Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA266955
`ESTTA Tracking number:
`02/17/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91187612
`Plaintiff
`Virgin Health, Inc.
`M. Keith Lipscomb
`Lipscomb, Brady & Bobadilla, PL
`2 Biscayne Blvd.PH 3800
`Miami, FL 33131
`UNITED STATES
`Klipscomb@lbbfirm.com
`Other Motions/Papers
`M. Keith Lipscomb, Esq.
`klipscomb@lbbfirm.com
`/M. Keith Lipscomb/
`02/17/2009
`Notice of Dismissal in Federal Case and Motion to Continue to Suspend the
`Opposition.pdf ( 5 pages )(171319 bytes )
`Exhibit A.pdf ( 16 pages )(712377 bytes )
`Exhibit B.pdf ( 1 page )(41714 bytes )
`Exhibit C.pdf ( 1 page )(34388 bytes )
`Exhibit D.pdf ( 17 pages )(835920 bytes )
`Exhibit E.pdf ( 32 pages )(1316447 bytes )
`Exhibit F.pdf ( 19 pages )(893301 bytes )
`Exhibit G.pdf ( 9 pages )(449713 bytes )
`Exhibit H.pdf ( 31 pages )(1305186 bytes )
`Exhibit I.pdf ( 2 pages )(105349 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 187612
`91 187614
`
`%/\/\./&/\/
`
`)
`
`) )
`
`In re Matter of:
`
`VIRGIN HEALTH CORPORATION,
`
`V.
`
`Opposer,
`
`VIRGIN ENTERPRISES, LTD.
`
`Applicant.
`
`) ) 0
`
`Application Serial Nos. 78/70287 & 78/7029
`Mark: VIRGIN
`
`Filed: February 28, 2005
`Published: July 22, 2008
`
`NOTICE THAT THE S.D. OF FLA. DISMISSED CASE NO. 08-22557-CIV-
`
`UNGARO/SIMONTON
`
`AND,
`
`MOTION TO CONTINUE TO SUSPEND THE OPPOSITIONS DURING THE
`
`PENDENCY OF S.D. OF FLA. CASE NO. 09-20399-CIV-LEONARD/GARBER
`
`Opposer, Virgin Health, Inc., hereby gives notice that the S.D. of Fla. dismissed case No.
`
`08-22557-CIV-UNGARO and moves for the entry an order continuing to suspend Oppositions
`
`91187612 and 91187614, during the pendency of S.D. Fla. Case. No. 09-20399—CIV-
`
`LEONARD/GARBER, and states:
`
`1.
`
`Applicant, Virgin Enterprises, Ltd. (“VEL”), is the trademark holding company
`
`for the Virgin Group, see VEL’s Motion to Dismiss (without exhibits) p. 1-2, attached as Exhibit
`
`“A.”
`
`LBB 7465.doc
`
`

`
`2.
`
`The Virgin Group is comprised of “200 [VIRGIN] branded companies,
`
`employing approximately 50,000 people, in 29 countries [with] revenues... exceed[ing] US $20
`
`Billion,” see the Virgin Group’s website attached as Exhibit “B.”
`
`3.
`
`VEL’s sole duties are "(a) negotiating and concluding agreements licensing
`
`Virgin Group (and occasionally, Non-Virgin Group) companies to identify goods or services as
`
`VIRGIN-branded;
`
`(b) monitoring licensees’ activities for compliance with contract
`
`terms,
`
`including terms specifying the nature and quality of goods or services permitted to bear the
`
`VIRGIN brand and specifying the style with which the VIRGIN brand can be used; (c) applying
`
`for, securing, holding and maintaining registrations of trademarks and service marks used or
`
`licensed for use by VEL licensees; (d) policing against infringements of VEL-owned trademarks
`
`and service marks," see VEL’s Motion to Dismiss p. 2, attached as Exhibit “A.”
`
`4.
`
`On December 6, 2007, writing on behalf of Virgin Health Miles, Inc., VEL sent
`
`Opposer a letter demanding that Opposer confirm that
`
`it cease using the mark VIRGIN
`
`HEALTH. A copy of the letter is attached as Exhibit “C.”
`
`5.
`
`On January 14, 2008, on behalf of Virgin Health Miles, Inc., VEL filed suit
`
`against Opposer in the Southern District of New York. A copy of the suit is attached as Exhibit
`
`“D”
`
`6.
`
`After discussions with VEL’s counsel
`
`regarding NY’s
`
`lack of personal
`
`jurisdiction over Opposer; VEL voluntarily dismissed the suit.
`
`7.
`
`After being questioned about its intentions, VEL’s counsel would not state that
`
`the matter was resolved.
`
`LBB 7465.doc
`
`

