Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA149090
`ESTTA Tracking number:
`07/03/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177744
`Defendant
`Vonage Marketing Inc.
`Vonage Marketing Inc.
`D2-A161, 23 Main Street
`Holmdel, NJ 07733
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`ALAN KALB
`23 MAIN ST
`VONAGE
`HOLMDEL, NJ 07733-2136
`UNITED STATES
`Motion to Suspend for Civil Action
`Gregory P. Gulia
`gpgulia@duanemorris.com, cskim@duanemorris.com,
`ewmccormick@duanemorris.com
`/Gregory P. Gulia/
`07/03/2007
`KMEDIAVONAGE91177744.pdf ( 29 pages )(2302803 bytes )
`
`

`
`IN THEUNITED STATES PATENT AND TRADEMARK OIFOFICE.
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`'
`
`.....................................................................--X
`
`In the Matter of Application
`Serial No. 78/870,791
`Published: May 15, 2007
`
`KMEDIA, INC.
`
`'
`
`Opposition No. 91,177,744
`
`_
`
`v.
`
`Opposer,
`
`VONAGE MARKETING, INC.
`
`............................................
`
`Applicant.
`
`MOTION TO SUSPEND PENDING I
`
`CIVIL PROCEEDING UNDER 37 C.F.R. § 2.1 171a)
`
`I’ursuant to 37 C.F.R. § 2.1 17(a) and TEMP i§ 5l0.02(a),vAppli'cant, Vonage Marketing,
`
`Inc.,' herebyrequests suspension of the above-captioned opposition proceeding pending the
`
`outcome of a potentially dispositive civil action between the parties. The civil action involves
`common issues that will have a bearing on the issues in the opposition proceeding before the I
`
`Board.
`
`On April ll, 2007, Opposer filed a complaint for federal unfair competition and false
`
`designation of origin or sponsorship, state trademark infringement and state unfair competition‘
`
`against Applicant in the United States District Court for the Southern District of Florida, Miami
`
`Division (Civil Action No. 07-2095 8-CIV-KING) (the “Civil Action”), seeking injunctive relief
`
`and monetary damages arising out of App1icant’s V and dot design that is included in the
`
`application at issue in this proceeding. A true and correct copy of the Complaint is annexed
`
`

`
`hereto as Exhibit A. On May 14, 2007, Applicant filed its Answer and Counterclaim. A true and
`
`correct copy of the Answer and Counterclaim is annexed hereto as Exhibit B.
`
`Accordingly, Applicant respectfully moves the Board to suspend this opposition
`
`proceeding pending the District Court’s final disposition of the Civil Action between Applicant
`
`and Opposer. If the Civil Action is concluded without a settlement or judgment that resolves the
`
`issues raised in this opposition proceeding, Applicant will promptly notify the Board.
`
`Dated: New York, New York
`
`July 3, 2007
`
`A
`I hereby certify that this paper being transmitted
`by electronic mail to the United States Patent and Trademark Office
`Trademark Trial and Appeal Board on the date shown below.
`/Inez P. Vega / A
`'
`—
`Inez P_ Vega
`
`Dated: July 3, 2007
`
`DUANE MORRIS LLP
`
`A
`
`DUANE MORRIS
`/\
`
`P
`,/
`
`By_
`
`‘
`
`»
`
`Grfggory P‘ G1.lHa_
`Eric W. McCormick
`Christina S. Kim
`
`1540 Broadway
`New York, NY 10036-4086
`(212) 692-1000
`
`Attorneys for Applicant
`
`

`
`CERTIFICATE OF SERVICE
`
`I I hereby certify that I caused a true and correct copy of the foregoing Motion To Suspend
`Pending Civil Proceeding Under 37 C.F.R. § 2.117(A) to be served upon Opposer's counsel by
`first class mail postage pre-paid this 3rd day of July, 2007 to:
`
`Mark Cantor, Esq.
`Brooks Kushman PC
`1000 Town Center, 22”’ Floor
`Southfield, Michigan 48075
`
` Inez P. Vega
`
`DM1\1149979.1
`
`

`
`A EXHIBIT A
`
`

`
`Case 1:O7—cv-20958-JLK. Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 1 of 14
`
`UNITEDISTATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO: G g’
`‘“
`
`-an
`
`«J
`"-ii".
`
`_ G
`‘
`MAGISTRATE JUDGE
`GARBER
`
`KMEDIA, INC.
`d/b/a }éIVoPHo1§:E,
`aFlor1 aCorporat1on
`
`Plaintiff,
`
`vs.
`
`VONAGE AMERICA INC.,
`a.Delaware Corporation, and
`VONAGE MARKETING INC.,
`aDe1aware Corporation,
`.
`
`.
`
`V
`
`_
`
`_
`
`0;:
`_m,'T3,~.
`?i.' gg,/~;\
`'4-t~"—
`"_1:.E_,,:-.
`
`_
`
`3
`
`'
`
`'3?
`Defendants.
`
`3:7‘?
`co
`-
`
`COMPLAINT AND JURY DEMAND
`
`.
`
`:»< D p
`
`-
`
`I. THE PARTIES
`
`1.
`
`Kmedia, Inc. d/b/a VivoPhone (“VivoPhone”) is a Florida corporation,
`
`having its principal place of business at 10435 NW 29th Terrace, Bay #2, Miami, Florida
`
`33172.
`
`'
`
`2.
`
`Defendant Vonage America Inc. is a Delaware Corporation having a
`
`principal place of business at 23 Main Street, Holmdel, New Jersey 07733.
`
`

