
`
`Eustaquio’s CREMA CUADRIDERMA registered mark. Thus, Opposer Eustaquio
`
`respectfully submits that
`
`this Board either:
`
`(1) deny Hernandez's trademark
`
`application for
`
`the alleged QUADRYDERN N.F. mark; or
`
`(2)
`
`suspend the
`
`application of said mark before the Trademark Office until such time as the pending
`
`litigation between the parties is resolved by the U.S. District Court for the Central
`
`District of California.
`
`B.
`
`There
`
`Is A Likelihood Of Confusion Between Eustaquio's
`
`Registered Mark And Hernandez's Pending Application.
`
`Eustaquio alleges that there is a likelihood of confusion between her registered
`
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`
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`
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`
`12 CREMA CUADRIDER.MA mark and Hernandez‘s QUADRYDERN N.F. mark that
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
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`22
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`23
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`24
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`25
`
`26
`
`27
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`28
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`is the subject of the instant registration application. Eustaquio presents the following
`
`in support of her allegation:
`
`Under Section 2 of the Lanham Act (15 U.S.C. 1052), a trademark shall be
`
`refused registration on the principal register on account of its nature if the mark,
`
`among other things,
`
`"(d) Consists of or comprises a mark which so resembles
`
`a mark registered in the Patent Office or a mark or trade
`
`name previously used in the United States by another and
`
`not abandoned, as to be likely, when applied to the goods
`
`of the applicant to cause confusion, or to cause mistake
`
`or to deceive";
`
`Thus, under the statute the Trademark Office must refuse registration when
`
`confusion is likely because of concurrent use of the marks of an applicant and a prior
`
`user on their respective goods.
`
`In any likelihood of confusion analysis,
`
`two key considerations are the
`
`similarity of the marks and the similarity of the goods or services. E Federated
`
`Quintana Law
`Group, APC
`
`3
`
`

`
`Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24 (CCPA
`
`1976), and In re Azteca Restaurant Entemrises Inc., 50 USPQ2d 1209 (TTAB 1999).
`
`Eustaquio respectfiilly contends that both the marks and goods at issue are highly
`
`similar.
`
`The Examining Attorney must
`
`first
`
`look at
`
`the marks themselves for
`
`similarities in appearance, sound, connotation and commercial impression. In re E. I.
`
`DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).
`
`Eustaquio
`
`respectfially
`
`alleges
`
`that
`
`her CREMA CUADRIDERMA;
`
`and
`
`Hemandez&'s QUADRYDERN N.F are sufficiently similar under this standard
`
`so as to permit a finding of likelihood of confusion. For one, both trademarks are
`
`phonetically similar in the Spanish language. Further, the dominant portions of the
`
`two marks are similar; Here, the dominant portion of CREMA CUADRIDERMA's
`
`mark, which disclaims the word CREMA (meaning "cream";
`
`in Spanish)
`
`is
`
`CUADRIDERMA; E In re National Data Comm, 753 F.2d 1056, 1058, 224 USPQ
`
`749, 751 (Fed. Cir. 1985) (it is not improper to give more or less weight to a
`
`particular feature of a mark). That dominant portion is almost phonetically identical
`
`to the proposed QUADRYDERN mark, especially when pronounced in Spanish.
`
`Neither the design element nor the generic term N.F. contained in Hernandez's
`
`proposed QUADRYDERN mark offers sufficient distinctiveness to create a different
`
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`28
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`Second,
`
`the Examining Attorney must compare the goods or services to
`
`determine if they are related or if the activities surrounding their marketing are such
`
`that confusion as to origin is likely.
`
`In re August Storck KG, 218 U.S.P.Q. 823
`
`(TTAB 1983); In re International Telephone and Telegraph Corp, 197 U.S.P.Q. 910
`
`(TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 U.S.P.Q. 738 (TTAB
`
`1978).