`
`8.
`
`As a consequence, on September 16”‘, 2008, Opposer sued VEL in the Southern
`
`District of Florida, Case No. 08-22557-CIV-UNGARO/SIMONTON, (the “First S.D. of Fla.
`
`Case.”) A copy of the First S.D. of Fla. Case is attached as Exhibit “E.”
`
`9.
`
`Additionally, on November 19”‘, 2008, pursuant to Section 18 of the Lanham Act,
`
`Opposer filed the instant opposition proceedings opposing VEL’s trademark applications.
`
`10.
`
`The Oppositions request that the Trademark Trial and Appeal Board use its
`
`equitable power to narrow the identification of goods and services in VEL’s applications.
`
`11.
`
`On January 9th, 2009 VEL filed a Motion to Dismiss for Lack of Personal
`
`Jurisdiction And As An Exercise Of Equitable Discretion Under 28 U.S.C. § 2201(a), in the First
`
`S.D. of Fla. Case.”) A copy of VEL’s Motion (without exhibits) is attached as Exhibit “A.”
`
`12.
`
`Additionally, on December 31“, 2008, VEL filed a Motion for Judgment on the
`
`Pleadings in the instant opposition proceedings.
`
`13.
`
`On January 29th, 2009, Opposer filed a Memorandum In Opposition to VEL’s
`
`Motion to Dismiss in the First S.D. of Fla. Case. A copy of the Memorandum (without exhibits)
`
`is attached as Exhibit “F.”
`
`14.
`
`On February 2nd, 2009, Opposer filed a Memorandum In Opposition To VEL’s
`
`Motion For Judgment On The Pleadings And Motion To Stay The Instant Oppositions.
`
`15.
`
`On February 4th, 2009, this Board granted Opposer’s motion to stay the instant
`
`oppositions and deferred ruling on VEL’s motion for judgment on the pleadings, and held that
`
`“[a] review of the complaint in the civil case indicates that a decision by the district court could
`
`be dispositive of, or have a bearing on, the issues in these consolidated proceedings.”
`
`LBB 7465.doc
`
`

`
`16.
`
`On Febraury 12th, 2009,
`
`the S.D. of Fla. granted VEL’s Motion to Dismiss,
`
`finding that the court did not have personal jurisdiction over VEL, a copy of the order is attached
`
`as Exhibit “G.”
`
`17.
`
`On Febuary 13”‘, 2009, Opposer filed suit against VEL’s licensee Virgin Health
`
`Miles, Inc., S.D. of Fla. Case No. 09-20388-CIV, the “Second S.D. of Fla. Case” a copy of the
`
`Complaint is attached hereto as Exhibit “H”.
`
`18.
`
`On Feb 13”‘, 2009, Opposer served Virgin Health. A copy of the Summons and
`
`Proof of Service is attached as Exhibit “I.”
`
`ARGUMENT
`
`The exact same rationale for staying the instant oppositions pending the outcome of the
`
`First S.D. of Fla. Case apply in the Second S.D. of Fla. Case. Indeed, the likelihood of confusion
`
`issues in the First S.D. of Fla. Case and the Second S.D. of Fla. Case are identical. Accordingly,
`
`an adjudication regarding the infringement issue in the Second S.D. of Fla. Case will have just as
`
`much a bearing on the instant oppositions as would an adjudication in the First S.D. of Fla. Case.
`
`Specifically, if the S.D. of Fla. finds that infiingement exists, it would conclusively establish that
`
`VEL’s identification of goods and services could not be narrowed in such as way as to avoid
`
`confusion.
`
`Conversely, if no infringement is found it will have a significant bearing on the
`
`instant oppositions insofar as it would be evidence indicating that a restriction is possible.
`
`S_ee_
`
`Pferedes v. International Sporthouse Registry, Inc., 1999 WL 1206640, *12 (N.D. Ill 1999)
`
`(holding that trademark “1icensor will be bound by the judgment in a trademark infringement and
`
`validity action between its licensee and a third party,” noting that it may be the first court to
`
`reach this issue since trademark licensors almost universally intervene in their licensee’s
`
`disputes.)
`
`LBB 7465.doc
`
`

