Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA149094
`ESTTA Tracking number:
`07/03/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177746
`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
`KMEDIAVONAGA91177746.pdf ( 29 pages )(2305256 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD '
`
`____________________.~__...._.___.__._._...__......._.._..__.__..._...._)(
`
`In the Matter of Application
`Serial No. 78/870,810
`Published: May 15, 2007
`
`Kl\/IEDIA, INC.
`
`A
`
`'
`
`'
`
`'
`
`V
`
`Opposition No. 91,177,746
`
`V.
`
`Opposer,
`
`I
`
`VONAGE MARKETING, INC.
`
`_____________________________________________________________
`
`Applicant.
`
`MOTION TO SUSPEND PENDING
`
`CIVIL PROCEEDING UNDER 37 C.F.R. § 2.117ga[
`
`Pursuant to -37 C.F.R. § 2.1 l7(a)_ and TBMP § 5l0.02i(a), Applicant, Vonage Marketing,
`
`'
`
`Inc., hereby requests suspension of the above—captioned opposition proceeding pending the
`
`outcome of a potentially dispositive civil action between the parties. The civilaction involves
`
`common issues that will have a bearing on the issues in the opposition proceeding before the
`
`Board.
`
`On April 11, 2007, Opposer filed a cornplaintfor 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. O7—20958—CIV-KING) (the “Civil Action”), seeking injunctive relief
`
`and monetary damages arising out of Applicant’sV and dot design that is included in the
`
`application at issue in this proceeding. A true and correct copy ofthe Complaint is annexed
`
`DM1\1149980.1
`
`

`
`hereto as Exhibit A. On May 14, 2007, Applicant filed its Answer and Counterclaim. A true and
`correct copy ofthe Answer and Counterclaim is annexed hereto as Exhibit B. A
`Accordingly, Applicant respectfully moves the Board to suspend this opposition A
`
`proceeding pending the District Court’s final disposition of the Civil Action between Applicant
`and Opposer. Ifthe Civil Action is concluded without a settlement orjudgment that resolves the
`
`issues raised in this opposition proceeding, Applicant will promptly notify the Board.
`
`A DUANE QRRIS LLP
`
`By:
`
`
`
`
`
`“Ha
`Gregory P’
`Eric W. McCormick
`Christina S. Kim
`'
`
`'
`
`1540 Broadway
`New York, NY 10036—4086
`(212) 692-1000
`
`Attorneys for Applicant
`
`Dated: New York, New York
`July 3, 2007
`'
`
`,
`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/
`Inez P, Vega
`V
`Dated: July 3, 2007
`DUANE MORRIS LLP
`
`4
`
`DM1\1149980.1
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I caused atrue and correct copy of the foregoing Motion To Suspend
`Pending A 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
`
`P. Vega
`
`DM1\1149980.1
`
`

`
`T EXHIBIT A
`
`

`
`Case 1:07-cv-20958-JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 1 of 14
`
`UNITED. STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA»
`MIAMI DIVISION
`
`KMEDIA, INC. A
`d/b/a _vIVoI>HoNE,
`a Florida Corporation
`
`Plaintiff,
`
`vs.
`
`VONAGE AMERICA INC.,
`a.Delaware Corporation, and
`VONAGE MARKETING INC.,
`aDelaware Corporation,
`’
`
`-I
`MAGISTRATE ‘mucus
`GARBER
`
`I
`
`p
`
`V
`
`0;;
`
`;:
`:v
`-“‘_2.t?i.'
`'*=.~-( ;, OM
`75'!-"
`
`i
`
`1
`
`’
`
`Defendants.
`
`::."*;"~'
`on
`i
`
`)‘(_31;._~:
`. ><
`
`0°
`c:2
`
`_
`
`-
`
`COMPLAINT AND JURY DEMAND
`
`I. THE PARTIES
`
`1.
`
`Kmedia, Inc. d/b/a VivoPhcne (“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.
`C
`
`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.
`
`I The state law claims pleaded herein arise under the laws ofthe States of
`
`Florida and California.
`
`8.
`
`Subject matter jurisdiction for the state law claims is conferred upon the
`
`Court by 28 U.S.C. § l33'8(b) (claim ofunfair competitionjoined 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:O7—cv—20958—JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 3 of»14
`
`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 mark”), 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.
`
` VIVO 5‘
`
`pl-wcarwe
`
`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. I 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
`
`, 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.com, is illustrated .—
`
`by screen shot below.
`
`