`
`In order to support a finding of likelihood of confiision, all that is required is
`
`a showing that the goods on which the parties‘ marks are used are related in some
`
`manner or are marketed under conditions which would cause a potential purchaser to
`
`Quintana Law
`Group. APC
`
`-4-
`
`

`
`assume, because of the marks under which they are sold, that they emanate from the
`
`same source. _S_eg Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 U.S.P.Q.
`
`851, 1978 WL 21294 (Trademark Trial App. Bd. 1978). Thus, in the absence of any
`
`limitations in the Applicant's identification of goods, one must assume that those
`
`goods are marketed in the same manner as any other related goods and are sold
`
`through all the trade channels normal for such goods. & CBS Inc. V. Morrow, 708
`
`F.2d 1579, 218 U.S.P.Q. 198 (Fed. Cir. 1983); Paula Payne Products Co. V. Johnson
`
`
`Pub. Co. Inc., 473 F.2d 901, 177 U.S.P.Q. 76 (C.C.P.A. 1973).
`
`Here, Eustaquio respectfully alleges that the goods or products containing the
`
`CREMA CUADRIDERIVIA mark and the proposed QUADRYDERN N.F. mark are
`
`so sufficiently related under
`
`this standard so as
`
`to make confusion likely.
`
`Specifically, CREMA CUADRIDERMA is advertised as an anti-inflammatory cream
`
`which temporarily relieves burns, rashes and itching.
`
`(§e_e Exhibits “I” and “3”
`
`hereto.)
`
`According
`
`to Hemandez's website
`
`(www.zapotol.com),
`
`the
`
`QUADRYDERN N.F. mark also appears on a cream product advertised to likewise
`
`relieve
`
`"irritaciones
`
`ligeras de la piel,
`
`inflamacion";
`
`("skin irritations
`
`and
`
`inflammation").
`
`(E Exh. 4 hereto.)
`
`Indeed, Hemandez's product packaging
`
`containing the QUADRYDERN N.F. mark claims that the product is "for temporary
`
`relief of itching associated with minor skin irritations, inflammation and rashes."
`
`(gag Exhibit 5 hereto)
`
`Finally,
`
`the fact
`
`that Eustaquio's CREMA CUADRIDERMA mark and
`
`Hemandez's proposed QUADRYDERN N.F. mark are so strikingly similar and their
`
`products so related is of no accident.
`
`Prior to filing her registration for the
`
`QUADRYDERN N.F mark, applicant Hernandez was a regular customer of
`
`Eustaguio and her company Pro-Mex Distrbiutor, LLC.
`
`Indeed, attached hereto as
`
`Exhibit 7 are invoices, dated August 2003-August 2005, from Eustaquio's company,
`
`Pro-Mex Distrbiutor, LLC,
`
`to Hemandez's business Zapotal
`
`located at the same
`
`address listed on Hemandez's trademark application: 13400 Saticoy Street #8, North
`
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`
`Quintana Law
`Group, APC
`
`-5-
`
`

`
`I~I01Iywo0ci., Califmnia 91605. These i11V'GiCf?-S dem0nst:*ate that Hfa1‘I1E1i1C5.E32f: was
`
`p111'chasi11g CREMA CU‘A£)RI.DERMA products frmn Pro~:\«Iex D:ist1*ibut~:>r, LLC
`
`over $113 course of several yaars.
`
`Indeed, He1‘naI1dez ceased purchas‘iI1g; "products
`
`1710211 P'ro~Ix/lax {)istrbiL1t0r_, LLC aroL1:nci the tijme that I~Iemande2: filed her t1‘adeII1a1.:'E<
`
`applicz-ziiozl
`
`for
`
`the QUADRYDERN NF.
`
`lnark.