`
`Case 1:O7—cv—20958—JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 2 of 14
`
`3.
`
`Defendant Vonage Holdings Inc. is a Delaware Corporation having a
`
`principal place of business at 23 Main Street, Holmdel, New Jersey 07733.
`
`4.
`
`Defendants Vonage America Inc. and Vonage, Holdings Inc. (collectively
`
`“Vonage” or “defendants”) transact business in the State ofFlorida and continue to do so on a
`
`systematic basis, and are amenable to both general and specific personal jurisdiction in this
`judicial district.
`A
`
`II. JURISDICTION
`
`5.
`
`6.
`
`The federal claim pleaded herein arises under 15 U.S.C. § 1125.
`
`‘Subject matterjurisdiction for the federal claims is conferred upon the
`
`Court by 15 U.S.C. § 1121 and 28 U.S.C. § l338(a).
`
`7.
`
`The state law claims pleaded herein arise under the laws ofthe States of
`
`Florida and California.
`
`8.
`
`Subject matterjurisdiction for the state law claims is conferred upon the
`
`Court by 28 U.S.C. § l33'8(b) (claim ofunfair competition»joined with a substantial and related
`
`claim under the trademark laws), and 28 U.S.C. § 1367 (supplemental jurisdiction).
`
`III. BACKGROUND FACTS
`
`9.
`
`VivoPhone is an Internet connect network calling company which sells’
`
`its products and services under the trademark “VivoPhone.”
`
`

`
`Case 1:07-cv-20958—JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 3 of414
`
`A.
`
`VivoPhone’s Asserted Trademark Rights
`
`10.
`
`Since at least early 2004, VivoPhone has continuously used a mark
`
`consisting of a “V” with a dot in the center of the “V” (“the V mar ”), as illustrated below,
`
`throughout the United States in association with its Internet telephone products and services.
`
`Exhibit A includes a copy of VivoPhone’s mark as shown on its web site in June 2004.
`
` vvvo 3"
`
`pl-name
`
`1 1.
`
`By virtue of having used and continuing to use the V Mark, Vivol’hone
`
`has acquired common law rights in that mark.
`
`B.
`
`Defendants’ Unauthorized Use
`of VivoPhone’s Mark
`
`12. V Subsequent to VivoPhone’s use ofthe V Mark and with actual knowledge
`
`of VivoPhone’s use of the V Mark, and with the intent to misrepresent the source of -
`
`Defendants’ products and services, Defendants copied, adopted and are using the V Mark in
`
`connection with the advertising, offering for sale and sale of their Internet telephone products
`
`a and services throughout the United States including, but not limited to, the States ofFlorida and
`
`California, and in this District.
`
`13.
`
`The Defendants have also used the V Mark set forth above on their web
`
`site, on their products and in advertising. Defendants’ web site, www.vonage.corn, is illustrated .—
`
`by screen shot below.
`
`

`
`Case 1:07—cv-20958-JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 4 of 14.
`
`-nu-u...--...-p
`
`
`
`onu-
`
`Vonage Web Site — February 5, 2007
`Defendants have no consent, license, approval or other authorization. to
`
`14.
`
`usethe V Mark on or in connection with their products, services, advertising or web site.
`
`'
`
`15.
`
`Defendants’ use of the V Mark as alleged in the foregoing paragraphs
`
`clearly shows the willful intent of the defendants to misrepresent the source of defendants’
`
`goods or services so as to cause confusion, mistake or to deceive as to Defendants’ connection
`
`or association with VivoPhone.
`
`IV. COUNT I I
`7
`UNFAIR COMPETITION AND FALSE DESIGNATION
`OF ORIGIN OR SPONSORSHIP UNDER 15 U.S.C. § 1l25§a)
`
`16.
`
`17.
`
`The allegations ofparagraphs 1- 1 5 are incorporated herein by reference.
`
`VivoPhone acquired rights in the V Mark in association with its Internet
`
`telephone service and products prior to Defendants’ use of the same.
`
`I
`
`148.
`
`Defendants’ unauthorized use of its confusingly similar mark, has a
`
`substantial effect on interstate commerce, and constitutes false advertising, false designation of t
`
`