`
`Case 1:O7-cv-20£i958-JLK Document 1
`
`Entered on FLSD Docket O4/11/2007
`
`Page 4 of 14ft
`
`v-n-u..—.i.~.-u
`
`
`
`Inu-
`
`Vonage Web Site — February 5, 2007
`Defendants have no consent, license, approval or other authorization. to
`
`14.
`
`use the V Mark on or in connection with theirproducts, 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
`.
`UNFAIR COMPETITION AND FALSE DESIGNATION
`OF ORIGIN OR SPONSORSHIP UNDER 15 U.S.C. § 1125131)
`
`16.
`
`17.
`
`The allegations ofparagraphs 1- 15 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
`
`18.
`
`Defendants’ unauthorized use of its confusingly similar mark, has a
`
`substantial effect on interstate commerce, and constitutes false advertising, false designation of V
`
`. -4-
`
`

`
`Case 1:O7—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. i
`
`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
`
`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, at-present, is unable to ascertain the full extent ofits 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 V
`
`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 Lanham 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 of having used and continuing to use the V Mark, VivoPhone A
`
`has acquired common law rights in that mark.
`
`V 28..
`
`Defendants’ use in commerce of marks identical and/or confusingly
`
`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.
`
`u 29.
`As a direct and proximate result of Defendants’
`infringement of
`VivoPhone's common law trademark rights under Florida and other common law, VivoPhone
`has suffered, and will continue to suffer, monetary damages and irreparable injury to its
`
`business, reputation, and goodwill.
`
`

`
`Case 1:07-cv—20958—JLK Document 1
`
`Entered on FLSD Docket 04/1 .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.
`
`. 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 ofthe 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 confiision 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 VivoPhone.
`3.7.
`' Defendants”unlawful 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 of the V Mark, VivoPhone has suffered and will continue
`
`to? suffer injury to its business, goodwill, and property.
`
`

`
`Case 1:O7—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’ 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, at
`
`present, is unable to ascertain the full extent ofits damages, or the gains, profits, and advantages
`
`_
`
`that Defendants have obtained by reason of the wrongful conduct described herein. g
`
`V 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.
`
`41',
`
`VivoPhone has no adequate remedy of law. Unless Defendants are
`
`preliminarily and permanently enjoined from committing these unlawfiil acts as set forth above,
`
`including the unauthorized use ofthe V Mark in commerce, VivoPhone will continue to suffer
`
`irreparable harm.
`
`VII. ‘DEMAND
`
`RELIEF
`
`WHEREFORE, VivoPhone demands entry ofajudgment granting reliefagainst
`
`the Defendants as follows:
`A.
`determination that the Defendants have violated 15 U.S.C. § l 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;
`
`-3-
`
`

`
`Case 1:07-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 l)efendants
`
`are liable to VivoPhone for common law unfaircompetition;
`
`i
`
`D.
`
`A determination that this case is “exceptional,” in the sense of 15 U.SiC.
`
`§ l1l7(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 i
`
`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\4/-20958-JLK Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 10 of 14 V
`
`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.
`
`V For an order directing such other relief as the Court may deemi
`
`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 wayto 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 tile with this Court, and serve upon VivoPhone’s counsel within thirty (30) days
`
`after entry of such judgment, a 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
`attomey’s fees, pursuant to l5 U.S.C. § 1117;
`
`K.
`
`For an award of VivoPhone’s damages arising out of Defendants’ acts;
`
`-10-
`
`

