throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA331060
`ESTTA Tracking number:
`02/08/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91175456
`Plaintiff
`ICON IP, INC.
`Robyn L. Phillips
`WORKMAN NYDEGGER
`60 East South Temple, Ste. 1000
`Salt Lake City, UT 84111
`UNITED STATES
`rphillips@wnlaw.com
`Motion to Suspend for Civil Action
`Robyn L. Phillips
`rphillips@wnlaw.com, scourdy@wnlaw.com, mford@wnlaw.com
`/Robyn L. Phillips/
`02/08/2010
`13915.62 Motion for Suspension.pdf ( 8 pages )(227316 bytes )
`13915.62 Exhibit A.pdf ( 34 pages )(1302440 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`TRADEMARK OPPOSITION
`File NO. 13915.62
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 78/772,703
`Published in the Official Gazette of October 3, 2006 at TM 759
`International Classes: 28
`
`Filed: December 13, 2005
`Mark: TRUFORM
`
`ICON IP, INC,
`
`Opposition No. 91175456
`
`O1°1°°Ser=
`
`V.
`
`TruForm Fitness, LLC
`
`Applicant.
`
`MOTION FOR SUSPENSION
`PENDING OUTCOME OF A CIVIL
`
`ACTION AND MEMORANDUM IN
`
`SUPPORT THEREOF
`
`Pursuant to 37 C.F.R. § 2.1 l7(a) and TBMP § 510, Opposer ICON IP, Inc. (“ICON IP”),
`
`by and through its attorneys, hereby moves that this Opposition proceeding be suspended until
`
`termination of a civil action that has been filed by ICON IP’s parent company, ICON Health &
`
`Fitness, Inc., in the United States District Court for the District of Utah against Applicant
`
`TruForm Fitness, LLC (“Applicant”) for, inter alia, trademark infringement arising from
`
`Applicant’s commercial use of the mark “TRUFORM” on exercise equipment.
`
`This motion is supported by a memorandum of law embodied herein and by the attached
`
`exhibit.
`
`MOTION FOR SUSPENSION PENDING
`OUTCOME OF A CIVIL ACTION AND
`MEMORANDUM IN SUPPORT THEREOF
`
`-1-
`
`€€€€€€€€€€€
`

`
`TRADEMARK OPPOSITION
`File No. 13915.62
`
`DATED this 8th day of February, 2010.
`
`Respectfully submitted,
`
`By:
`
`/Robyn L. Phillips/
`Robyn L. Phillips, Registration No. 39,330
`
`WORKl\/IAN | NYDEGGER
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`Telephone:
`(801) 533-9800
`Facsimile:
`(801)328-1707
`
`Attorney for Opposer, ICON IP, INC.
`
`MOTION FOR SUSPENSION PENDING
`OUTCOME OF A CIVIL ACTION AND
`MEMORANDUM IN SUPPORT THEREOF
`
`-2-
`
`

`
`TRADEMARK OPPOSITION
`File No. 13915.62
`
`1.
`
`BACKGROUND
`
`ICON IP, Inc. (“ICON IP”) filed a Notice of Opposition regarding United States
`
`Trademark Application Serial No. 78/772,703 for the mark “TRUFORM” for use on exercise
`
`equipment on or about January 31, 2007, which was assigned Opposition No. 91175456. That
`
`same day, the Trademark Trial and Appeal Board (“the Board”) of the United States Patent and
`
`Trademark Office notified TruForm Fitness, LLC (“Applicant”) that the Opposition had been
`
`filed by forwarding ICON IP’s Notice of Opposition along with a schedule for discovery and
`
`testimony. Applicant filed an Answer on March 8, 2007.
`
`On February 8, 2010, ICON IP’s parent company, ICON Health and Fitness, Inc.
`
`(“ICON”) filed a civil action against Applicant in the United States District Court for the District
`
`of Utah for, inter alia, trademark infringement resulting from Applicant’s commercial use of the
`
`mark “TRUFORM”, which mark is the subject of this Opposition, on exercise equipment sold by
`
`Applicant. Service of this Complaint is in process. A copy of the Summons and the Complaint
`
`filed in the civil action are attached hereto as Exhibit A.
`
`II.
`
`ARGUMENT
`
`A.
`
`Suspension of this Opposition Proceeding is Proper Where a Civil
`Action Has Been Filed and Common Issues Will Be Dispositive of the
`Present Proceeding
`
`The Board has the inherent power to stay this proceeding once it becomes aware that a
`
`civil action has been filed involving the same party or parties participating in an opposition
`
`proceedings. TB1\/[P § 510.01. Further, “[p]roceedings before the Board may be suspended until
`
`termination of the civil action.” 37 C.F.R. § 2.117; see also General Motors Corp. v. Cadillac
`
`Club Fashions, Inc., 22 U.S.P.Q.2d 1933, 1937 (TTAB 1992). “To the extent that a civil action
`
`MOTION FOR SUSPENSION PENDING
`OUTCOME OF A CIVIL ACTION AND
`MEMORANDUM IN SUPPORT THEREOF
`
`-3-
`
`