`
`As detaiied in a penciing
`
`Cm.1ntercl21i.m filed by Eustaqujro and Pm-1’\/Ié:2< Ijistiiihmior, LLC in the US. District
`
`Cmart, Cezxm-zl Di.s1:1°ic:t of C.:11Li:f0r:1ia (and attaclxed hereto as Exhibit 6), He:711a.n_:iez‘;~;
`
`knowledge of the existexuce of the CREMA. CUADTRiD‘E£RM1-‘x xnark and subsequetmj E
`sale Qf QUADRYDERN
`pr0d'ur;:'ts mnstitutss willful 1;1'ade111a1'k and trade «::h“ess§
`§
`
`i11fringe:111e11t.
`
`Because of the SiI.‘{1i1§1I‘iW of Eusta LI.i0‘s re0‘iste1*ed mark and t_E1e. mark that isi
`.
`32.’!
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`§
`
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`
`gths subject of the appiicaLtio11 and because cf the re1a:ed:ia[ess of the 1i11::s mf goods
`[desc1‘ibe::L. Eustaquics 1*sspe«:t:fi;11ly r=E:quesi:s that you grant this Lettez‘ of Protest and
` ‘any doubt. as to the i.ssue of iilcelilzoad.
`
`advise the Emmining Attornesy as appropriate. The Exanflniiug Attorney I1'1LiS?§fL’:S()}\FC
`
`<:n':" c0::1:Fusi0n. in favor of the Regisafrant
`*
`_
`..
` \
`(E§L1staquio_) and against i:h.s.=: Ap_p11ca.n.t (I~Iema:r1de:;«:) who has 21. legal duty to saieci:
`lmark whic»h is totaiiy dis.si:miIar
`to tradenfzarks already being, used. B11r1'o11§;§jg§
`
`s
`
`(:'I‘rade1:1zu:i~: '1”1‘:ia1App. Ed. 1979),
`
`DATED: January 10, 2007
`
`QI.IIN:FA_1:\ITA LAW GROUP
`A }’t'oi<;§§g031a}_La\aI Corporation
`4‘
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`
`
`By‘:
`
`At1(i;‘e‘&-.E€ Qui11tana., Es .
`mtormeys for C3_ppos6r ‘E oiauda EL1S'iIaq'UiO
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`Grmap, AFC
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`H
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`66199
`
`

`
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`QUADRYDERN N.F.
`
`( Use the "Back" button of the Internet
`
`Word Mark
`
`Goods and services
`
`Standard characters
`claimed
`
`Mark Drawing code
`Deslgn Search code
`serial Number
`
`Flllng Data
`
`current Flllng Basls
`Orlglnal Flllng Baele
`Puhllshed for
`Opposition
`Owner
`
`QUADRYDERN N.F.
`
`IC 003. US 001 004 006 050 051 052. G & 8: Skin Cream. FIRST USE: 20050920. FIRST
`USE IN COMMERCE: 20050920
`
`(4) STANDARD CHARACTER MARK
`
`78732125
`
`October 12. 2005
`1A
`1A
`
`September 12. 2003
`
`(APPLICANT) Hernandez. Claudla G INDIVIDUAL EL SALVADOR 13400 Satlcoy Street #8
`North Hollywood CALIFORNIA 91605
`
`Attorney of Record
`
`Christopher J. Day
`TRADEMARK
`Type of Mark
`PRINCIPAL
`Register
`LIVE
`L|veIDead lndlcator
`
`
`TESS!-lam:
`
`l.'C.vUs:R
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`smucrunso Fnmzron.-.:.sn:mu.:no0
`
`new
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`
`
`LHOME I SITE IPIIIEIII SEARCH I GBUBINESS I HELP I PRIVACY POLICY
`
`http://tess2.uspto.govlbin/showfield?f=doc&state—-nsros.2. I
`
`9/1 1/2006
`
`

`
`EXHIBIT 6629:
`
`

`
`-9
`
`J C
`
`ERTIFICATE OF REGISTRATION
`PRINCIPAL REGISTER
`
`The Mark shown in this <‘eI'ti/imte has been registered in the United States
`Patent and Trademark Ojlice to the named registmnt.