`
`Case 1:07-cv-20958-JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 5 of 14
`
`origin, and false description and/or representation of fact that is likely to cause confusion
`
`concerning the affiliation, connection or association of VivoPhone and Defendants, and/or
`
`concerning VivoPhone’s sponsorship or approval ofDefendants’ products and services, and/or
`
`concerning Defendants’ commercial activities concerning Defendants’ products.
`
`19.
`Defendants’ unlawful use of the V mark ’ in interstate commerce
`constitutes a violation of Section 43(a) ofthe Lanham Act. .
`
`20. Defendants’ use of the V Mark has caused confusion and mistake and is
`
`likely to continue to cause confusion and mistake, and to deceive the public into believing that
`
`Defendants and their products are associated with and/or authorized by VivoPhone.
`
`21,
`
`Upon information and belief, Defendants, in engaging in the conduct
`
`described herein, willfully intended to trade on the reputation ofVivoPhone and/or the V mark,
`and to cause’ injury to VivoPhone.
`I
`D
`
`22.
`
`As a direct and proximate result ofDefendants”unlawful acts as set forth
`
`above, including the unauthorized use ofthe V Mark, VivoPhone has suffered and will continue
`
`to suffer injury to its business, goodwill, and property.
`
`23.
`
`VivoPhone is entitled, pursuant to 15 U.S,C. § 1117, to recover from
`
`Defendants the damages it has sustained and will sustain as a result of Defendants’ wrongful
`conduct as alleged herein. VivoPhone is further entitled to recover from Defendants the gains,
`profits and advantages that Defendants have obtained as a result of the wrongful conduct
`
`alleged herein. VivoPhone, atpresent, is unable to ascertain the full extent of its damages, or the
`
`gains, profits, and advantages that Defendants have obtained by reason ofthe wrongful conduct
`
`described herein.
`
`

`
`Case 1:07-cv~20958-JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 6 of 14
`
`24.
`
`VivoPhone is-entitled, pursuant to 15 U.S.C. § 1116, to an injunction _
`
`restraining Defendants, their officers, agents and employees, and all persons acting in concert
`
`with it, from engaging in any further suchacts ofinfringement in violation ofthe Lanharn Act.
`
`25.
`
`VivoPhone has no adequate remedy at law. Unless Defendants are
`
`preliminarily and permanently enjoined from committing these unlawful acts as set forth above,
`
`including the unauthorized use ofthe V Mark in commerce, VivoPhone will continue to suffer
`
`irreparable harm.
`
`V. COUNT II
`FLORIDA COMMON LAW
`
`TRADEMARK INFRINGEMENT
`
`26.
`
`27.
`
`The allegations ofparagraphs 1-25 are incorporated herein by reference.
`
`By virtue ofhaving used and continuing to use the Mark, VivoPhone V
`
`has acquired common law rights in that mark.
`
`28.‘
`
`Defendants’ use in commerce of marks identical and/or confusingly V
`
`similar to VivoPhone’s trademark infringes VivoPhone's common law rights in its trademark,
`
`and this use is likely to cause confusion, mistake, or deception among consumers, who will
`
`believe that Defendants’ products and services originate from, or are affiliated with, or endorsed
`
`by VivoPhone when, in fact, they are not.
`
`V 29.
`As a direct and proximate result of Defendants’
`infringement of
`VivoPhone's common law trademark rights under Florida and -other common law, Vivol’hone
`has suffered, and will continue to suffer, monetary damages and irreparable injury to its
`
`business, reputation, and goodwill.
`
`

`
`Case 1:O7—cv-20958—JLK Document 1
`
`Entered on FLSD Docket O4/1.1/2007
`
`Page 7 of 14 ‘
`
`VI. COUNT III
`
`FLORIDA COMMON LAW
`
`UNFAIR COMPETITION ‘
`
`30.
`
`The allegations ofparagraphs 1-29 are incorporated herein by reference.
`
`31.
`
`O VivoPhone has developed consumer recognition in the V Mark within
`
`this State.
`
`32.
`
`I
`
`The V Mark, held by VivoPhone, is arbitrary; however, it has also
`
`acquired secondary meaning.
`
`’
`
`I
`
`33.
`
`Defendants’ use of the V Mark constitutes a use in commerce without
`
`VivoPhone's approval.
`
`34.
`
`Defendants’ use ofthe V Mark has caused confusion and mistake and is
`
`likely to continue to cause confusion and mistake, and to deceive the public into believing that
`
`Defendants and their products are associated with and/or authorized by VivoPhone.
`
`35.
`
`Defendants’ use of the V Mark has caused, and is likely to continue to
`
`cause, consumer confusion as to the source or sponsorship of the Defendants’ goods.
`
`36.
`
`Upon information and belief, Defendants have committed these acts with
`
`the intent to cause confusion and mistake and to deceive the public into believing that
`
`Defendants’ products are associated with and/or authorized by Vi\}oPhone.
`3.7.
`Defendantslunlawful use ofthe V Mark constitutes unfair competition.
`
`3 8.
`
`As a direct and proximate result ofDefendants’ unlawful acts as set forth
`
`above, including the unauthorized use ofthe V Mark, VivoPhone has suffered and will continue
`
`to suffer injury to its business, goodwill, and property.
`
`