`
`TRADEMARK OPPOSITION
`File No. 13915.62
`
`in a Federal district court involves issues common with those in a proceeding before the Board,
`
`the decision of the Federal district court is binding upon the Board, which the decision of the
`
`Board is not binding upon the court.” TBMP § 510.02(a); see also Goya Foods, Inc. v.
`
`Tropicana Products, Inc., 846 F.2d 848, 6 U.S.P.Q.2d 1950, 1954 (2nd Cir. 1988). Therefore,
`
`conservation ofjudicial resources and avoidance of waste necessitate suspension of the present
`
`proceeding until termination of the civil action between the parties.
`
`Both the present proceeding and the civil action involve common issues that will be
`
`dispositive of the present proceeding before the Board. In the civil action, and as a result of
`
`Applicant’s use of the mark “TRUFORM” on exercise equipment, ICON alleges, inter alia,
`
`trademark infringement of the following registered trademarks:
`
`Registration No
`
`1,718,385
`
`PRO FORM
`
`1,346,441
`
`PRO FORM
`
`2,944 885
`
`PRO FORM with design
`
`1,525,754
`
`PRO FORM with design
`
`Goods and Services
`
`Exercising apparatus; namely, stepping
`machines, treadmills, striding machines,
`multigyms and stationary cycles.
`(International Class 28).
`
`Exercising Apparatus-Namely, Rowing
`Machines and Multipurpose Exercising
`Machines. (International Class 28);
`
`Shoes and clothing, namely, t-shirts, long
`sleeve t-shirts, tank tops, sweat shirts,
`hooded sweat shirts, jackets, hooded
`jackets, shorts, pants, long pants, Capri
`pants, sport bras, sport tops, socks, hats,
`caps, and gloves. (International Class 25);
`
`Clothing, namely shorts, pants, shirts, tops,
`sweat pants and jackets. Furniture
`(International Class 25).
`
`MOTION FOR SUSPENSION PENDING
`OUTCOME OF A CIVIL ACTION AND
`MEMORANDUM IN SUPPORT THEREOF
`
`-4-
`
`

`
`TRADEMARK OPPOSITION
`File No. 13915.62
`
`Applicant filed Trademark Application Serial No. 78/772,703 on December 13; 2005; for
`
`goods and services described as “Exercise bars; Exercise benches; Exercise machines; Exercise
`
`machines incorporating electronic and video game controllers; Exercise platforms; Exercise
`
`weights; Exercising equipment; namely; weight lifting machines; Manually-operated exercise
`
`equipment.” The marks at issue in the civil action are the exact same marks involved in this
`
`proceeding.
`
`Accordingly; both the Opposition proceeding and the civil action involve a determination
`
`of similar issues; namely whether there is a likelihood of COI1fi,1SlOI1 between ICON’s
`
`“PROFORM” marks and Applicant’s “TRUFORM” mark as used on exercise equipment.
`
`Where a party or parties to a case pending before the Board are involved in a civil action
`
`that may be dispositive of the Board case; proceedings before the Board may be suspended until
`
`the civil action is resolved. ICON IP submits that there are common issues between the civil
`
`action in a Federal district court and this Opposition proceeding before the Board. Further; the
`
`decision of the Federal district court will be binding upon the Board. Accordingly; it is proper
`
`for the Board to suspend this Opposition proceeding pending termination of the civil proceeding.
`
`B.
`
`The Board Will Ordinarily Suspend Proceedings in a Case Before the
`Board if the Final Determination of the Other Proceedings Will Have
`a Bearing on the Issues Before the Board
`
`“Ordinarily; the Board will suspend proceedings in the case before it if the final
`
`determination of the other proceeding will have a bearing on the issues before the Board.”
`
`TBMP § 510.02(a); see also Other Telephone Co. v. Connecticut National Telephone Co.; 181
`
`U.S.P.Q. 125; 127 (TTAB 1974); petition denied; 181 U.S.P.Q. 779 (Comm’r 1974). ICON
`
`seeks; inter alia; a holding of trademark infringement in the civil action. A holding that
`
`MOTION FOR SUSPENSION PENDING
`OUTCOME OF A CIVIL ACTION AND
`MEMORANDUM IN SUPPORT THEREOF
`
`-5-
`
`