`
`WHEREFORE, Opposer respectfully requests that the Board enter an order continuing its
`
`suspension of the instant oppositions pending the duration of the Second S.D. Fla Case.
`
`Respectfully submitted,
`
`LIPSCOMB, BRADY & BOBADILLA, PL
`2 Biscayne Blvd.
`PH Suite 3800
`
`Miami, FL 33131
`Phone: (786) 431-2228
`
` M.
`Fla. Bar No. 429554
`
`CERTIFICATE OF SERVICE
`
`A true and correct copy of the foregoing was served on App1icant’s counsel this 17th day
`of February, 2009, Via U.S. Mail addressed to James W. Dabne
`ne New York Plaza, New
`
`York, New York 10004-1980
`
`LBB 7465.doc
`
`

`
`Case 1:08-cv-22557-UU Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 1 of 21
`
`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO. 08-22557—CIV-UNGARO/SIMONTON
`
`VIRGIN HEALTH CORPORATION, a
`
`Florida Corporation,
`
`Plaintiff.
`
`v.
`
`VIRGIN ENTERPRISES LIMITED, an
`
`English corporation,
`
`Defendant.
`
`MOTION TO DISMISS FOR LACK OF PERSONAL JURISDICTION AND
`
`AS AN EXERCISE OF Eg QUITABLE DISCRETION UNDER 28 U.S.C. § 2201§a)
`
`Defendant Virgin Enterprises Ltd. (“VEL”) respectfully moves this Court, pursuant to
`
`Fed. R. Civ. P. 12(b)(2) and Local Rule 7.1, for an Order dismissing this action for lack of per-
`
`sonal jurisdiction.
`
`Additionally or in the alternative, the Court should dismiss this action as an exercise of
`
`equitable discretion under 28 U.S.C. § 220l(a), because the plaintiffs purported claims are all
`
`contingent on the outcome of a parallel administrative proceeding that this plaintiff itself com-
`
`menced on November 19, 2008, in the United States Trademark Trial and Appeal Board. See
`
`Virgin Health Corp. v. Virgin Enterprises Ltd., Opposition Nos. 91187612, 91187614 (T.T.A.B.,
`
`filed Nov. 19, 2008) (hereinafter, the “Opposition Case”).
`
`FACTS
`
`VEL is a corporation organized and existing under the laws of England and Wales, with
`
`its principal and only place of business located in London, England. VEL does not trade with the
`
`public and does not own or manage or direct the activities of any corporation or entity that trades
`
`-1-
`
`EXHIBIT “A”
`
`

`
`Case 1:08-cv—22557—UU Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 2 of 21
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`with the public. VEL’s sole business activity is to act as a repository of trademark rights and
`
`goodwill arising from the operations of trading companies, such as Virgin Atlantic Airways Ltd.
`
`(“VAA”), which offer VIRGIN-branded goods and services as described at the “web site” asso-
`
`ciated with the universal resource locator
`
`These companies are commonly re-
`
`ferred to as “Virgin Group” companies, so named because of their common use of the VIRGIN
`
`brand and their common affiliation with Sir Richard Branson, the titular “Chairman” of the Vir-
`
`gin Group of companies. See Declaration of Mark James, sworn to January 8, 2009 (hereinafter,
`
`the “James Decl.”) 1] 2.
`
`VEL’s sole business activity consists of (a) negotiating and concluding agreements li-
`
`censing Virgin Group (and occasionally, non-Virgin Group) companies to identify goods or ser-
`
`vices as VIRGIN-branded; (b) monitoring licensees’ activities for compliance with contract
`
`terms, including terms specifying the nature and quality of goods or services permitted to bear
`
`the VIRGIN brand and specifying the style with which the VIRGIN brand can be used;
`
`(c) applying for, securing, holding, and maintaining registrations of trademarks and service
`
`marks used or licensed for use by VEL licensees; and (d) policing against infringements of VEL-
`
`owned trademarks and service marks. James Decl. 11 3. VEL conducts and directs these activi-
`
`ties from its principal and only place of business in London, England. James Decl. 1] 4.
`
`In accordance with 15 U.S.C. § l051(e), VEL has appointed individuals located in
`
`New York, New York as its domestic representatives on whom process in proceedings affecting
`
`the VIRGIN mark in the United States can be served. VEL does not have any offices, employ-
`
`ees, distributors, sales activities, advertising activities, or any other commercial business activi-
`
`ties in Florida. James Decl. 111] 5-21.
`
`

