throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA230857
`ESTTA Tracking number:
`08/15/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91185352
`Plaintiff
`Vita Nuova Foods, Inc.
`Meredith A. Frank
`Malloy & Malloy, P.A.
`2800 S.W. Third Avenue
`Miami, FL 33129
`UNITED STATES
`mfrank@malloylaw.com, litigation@malloylaw.com
`Motion to Suspend for Civil Action
`Meredith A. Frank
`mfrank@malloylaw.com, litigation@malloylaw.com
`/Meredith A. Frank/
`08/15/2008
`Motion to Suspend Pending Civil Case.pdf ( 57 pages )(1503574 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`
`
`IN TEE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 77/273,661
`For the mark “VITA NUOVA SALSA PARA PASTA”
`
`Published in the Official Gazette on March 18, 2008
`
`VITA NUOVA FOODS,
`
`INC.,
`
`Opposer,
`
`vs.
`
`WILSON MACIAS,
`
`Applicant.
`
`-_¢-._4-._.«-.zv-_--.--._r-_as..a~._,-....a
`
`Opposition No. 91185352
`
`0PPOSER’S MOTION TO SUSPEND PROCEEDINGS PENDING
`
`TH DETERMINATION OF A FEDERAL DISTRICT COURT CIVIL ACTION
`
`COMES NOW the Opposer, Vita Nuova Foods, Inc.,
`
`(“Vita Nuova”
`
`or “Opposer”),
`
`and pursuant TBMP §5l0.02(a),
`
`requests that
`
`the
`
`Board suspend this action pending the outcome of a federal district
`
`court civil action, and states as follows:
`
`1.
`
`Opposer brings to the Board's attention the pendency of
`
`the action styled Vita Nuova Ebods,
`
`Inc V. Vita Nuova Products,
`
`Inc. and Wilson Macias, Case Number
`
`l:O8—Cv—22l85 in the United
`
`States District Court for the Southern District of Florida.
`
`2.
`
`On August 4, 2008, Opposer filed a Complaint against
`
`Applicant Macias and his company, Vita Nuova Products,
`
`Inc.
`
`for,
`
`inter alia,
`
`injunctive and other relief under the Federal Trademark
`
`Act, 15 U.S.C. §1051, gt §§g., particularly 15 U.S.C. §1l25(a), for
`
`false designation of origin,
`
`false description or representation
`
`and unfair competition, and for a declaratory judgment for non-
`
`

`
`
`
`infringement of Macias’
`
`“VITA NUOVA" and/or VITA NUOVA SALSA PARA
`
`PASTAS”
`
`trademark and trade dress. A copy of
`
`the Complaint
`
`is
`
`attached as Exhibit A.
`
`MEMORANDUM OF LAW
`
`It is the policy of the Board to suspend proceedings when
`
`the parties are involved in a civil action which may be dispositive
`
`of or have a bearing on the Board case. General Motors Corp. V.
`
`Cadillac Club Fashions Inc.,
`
`22 USPQ2d l933(TTAB 1992). Judicial
`
`economy lies in the suspension of Board proceedings because,
`
`inter
`
`alia,
`
`the Board has limited jurisdiction involving the issue of
`
`registrability only;
`
`the Board decision is advisory to the Court,
`
`while a Court decision may bind a party in an administrative Board
`
`proceeding;
`
`and.
`
`the Board. decision.
`
`is appealable to the U-S.
`
`District Court. See Goya Ebods Inc. V. Tropicana Products Inc., 846
`
`F.2d 848,
`
`6 USPQ2d 1950 (2d Cir. 1988); see Vol. 5, J. McCarthy,
`
`McCarthy on Trademarks and Unfair Competition, §32:49 (¢“ed.).
`
`Here,
`
`the final determination of the federal court action may
`
`have a bearing on the instant proceedings as both proceedings are
`
`between the same parties and concern the same trademark rights and
`
`issues, namely, whether there is a likelihood of confusion between
`
`the parties’ marks at issue.
`
`CONCLUSION
`
`For the foregoing reasons, Opposer respectfully requests that
`
`the Board.
`
`suspend the proceedings pending disposition of
`
`the
`
`parties’ federal district court civil action pending in the United
`
`2
`
`

`
`
`
`States District Court for the Southern District of Florida.
`
`Dated: August 15, 2008
`
`Respectfully submitted,
`
`By:/Meredith A. Frank
`John Cyril Malloy, III
`jcmalloy@malloylaw.com
`Meredith A. Frank
`
`mfrank@malloylaw.com
`Malloy & Malloy, P.A.
`2800 S.W. 3rd Avenue
`
`Miami, FL 33129
`Telephone:
`(305) 858-8000
`Facsimile:
`(305) 858-0008
`
`Attorneys for Opposer
`Vita Nuova Foods,
`Inc.
`
`CERTIFICATE OF FILING
`
`I HEREBY CERTIFY that
`
`the foregoing document was
`
`filed
`
`electronically via the ESTTA, at
`
`the United States Patent and
`
`Trademark Office, Trademark Trial
`
`and Appeal Board's
`
`ESTTA
`
`electronic filing system,
`
`this 15% day of August, 2008.
`
`By:/Meredith A. Frank/
`Meredith A. Frank
`
`Malloy & Malloy, P.A.
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that
`
`a
`
`true and complete
`
`copy of
`
`the
`
`foregoing document has been served on the following by mailing said
`
`Copy on August l5, 2008, via First Class Mail, postage prepaid to:
`
`Wilson Macias
`
`3870 West 9th Court
`
`Hialeah, FL 33012
`
`By:/Meredith A. Frank/
`Meredith A. Frank
`
`Malloy & Malloy, P.A.
`
`

