Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA186164
`ESTTA Tracking number:
`01/11/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180509
`Plaintiff
`Derek Andrew, Inc.
`David H. Deits
`Davis Wright Tremaine LLP
`Suite 22001201 Third Avenue
`Seattle, WA 98101
`UNITED STATES
`davedeits@dwt.com
`Other Motions/Papers
`David H. Deits
`davedeits@dwt.com, michellewebb@dwt.com
`/David H. Deits/
`01/11/2008
`Declaration.pdf ( 55 pages )(2840123 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`I hereby certify that on the date specified below, this correspondence is electronically filed
`with the United States Trademark and Trial Appeal Board Via the ESTTA electronic filing
`system.
`
`TTAB
`
`January 11, 2008
`Date
`
`s/David H. Deits/
`David H. Deits
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`DEREK ANDREW, INC.,
`
`Opposer,
`
`V.
`
`VITAL PHARMACEUTICALS, INC.,
`
`Applicant.
`
`\_/\_/\_/\_/\_/\_/\_/\_/\_/\_/
`
`OPPOSITION NOS. 91180509 and
`91180510
`
`Serial Nos. 77150066 and 77150073
`
`Docket No. 66284-100 and 66284-101
`
`DECLARATION OF DAVID H. DEITS
`IN SUPPORT OF OPPOSER’S
`MOTION FOR SUSPENSION OF PROCEEDINGS
`
`1, DAVID H. DEITS declare and state as follows:
`
`1.
`
`I am a partner in Davis Wright Tremaine LLP, which represents Opposer
`
`Derek Andrew, Inc., in the aboVe—captioned opposition. I have personal knowledge of the
`
`statements in this declaration except where the context indicates otherwise. I make this
`
`declaration in support of Opposer’s Motion for Suspension of Proceedings.
`
`2.
`
`Attached as Exhibit A hereto is a true and correct copy of the Complaint filed
`
`in the litigation captioned Derek Andrew, Inc. v. Vital Pharmaceuticals, Inc., United States
`
`District Court, Western District of Washington, Case No. 07—CV—01364—JLR (the
`
`“Washington District Court Litigation”), as filed on August 31, 2007.
`
`DWT 2216443V1 0066284—000100
`
`1
`
`

`
`3.
`
`Attached as Exhibit B hereto is a true and correct copy of the Defendants’
`
`Answer to Complaint and Affirmative Defenses filed in the Washington District Court
`
`Litigation on September 26, 2007.
`
`4.
`
`Attached as Exhibit C hereto is a true and correct copy of the Complaint filed
`
`in the litigation captioned Vital Pharmaceuticals, Inc. v. Derek Andrew, Inc., United States
`
`District Court, Southern District of Florida, Case No. 0:07—CV—6l l77—JIC (the “Florida
`
`District Court Litigation”), as filed on August 20, 2007.
`
`5.
`
`Attached as Exhibit D hereto is a true and correct copy of the Order Granting
`
`Motion to Dismiss the Florida District Court Litigation, as entered on December 18, 2007.
`
`I declare under penalty of perjury under the laws of the State of Washington that the
`
`foregoing is true and correct.
`
`DATED this llth day of January, 2008, at Seattle, Washington.
`
`s/David H. Deits/
`David H. Deits
`
`DWT 2216443Vl 0066284—000l00
`
`2
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing DECLARATION OF DAVID H.
`
`DEITS IN SUPPORT OF OPPOSER’S MOTION was served on Applicant’s counsel this
`
`llth day of January, 2008, by United States first—class mail, postage prepaid, in an envelope
`
`addressed to:
`
`Erica W. Stump
`Vital Pharmaceuticals, Inc.
`
`15751 S.W. 41st Street, Suite 300
`
`Davie, Florida 33331
`
`s/David H. Deits/
`
`David H. Deits
`
`DWT 2216443vl 0066284—000l00
`
`3
`
`

`
`Case 2:07-cv-01364-JLR Document 1
`
`Filed 08/31/2007
`
`Page 1 of 8
`
`———-__.FILED
`._.......LOD{3_,
`
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`BY WLSILRN IJloIli1(I‘(3‘I.IA;ft‘”:I:IIi‘I M
`UII-"un
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`
`ATSEATTI.EC7_1364R
`
`IJEREK ANDREW, INC., a Washington
`corporation,
`
`Plaintiff,
`
`v.
`
`)
`)
`)
`
`No. C05-11362
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, AND
`VIOLATIONS 01? THE LANI-IAM
`ACT AND THE WASHINGTON
`CONSUMER PROTECTION ACT
`
`)
`)
`)
`)
`VITAL PHARMACEIUTICALS, INC., aF1orida)
`corporation,
`)
`)
`)
`I
`Derek Andrew, Inc., (“Derek Andrew” or “Plaintiff’), hereby alleges as follows:
`
`Defendants.
`
`JURY TRIAL DEMAND
`
`NATURE OF ACTION
`
`1.
`
`Thisisanactionfortrademarkinfringement,falsedesignationoforigirl,
`
`unfair competition and unfair business practices arising under the Lanham Act, 15 U.S.C. §
`
`1051 et seq. and the Washington Consumer Protection Act, RCW § 19.86 er seq.
`
`THE PARTIES
`
`2.
`
`Derek Andrew is a Washington corporation having a principal place of
`
`business in Believue, Washington.
`
`I IIIIII IIIII IIIII IIIII IIIII IIIII IIIII IIII IIII
`I IIIIIII III IIIIIII IIIIII IIIII II IIII
`07-CV—0l364-CMP
`
`—— 1
`C
`SEA l634652V] 0O66284-OO0096
`
`Davis Wright Tremaine LI .1"
`‘Phi
`vowuo, $ui(=1'Jui>
`3'
`-W ism ‘N101-3"'U
`(205) b12~3I50 ' Fax:(206) 757-7700
`
`DEITS DECLARATION - EXHIBIT A
`
`I
`
`2
`
`3
`
`4 5
`
`6
`
`7
`
`8
`
`~50 9
`V _\
`Q 10
`'
`~.
`',
`K/R) 11
`
`59
`‘go
`‘I
`
`I2
`
`13
`14
`
`“E”
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`15
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` 16
`
`17
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`18
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`1 9
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`20
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`21
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`22
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`23
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`