`
`Case 1:07-cv-20958-JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 8 of 14 '
`
`39.
`
`VivoPhone is entitled -to recover from Defendants the damages it has
`
`sustained and will sustain as a result of Defendants’ wrongfitl conduct as alleged herein.
`VivoPhone is further entitled to recover from Defendants the gains, profits and advantages that
`
`Defendants have obtained as a result of the wrongful conduct alleged herein.’ VivoPhone, at
`
`present, is unable to ascertain the full extent ofits damages, or the gains, profits, and advantages
`
`I
`
`that Defendants have obtained by reason of the wrongful conduct described herein. _
`
`40.
`
`VivoPhone is entitled to an injunction restraining Defendants, their
`
`officers, agents and employees, and all persons acting in concert with it, from engaging in any
`
`further such acts.
`
`4l_i
`
`VivoPhone has no adequate remedy of law. Unless Defendants are
`
`preliminarily and permanently enjoined from committing these unlawful acts as set forth above,
`
`including the unauthorized use of the V Mark in commerce, VivoPhone will continue to suffer
`
`irreparable harm.
`
`VII. ‘DEMAND Fol; RELIEF
`
`WHEREFORE, VivoPhone demands entry ofajudgment granting reliefagainst
`
`the Defendants as follows:
`A.
`determination that the Defendants have violated 15 U.S.C. § 1 l25(a),
`
`that VivoPhone has been damaged by such violations, and that the ‘Defendants are liable to
`
`VivoPhone for such violations;
`
`B.
`
`A determination that the Defendants have committed common law
`
`trademark infringement, that VivoPhone has been damaged by such infringement, and that
`
`Defendants are liable to VivoPhone for common law trademark infringement;
`
`-8-
`
`

`
`Case 1:O7—cv—20958—JLK Document 1. Entered on FLSD Docket 04/11/2007
`
`Page 9 of 14
`
`C.
`
`A determination that the Defendants are liable for common law unfair
`
`' competition, that VivoPhone has been damaged by such unfair competition, and that Defendants
`
`are liable to VivoPhone for common law unfair competition;
`
`D.
`
`A determination that this case is “exceptional,” in the sense of 15 U.S,C.
`
`§ ll17(a);
`
`E.
`
`Under all claims for relief, that injunction be temporarily, preliminarily,
`
`and permanently issued enjoining Defendants, their employees, agents, successors and assigns,
`
`and all those in active concert and participation with it, and each ofthem who" receives notice
`
`directly or otherwise of such injunctions, from:
`
`(1)
`
`imitating, copying, or making any unauthorized use of the V
`
`Mark;
`
`(2)
`
`importing, manufacturing, producing, distributing, circulating,
`
`selling, offering for sale, advertising, promoting or displaying any service or product '
`
`using any simulation, reproduction, counterfeit, copy, or colorable imitation of the V
`
`' Mark;
`
`(3)
`
`using any simulation, reproduction, counterfeit, copy or colorable
`
`imitation ofthe V Mark in connection with the promotion, advertisement, display, sale,
`
`offer for sale, manufacture, production, circulation or distribution of any product or
`
`service;
`
`(4)
`
`using any false designation of origin or false description or
`
`performing any act, which can, or is likely to, lead members of the trade or public to
`
`believe that any service or product manufactured, distributed or sold by Defendants are
`
`-9-
`
`

`
`Case 1:07-c\'/—20958—.JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 10 of 14 V
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`in any manner associated or connected with VivoPhone, or the V Mark, or is sold,
`
`manufactured, licensed, sponsored, approved or authorized by VivoPhone.
`
`'
`
`F.
`
`For an order directing defendants to create corrective advertising so that
`
`,
`
`consumers are not confused between the source of products and services provided by
`
`VivoPhone and defendants.
`
`G.
`
`I For an order directing such other relief as the Court may deem.
`
`appropriate to prevent the trade and public from deriving the erroneous impression that any
`
`service or product manufactured, sold or otherwise circulated or promoted by Defendants is
`
`authorized by VivoPhone or related in any way to VivoPhone’s products and services;
`
`H.
`
`For an Order directing the Defendants and their agents, employees,
`
`servants, attorneys, successors, and assigns, and all others in privity or acting in concert
`
`therewith, to file with this Court, and serve upon VivoPhone’s counsel within thirty (30) days
`
`after entry of such judgment, :1 written report under oath, setting forth in detail the manner and
`
`form in which they have complied with such judgment;
`
`I.
`
`For an award of VivoPhone’s costs and disbursements incurred in this
`
`action, including ViVoPhone’s reasonable attorney’s fees;
`
`"J.
`
`For an award of VivoPhone’s damages trebled and an award of
`
`Defendants’ wrongful profits trebled, whichever is greater, plus VivoPhone’s costs and
`
`attorney’s fees, pursuant to 15 U.S.C. § 1117;
`
`K.
`
`For an award of VivoPhone’s damages arising out of Defendants’ acts;
`
`...10.._
`
`