`
`EXHIBIT A
`
`

`
`
`
`Case 1:08-93-22185-DLG Document 1
`
`Eeieredfon FLSD Docket 08/05/2008
`
`Page 1 of 52
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`08-22185-CIV-GRAHAMITORRES
`
`VITA NUOVA FOODS,
`
`INC.,
`
`a Florida corporation,
`
`Plaintiff,
`
`V.
`
`INC.
`VITA NUOVA PRODUCTS,
`a Florida corporation and
`WILSON MACIAS, an individual,
`
`Defendants.
`~
`
`’
`
`.
`)
`
`FiLEiZ>by
`E,mRO,,,C
`
`IG ac.
`
`AUGUST 4, 2008
`
`srsvan M.L#RlMORE
`CL£fiK us. 9533'.
`(:1.
`5.9. O: Ftfi,-MIAMi
`
`COMPLAINT
`
`COMES NOW the Plaintiff, vm. NUOVA FOODS‘,
`
`INc., .a Florida.‘
`
`Cornoration,
`
`(“Plaintiff”), and complains against Defendants, VITA
`
`INC., a Florida corporation (“Defendant Vita Nuova
`NUOVA_PRODUCTS,
`Prodncts”l and WILSON MACIAS (“Defendant Macias")
`(collectively
`
`“Defendants”) and alleges as follows:
`
`JURISDICTION, PARTIES AND VENUE
`
`1.
`
`This is an action for injunctive and other relief under
`
`the Federal Trademark Act, 15 U.S.C. §lO5l, gt sag.
`
`(“Lanham_Act"),
`
`Oparticularlyllfi U.S-C. §1125(a), for false designation of origin,
`
`false description or representation and unfair competition, and for
`
`a declaratory judgment for non—infringement of Defendant's “VETA
`NUOVA” AND/OR VITA NUOVA SALSA PARA PASTAS"
`trademark and trade
`dress. Plaintiff also asserts claims under the Florida Trademark
`
`Act, §495.011, gt seg., and in accordance with common law rights,
`
`1uf52
`
`

`
`
`
`Case 1:08—cv~221_85-DLG Document 1
`
`Enézered on FLSD Docket 08/05/2008
`
`Page 2 of 52
`
`Fla. Stat.
`
`§495.16l,
`
`for
`
`trademark
`
`infringement
`
`and unfair
`
`competition, -and for
`
`tortious interference with. a contractual
`
`relationship.-
`
`2.
`
`Plaintiff is a corporation duly organized and existing
`
`under the laws of Elorida, and having an address at 11023 S.W. 88th
`Street, Suite "Ir/1-102, Miami, Florida 33176.
`
`3..
`
`Upon
`
`information and belief,
`
`iDefendant Vita Nuovag
`
`Products is a corporation duly organized and existing under the
`
`laws of Florida, with an address of 3870 West 9”‘Court, Hialeah,
`
`Florida 33012,
`
`and doing business within Miami—Dade County,
`
`Florida.
`
`4.
`
`Upon information and belief, Defendant_Macias
`
`is an
`
`"individual residing in Miami—Dade County with an address at 870
`
`West 9*‘ Court, Hialeah, Florida 33012.
`
`5.
`
`This Court has jurisdiction over this action pursuant to
`
`28 U.s.c.f§§1.331,
`
`l338(a),
`
`l33_£§(b) and 2201.. This Court also has
`
`jurisdiction. pursuant
`
`to 15 U.S.C.
`
`§1l21 "and.
`
`the doctrine of
`
`supplemental
`
`jurisdiction,
`
`as
`
`set
`
`forth in 28 U.S.C.
`
`§1367.
`
`Moreover,
`
`this action involves a federal trademark application and
`
`relief requested with respect to same.
`
`6.
`
`Jurisdiction is
`
`proper
`
`in that
`
`Defendants,
`
`upon
`
`information and belief, have operated, conducted, engaged in, or
`
`carried on a business venture in this State,
`
`and the Southern
`
`District of Florida,
`
`from which this action arises, within the
`
`2of52
`
`