`
`Case 2:O7—cv-01364—JLR Document 1
`
`Filed 08/31/2007
`
`Page 2 of 8
`
`3.
`
`Upon information and belief, Defendant Vital Pharmaceuticals, lnc., d/b/a
`
`VPX Sports (“VPX”) or “Defendant” is a Florida corporation having its principal place of
`
`business in Broward County, Florida and conducting business within this judicial district.
`
`IURISDIQ I ION AND VEfl DE
`
`4.
`
`'I‘he Court has subject rnatterjurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`l338(a). The Court has supplemental jurisdiction over Derek Andrew’s state law claims
`
`pursuant to 28 U.S.C. §§ 1367.
`
`5.
`
`Upon information and belief, this Court has personal jurisdiction over VPX
`
`based on its substantial, continuous and systematic business activities within this State; and
`
`the fact that it has sold or distributed products that are the subject matter of this lawsuit in
`
`this state and this judicial district.
`
`6.
`
`Venue in this judicial district is proper under 28 U.S.C. § 193 1(b) & (C) and
`
`1400(a).
`
`PLA1N'I‘IFF AND ITS BUSINESS
`
`7.
`
`Derek. Andrew is a leading manufacturer of several very popular
`
`trademarked brands of clothing, clothing accessories, and related products.
`
`8.
`
`Derek Andrew sells products in association with its RED LINE trademarks,
`
`which are the subject oftwo Federal trademark registrations: Registration No. 214,175 for
`
`Red Line® for men’s coats and trousers in International Class 039 and Registration
`
`No. 817,040 for Red Line” (and design) for Women’s clothing; namely, pants, sweatshirts,
`
`sweatpants, shirts, t-shirts, knit shins and skirts, vest, jackets, coats, and shoes in
`
`International Class 025. These trademarks have been consistently used to promote the sale
`
`01‘ Derek Andrew’s products throughout the United States and elsewhere.
`
`I0
`
`11
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`12
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`I3
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`14
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`l5
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`l6
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`17
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`I8
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`19
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`20
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`21
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`22
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`23
`
`COMPLAINT — 2
`SEA 1684652»/I 0066284-000096
`
`DEVI! Wr1ghtTremmneLLP
`I201 Third Avclmt. Hutu 2100
`SI:mI¢.Wu:hinjm1u 9ll0l-3045
`(30b)621-1130 - Fax (2%) 751-7700
`
`DEITS DECLARATION - EXHIBIT A
`
`

`
`Case 2:07-CV-01364-JLR Document 1
`
`Filed 08/31/2007
`
`Page 3 of 8
`
`9.
`
`By virtue of its promotional efforts over many years, and expenditures in
`
`promoting, and popularizing its trademarks, the marks have become well-known, and
`
`Derek And1ew’s products have become associated with the marks. Through Derek
`
`Andi-ew’s use and promotional efforts, a substantial amount of good will has come to be
`
`associated with its products and its associated trademarks.
`
`DEFENDANT AND ITS ILLEQAL ACTIVITIES
`
`10.
`
`Upon information and belief, Defendant VPX is primarily a supplier of
`
`dietary and nutritional supplements and sports beverages, sometimes under the REDLINE
`
`trademark. Incidental to its primary business focus, VPX manufactures, sells and/or
`
`distributes athletic clothing and related products, including sweatshirts and sweatpants,
`
`bearing the REDLINE trademark. VPX promotes its athletic clothing and related products
`
`bearing the REDLINE trademark over the Internet and in other promotional publications
`
`IO
`
`11
`
`I3
`
`and venues.
`
`DEFENDANT’S PB_E_*EMPTORY INSTI I LJTION OF SUIT
`
`1 1.
`
`On July 30, 2007 Derek Andrew formally notified VPX that its use of
`
`REDLINE on athletic wear infringed Derek Anclrew’s superior trademark right. VPX’s
`
`attorneys duly responded on August 20, 2007 providing an analysis of the issue and
`
`inviting further discussion. Notably, VPX’s attorneys intentionally failed to advise Derek
`
`Andrew that VPX was contemporaneously filing a Complaint in the U.S. District Court for
`
`the Southern District of Florida seeking declaratory relief. VPX’s Complaint had not been
`
`served until today, August 3 l, 2007, but was intended solely as a preemptive, place-
`
`holders suit, inappropriately intcnded to bolster claims for Florida as the proper situs cl‘
`
`15
`
`17
`
`18
`
`20
`
`22
`
`23
`
`COMPLAINT — 3
`ss». l684t§51vI 0066284-000096
`
`Davis Wright 'l'rcmnine LLP
`1 Third AVIIHW. Suite 2100
`S‘
`4:, wash:
`it EH01-3045
`(206) 622-3150 '
`x: (M6) 757-‘I700
`
`DEITS DECLARATION - EXHIBIT A
`
`