`
`TRADEMARK OPPOSITION
`File No. 13915.62
`
`Applicant’s “TRUFORM” mark used on exercise equipment infringes ICON’s marks will clearly
`
`affect the final determination of these proceedings.
`
`In the civil action, the critical issue of whether there is or is not a likelihood of confusion
`
`between the same marks that are involved in the Opposition, reveals that the final determination
`
`in the civil proceeding will have a strong, if not controlling, bearing on the issues before the
`
`Board. Because the final determination of the civil proceeding will have a more than significant
`
`bearing on the issues before the Board , suspension of this Opposition proceeding is proper.
`
`III.
`
`CONCLUSION
`
`ICON IP, therefore, respectfully moves that this Opposition proceeding be suspended
`
`pending the outcome of the civil action brought by ICON, ICON IP’s parent corporation, against
`
`Applicant in the United States District Court for the District of Utah. Based on the foregoing,
`
`ICON IP respectfully submits that it is proper to suspend the present Opposition proceeding
`
`pmmmga®d§mflwflwFwaMdmhacmm.AammmgyKX»HBsMmmnflwmdm
`
`granted.
`
`/////
`
`/////
`
`MOTION FOR SUSPENSION PENDING
`OUTCOME OF A CIVIL ACTION AND
`MEMORANDUM IN SUPPORT THEREOF
`
`-6-
`
`

`
`DATED this 8th day of February, 2010.
`
`TRADEMARK OPPOSITION
`File No. 13915.62
`
`Respectfully submitted,
`
`By:
`
`/Robyn L. Phillips/
`Robyn L. Phillips, Registration No. 39,330
`
`WORKMAN | NYDEGGER
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`Telephone:
`(801) 533-9800
`Facsimile: (801)328-1707
`
`Attorney for Opposer
`ICON IP, Inc.
`
`MOTION FOR SUSPENSION PENDING
`OUTCOME OF A CIVIL ACTION AND
`MEMORANDUM IN SUPPORT THEREOF
`
`-7-
`
`

`
`TRADEMARK OPPOSITION
`File No. 13915.62
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing MOTION
`
`FOR SUSPENSION PENDING OUTCOME OF A CIVIL ACTION AND
`
`MEMORANDUM IN SUPPORT THEREOF was served on Applicant by mailing a true copy
`
`thereof to its attorney of record, by First Class Mail, postage prepaid this 8th day of February,
`
`2010, in an envelope addressed as follows:
`
`Thomas D. Foster
`
`TD FOSTER AND ASSOCIATES
`
`12760 High Bluff Drive, Suite 300
`San Diego, California 92130
`
`/Robyn L. Phillips/
`
`C:\NrP0rtbl\DMS l \JBRAITHWAITE\2704 l 32_l .DOC
`
`

`
`EXHIBIT A
`
`

`
`Case 1:10-cv-00017-TC Document 3
`
`Filed 02/08/2010
`
`3age 1 of2
`
`Q A9449 (Bey M193) gm] fijgmmgng
`
`UNITED STATES DISTRICT COURT
`for the
`
`District of Utah
`
`ICON HEALTH & FITNESS, INC.
`Plaintiff
`V.
`TRUFORM FITNESS, LLC
`Defendant
`
`)
`)
`)
`)
`)
`
`Civil Action No. 1:10-CV-00017-TC
`
`Summons in a Civil Action
`
`T02 (Defendanr ’s name and address)
`
`TRUFORM FITNESS, LLC
`c/0 Registered Agent: Jeffrey J. Jenneve
`4655 Gerona Way
`Santa Barbara, CA 93110
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it), you must serve
`on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The
`answer or motion must be served on the plaintiff’s attorney, whose name and address are:
`
`David R. Wright
`WORKMAN | NYDEGGER
`60 E. South Temple, Suite 1000
`Salt Lake City, UT 84111
`
`If you fail to do so, judgment by default will be entered against you for the relief demanded in the complaint. You also
`must file your answer or motion with the court.
`
`D. Mark Jones
`Naitic of clcrl»: of court
`
`wig;
`
`//(J.Aa}..aa41>nL-/
`
`li}t:i*iiiI}; i;lcii\".~ .«igr:;itiiiu
`
`
`
`Date: February 8, 2010
`
`(Use 60 days Ifrlze defendanr is The Unired Srares or a Unired Srares agency, or is an aflicer or employee of The Unired Srares allowed 60 days
`Rule l2(a)(3).)
`
`