`
`
`
`Case f:O8—c_v522‘E85—DE_G Document 1
`
`Entered on FLSD Docket 08/0512088
`
`Page 3 of 52
`
`meaning of Fla. Stat. §48.l93(l)(a).
`
`7.
`
`Jurisdiction is
`
`proper
`
`in
`
`that Defendants,
`
`upon
`
`information and belief, have committed tortious acts within this
`
`State,
`
`and the -Southern District of Florida,
`
`including the
`
`infringement and interference set forth herein, within the meaning
`
`of Fla. Stat. §42_3.193(1)(b).
`8.
`Jurisdiction is
`
`proper
`
`in
`
`that Defendants,
`
`upon
`
`information‘ and belief,
`have
`engaged in substantial
`and not
`isolated activity within this state, and the Southern District of
`
`Florida, within the meaning of Fla. Stat. §48[193(f).
`in
`9.
`Venue is proper under 28 U.S.C. §§139l(b) and 1391(c)
`the wrongful acts committed by Defendants occurred in the
`
`that
`
`Southern District of Florida, and a substantial part of the events
`
`-or omissions giving rise to the claim occurred therein.
`
`PLAINTIFF’ s TRADEMARK
`
`10. Plaintiff owns
`
`the inherently= distinctive brands and
`
`trademark “VITA NUOVA” used in connection with tomato, pasta and
`Italian style sauces.
`In conjunction with Plaintiff's “VITA NUOVA"
`trademark, Plaintiff uses the design of a green and white stripped
`
`umbrella on top of a black table (the “Umbrella Logo")._See Exhibit
`
`A hereto. Plaintiff's “VITA NUOVA"
`
`trademark and “Umbrella Logo”
`
`shall collectively be referred to as Plaintiff's “VITA NUOVA"
`
`Trademarks.
`
`11.
`
`Since long prior to the acts of Defendants complained of
`
`3Df52
`
`

`
`
`
`Case 1:08-—cv~2'2185—DLG Documenéi
`
`Entered as FLSD Dosket 08/05/2008
`
`Page 4 of 52
`
`herein, Plaintiff, either directly or
`
`through.
`
`licensees, has
`
`dachieved wide—spread
`
`and substantial
`
`sales,
`
`advertising,
`
`and
`
`its tomato, pasta and Italian style sauces under
`promotion of
`Plaintiff's “VITA NUOVA" Trademarks,
`throughout Florida and the
`
`United States.
`
`12.
`
`_At least prior to the infringement complained of herein,
`
`Plaintiff's
`
`“VITA NUOVA”
`
`Trademarks
`
`have
`
`come —to
`
`identify
`
`Plaintiff's tomato, pasta and
`
`Italian style sauces,
`
`and to
`
`distinguish said goods from the goods and services of others, and
`
`have achieved a secondary meaning to the consuming public.
`
`13, Plaintiff_ is
`
`also the
`
`owner of Florida trademark
`
`Registration No. T080000O_O492 forjthe mark “VITA NUOVA FOODS and
`
`the Umbrella Logo" for food services of beverage and Italian style '
`
`sauces. See Exhibit B hereto._
`
`DEFENDANTS'
`
`INFRINGING ACTIVITY
`
`On or about February 20, 2001, despite having never used
`I4.
`the “VITA NUOV ”
`trademark in commerce in the State of Florida or
`anywhere and with full knowledge of Plaintiff's prior rights and
`
`willful disregard thereof, Rafael Diaz ("Diaz") applied for and
`
`received Florida trademark Registration No. TOlO0O0O0249 for the
`
`“VITA NUOV "
`
`trademark
`
`in connection with spaghetti
`
`sauce
`
`(hereafter the “Infringing Florida Registration”). See Exhibit C
`
`hereto.
`
`40f 52
`
`

`
`
`
`Case 1:O8—c'v—22185~DE_G Document 1
`
`Entered on FLS9 Docket 0§3/05/2.008 Page 5 of 52
`
`15.
`
`In the trademark application, Diaz verified that he first
`
`used the “VITA NUOVA”
`
`trademark on January 25, 2000. See Exhibit C.
`
`16. Upon information and belief, Diaz never used the “VITA
`
`_NUOV ”
`
`trademarkl
`
`including on.
`
`January 25,
`
`2000 or
`
`anytime
`
`thereafter.
`
`17. Diaz signed the application for the Infringing Florida
`
`Registration under penalty of perjury that:
`
`. has the right to use such mark
`. no other person.
`.
`.
`in Florida either in the identical form or in such near
`resemblance as to be likely to deceive or confuse or to
`be mistaken thereof.
`I make
`this affidavit
`and -
`
`further
`I
`verification on my/the applicant's behalf.
`acknowledge that I have read the application'and know the
`contents thereof and the facts stated herein are true and
`"correct.
`
`Exhibit C hereto.
`
`18.
`
`.Said oath was made by Diaz, despite his knowledge of
`
`Plaintiffis rights in Plaintiff's “VITA NUOVA” Trademarks and
`despite never having used the mark in commerce in the State of
`Florida or anywhere.
`
`A
`
`19. On or
`
`about. September 4,
`
`2007, Diaz assigned the
`
`Infringing Florida Registration to Defendant Macias. See Exhibit C.
`
`20.
`
`On or about September 6, 2007, Defendant Macias submitted
`
`to the United States Patent and Trademark_0ffice an application for
`
`trademark registration for the mark “VITA NUOVA SALSA PARA PASTA",
`
`Serial No. 77/273,661 (the “Infringing Federal Application"), based
`
`on a bona fide intent to use the mark in commerce pursuant to 15
`
`U.S.C. §105l(b), as amended and not based on actual use of the mark-
`
`5 of 52
`
`