`
`Case 1:08-cv-22557-UU Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 3 of 21
`
`VEL’s Pending Applications for Registration
`of VIRGIN in the Field of Health Care Services
`
`VEL is the owner of United States Application Serial No. 78/570,287 for the service
`
`mark VIRGIN (stylized)
`
`(the “‘287 Application”) and United States Application Serial
`
`No. 78/570,290 for VIRGIN in block letters (the “‘290 Application”). See Declaration of James
`
`W. Dabney, sworn to January 9, 2009 [hereinafter, the “Dabney Dec1.”] 11 2 & Ex. 1 at 104-113.
`
`13 &Ex. 2 at 102-111,114 &Ex. 3.
`
`The ‘287 and ‘290 Applications were both filed with the United States Patent and Trade-
`
`mark Office (the “PTO”) on February 18, 2005, and claim priority to European Community ap-
`
`plications that were filed January 28, 2005. Dabney Decl. 11 4 & Ex. 3.1 The ‘287 Application
`
`and the ‘290 Application both recite, among other things, “medical evaluation services, namely,
`
`providing health assessments; advisory services relating to health; consultation relating to health
`
`care” in International Class 44. Dabney Decl.11 2 & Ex. 3.2
`
`Under the Trademark Act of 1946, as amended, the filing of the ‘287 Application and the
`
`‘290 Application conferred on VEL a provisional “right of priority, nationwide in effect, on or in
`
`connection with the goods or services specified in” those applications. 15 U.S.C. § 1057(c). The
`
`right of priority is contingent on the ‘287 and ‘290 Applications maturing into issued United
`
`States registrations. Id. See generally Aktieselskabet AF 21 v. Fame Jeans, Inc., 525 F.3d 8, 18-
`
`20 (D.C. Cir. 2008) (describing statutory intent-to-use registration system).
`
`1 The priority applications have since matured into Community Trade Mark (CTM) Registration
`Nos. 4,262,085 and 4,262,093 issued March 17, 2006. Dabney Decl. 1] 2 & Ex. 1 at 68-74, 11 3 &
`Ex. 2 at 68-74.
`
`2 The language describing the class 44 services in the ‘287 and ‘290 Applications was proposed
`by a PTO Examining Attorney in Office Actions mailed April 29, 2005, and was acceded to by
`VEL in communications dated October 31, 2005. Dabney Decl. 11 2 & Ex. 1 at 89-103, 81-87;
`id. 11 3 & Ex. 2 at 87-101, 75-85. See also Dabney Decl. 1] 24 & Ex. 23 (identifying VEL’s pend-
`ing Motion for Judgment on the Pleadings in the Opposition Case filed December 31, 2008).
`
`-3-
`
`

`
`Case 1:08—cv-22557-UU Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 4 of 21
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`On July 22, 2008, the ‘287 Application and the ‘290 Application were both published for
`
`opposition in the Official Gazette of the PTO. Dabney Decl. 1] 4 & Ex. 3. On August 20, 2008,
`
`the plaintiff in this action (“VHC”) filed the first of what would become a series of unilateral
`
`written requests for extensions of time in which to commence opposition proceedings under
`
`15 U.S.C. § 1063. See Dabney Decl. 1111 5-14 & Exs. 4-13. As described infra, it was the midst
`
`of this months-long effort to stall and delay proceedings in the TTAB that the putative opposer,
`
`plaintiff VHC, commenced the present action for declaratory judgment on September 15, 2008.
`
`On November 19, 2008, the TTAB summarily denied two motions by VHC for fiirther
`
`extensions of time in which to commence opposition proceedings concerning the ‘287 and ‘290
`
`Applications. Dabney Decl. 111] 15-16 & Exs. 14-15. VHC then commenced two opposition pro-
`
`ceedings entitled Virgin Health Corp. v. Virgin Enterprises Ltd., Opposition No. 91187612
`
`(T.T.A.B., filed Nov. 19, 2008), and Virgin Health Corp. v. Virgin Enterprises Ltd., Opposition
`
`No. 91187614 (T.T.A.B., filed Nov. 19, 2008). Dabney Decl. 111] 17-18 & Exs. 16-17. These
`
`two opposition proceedings are referred to here, collectively, as the “Opposition Case.”
`
`In its two nearly-identical notices of opposition filed November 19, 2008, in the TTAB,
`
`VHC alleges that VEL “is seeking to register the mark VIRGIN in International Class 44 for
`
`‘Medical evaluation services, namely, providing health assessments; advisory services relating to
`
`health; consultation relating to health care.”’ Dabney Decl. 11 17 & Ex. 16 at p.2 11 6; id. 1] 18 &
`
`Ex. 17 at p. 2 '1] 6. VHC further alleges in the TTAB that “[s]ince at least as early as November
`
`2005” — that is, since a date substantially after the filing date of the ‘287 and ‘290 Applications —
`
`VHC purportedly has been offering various “health care services” to “individuals” having par-
`
`ticular requirements. Id. at p. 2 1] 7.
`
`

