Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA149106
`ESTTA Tracking number:
`07/03/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91177748
`Defendant
`Vonage Marketing Inc.
`Vonage Marketing Inc.
`23 Main Street
`Holmdel, NJ 07733
`
`ALAN KALB
`VONAGE
`D2-A161 23 MAIN STREET
`HOLMDEL, NJ 07733
`UNITED STATES
`alan.kalb@vonage.com
`Motion to Suspend for Civil Action
`Gregory P. Gulia
`gpgulia@duanemorris.com, cskim@duanemorris.com,
`ewmccormick@duanemorris.com
`/Gregory P. Gulia/
`07/03/2007
`KMEDIAVONAGE91177748.pdf ( 29 pages )(2307376 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENTAND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`____________________________
`In the Matter of Application
`Serial No. 78/870,744
`Published: June 5, 2007 p
`
`KMEDIA, INC.
`
`v.
`
`VONAGE MARKETING, INC.
`
`'
`
`Opposer,
`
`Applicant.
`
`'
`
`E
`
`- Opposition No. 91,177,748
`
`...:........................................s..........‘..'............................)'<
`MOTION TO SUSPEND PENDING _
`CIVIL PROCEEDING UNDER 37 C.F.R. .§ 2’.117§a[
`
`Pursuant to 37 C.F.R. § 2.1l7(a) and TBMP i§ 510.02(a), Applicant, Vonage Marketing,
`
`Inc., hereby requests suspension of the above-captioned opposition proceeding pending the
`
`outcomeofa 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
`
`' 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. O7-20958—CIV—KING) (the “Civil Action”), seeking injunctive relief
`
`and monetary damages arising out of Applicant’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. Ifthe 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_ V6 ga /
`’
`V
`.
`Inez P, Vega
`
`‘
`
`4
`
`Dated: July 3, 2007
`DUANE MORRIS LLP
`
`DUANE
`
`By,
`
`RRIS LLP
`.._
`
`Gregory P. Gulia_
`Eric W. McCormick
`Christina S; Kim.
`
`0
`.1540 Broadway
`New York, NY 10036-4086
`(212) 692-1000
`-
`
`Attorneys for Applicant
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I caused a true and correct copy of the foregoing Motion To.Suspend
`’ Pending A Civil Proceeding Under 37 C.F.R. § 2.1I7(A) to be served upon Oppos_er’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 ’
`
`DM1\114C-3945.1
`
`

`
`A EXHIBIT A
`
`

`
`Case 1:07-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
`
`m C
`
`IV - KING
`MAGISTRATE ‘JUDGE
`GARBER
`
`.
`
`CASE NO:
`
`KMEDIA, INC.
`d/b/a y1VoPHoNE,
`a Florida Corporation
`
`Plaintiff,
`
`VS.
`
`p
`
`A
`
`VONAGE AMERICA INC.,
`a.Delaware Corporation, and
`VONAGE MARKETING INC.,
`a Delaware Corporation,
`'
`
`_
`
`.
`
`V
`
`1
`
`p
`
`Q 3:
`V‘.':;':-
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`-
`
`1
`
`’
`
`'
`7,-3
`-
`Defendants.
`
`’_‘c.'‘;"5
`an
`
`COMPLAINT AND JURY DEMAND
`
`F 2 Q,‘.
`.
`.»<
`
`_
`
`'
`
`to
`:3
`
`1
`
`1. 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 p‘l: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.
`H
`
`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 underthe 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 co'rnpetition~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: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.
`
` vvvo 3“
`
`;:»l—~nc3r1e=2
`
`1 1.
`
`By virtue of having used and continuing to use the V Mark, VivoPhone
`
`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.
`
`The Defendants have also used the V Mark set forth above on their web L
`13.
`site, on their products and in advertising. Defendants’ web site, www.vonage.com, is illustrated -
`
`by screen shot below.
