Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA257728
`ESTTA Tracking number:
`12/29/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91178087
`Plaintiff
`Belden Technologies, Inc.
`Mark R. Sowers
`Lewis, Rice & Fingersh, L.C.
`500 North Broadway, Suite 2000
`St. Louis, MO 63102
`UNITED STATES
`ipdept@lewisrice.com, msowers@lewisrice.com
`Other Motions/Papers
`Mark R. Sowers
`msowers@lewisrice.com, ipdept@lewisrice.com
`/mark sowers/
`12/29/2008
`20081229173720605.pdf ( 23 pages )(1645280 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BELDEN TECHNOLOGIES, WC.
`
`Opposer,
`
`V.
`
`HUBBELL INCORPORATED
`
`Applicant.
`
`Opposition No. 91/178,087
`Application Serial No. 78/819,908
`Mark: HOMESELECT
`
`Ml.,
`
`MEMORANDUM
`
`COMES NOW Opposer Belden Technologies, Inc. (“Opposer”) and files a copy of the
`
`Complaint filed in the United States District Court for the Eastern District of Missouri, Case
`
`No, 4:08-cV—01956-ERW, as referenced as Exhibit A in the previously filed Motion and Brief
`
`in Support of Suspension of Opposition Proceedings
`
`(the ‘‘Motion’’), which was
`
`inadvertently left off the original Motion filed with the Trademark Trial and Appeal
`
`Board.
`
`Dated: December 29, 2008
`
`Respectfully submitted,
`
`LEWIS, RICE
`
`FINGERSH, L.C.
`
`
`
`500 North Broadway, Suite 2000
`St. Louis, Missouri 63102
`
`Telephone: (314) 444-7600
`Facsimile: (314) 241-6056
`E—mail: fjanoski@lewisrice.com
`E—mail: msowers@lewisrice,com
`
`Attorneys for Opposer Belden Technologies,
`Inc,
`
`1508757 01
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing document was served this 29th day of
`December, 2008 upon counsel of record by first class mail, postage prepaid, addressed as
`follows:
`
`Roberta S. Bren
`
`Beth A. Chapman
`Kyoko Irnai
`Oblon, Spivak, McClelland, Maier & Neustadt
`1940 Duke Street
`
`Alexandria, Virginia 223 l4
`
`/2”‘
`Mark R. Sowers
`
`

`
`Case 4tO8—cvA~O1956--ERW Document 1
`
`Filed 12/17/2008
`
`Page 1 of 15
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MISSOURI
`EASTERN DIVISION
`
`Case N0. __
`
`_,
`
`JURY TRIAL DEMANDED
`
`) ) )
`
`) )
`
`) )
`
`)
`
`) )
`
`)
`
`BELDEN TECHNOLOGIES, INC., a
`
`Delaware corporation,
`
`Plaintiff,
`
`Vi
`
`SUBBELL INCORWRATED’ 2‘
`Onnectrcut corporation,
`
`Defendant
`
`COMPLAINT
`
`COMES NOW Plaintiff Belden Technologies, Inc. (“Plaintiff” or “Belden”), by and
`
`through its undersigned attorneys, and for its Complaint against Defendant Hubbell Incorporated
`
`(“Defendant” or “Hubbell”), states as follows:
`
`INTRODUCTION
`
`1.
`
`This is an action at
`
`law and in equity for trademark infringement and unfair
`
`competition arising under federal statutes, with state and/or common law claims for trademark
`
`infringement, unfair competition, and dilution Plaintiff Belden seeks damages, attorneys’ fees,
`
`and costs and prelirrrinary and permanent injunctive relief
`
`9
`
`Defendant is offering for sale and advertising electrical wires and accessories
`
`using confusingly similar
`
`imitationsfof Plaintiff’s registered and common law trademarks
`
`Plaintiff has not authorized Defendant to sell such electrical wires and accessories bearing
`
`Plaintiffs trademarks. Moreover, Defendant’s products are not connected to or affiliated with
`
`Plaintiff in any manner. Defendant’s use of confusingly similar imitations of Plaintiffs federally
`
`M77040 04
`
`

`
`Case 4 08—cv—0i956—ERW Document 1
`
`Filed 12/1772008
`
`Page 2 of 15
`
`registered and common law marks for its products, services and advertisements is likely to cause
`
`confusion and to deceive consumers and the public regarding their source, and Defendant’s
`
`actions dilute and tarnish the distinctive quality of Plaintiffs marks,
`
`JURISDICTION AND VENUE
`
`3..
`
`Plaintiff asserts claims under Sections 32 and 43 of the Lanham Act, 15 UISHC‘ §§
`
`ll 14 and 1125 This Court, therefore, has subject matter jurisdiction under to Section 39 of the
`
`Lanham Act, 15 U.S.C, § 1121 and 28 U.S..C. §§ 1331 and 1338.
`
`4..
`
`This Court has subject matter jurisdiction over the related state law and common
`
`law claims under 28 U,S.C. §§ 1338 and 1367 in that the state law and common law claims are
`
`so related to the other claims in the action that they form part of the same case or controversy.
`
`5
`
`In addition, this Court has subject jurisdiction pursuant to 28 U S C § l332.(a)
`
`because this action is between citizens of different states and the amount in controversy exceeds
`
`$75,000,.
`
`6,,
`
`Venue in this district is proper under 28 U SC § 1391 because a substantial part
`
`of the events or omissions giving rise to Plaintiff’s claims occurred in this District and Defendant
`
`is subject to personal jurisdiction in this District
`
`7
`
`This Court has personal jurisdiction over Defendant because, on information and
`
`belief, Defendant is doing business within this District, has engaged in acts or omissions within
`
`this District causing injury in this District, has engaged in acts or omissions outside of this
`
`District causing injury within this District or has otherwise made or established contacts with this
`
`District sufficient to permit the exercise of personal jurisdiction over Defendant.
`
`i\.)
`
`