`
`Case 2:07-ev-0’l364—JLR Document 1
`
`Filed 08/31/2007
`
`Page 4 of 8
`
`litigation between the parties. VPX’s August 20, 2007 Suit in the Southern District of
`
`Florida was prepared and prosecuted in derogation of FRCP l 1.
`
`COUNT I - VIOLATION OF Tflfi LANHAM ACT
`
`12.
`
`Derek Andrew incorporates by reference paragraphs 1~l1 ofthis Complaint
`
`by reference as if fully set forth herein.
`
`13.
`
`VPX’s unauthorized use of Derek Andrew’s RED LINE mark has or will
`
`cause confusion, mistake or to deceive consumers as to the source of origin ofits products.
`
`VPX’s actions are likely to cause members of the public who see the unauthorized use of
`
`the mark to believe that VPX or their products have an affiliation, connection, association,
`
`origin, sponsorship or approval 01‘ Derek Andrew or vice vcrsa. VPX’s actions constitute a
`
`false designation of origin in violation of the Lanham Act, 15 'U.S.C. § 1125(a)(l).
`
`14.
`
`Derek Andrew has been and will continue to be irreparably harmed by
`
`Defendant’s actions unless VPX is preliminarily and permanently enjoined lrom
`
`continuing the sale of clothing and related products using the RED LINE mark.
`
`15.
`
`Derek Andrew is entitled to recover (1) all of the Defendants’ profits, (2) all
`
`damages sustained by Derek Andrew, and (3) all costs of this action that result fiom
`
`VPX’s unlawful and willful use of the RED LINE mark, as well as trebling of those
`
`damages and an award of reasonable attorney fees pursuant to 15 U.S.C. § l1l7(a).
`
`COUNT II — TRADEMARK INF R_INGEMEN'l'
`
`16.
`
`Derek Andrew incorporates by reference paragraphs 14 5 of this Complaint
`
`as if fully set forth herein.
`
`17.
`
`VPx’s unauthorized use of the REDLINE for clothing and related products
`
`infringes Derek Andrew's clearly prior and incontestable rights in its mark.
`
`COMPLAINT —— 4
`SEA l684652vl 00662844100096
`
`Davis Wright Tremaine um
`se'=:133i5:a*i$iai3§' 3'“ ' 7-ziiiias
`(10!-) I212-Jun - M: <znr») 151-‘mm
`
`DEITS DECLARATION — EXHIBIT A
`
`

`
`Case 2:07-cv-01364-JLR Document 1
`
`Filed 08/31/2007
`
`Page 5 of 8
`
`18.
`
`Derek Andrew has been and will continue to be irreparably harmed by
`
`De l‘endant’s actions unless VPX is preliminarily and permanently enjoined from
`
`continuing the use of the REDLINE mark on clothing and related products.
`
`‘9O
`
`Derek Andrew is entitled to recover (1) all of the Defendants’ profits, (2) all
`
`damages sustained by Derek Andrew, and (3) all costs of this action that result from
`
`VPX’s unlawful and willful use of the RED LINE mark, as well as trebling of those
`
`damages and an award of reasonable attorney fees pursuant to 15 U'.S.C. § l1l7(a).
`
`COUNT III — VlOI..A'l‘1ON OF WASHINGTON CONSUMER PROTECTION A T
`
`20.
`
`Derek Andrew incorporates ‘by reference paragraphs 1-19 of this Complaint
`
`as if fully Set forth herein.
`
`21.
`
`Defendant’s actions in willfully and recklessly using the REDLINE mark
`
`for clothing and related products constitutes unfair and deceptive acts or practices
`
`occurring in trade or commerce having a deleterious impact on the public interest and have
`
`or will cause injury to Derek Andrew’s business or property.
`
`22.
`
`Defendants’ actions as alleged above amount to a violation oflhe
`
`Washington Consumer Protection Act, RCW § 19.86 et seq.
`
`23.
`
`Derek Andrew has been and will continue to be irreparably harmed by
`
`Defendants’ actions unless Defendant is preliminarily and permanently enjoined from
`
`continuing to violate the Washington Consumer Protection Act by their continued willful
`
`use of the REDLINE mark for clothing and related products.
`
`24.
`
`Derek Andrew is entitled to recover damages under RCW l9.86.090 for
`
`Defendant’s willful actions, as well as trebling of those damages plus an award of
`
`attorneys’ fees,
`
`COMPLAINT — 5
`SEA l6846S2vl 00662844100096
`
`Davis Wright 'l‘rcmainc Li .I*
`lwl ‘I'ltinl Avunw. Soil: 1'10"
`Slzllllc, Wulingzall 93101-3045
`(206) 622-3150 - Fax: (106) 757-77nn
`
`10
`
`ll
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`12
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`'13
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`14
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`15
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`DEITS DECLARATION - EXHIBIT A
`
`
`

