Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA234462
`ESTTA Tracking number:
`09/03/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181256
`Plaintiff
`ICON Health and Fitness Inc.
`Robyn L. Phillips
`Workman Nydegger
`60 East South Temple, Ste. 1000
`Salt Lake City, UT 84111
`UNITED STATES
`rphillips@wnlaw.com, scourdy@wnlaw.com
`Motion to Suspend for Civil Action
`Robyn L. Phillips
`rphillips@wnlaw.com
`/Robyn L. Phillips/
`09/03/2008
`13915_58_2 Motion to Suspend.pdf ( 42 pages )(1722123 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`TRADEMARK OPPOSITION
`
`Atty. Ref. No. 13915582
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 76/666,226
`Published in the Official Gazette of August 14, 2007, at TM 928
`International Class: 28
`
`Filed: September 18, 2006
`Mark: MAXX STRENGTH
`
`Opposition No. 91181256
`
`MOTION TO SUSPEND PROCEEDINGS
`UNTIL TERMINATION OF CIVIL
`ACTION AND MEMORANDUM IN
`SUPPORT THEREOF
`
`)
`)
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`g)
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`)
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`g
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`ICON HEALTH & FITNESS, INC,
`Opposer,
`
`v.
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`CAP BARBELL» INC»
`Applicant.
`
`Pursuant to 37 C.F.R. § 2.l17(a) and TBMP § 510, Opposer ICON Health & Fitness, Inc.
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`(“ICON”), by and through its attorneys, hereby moves that this Opposition proceeding be
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`suspended until termination of the civil action that is pending before the United States District
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`Court for the District of Utah against Applicant Cap Barbell, Inc. for,
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`inter alia, trademark
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`infringement arising from Applicant’s use of the mark “MAXX STRENGTH” on exercise
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`equipment. This motion is supported by a memorandum of law embodied herein and the
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`attached exhibits.
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`MOTION TO SUSPEND I
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`l
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`

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`DATED this 3“ day of September, 2008.
`
`Respectfully submitted,
`
`/Robyn L. Phillips/
`
`Robyn L. Phillips, Reg. No. 39,330
`
`WORKMAN | NYDEGGER
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, UT 84111
`Telephone:
`(801) 533-9800
`Facsimile:
`(801) 328-1707
`
`Attorneys for Opposer
`ICON HEATH & FITNESS, INC.
`
`MOTION TO SUSPEND
`
`

`
`I.
`
`BACKGROUND
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`On January 18, 2007, ICON Health & Fitness, Inc. filed a Complaint in the United States
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`District Court, District of Utah, Northern Division, against Cap Barbell, Inc. alleging, inter alia,
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`trademark infringement and unfair competition (the “Civil Action”). A copy of the Complaint
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`filed in the Civil Action is attached hereto as Exhibit 1. Subsequently, on or about October 4,
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`2007, the Civil Action was transferred from Workman Nydegger to other attorneys for ICON.
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`Subsequently, on November 9, 2007, a First Amended Complaint was filed in the Civil Action
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`by ICON’s new counsel. A copy of the First Amended Complaint is attached as Exhibit 2.
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`Applicant’s mark was published for opposition on August 14, 2007. On September 12,
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`2007 and October 11, 2007, ICON filed timely requests for extensions of time to oppose. These
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`requests were granted by the Trademark Trial and Appeal Board (the “Board”). Thereafter, on
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`December 12, 2007, Opposer timely filed a Notice of Opposition regarding the mark “MAXX
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`STRENGTH”, which was assigned Opposition No. 91181256. Applicant filed an Answer on
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`January 15, 2008. Discovery has commenced and is ongoing.
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`The same mark “MAXX STRENGTH” is the subject of both this opposition and the Civil
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`Action.
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`II.
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`ARGUMENT
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`A.
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`Suspension of this Opposition Proceeding is Proper Where a Civil
`Action has been Filed and Common Issues Will Be Dispositive of the
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`Present Proceeding
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`The Board has the inherent power to stay this proceeding once it becomes aware that a
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`civil action has been filed involving the same parties participating in an opposition proceeding.
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`TBMP §5 10.01. Further, “[p]roceedings before the Board may be suspended until termination of
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`the civil action.” 37 C.F.R. §2.ll7; see also General Motors Corp. v. Cadillac Club Fashions,
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`Inc., 22 U.S.P.Q.2d 1933, 1937 (TTAB 1992).
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`“To the extent that a civil action in a Federal
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`district court involves issues in common with those in a proceeding before the Board, the
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`decision of the Federal district court is binding upon the Board, while the decision of the Board
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`is not binding upon the court.” TBMP §510.02(a); see also Goya Foods, Inc., v Tropicana
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`MOTION TO SUSPEND
`
`3
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`