`
`The records of the United States Patent and Trademark Ojiice show that
`an applicationfor registration ofthe Mark shown in this Certificate wasfiled in the
`Oflicet that the application was examined and determined to be in compliance with
`the requirements ofthe law and with the regulations prescribed by the Director ofthe
`United States Patent and Trademark Ojfice: and that the Applicant is entitled to
`registration ofthe Marl: under the 7'mdemark Act o_/‘I946. as Amended.
`
`A copy of the Mark and pertinent data from the application are part of
`this certificate.
`
`the owner of the
`To avoid C‘/lNCELl..-1Tl0.'\' of the registration.
`registration must submit a declaration of continued use or excusable non-use
`between thefifth and sixth years after the registration date. (See next page-_/or more
`information.) .4sstmn'ng such a declaration is ,oIvperl_r _/iletl.
`the regiwrutiun will
`remain inforcejbr ten (IU) _vem's. Imless terntinuted by an order o/‘the Commissioner
`for lratlenzurks or a./ederal (‘0ttt'l. (See next page for information on maintenance
`Iequiretnentsjbr successiu-'e ten-_I°em- periods.)
`
`
`
`

`
`‘
`
`._
`
`.
`
`.. --. .
`
`. s.a\4|\ n uuunnh
`
`‘.7. TRADEMARK REo1s'rn.s:r‘w
`I
`-‘
`Requirements in the First Ten Years"'
`What and When to F:72: I
`- First Filing: A Declaration of Continued Use (or Excusable Non-use), filed between the
`5"‘ and 6"‘ years after the registration date. (See l5 U.S.C. §lO58: 37 C.F.R. §2.l6l.)
`- Second Filin :A Declaration of Continued Use (or Excusable Non-use)t_1p_t_i an
`Application or Renewal. filed between the 9"‘ and I0!“ years after the registration date.
`(See IS U.S.C. §IOS8 and §l059: 37 C.F.R. §2.I6l and 2.183.)
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`’ A Declaration of Continued Use (or Excusahle Non-use) a_n_t_l an Application for
`Renewal. filed between each 9"‘ and I0!“-yearcreriod after the date when the first
`ten-year period ends. t.S'ee I5 U.S.C. {$105!} an §lO59: 37 C.F.R. §2. l6l and 2.183.)
`Grace Period Filings*
`There is_a six-month grace period for filing the documents listed above. with payment of
`
`
`
`an additional fee.
`
`The U.S. Patent and Trademark Office (USPTO) will NOT send you any future notice
`or reminder of these filing requirements. Therefore, you should contact the USPTO
`approximately one year prior to the deadlines set forth above to determine the
`requirements and fees for submission of the required filings.
`NOTE: Electronic forms for the above documents, as well as information regarding
`current filing requirements and fees, are available online at the USPTO web site:
`www.us,q__io.g_qi_»
`YOUR REGISTRATION WILL BE CANCELLED IF IVOU DO NOT
`
`
`
`
`
`FILE THE DOCUMENTS IDENTIFIED ABOVE DURING THE
`
`SPECIFIED TIME PERIODS.
`
`
`
`
`
`
`
`
`
`

`
`Int. CL: 5
`
`Prior U.S. 05.: 6, I8, 44, 46, 51 and 52
`United States Patent and Trademark Office
`
`Reg. NO. 2.906.539
`Registered Nov. 30, zoo-a
`
`TRADEMARK
`PRINCIPA L REGISTER
`
`Cte_mcI
`Guadrulerma
`
`-_..-.g-:4.-.
`
`EUSTA%lil’l2L)YOLANDA (UNITED STATES IN-
`DIV!
`I981 CORPORATE SQUARE DR. If I57
`LONGWOOD. FL 32730
`
`NO CLAIM IS M
`mum TO USE "CREMA". APART FROM THIS
`M,“-uq A5 snow”, _
`
`ADE TO THE EXCLUSIVE
`
`FOR‘ caem FOR rrcuma AND mz=L.-w.\-
`now. ANTI-FUNOUS AND ANTI-DIOTIC: For:
`EXTERNAL use ONLY. IN cuss 5 (us. CLS. 6.