`
`Case 4 08—cv~01956A~ERW Document 1
`
`Filed 12/17/2008
`
`Page 3 of 15
`
`PARTIES
`
`8..
`
`Plaintiff Belden Technologies, Inc.
`
`is a Delaware corporation whose business
`
`address is 7701 Forsyth Boulevard, Suite 800, St Louis, Missouri 63105 .
`
`9.
`
`On information and belief, Defendant Hubbell Incorporated.
`
`is a Connecticut
`
`corporation whose address is 584 Derby Milford Road, Orange, Connecticut 06477.
`
`FACTS COMMON_.TO ALL COUNTS
`
`10..
`
`Plaintiff Belden is a world-class manufacturer of signal transmission products
`
`including products for the entertainment, residential, industrial and security markets. Belden
`
`also is one of the largest U.S.--based manufacturers of high-speed electronic cables.
`
`11.
`
`Belden provides signal
`
`transmission solutions for a wide range of markets.
`
`Belden’s products include copper and fiber optic cables, connectors, cable management products,
`
`and Power over Ethernet.
`
`BELDEN’S HOMECHOICE MARKS
`
`1?
`
`Belden is the owner of numerous trademarks associated with the offering of its
`
`electrical wires, cables and accessories
`
`13
`
`At
`
`least as early as September 2001, Belden began using its HOMECHOICE
`
`word mark (the “HOMECHOICE Word Mark”) in connection with the sale of various electrical
`
`wires, cables and accessories.
`
`14.
`
`Belden thereafter applied for and was granted federal trademark registration for
`
`the HOMECHOICE Word Mark.
`
`15..
`
`On January 7, 2003, the United States Patent and Trademark Office (“USPTO”)
`
`issued Reg. No 2,672,851, granting registration to Belden for the HOMECHOICE Word Mark,
`
`in connection with electrical cables for use with residential automatically controlled systems,
`
`

`
`Case 4 08~cv~01956—-ERW Document 1
`
`Filed 1211 7/2008
`
`Page 4 of 15
`
`apparatuses, or processes. This mark has become incontestable as affidavits have been filed
`
`pursuant to Sections 8 and 15 of the Lanham Act, 15 USC §§ 1058 and 1065.. A copy of the
`
`Certificate of Registration for this mark is attached hereto as Exhibit 1..
`16
`At least as early as September 2002, Belden began using its HOMECHOICE logo
`
`mark (the “HOMECHOICE Logo Mark”) in connection with the sale of various electrical wires,
`
`cables and accessories as depicted below:
`
`
`
`17.
`
`Belden thereafter applied for and was granted federal trademark registration for
`
`the HOMECHOICE Logo Mark.
`
`18.
`
`On November 2, 2004,
`
`the USPTO issued Reg. No. 2,899,359, granting
`
`registration to Belden for the HOMECHOICE Logo Mark, in connection with electrical cables
`
`for use with residential automatically controlled systems, apparatuses or processes. A copy of
`
`the Certificate of Registration for this mark is attached hereto as Exhibit 2.
`
`19
`
`The HOMECHOICE Logo Mark and HOMECHOICE Word Mark are
`
`collectively referred to herein as the “HOMECI-IOICE Marks ”
`
`20
`
`Belden’s HOMECHOICE Marks
`
`are used in the company’s brochures,
`
`catalogues, advertisements, websites and other promotional items in connection with Belden’s
`
`sales of electronic wires, cables and accessories, among other things.
`
`