`
`Case 1:08—cv—22557-UU Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 5 of 21
`
`VHC further alleges — admits — in its TTAB pleadings that: “Applicant’s [VEL’s] identi-
`
`fication of goods and services encompasses the services being provided by Opposer.” Dabney
`
`Decl. 11 17 & Ex. 16 at p.2 1 8; id. 11 18 & Ex. 17 at p. 2 11 8 (emphasis added). VHC alleges that
`
`“as a result of’ its adoption and use of the name “Virgin Health” after the filing dates of the ‘287
`
`and ‘29O Applications, VHC purportedly “would be damaged” if those applications “ripened
`
`into” issued registrations. Dabney Decl. 11 17 & Ex. 16 at p.3 1 9; id. 11 18 & Ex. 17 at p.3 1 9.
`
`VHC’s TTAB pleadings further allege, on unspecified “information and belief,” that at
`
`the time the ‘287 and ‘29O Applications were filed, VEL purportedly “only intended to provide a
`
`limited type of ‘[m]edical evaluation services’ in connection [with] its Virgin HealthMiles pro-
`
`gram.” Dabney Decl. 11 17 & Ex. 16 at p.3 1 10; id. 11 18 & Ex. 17 at p.3 1 10 (emphasis added).
`
`VHC is thus in the unusual position of alleging that VEL purportedly was under some legal duty,
`
`during the prosecution of the ‘287 and ‘290 Applications, to recite trade channels through which,
`
`or customers to which, VEL purportedly “only intended” that the recited services be marketed
`
`when the ‘287 and ‘29O Applications were filed on February 18, 2005.3
`
`VHC asserts that “[i]f Applicant’s [VEL’s] description of services was restricted such
`
`that it stated: ‘[m]edical evaluation services, namely, providing health assessments; advisory ser-
`
`vices relating to health; consultation relating to health care’ in connection with ‘incentive and
`
`loyalty programs offered by employers to their employees to promote healthy lifestyle choices’
`
`the parties’ respective services and markets would be sufficiently distinct so as to avoid a claim
`
`3 Although the merits of VHC’s opposition notices are not before this Court, VEL is prepared to
`prove, if necessary, that VHC’s allegation, on unspecified “information and belief,” that VEL
`purportedly “only intended” to use VIRGIN in associated with “the Virgin HealthMiles pro-
`gram,” is false and frivolous. See www.virginhealthcare.net At all events, VHC’s opposition
`notices fail to state claims on which relief can be granted for the reasons set forth in VEL’s pend-
`ing motion for judgment on the pleadings in the Opposition Case. See Dabney Decl. 11 24 & Ex.
`23.
`
`

`
`Case 1:08-cv-22557-UU
`
`Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 6 of 21
`
`by Applicant that Opposer is infringing its federally registered mar .” Dabney Decl. 11 17 &
`
`Ex. 16 at p.4 1 14; id. 11 18 & Ex. 17 at p.4 1 14 (emphasis added).
`
`VHC prays that the TTAB issue judgments ordering that the ‘287 and ‘290 Applications
`
`be “narrowed and restricted to more accurately reflect the services Applicant intended to offer at
`
`the time it filed the subject intent to use application[s], and that the Board grant Opposer any
`
`other and further relief it deems proper.” Dabney Decl. 11 17 & Ex. 16 at p.4 1 WHEREFORE;
`
`id. 11 18 & Ex. 17 at p.4 1 WHEREFORE (emphasis added).
`
`On December 31, 2008, VEL moved for judgment on the pleadings in the Opposition
`
`Case. Dabney Decl. 11 24 & Ex. 23. That motion remains pending and undecided at this writing.
`
`VHC’s Complaint for Declaratory Relief
`
`Shortly prior to the expiration of its initial, and only statutorily guaranteed (see 15 U.S.C.
`
`§ 1063(a)), extension of time in which to oppose the ‘287 and ‘290 Applications, VHC com-
`
`menced the within action by filing a “Complaint for Declaratory Relief’ in this Court on Sep-
`
`tember 15, 2008 (the “VHC Complaint”). VHC’s declaratory judgment Complaint did not, how-
`
`ever, make any direct reference to the ‘287 Application or the ‘290 Application.
`
`Instead, VHC made the carefully worded allegation, “VEL does not own any federally
`
`registered United States trademarks covering health care services” (VHC Complaint 1 24; em-
`
`phasis added), and based in part on that highly variable and contingent circumstance, VHC asked
`
`this Court to issue a declaratory judgment that purportedly would “define and clarify the legal
`
`rights of the parties.” VHC Complaint 1111 53, 60, 76.
`
`In particular, VHC asks the Court to determine the merits of certain currently unasserted
`
`claims of VEL, namely, claims that (1) VHC’s use of the trade name “Virgin Health,” (2) VHC’s
`
`registration and use of the domain name virginhealth.net, and (3) VHC’s offering of health care
`
`services under a purported “Brand” identified as “VIRGINHEALTH” (VHC Complaint at p. 3)
`
`-5-
`
`