`
`Case 1:07-cv-20958-JLK Document 1
`
`Entered on FLSD [')ocketO4/11/2007
`
`Page 11 of 14 A
`
`L.
`
`For an order requiring Defendants to file with the Court and provide to
`
`VivoPhone an accounting of all sales and profits realized by Defendants through the use ofthe
`
`V Mark;
`
`sums;
`
`appropriate.
`
`A
`
`M.
`
`For an award ofinterest, including pre—judgment interest on the foregoing
`
`N.
`
`For such other and further relief as the Court may deern just and
`
`I
`
`VIII. DEMAND FOR JURY
`
`Plaintiff, VivoPhone, demands a trial by jury for all issues so triable.
`
`WERMUTHLAW, P.A.
`ATTORNEYS FOR PLAINTIFF
`’ 8750 NW 36 Street, Suite 220
`Miami, Florida 33166
`TE: 305-715-7157
`
`Fax: 305-715-8982
`
`m-ichaelw@wer1nuthlaw.corn
`'dorothyt@wermuthlaw.corn
`
` ' J. i
`
`Florida Bar No.:50768
`Dorota Trzeciecka, Esq.
`Florida Bar No.:O083 518
`
`Dated: April 6, 2007
`
`-11..
`
`

`
`Case 1:07-cv‘-20958—JLK Document 1
`
`Entered en FLSD Docket O4/1 1/2007
`
`Page 12 of 14
`
`EXHIBIT A
`
`

`
`Case 1:O7—cv-20958-JLK
`
`Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 13 of 14
`
`Products
`
`Page I of l
`
`Home
`
`Products
`
`Forum
`
`My Account
`
`Support
`
`
`
`'" g
`
`
`lL\\$--'.l'—u'—I¢n--*
`.,
`‘sans:
`-9 I :9‘! iii --'-Lvi 1:.»
`
`The VivoPhone KUIIZOB is an exquisite and cell phone size Uba phone, which is loved by travelers.
`it acts as a single port gateway with hardware voice compression that results in reliable digital voice
`quality. Users can also view call inlormatlon including caller ID; call duration; destination number;
`r‘--" "" *" fimaining balance on a PCP window of their computer.
`‘
`I
`
`
`
`KU1130 is a standard size USB phone which is more practical for everyday use. it acts as a single
`port gateway with hardware voice compression that results in reliable digital voice quality. Users can
`also view call information including caller ID; call duration; destination number; missed call and
`remaining balance on a PCP window of their computer.
`»
`
`The VivoPhone i<Ei'll§0—is.a‘broa.dband IP phone, which can work independently without a computer.
`it connects directly with your broadband internet connection lrorn its RJ-45 port. our phone is
`designed for plug and play, especially when you are using a dynamic IP address. The phone also has
`t
`a large LCD that can help users to do hassle lree configurations and viewcalier information.
`
`..
`
`..-....-. P
`
`it connects directly with your broadband internet connection from its RJ-45 port. The phone has two
`IU-45 ports that can hook up your computer to internet as a hub.
`vivoPhone ML2l0A is designed for plug and play, especially when you are using a dynamic IP
`address:
`
` ‘
`
`1! H Dru
`VivoPhone look like a regular phone
`and uses like a regular phone. it is
`connected with a computer from the
`USB port or directly with broadband
`internet via RJ-45 ports. MeritPhone
`can call to any regular phones in the
`world and can also receive phone
`calls lrorn a regular phone via the
`expanding Local Access Codes.
`
`Vivovhone Features
`' Free VivoPhone to VivoPhone
`' Unlimited Talk Time
`
`‘ Call Forwarding
`- Local Access Codes
`
`' Online Account Management
`‘Repeat Dialing V
`' Last Call Rediai
`
`V
`
`' Net Conlerencing
`' international Calling
`' Low Calling Rates
`
`HUD‘//\A/Eh fll'["'ll\/F‘ nl_‘O/u/PH/7nn£1nFu l 7 1 747 l4/u/u/ur u.hrnnhru_1_t_: r~nn1/Pr.-r\fl‘u_nlr_~rnL' Inhp
`
`_
`
`/I/4
`
`