`
`Case 2:07-cv—01364-JLR Document 1
`
`Filed 08/31/2007
`
`Page 6 of 8
`
`PRAYER FOR QLIEE
`
`WHEREFORE, Plaintiff Derek Andrew, Inc. prays for the following alternative
`
`and cumulative judgment against Defendant Vital Pharmaceuticals. Inc. as follows:
`
`A.
`
`Awarding damages for Defendant’s violations of the Lanham Act in an
`
`amount to be determined at trial, including (1) all of the Defendants’ profits, (2) all
`
`damages sustained by Derek Andrew, and (3) all costs of this action; trebling those
`
`damages to adequately compensate Derek Andrew that result from the unauthorized use of
`
`the RBDLINE trademark on clothing and related products; and awarding Derek Andrew its
`
`reasonable attorney fees; sec 15 U.S.C. § 1ll7(a);
`
`B.
`
`Awarding damages for Defendants’ infringement of its trademark in an
`
`amount to be determined at trial;
`
`C.
`
`Awarding all damages available under RCW 19.86.090, including trcbling
`
`of damages and an award of attorneys’ fees;
`
`D.
`
`An order temporarily enjoining during the pendency of this action and
`
`permanently at the conclusion of this action Defendants and each of their agents,
`
`employees, attorneys, successors, assigns, affiliates, joint ventures, and any pcrson(s)
`
`acting for, with, by, through or under any of them from:
`
`1.
`
`Manufacturing, producing, sourcing, importing, selling, offering for
`
`sale, distributing, advertising or promoting any clothing or related products by use
`
`of any words or symbols that resemble Derek Andrcw’s RED LINE mark as to be
`
`likely to cause confusion, mistake, or deception on or in connection with any
`
`clothing or related products that are not authorized by or for Derek Andrew, or any
`
`similarly confusing approximation of the RED LINE trademarks;
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`10
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`21
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`22
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`23
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`COMPLAINT — 6
`SEA l6846S2vl 0066284-000096
`
`Davis Wright ‘lrernninc I.1.I>
`um Third Arm... sun; mu
`Ennis. Wuhiugtmt 9lHUI-3045
`(-206) 612-3150 ' Fax: (206) 757-7700
`
`DEITS DECLARATION - EXHIBIT A
`
`

`
`
`
`COMPLAINT — 7
`SI-LA I684652vt 0066284-000096
`
`DEITS DECLARATION - EXHIBIT A
`
`Davis Wright Tremaine LLP
`rzor 1'I.w Aveum.-. suite mm
`SI.-mll. Wuhingion 9810]-J06
`(Zms) 621-JI50 - Fax: (206) 737-7700
`
`Case 2:07-cv-O1364—JLR Document 1
`
`Filed 08/31/2007
`
`Page 7 of 8
`
`2.
`
`Using any word, term, name, symbol, device, or combination
`
`thereof that causes or is likely to cause confusion, mistake, or deception as to the
`
`affiliation or association of Defendants or their goods with Derek Andrew or as to
`
`the origin of Defendants’ goods, or any false designation of origin, false or
`
`misleading description or representation of fact;
`
`Otherwise competing unfairly with Derek Andrew in any manner;
`
`Violating the Washington Consumer Protection Act in any manner;
`
`3.
`
`4.
`
`and
`
`5.
`
`Continuing to perform in any manner whatsoever any of the other
`
`acts complained of in this Complaint;
`
`E.
`
`Requiring Defendants to immediately supply Derek Andrew's counsel with
`
`a complete list of individuals and entities from whom they purchased and to whom they
`
`have sold, offered for sale, distributed, advertised, or promoted any clothing or related
`
`product bearing a mark or designation that infiinges Derek Andrew’s RED LINE marks;
`
`F.
`
`Requiring Defendants to immediately deliver to Derek Andrew's counsel
`
`Defendant’s entire inventory, including but not limited to any clothing, clothing
`
`accessories, or related products and any other infringing and unauthorized products,
`
`packaging, labeling, labels, advertising matter, promotional material and any plates, molds,
`
`matrices, and other material for producing or printing such items that are in the possession
`
`of any of the Defendants or subject to their control and that improperly and illegally use
`
`the RED LINE marks or any mark or designation confusingly similar thereto;
`
`G.
`
`Requiring Defendant, within twenty (20) days after entry of any Judgment
`
`in this case, to prepare and file with this Court and serve upon Derek Andrew’s counsel, at
`
`10
`
`ll
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`12
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`I3
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`14
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`