`
`Case 1:O7—cv-20958—JLK Document 1
`
`Entered on FLSD [.)ocketO4/11/2007
`
`Page 11 of 14
`
`L.
`
`For an order requiring Defendants to file with the Court and provide to
`
`VivoPhone an accounting ofall 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 deexn just and
`
`VIII. DEMAND FOR JURY
`
`Plaintiff, VivoPhone, demands a trial by jury for all issues so triable.
`
`WERMUTHLAW, P.A.
`ATTORNEYS FOR PLAINTIFF
`I 8750 NW 36 Street, Suite 220
`Miami, Florida 33166
`TE: 305-715-7157
`
`Fax: 305-7 15-8982
`
`michaelw@wermuthlaw.com
`‘dorothyt@wermuthlaw.com
`
`
`
`el Wermuth, Esq.
`.
`Florida Bar No.:50768
`Dorota Trzeciecka, Esq.
`Florida Bar No.:O0835 1 8
`
`Dated: April 6, 2007
`
`-11-
`
`

`
`Case 1:O7—cv-20958-JLK Document 1
`
`Entered en FLSD Docket 04/1 1/2007
`
`Page 12 of 14
`
`EXHIBIT A
`
`

`
`Case 1 :07-CV-20958-J LK
`
`Document .1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 13 of 14
`
`Products
`
`Page I of l
`
`
`
`‘1l‘«il"'u
`VrvoPhone 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 we RJ-45 ports. MerltPhone
`can call to any regular phones in the
`world and can also receive phone
`calls from a regular phone via the
`expanding Local Access Codes.
`
`VivoPhone Features
`- Free vrvoPhone to VivoPhone
`' Unlimited Talk Time
`
`' Call Forwarding
`' Local Access Codes
`
`' Dnline Account Management
`- Repeat Dialing I
`' Last Call Radial
`
`'
`
`' Net Conferencing
`' international Calling
`‘ Low Calling Rates
`
`Home
`
`Products
`
`Forum
`
`My Account
`
`Support
`
`
`
`The VivoPhone KUHZOB is an exquisite and cell phone size Uba phone, which is loved by travelers.
`it acts as a single part gateway with hardware voice compression that results in reliable digital voice
`quality. Users can also view call information including caller lD; call duration; destination number;
`r"""‘ "" "‘ '1maining balance on a PCP window of their computer.
`
`
`
`KU1l.3O is a standard size U58 phone which l5 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 POP window of their computer.
`-
`
`The VivoPhone KE1020 is a broadband IP phone, which can work independently without a computer.
`it connects directly with your broadband internet connection from 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
`I
`a large LCD that can help users to do hassle free configurations and view‘ caller information.
`
`,.
`
`it connects directly with your broadband internet connection from its RJ-45 port. The phone has two
`R1-45 ports that can hookup your computer to Internet as a hub.
`VivoPhone ML2lDA is designed for plug and play, especially when you are using a dynamic IP
`arlrlrs-cs
`
`hND'//\A/Eh !'ll‘('hl\.’P nra/in/eh/7004061’)l'7<’7l4/xmum \l.;\II‘u'\¥I_I'\t.‘\_9 nnrq/Pynflggptnc ‘fifty
`
`/I //I
`
`