`
`
`
`case ’i_:€)8-cv-22185—DLG
`
`Document 1
`
`_ Entered on ass Docket {BSIQS/2008
`
`Page 6 0552
`
`in commerce pursuant to U.S.C. §lO5l(a), as amended. See Exhibit D
`
`hereto.
`
`21.
`
`The filing date of Defendant Macias’ Infringing Federal
`
`Application is well after the establishment by Plaintiff of its
`,rights to the “VITA NUOVA" Trademarks, and should said application
`
`for registration mature to registration,
`
`it would cause harm to
`
`Plaintiff,
`
`and," create a
`
`likelihood of
`
`confusion among
`
`the
`
`consuming public
`
`as
`
`to source
`
`and origin,
`
`in relation to
`
`Plaintiff's
`
`products
`
`sold
`
`under Plaintiff’s
`
`“VITA
`
`NUOVA"
`
`Trademarks.
`
`On July 17, 2008, Plaintiff filed a Notice of Opposition
`22.
`of Defendant Macias’ Infringing Federal Application for the “VITAA
`
`NUOVA SALSA PARA PAST "
`
`trademark with the United States Trademark
`
`Trial and Appeal Board,
`
`23.
`
`Long subsequent
`
`to Plaintiff's adoption_ and use of
`
`Plaintiff's “VITA NUOVA" Trademarks in commerce, and also, upon
`
`information and belief, Defendants commenced the sale of pasta and
`
`spaghetti.
`
`sauces within.
`
`the State of Florida, designated xmith
`
`Plaintiff‘s “VITA NUOVA” Trademarks and the “VITA NUOVA SALSA PARA
`
`PASTA“ Trademark,
`including said trademarks
`on
`»(hereafter the “Infringing ‘VITA NUOVA' Trademarks")-
`
`advertising
`
`24. Upon information and belief, Defendants jointly exercise
`
`control over the nature and quality of
`
`the pasta and spaghetti
`
`sauces sold under Defendants’ Infringing “VITA NUOVA” Trademarks.
`
`Bof 52
`
`

`
`
`
`Case 1:O8—cv-22385-DLG p Document 1'
`
`Entered on FLSD Docket 08i05!2008
`
`Page 7 of 52
`
`25. Upon information and belief, Defendant Macias actively
`
`and knowingly caused the trademark infringement.
`
`Individually and
`
`aspa corporate officer, Defendant Macias directed, controlled,
`
`ratified,-participated in, and/or is the moving force behind the
`
`’infringing activity set forth herein.
`
`26. Upon information and belief, Defendants jointly exercise
`
`control over the_nature and quality of advertising for said goods,
`
`including the Infringing “VITA NUOVA” Trademarks.
`
`27. Upon
`
`information. and belief, Defendants enjoyed and
`
`continue to enjoy financial gain and profit
`from the sale and
`marketing of pasta and spaghetti sauces, whose packaging include
`the Infringing “VITA NUOVA” Trademarks.
`‘
`28.
`The use by Defendants of
`the Infringing “VITA NDOVA”
`
`Trademarks
`in conjunction with pasta and spaghetti
`sauces and
`advertising therefore are a virtually identical copy and imitation
`
`of Plaintiff's “VITA NUOVA" Trademarks, and are used on or
`
`in
`
`connection. with goods
`
`identical or substantially‘
`
`identical
`
`to
`
`Plaintiff's goods;
`
`29. Upon information and“be1ief, Defendants were well aware
`
`and,
`since long prior to the acts of Defendants_complained of
`herein, have been. well aware of
`the goodwill
`represented. and
`
`symbolized by Plaintiff's “VITA NUOVA" Trademarks, and Plaintiff's
`
`ownership and use in commerce thereof.
`
`30.
`
`_Upon information and belief, Defendants have been well
`
`7 of 52
`
`

`
`
`
`Case 1:08—cv-22185-DLG Document 1
`
`Entered on FLSD Docket O8iO5/2008
`
`Page 8 of 52
`
`aware that Plaintiff's “VITA NUOVA” Trademarks were, at the time of
`introduction of the infringing products and the Infringing “VITA
`
`NUOVA" Trademarks, widely recognized and relied upon by the public
`and the trade as identifying Plaintiff, and Plaintiffis tomato,
`
`pasta and Italian style sauces.
`31. Notwithstanding that knowledge, and indeed by reason of
`such knowledge, Defendants
`thereafter engaged in,
`and it; is
`
`believed will continue to engage in a deliberate and willful scheme
`
`to trade upon and to misappropriate for themselves the goodwill
`represented and symbolized by Plaintiff's “VITA NUOVA” Trademarks,-
`through the distribution and sales of competing pasta and spaghetti
`sauces bearing the Infringing “VITA NDOVA” Trademarks in the State
`
`of Florida.
`
`sent» a- letter via
`2QO8, Plaintiff
`on February 14,
`32.
`[certified mail,
`return.
`receipt
`requested to" Defendant
`“Macias
`
`providing Defendants an opportunity to cease and desist using the
`
`.Infringing
`“VITA NUOV ”_ Trademarks.
`See Exhibit
`E hereto.
`Defendants, however, did not respond to Plaintiff‘s letter and have
`
`not
`
`ceased use
`
`of
`
`the
`
`Infringing “VITA NUOVA” Trademarks.
`
`Plaintiff,
`
`therefore, had no alternative but
`
`to file the present
`
`action.
`
`The acts of Defendants complained of herein constitute
`33.
`willful and intentional infringement of Plaintiff's “VITA NUOVA”
`
`Trademarks, are in total disregard of Plaintiff's rights, and were
`
`B of52
`
`