`
`Case 2:O7—cv-O1364—JLR Document 1
`
`Filed 08/31/2007
`
`Page 8 of 8
`
`written report, under oath, setting forth in detail the manner in which that Defendant has
`
`complied with the Judgment;
`
`H.
`
`I.
`
`Awarding Derek Andrew its reasonable costs; and
`
`Granting such other and further relief as to the Court may appear just and
`
`proper under the circumstances.
`
`JURY DEMAND
`
`Plaintifi‘ Derek Andrew demands a jury for all issues triablc to a jury.
`2.-I-
`
`DATED this '5'
`
`day ofAugust, 2007.
`
`Davis Wright Tremaine LLP
`Attorneys for Plaintiff’ Derek Andrew, Inc.
`
`
`
`
`
`F. Ross Boundy, WSBA #403
`David H. Deits, WSBA # 2350
`1201 Third Avenue, Suite 2200
`Seattle, WA 98101-3045
`Telephone: (206) 628-7623
`Fax: (206) 903-3723
`E-mail: RossB0undy§a;dwt.com
`DaveDeits@dwt.com
`
`10
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`11
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`14
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`I5
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`16
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`20
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`22
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`COMPLAINT — 8
`sr~;A l(z84652vl 00662844300096
`
`Davis‘ Wright. ’I‘rcma'mc LLP
`(101 Thirll Avenue. Sumo 2
`93 I0 I -
`5
`Seattle. Wmmm
`.- (200) 7s7.71on
`(2%) O2'1—3]50 -
`
`DEITS DECLARATION - EXHIBIT A
`
`

`
`\DOOQC'\lJI-FUJI\3'—‘©\DOO\IO\§J'I-IBU-’I\)'—‘
`
`v—-u—n»—r—Ir-«r—tr—t#I—Ir-—-
`
`Case 2:O7—cv-01364—JLR Document6
`
`Filed 09/26/2007
`
`Page1of6
`
`THE HONORABLE JAMES L. ROBART
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`
`DEREK ANDREW, INC., a Washington
`corporation,
`
`No. 2:07-CV-01364—JLR
`
`DEFENDANT VITAL
`
`Plaintiff,
`
`PHARMACEUTICALS, INC.’S ANSWER
`AND AFFIRMATIVE DEFENSES
`
`v.
`
`VITAL PHARIVUXCEUTICALS, lNC., a
`Florida corporation,
`
`
`
`Defendant.
`
`Defendant Vital Pharmaceuticals,
`
`Inc.
`
`("VPX")
`
`responds to the Complaint of Derek
`
`Andrew, Inc. (“DA”) as follows:
`
`1.
`
`VPX admits that the Complaint purports to state claims for the recited causes of
`
`action. VPX denies there is any merit to such claims.
`
`2.
`
`VPX is without knowledge or information sufficient to form a belief as to the truth of
`
`the allegations of paragraph 2 and, on that basis denies such allegations.
`
`3.
`
`VPX admits that it is a Florida corporation having its principal place of business in
`
`Broward County, Florida and admits that it has sold products to residents of Washington. VPX
`
`DEFENDANT VITAL PHARMACEUTICALS,
`INC.’S ANSWER AND AFFIRMATIVE
`
`DEFENSES (NO. 2:07-CV-01364—JLR) — 1
`66386-0001/LEGAL13593432.l
`
`Perkins Coie LLP
`
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`
`DEITS DECLARATION — EXHIBIT B
`
`Fax 206-359-9000
`
`

`
`Case 2:07-cv-01364-JLR Document 6
`
`Filed 09/26/2007
`
`Page 2 of 6
`
`denies that it otherwise conducts business in this district or that personal jurisdiction exists for the
`
`claims made in the Complaint.
`
`4.
`
`5.
`
`6.
`
`7.
`
`VPX admits the allegations of paragraph 4.
`
`VPX denies the allegations of paragraph 5.
`
`VPX denies the allegations of paragraph 6.
`
`With respect to the allegations of paragraph 7, VPX admits that DA sells clothing.
`
`With respect to the remaining allegations, VPX is without knowledge or information sufficient to
`
`form a belief as to their truth and, on that basis, denies such allegations.
`
`8.
`
`VPX is without knowledge or information sufficient to form a belief with respect to
`
`the truth of the allegations of paragraph 8, and, on that basis, denies them.
`
`9.
`
`10.
`
`VPX denies the allegations of paragraph 9.
`
`VPX admits that it sells dietary and nutritional supplements and beverages under the
`
`REDLINE trademark and that it distributes athletic clothing and related products bearing the
`
`REDLINE trademark for promotional purposes incidental to its business. VPX further admits that
`
`clothing bearing its trademark have appeared on the intemet or in publications in the past, but
`
`denies that it is selling such clothing through either media. VPX denies the remainder of the
`
`allegations of paragraph 10.
`
`11.
`
`VPX admits that DA sent it a cease and desist letter on or about July 30, 2007
`
`regarding its alleged rights in the RED LINE trademark. VPX further admits that it responded on or
`
`about August 20, 2007 to the letter. VPX further admits that it served DA on or about August 31,
`
`2007. VPX denies the remainder of the allegations of paragraph 11.
`
`>-oxoooxloxuu-hww-—-oxoooxlaxuz-I:-la:N-—o\ooo\Ia\m4>wM>-oxoooxloxmxxww—o~ooo\Io\Uu4>uJN>-
`mm-AA-J>.>-F-b-A-Us-A-t>wuJuJu.:mLnmLnmLuNNNNNNNr~)t\)tx>>—-»—-..-._.._..—-»—-.—-._-._.
`
`DEFENDANT VITAL PHARMACEUTICALS,
`INC.’S ANSWER AND AFFIRMATIVE
`
`DEFENSES (NO. 2:07-CV-0l36_4—JLR) — 2
`66386-0001/LEGALl3593432.I
`[)E|TS DEC|_ARAT|ON - EXH|B|T B
`
`Perkins Coie LLP
`
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