`
`Case 1:07-cv-20958-JLK Document 1
`Entered on FLSD Docket 04/11/2007) Page 14 of 14
`«use <w=v.wos>
`'
`'
`CIVIL COVER SHEET
`‘
`Q "- 2 Q
`
`The JS 44 civil cover sheet and the infonnation contained herein neitherre lace nor supplement the_ filing and service ofpleadings oro er apers as re uired by law, exceptas provided
`by local rules ofcourt. This form. approved by the Judicial Conference o the United States in September I974. is required for the use oft e Clerk of ourt for the purpose ofimtiattng
`‘we civil docket sheet.
`(SEE INSTRUCTIONS ON THE asvaasaor THE FORM.)
`NOTICE: Attorneys MUST Indicate All Re-filed Cases Below.
`
`
`
`1- (a) PLAINTIFFS
`
`‘
`
`KMEDIA, INC.
`
`DEFENDANTS
`
`VONAGE AMERICA INC.,VONAGE MARKETING INC.
`
`03) County of Residence of First Listed Plaintiff Mi3ml'Dade County
`(EXCEPT IN US. PLAlNTlFF CASES)
`(C) Attorney's (Firm Name. Address. and Telephone Number)
`J. Michael Wermuth
`;-
`.
`‘
`3750 NW 36 Street, Suite 220
`__MAGISTRATE JUDGE
`Miami, Florida 33178
`.
`- \ U.
`.\
`‘
`.
`3 ,
`r1ns\7t=.-'7t<'7 Fm: (104) 71 SJZORQ
`(cl) Check County Where Action Arose: Cl MlAMl- DADE D MONROE D BROWARD Cl PALM BEACH D MARTIN D ST. LUCIE D INDIAN RIVER Cl OKEECHOBEE
`.
`HIGHLANDS
`
`'
`
`County of Residence ofFirst Listed Defendant
`“N US. PLAINTIFF CASES ONLY)
`‘N LAND C0NDEMNATl0 E 'ElE ETRACT
`LAND INVOLVED.
`,.
`.
`9
`A
`~
`
`NOTE‘
`~
`
`Attorneys (ifKnown)
`
`.
`
`‘ II. BASIS OF JURISDICTION (Place an “X" in One Box Only)
`
`D i U.S. Government
`Plaintiff
`
`V0 3
`
`Federal Question
`(U.S. Government Not a Party)
`
`.
`
`Cl 2 US. Government
`Dcfendam
`
`In. CITIZENSHIP OF PRINCIPAL PARTIES(l’lace_an "X" in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF
`PTF
`DEF
`1
`._‘,C.'i
`D 4
`_ '.
`..
`
`Citizen of This State
`
`Citizen ofAnother State
`
`DEF
`Cl
`1
`
`2
`
`Cl
`
`2
`
`U
`
`Ci
`
`4
`"‘
`- 5
`
`D 5
`
`.
`
`5
`
`D 6
`
`
`
`
`
`
`
`
`
`
`incorporated or Principal Place
`of Business in 'l'hés,State IQ
`en =
`5;
`lncorporatubd'— Frincipai-iliiu;e—~-_
`0 4 Diversity
`Drausiifl £§‘E‘°‘‘‘‘’' ‘; . Q
`(indicate Citizenship of'Par1ics in itemi i)
`'
`"'lC:’.'.
`l
`I . K -4’
`I
`...:‘_v
`'
`t
`"
`vv
`I
`‘~
`l
`"l
`I f I
`3
`Ci
`3
`121
`;
`’
`Fareignuaupn
`._
`-
`m t
`,
`.-
`~.
`I
`/
`.
`"n U" " ‘
`IV. NATURE OF SUIT Place an "X" in One Box Onl
`TORTS
` .
`FORFEITUREIPENALTY
`
`
`BANKRUPTCY»
`__ STATUTES
`
`
`
`
`El 422 Appeal 28 USC’i58.
`El
`ttiiifitc Rdapportionment
`D I I0 insurance
`PERSONAL INJURY
`PERSONAL INJURY D 6i0 Agriculture
`0 I20 Marine
`0 Bio Airplane
`D 362 Personal injury -
`D 620 Other Food & Drug
`El 423 Withdrawal
`V 1-4 13 «ii
`titrust
`
`
`D 130 Miller Act
`0 315 Airplane Product
`Med. Malpractice
`D 625 Drug Related Seizure
`28 USC 157
`III 43
`nks and Banking
`'
`
`
`D MD Negotiable instrument
`Liability
`0 365 Personal injury —
`of Property 2l USC 881
`.
`meice
`
`
`El
`D 150 Recovery of Overpayment D 320 Assault, Libel &
`Product Liability
`.630 Liquor Laws
`" 450®Ol18l-lDl'li
`
`
`& Enforcement ofiudgment
`Slander
`D 368 Asbestos Personal
`El 640 RR & Truck
`El 470 Raci<etee'r.lni'luenced and
`
`
`