`
`Case 4.08~cv—»01956—ERW Document 1
`
`Filed 12/‘17.s'2008
`
`Page 5 of 15
`
`21
`
`For many years, Belden extensively and continuously used and promoted the
`
`HOMECHOICE Marks in connection with electrical wires, cables and accessories
`
`22.
`
`Belden has expended considerable effort and resources in marketing, advertising,
`
`promoting and selling its electrical wires, cables and accessories under the HOMECHOICE
`
`Marks throughout
`
`the United States and worldwide and Belden prominently displays the
`
`HOMECHOICE Marks in its advertising for its electrical wires, cables and accessories to
`
`promote the same to current and potential customers,
`
`23..
`
`Belden’s HOMECHOICE Marks
`
`are valid, distinctive,
`
`or have acquired
`
`distinctiveness, and are protectable at common law,
`
`_QEEENDANT’S UNLAWFUL ACTIVITIES
`
`24.
`
`On information and belief, Defendant engages in the business of selling electrical
`
`switches, receptacles and outlet covers, outlet wall plates and various other electrical accessories
`
`25.
`
`On June 28, 2007, Belden instituted an Opposition Proceeding, No, 91178087,
`
`before the Trademark Trial and Appeal Board opposing Defendant’s application for registration
`
`of a trademark, based upon Hubbe1l’s indicated intent to use a confusingly similar‘ imitation of
`
`Belden’s HOMECHOICE Marks for use in Defendant’s business of selling electrical accessories
`
`26,
`
`Since commencement of the Opposition Proceeding, Belden has learned and has
`
`reason to believe that Defendant now markets, sells and offers for sale goods in interstate
`
`commerce that bear one known confusingly similar imitation of Belden’s HOMECHOICE
`
`marks, as depicted below:
`
`

`
`Case 4 O8-cv—Oi956—ERW Document 1
`
`Filed 12/17/2008
`
`Page 6 of 15
`
`Belden’s HOMECHOICE Mark
`
`
`
`Defendant’s Imitation
`
`fig
`
`
`Setting the srandardqwire toWI.
`
`
`27
`
`The goods distributed, offered for sale and sold by Defendant are not manufactured
`
`by Beiden, nor
`
`is Defendant associated or connected with Belden, or
`
`licensed, authorized,
`
`sponsored, endorsed or approved by Belden in any way.
`
`28.
`
`Defendant’s use of the term “homeSELECT” and associated design in marketing
`
`its electrical wiring and accessories is strikingly similar to Belden’s HOMECHOICE Marks.
`
`29.
`
`Notably,
`
`the first portion of Defendant’s infringing term “homeSELECT”—-
`
`“HOME”—-is identical to the first portion of Belden’s HOMECHOICE Marks Moreover, the
`
`

`
`(Jase 408-cv—01956-ERW Document 4.
`
`Filed 12/17/2008
`
`Page 7 of 15
`
`second half of Defendant’s infringing terrn——“SELECT”—»is a synonym for the second portion
`
`of Belden’s HOMECHOICE Marks, “CHOICE.”
`
`30,.
`
`Defendant’s infringing phrase and logo also incorporates the roofline of a house
`
`over the text “homeSELECT,” just as Belden’s HOMECHOICE Logo Mark uses a roofline over
`
`the text HOMECHOICE Additionally, the roofline of both logos is off—center' so that the peak
`
`of the roof is toward the left side of the text.
`
`31
`
`Defendant’s use of the confusingly similar imitations of Belden’s HOMECHOICE
`
`Marks is likely to deceive, confuse and mislead prospective purchasers and current purchasers
`
`into believing that electrical wiring and accessories sold by Defendant are manufactured by,
`
`authorized by or in some manner associated with Belden, when they are not. The likelihood of
`
`confusion, mistake and deception engendered by Def'endant’s misappropriation of Belden’s
`
`HOMECHOICE Marks
`
`is causing irreparable harm to the goodwill symbolized by the
`
`HOMECHOICE Marks and the reputation for quality that the HOMECHOICE Marks embody
`
`32.
`
`Defendant’s activities are likely to cause confusion before, during and after the
`
`time of purchase because purchasers, prospective purchasers and others viewing Defendant’s
`
`electrical wiring and accessories at the point of sale or otherwise are likely—due to Defendant’s
`
`use of confusingly similar imitations to the I-IOMECI-IOICE Marks—-vto mistakenly attribute the
`
`goods to Belden. This is particularly damaging with respect to those persons who perceive a
`
`defect or lack of quality in Defendant’s products. By causing such a likelihood of confusion,
`
`mistake and deception, Defendant is inflicting irreparable harm to the goodwill symbolized by
`
`the HOMECHOICE Marks and the reputation for quality that
`
`the HOMECHOICE Marks
`
`embody,
`
`

`
`Case 4 {)8—cv—O1956~ER\/V Document 1
`
`Filed 12/17/2008
`
`Page 8 of 15
`
`33.
`
`On information and belief, Defendant continues to use confusingly similar
`
`imitations of Belden’s HOMECHOICE Marks in connection with the sale of products that are
`
`directly competitive to, are closely associated with, and/or sold in the same channels of trade and
`
`commerce as those goods offered by Beldent,
`
`34.
`
`Defendant began selling goods bearing the infringing homeSELECT term and
`
`associated design well after Belden established protectable rights in its HOMECHOICE Marks.
`
`35,
`
`On information and belief, Defendant knowingly, willfully,
`
`intentionally and
`
`maliciously adopted and used confusingly similar imitations of Belden’s HOMECHOICE Marks
`
`to confuse customers and potential customers and trade on the reputation and goodwill
`
`associated with Belden and its HOMECHOICE Marks
`
`36
`
`The goodwill of Belden’s HOMECHOICE Marks is of great value, and Belden
`
`will stiffer irreparable harm should infringement, false designation of origin, unfair competition,
`
`and/or other violations of Belden’s rights be allowed to continue to the detriment of Beldent
`
`37,
`
`Defendant’s unlawful conduct will continue unless enjoined by this Court
`
`COUNT I
`
`Federal Trademark Infringement
`(15 U.S.C. § 1114(a))
`
`38.
`
`Plaintiff incorporates by reference the allegations set
`
`forth in the preceding
`
`paragraphs as if fully set forth herein.
`
`39
`
`Plaintiff owns and enjoys rights in and to the federally registered HOMECHOICE
`
`Word Mark and HOMECHOICE Logo Mark, which rights are superior to any rights which
`
`Defendant may claim in any form or style with respect to its infringing phrase “homeSELECT”
`
`and associated design
`
`