`
`Case 1:10-cv-00017-TC Document 3
`
`Filed 02/08/2010
`
`3age 2 of 2
`
`A0 440 (Rev. 04/08) Civil Summons (Page 2)
`
`Proof of Service
`
`I declare under penalty of perjury thatl served the summons and complaint in this case on
`by:
`
`(I) personally delivering a copy of each to the individual at this place,
`
`(2) leaving a copy of each at the individual’s dwelling or usual place of abode with
`who resides there and is of suitable age and discretion; or
`
`(3) delivering a copy of each to an agent authorized by appointment or by law to receive it whose name is
`; or
`
`(4) returning the summons unexecuted to the court clerk on
`
`; or
`
`(5) other (specify)
`
`My fees are 33
`
`for travel and 33
`
`for services, for a total of $
`
`0-00
`
`Date:
`
`Sen/er’s signature
`
`Printed name and title
`
`Server’s address
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 1 of 12
`
`DAVID R. WRIGHT (Utah State Bar No. 5164; E-Mail: dwright@wnlaw.com)
`MARK W. FORD (Utah State Bar No. 10659; E-Mail: mford@wnlaw.com)
`JARED J. BRAITHWAITE (Utah State Bar No. 12455; E-Mail: jbraithwaite@wnlaw.com)
`WORK1\/IAN | NYDEGGER
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`Telephone: (801) 533-9800
`Facsimile: (801) 328-1707
`
`Attorneys for Plaintiff ICON HEALTH & FITNESS, INC.
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF UTAH
`
`ICON HEALTH & FITNESS, INC., a
`Delaware corporation,
`
`Civil Action No. 1:10-CV-00017-TC
`
`V.
`
`Plaintiff,
`
`COMPLAINT
`
`Jury Demanded
`
`TRUFORM FITNESS, LLC, a California
`limited liability company,
`
`Honorable Judge Tena Campbell
`
`Defendant.
`
`Plaintiff ICON HEALTH & FITNESS, INC. (“ICON” or “Plaintiff’) hereby complains
`
`against defendant TRUFORM FITNESS, LLC (“TruForm” or “Defendant”) for the causes of
`
`action alleged as follows:
`
`THE PARTIES
`
`1.
`
`ICON is a corporation duly organized and existing under the laws of the State of
`
`Delaware, with its principal place of business located at 1500 South 1000 West, Logan, Utah
`
`84321.
`
`CO1\/[PLAINT
`
`Page -1-
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 2 of 12
`
`2.
`
`ICON alleges on information and belief that defendant TruForm is a California
`
`limited liability company with its principal place of business located at 4655 Gerona Way, Santa
`
`Barbara, California 93110.
`
`JURISDICTION AND VENUE
`
`3.
`
`This is a civil action for trademark infringement under Sections 32 and 43 of the
`
`Lanham Act, Title 15 U.S.C. §§ 1114(1) and 1125.
`
`4.
`
`This is also a civil action for unfair competition arising under Utah Code Ann. §
`
`13-5a-101, et seq.
`
`5.
`
`This is also a civil action for deceptive trade practices arising under Utah Code
`
`Ann. § 13-11a-1, et seq.
`
`6.
`
`This court has original jurisdiction over the subject matter of this action pursuant
`
`to 28 U.S.C. § 1331, 28 U.S.C. § 1338(a), and 15 U.S.C. § 1121. This Court has related claim
`
`jurisdiction over state law claims pursuant to 28 U.S.C. § 1338(b) and 28 U.S.C. § 1367.
`
`7.
`
`This is also an action in which the matter in controversy exceeds the sum or value
`
`of $75,000.00 exclusive of interest and costs, and is between a citizen of the State of Utah and,
`
`upon information and belief, a citizen of the State of California. Accordingly, this Court also has
`
`jurisdiction over the subject matter of this action pursuant to 28 U.S.C. § 1332(a)(1).
`
`8.
`
`ICON further alleges on information and belief that TruForm has sold or
`
`contracted for the sale of infringing goods within the State of Utah, to ICON’s injury, which
`
`relates to the claims asserted by ICON, and out of which ICON’s claims, in part, arise.
`
`CO1\/[PLAINT
`
`Page -2-
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 3 of 12
`
`9.
`
`On information and belief, TruForm has also advertised in fitness industry
`
`publications distributed nationally from 2006 through 2009, in addition to distributing product
`
`brochures nationally.
`
`10.
`
`This Court’s exercise of personal jurisdiction over TruForm is consistent with the
`
`Constitutions of the United States and the State of Utah. Moreover, this Court has personal
`
`jurisdiction over TruForm at least pursuant to Utah Code Ann. § 13-11a-4(2), inasmuch as
`
`TruForm has conducted business within the State of Utah and has committed acts of trademark
`
`infringement and unfair competition, as alleged herein, within the State of Utah.
`
`11.
`
`Venue is proper in this judicial district pursuant to, at least, 28 U.S.C. §§
`
`1391(b)(2), 1391(b)(3), and 1391(c).
`
`FACTUAL BACKGROUND
`
`12.
`
`ICON is an award-winning innovator in the field of exercise equipment and
`
`markets and sells a variety of consumer products.
`
`13.
`
`ICON came to its position of technological leadership through hard work and
`
`substantial investment in research and development. As a result of its endeavors, many of the
`
`technological innovations created and owned by ICON are protected by a valuable and diverse
`
`intellectual property portfolio that includes patents, trademarks, trade dress, and copyrights.
`
`14.
`
`Several of ICON’s successful innovations have been in the design and
`
`development of treadmills, elliptical machines, exercise bikes, weight benches, and other
`
`strength training equipment, which ICON markets under the trademark “PRO FORM.”
`
`15.
`
`ICON owns several federally registered trademarks on the mark “PRO FORM”
`
`including: United States Trademark Registration No. 1,346,441 (“’441 Registration”), a true and
`
`CO1\/[PLAINT
`
`Page -3-
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 4 of 12
`
`correct copy of the Trademark Electronic Search System (“TESS”) record for the ’441
`
`Registration is attached hereto as Exhibit “A” and is incorporated herein by reference; United
`
`States Trademark Registration No. 1,525,754 (“’7 54 Registration”), a true and correct copy of
`
`the TESS record for the ’754 Registration is attached hereto as Exhibit “B” and is incorporated
`
`herein by reference; United States Trademark Registration No. 1,718,385 (“’385 Registration”),
`
`a true and correct copy of the TESS record for the ’385 Registration is attached hereto as Exhibit
`
`“C” and is incorporated herein by reference; and United States Trademark Registration No.
`
`2,944,885 (“’885 Registration”), a true and correct copy of the TESS record for the ’885
`
`Registration is attached hereto as Exhibit “D” and is incorporated herein by reference. These
`
`trademarks are hereafter referred to collectively as the “PRO FORM Trademarks.”
`
`16.
`
`ICON’s ’441 Registration, ’754 Registration, and ’385 Registration are
`
`incontestable marks.
`
`17.
`
`ICON has developed recognition and goodwill for the products sold under the
`
`PRO FORM Trademarks, among both ICON’s immediate customers and the consuming public,
`
`generally.
`
`18.
`
`As a result of, inter alia, ICON’s substantial investment in the PRO FORM
`
`Trademarks and the products marketed under those trademarks, the consuming public recognizes
`
`ICON’s PRO FORM Trademarks and associates products with those marks with a single source,
`
`namely ICON.
`
`19.
`
`On information and belief, TruForm makes, sales, and markets its products under
`
`the trade name TRUFORM.
`
`COMPLAINT
`
`Page -4-
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 5 of 12
`
`20.
`
`On information and belief, TruForm sells and offers for sale within the United
`
`States exercise equipment that competes with ICON, including free-weight bars designated as,
`
`inter alia, the TruForm IsoBar, TruForm IsoBar Lite, TruForm IsoCurl, TruForm IsoPuller, and
`
`TruForm IsoPuller2 (collectively “the TruForm IsoBars”).
`
`21.
`
`Upon information and belief, TruForm has sold TruForm branded exercise
`
`products throughout the United States including within Utah.
`
`22.
`
`On information and belief, TruForm has also advertised the TruForm IsoBars in
`
`fitness industry publications distributed nationally from 2006 through 2009, in addition to
`
`distributing product brochures nationally.
`
`23.
`
`The TRUFORM mark is confusingly similar to ICON’s PRO FORM Trademarks.
`
`24.
`
`Upon information and belief, TruForm and its principals were and are fiilly aware
`
`of ICON’s rights in the PRO FORM Trademarks.
`
`25.
`
`Upon information and belief, TruForm has been aware of ICON since 2004.
`
`26.
`
`Upon information and belief, TruForm has been aware of ICON’s PRO FORM
`
`mark since at least September, 2005.
`
`27.
`
`Upon information and belief, in September, 2005, TruForm first used or solidified
`
`its intent to use the TRUFORM mark.
`
`28.
`
`On December 13, 2005, TruForm applied for registration of the TRUFORM mark
`
`with the United States Patent and Trademark Office for goods and services in classes IC 028; US
`
`022; US 023; US 03 8; and US 050 for goods and services described by TruForm as “Exercise
`
`bars; Exercise benches; Exercise machines; Exercise machines incorporating electronic and
`
`COMPLAINT
`
`Page -5-
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 6 of 12
`
`video game controllers; Exercise platforms; Exercise weights; Exercising equipment, namely;
`
`weight lifting machines; Manually-operated exercise equipment.”
`
`29.
`
`ICON IP INC. is presently opposing the registration of the TRUFORM mark
`
`before the Trademark Trial and Appeal Board on the basis that the TRUFORM mark is
`
`confiisingly similar to the PRO FORM Trademarks. A true and correct copy of the TESS record
`
`for the TRUFORM mark application is attached hereto as Exhibit “E” and is incorporated herein
`
`by reference.
`
`30.
`
`TruForm uses the TRUFORM trade name in connection with the sale; offering for
`
`sale; distribution; or advertising of; inter alia; the TruForm IsoBars. Attached hereto as Exhibit
`
`“F”; and incorporated herein by reference; are true and correct copies of print-outs from the
`
`TruForm webpage for the TruForm IsoBars; depicting the use of the TRUFORM trade name;
`
`which is confusingly similar to the PRO FORM Trademarks.
`
`31.
`
`TruForm’s use of the TRUFORM trade name in its product promotion and
`
`advertising constitutes use in commerce of a colorable imitation of the PRO FORM Trademarks.
`
`32.
`
`Upon information and belief; the TRUFORM mark and the PRO FORM
`
`Trademarks share similar sight and sound characteristics as well as a similarity of meaning.
`
`TruForm’s use of TRUFORM in connection with exercise equipment is deceptively and
`
`confiisingly similar the PRO FORM Trademarks that ICON uses to market its cardio and
`
`strength exercise equipment.
`
`33.
`
`Upon information and belief; TruForm offers exercise equipment marked with the
`
`TRUFORM trade name that have been, and will continue to be; distributed and sold in the same
`
`COMPLAINT
`
`Page -6-
`
`