`
`Case 1:07-cv-20958-JLK Document 1
`Entered on FLSD Docket 04/ 1 1/2007) Page 14 of 14
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`W44 <R=v~H/05>
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`CIVIL COVER SHEET
`Q I?’ "'1 2
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`The IS 44 civil cover sheet and the infonnation contained herein neither re lace norsupplement the filing and service ofpleadings
`papers as reguired bylaw, except as provided
`by local rules ofcourt. This form, approved by the Judicial Conference 0 the United States in Sentember I974. is recurred for the use oft e Clerk of ourt for the purpose oftnitiating
`NOTICE: Attorneys MUST Indicate All Re-filed Cases Below.
`‘re civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE or THE FORM.)
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`6:!
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`s. (a) PLAINTIFFS
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`KMEDIA, INC.
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`DEFENDANTS
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`VONAGE AMERICA INC.,VONAGE MARKETING INC.
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`(b) County of Residence of First Listed Plaintiff Mi3mI’Dad‘3 County
`(EXCEPT IN U.S. PLAINTIFF CASES)
`((2) Attorney's (Firm Name. Address. and Telephone Number)
`J. Michael Wermuth
`;-
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`8750 NW 36 Street, Suite 220
`‘It/IAGIS'I'R.ATE JUDGE
`Miami, Florida 33178
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`3,
`(7105) 'II R-7l <7 Fav (104) 'll 4-2020
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`6 \
`I.
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`(11) Check County WIICTB ACIIOII /H058: CIMIAMI- DADE D MONROE U BROWARD D PALM BEACH CI MARTIN CI ST. LUCIE 0 INDIAN RIVER CI OKEECHOBEE
`HIGHLANDS
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`‘
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`Monmmlth Count)’: NJ-
`County ofResidence ofFirst Listed Defendant
`(IN U.S. PLAINTIFF CASES ONLY)
`NOTE3 IN LAND C0NDEMNATI0 ETHE ETRACT
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`LAND INVOLVED.
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`Attorneys (lFKnown)
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`_ II. BASIS OF JURISDICTION (Place an “X" in One Box Only)
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`D I U.S. Government
`Plaintiff
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`V0 3
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`Federal Question
`(U.S. Government Not a Party)
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`-
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`Cl 2 U.S. Government
`Dcfwdam
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`Cl 4
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`III. CITIZENSHIP OF PRINCIPAL PARTIES(Place’an “X“ in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF
`PTF
`DEF
`I
`_.‘_Cl
`D 4
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`..
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`Citizen of This State
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`Citizen of Another State
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`DEF
`D l
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`2
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`CI
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`2
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`D
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`4
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`- 5
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`CI 5
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`Incorporated or Principal Place
`of Business In Thégstate IQ
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`Incorporatubzr P—r:incipaI-Ii-lace--_
`Diversity
`°fB"si'E5 3If‘.?°‘h" '; .. -
`(Indicate Citizenship oi’Partics in ltcml I)
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`IV. NATURE OF SIT Place an “X“ in One Box On!
`‘In if ‘A’
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`jitillimxij
`FORFEITURE/PENALTY
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`D I 10 Insurance
`PERSONAL INJURY
`PERSONAL INJURY D 6l0 Agriculture
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`U 3l0 Airplane
`D 362 Personal Injury -
`D 620 Other Food & Drug
`CI 423 Withdrawal
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`-I at 20 4|
`titrust
`0 120 Marine
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`28 USC I57
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`43
`nks and Banking
`CI 130 Miller Act ‘
`D 3l5 Airplane Product
`Med. Malpractice
`El 625 Drug Related Seizure
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`45qCgrtmer’_ce
`0 I40 Negotiable Instrument
`Liability
`365 Personal Injury -
`of Property 21 USC 88!
`El