`
`Case 2:07—cv-01364-JLR Document 6
`
`Filed 09/26/2007
`
`Page 3 of 6
`
`bJLoJLnbJbJbJI\)lQtQI\Jl\Jl\3l\JI\J|\3I\i—‘—‘*—'——‘—‘-*h--*—UI-J3UJI\J>-©\OOO\lO\'JI-DU-llslr-O\DO0\lO\UI-hlaJ|\J--O\OOO\lO\UI-¥>bJ|\)'-‘
`
`12.
`
`VPX incorporates by reference its responses to paragraphs 1-11 of the Complaint as
`
`set forth above.
`
`13.
`
`14.
`
`15.
`
`16.
`
`VPX denies the allegations of paragraph 13.
`
`VPX denies the allegations of paragraph 14.
`
`VPX denies the allegations of paragraph 15.
`
`VPX incorporates by reference its responses to paragraphs 1-11 of the Complaint as
`
`set forth above.
`
`17.
`
`18.
`
`19.
`
`VPX denies the allegations of paragraph 17.
`
`VPX denies the allegations of paragraph 18.
`
`VPX denies the allegations of paragraph 19.
`
`20.
`
`VPX incorporates by reference its responses to paragraphs 1-11 of the Complaint as
`
`set forth above.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`VPX denies the allegations of paragraph 21.
`
`VPX denies the allegations of paragraph 22.
`
`VPX denies the allegations of paragraph 23.
`
`VPX denies the allegations of paragraph 24.
`
`To the extent any allegation of the Complaint is not addressed above, it is denied.
`
`AFFIRMATIVE DEFENSES
`
`In further response to the Complaint and as affirmative defenses, VPX alleges as follows:
`
`1.
`
`2.
`
`3.
`
`The Complaint fails to state a claim upon which relief may be granted.
`
`Personal jurisdiction over VPX does not exist for the asserted claims.
`
`Venue is improper in this District.
`
`DEFENDANT VITAL PHARMACEUTICALS,
`INC.’S ANSWER AND AFFIRMATIVE
`
`DEFENSES (NO. 2:07-CV—01364-JLR) — 3
`663860001/LEGAL1359343241
`DEITS DECLARATION - EXHIBIT B
`
`Perkins Coie LLP
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

`
`Case 2:07-cv-01364-JLR Document 6
`
`Filed 09/26/2007
`
`Page 4 of 6
`
`0O\lO'\LII-I>UJI~J>-*O\OOO\lO’\UI-§bJl\)v-A
`
`:-.-u---—-.-.-:-.—
`
`4.
`
`This case should be stayed because there is a previously-filed case, raising the same
`
`issues,
`
`in the United States District Court for the Southern District of Florida, styled Vital
`
`Pharmaceuticals, Inc. v. DerekAndrew, Inc., Case No. 07-61177-CIV-COHEN/SELTZER.
`
`5.
`
`DA’s claims are barred because DA has not made trademark use of the RED LINE
`
`trademark and/or has abandoned its rights in the RED LINE trademark, Without intent to revive use
`
`on the relevant products.
`
`6.
`
`7.
`
`8.
`
`9.
`
`DA’s Registration No. 214,175 is invalid.
`
`DA’s Registration No. 814,040 is invalid.
`
`DA’s Registration No. 214,175 has expired.
`
`DA’s claims are barred by the doctrine of laches and/or estoppel.
`
`10.
`
`DA’s claims are barred by the doctrine of acquiescence.
`
`WHEREFORE, VPX requests the following relief:
`
`REQUEST FOR RELIEF
`
`1.
`
`That plaintiff take nothing by way of the Complaint, and that the Complaint be
`
`dismissed with prejudice;
`
`2.
`
`That VPX be awarded its reasonable attorneys’ fees and costs to the extent permitted
`
`by law; and
`
`3.
`
`For such other and further relief as the Court deems just and proper.
`
`DEFENDANT VITAL PHARMACEUTICALS,
`INC.’S ANSWER AND AFFIRMATIVE
`
`DEFENSES (NO. 2:07-CV-01364-1LR) —- 4
`66386-0001/LEGAL13593432.1
`DEITS DECLARATION - EXHIBIT B
`
`Perkins Coie LLP
`
`1201 Third Avenue, Suite 4800
`Seattle, WA 98l01—3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