`
`Case 1:10-cv-OOOt7-TC Document 2
`
`Filed 02/08/2010
`
`3age 7 of 12
`
`types of retail channels and to the same classes of purchasers as ICON’s exercise equipment sold
`
`under the PRO FORM Trademarks.
`
`34.
`
`TruForm’s use of the TRUFORM trade name is likely to cause COI1fi,1SlOI1,
`
`mistake, or deception in the minds of the public as to the source of TruForm’s products and/or
`
`TruForm’s affiliation with ICON.
`
`35.
`
`TruForm’s trademark infringement constitutes a willful violation of ICON’s
`
`trademark rights, aimed at preventing ICON from continuing to build a business around its
`
`distinctive PRO FORM Trademarks and the goodwill associated with the PRO FORM
`
`Trademarks.
`
`FIRST CAUSE OF ACTION
`
`(Federal Trademark Infringement)
`
`36.
`
`By this reference ICON realleges and incorporates the foregoing paragraphs 1
`
`through 35, as though fiilly set forth herein.
`
`37.
`
`TruForm’s use of the TRUFORM trade name is likely to cause COI1fi,1SlOI1, mistake
`
`or deception as to the source, origin, affiliation, connection, or association of TruForm’s
`
`products with ICON, or as to the approval of TruForm’s products by ICON, and thus constitutes
`
`infringement of ICON’s ’441 Registration, ’754 Registration, ’385 Registration, and ’885
`
`Registration, in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`38.
`
`Upon information and belief, TruForm’s infringement of the PROFORM
`
`Trademarks has taken place with full knowledge of ICON’s marks, including ICON’s
`
`incontestable marks, and, therefore, has been intentional, deliberate and willful.
`
`39.
`
`TruForm’s violation of 15 U.S.C. § 1114 has caused ICON to suffer damages and
`
`irreparable harm.
`
`COMPLAINT
`
`Page -7-
`
`