`i5| Medicare Act
`U 330 Federal Employers‘
`injury Product
`E! 650 Airline Regs.
`Corrupt Organizations
`‘
`Cl 830 Patent
`
`
`
`I52 Recovery of Defaulted
`Liability
`Liability
`D 660 Occupational
`D 480 Consumer Credit
`K840 Trademark
`PERSONAL PROPERTY
`Student Loans
`E! 340 Marine
`Safety/Health
`U 490 Cable/Sat TV
`
`.
`D
`(Excl. Veterans)
`D 345 Marine Product
`370 Other Fraud
`D 8iO Selective Service
`Cl
`.
`
`
`
`
`1. I
`A
`37! Truth in Lending — I
`D 153 Recovery ofOverpayment
`Liability
`Cl
`D 850 Securities/Commodities/
`a ,
`
`
`oi'Vcteran‘s Benefits
`D 350 Motor Vehicle
`0 380 Other Personal
`710 Fair Labor Standards
`Cl 86l HIA ( i395fi)
`Exchange
`0 i60 Stockholders‘ Suits
`0 355 Motor Vehicle
`Propcny Damage
`Act
`13 862 Black Lung (923)
`D 875 Customer Challenge
`Product Liability
`0 190 Other Contract
`720 Labor/Mgmt. Relations
`D 863 DIWCIDIWW (405(g))
`12 USC 3410
`C!
`I95 Contract Product Liability
`Cl 360 Other Personal
`D 730 Labor/Mgrnt.Reportin’g
`D 864 SSID Title XVI
`D 890 Other Statutory Actions
`
`
`D l96 Franchise
`ln'u
`& Disclosure Act
`D 865 R51 405 -
`El 89] Agricultural Acts
`0 740 Railway Labor Act
`in 892 Economic Stabilization ‘Act
`
`5i0 Motions to Vacate D 790 Other Labor Litigation
`CI 893 Environmental Matters
`D 44) Voting
`Scntcncc
`Cl
`791 Empl. Ret. inc.
`D 894 Energy Allocation Act
`D 442 Employment
`Habeas Corpus:
`Security Act
`D 895 Freedom ofinformation
`D 443 Housing
`D 530 General
`Act
`Accommodations
`C!
`535 Death Penalty
`D 900Appeal of Fee Determination
`D 444 Welfare
`D 445 Amer. w/Disabilities — D 540 Mandamus & Other
`Under Equal Access
`Employment
`D 550 Civil Rights
`to Justice
`D 446 Amer. w/Disabilities - D 555 Prison Condition
`D 950 Constitutionality of
`Other
`State Statutes
`
`D 440 Other Civil Rights
`Ap cal to District
`V.
`(Place an “X" in One Box Only)
`.
`.
`.
`Transferred from
`.
`.
`.
`1,,
`g from
`D 6 Muitidtstnct
`-
`-
`4 Reinstated or
`1 On tnai
`D 2 Removed from
`D 3 Re-fiied-
`3.
`Litigation
`Eisnpcggief-§,;hSlnct
`Reopened
`Progeeding
`‘la
`State Court _
`(see Vi below)
`figflgge
`g b) Related Cases D YES EQYNO
`VI RELATED
`FILED
`a) Re~filed Case Ci YES w NO
`3335313;
`CASE(S).
`§§2§.l3‘$;‘;i‘i?”5 mag
`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. 51 125(3) Unfair competition and false designation
`
`-
`
`
`
`
`
`
`
`D 870 Taxes (U.S. Plaintiff
`or Defendant)
`0 871 IRS—Third Party
`26 USC 7609
`
`
`
`
`
`
`
`
`
`
`
`,
`
`D
`
`
`
`
`D 210 Land Condemnation
`0 220 Foreclosure
`D 230 Rent Lease & Ejectrnent
`U 240 Torts to Land
`0 245 Tort Product Liability
`D 290 All Other Real Property
`
`
`
`C)
`
`A
`
`['3
`
`5
`
`C] 7
`
`VII‘ ‘CAUSE OF
`ACTION
`
`LENGTH OF TRIAL via
`
`days estimated (for both sides to my entire case)
`
`DEMAND 5
`
`CHECK YES only if demanded in complaint:
`JURY DEMAND:
`21 Yes D No
`
`
`
`.
`
`~ .
`
`; -
`
`El CHECK IF THIS iS A CLASS ACTION
`"III. REQUESTED IN
`UNDER F~R-C-R 23
`COMPLAINT:
`ABOVE INFORMATION is TRUE & CORRECT TO
`
`s,GN,m,RE .
`
`.
`
`THE BESTor MY KNOWLEDGE
`— 1f’
`
`,
`’
`FOR FFICE USE ONLY
`/‘ '
`AMOUNT 0 .¢(3}scEti=Tit 4‘J 7
`
`
`