`
`

`
`Case 1 :07-cv-2OEl58—JLK
`
`Document 1
`
`Entenred on FLSD Docket 04/11/2007
`
`Page 4 of 14.
`
`-unu--......v...-as
`
`
`
`or-.
`
`Vonage Web Site - February 5, 2007
`
`l4.
`
`Defendants have no consent, license, approval or other authorization. to
`
`use the V Mark on or in connection with their ‘products, services, advertising or web site.
`
`'
`
`l5.
`
`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
`UNFAIR COMPETITION AND FALSE DESIGNATION
`OF ORIGIN OR SPONSORSHIP UNDER 15 U.S.C. § l125(,a[
`
`16.
`
`17.
`
`The allegations ofparagraphs l-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.
`
`18.
`
`Defendants’ unauthorized use of its confiisingly similar mark, has a
`
`substantial effect on interstate commerce, and constitutes false advertising, false designation of V
`
`. -4-
`
`

`
`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 A in interstate commerce
`
`constitutes a violation of Section43(a) ofthe Lanham Act. .
`
`20. Defendants’ use of the V Mark has caused confusion and mistake and is
`
`likely to continue to cause confusioniand 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 ofDefendantsfiinlawful 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 fiill 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 isentitled, 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 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 of the 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 O
`
`has acquired common law rights in that mark.
`
`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.
`
`A 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 1:07-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.
`
`A 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 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 ofthe 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’ wrongfiil 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
`
`Q
`
`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.
`
`41'.
`
`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 FDOR 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 infiingement;
`
`_.g_
`
`

`
`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 Defendants
`
`are liable to VivoPhone for common law unfair competition;
`
`D
`
`D.
`
`A determination that this case is “exceptional,” in the sense of 15 U.S,C.
`
`§ 11 l7(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\4/—2O958-JLK Document 1
`
`Entered on FLSD Docket O4/1 1/2007
`
`Page 10 of 14
`
`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 tile with this Court, and serve upon VivoPhone’s counsel within thirty (30) days
`
`after entry ofsuchjudgment, 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;
`
`‘I.
`
`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 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 tile with the Court and provide to
`
`VivoPhone an accounting ofall sales and profits realized by Defendants through the use ofthe
`
`V Mark;
`
`sums;
`
`appropriate.
`
`5
`
`M.
`
`For an award ofinterest, including pre—judgment interest on the foregoing
`
`N.
`
`For such other and further relief as the Court may deem 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: 305-715-8982
`
`michae1w@wermuth1aw.com
`‘dorot_hyt@we1muthlaw.com
`
`
`
`el Werrnuth, Esq.
`i
`J.
`Florida Bar No.:50768
`Dorota Trzeciecka, Esq.
`Florida Bar No.:0O835 18
`
`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 1:07-cv-20958-JLK
`
`Document 1
`
`Entered on FLSD Docket 04/11/2007
`
`Page 13 of 14
`
`Products
`
`Page I of I
`
`
`
`ii"u
`5;] --
`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 via R)-45 ports. MerltPhone
`can call to any regular phones in the
`world and can also receive phone
`calls train a regular phone via the
`expanding Local Access Codes.
`
`.
`VivoPhone Features
`‘ Free VivoPhone to VivoPhone
`' Unlimited Talk Time
`
`’ Call Forwarding
`' Local Access Codes
`
`' Online Account Management
`' Repeat Dlaling ‘
`' Last Call Redial
`
`1
`
`' Net Conferencing
`' international Calling
`' Low Calling Rates
`
`Home
`
`Products
`
`Forum
`
`My Account
`
`Support
`
`:22.-
`
`
`
`The VivoPhone KUIIZOB is an exquisite and cell phone size U'.«.» 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 information including caller ID; call duration; destination number;
`r"""' ""' "‘ "smaining balance on a PCP window of their computer.
`
`
`
`i<U1t30 is a standard size USB 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.