`
`Case 1:10-cv-OOOt7-TC Document 2
`
`Filed 02/08/2010
`
`3age 8 of 12
`
`40.
`
`By reason of the foregoing, ICON is entitled to monetary and injunctive relief
`
`pursuant to 15 U.S.C. §§ 1116—1118, as more fiilly set forth hereinbelow.
`
`(Federal Trademark Infringement, False Designation and Unfair Competition)
`
`SECOND CAUSE OF ACTION
`
`41.
`
`By this reference ICON realleges and incorporates the foregoing paragraphs 1
`
`through 40, as though fiilly set forth herein.
`
`42.
`
`TruForm’s use of the TRUFORM trade name is likely to cause COI1fi,1SlOI1,
`
`mistake, or deception as to the source, origin, affiliation, connection or association of TruForm
`
`products with ICON, or as to the approval of TruForm’s products by ICON, and thus constitutes
`
`trademark infringement, false designation of origin, and unfair competition with respect to the
`
`PROFORM Trademarks in Violation of Section 43 (a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`43.
`
`TruForm’s actions have taken place with full knowledge of the PROFORM
`
`Trademarks and therefore have been intentional, deliberate and willful.
`
`44.
`
`TruForm’s Violation of 15 U.S.C. § 1125(a) has caused ICON to suffer damages
`
`and irreparable harm.
`
`45.
`
`By reason of the foregoing, ICON is entitled to monetary and injunctive relief
`
`pursuant to 15 U.S.C. §§ 1116-1118, as more fiilly set forth hereinbelow.
`
`THIRD CAUSE OF ACTION
`
`(State Law Trademark Infringement and Unfair Competition)
`
`46.
`
`By this reference ICON realleges and incorporates the forgoing paragraphs 1
`
`through 45, as though fiilly set forth herein.
`
`47.
`
`TruForm, by its actions set forth hereinabove, has engaged in intentional business
`
`acts or practices that are unlawful, unfair, and/or fraudulent and that have caused a material
`
`CO1\/[PLAINT
`
`Page -8-
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 9 of 12
`
`diminution in the value of the trademarks, trade names, and other intellectual property held by
`
`ICON, in violation of, inter alia, Utah Code Ann. § 13-5a-102(4).
`
`48.
`
`TruForm’s conduct as set forth hereinabove gives rise to a cause of action for
`
`deceptive trade practices and related wrongs under the statutory and common law of the State of
`
`Utah and other states, including at least Utah Code Ann. § 13-l la-1, et seq.
`
`49.
`
`By reason of the foregoing, ICON has suffered damages and irreparable harm.
`
`50.
`
`By reason of the foregoing, ICON is entitled to actual and punitive damages from
`
`Solo Sports, along with its attorneys’ fees and costs pursuant to at least Utah Code Ann. § 13-5a-
`
`lO3(l)(b) as more fully set forth hereinbelow.
`
`FOURTH CAUSE OF ACTION
`
`(State Law Deceptive Trade Practices)
`
`51.
`
`By this reference ICON realleges and incorporates the foregoing paragraphs 1
`
`through 50, as though fiilly set forth herein.
`
`52.
`
`TruForm, by its actions as set forth hereinabove, has caused, causes, and will
`
`continue to cause a likelihood of COI1fi,1Sl0I1 or of misunderstanding as to the source, sponsorship,
`
`approval, or certification of its TruForm products, including but not limited to, the TruForm
`
`IsoBars; has caused, causes, and will continue to cause a likelihood of COI1fi,1SlOI1 or
`
`misunderstanding as to the affiliation, connection, association with, or certification by another of
`
`its TruForm products, including but not limited to, the TruForm IsoBars; represented, represents,
`
`and will continue to represent that goods or services have sponsorship, approval, characteristics,
`
`ingredients, uses, benefits, or qualities that they do not have, including its TruForm products,
`
`including but not limited to, the TruForm IsoBars; and has thereby engaged in deceptive trade
`
`practices, pursuant to, inter alia, Utah Code Ann. §§ 13-l la-3(l)(b), (c), and (e).
`
`COMPLAINT
`
`Page -9-
`
`