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`FIRST USE 9-27-2002: FN COMMERCE 9-27-2002.
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`SOPHIA 5. RIM. EXAMINING ATTORNEY
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`Attorneys fpr Defendants and Counterclaiinants
`Pro-Mex Distributor, LLC and Yolanda Eustaquio
`
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
`ICnI‘.hA1;.:lDaIi1A HERNANDEZ, an
`CASE NO. CV05-8616 ABC (SHx)
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`ANDYOLANDA EUSTAQUIO'FOR:
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`1. TRADEMARK
`INFRINGEMENT;
`2. TRADEMARK
`INFRINGEMENT;
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`PRO-MEX, LLC, aFlorida limited
`liabili
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`1 through 10, inclusive,
`
`Defendants.
`
`PRQ-MEX DISTRIBUTOR, LLC, a
`Florida Limited Liabili&Company; and
`YOLANDA EUSTAQ 0, an
`individual,
`
`Counterclaimants,
`
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`
`5
`CLAUDIA HERNANDEZ, an
`Individual; GUSTAVO CASAS an
`Individual; PRODUCTOS ZAPOTOL;
`a business entity of unknovyn form, and
`DOES at throughf’, inclusive,
`‘
`Counter-defendants.
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`3. TRADE DRESS
`INFRINGEMENT;
`4. FEDERAL UNFAIR
`COMPETITION AND FALSE
`DESIGNATION OF ORIGIN;
`5. FEDERAL TRADEMARK
`DILUTION;
`6. CALIFORNIA STAUTORY
`UNFAIR BUSINESS
`PRACTICES;
`
`7. CALIFORNIA STATUTORY
`FALSE ADVERTISING;
`8. CALIFORNIA STATUTORY
`TRADEMARK DILUTION;
`
`9. COMMON LAW UNFAIR
`COMPETITION
`
`DEMAND FOR JURY TRIAL
`
`

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`ANSWER TO THE COIVIPLAINT, AFFIRMATIVE
`DEFENSES AND COUNTERCLAIM
`
`Defendants Pro-Mex Distributor, LLC (erroneously sued as “Pro-Mex, LLC”)
`and Yolanda Eustaquio (collectively referred to as “Defendants”) respond to the
`Complaint filed by Claudia Hernandez (“Plaintiff”) and aver as follows:
`i
`1.
`Defendants lack information or belief suificient to admit or deny the
`allegations in paragraph 1 ofthe Complaint, and on that basis deny them.
`2.
`Defendants lack information or belief suflicient to admit or deny the
`allegations in paragraph 2 ofthe Complaint, and on that basis deny them.
`3.
`Defendants lack information or belief suflicient to admit or deny the
`allegations in paragraph 3 ofthe Complaint, and on that basis deny them.
`4.
`Defendants lack information or belief suflicient to admit or deny the
`allegations in paragraph 4 ofthe Complaint, and on that basis deny them.
`5.
`Defendants admit the allegations in paragraphs 5 ofthe Complaint.
`6.
`Defendants admit the allegations in paragraphs 6 ofthe Complaint.
`7.
`Defendants deny the allegations in paragraph 7 ofthe Complaint.
`8.
`Defendants deny the allegations in paragraph 8 ofthe Complaint.
`9.’
`Defendants lack information or belief sufficient to admit or deny the
`allegations in paragraph 9 ofthe Complaint, and on that basis deny them.
`10. Defendants lack information or belief sufficient to admit or deny the
`allegations in paragraph 10 ofthe Complaint, and on that basis deny them.
`11. Defendants lack information or belief sufficient to admit or deny the
`allegations in paragraph 11 ofthe Complaint, and on that basis deny them.
`12. Defendants admit the allegations in paragraph 12 ofthe Complaint.
`13. Defendants admit the allegations in paragraph 13 ofthe Complaint.