`v
`
`The vivoPhone l'<Et’tl;D‘is-a_broa.dband IP phone, which can work independently without a computer.
`It connects directly with your broadband internet connection from its R3-45 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
`RJ-45 ports that can hook up your computer to internet as a hub.
`VivoPhone MLZIOA is designed for plug and play, especially when you are using a dynamic IP
`arlrtrem
`
`hlin‘//web !ll‘(‘l1l\/P nro/tx/PH/7nnAn5 l 7 1 747 I A/ulnnu \I';\If‘\f'\"I_l\l'1_'O nnrn.lPr_-r\fl‘t_rVr_-rnu ‘nhp
`
`/I //1
`
`

`
`Case 1:07-ov—20958-JLK
`
`uis-:4 (Rev.lll05)
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`fl
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`Document 1
`Entered on FLSD Docket O4/1 1/2007) Page 14 of 14
`CIVIL COVER SHEET
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`A Q -"- 2 Q
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`The .lS 44 civil cover sheet and the infomiation contained herein neither re lace norsupplement the_ filing and service ofpleadings or 0 er apers as re uired by law, except as provided
`by local mics ofcourt. This form, approved by the Judicial Conference 0 the United States in September 1974. is recurred for the use oft e Clerk of curt for the purpose of initiating
`'1e civil docket sheet.
`(SEE lNSTRUCTlONS ON THE REVERSE or THE FORM.)
`NOTICE: Attorneys MUST Indicate All Re-filed Cases Below.
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`1.. (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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`(1)) County of Residence of First Listed Plaintiff Mi3mi'Dad3 Cpumy
`(EXCEPT IN US. PLAINTIFF CASES)
`(C) Attorney's (Firm Name, Address. and Telephone Number)
`J. Michael Wermuth
`8750 NW 36 Street, Suite 220
`Miami, Florida 33178
`f'm<\ 7l 4-71 <7 Fav {'Zn<\ 71 <-RORQ
`(d)Check County Where Action Arose: 0MlAMl- DADE
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`County of Residence ofFirst Listed Defendant
`(IN U.S. PLAlNTlFF CASES ONLY)
`‘N LAND C0NDEMNATl0 ETHE E TRACT
`LAND INVOLVED.
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`A
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`NOTE:
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`Attorneys (lfKnown)
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`._MAGlSTR.ATE JUDGE
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`O \ ’.
`A
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`3,
`Cl MONROE D BROWARD Cl PALM BEACH D MARTIN 0 ST. LUCIE 0 INDIAN RIVER Cl OKEECHOBEE
`HIGHLANDS
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`_ II. BASIS OF JURISDICTION (Place an “X“ in One Box Only)
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`Cl
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`l US. Government
`Plaintiff
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`'0 3
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`Federal Question
`(US. Government Not a Party)
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`D 2 US. Government
`Dcfendam
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`0 4 Diversity
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`(indicate Citizenship ofParties in item I I)
`F 1;‘
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`HI. CITIZENSHIP OF PRINCIPAL PARTIES(Place.an "X" in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF
`PTF
`DEF
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`,_'_D
`D 4
`_'.
`..
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`Citizen of‘ This State
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`Citizen ofAnother State
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`[J
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`Cl
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`DEF
`D l
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`2
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`Cl
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`2
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`4
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`- 5
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`D 5
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`D
`FORFEITURE/PENALTY
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`incorporated or Principal Place
`of Business in 'I'h£s,State IQ
`en a
`5;;
`lncoi-poratuhdi Er:incipal-P~llu;o—--_
`Gfauslw 5 ?%!‘°“‘°’ V; B ._ _
`3 D3 ForeignNa?;i::E
`" K 5 as
`7‘ ‘/7 ti’
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`D 2l_0 Land Condemnation
`0 220 Foreclosure
`D 230 Rent Lease &. Ejectmerit
`D 240 Torts to Land
`Cl 245 Tort Product Liability
`D 290 All Other Real Property
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`IV. NATURE OF SIT Place an “X“ in One Box Onl
`. ‘PORTS
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`El dflflfitc Rrlapportionment
`PERSONAL INJURY D 6lO Agriculture
`Cl 422 Appeal 28 USC l5&
`D l 10 insurance
`PERSONAL INJURY
`D 620 Other Food & Dnig
`Cl 423 Withdrawal
`D 362 Personal injury -
`I -—-t D 4!