`
`(Ease 4‘08—~cv~O1956»»ER\N Document 1
`
`Filed 12/17/2008
`
`Page 9 of 15
`
`40.
`
`Defendant’s use of confusingly similar imitations of Belden’s federally registered
`
`HOMECHOICE Marks is likely to cause confusion, deception and mistake by creating the false
`
`and misleading impression that Defendant’s goods are manufactured or distributed by Belden, or
`
`are associated or connected with Belden, or have the sponsorship, endorsement or approval of
`
`Belden
`
`41
`
`Defendant has used marks that are confusingly similar
`
`to Be1den’s federally
`
`registered HOMECHOICE Marks in violation of 15 U S C § H14, and Defendant’s activities
`
`have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion
`
`and deception of customers, potential customers and members of the public and injury to
`
`Belden’s
`
`goodwill
`
`and
`
`reputation
`
`as
`
`symbolized
`
`by Belden’s
`
`federally
`
`registered
`
`HOMECHOICE Marks, for which Belden has no adequate remedy at law,
`
`42
`
`Defendant’s actions demonstrate an intentional, willful, and malicious intent to
`
`trade on the goodwill associated with Belden’s federally registered HOMECHOICE Marks to
`
`Belden’s great and irreparable injury,
`
`43
`
`The injury is continuing and is immediate and irreparable and Belden lacks an
`
`adequate remedy at law,
`
`44
`
`Defendant has caused and is likely to continue causing substantial injury to the
`
`public and to Belden, and Belden is entitled to injunctive relief and to recover Defendant’s
`
`profits, actual damages, enhanced profits and damages, costs and reasonable attorneys‘ fees
`
`pursuant to 15 U S C, §§ 1114, 1116 and 1117, and other applicable law,
`
`

`
`Case 4,08-cv—01956~ERW Document 1
`
`ii-‘iied 12/1772008
`
`Page 10 of $5
`
`COUNT 11
`
`Federal Unfair Competition
`(15 U.S.C. § 1125(3))
`
`45
`
`Plaintiff
`
`incorporates by reference the allegations set forth in the preceding
`
`paragraphs as if fully set forth herein,
`
`46
`
`Plaintiff owns and enjoys rights in and to the HOMECHOICE Word Mark and
`
`I-IOMECHOICE Logo Mark, which rights are superior to any rights which Defendant may claim
`
`in any form or style with respect its infringing phrase “homeSELECT” and associated design.
`
`47
`
`Def'endant’s use of
`
`a
`
`confusingly similar design and term to Belden’s
`
`HOMECHOICE Marks has caused and is likely to cause confusion, deception and mistake by
`
`creating the false and misleading impression that Defendant’s goods are distributed by Belden, or
`
`are affiliated, connected, or associated with Belden, or have the sponsorship, endorsement, or
`
`approval of Belden
`
`48
`
`Defendant has made false representations, false descriptions and false designations
`
`of origin of its goods in violation of 15 USMC § ll25(a), and Defendant’s activities have caused
`
`and, unless enjoined by this Court, will continue to cause a likelihood of confusion and deception
`
`of customers, potential customers and members of the public and injury to Be1den’s goodwill
`
`and reputation as symbolized by Belden’s HOMECHOICE Marks, for which Belden has no
`
`adequate remedy at law.
`
`49.
`
`Defendant’s actions demonstrate an intentional, willful, and malicious intent
`
`to
`
`trade on the goodwill associated with Belden’s HOMECHOICE Marks to Belden’s great and
`
`irreparable injury‘.
`
`50.
`
`The injury is continuing and is immediate and irreparable and Belden lacks an
`
`adequate remedy at law.
`
`10
`
`