`
`EXHIBIT B
`
`

`
`Case 1:07-cv~20958-JLK Document 19 V Entered on FLSD Docket 05/14/2007
`
`Page 1 of 10
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`MIAMI DIVISION
`
`KMEDIA, INC.
`d/b/a VIVOPHONE,
`.a Florida corporation,
`
`V Plaintiff,
`
`vs.
`
`' VONAGE AMERICA, INC.,
`a Delaware corporation, and
`VONAGE MARKETING, INC.,
`a Delaware corporation,
`
`,
`
`.
`
`Defendants.
`/
`
`CASE NO.: 07-20958-CIV-KING/GARBER
`
`A
`
`ANSWER AND COUNTERCLAIM
`
`Defendants Vonage America, Inc. and Vonage Marketing, Inc. (collectively,
`
`“Defendants”), by and through their attorneys, Duane Morris LLP, hereby answer the complaint
`
`in this action (the “Complaint") filed by plaintiff Kmedia, Inc. d/b/a I/ivoPhone (‘Tlaintiff’) and
`
`assert a counterclaim against Plaintiff:
`
`THE PARTIES _
`
`1.
`
`Defendants deny knowledge or information sufficient to form a belief as to the
`
`truth of the allegations set forth in numbered Paragraph 1 of the Complaint and therefore deny
`
`same.
`
`2.
`Defendants admit that Vonage America Inc. is a corporation organized and
`existing under the laws ofthe State ofDelaware and that it has an address at 23 Main Street,
`
`Holmdel,’ New Jersey 07733.
`
`

`
`Case 1:07-cv-20958-JLK Document 19
`
`Entered on FLSD Docket 05/14/2007
`
`Page 2 of 10
`
`CASE NO.: 07-20958—CIV-KING/GARSBER
`
`3.
`
`Defendants deny that Vonage Holdings Inc. is a corporation organized and
`
`existing under the laws of the State of Delaware and that it has an address at 23 Main Street,
`
`Holmdel, New Jersey 07733.
`
`A
`
`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.
`IURISDICTION
`H
`A
`
`5.
`
`Defendants deny the allegations set forth in numbered Paragraph 5 of the
`
`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
`
`' Complaint, except to admit that Plaintiffpurports to base the Court’s jurisdiction under 15
`
`U.S.C. § 1121 and 28 U.S.C. § l338(a).
`
`7.
`
`' Defendants deny the allegations set forth in numbered Paragraph 7 of the
`
`Complaint, except to admit that Plaintiffpurports to make a claim under the laws of the State of
`
`Florida. Defendants affirmatively state that Plaintiff fails to assert any claims under the laws of
`
`the State of California in its Counts or its Demand for Relief.
`
`8.
`
`Defendants deny the allegations set forth in numbered Paragraph 8 of the
`
`Complaint, except to admit that Plaintiff purports to base the Court’s jurisdiction under 28
`
`U.S.C. § 1338(b) and 28 U.S.C. § 1367.
`
`BACKGROUND FACTS
`
`9.
`
`Defendants deny knowledge or information sufficient to form a belief as to the
`
`truth of the allegations set forth in numbered Paragraph 9 of the Complaint and therefore deny
`
`same.
`
`DM2\l136087.l
`
`2
`
`