`titmst
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`D in Marine
`D 310 Airplane
`Med. Malpractice
`Cl
`625 Drug Related Seizure
`28 USC 157
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`HI
`43
`nks and Banking
`D 130 Miller Act
`El 315 Airplane Product
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`0 365 Personal injury -
`of Property 21 USC 88!
`45q'Cgnmer't:e
`D MD Negotiable Instrument
`Liability
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`Product Liability
`El -630 Liquor Laws
`460flg)ortatio11:
`D 150 Recovery of Overpayment D 320 Assault. Libel &
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`0 820 Copyrights
`D 470 Racketee‘r.lnfluenced and
`Cl
`368 Asbestos Personal
`Cl 640 RR. & Truck
`& Enforcement ofJudgment
`Slander
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`D 830 Patent
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`injury Product
`D 650 Airline Regs.
`Corrupt Organizations
`l5l Medicare Act
`D 330 Federal Employers‘
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`El 660 Occupational
`R840 Trademark
`Cl 480 Consumer Credit
`Liability
`I52 Recovery of'Dei’aulted
`Liability
`PERSONAL PROPERTY
`Safety/Health
`U 490 Cable/Sat TV
`Student Loans
`E! 340 Marine
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`D 690 Other
`370 Other Fraud
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`D 8l0 Selective Service
`Cl
`(Excl. Veterans)
`D 345 Marine Product
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`Cl
`37l Truth in Lending
`Cl 850 Securities/Commodities!
`Cl 153 Recovery ofOverpayment
`Liability
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`Cl 710 Fair Labor Standards
`0 380 Other Personal
`Exchange
`ol'Veteran's Benefits
`D 350 Motor Vehicle
`Act
`Property Damage
`D 875 Customer Challenge
`0 I60 Stockholders‘ Suits
`0 355 Motor Vehicle
`D 720 Labor/Mgmt. Relations
`Product Liability
`0 385 Property Damage
`I3 I90 Other Contract
`I2 USC 34lO
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`Cl 360 Other Personal
`C1 D5 Contract Product Liability
`Product Liability ' D 730 Labor/Mgmt.Reportin’g
`D 890 Other Statutory Actions
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`D 196 Franchise
`& Disclosure Act
`El 89! Agricultural Acts
`0 740 Railway Labor Act
`Cl 892 Economic Stabilizatiormct
`CI 441 Voting
`Cl 870 Taxes (U.S. Plaintiff
`5lO Motions to Vacate U 790 Other Labor Litigation
`D 893 Environmental Matters
`D 442 Employment
`Scntcncc
`Cl 79l Empl. Ret. lnc.
`or Defendant)
`D 894 Energy Allocation Act
`D 443 Housing]
`Security Act
`Cl 87! IRS—Third Party
`Habeas Corpus:
`Cl
`2395 Freedom oflnfomiation
`Cl
`Accommodations
`26 USC 7609
`530 General
`Act
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`Cl
`E! 4441 Welfare
`535 Death Penalty
`0 900/Kppcal of'Fee Determination
`13 445 Amer. wlDisabilitics - D 540 Mandamus it Other
`Under Equal Access
`Employment
`D 550 Civil Rights
`to Justice
`0 446 Amer. wlDisabilitics - O 555 Prison Condition
`0 950 Constitutionality of
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`Other
`State Statutes
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`D 440 Other Civil Rights
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`El 86l HIA (l395ft)
`Cl 862 Black Lung (923)
`(J 863 DIWCIDIWW (405(g))
`D 864 SSID Title XVI
`D 865 RS! 405 ;
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`V.