`
`14. Defendants deny the allegations in paragraph 14 ofthe Complaint.
`15. Defendants deny the allegations in paragraph 15 ofthe Complaint.
`
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`16. Defendants hereby repeat and incorporate all admissions and denials of
`
`2 paragraphs 1 through 15 of the Complaint, as if set forth fitlly herein.
`
`3
`
`g 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`11
`12
`13
`
`14
`
`15
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`22
`
`23
`
`24
`
`'25
`
`26
`
`27
`
`28
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`l7. Defendants deny the allegations in paragraph 17 ofthe Complaint.
`
`18. Defendants deny the allegations in paragraph 18 ofthe Complaint.
`
`19. Defendants lack information or belief sufficient to admit or deny the
`
`allegations in paragraph 19 ofthe Complaint, and on that basis deny them.
`
`20. Defendants deny the allegations in paragraph 20 ofthe Complaint.
`
`2l_. Defendants hereby repeat and incorporate all admissions and denials of
`
`paragraphs 1 through 20 of the Complaint, as if set forth fully herein.
`
`22. Defendants deny the allegations in paragraph 22 ofthe Complaint.
`23. Defendants deny the allegations in paragraph 23 ofthe Complaint.
`24.- Defendants lack information or belief sufficient to admit or deny the
`allegations in paragraph 24 ofthe Complaint, and on that basis deny them.
`
`25. Defendants deny the allegations in paragraph 25 ofthe Complaint.
`
`26. Defendants deny each allegation in the Complaint not specifically
`admitted to be true.
`
`' 27. Defendants deny the availability of each and every prayer for relief
`
`requested by Plaintiff in the Complaint.
`
`.
`
`AFFIRMATIVE DEFENSES
`
`28. As separate aflirmative defenses to the Complaint, on the grounds that
`
`such defenses are likely to have evidentiary support afier a reasonable opportunity
`for further investigation or discovery, the Defendants further allege as follows:
`
`First Affirmative Defense
`
`29.
`
`The Complaint, and each purported claim set forth therein, fails to state
`
`a cause of action upon which relief can be granted.
`
`'
`
`Second Affirmative Defense
`
`30.
`
`The Complaint, and each purported claim set forth therein, fails to join
`
`an indispensable party.
`
`Quintana Law
`Group. APO
`
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`
`Third Affirmative'Defense
`
`The Complaint, and each purported claim set forth therein, fails to join
`31.
`a necessary party.
`
`Fourth Affirmative Defense
`
`The Complaint, and each purported claim set forth therein, is barred on
`32.
`the ground that the Plaintiff has filed this Complaint is bad faith.
`'
`Fifth Affirmative Defense
`
`33.
`
`The Complaint, and each purported claim set forth therein, is barred on
`
`the ground that the Plaintiff has violated the implied covenant of good faith and fair
`
`dealing.
`
`Sixth Affirmative Defense
`The Complaint, and
`34.
`purported claim set forth therein, is barred on
`the ground that there is no present, actual controversy between the parties.
`
`Seventh Affirmative Defense
`
`35.
`
`The Complaint, and each purported claim set forth therein, is barred by
`
`1 2 3 4 5 6 7 8 9
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`the doctrine of unclean hands.
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`Eighth Affirmative Defense
`
`36.
`
`The Complaint, and each purported claim set forth therein,'is barred by
`
`the doctrines of waiver, estoppel and/or laches based on the Plaintiffs wrongful
`
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`conduct.
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`Ninth Affirmative Defense
`
`37.
`
`The Defendants’ conduct constituted the lawful exercise of their legal
`
`rights.
`
`'
`
`Tenth Affirmative Defense
`
`38.
`
`The Complaint, and each cause of action against the Defendants alleged
`
`therein, fails to describe the claims made against the Defendants with sufficient
`
`particularity to enable the Defendants to determine what defenses they may have in
`
`response to Plaintiffs’ claims. The Defendants therefore reserve the right to assert
`
`Quintana Law
`Group, APO
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`all defenses which may be pertinent to Plaintiff's claims once the precise nature of
`such claims are ascertained through discovery.