`
`Case 1:08-cv—22557-UU Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 7 of 21
`
`infringe certain Florida common law or Florida or federal statutory rights of VEL, as those rights
`
`may have existed as of or prior to September 15, 2008. VHC asserts that it “has a reasonable
`
`apprehension of being sued for trademark infringement and related causes of action” (VHC
`
`Complaint 1] 47), based on certain prior correspondence and litigation in New”York.
`
`Prior Correspondence and Litigation
`
`By letter dated December 6, 2007, VEL’s New York-based trademark agents requested
`
`that VHC refrain from any use of VIRGIN and transfer
`
`the domain name VIRGIN-
`
`HEALTH.NET to VEL. Dabney Decl. 1] 25 & Ex. 24. VHC’s response to the letter was — noth-
`
`ing. VHC did not write back or in any way acknowledge receipt of the December 6 letter.
`
`Id.
`
`Nor did VHC assert that it had any legal right to use VIRGIN as all of any part of a trade name
`
`or service mark.
`
`When VHC failed to respond in any way to VEL’s New York counsel’s December 7 let-
`
`ter, VEL included VHC as one of a group of defendants that were named in a civil action entitled
`
`Virgin Enterprises Ltd. v. eNom, Inc., No. 08 Civ. 0328 (S.D.N.Y., filed Jan. 14, 2008) (the
`
`“eNom Case”). The eNom Case was an in rem Complaint (see Fed. R. Civ. P. 4(n)) brought
`
`against six domain names (for example, VIRGINAIRLINES.COM) and non-New York resident
`
`persons that public records indicated were the registrants thereof. Among the defendants were
`
`the registrant of VIRGINHEALTHCARECOM, known only as “Whois Privacy Protection Ser-
`
`vice, Inc.,” and VIRGINHEALTH.NET, which was then registered to VHC. Dabney Decl. 11 26
`
`& Ex. 25. The Complaint in the eNom Case made no claims under Florida law.
`
`Over the ensuing months VEL reached settlements with, or obtained default judgments
`
`against, each of the defendants in the eNom Case, except for defendant VHC. Then, as now, the
`
`domain name VIRGINHEALTH.NET resolved to a web page that provided no address, no tele-
`
`phone number, and no description of any business purportedly carried on by VHC. Dabney
`
`-7-
`
`

`
`Case 1:O8—cv-22557—UU Document 16
`
`Entered on FLSD Docket 01/09/2009
`
`Page 8 of 21
`
`Decl. 1] 27 & Ex. 26. Cf Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 144 (2d Cir. 2003) (de-
`
`scribing how defendants, after public armouncement of VIRGIN MOBILE wireless services in
`
`the U.K., quietly opened small shopping mall kiosks in the United States under the name VIR-
`
`GIN WIRELESS).
`
`Subsequent to service of a copy of the eNom Case Complaint on VHC’s then-corporate
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`statutory agent, attorneys representing VHC telephoned and wrote to VEL’s counsel in New
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`York and requested a series of extensions of time to respond, which were agreed to. Dabney
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`Decl. 111] 28-31 & Exs. 27-30. Ultimately, on June 27, 2008, VEL made a commercial decision to
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`withdraw its Complaint against VHC and filed a unilateral Notice of Dismissal under Federal
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`Rule of Civil Procedure 41(a)(l)(A)(i). Dabney Decl. 1] 32 & Ex. 31. VEL was well aware, at
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`the time, that the PTO had approved and would shortly be publishing the ‘287 Application and
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`the ‘290 Application for opposition, and that the maturation of those applications would likely
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`have a material impact on the cost and risk of any infringement litigation with VHC that might
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`ultimately prove necessary.
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`SUMMARY OF THE ARGUMENT
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`VEL moves for dismissal of the Complaint on two separate and independent grounds.
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`First, the Court lacks personal jurisdiction over the person of VEL. VEL neither operates, nor
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`conducts, nor engages in, nor carries on any business or business venture in this State and has no
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`office or agency here. As a matter of law, VEL’s mere transmission of a cease and desist letter
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`to VHC (which VHC ignored) did not constitute any “purposeful availment” of any privilege of
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`conducting activities within Florida. Plaintiffs jurisdictional allegations concerning VEL (VHC
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`Complaint 1] 4) are conclusory, vague, unsupported, and erroneous.
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`Additionally or in the alternative, the Court can and should dismiss this action as an exer-
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`cise of equitable discretion under 28 U.S.C. § 220l(a). The plaintiffs claims are all premised on
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`-3-
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`