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`Products, Inc., 846 F.2d 848, 6 U.S.P.Q.2d 1950, 1954 (2nd Cir. 1988). Therefore, conservation
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`of judicial resources and avoidance of waste necessitate suspension of the present proceeding
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`until termination of the Civil Action between the parties.
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`Both the present proceeding and the Civil Action involve common issues that will be
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`dispositive of this opposition proceeding before the Board. Opposer filed the Opposition and the
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`Civil Action.
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`In the Civil Action, Opposer alleges, inter alia, that Applicant’s use of the mark
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`“MAXX STRENGTH”, which is the subject of this proceeding, infringes Opposer’s superior
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`common law rights. The marks at issue in the Civil Action are substantially the same marks
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`involved in these proceedings. Applicant’s mark “MAXX STRENGTH” is confusingly similar
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`to ICON’s marks. Accordingly, both the Opposition proceeding and the Civil Action involve a
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`determination of similar issues, including whether there is a likelihood of confusion between the
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`marks.
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`Where the same parties to a case pending before the Board are involved in a Civil Action
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`that may be dispositive of the Board case, proceedings before the Board may be suspended until
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`the Civil Action is resolved.
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`In this case, there are clearly common issues between the Civil
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`Action in a federal district court and the Opposition proceedings before the Board. Further, the
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`decision of the federal district court will be binding upon the Board. Accordingly, it is proper for
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`the Board to suspend this Opposition proceeding pending termination of the civil proceeding.
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`B.
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`The Board will Ordinarily Suspend Proceedings in a Case before the
`Board if the Final Determination of the Other Proceeding will have a
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`Bearing on the Issues before the Board
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`“Ordinarily,
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`the Board will suspend proceedings in the case before it if the final
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`determination of the other proceeding will have a bearing on the issues before the Board.” TBMP
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`§5l0.02(a); see also Other Telephone Co. v. Connecticut National Telephone Co., l8l U.S.P.Q.
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`125, 127 (TTAB 1974), petition denied, 181 U.S.P.Q. 779 (Comm'r 1974). Opposer seeks, inter
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`alia, a holding of trademark infringement in the Civil Action. A holding that Applicant’s mark
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`do infringes ICON’s mark will clearly affect the final determination of these proceedings.
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`MOTION TO SUSPEND
`
`4
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`

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`Here, the large number of common issues, including likelihood of confusion, reveal that
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`the final determination in the civil proceeding will have a strong, if not controlling, bearing on
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`the issues before the Board. Because the final determination of the civil proceeding will have a
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`more than significant bearing on the issues before the Board, suspension of these Opposition
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`proceedings is proper.
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`III.
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`CONCLUSION
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`ICON,
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`therefore, respectfully moves that this Opposition be suspended pending the
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`termination of the Civil Action brought by ICON against Applicant in the United States District
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`Court for the District of Utah, Northern Division. Based on the foregoing, ICON respectfully
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`submits that it is proper to suspend the present Opposition proceedings pending a decision by the
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`federal court, and accordingly, ICON’s Motion should be granted.
`
`DATED this 3rd day of September, 2008.
`
`Respectfully submitted,
`
`By:
`
`/Robyn L. Phillips/
`Robyn L. Phillips, Registration No. 39,330
`WORKMAN | NYDEGGER
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, UT 84111
`Telephone:
`(801)533-9800
`Facsimile:
`(801) 328-1707
`
`Attorneys for Opposer
`ICON HEALTH & FITNESS, INC.
`
`MOTION TO SUSPEND
`
`5
`
`

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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing MOTION
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`TO SUSPEND PROCEEDINGS UNTIL TERMINATION OF CIVIL ACTION AND
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`MEMORANDUM IN SUPPORT THEREOF was served on Applicant by First Class Mail,
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`postage prepaid, this 3”‘ day of September, 2008, in an envelope addressed as follows:
`
`J0 Katherine D’Ambrosio
`
`D’AMBROSIO & ASSOCIATES, P.L.L.C.
`10260 Westheimer, Suite 465
`
`Houston, TX 77042
`
`/Robyn L. Phimps/
`
`C:\NrPortb1\DMS1\KGEIS\2089555_l .DOC
`
`MOTION TO SUSPEND
`
`6
`
`