`
`Case 2:0’/—cv—01364-JLR Document 6
`
`Filed 09/26/2007
`
`Page 5 of 6
`
`DATED this 26th day of September 2007.
`
`\O0O\lO\lJ'I-BO-ltxi--O\OOO\lO\UI-l§U3l\3'-‘
`
`u—-u—>—A>—-—A>—-»—»—-»—.—
`
`PERKINS COIE LLP
`
`/s/ Ramsey M Al-Salam
`Ramsey M. A1-Salam, WSBA #18822
`RAlsalam@perkinscoie.com
`Penny Fields, WSBA #36024
`PFields@perkinscoie.com
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101-3099
`Telephone: 206.359.8000
`Facsimile: 206.359.9000
`
`Erica W. Stump (Pro Hac Vice Pending)
`VITAL PHARMACEUTICALS, INC.
`15751 s.w. 41“ Street, Suite 300
`Davie, FL 33331
`Telephone: (954) 641-0570, x 293
`Facsimile: (954) 641-0583
`ericas@vgxsports.com
`
`Attorneys for Defendant
`Vital Pharmaceuticals, Inc.
`
`DEFENDANT VITAL PHARMACEUTICALS,
`INC.’S ANSWER AND AFFIRMATIVE
`
`DEFENSES (NO. 2:07-CV-01364-JLR) — 5
`66386-0001/LEGAL135934321
`DEITS DECLARATION - EXHIBIT B
`
`Perkins Coie LLP
`
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

`
`Case 2:07-cv-O1364—JLR Document 6
`
`Filed 09/26/2007
`
`Page 6 of 6
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing was sent on the 26th day of
`September, 2007, to the following via CM/ECF:
`
`David Harry Deits
`F. Ross Boundy
`Davis Wright Tremaine
`1201 Third Avenue
`Suite 2200
`
`Seattle, WA 98101-3045
`
`Dated this the 26th day of September, 2007.
`
`/s/ Ramsey M Al-Salam
`Ramsey M. Al-Salam
`
`UIUIJ>-li-J>-53-54>-F-5-P-5-UJUJUJUJU)LoJUJLoJUJUJ|\JI\JI\)l\)l\Jl\Jl\)l\}l\Jl\)F-‘v-‘F-"-‘*-‘b-‘*-‘I-‘v-‘*-v-‘©\OOO\lO\Ul-JKUJIQI-‘O\OOO\lO\UI-SBUJINIr--©\OOO\lO\'JI-l>bJl\)|—OVO0O\IO'\UI-fikfllv*-‘©\DOO\lO\UI-RDJIQF-‘
`
`DEFENDANT VITAL PHARMACEUTICALS,
`INC.’S ANSWER AND AFFIRMATIVE
`
`DEFENSES (NO. 2:07—CV—01364-JLR) — 6
`66386-0001 /LEGAL1 35934321
`DEITS DECLARATION - EXHIBIT B
`
`Perkins Coie LLP
`
`1201 Third Avenue, Suite 4800
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

`
`Case,C3:O7~cv—€3‘i
`
`i7?—JEC Document?
`
`Entered on FLSD Docket 08,/20/‘EGG?
`
`Page “I of 24
`
`V
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT or FLOW? _ 6 1
`VITAL PHARMACEUTICALS, INC.
`~
`a Florida corporation,
`’
`vpf/l.[駗C;‘1L
`IN
`
`I
`
`'
`
`I
`
`vs.
`
`DEREK ANDREW, INC
`A Washington corporation,
`
`Plaintiff.
`
`Defendant.
`
`/
`
`COMPLAINT FOR DECLARATORY RELIEF
`
`Plaintiff, Vital Pharmaceuticals, Inc., a Florida Corporation d/b/a VPX Sports
`
`(“VPX”) files this Complaint for Declaratory Relief against Defendant, Derek Andrew,
`
`Inc. (“DA”) a Washington corporation, and alleges:
`
`Nature of Case, Jurisdiction, and Venue
`
`1.
`
`This is an action for declaratory relief stemming from DA’s July 30, 2007
`
`“cease and desist” letter, a true and correct copy of which letter is attached hereto as
`
`Exhibit “A.” In this letter DA falsely accuses VPX of trademark infringement.
`
`2.
`
`VPX is a leader in the nutritional supplement industry and owner of U.S.
`
`Registration Number 2,857,015 for REDLINE® for nutritional supplements. VPX’s
`
`REDLINE® nutritional supplements and beverages have become extremely popular.
`
`3.
`
`The “cease and desist” letter
`
`is defamatory and relates to VPX’s
`
`promotional use of athletic clothing and its application for same.
`
`DEITS DECLARATION - EXHIBIT C
`
`