`
`Case t:tO-cv-OOOt7-TC Document 2
`
`Filed 02/08/2010
`
`3age 10 of 12
`
`53.
`
`TruForm’s conduct as set forth hereinabove gives rise to a cause of action for
`
`deceptive trade practices and related wrongs under the statutory and common law of the State of
`
`Utah and other states, including at least Utah Code Ann. § 13-11a-1, et seq.
`
`54.
`
`On information and belief, TruForm has engaged in deceptive trade practices
`
`against ICON in willful and deliberate disregard of the rights of ICON and the consuming public.
`
`55.
`
`By reason of TruForm’s acts of deceptive trade practices, ICON has suffered
`
`damages and irreparable harm.
`
`56.
`
`By reason of the foregoing, ICON is entitled to injunctive and monetary relief
`
`against TruForm, along with its attorneys’ fees and costs, pursuant to at least Utah Code Ann. §§
`
`13-11a-4(2)(a), (b), and (c), as more fiilly set forth hereinbelow.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, ICON prays for judgment as follows:
`
`A.
`
`An order of this Court temporarily, preliminarily, and permanently enjoining
`
`TruForm, its principals, agents, and servants, and any and all parties acting in concert with any of
`
`them, from directly or indirectly infringing in any manner ICON’s ’441 Registration, ’754
`
`Registration, ’385 Registration, and ’885 Registration, in connection with TruForm products or
`
`otherwise, pursuant to at least Section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a);
`
`B.
`
`An order of this Court permanently enjoining TruForm, its agents and servants,
`
`and any and all parties acting in concert with any of them, from engaging in deceptive trade
`
`practices, pursuant to at least Section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a), and Utah
`
`Code Ann. § 13-11a-4(2)(a);
`
`COMPLAINT
`
`Page -10-
`
`