`
`EXHIBIT 1
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`

`
`
`
`Case 1:O7—cv—OOOO9-TC Document1
`
`Filed 01/18/2007
`
`Page 1 of 12
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`F IL E D
`U '5. DISTRICT LOURT
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`LARRY R. LAYCOCK (USB NO. 4868)
`ROBYN L. PHILLIPS (USB No. 7425)
`MATTHEW A. BARLOW (USB N0. 9596)
`WORKMAN ] NYDEGGER
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, UT 84111
`Telephone: (801) 533-9800
`
`Attorneys for Plaintiff
`ICON HEALTH & FITNESS, INC.
`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF UTAH,‘ NORTHERN DIVISION
`
`..__ ._L_...__ __
`
`____
`
`Judge ’_1_'_ena Campbell
`DECK TYPE: Civil
`nun s".'1'1mp: o1/1s_/2007 e 15:19:57
`case RUBBER:
`1:o1cvoooo9
`rc
`
`‘)
`
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`
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`ICON HEALTH & FITNESS, INC.,
`
`.-
`-
`P1"’““"ff=
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`V.
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`.5
`'
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`CAP BARBELL, INC.,
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`Defendant.
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`Plaintiff ICON Health & Fitness, Inc. (“ICON” or “Plaintiff”) alleges as follows:
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`THE PARTIES '
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`1.
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`Plaintiff ICON is a Delaware corporation having a principal place of business at
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`1500 South 1000 West, Logan, Utah 84321.
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`2.
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`Upon information and belief, Defendant Cap Barbell, Inc. (“Ca_p” or “Defendant”)
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`is a Texas corporation having a principal place of business at 10820 Westpark Drive, Houston,
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`Texas 77042.
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`

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`_
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`Case 1:07-cv-00009—TC Document 1
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`Filed 01/18/2007
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`Page 2 of 12
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`JURISDICTION AND VENUE
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`3.
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`This is an action arising, in part, under the Lanham Act, 15 U.S.C. § 1052 et seq.
`
`.
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`'
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`and related Utah state law. Subject matter jurisdiction is conferred upon this Court by 28 U.S.C.
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`§§ 1331 and 1338(a) and (b). This Court also has jurisdiction as there is complete diversity
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`among the parties.
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`4.
`
`The state law claims asserted herein arise out of a nucleus of facts common to the
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`federal claims, all of which would be expected to be tried in a common action. This Court also
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`therefore has supplemental jurisdiction over the state law claims pursuant to 35 U.S.C. § l367(a)-.
`
`-
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`5.
`Upon information and belief, Defendant transacts business in the State of Utah
`and/or has supplied goods in the ‘State of Utah. This court has personal jurisdiction over
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`Defendant under the Utah Long Arm Statute, Utah Code Ann. § 78-27-24.
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`6.
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`Venue is proper in this Court under 28 U.S.C. § l39l(b) and (0) because"
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`Defendant is subject to the personal jurisdiction of this Court and because substantial events
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`giving rise to this Complaint occurred in this judicial district.
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`FACTUAL BACKGROUND
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`7.
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`ICON manufactures and distributes various types of exercise devices and
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`machines, including those sold under the WEIDER® mark, to customers in the United States.
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`8. A
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`ICON uses unique trademarks to identify its quality products to the consuming
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`public and to distinguish its products from those sold by others.
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`ICON’s trademarks include,
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`inter alia,
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`the common law marks “MAX STRENGTH”, “WEIDER MAX”, “MAX by
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`WEIDER”, and “THE MAX” (collectively, “ICON’s MAX STRENGTH Marks”) used on and in
`connection with various strength training products and accessories.
`ICON first began using its
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`MAX STRENGTH Marks in interstate commerce at least as early as December 2004 and has
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`used these marks continuously since that date.
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`

`
`Case 1:07-cv-00009-TC Document 1
`
`Filed 01/18/2007
`
`Page 3 of 12
`
`
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`9.
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`As a result of lCON’s substantial and continuous use of the WEIDER® mark as
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`well as lCON’s MAX" STRENGTH vMarks, including advertising, labeling and marketing, the
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`WEIDER® mark and the MAX STRENGTH Marks have become an asset of substantial value to
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`ICON as a distinctive indication of the origin and quality-of its products. Products bearing the
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`WEIDER® mark and ICON’s MAX STRENGTH Marks are marketed and sold throughout the
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`United States in a wide variety of retail stores and have acquired a broad and valuable reputation
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`and goodwill.
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`10.
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`Upon information and belief, Defendant is a supplier of free weights and exercise
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`. accessories.
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`1 1.
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`Upon information and belief, Defendant is using -the mark “MAXX STRENGTH”
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`on or in connection with exercise equipment.
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`12.
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`Defendant advertises and sells its products bearing the “MAXX STRENGTH”
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`mark in interstate commerce, including some identical markets and trade channels used by
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`ICON. Upon information and belief, Defendant’s products bearing the “MAXX STRENGTH”
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`mark are sold in the same retail stores and advertised in the same channels as ICON’s products
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`bearing the WEIDER® mark and/or ICON’s MAX STRENGTH Marks. An example of such
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`advertisement is attached hereto as Exhibit A.
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`13.
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`Defendant’s infringing -use of ICON’s MAX STRENGTH Marks is done without
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`permission, valid license or consent from ICON, and the use is causing or will cause confusion,
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`mistake, or deception among the purchasers of such products. Defendant’s advertisements,
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`promotions, sales, distribution and offers for sale are diminishing or will diminish the valuable
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`good will and reputation of the lCON’s MAX STRENGTH Marks and are resulting in or will
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`result in lost sales by ICON and will cause irrevocable harm to ICON".
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`I
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`