`DEFENDANTS’ PRAYER FOR RELIEF ON THE ANSWER
`WI-IEREFORE, Defendants pray for
`the following relief against
`Complaint:
`
`the
`
`That Plaintiff's Complaint be dismissed with prejudice, and that its
`1.
`request for damages and other reliefbe denied in fiill;
`
`That the Defendants be awarded their attomeys’
`2.
`expenses in this action, pursuant applicable law; and
`
`fees, costs and
`
`That the Defendants be awarded such further relief as this Court may
`3.
`deem fair and just.
`
`

`
`I"
`
`COUNTERCLAIM
`
`The
`
`counterclaimants PRO-MEX DISTRIBUTOR, LLC and
`
`1 2
`
`3 YOLANDA EUS'I‘AQUIO file this counterclaim against counter-defendants
`
`4 CLAUDIA HERNANDEZ, GUSTAVO CASAS and PRODUCTOS ZAPOTOL,
`
`5
`
`and aver as follows:
`
`IN’I‘RODUCTION
`
`1.
`
`This is an action for damages and injunctive relief arising under the
`
`Lanham Act, California statutes and the common law of unfair competition. The
`
`gravamen ofthe counterclaim is that counter-defendants are engaged in the unlawful
`
`skin cream designated
`anti-itch
`an
`and distribution of
`sales
`making,
`"QUADRYDERM N.F.," in violation of the counterclaimants’ registered trademark
`
`"CREMA CUADRlDBRMA" and design and their inherently distinctive product
`
`trade dress.
`
`PARTIES
`
`2.
`
`Counterclaimant
`
`YOLANDA
`
`EUSTAQUIO
`
`(hereinafter
`
`"EUSTAQUIO")
`
`is
`
`the owner of a registered trademark for
`
`"CREMA
`
`CUADRIDERMA" and design for an over-the-counter proprietary cream for itching
`
`and inflammation, anti-fungus and antibiotic. Exhibit A hereto.
`
`3.
`
`Counterclaimant PRO-MEX DISTRIBUTOR, LLC (hereinafier "PRO-
`
`MEX") is a limited liability company duly organizes under the laws of the State of
`
`Florida that is engaged in the manufacture, sale, and distribution of medicinal
`
`preparations, and is the exclusive licensee of EUSTAQUIO's trademark rights for
`
`b-II-ll-I)-ll-It-ll-II-ll-It-lidowooqamhuuucsacoqm
`
`Nu-0
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`I903
`
`“CREMA CUADRIDERMA".
`
`4.
`
`According to the Complaint on file with this Court, counter-defendant,
`
`is an individual residing in the State of California and doing business as a sole
`
`proprietor.
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`
`5.
`
`Counterelaimants are informed and believe, and based thereon allege,
`
`that PRODUCTOS ZAPOTOL (hereinafter "ZA.POTOL") is the trade name of
`
`Defendant HERNANDEZ.
`
`6.
`
`HERNANDEZ and ZAPOTOL have engaged in the sale and
`
`distribution of an anti—itch cream bearing the trademark. QUADRYDERN N.F.
`
`HERNANDEZ and ZAPOTOL were, at one time, distributors of
`7.
`EUSTAQUIO's proprietary cream.
`
`8.
`
`Counterclaimants are informed and believe, and based thereon allege,
`
`that counter-defendant GUSTAVO CASAS (hereinafler "CASAS") is a principal in
`
`ZAPOTOL who personally participated or had the ability to control or direct or
`
`actually controlled or directed the acts of infringement complained of herein.
`
`9.
`
`Counterclaimants are informed and believe, and based thereon allege,
`
`that, at all relevant times mentioned herein, counter-defendant HERNANDEZ has
`
`been doing business under the ZAPOTOL tradename and personally participated or
`
`had the ability to control or direct or actually controlled or directed the acts of
`
`infiingement complained of herein.