`
`Case 4 O8~-cv~O1956«~ER\/V Document 1.
`
`Filed 12/‘l 712008
`
`Page ii of ‘:5
`
`51.
`
`Defendant has caused and is likely to continue causing substantial injury to the
`
`public and to Belden, and Belden is entitled to injunctive relief and to recover Defendant’s
`
`profits, actual damages, enhanced profits and damages, costs and reasonable attorneys’ fees
`
`pursuant to 15 U SC. §§ 1125(a), 1116 and 1117, and other applicable law.
`
`QOUNT III
`Missouri State Trademark Dilution
`(Missouri Revised Statute § 417.061, et seq.)
`
`52
`
`Plaintiff
`
`incorporates by reference the allegations set forth in the preceding
`
`paragraphs as if fully set forth herein
`
`53
`
`Belden owns and enjoys common law rights to the HOMECHOICE Marks that are
`
`superior to any rights which Defendant may claim in any form or style with respect to its
`
`infringing phrase “homeSELECT” and associated design
`
`54.
`
`Defendant’s use of the infringing homeSELECT term and associated design dilutes
`
`and is likely to continue to dilute the distinctiveness of Belden’s HOMECHOICE Marks by
`
`eroding the public’s exclusive identification of the HOMECHOICE Marks with Belden,
`
`tarnishing and degrading the positive associations of the HOMECHOICE Marks, and otherwise
`
`lessening the capacity of the HOMECHOICE Marks to identify and distinguish Belden’s
`
`products.
`
`55
`
`Defendant is causing and will continue to cause irreparable injury to Belden’s
`
`goodwill and reputation, and dilution of the distinctiveness and value of Belden’s distinctive
`
`HOMECHOICE Mark in violation of Missouri antidilution statute, Mo Rev‘ Stat. § 417i.061(1).
`
`56.
`
`Defendant’s actions demonstrate a willful and malicious intent to trade on the
`
`goodwill associated with Be1den’s HOMECHOICE Marks to Belden’s great and irreparable
`
`injury
`
`11
`
`

`
`(Jase 4:08—cv—()1956~ERW Document 1
`
`Filed 12/1712008
`
`Page 12 of 15
`
`57.
`
`The injury is continuing and is immediate and irreparable and Belden lacks an
`
`adequate remedy at law.
`
`58
`
`Defendant has caused and is likely to continue causing substantial injury to the
`
`public and to Belden, and Belden is entitled to injunctive relief, damages, costs and reasonable
`
`attorneys’ fees.
`
`COUNT IV
`
`Common Law Trademark Infringement
`
`59
`
`Plaintiff incorporates by reference the allegations set forth in the preceding
`
`paragraphs as if fully set forth herein.
`
`60
`
`Belden owns and enjoys common law rights to the HOMECHOICE Marks that are
`
`superior to any rights which Defendant may claim in any form or style with respect to its
`
`infringing phrase “homeSELECT” and associated design.
`
`61.
`
`Defendant’s use of
`
`a
`
`confusing similar
`
`design and term to Belden’s
`
`HOMECHOICE Marks has caused and is likely to cause confusion, deception and mistake by
`
`creating the false and misleading impression that Defendant’s goods are distributed by Belden, or
`
`are affiliated, Connected, or associated with Belden, or have the sponsorship, endorsement, or
`
`approval of Belden.
`
`62.
`
`Defendant’s acts constitute common law trademark infringement in violation of
`
`the common law
`
`63
`
`Defendant’s actions demonstrate a willful and malicious intent to trade on the
`
`goodwill associated with Belden’s HOMECHOICE Marks to Belden’s great and ir'r'epar'able
`
`injury.
`
`64.
`
`The injury is continuing and is immediate and irrreparable and Belden lacks an
`
`adequate remedy at law
`
`12
`
`

`
`Case 4 O8-cv-~O‘l956-ERW Document ‘l
`
`Filed 1211712008
`
`Page 13 of 15
`
`6.5
`
`Defendant has caused and is likely to continue causing substantial injury to the
`
`public and to Belden, and Belden is entitled to injunctive relief, damages, costs and reasonable
`
`attorneys’ fees.
`
`COUNT V
`
`Common Law Unfair Competition
`
`66
`
`Plaintiff incorporates by reference the allegations set forth in the preceding
`
`paragraphs as if fully set forth herein.
`
`67
`
`Belden owns and enjoys common law rights to the HOMECHOICE Marks that are
`
`superior to any rights which Defendant may claim in any form or style with respect to its
`
`infringing phrase “homeSELECT” and associated design
`
`68
`
`Defendant’s
`
`use
`
`of
`
`a
`
`confusing similar design and
`
`term to Belden’s
`
`HOMECHOICE Marks has caused and is likely to cause confusion, deception and mistake by
`
`creating the false and misleading impression that Defendant’s goods are distributed by Belden, or
`
`are affiliated, connected, or associated with Belden, or have the sponsorship, endorsement, or
`
`approval of Belden.‘
`
`69
`
`Defendant’s acts constitute common law unfair competition in violation of the
`
`common law.‘
`
`70
`
`Defendant’s actions demonstrate a willful and malicious intent to trade on the
`
`goodwill associated with Belden’s HOMECHOICE Marks to Belden’s great and irreparable
`
`injury
`
`71
`
`The injury is continuing and is immediate and irreparable and Belden lacks an
`
`adequate remedy at law.
`
`13
`
`