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`
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`Case 1:07—cv-00009-TC Document 1
`
`Filed 01/18/2007
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`Page 4 of 12
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`Upon information and belief, Defendant’s advertising materials for a MAXX
`14.
`STRENGTH COMBO BENCH AND WEIGHT SET include.a picture of a weight bench that is
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`actually sold by ICON under the WEIDER® mark. See Exhibit A.
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`15.
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`Defendant’s use of the WEIDER® weight bench sold by ICON under the
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`“MAXX STRENGTH” mark is done without permission, valid license or consent from ICON,
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`and the use is causing or will cause confusion, mistake, or deception among the purchasers of
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`such products as to the source or origin of the products.
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`FIRST CLAIM FOR RELIEF
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`(Trademark Infringement - 15 U.S,C. § 1125 (a))
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`16.
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`ICON incorporates by reference the allegations of paragraphs 1-15 as if fully set
`
`forth herein.
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`17.
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`A significant segment of the consuming public recognizes ICON’s MAX
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`STRENGTH Marks. as being distinctive of and identifying a high quality product associated with
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`a single source.
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`18.
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`Defendant’s
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`infringing use of the designation_ “MAXX STRENGTH” is
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`substantially likely to cause confusion among the consuming public as to the origin of
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`Defendant’s products.
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`19.
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`Defendant willfully and wantonly infringes ICON’s proprietary rights intending
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`to injure ICON.
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`20.
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`ICON has been damaged and continues to be damaged by Defendant
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`in an
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`amount to be established at trial, including Defendant’s profits and ICON’s lost profits, plus
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`punitive damages.
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`I
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`21.
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`ICON has no adequate remedy at law for the damage to its reputation and
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`goodwill and will continue to be irreparably damaged unless Defendant is temporarily and
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`

`
`
`
`S
`
`._..
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`Case 1:07-cv—OOOO9-TC Document 1
`
`Filed 01/18/2007
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`Page 5 of 12.
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`preliminarily enjoined from its infringing and illegal conduct and Defendant’s products are
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`seized immediately.
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`SECOND CLAIM FOR RELIEF
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`(Federal Unfair Competitionl False Designation
`or Origin- 15 U.S.C. § 1125(a))
`
`22.
`forth herein.
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`ICON incorporates by reference the allegations of paragraphs l-21 as if fully set
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`23.
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`Defendant’s use of the “MAXX STRENGTH” mark, alone or in combination
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`with other word or design marks in its packaging, labeling, advertising, marketing, and selling of
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`products constitutes a violation of Section 43(a) of the Lanham Act, 15 U.S.C. § l125(a), on the
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`grounds that it creates a likelihood of confusion among prospective purchasers, and further on
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`the grounds that such usage induces, or is likely to induce, prospective purchasers and others to
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`believe that Defendant’s products and services are performed, manufactured, endorsed or
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`approved by, or otherwise connected in some way with ICON.
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`24.
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`Upon information and belief, Defendant was aware of the ICON’s MAX
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`STRENGTH Marks when Defendant committed its acts of infringement in willful and flagrant
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`disregard of Defendant’s lawful rights.
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`25.
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`Upon information and belief, Defendant intends to cause confusion and mistake
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`and intends to deceive the buyers of products sold with the “MAXX STRENGTH” mark into
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`believing that they are buying products produced-by, marketed by, sponsored by, approved of or
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`licensed by ICON.
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`26.
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`Defendant’s use of the “MAXX STRENGTH” mark,
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`in the manner alleged
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`above, constitutes trademark infringement, false advertising, a false designation of origin of
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`Defendant’s products, unfair competition and/or
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`false description or
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`representation of
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`Defendant’s goods, in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`