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`‘F7 1 Original
`Proceeding
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`(Place an “X" in One Box Only)
`El 2 Removed from
`D 3
`State Court V
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`4 Reinstated or E]
`Re—t'iled-
`Reopened
`(see Vl below)
`a) Re—iiled Case El YES fl N0
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`Cl
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`d f
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`C] 6 Multidistnct
`5 a,§f,’t‘,§e‘;“,‘§i°s,,{c‘§'“
`Litigation
`(specify)
`b) Related Cases D YES EYNO
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`C] 7
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`AP cal l° Dlmricl
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`fiaggifrrg?
`Judmem
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`VI. RELATED/RE-FILED (seeimmmns
`Jupég
`CASE(S).
`second page):
`3
`Cite the US. Civil Statute under which you are filing and Write a Brief Statement of Cause (Do not cite jurisdictional statutes unless
`diversity):
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`VII. CAUSE OF
`ACTION
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`15 U.S.C. 51 l25(a) Unfair competition and false designation
`LENGTH or TRIAL via
`days estimated (for both sides to try entire case)
`DEMAND 5
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`CHECK YES only if demanded in complaint:
`JURY DEMAND:
`fll Yes D No
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`SIGNATURE
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`FOR FFICE use ONLY
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`AMOUNTD .¢'(5EcEii>'rit
`7
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`0 CHECK IF THIS is A CLASS ACTlON
`"III. REQUESTED IN
`UNDER F.R.C.P. 23
`coMpLA1N1~,
`ABOVE INFORMATION IS TRUE & CORRECT TO
`THE BEST OF MY KNOWLEDGE
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`

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`EXHIBIT B
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`Case 1:O7—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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`NIIAMI DIVISION
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`KMEDIA, INC.
`d/b/a VIVOPHONE,
`a Florida corporation,
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`i Plaintiff,
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`vs.
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`‘ VONAGE AMERICA, INC.,
`a Delaware corporation, and
`VONAGE MARKETING, INC.,
`a Delaware corporation,
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`p
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`CASE NO.: 07-20958—CIV—KING/GARBER
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`Defendants.
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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 i\/'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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`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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`

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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/GAR.BER
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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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`'
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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
`I
`I
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`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
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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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`7.
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`' Defendants deny the allegations set forth in numbered Paragraph 7 of the
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`Complaint, except to admit that Plaintiff purports to make a claim under the laws of the State of
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`Florida. Defendants affirmatively state that Plaintiff fails to assert any claims under the laws of
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`the State of California in 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
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`U.S.C. § l338(b) and 28 U.S.C. § 1367.
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`BACKGROUND FACTS
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`9.
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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 9 of the Complaint and therefore deny
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`S3.l.'l1B.
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`DM2\l 136087.]
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`2
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`Case 1:07-ov—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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`1 1.
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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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`1 Defendants deny the allegations set forth in numbered Paragraph 12 of the 1
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`Complaint.
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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
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`Defendants’ wWvv.yonage.com website is displayed in Paragraph 13, but such image islnot
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`i
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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 l5.U.S.C. §. 11251 a)
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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.
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`3 17.
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`Defendants deny the allegations set forth in 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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`’ DM2\I136087.l
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`3
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`Case 1:07-ov-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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`19.
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`Defendants deny the allegations set forth in numbered Paragraph 19 of the
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`. CASE NO.: 07-20958—CIV—KING/GARBER
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`Complaint.
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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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`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 II: FLORIDA COMMON LAW TRADEMARK INFRINGEMENT
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`26.
`Defendants incorporate by reference its answers to numbered paragraphs 1
`through 25 as if fully set forth and realleged herein.
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`I
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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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`A 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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`DM2\1 136087.!
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`4
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`Case 1:O7—cv—20958-JLK Document 19
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