`
`Case 4 O8i—cv—O‘l956—ERW Document 1
`
`Filed 12i'T7.’2008
`
`Page iii of 15
`
`72.,
`
`Defendant has caused and is likely to continue causing substantial injury to the
`
`public and to Belden, and Belden is entitled to injunctive relief, damages, costs and reasonable
`
`attorneys’ fees.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff Belden Technologies, Inc. respectfully demands judgment in its
`
`favor and against Defendant Hubbell Incorporated and prays:
`
`those in concert and
`its agents, employees, assigns, and all
`That Defendant,
`A.
`privity with him be temporarily, preliminarily, and permanently enjoined from:
`
`manufacturing, distributing, marketing, selling or offering for sale any
`a,
`goods which bear any colorable imitation of
`the HOMECHOICE Marks alone in
`combination with any other words or symbols, including but not limited to, using the
`infringing “homeSELECT” term and associated design;
`
`using any terms, marks, words or symbols which so resemble either of the
`b.
`HOMECHOICE Marks or any names, marks or designations of Belden as to be likely to
`cause confusion, mistake, deception or misunderstanding in connection with the
`manufacture, distribution, advertising, promotion or sale of any product which is not
`authorized by Belden, including by not limited to, the infringing “homeSELECT” term
`and associated design;
`
`expressly or by implication, representing that Defendant and its goods are
`cr
`those of or are affiliated with, or authorized, licensed, endorsed or sponsored by Belden
`or it subsidiaries, affiliates or related companies;
`
`making or engaging in any express or implied false descriptions, false
`d
`designations or false representation with respect to the products of Defendant in violation
`of Section 32 or Section 43(a) of the Lanham Act; and
`
`otherwise infringing upon the HOMECHOICE Marks
`e
`competing with Belden in any manner whatsoever;
`
`or unfairly
`
`That Belden be awarded damages for Defendant’s infringement and dilution of
`B.
`Belden’s HOMECHOICE Marks and Defendant’s unfair
`trade practices as they relate to
`Belden’s HOMECHOICE Marks, such damages and monetary relief to compensate Belden for
`all losses, including loss ofrevenue and goodwill;
`
`C
`
`That Belden be awarded treble damages as permitted by 15 US C § 1117;
`
`That Defendant, pursuant to Missouri Revised Statute § 417 061, be enjoined
`D.
`from using the infringing term “homeSELECT” and associated design or any substantially
`similar phrase or design;
`
`14
`
`

`
`Case 4408-eve-01956~ERW Document 1
`
`Filed 12/17/2008
`
`Page 1501‘ 15
`
`That Belden be awarded punitive damages due to Defendant’s intentional, willful,
`E
`and malicious infringement of Belden’s trademarks and reckless indifference to Belden’s rights;
`
`An assessment of attorneys’ fees and costs, pursuant to 15 U.S.C. § 1117, against
`F.
`Defendant and for Belden; and
`
`That Belden be awarded such other and further relief as provided in the Lanham
`G
`Act and other applicable law, and as the Court may deem appropriate, along with prejudgment
`interest
`
`Dated: December 17, 2008
`
`Respectfully submitted,
`
`LEWIS, RICE & FINGERSH, L.C.
`
`By:
`
`/s/ Frank B. Janoski
`Frank B Janoski, #3480
`
`.________
`By: _M_Br.flge_tfi9x
`Bridget Hoy, #109375
`
`500 North Broadway, Suite 2000
`St“ Louis, Missouri 63102
`
`Telephone: (314) 444-7600
`Facsimile: (314)241-6056
`E-mail: fjanoski@1ewisrice com
`E---mail: bhoy@1ewisrice com
`
`Attorneys for
`Plaintzfi‘ Belden Technologies, Inc‘.
`
`15
`
`

`
`Case 4 O8A—<:v-O‘;956—ERVV Document 1-2
`
`Fited 12.117/2008
`
`Page 4. of 1
`
`Int. C1,: 9
`
`Prior U.S. Cls.: 21, 23, 26, 36, and 38
`
`_
`Reg. No. 2,672,831
`
`United States Patent and Trademark Office
`Registered Jan. 7, 2003
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`HOMECHOICE
`
`BEI.DEN WIRE AND CABLE COMPANY (DELA--
`WARE CORPORATION)
`.2200 US. HIGHWAY 27 SOUTH
`R_ICI-IMOND, IN 47374
`
`FOR: ELECTRICAL CABLES FOR USE WITH
`RESIDENTIAL AUTOMATICALLY CONTROLLED
`SYSTEMS, APPARATUSES, OR PROCESSES,
`IN
`CLASS 9 (U S CI_S 21, 23, '36, 36 AND 38)
`
`FIRST USE 9-02001; IN COMMERCE 9->0-2001
`
`SN 76-140,541, FILED 10-—4w2000
`
`RUDY R SINGLETON, EXAMINING ATTORNEY
`
`
`
`