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`
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`Case 1:O7—cv—OOOO9-TC Document 1
`
`Filed 01/18/2007
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`Page 6 of 12
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`V-»-4
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`27.
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`Upon information and belief, Defendant will, if not enjoined by this Court,
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`continue in its acts of unfair competition by the use of the false designation and false
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`representation set forth above. Such improper acts‘ by Defendant have caused, and will continue
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`to cause, ICON immediate and irreparable harm.
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`28.
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`Pursuant to Section 34 of the Lanham Act, 15 U.S.C. § ll16, ICON is entitled to
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`. an order of this Court, effective during the pendency of this action and thereafter to be made
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`permanent, enjoining Defendant,
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`its officers, agents, assigns and employees from using the
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`ICON’s MAX STRENGTH Marks or any other colorable imitation of ICON’s MAX
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`STRENGTH Marks in the advertising, marketing or sale of products and services from
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`Defendant.
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`29.
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`As a result of Defendant’s acts of unfair competition as set forth above, ICON has
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`suffered damages, the exact amount of which ICON has not yet been able to determine.
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`30.
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`Pursuant to Section 35 of the Lanham Act, 15 U.S.C. § lll7, ICON is entitled to
`
`a judgment for damages not to exceed three times the amount of its actual damages, together
`
`with interest thereon, in an amount to be determined at trial.
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`(Unfair Competition - Misrepresentation, Passing Off - 15 U.S.C. § 1125 (a)(l))
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`THIRD CLAIM FOR RELIEF
`
`31.
`
`ICON incorporates by reference the allegations of paragraphs l-30 as if fully set
`
`forth herein.
`
`32.
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`On information and belief, Defendant has marketed the exercise equipment under
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`the “MAXX STRENGTH” mark using a picture of a weight bench that is actually sold by ICON
`
`under the WEIDER® mark. See Exhibit A.
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`33.
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`Defendant’s use of the WElDER® weight bench sold by ICON is done without
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`permission, valid license or consent from ICON, and the use is causing or will cause confusion,
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`

`
`
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`Case 1:07-cv—O0OO9-TC Document 1
`
`Filed 01/18/2007
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`Page 7' of 12
`
`
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`mistake or deception among the purchasers of such products as to the source, origin or
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`characteristic of the product.
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`34.
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`Defendant’s use of the “MAXX STRENGTH” mark on an advertisement that
`
`includes a picture of a bench that is actually sold by ICON under the WEIDER® mark is likely
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`to cause mistake or deception as to the source or origin of its products.
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`35.
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`Defendant’s use of the image of a bench that is actually sold by ICON under the
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`WEIDER® mark
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`as part of Defendant’s MAXX STRENGTH COMBO BENCH AND
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`WEIGHT SET constitutes misrepresentation and/or passing off in violation of Section 43(a) of
`
`the United States Trademark Act, 15 U.S.C. § 1125(a).
`
`36.
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`Defendant’s misrepresentation and/or passing off of the use of the WEIDER®
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`weight bench as its own sold under the “MAXX STRENGTH” mark has greatly and irreparably
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`damaged ICON, and will continue to damage ICON unless restrained by this Court; therefore,
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`ICON is without an adequate remedy at law.
`
`FOURTH CLAIM FOR RELIEF
`
`(Common Law Trademark Infringement)
`
`37.
`
`ICON incorporates by reference the allegations of paragraphs 1-36 as if fully set
`
`forth herein.
`
`38.
`
`A significant segment of the consuming public recognizes ICON’s MAX
`
`STRENGTH Marks as being distinctive of and identifying a high quality product associated with
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`a single source.
`
`39.
`
`Defendant’s
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`infringing use of the designation “MAXX STRENGTH” is
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`substantially likely to cause confusion among the consuming public as to the origin of
`
`Defendant’s products.
`
`I
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`40.
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`Defendant willfully and wantonly infringes ICON’s proprietary rights intending
`
`to injure ICON.
`
`

`
`Case 1:07-cv—00O09—TC Document 1
`
`Filed 01/18/2007
`
`Page 8 of 12
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`- -—--————
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`
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`41.
`
`ICON has been damaged and continues to be damaged by Defendant in an
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`amount to be established at trial, including Defendant’s profits and ICON’s lost profits, plus
`
`punitive damages.
`
`42.
`
`ICON has no adequate remedy at
`
`law for the damage to its reputation and
`
`goodwill and will continue to be irreparably damaged unless Defendant
`
`is temporarily and
`
`preliminarily enjoined from its infringing and illegal conduct and Defendant"s products are
`
`seized immediately.
`
`FIFTH CLAIM FOR RELIEF
`(Common Law Unfair Competition)
`
`43.
`
`ICON incorporates by reference the allegations of paragraphs 1-42 as if fully set
`
`forth herein.
`
`44.
`
`Defendant’s actions constitute unfair competition and unfair business practices.
`
`The actions as alleged above constitute unfair competition with ICON by creating a likelihood of
`confusion and actual confusion as to the source or sponsorship of the products sold by ICON; by
`
`misappropriating the unique reputation and goodwill of ICON represented by the MAX
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`STRENGTH Marks thereby injuring that reputation and goodwill; and by diverting from ICON
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`the benefits arising therefrom.
`
`45.
`
`The actions of Defendant have damaged and will continue to damage the
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`business, market, reputation and goodwill of ICON, and may discourage current and potential
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`customers from dealing with ICON.
`
`46.
`
`Defendant’s actions are unlawful and have caused and continue to cause
`
`irreparable injury to the value and goodwill of ICON’s MAX STRENGTH Marks, as well as
`
`