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`Case 1:08—cv—22557—UU Document 16
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`Entered on FLSD Docket 01/09/2009
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`Page 9 of 21
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`an allegation that VEL “does not own any federally registered United States trademarks covering
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`health care services” (VHC Complaint ‘Ii 24; emphasis). The plaintiff thus apparently seeks to
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`litigate what duties it might owe VEL ifthe pending ‘287 and ‘290 Application do not ripen into
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`issued registrations. Such litigation would be wasteful and inappropriate.
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`Should the TTAB, in the pending Opposition Case, determine that VEL is entitled to is-
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`suance of federal service mark registrations of VIRGIN and VIRGIN (stylized) as applied to
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`“medical evaluation services, namely, providing health assessments; advisory services relating to
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`health; and consultation relating to health care” in International Class 44, such a determination
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`would render moot various issues the plaintiff seeks to litigate, and would likely have a signifi-
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`cant impact on the cost and complexity of determining any controversy that might survive such a
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`TTAB determination. VEL ought not be forced to pursue costly and complex litigation of com-
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`mon law or Florida state law claims against this plaintiff, when VEL has taken all appropriate
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`steps to secure federal statutory trademark rights in VIRGIN and VIRGIN (stylized) as designa-
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`tions of origin in the health care field, and when the plaintiff has available to it, and has actually
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`invoked, the established statutory mechanism for testing whether VEL is entitled to the registra-
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`tions sought.
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`MEMORANDUM OF LAW
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`I.
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`THIS COURT LACKS
`PERSONAL JURISDICTION OVER VEL.
`
`Determining the existence of personal of personal jurisdiction would deny a defendant
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`“Due Process of Law” under the Fourteenth Amendment to the United States Constitution. See
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`Fed. R. Civ. P. 4(k)(l)(A). The Complaint here fails to meet either requirement.
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`

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`Case 1:08-cv-22557-UU Document 16
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`Entered on FLSD Docket 01/09/2009
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`Page ‘ID of 21
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`A. The Florida Long—Arm Statute Does Not Reach VEL.
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`The jurisdictional analysis begins with the principle that: “Florida’s long-arm statute is
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`to be strictly construed.” Sculptchair, Inc. v. Century Arts, Ltd., 94 F.3d 623, 627 (11th Cir.
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`1996) (citing Oriental Imports & Exports, Inc. v. Maduro & Curie] ’s Bank, NV, 701 F.2d 889,
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`891 (1 1th Cir. 1983)). “When a defendant raises through affidavits, documents or testimony a
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`meritorious challenge to personal jurisdiction, the burden shifts to the plaintiff to prove jurisdic-
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`tion by affidavits, testimony or documents.” Sculptchair, 94 F .3d at 627 (quoting Jet Charter
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`Serv., Inc. v. Koeck, 907 F.2d 1110, 1112 (1 1th Cir. 1990)).
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`Here, VEL has submitted a Declaration of Mark James, which explains that VEL (i) has
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`no office or agency in Florida; (ii) is not operating, engaging in, or carrying on any business or
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`business venture in Florida; and (iii) does not engage in any substantial or non-isolated activities
`
`in Florida. James Decl. 1111 2-21. As noted above, VEL’s sole business activity is to act as a re-
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`pository of trademark rights and goodwill arising from the operations of trading companies, such
`as Virgin Atlantic Airways Ltd. (“VAA”),
`that offer VIRGIIN-branded goods and services
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`throughout the world.
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`Id. 1111 2-3. VEL has no offices, employees, sales, or other commercial
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`business activities in Florida. Id. 1111 4-20.
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`VEL stands in a contractual, licensor-licensee relationship with VAA and other corporate
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`entities that provide or market VIRGIN-branded goods or services in the United States. James
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`Decl. 11 3. No VEL licensee has any authority to bind VEL to any contracts or to act as VEL’s
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`agent in any matter whatsoever. Id. 11 4. Courts have repeatedly recognized that a trademark li-
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`cense “does not give a licensor control over the day-to-day operations of a licensee beyond that
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`necessary to ensure uniform quality of the product or service in question.
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`It does not automati-
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`cally saddle the licensor with the responsibilities under state law of a principal for his agent.”
`
`-10-
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`