`
`Case 1:10-cv-00017-TC Document 2
`
`Filed 02/08/2010
`
`3age 11 of 12
`
`C.
`
`An order of this Court permanently enjoining TruForm, its agents and servants,
`
`and any and all parties acting in concert with any of them, from producing, manufacturing,
`
`marketing, advertising, promoting, offering for sale, selling, or distributing its TruForm products,
`
`including the TruForm IsoBars pursuant to at least Section 34(a) of the Lanham Act, 15 U.S.C. §
`
`1116(a) and Utah Code Ann. § 13-11a-4(2)(a);
`
`D.
`
`An order of this Court directing TruForm to destroy its entire stock of TruForm
`
`products, together with all labels, signs, prints, packages, wrappers, receptacles, and
`
`advertisements, as well as all plates, molds, matrices, or other means of making the same
`
`pursuant to at least Section 36 of the Lanham Act, 15 U.S.C. § 1118;
`
`E.
`
`An award of TruForm’s profits, in an amount to be proven at trial, pursuant to at
`
`least Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a);
`
`F.
`
`An award of treble ICON’s damages, pursuant to at least Section 35(a) of the
`
`Lanham Act, 15 U.S.C. § 1117(a);
`
`G.
`
`An award of three times TruForm’s profits or ICON’s damages, whichever is
`
`greater, pursuant to at least Section 35(b) of the Lanham Act, 15 U.S.C. § 1117(b);
`
`H.
`
`An award of actual and punitive damages pursuant to Utah Code Ann. § 13-5a-
`
`103(b);
`
`I.
`
`An award of ICON’s damages and TruForm’s profits, in an amount to be proven
`
`at trial, pursuant to applicable state statutory and common law, including at least the greater of
`
`ICON’s actual damages and $2,000, pursuant to Utah Code Ann. § 13-11a-4(2)(b);
`
`COMPLAINT
`
`Page -11-
`
`

`
`Case 1:10-cv-OOO17-TC Document 2
`
`Filed 02/08/2010
`
`3age 12 of 12
`
`J.
`
`An award of ICON’s costs in bringing this action, pursuant to at least Section
`
`35(a) of the Lanham Act, 15 U.S.C. § 1117(a); and applicable state statutory and common law,
`
`including at least Utah Code Ann. §§ 13-5a-103(1)(b)(ii) and 13-11a-4(2)(c);
`
`K.
`
`An award of ICON’s attorneys’ fees, pursuant to Sections 35(a) and (b) of the
`
`Lanham Act, 15 U.S.C. § 1117(a); and applicable state statutory and common law, including at
`
`least Utah Code Ann. §§ 13-5a-103(1)(b)(ii) and 13-11a-4(2)(c);
`
`L.
`
`An imposition of constructive trust on, and an order requiring a full accounting of,
`
`the sales made by TruForm as a result of its wrongful or infringing acts alleged herein;
`
`M.
`
`Prejudgment interest, pursuant to at least Section 35(b) of the Lanham Act, 15
`
`U.S.C.§1117(b);
`
`N.
`
`O.
`
`Post-judgment interest, pursuant to at least 28 U.S.C. § 1961(a); and
`
`For such other and fiirther relief as the Court deems just and equitable.
`
`DEMAND FOR JURY TRIAL
`
`ICON demands trial by jury on all claims and issues so triable.
`
`DATED February 8, 2010.
`
`WORKMAN | NYDEGGER
`
`By:
`
`/s/ Mark W. Ford
`David R. Wright
`Mark W. Ford
`
`Jared J. Braithwaite
`
`Attorneys for Plaintiff
`ICON HEALTH & FITNESS, INC.
`
`COMPLAINT
`
`Page -12-
`
`

`
`Case 1:10-cv-00017-TC
`
`Document 2-2
`
`Filed 02/08/2010
`
`3age 1 of 2
`
`EXHIBIT A
`
`

`
`Case 1:10-cv-00017-TC
`
`Document 2-2
`
`Filed 02/08/2010
`
`Page 2 of 2
`
`United States Patent and Trademark Office
`
` Home I Site Index I Search I FAQ I Glossary I Guides I Contacts I eBusiness I eBiz alerts] News I Help
`
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