`
`Case 1:07-cv-20958-JLK Document 19
`
`Entered on FLSD Docket 05/14/2007
`
`Page 3 of 10
`
`A CASE NO.: 07-20958-CIV-KING/GARBER
`
`10.
`
`Defendants deny knowledge or information sufficient to form a belief as to the -
`
`truth of the allegations set forth in numbered Paragraph 10 of the Complaint and therefore deny
`
`same.
`
`11.
`
`«Defendants deny the allegations set forth in numbered Paragraph 11 of the
`
`M Complaint.
`
`12.
`
`I Defendants deny the allegations set forth in numbered Paragraph 12 of the -
`
`Complaint.
`
`q
`
`13.
`
`Defendants deny the allegations set forth in numbered Paragraph 13 of the
`
`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 islnot
`
`V
`
`legible.
`
`14.
`
`Defendants deny the allegations set forth in numbered Paragraph 14 of the
`
`Complaint.
`
`’
`
`15.
`
`Defendants deny the allegations set forth in numbered Paragraph 15 of the
`
`Complaint.
`
`COUNT I1» UNFAIR COMPETITION AND FALSE DESIGNATION
`OF ORIGIN OR SPONSORSHIP UNDER 15.U.S.C. §. 1125121)
`
`16.
`
`Defendants incorporate by reference its answers to numbered paragraphs 1 ‘
`
`through 15 as if fully set forth and realleged herein.
`
`’ 17.
`
`Defendants deny the allegations set forth in numbered Paragraph 17 of the
`
`Complaint.
`
`18.
`
`Defendants deny the allegations set forth in numbered Paragraph 18 of the .
`
`Complaint.
`
`' DM2\1136087.l
`
`3
`
`

`
`Case 1:O7—ev—2'O958-JLK Document 19
`
`Entered on FLSD Docket 05/14/2007 9 Page 4 of 10
`
`19.
`
`Defendants deny the allegations set forth in numbered Paragraph 19 of the
`
`. CASE NO.: 07-20958—CIV-KING/GARBER
`
`Complaint.
`
`20.
`
`Defendants deny the allegations set forth in numbered Paragraph 20 of the
`
`Complaint.
`
`21.
`
`Defendants deny the allegations set forth in numbered Paragraph 21 of the
`
`Complaint.
`
`22.
`
`Defendants deny the allegations set forth in numbered Paragraph 22 of the
`
`Complaint.
`
`23.
`
`Defendants deny the allegations set forth in numbered Paragraph 23 of the
`
`Complaint.
`
`24.
`
`.Defenda_nts deny the allegations set forth in numbered Paragraph 24 of the
`
`Complaint.
`
`25.
`
`Defendants deny the allegations set forth in numbered Paragraph 25 of the
`
`Complaint.
`
`COUNT II: FLORIDA COMMON LAW TRADEMARK INFRINGEMENT
`
`26.
`Defendants incorporate by reference its answers to numbered paragraphs 1
`through 25 as if fully set forth and realleged herein.
`
`I
`
`27.
`
`Defendants deny the allegations set forth in numbered Paragraph 27 of the
`
`Complaint.
`
`28.
`
`V Defendants deny the allegations set forth in numbered Paragraph 28 of the
`
`Complaint.
`
`29.
`
`Defendants deny the allegations set forth in numbered Paragraph 29 of the
`
`Complaint.
`
`DM2\l l36087.l
`
`‘
`
`4
`
`

`
`Case 1:07-cv-20958—JLK Document 19
`
`Entered on FLSD Docket 05/14/2007
`
`Page 5 of