`
`10. By virtue of their personal participation, control or direction, or ability
`
`to control or direct the acts of infringement, HERNANDEZ and CASAS are
`
`personally liable for their tortious acts against counterclaimants.
`
`11. Counterclaimants do not know the true names and capacities of the
`counter-defendants sued as l3oes1A through ‘E, inclusive, and therefore sue such
`
`counter-defendants by such fictitious names. Counterclaimants will amend this
`
`Counterclaim to allege such counter-defendants’ true names and capacities when
`
`ascertained. Counterclaimants are informed and believe, and based thereon allege,
`that each counter-defendant sued as Does dv throughlcffi,
`inclusive,
`is legally
`
`responsible in some manner for the events and happenings herein alleged, and that
`
`the damages of counterclaimant as alleged herein were proximately caused by such
`
`counter-defendants.
`
`Quintana Law
`Group, APO
`
`

`
`
`
`12.
`
`At all times material herein, each of the counter-defendants was the
`agent, servant, representative and/or employee of each of the other counter-
`defendants, and in doing the things herein alleged,
`their authority as such agents, servants, representatives and/or employees, and with
`the permission and consent oftheir co-counter-defendants
`
`_
`JURISDICTION AND VENUE
`This is an action arising under the trademark laws (15 U.S.C. §§ 1051
`13.
`et seq.) ofthe United States, California statutes (Cal. Bus. & Prof. Code §§ 17200 et
`seq., 17500 et seq. and 14330) and the common law ofunfair competition.
`14.
`This Court has subject matter jurisdiction over the federal law claims
`alleged below under 15 U.S.C. §l125(a) and 28 U.S.C. §§l33l and 1338; and over
`the other claims alleged below pursuant to the doctrine of supplemental jurisdiction
`under 28 U.S.C. §l367(a), since they are so related to the federal law claims in this
`action within the Court’s original jurisdiction that they form part ofthe same case or
`controversy under Article III ofthe United States Constitution.
`15.
`
`Judicial economy, convenience, and fairness to the parties will result if
`this Court assumes and exercises its subject matter jurisdiction over all causes of
`. action alleged herein.
`
`16. Venue in this district is proper under 28 U.S.C. § 1391. Counter-
`defendants reside in this district, have engaged in substantial and not isolated
`activities within it, or have sought relief against counterclaimants in this district.
`Furthermore, a substantial part of the events giving rise to the claims have occurred
`in this district.
`
`Quintana Law
`Group, APO
`
`

`
`FIRST CAUSE OF ACTION
`
`(For Trademark Infringement Under Section 32 Of The Lanham
`
`Act Against All Defendants)
`17. Counterclaimants reallege and incorporate by this reference, as if fiilly
`set forth herein, all ofthe allegations set forth in each ofthe preceding paragraphs of
`this counterclaim.
`
`18. Counterclaimants have been and are now engaged in the manufacture,
`sale and distribution of a proprietary cream bearing the trademark "CREMA
`CUADRIDERMA" and design.
`
`Since September 27, 2002, counterclaimants have used the trademark
`19.
`"CREMA CUADRJDERMA" in association with a proprietary cream manufactured
`under their direction and sold and marketed in interstate commerce throughout the
`United States.
`
`trademark to distinguish their
`20. Counterclaimants have used their
`products fi°om all other goods of the same class and have acquired substantial
`goodwill through the use oftheir distinctive trademark.
`
`EUSTAQUIO is the owner of U.S. Trademark Registration No.
`21.
`2906539 in the Principal Register in International Class 005 for a "cream for itching
`and inflammation, anti-fungus and anti-biotic; for external use only," which was
`duly and legally issued by the United States Patent and Trademark Office. Exh. A.
`22.
`Since the date of issuance of this registration, counterclaimants have
`continued to use the trademark in interstate commerce.
`
`Since the date of issuance of this trademark registration, EUSTAQUIO
`23.
`has been and still is the ow