`
`
`
`Case 1:.08—<:v-22185—E3LG T Documeni: 1
`
`Entered on FLSD Decks’: Q8;’O5l2008
`
`-Page 9 01°52
`
`commenced and it is believed will continue in spite of Defendants’
`
`knowledge that their-use of the Infringing “VITA NUOV " Trademarks
`
`‘are in direct contravention of Plaintiff's rights.
`
`34{ Defendants’ aforesaid use of the Infringing “VITA NUOVA”
`
`Trademarks are designed and calculated to and are likely to cause
`
`confusion,
`
`to cause mistake,
`
`and
`
`to deceive- customers
`
`and
`
`to the origin or, sponsorship of
`as
`customers
`prospective
`Defendants’ products and to cause them to falsely beliere'that said
`
`_products are_the products of Plaintiff, or are sponsored,
`
`licensed,
`
`authorized, or approved by Plaintiff, all
`
`to the detriment of
`
`Plaintiff,
`
`the trade, and the public.
`
`35.
`
`The use by Defendants of
`
`the Infringing “VITA NUOVA”
`
`Trademarks
`
`is without
`
`the consent,
`
`license, or permission. of
`
`Plaintiff.
`
`DEFENDANTS' ACTS or INTERFERENCE WITH
`PLAIN'I'IFF’S CONTRACTUAL RELATIONSHIPS
`
`36.
`
`On July 24, 2008, Defendants,
`
`through their counsel, sent
`
`a cease and desist
`
`letter to Plaintiff's largest customer and
`
`wholesaler, Associated Grocers of Florida,
`
`Inc.
`
`(“Associated
`
`Grocers"), stating that Plaintiff is “selling its product through_
`
`[Associated Grocers]
`
`to supermarkets,
`
`including but not limited to
`
`Sedano‘s Supermarket” and demanding,
`
`inter alia,
`
`that Associated
`
`Grocers “remove all offending goods from the market immediately" or
`
`they would seek legal action against Associated Grocers.
`
`See
`
`letter dated July 24, 2008 attached hereto as Exhibit F.
`
`9
`
`9 uf52
`
`

`
`
`
`Case 1:G8—cv—22‘l85—DLG Documenfi H Entered on FLSD Docket 08/05/2008
`
`Page 10 of 52
`
`37. Defendants’
`
`July 24,
`
`2008 letter falsely claims that
`
`Associated Grocers was selling a pasta sauce using "Defendant
`
`Macias’
`
`“VITA NUOVA SALSA PARA PAST ” mark and trade dress. See
`
`Exhibit F-
`38. Defendants’ July 24, 2008 letter falsely claims that.the
`
`sale of products under Plaintiff's VITA. NUOVA Trademarks’ by
`Associated Grocers was
`an infringement of Defendant Macias’
`
`“registered mark,” common law rights and trade dress (see Exhibit
`F) although Defendant Macias is the infringer and not Plaintiff.
`33. Defendants’
`July 24,
`2008 letter falsely claims that
`
`Defendant.Macias owns a federal
`
`trademark registration for the
`
`“VITA NUOVA SALSA PARA PASTA"
`
`trademark’ (see Exhibit F) ‘although
`
`Defendant Macias only has a trademark application (see Exhibit D)
`which is currently being opposed by Plaintiff.
`40. Defendants’ July 24, 2008 letter falsely claims that they
`
`have taken legal action taken against Plaintiff for cancellation of
`its Florida trademark registration for the “VITA.NUOVA” Trademark
`
`and for trademark infringement. See Exhibit F.
`
`41. As
`
`a
`
`result of
`
`the
`
`false representations made
`
`in
`
`Defendants’ July 24, 2008 letter, Associated Grocers refused to
`accept a shipment of approximately 600 cases of Plaintiff's “VITA
`NUOVAV products scheduled for July 29, 2008 and have also refused
`
`to accept any further shipments from Plaintiff
`
`(see Exhibit G)
`
`thereby causing damages to Plaintiff.
`
`10
`
`10 (W52
`
`