`
`
`
`Case 1:0"/—cv—OO0O9-TC Document 1
`
`Filed 01/18/2007
`
`Page 9 of 12
`
`irreparable injury to lCON’s business_, goodwill and reputation.
`
`ICON has no adequate remedy
`
`at law.
`
`47.
`
`Defendant’s continued use of the “MAXX STRENGTH” mark is deliberate,
`
`willful and constitutes a knowing infringement of lCON’s MAX STRENGTH Marks.
`
`48.
`
`ICON has been damaged and continues to be damaged by Defendants in an
`
`amount to be established at trial, including Defendant’s profits and lCON’s lost profits, plus
`
`punitive damages.
`
`SIXTH CLAIM FOR RELIEF
`
`(Utah Deceptive and Unfair Trade Practices Act)
`
`49.
`
`ICON incorporates by reference the allegations of paragraphs 1-48 as if fully set
`
`forth herein.
`
`S0.
`
`Defendant’s actions described above, and specifically Defendant’s use of the
`
`“MAXX STRENGTH” mark for its products, have caused or is likely to cause confusion or
`
`misunderstanding by actual and prospective purchasers and customers regarding the true source,
`
`sponsorship, approval, affiliation, connection and association of Defendant’s products. This
`
`conduct constitutes a deceptive trade practice and/or deceptive or misleading advertising practice
`
`in violation of Utah Code Ann. § 13-1 la-l et seq.
`
`51.
`
`Defendant’s deceptive trade practices and/or deceptive or misleading advertising
`
`practices have caused and continue to cause irreparable injury to the value of lCON’s MAX
`
`STRENGTH Marks, as well as irreparable injury to lCON’s business, goodwill and reputation.
`
`ICON has no adequate remedy at law because Defendant’s, actions are continuing and damages
`
`are difficult to ascertain.
`
`52.
`
`ICON is entitled to an injunction against Defendant, as well as an award of its
`
`costs and attorneys’ fees, pursuant to Utah Code Ann. § 13-1 la-4(2).
`
`

`
`
`
`Case 1:07-cv-00009-TC Document 1
`
`Filed 01/18/2007
`
`Page 10 of 12
`
`
`
`PRAYER FOR RELIEF
`
`. WHEREFORE, ICON, prays that the Court enter an order:
`
`a.
`
`b.
`
`Finding that Defendant infringed ICON’s MAX STRENGTH Marks;
`
`Finding that Defendant committed unfair competition/false designation through
`
`their use of the “MAXX STRENGTH” mark;
`
`c.
`
`Finding that Defendant misrepresented/passed off their product through its use of
`
`a WEIDER® weight bench sold by ICON under the “MAXX STRENGT .” mark;
`
`d.
`
`Temporarily, preliminarily and permanently enjoining Defendant and any related
`
`entities, individuals and employees:
`
`i.
`
`From using the designation “MAXX STRENGTH” or any colorable
`
`imitation of ICON’s MAX STRENGTH Marks in connection with or in the promotion,
`
`sale, advertising or packaging of strength training products and accessories;
`
`ii.
`
`'
`
`From engaging in unfair competition against ICON or any act likely to
`
`mislead any consumer;
`
`iii.
`
`From using any image of a bench that is actually sold by ICON under the
`
`WEIDER® mark as pan of Defendant’s products, including but not limited to the MAXX
`
`STRENGTH COMBO BENCH AND WEIGHT; and
`
`iv.
`
`From passing off or assisting, inducing, or encouraging another to pass off
`
`any product as originating from ICON.
`
`c.
`
`Requiring that, no later than thirty (30) days following the entry of a preliminary
`
`injunction or judgment in this case, whichever is sooner, Defendant shall serve upon ICON’s
`
`counsel a written declaration, under oath, affirming Defendant’s compliance with the Order of
`
`this Court and detailing the manner in which Defendant has complied with the Order of this
`
`Court.
`
`