`
`Case 4 08-cv—O1956-ERW Document 1-3
`
`Fifed 12/1‘7;’2008
`
`Page 1 of 1
`
`Int. Cl.: 9
`
`Prior U.S. CIs.: 21, 23, 26, 36 and 38
`
`Reg. No. 2,899,359
`United States Patent and Trademark Office Registered Nov. 2, 2004
`
`
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`.__.J"‘\~....._.____...
`HQMECHOICE
`
`INC (DELAWARE
`BELDEN TECHNOLOGIES,
`CORPORATION)
`7701 FORSYTH BLVD , SUITE 800
`ST LOUIS, MO 63105
`
`FOR: ELECTRICAL CABLES FOR USE WITH
`RESIDENTIAL AUTOMATICALLY CONTROLLED
`SYSTEMS, APPARATUSES OR PROCESSES, IN
`CLASS 9 (U S CLS 21, 23, 26, 36 AND '38).
`
`FIRST USE 90-2002; IN COMMERCE 9-0-2002
`
`SER NO 78-170,205, FILED 10-2-2002
`
`KARLA PERKINS, EXAMINING ATTORNEY
`
`
`
`

`
`Case 408‘-CV—Ol 958—ER\/V
`
`Document 141
`
`Filed 12/17/2008
`
`Page 1 of i
`
`sets 44 (Rev lli04)
`
`CIVIL COVER SHEET
`
`uired by law, except as pr uyided
`lhe IS 44 civil cover sheet and the information contained herein neither replace not supple
`e Clerk oi‘ ourt for the purpose ofrnitrating
`the United State
`ment the tiling and service of pleadings or other papers as re
`s in September I974, is required for the use oft
`by local rules ofcoutt This form, approved by the ludicial Conference ot
`the civil docket sheet
`(SEE INSTRUCTIONS ON ‘THE REVERSE OF THE FORM)
`
`
`PLAINTIFFS
`l. (a)
`BELDEN TECHNOLGGI ES ,
`
`INC‘
`
`DEFENDANTS
`
`HUBBELL INCORPORATED
`
`County of Residence of First Listed Defendant
`(IN U S PLr\lNTlFF CASES ONLY)
`lN LAND CONDEMNATION CASES. USE. THE LOCAI ION OF THE
`I AND INVOL VED
`
`NO IE:
`
`
`
`Attorneys (tr Known)
`
`
`
`,44_,,‘,.,'.,,
`
`Citizen of This State
`
`Incorporated or Principal Place
`of Business In This State
`
`4
`
`Citizen oi Another State
`
`Cl 2
`
`D 2
`
`Incorporated and Principal Place
`of Business In Another Stare
`
`D 5
`
`D 3
`
`Citizen or Subject ol 3
`
`-‘J 6
`
`U 6
`
`Foreign Nation
`D 3
`U 3
`
`....._.______._._..______.
`
`BANKRUPTCY __
`____
`U 422 Appeal 28 USC I58
`C] 423 Withdrawal
`28 USC 157
`
`OTHER STATUTES ______
`_
`rortrratrurtrr/Ptsmplv
`U 400 State Rcapportionureur
`D 610 Agrictrltrrre
`C] 410 Antitrust
`Cl 620 Other Food & Drug
`D 430 Banks and Banking
`Cl 625 Drug Related Seizure
`U :50 Contntrrtce
`of Property2l USC 831
`PROPERTY RlGHTS___ Cl 460 Deportation
`U 630 Liquor Laws
`U 820 Copyrights
`Cl 470 Racketeer lnfltterrcetl and
`C] 640 R R S: Truck
`U 830 Patent
`Cornrpt Orgrrnizariorrs
`CI 650 Airline Regs
`B 840 Trademark
`J 480 Consunrcr Credit
`D 660 Occupational
`C] 490 Cable/Sat IV
`Safety/Health
`__________
`D 3 I0 Selective Scryice
`D 690 Other
`Lfiaon _‘ ' SOCIAL secumrv '— ‘J 350 Securities/Corrtrnoditiesl
`'
`D 710 Fairlabor Standards
`3 86! HIA (I395fi)
`Exchange
`Act
`3 862 Black Lung (923)
`U 375 Customer Ciraliertgc
`D 720 Labor/Mgnrt Relations
`3 863 DIWC/DIWW (4o5(g))
`t2 USC 34:0
`[3 730 Labor/Mgmt Reporting 3 864 SSID Title XVI
`3 890 Other Stzrttrtory Actions
`& Disclosure Act
`Cl 865 RSI (40507))
`_______ D 891 Agriculttrrztl Acts
`740 Railway Labor Act
`FEDERAL TAX SUITS
`D 892 Econonric Stabilization Act
`Cl
`790 Other Labor Litigation
`E3 870 Taxes (U 3 Plaintiff
`3 393 Errvironnrental Matters
`Cl
`Cl 79l Empl Rot hi:
`or Defendant)
`Cl 894 Energy Allocation Act
`Security Act
`C} 371 IRS—Third Party
`U 395 Freedom of lnfonnatiznr
`26 USC 7609
`Act
`D
`900Appea| of fee Dctcrmirration
`Under Equal Access