`
`
`
`Case 1:03-92-22Ԥ85-D-I_G Document 1 5 Entered on FLSD Docket 08/05/2008
`
`Page 11 of S2
`
`42. Upon information and belief, on or about July 24, 2008,
`
`Defendants also sent
`
`a cease
`
`and desist
`
`letter
`
`to" Sedano’s
`
`Supermarket
`
`(“Sedano's") making
`
`the
`
`same or
`
`similar
`
`false
`
`representations and. demanding‘
`
`that Sedano’s flremove P1aintiff’s
`
`“VITA NUOVA" products from its stores.
`
`M 43. Upon information and belief, as a result of Defendants’
`
`letter, Sedano's has
`
`removed all of‘ Plaintiff's “VIT%. NUOVA”
`
`products from its stores thereby causing damages to Plaintiff.
`
`gcomsrr I — FALSE DESIGNATION. DESCRIPTION,
`AND REPRESENTATION UNDER THE LAN!-IAM ACT
`
`44, Plaintiff incorporates herein each and every allegation
`
`set forth in Paragraphs 1 through 43 as if fully set forth herein.
`
`45. Defendants’
`intentional and unlawful use in commerce of
`the Infringing “VITA NUOVA" Trademark constitutes use in commerce
`
`of a word,
`
`term, name,
`
`symbol, or device, or a combination thereof,
`
`or a false designation of origin, false or misleading description,
`and false representation that is likely to cause confusion, or to
`
`cause mistake, or to deceive as to affiliation, connection, or
`
`association of Defendants with Plaintiff, or as
`
`to origin,
`
`sponsorship or approval of the goods of Defendants by Plaintiff.
`
`' 46. Defendants’ aforesaid acts, and attempted registration of
`
`the Infringing “VTTA NUOVA SALSA PARA PASTA” Trademark constitute
`
`unfair competition and false designation and/or false description
`
`of origin in violation of §43(a) of
`
`the Lanham Act,
`
`15 U.S.C.
`
`§l,l25 (a) (1) (A) .
`
`ll
`
`119:5:
`
`

`
`
`
`Case 1:08-cv—221-85-DLG
`
`fiocament 1
`
`Eniered on FLSD Docket.G8l05/2008
`
`Page 12 of 52
`
`47: Defendants’ acts have harmed. Plaintiff's reputation,
`severely damaged Plaintiff's goodwill, and upon information and
`
`belief, have diverted sales from Plaintiff.
`48. Defendants’ aforesaid acts haye caused and will cause
`
`great and irreparable injury to Plaintiff, and unless said acts are
`
`restrained by this Court,
`
`they will be continued and Plaintiff will
`
`icontinue to suffer great and irreparable injury.
`
`49. Plaintiff has no adequate remedy at law.
`
`COUNT II — TRADEMARK INFRINGEMENT UNDER FLA.- STAT. §495.131
`
`50. Plaintiff incorporates herein each and every allegation
`
`set forth in Paragraphs 1 through 43, as if fully set forth herein.i
`
`51. Defendants’
`
`aforesaid
`
`acts
`
`constitutes
`
`itrademark
`
`infringement, misappropriation, and misuse of the Plaintiff's “VITA
`
`NUOVA" Trademarks, unfair" competition,
`
`trademark infringement,
`
`palming—off,
`
`passing—off
`
`and/or
`
`reverse—passing off,
`
`against
`
`Plaintiff and unjust enrichment of Defendants, all in violation of
`
`Plaintiff's rights under
`
`the law of
`
`the State of Florida in
`
`accordance with Fla. Stat. §495.13l.
`
`52. Defendants’ acts have harmed. Plaintiff's reputation,
`
`severely damaged Plaintiff's goodwill, and upon information and
`
`belief,
`
`have diverted sales
`
`from Plaintiff
`
`and create
`
`the
`
`impression that Plaintiff is an infringer when in fact Defendants
`
`‘are the infringers.
`
`S3. Defendants’ aforesaid acts have caused and will continue
`
`12
`
`12 of52
`
`

`
`
`
`Case f:08—cv-221815—DL_G Document 1
`
`Entered on FLSD Docket O8/052008
`
`Page 13 of 52
`
`to cause great and irreparable injury to Plaintiff, and unless said
`acts are restrained by this Court,
`they will be oontinued and
`Plaintiff will continue to suffer great and irreparable injury.
`
`54; Plaintiff has no adequate remedy at law.
`
`COUNT III — UNFAIR eoNPE'rI'.-r3:oN/
`gcoMNoN LAW _TR.A13s'MAR:K INFRINGEMENT
`
`55. Plaintiff incorporates herein each and every allegation
`
`set forth in Paragraphs 1 through 43,-as if fully set forth herein.
`
`56. Defendants‘
`
`aforesaid acts constitute infringement,
`
`misappropriation,
`
`and
`
`nnsuse
`
`of
`
`Plaintiff's:
`
`“VITA NUOVA"
`
`2Trademarks, unfair competition,
`
`trademark infringement, palming—
`
`off, passing—off and/or reverse—passing off, against Plaintiff and
`
`unjust enrichment of flefendants, all in violation of Plaintiff's
`
`rights at common law and under the law of the State of Florida in
`
`accordance with Fla. Stat.
`
`'§495.151.
`
`57. Defendants’ acts have harmed. Plaintiff's reputation,
`
`severely damaged Plaintiff's goodwill, and upon information and
`
`_belief,
`
`have diverted sales
`
`from Plaintiff
`
`and create the"
`
`impression that Plaintiff is an infringer when in fact Defendants
`
`are the infringers.
`
`58.
`
`‘Defendants’ aforesaid acts have caused and will continue
`
`to cause great and irreparable injury to Plaintiff, and unless said
`acts are restrained by this Court,
`they will be continued and
`Plaintiff will continue to suffer great and irreparable injury.
`
`59. Plaintiff has no adequate remedy at law-
`
`l3
`
`13 of52
`
`