`D 150 Recovery of Overpayment D 320 Assault. Libel &
`Product Liability
`- 630 Liquor Laws
`45ImJOI13IIDfl.
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`D 820 Copyrights
`(IL Enforcement ofJudgment
`Slander
`368 Asbestos Personal
`Cl 540 R.R. 8:. Truck
`470 Racketechlnfluenced and
`CI 830 Patent
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`CI 650 Airline Regs.
`I51 Medicare Act
`0 330 Federal Employers‘
`Injury Product
`Corrupt Organizations
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`K840 Trademark
`I52 Recovery of Defaulted
`Liability
`Liability
`0 660 Occupational
`480 Consumer Credit
`PERSONAL PROPERTY
`Safety/Health
`Student Loans
`E! 340 Marine
`490 Cable/Sat TV
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`D 690 Other
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`(Excl. Veterans)
`D 345 Marine Product
`370 Other Fraud
`810 Selective Service
`El
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`D 850 Securities/Commoditiea/
`D 153 Recovery ofOverpayment
`Liability
`D 371 Truth in Lending
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`D 710 Fair Labor Standards
`0 86l HIA (l395fl)
`oI'Vcteran's Benefits
`CI 350 Motor Vehicle
`0 380 Other Personal
`Exchange
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`Act
`CI 862 Black Lung (923)
`D 875 Customer Challenge
`I60 Stockholders‘ Suits
`0 355 Motor Vehicle
`Property Damage
`CI
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`D 720 Labor/Mgmt. Relations
`0 863 DIWC/DIWW (405(g))
`0 I90 Other Contract
`Product Liability
`385 Property Damage
`I2 USC 34l0
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`0 I95 Contract Product Liability
`CI 360 Other Personal
`Product Liability '
`CI 730 LaborIMgmt.Reportin'g
`D 864 SSID Title XVI
`D 890 Other Statutory Actions
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`D 865 RSI 405 - CI 89! Agricultural Acts
`D 196 Franchise
`ln'u
`& Disclosure Act
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`REAL PROPERTY
`CIVIL RIGHTS
`PRISONER PETITIONS U 740 Railway Labor Act
`FEDERAL TAX SUITS
`13 892 Economic Stabilization‘Act
`Cl ZIO Land Condemnation
`C! 44! Voting
`510 Motions to Vacate
`Cl 790 Other Labor Litigation
`C) 893 Environmental Matters
`0 870 Taxes (U.S. Plaintifi‘
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`0 220 Foreclosure
`D 442 Employment
`Sentence
`0 79l Empl. Ret. Inc.
`or Defendant)
`D 894 Energy Allocation Act
`D 230 Rent Lease & Ejectment
`D 443 Housing/
`Habeas Corpus:
`Security Act
`0 871 IRS—-Third Party
`0 895 Freedom oflnformation
`Cl 240 Torts to Land
`Accommodations
`D 530 General
`26 USC 7609
`Act
`CI 245 Tort Product Liability
`Cl 444 Welfare
`D 535 Death Penalty
`D 900/Spptzal oI'Fcc Determination
`D 290 All Other Real Property
`0 445 Amer. wlDisabilities - D 540 Mandamus & Other
`Under Equal Access
`Employment
`D 550 Civil Rights
`to Justice
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`D 446 Amer. w/Disabilities - D 555 Prison Condition
`Cl 950 Constitutionality of
`Other
`State Statutes
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`D 440 Other Civil Rights
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`CI
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`Cl
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`(Place an “X" in One Box Only)
`5 :,§f,?§e'i'.§§s‘i,t;’c‘§"‘ D 6 M_“,llld_istnct
`4 Retnstated or Cl
`D 2 Removed from
`D 3 Re-t'iled-
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`(Specify)
`Litigation
`Reopened
`State Court
`(see VI below)
`in) Related Cases CI YES EJ’NO
`a) Re-filed Case [I YES W NO
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`Igggggt;
`,UDa;E
`§§§§.i3‘.§§‘;%‘l?"‘
`Cite the U.S. Civil Statute under which you are filing and Write a Brief Statement of Cause (Do not cite Jurisdictional statutes unless
`diversity):
`15 U.S.C. 5l l25(a) Unfair competition and false designation
`LENGTH OF TRIAL via
`days estimated (for both sides to try entire case)
`CHECK YES only if demanded in complaint:
`0 CHECK IF THIS IS A CLASS ACTION
`DEMAND 5
`"111. REQUESTED IN
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`UNDER F.R.C.P. 23 JURY DEMAND:COMPLAINT; :1.) Yes 0 No
`ABOVE INFORMATION IS TRUE & CORRECT TO
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`THE BEST OF MY KNOWLEDGE
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`FOR FFICE usa ONLY
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`AMOUNT0 .¢Z’3r2cErr>T#
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`V.
`‘p I Original,
`Proceeding
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`VI. RELATED/RE-FILED
`CASE(S).
`5
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`OF
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`Cl 7
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`AP 331 I0 DISITICI
`$3339{Kim
`udrnent
`J 35"’ '3 3
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`