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`Case 1:08-cv—22557-UU Document 16
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`Entered on FLSD Docket 01/09/2009
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`Page 11 of 21
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`Mini Maid Serv. Co. v. Maid Brigade Sys., Inc., 967 F.2d 1516, 1520 (11th Cir. 1992) (quoting
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`Oberlin v. Marlin Am. Corp., 596 F.2d 1322, 1327 (7th Cir. 1979)).
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`It is, thus, insufficient for the plaintiff to allege that “VEL is Part of a Billion Dollar
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`Company” (VHC Complaint at p. 4), that the founder of the Virgin Group, Sir Richard Branson,
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`“recently starred in the television show entitled the Rebel Billionaire” (VHC Complaint ‘H 19), or
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`that VEL licensees, including “the VIRGIN ATLANTIC airline” (id. 1] 20) and “different busi-
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`nesses” created by Mr. Branson (id. 11 21), might operate in Florida under license from VEL.
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`Rather, the plaintiffs burden is to demonstrate some basis for the court to exercise personal ju-
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`risdiction over VEL itself. And here the VHC Complaint falls Very short.
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`Plaintiff alleges, in conclusory fashion, that “VEL is subject to the jurisdiction of this
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`Court pursuant to Section 48.193, Fla. Stat., by virtue of the following acts:
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`(a) operating, con-
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`ducting, engaging in, or carrying on a business or business venture in this State or having an of-
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`fice or agency in this State; and (b) engaging in substantial and non-isolated activities in this
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`State.” Complaint at 2, 11 4.
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`Plaintiff does not specifically identify the subsections of Fla. Stat. § 48.193 that it relies
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`upon; however, its jurisdictional allegations substantially quote portions of the provisions of Fla.
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`Stat. §§ 48.193(1) and (2). Fla. Stat. § 48.l93(1) provides in part:
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`Any person, whether or not a citizen or resident of this state, who
`personally or through an agent does any of the acts enumerated in
`this subsection thereby submits himself or herself. .
`. to the juris-
`diction of the courts of this state for any cause of action arising
`from the doing of any of the following acts:
`
`Operating, conducting, engaging in or carrying on a busi-
`(a)
`ness or business venture in this state or having an office or agency
`in this state.
`
`To satisfy the above-quoted statute, a Complaint must do more than make non-fact based,
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`conclusory allegations. Cohen v. Drucker, 677 So. 2d 953, 954 (Fla. 4th Dist. Crt. App. 1996).
`
`-11-
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`

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`Case 1:08-cv-22557-UU Document 16
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`Entered on FLSD Docket 01/09/2009
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`Page 12 of 21
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`The Complaint must allege “sufficient jurisdictional facts to bring the action within the ambit of
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`the statute.” Execu-Tech Bus. Sys., Inc. v. New Oji Paper Co., Ltd., 752 So. 2d 582, 584 (Fla.
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`2000) (citing Venetian Salami Co. v. Parthenais, 554 So. 2d 499, 502 (Fla. 1989)).
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`VEL denies having any “office or agency” in Florida.
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`James Decl. 1111 2-8. The VHC
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`Complaint alleges no specific facts to the contrary. VEL also denies “[o]perating, conducting,
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`engaging in, or carrying out any business or business venture” in Florida. Id. 111] 2-20. The VHC
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`Complaint alleges no specific facts to the contrary. The VHC Complaint also does not allege
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`that VEL purportedly conducts business in Florida “through and agent” and identified no such
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`“agen .” The VHC Complaint further pleads no factual basis for contending that “the VIRGIN
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`ATLANTIC airline” (VHC Complaint 1] 20), or any other VEL licensee, is or holds itself out as
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`some kind of “agen ” of VEL in Florida.
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`VHC alleges that on December 6, 2007, VEL send VHC “a letter demanding that Virgin
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`Health ‘refrain from nay [sic] use of VIRGIN as all or part of any business name, trademark, or
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`service mark used in association with health care services” and “procure the immediate transfer
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`to VEL of the domain name VIRGINHEALTH.NET.” VHC Complaint 1] 43 & Ex. A. By no
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`stretch, however, can the mere sending of a demand letter to a person in Florida be deemed
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`“[o]perating, conducting, engaging in or carrying on a business or business venture in this state”
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`within the meaning of Fla. Stat. § 48.l93(l) (a). The statute refers to a defendant’s commercial
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`“business” “