`
`Case.O:O7~cv—€3"i
`
`t7?—JEC
`
`Document ‘E
`
`Entered on FLSD Docket G8,/20/‘EGG?
`
`Page 2 of 24
`
`4.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §l338,
`
`28 U.S.C. §220l, and 15 U.S.C. §lO5l, et seq. relating to trademark claims arising under
`
`the Lanham Act.
`
`5.
`
`Venue is proper in this district pursuant to 28 U.S.C. §139l because a
`
`substantial part of the events giving rise to the instant claim for declaratory relief and the
`
`subject matter thereof occurred in this district, including, without limitation, that VPX
`
`received the defamatory “cease and desist” letter from DA in this district, that VPX’s
`
`principal place of business is located in this district, and VPX adopted and commenced
`
`alleged use of the REDLINE® trademark for athletic clothing, the subject of the “cease
`
`and desist” letter in this district.
`
`6.
`
`On information and belief, DA may be found in this judicial district and is
`
`subject to personal jurisdiction in this district.
`
`The Parties
`
`7.
`
`VPX is a corporation organized and existing under the laws of the State of
`
`Florida with its principal place of business in this district, wherein VPX operates as a
`
`developer, manufacturer and seller of dietary and nutritional supplements and beverages
`
`with an emphasis upon sports and fitness supplements.
`
`8.
`
`DA is a corporation that is organized and existing under the laws of the
`
`state of Washington.
`
`The REDLINE® Nutritional Supplements and Beverages and
`Promotional Use of REDLINE on Athletic Clothing
`
`9.
`
`For several years, VPX has been a leader in the dietary supplement
`
`industry that offers a wide variety of dietary and nutritional supplement products with
`
`an emphasis on sports and fitness supplements.
`
`DEITS DECLARATION - EXHIBIT C
`
`

`
`Case C3:O7~cv—€5"i
`
`t7’?’—JEC
`
`Document ‘E
`
`Entered on FLSD Becket 08,/20/‘EGO?
`
`Page 3 of 24
`
`10.
`
`VPX is the owner of Registration No. 2,857,015 for REDLINE® in
`
`International Classes 5 for nutritional supplements.
`
`11.
`
`On March 30, 2005, VPX filed a federal
`
`trademark application for
`
`REDLINE® in International Class 25 for t-shirts; shirts; pants; crop tops; halter tops;
`
`muscle tops; tank tops; hats; shoes; athletic shoes; athletic footwear, which was assigned
`
`Serial No. 77/156370.
`
`12.
`
`VPX uses the REDLINE® trademark in connection with its nutritional
`
`supplement and beverages.
`
`13.
`
`VPX has expended considerable sums of money and effort to advertise
`
`and promote its REDLINE® nutritional supplements and beverages as a result,
`
`the
`
`REDLINE® products have become extremely popular.
`
`14.
`
`VPX promotes its REDLINE® nutritional supplements and beverages on
`
`its athletic clothing and products and services related to its nutritional supplements and
`
`beverages. VPX offers for sale its athletic clothing at cost to its distributors for use in
`
`promotion of REDLINE® nutritional supplements and energy drink.
`
`15.
`
`In conjunction with the promotion of the REDLINE® nutritional
`
`supplements and beverages, VPX gives away its athletic clothing to athletes, fitness
`
`models, VPX employees, distributors and customers.
`
`16.
`
`In conjunction with the promotion of the REDLINE® nutritional
`
`supplements and beverages, VPX uses the [ (“Logo”) on it athletic
`
`clothing.
`
`DEITS DECLARAgT|ON - EXHIBIT C
`
`

`
`Case O:O7~cv—€5‘i
`
`t??—..5EC
`
`Document ‘E
`
`Entered on FLSD Docket 08,/20/‘EGG?
`
`Page 4 of 24
`
`The Red Line® trademark and the Red Line® product
`
`17.
`
`DA is the owner of Registration Number 214,175 for Red Line® (words
`
`only) for men’s coats and trousers in International Class 039. DA is the owner of
`
`Registration Number 817,040 for Red Line® (and design) for women’s clothing, namely,
`
`pants, sweatshirts, sweatpants, shirts, t-shirts, knit shirts and skirts, vest, jackets, coats,
`
`and shoes in International Class 025.
`
`18.
`
`Upon information and belief, DA does not sufficiently use the Red Line®
`
`trademark and has abandoned whatever rights it had in the Red Line® trademark.
`
`19.
`
`DA appears to operate a high—end women’s clothing boutique store.
`
`DA’s “Cease and Desist” Letter
`
`20.
`
`On July 30, 2006, DA sent to VPX, at its headquarters in this judicial
`
`district its “cease and desist” letter, wherein DA charges that VPX’s promotional use
`
`of REDLINE® on athletic wear infringes upon DA’s REDLINE® trademark under the
`
`Lanham Act and has engaged in unfair competition under the common law and statutory
`
`law of the various states, including Florida. See Exhibit “A.”
`
`21.
`
`In its “cease and desist” letter, DA demands that VPX (1) cease and desist
`
`use of the REDLINE® trademark on clothing and related products;
`
`(2) provide an
`
`accounting of every item of clothing and related products bearing the REDLINE®
`
`trademark; and (3) withdraw U.S. Application Serial No. 77/156,370.
`
`22.
`
`DA further demanded in its “cease and desist” letter that VPX will “fully
`97
`
`cooperate with [DA] in this matter.
`
`The clear implication of this “cease and desist”
`
`letter is that VPX must “cooperate” and