`to Justice
`950 Corrstinttionality of
`State Statutes
`
`O
`
` .___..
`-x in 0tteB(3x
`In. CrTtzENsfii> or PRINCIPAL. PARTlES(t=nce
`(For Diversity Cases Otrly)
`and 011:: Box for Dctbrrdarrt)
`171 F
`DEF
`PT F
`DEF
`U l
`U l
`L3
`D 1
`
`(b) County of’Residence ofFirst listed Plaintiff
`(EXCEPT IN U S PLAINTIFF CASES)
`
`St.
`
`Louis County
`
`(C) Attorney's (Firm Name, Address, and Telephone Number)
`Lewis, Rice & Fingersh, L C , 500 N Broadway, Suite
`MO 63102
`
`2000, St Louis,
`
`ii. BAS [3 OF JURI-§-ISICTION (Place an X" in One Box Only)
`Tl
`I
`U S Government
`E 3 Federal Question
`Plaintifl
`(U S Govcmmerrt Not a Party)
`
`U 2
`
`U S Governrrrenr
`Dcferrdarrt
`
`U 4 Diversity
`(lndiczrte Citizenship of Parties in Item Ill)
`
`
`
`
`
`in One Rox Only)
`‘-\7:‘—i\_l--ATUR—l§-6i:S UIT (Place an
`‘V
`roars __
`' "
`...._......C_E:\Q._.._
`PERSONAL INJURY
`PERSONAL KN IURY
`C3 llolnsurance
`0 I20 Marine
`3 l0 Airplane
`362 Personal lrrjury --
`3 130 Miller Act
`3lS Airplane Product
`Med Malpractice
`Liability
`U 365 Personal injury
`3 1-10 Negotiable lnstrunrent
`320 Assault, Libel &
`Product 1 iability
`C) 130 Recovery of Overpayment
`Slander
`Cl 368 Asbestos Personal
`& Ertfotcerrterrt ol lutlgnrcrrt
`'3 ISI Medicare Att
`330 Federal Employers’
`Injury Product
`Liability
`Liability .
`T]
`lS2 Recovery 01 Defaulted
`340 Marine
`PERSONAL PROPER‘! Y
`Student Loans
`345 Marine Product
`Cl 370 Other Fraud
`(Excl Veterans)
`D I53 Recovery of Ovcrpayrnerrt
`Liability
`Cl 371 Tnttlr in Lending
`350 Motor Vehicle
`Cl 380 Other Personal
`ofVeteran's Berreiits
`355 Motor Vehicle
`Property Damage
`-3 I60 Stockholders’ Suits
`:3 W0 Other Contract
`Product Liability
`*3 385 Property Damage
`360 Other Personal
`Product Liability
`3 195 Contract Product Liability
`ln'ur
`Z)
`I96 Franchise
`________
`PRISONER PE'l‘l'l‘lONS_
`_ crvrt. RIGHTS
`i:__.fi£'l‘-.-.fl§§.B_IY__.
`510 Motions to Vacate
`U 210 Land Condenrrratiorr
`441 Voting
`Cl
`Sentence
`Cl 220 Foreclosure
`442 Employment
`Habeas Corpus:
`443 Housing‘
`Cl 3130 Rem Lease 8; Ejecmrerrt
`530 General
`Accortmrodatiorrs
`D 240 Torts to Laird
`535 Death Penalty
`444 Welfare
`D 245 ion Productl.izrbility
`540 Mandanrrrs & Other
`445 Amer w/Disabilities -
`C] 290 All Other Real Properly
`550 Civil Rights
`Employment
`555 Prison Condition
`4‘-l6 Arncr w/Disabilities ~
`Other
`440 Other Civil Rights
`
`C]
`
`
`
`ODDDD
`
`__
`
`
`
`|DDCIClC]ClU|UUUQCJUCIOD
`
`V, 0RiCiN
`
`Cl
`
`5
`
`_.
`(Place an X“ in One Box Only)
`i'ransf'ert‘ed torn
`'-~
`35 Multidistrict
`D 4 Reinstated or
`another drstrtct
`D 3 Remanded from
`0 2 Removed fiom
`L.rtiaation_________
`llate Court
`Original
`35‘
`Reopened __
`
`State Court
`Agge
`._.____(§t2E£!.‘zl___.__._
`._
`_____-_P£se.r1ue__.-___
`Cite the US. Civil Statute under which you
`are filing (Do not cite jurisdictional statutes unless diversity)‘
`
`
`
`ll5_USC 1114, 15 USC ll25_____
`_______
`‘/l.. CAUSE OF ACTION
`Bricfdescription ofuatrse:
`Trademark infringement.
`
`[3 CHECK IF rnrs IS A CL ASS ACTION
`UNDER F RC P 23
`
`DEMAND S
`
`
`
`
`
`JURY DEMAND:
`
`8 Ycs
`
`
`vn. REQUESTED IN
`_____(I_0t\'lPLAlN’l‘:
`vur. RELATED CASE(S)
`IFANY
`
`DATE
`
`12/17/2008
`”r'o'R"o’r'r'=tca use ONLY
`
`RECFJPT 9
`
`Ar\rlOUNl'
`
`APPLYING IFP
`
`(See instructions):
`
`DOCKET NUMBER
`
`
`JUDGE
`SIGNATI IRF. OF ATTORNEY OF RECORD
`S1.
`