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`EXHIBIT 3
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`

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`Case 1:07-cv-20958-JLK Document 19 , Entered on FLSD Docket 05/14/2007
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`Page 1 of 10
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`MIAMI DIVISION
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`KMEDIA, INC.
`d/b/a VIVOPHONE,
`.a Florida corporation,
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`Plaintiff,
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`vs,
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`’ VONAGE AlV[ERICA, INC.,
`a Delaware corporation, and
`VONAGE MARKETING, INC.,
`a Delaware corporation,
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`,
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`.
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`Defendants.
`/
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`CASE NO.: 07-20958—CIV—KING/GARBER
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`ANSWER AND COUNTERCLAIM
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`Defendants Vonage America, Inc. and Vonage Marketing, Inc. (collectively,
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`“Defendants”), by and through their attorneys, Duane Morris LLP, hereby answer the complaint
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`in this action (the “Complaint”) filed by plaintiff Kmedia, Inc. d/b/a ‘X/'iVoPhone (“Plaintiff”) and
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`assert a counterclaim against Plaintiff:
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`, THE PARTIES ,
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`1.
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`I Defendants deny knowledge or information sufficient to form a belief as to the
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`truth of the allegations set forth in numbered Paragraph 1 of the Complaint and therefore deny
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`same.
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`2.
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`Defendants admit that Vonage America Inc. is a corporation organized and
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`existing under the laws of the State of Delaware and that it has an address at 23 Main Street,
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`Holmdel,‘ New Jersey 07733.
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`Case 1:07-cv-20958-JLK Document 19
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`Entered on FLSD Docket 05/14/2007
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`Page 2 of 10
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`CASE NO.: 07-20958-CIV—KING/GARCBER
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`3.
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`Defendants deny that Vonage Holdings Inc. is a corporation organized and
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`existing under the laws. of the State of Delaware and that it has an address at 23 Main Street,
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`Holmdel, New Jersey 07733.
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`4.
`Admit that Vonage America Inc. transacts business in the State of Florida, and
`deny the remaining allegations set forth
`numbered Paragraph 4 ofthe Complaint.
`JURISDICTION
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`I
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`5.
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`Defendants deny the allegations set forth in numbered Paragraph 5 of the
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`Complaint, except to admit that Plaintiffpurports to base a claim under 15 U.S.C. § 1125.
`6.
`Defendants deny the allegations set forth in numbered Paragraph 6 of the
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`' Complaint, except to admit that Plaintiff purports to base the Court’s jurisdiction under 15
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`U.S.C. § 1121 and 28 U.S.C. § l338(a).
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`* Defendants deny the allegations set forth in numbered Paragraph 7 of the
`7.
`Complaint, except to admit that Plaintiffpurports to make a claim under the laws ofthe State of
`Florida. Defendants affirmatively state that Plaintiff fails to assert any claims under the laws of
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`the State of Californiapin its Counts or its Demand for Relief.
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`8.
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`Defendants deny the allegations set forth in numbered Paragraph 8 of the
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`Complaint, except to admit that Plaintiff purports to base the Court’s jurisdiction under 28
`U.S.C. §~ l338(b) and 28 U.S.C. § 1367.
`7
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`BACKGROUND FACTS
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`Defendants deny knowledge or information sufficient to form a belief as to the
`9.
`truth ofthe allegations set forth in numbered Paragraph 9 ofthe Complaint and therefore deny
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`same .
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`DM2\l136087.1
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`2
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`Case 1:O7—cv-20958—JLK Document 19
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`Entered on FLSD Docket 05/14/2007
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`Page 3 of 10
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`_ CASE NO.: 07-20958-CIV-KING/GARBER
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`10.
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`Defendants deny knowledge or information sufficient to form a belief as to the -
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`truth of the allegations set forth in numbered Paragraph 10 of the Complaint and therefore deny
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`same .
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`11.
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`Defendants deny the allegations set forth in numbered Paragraph 11 of the
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`‘ Complaint.
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`12.
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`I Defendants deny the allegations set forth in numbered Paragraph 12 of the -
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`Complaint.
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`1
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`13.
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`Defendants deny the allegations set forth in numbered Paragraph 13 of the
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`Complaint, except to admit that an image which Plaintiff purports to be a Web page from
`Defendants’ WwW.yonage.com website is displayed in Paragraph 13, but such image isinot
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`legible.
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`14.
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`Defendants deny the allegations set forth in numbered Paragraph 14 of the
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`Complaint.
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`15.
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`Defendants deny the allegations set forth in numbered Paragraph 15 of the
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`Complaint.
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`COUNT I:~ UNFAIR COMPETITION AND FALSE DESIGNATION
`OF ORIGIN OR SPONSORSHIP UNDER 15.U.S.C. §. ll251a)
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`16.
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`Defendants incorporate by reference its answers to numbered paragraphs 1 _
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`through 15 as if fully set forth and realleged herein.
`7 17.
`Defendants deny the allegations set forth
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`numbered Paragraph 17 of the
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`Complaint.
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`18.
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`Defendants deny the allegations set forth in numbered Paragraph 18 of the .
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`Complaint.
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`1 DM2\1 136087.!
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`3
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`Case 1:07-cv—20958-JLK Document 19
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`Entered on FLSD Docket 05/14/2007
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`Page 4 of 10
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`. CASE NO.: 07-20958-CIV-KING/GARBER
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`19.
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`Defendants deny the allegations set forth in numbered Paragraph 19 of the
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`Complaint.
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`p
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`20.
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`Defendants deny the allegations set forth in numbered Paragraph 20 of the
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`Complaint.
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`A
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`21.
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`Defendants deny the allegations set forth in numbered Paragraph 21 of the
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`Complaint.
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`22.
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`Defendants deny the allegations set forth in numbered Paragraph 22 of the
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`Complaint.
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`23.
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`Defendants deny the allegations set forth in numbered Paragraph 23 of the
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`Complaint.
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`24.
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`Defendants deny the allegations set forth in numbered Paragraph 24 of the
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`Complaint.
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`25.
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`Defendants deny the allegations set forth in numbered Paragraph 25 of the
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`Complaint.
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`COUNT H: FLORIDA COMMON LAW TRADEMARK INFRINGEMENT
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`26.
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`Defendants incorporate by reference its answers to numbered paragraphs 1
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`through 25 as if fully set forth and realleged herein.
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`27.
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`Defendants deny the allegations set forth in numbered Paragraph 27 of the
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`Complaint.
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`28.
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`M Defendants deny the allegations set forth in numbered Paragraph 28 of the
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`Complaint.
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`29.
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`Defendants deny the allegations set forth in numbered Paragraph 29 of the
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`Complaint.
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`.
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`DM2\1 136087.]
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`4
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`Case 1:07—cv—2