`
`
`
`Case 1:08—cv—22185-DLG Document 1
`
`Entered ‘on FLSD Dockei 08/05/2008
`
`Page 14 of 52
`
`COUNT IV — CANCELLATION OF FLORIDA REGISTRATION
`UNDER FLA. STAT. §495.101(3)(a)— ABANDONMENT
`
`60. Plaintiff incorporates herein each and every allegation
`
`set forth in Paragraphs l through 43, as if fully set forth herein.
`61. On or about February 20,
`2001, Diaz applied for and’
`
`received the Infringing Florida Registration for the “VITA NUOVA"
`
`trademark in connection with spaghetti sauce.
`
`62. Upon information and belief, Diaz never used the “VITA
`NUOV ”
`trademark in commerce in the State of Florida or anywhere
`
`including from January 25, 2000 to the present.
`
`63. On September 4,
`
`2007, Diaz ‘assigned.
`
`the Infringing
`
`Florida Registration to Defendant Macias.
`
`64. Diaz abandoned the “VITA NUOVA"
`
`trademark and_as such,
`
`Defendant Macias is not entitled to continue registration of the
`
`Infringing Florida Registration.
`
`65. Plaintiff seeks cancellation of Florida Registration No.
`
`TO1000000249 pursuant to Fla. Stat. §495.10l(3)(a).
`
`66. Defendants’ aforesaid acts have caused and wil1'continue
`
`to cause great and irreparable injury to Plaintiff, and unless said
`
`they will be continued and
`acts are restrained by this Court,
`Plaintiff will continue to suffer great and irreparable injury.
`
`67. Plaintiff has no adequate remedy at law.
`
`COUNT V - CANCELLATION OF FLORIDA REGISTRATION
`UNDER FLA. STAT. §495.101 {3){d)
`- FRABDULENT REGISTRATION
`
`68. Plaintiff incorporates herein each and every allegation
`
`'14
`
`14 of 52
`
`

`
`
`
`Case 1:08—cv-22185—DLG Document 1
`
`Entered on FLSD Docket 08/65/2008
`
`Page '15 of 52
`
`set forth in_Paragraphs 1 through 43, as if fully set forth herein.
`
`69.
`On or about February_20, 2001, Diaz applied for and
`received the Infringing Florida Registration for the “VITA NUoVA”
`trademark_in connection with spaghetti sauce.
`I
`F.
`
`70.
`
`In the application, Diaz stated that he first used the
`
`“VITA NUOVA” mark in January 25, 2000.
`71. Upon information-and belief, Diaz never used the “VITA.
`trademark including on January 25,
`2000 or
`anytime
`
`NUOV V
`
`thereafter.
`
`72. Diaz signed the application for the Infringing Florida
`
`Registration under penalty of perjury that:
`
`. has the right to use such mark
`. no other person.
`.
`in Florida either in the identical form or in such near
`
`.resemb1ance as to be likely to deceive or confuse or to
`be mistaken thereof.
`-I make
`this affidavit
`and
`verification on nwithe applicant's behalf.
`I
`further
`acknowledge that I have read the application and know the
`ccontents.thereof and.the facts stated herein are true and
`correct.
`
`T73. Said oath was made by Diaz, despite his knowledge of
`
`Plaintiff's rights in. Plaintiff's “VIIA NWOVA" Trademarks and
`
`despite never having using the mark in commerce in the State of
`
`Florida or anywhere.
`
`74. Plaintiff seeks cancellation of Florida Registration No.
`
`T01000000249 pursuant to Fla. Stat. §49§.l01 (3)(d).
`
`75. Defendants’ aforesaid acts have caused and will continue
`
`to cause great and irreparable injury to Plaintiff, and unless said
`
`acts are restrained by this Court,
`
`they will be continued and
`
`15
`
`‘I5 of 52
`
`

`
`
`
`Case 1:08—cv—22185—8LG Document 1
`
`Entered on FLSD Docket 08/05/2008
`
`Page 16 of 52
`
`Plaintiff will continue to suffer great and irreparable injury.
`
`76. Plaintiff has no adequate remedy at law.
`
`COUNT VI — CANCELLATION OF FLORIDA REGISTRATION
`UNDER FLA. STAT. §495.101(3) (E)
`— LIKELII-IOOD OF CONFUSION
`
`77. Plaintiff incorporates herein each and every allegation
`set forth in Paragraphs 1 through 43, as if fully set forth herein.
`
`78. On or about February 20, 2001, Diaz applied for and
`
`received the Infringing Florida Registration for the mark “VITA
`
`NUOV "
`
`in connection with spaghetti sauce.
`
`79.
`
`On September 4,
`
`2007, Diaz assigned the Infringing
`
`Florida Registration to Defendant Macias.
`
`80.
`
`Since long prior to any date upon which Defendants may
`
`rely, Plaintiff
`
`adopted and used the
`
`inherently distinctive
`
`designation and Plaintiff's “VIDA NUOVA” Trademarks for and in
`
`connection with tomato, pasta and Italian style sauces.
`
`‘
`
`81. There is a likelihood of confusion between Plaintiff's
`
`“VITA NDOVA" Trademarks for its goods and Defendants’
`
`Infringing
`
`“VITA. NUOVAFT Trademark for
`their goods,
`Infringing Florida Registration.
`
`as set
`
`forth in the
`
`82.
`
`If Defendant Macias
`
`is permitted to maintain.
`
`said
`
`registration,
`
`there will be a continued likelihood of confusion,
`
`mistake, and deception among the consuming public and the trade,
`
`all in violation of Fla. Stat. §495.l3l.
`
`83. Plaintiff seeks cancellation of Florida Registration No;
`
`TOlOO0O0O249 pursuant to Fla. Stat. §495.l0l(3)(f)-
`
`'16
`
`16 of52
`
`