`
`Case 1:07-cv—00009-TC Document 1
`
`Filed 01/18/2007
`
`Page 11 of 12
`
`
`
`f.
`
`Directing Defendant
`
`to recall and destroy any and all products bearing the
`
`designation “MAXX STRENGTH” and colorable imitations of ICON’s MAX. STRENGTH
`
`Marks.
`
`g.
`
`Directing Defendant to recall and destroy any and all advertising or promotional
`
`materials including any image of a weight bench that is actually sold by ICON under the
`
`WEIDER® mark as part of Defendant’s products,
`
`including but not
`
`limited to the MAXX
`
`STRENGTH COMBO BENCH AND WEIGHT.
`
`h.
`
`Award damages in favor of ICON and against Defendant in an amount to be
`
`determined at trial.
`
`i.
`
`For an award of costs, profits and damages, which damages and profits are then
`
`trebled, under 15 U.S.C. § 1117, for Defendant’s infringement of ICON’s MAX STRENGTH
`
`Marks, unfair competition, and misrepresentation/passing off;
`
`j.
`
`k.
`
`Directing that Defendant pay ICON’s attorneys’ fees and costs.
`
`Granting the immediate seizure of Defendant’s products containing labeling or
`
`packaging which uses the infiinging marks and any documentation relating thereto which could
`
`demonstrate the damages incurred by ICON.
`
`l.
`
`Granting ICON any other relief which the Court deems appropriate.
`
`11
`
`

`
` .
`
`xI
`5
`
`Case 1:07-cv—O0O09-TC Document 1
`
`Filed 01/18/2007
`
`Page 12 of 12
`
`
`
`JURY DEMAND
`
`ICON hereby demands a trial byjury on all issues triable to a jury as a fnattcr ofright.
`
`DATED this
`
`|fi"*b day of January, 2007.
`
`WORKMAN 1 NYDEGGERH
`
`aycock
`Robyn L. Phillips
`Matthew A. Barlow
`
`Aftorneys for Plaintiff
`ICON HEALTH & FITNESS, INC.
`
`J:\13'-)l558\0O] Complaimdoc
`
`12
`
`

`
`Case 1:O7—cv-OOO_O9-TC Document 1-2
`
`Filed 01/18/2007
`
`Page 1 of4
`
`
`
`Exhibit A
`
`

`
`MW S$§§§%iI2.§V9 %89‘?F&“CHo%cYlir‘%‘e‘il‘ii.§ET ’§.?é‘*d*51‘I*iéal§i8579e1°l%i%a°g§‘e‘2‘-ar sage 1 on
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`"switchto Hignsbeed Cable Internet.‘ I
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`As low as $19.99 a month!
`<- fig
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`
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`Home > Item Detail
`
`A
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`
`Sears
`8 8800 NEVancouvarMalIDr
`Vancouver. WA 98662
`Tel: (360) 260-4200
`
` Store Rating: * * * *3 '*
`
`lmmaeags
`
`
`
`. I
`
`MAXX STRENGTH COMBO BENCH & WEIGHT SET
`IT'S NEW! SAVE $10
`sale 369.99
`mm Jan 20
`
`Includes 80-lb. weight set
`\ ,2
`Plus, All weight Sets And Benches on sale‘ #14627
`.,‘_
`7* iii
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`AddloMyL|sl
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` .umens1&m;
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`
`
`http://www.sh0p1oca1.com/lid-209388300Oprid-99874_-maxx-all.fp
`1/18/2007
`
`
`

`
`Case 1:07-cv-OO009—TC Document 1-2
`
`Filed 01/18/2007
`
`Page 3 of 4
`
`
`
`

`
`Case1:O7—cv-OO009—TC .Document1—2
`
`.
`Filed 01/18/2007
`
`1
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`£1
`
`
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`http://akimagesmossmediaservices.com/dyn_1i/600.0.90.0/Retailers/Sears/701P002_0061 ...
`1/18/2007
`
`
`