`
`
`
`Case 1:68-cv—22185-DLG Document ‘i
`
`Entered on FLSD Docket O8i05l2008
`
`Page 17 of 52
`
`84. Defendants’ aforesaid acts have caused and will continue
`
`to cause great and irreparable injury to Plaintiff, and unless said
`
`they will be continued and
`acts are restrained by this Court,
`Plaintiff will continue to suffer great and irreparable injury.
`
`85. Plaintiff has no adequate remedy at law.
`
`COUNT VII — TORTIOUS INTERFERENCE WITH A BUSINESS RELATIONSHIP
`
`86. Plaintiff incorporates herein each and every allegation
`
`set forth in Paragraphs 1 through 43, as if fully set forth herein.
`
`87. At all times material, Defendants knew of the existence
`
`of
`
`the business relationship between. Plaintiff
`
`and. Associated
`
`Grocers.
`
`88. Defendants
`
`intentionally and unjustifiably interfered
`
`"with this relationship by sending a cease and desist
`
`letter to
`
`Associated Grocers which contained various“misrepresentations.
`
`89. At all times material, Defendants knew of the existence
`
`of the business relationship between Plaintiff and Sedano's.
`
`90.
`
`.Defendants
`
`intentionally" and 'unjustifiably'
`
`interfered
`
`with this relationship by sending a cease and desist letter to
`
`Sedano's which contained Various misrepresentations.
`
`91. As
`
`a. result of Defendants actions described. herein,
`
`Plaintiff has been damagedf
`
`
`
`COUNT VIII — DECLARATORY ACTION FOR INVALIDITY,
`UNENFORCEABILITY AND NON-INFRINGEMENT
`
`92. Plaintiff incorporates herein each and every allegation
`
`set forth in Paragraphs 1 through 43, as if fully set forth herein.
`
`1'7
`
`17of52
`
`

`
`
`
`Case 1:08—cv-22185-DLG Decumenti
`
`Entered on FLSD Docket 08/052008
`
`Page '58 of 52
`
`93. Defendants
`
`claim they own
`
`trademark rights
`
`in the
`
`Infringing “VITA NUOVA” Trademarks and that Plaintiff has infringed
`
`saiddrights.
`
`994. Plaintiff has not
`
`infringed any valid or enforceable
`
`trademark rights of Defendants and is not liable for damages.
`
`95. Plaintiff seeks a declaration from this Court that the
`
`[Infringing “VITA NUOVA” Trademarks used by Defendants are invalid,
`unenforceable and/or not infringed by Plaintiff.
`‘
`
`
`
`COUNT IX — DECLARPLTORY ACTION FOR INVALIDITY,
`UNENFORCEABILITY A-1".|'.D NON—INFRINGEMENT
`
`96. Plaintiff incorporates herein each and every allegation
`
`set forth in Paragraphs 1 through 43. as if fully set forth herein.
`
`97.. Defendants claim that
`
`they own trade_dress rights in
`
`connection with the packaging of their pasta and spaghetti sauce
`
`‘sold under Defendant's Infringing “VITA NUOVA” Trademarks}
`
`98. Plaintiff has not
`
`infringed_any valid or enforceable
`
`trade dress rights of Defendants and is not liable for damages.
`
`99. Plaintiff
`
`seeks
`
`a declaration from this- Court
`
`that
`
`Defendants’ alleged trade dress is invalid, unenforceable and/or
`
`not infringed by Plaintiff.
`
`'WHEREFORE, Plaintiff prays:
`
`A.
`
`That this Court will adjudge that the Plaintiff's “VITA
`
`NUOVA” Trademarks have been infringed, as a direct and proximate
`
`result of
`
`the willful acts of Defendants as set forth in this
`
`Complaint,
`
`including Defendants’ use of the Infringing “VITA NUOVA”_
`
`l8
`
`18 of 52
`
`

`
`
`
`Case 1 :98—cv-22185—DLG Document 1
`
`Entered on FLSD Docket 0305312008
`
`Page $9 of 52
`
`Trademarks,
`
`in violation of Plaintiff's rights under the Florida
`
`Trademark Act, §495.011 §Ei§eg., and the common law;
`B.
`_That
`this Court will
`adjudge
`that Defendants have
`competed unfairly with Plaintiff in violation of Plaintiff's rights
`at common law.
`I
`I
`
`C.
`
`That Defendants, and all officers, directors, agents,
`
`servants, employees, attorneys, successors, and assigns, and all
`
`persons
`
`in active
`
`concert
`
`or participation,
`
`therewith,
`
`be
`
`preliminarily and permanently enjoined and restrained:
`
`1)
`

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