`
`
`
`Case 1:07—cv-00009-TC Document 1‘-3
`
`Filed 01/18/2007
`
`Page 1 of2
`
`Q13 44 (Rev. 11/04)
`
`CIVIL COVER SHEET
`
`The .78 44 civil cover sheet and t.he information contained herein neither re lace nor supplement the filing and service ofpleadings or other spots as re uired by law, except as provided
`by local rules ofcourt. This form, approved by the Judicial Conference otpthe United States in September 1974, is required for the use of
`e Clerk of out forthe purpose of initiating
`the civil docket sheet.
`(SEE INSTRUCTIONS ON'I'I:[E REVERSE OF THE FORM.)
`
`
`
`DEFENDANTS
`
`F,
`
`-
`
`__
`
`NOTE:
`
`CAP BARBELL, INC. U-5- U!STliT{Ef7Dg0URT
`County of Residence ofF dyAflrd
`SE! O.-NI. R‘ 2 l 3
`(IN U.S. PLAINTIFF
`IN LAND CONDE
`CASES, USE THE LOCATION OF THE
`LAND INVOLVED.
`C T OF UTA H
`Attorneys (ll‘Known)
`8 II".._._:_______
`DE‘PUTY CLERI1 ""“?'-
`
`
`
`I. (a) PLAINTIFFS
`ICON HEALTH & FITNESS, INC.
`
`
`Cache
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN US. PLAINTIFF CASES)
`
`(C) Attomey’s (Firm Name, Address, and Telephone Numbe-)
`WORKMAN NYDEGGER
`(801) 533-9800
`60 E. So. Temple, Ste. 1000, Salt Lake City, UT 8411 I
`II. BASIS OF JURISDICTION (Place on “X" in One Box Only)
`DI. CITIZENSHIP 0F PRINCIPAL PARTIES(i>lace an "X" in One Box for Plaintitl‘
`(For Diversity Cases Only)
`and One Box for Defendant)
`D 1
`us. Government
`81 3 Federal Question
`rvrr
`PTF
`mu?
`Plaintifl‘
`(U.S. Government Not a Party)
`Citizen of This State
`CI
`I
`Cl 4
`CI 4
`
`_
`
`DEF
`D l
`
`Incorporated ar Principal Place
`of Business In This State
`
`
`
`Cl 4 Diversity
`(Indicate Citizenship ofParties in mm III)
`
`'
`
`Citizen of Another State
`
`El 2
`
`D 2
`
`D 5 D 5
`
`U 2
`
`U.s. Government
`D"f°“"""‘
`
`
`
`
`
`
`
`D 830 Patent
`U 340 ‘Trademark
`
`
`
`
`
`
`
`
`
`DUU U
`
`
`
`0 210 Land Condemnation
`0 220 Foreclosure
`I3 230 RcntLcasc &. Ejcctment
`D 240 Torts to Land
`C1 245 TortProductLi.-rhility
`CI 290 All Other Real Property
`
`VIII. RELATED CASE(S)
`IF ANY
`
`_
`_
`_
`S
`‘ °" “"““°“°“5" moon
`
`_
`T nocmar NUMBER
`
`
`
`
`FOR OFFICE U ' ONLY
`
`APPLYING II-‘P
`AMOUNT
`
`
`
`RECEIPT it
`
`Judge Tenn Campbell
`DECK TYPE: Civil
`DATE STAMP: 01/18/2007 6 16:19:57
`CASE NUIIBER:
`1:07CV00009
`1'C
`
`
`
`Incorporated and Principal Plane
`°”’““"°" 1" ‘°‘“°”“°‘ 5”“
`Cl 6
`Cl 6
`3
`El
`D 3
`Citizenor Sublectofa
`Foreign Nation
`
`Forei nCou
`
`,. ,
`oxOn
`
`URE OF SUIT lace an “X" in OneB
`
`
`
`TORI‘-.5
`.
`I
`.
`.
`-
`.
`.
`.
`.-
`
`PERSONAL INJURY
`PERSONALINJURY 0 GW Agriculture
`CI 422 Appeal 28 USC I58
`D 400 State Reapportinnrnerit
`D I10 Insurance
`
`
`
`CI 620 Other Food & Drug
`U 423 Withdrawal
`D 310 Airplane
`D 362 Personal Injury -
`U 410 Anlitfust
`CI 120 Marine
`
`
`
`
`
`D 625 Drug Related Seizure
`28 USC 157
`CI 315 Airplane Product
`Med. Malpmetice
`El 430 Bank: and Banking
`CI I30 It/Lilla’ Act
`Liability
`[3 365 Personal Injury -
`oi'PrDpctty 21 USC 331
`CI 450 Commerce
`CI I40 Negotiable Instrument
`0 I50 Recovery of Overpayment D 320 Assault. Libel &
`ProductLiability
`CI 630 Liquor Laws
`CI 460 Deportation
`& Enforcerncnt of Judgment
`Slander
`CI 368 Asbestos Personal
`CI 640 R.R. & Truck
`CI 470 Racketeer Influenced und
`D l5l Medicare Act
`U 330 Federal Employers’
`Injury Product
`CI 650 Airline Regs.
`Corrupt Organizations
`D 152 Recovery of Defaulted
`Liability
`Liability
`0 660 Occupational
`El 480 Consumer Credit
`Student Loans
`D 340 Marine
`PERSONAL VROPERTY
`Safetyr'Heall.h
`U 490 Cnblelsnt TV
`(EKOI. Veterans)
`Cl 345 Marine Product
`D 370 Other Fraud
`D 690 Other
`CI 810 Selective Service
`
`
`r‘
`,9 -
`-- 1,
`:.r
`[3 I53 Recovery ofoverpayment
`Liability
`C]
`371 Truth inI.ending
`D 350 Sr-Ltcurities/Comrnoditiesl
`86] HIA (l39Sf1)
`o1'Veteran's Benefits
`E