Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA377590
`ESTTA Tracking number:
`11/09/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91189205
`Plaintiff
`Kurt L. Balderson
`DAVID M KELLY
`FINNEGAN HENDERSON FARABOW ET AL
`901 NEW YORK AVENUE NW
`WASHINGTON, DC 20001
`UNITED STATES
`David.Kelly@finnegan.com, Kenneth.Leichter@finnegan.com
`Motion to Suspend for Civil Action
`Kenneth H. Leichter
`kenneth.leichter@finnegan.com, docketing@finnegan.com,
`larry.white@finnegan.com
`/Kenneth H. Leichter/
`11/09/2010
`91189205 Motion to Suspend.pdf ( 3 pages )(10745 bytes )
`Stuffits Exhibit A.pdf ( 52 pages )(1154727 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`KURT L. BALDERSON,
`
`
`Opposer
`
`
`
`Opposition No.: 91189205
`
`Mark: DELI EXPRESS STUFF-ITZ
`Serial No.: 77072928
`Filed: December 28, 2006
`
`
`
`
`v.
`
`
`E.A. SWEEN COMPANY,
`
`
`Applicant.
`
`
`
`STIPULATED MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`Pursuant to Trademark Rule 2.127(a) and 2.117(a), 37 C.F.R. §§ 2.127(a) and
`
`2.117(a), Opposer Kurt L. Balderson respectfully requests that the Board suspend this
`
`opposition proceeding pending final disposition of the civil action before the U.S. District
`
`Court for the Eastern District of Pennsylvania, Kurt L. Balderson v. E.A. Sween
`
`Company, Civil Action No. 10-CV-440 (filed October 26, 2010) (Copy of complaint and
`
`civil cover sheet Attached as Exhibit A).
`
`Counsel for Applicant, Bradley Walz, stipulated to this request by e-mail on
`
`November 8, 2010.
`
`
`
`Both Opposer and Applicant are parties to the civil action, which involves
`
`common issues of law and fact that may have a bearing on this proceeding. In
`
`particular, the civil action involves claims of, among other things, trademark
`
`infringement against Applicant’s trademark and goods that are involved in the present
`
`proceeding. In view of the common issues between the civil action and the pending
`
`opposition proceeding before the Board, Opposer submits that any decision of the
`
`

`
`Opposition No. 91189205
`
`federal court may have a bearing on or be binding upon the Board in this case. TBMP
`
`§ 510.
`
`Accordingly, Opposer requests that this proceeding be suspended pending final
`
`determination of the civil action. TBMP § 510.
`
`The parties are also adverse in Cancellation No. 92049243 and are requesting
`
`suspension of that proceeding as well.
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`
`
`/Kenneth H. Leichter/
`David M. Kelly
`Kenneth H. Leichter
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`(202) 408-4000
`
`Attorneys for Opposer
`Kurt L. Balderson
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: November 9, 2010
`
`

`
`
`
`
`
`Opposition No. 91189205
`
`CERTIFICATE OF SERVICE
`
`I certify that a true and accurate copy of the foregoing STIPULATED MOTION
`
`TO SUSPEND PROCEEDINGS FOR CIVIL ACTION was served by first class mail,
`
`postage prepaid, on this 9th day of November 2010, upon counsel for Applicant:
`
`Bradley J. Walz
`Winthrop & Weinstine, P.A.
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`
`
`
`
`
`/Larry L. White/
`Larry L. White
`Legal Assistant
`
`
`
`
`
`
`
`
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`
`
`
`
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`
`
`3
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`

`
`Exhibit A
`
`

`
`Case 2:10-cv-05639-BMS Document1
`
`Filed 10/26/10 Page 1 of 51
`
`’S‘”‘R"' “ml
`
`CIVIL COVER SHEET
`
`' The JS 44 civil cover sheet and the infomiation contained herein neither replace nor supplement the filing and service ofpleadings or other papers as required by law, except as provided
`by local rules ofcourt This form, approved by the Judicial Conference ofthe United States in Sqatember 1974, is required for the use ofthe Cleric of Court for the purpose of initiating
`the civil docket sheet (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`
`I. (ll) PLAINTIFFS
`KURT BALDERSON
`
`DEFENDANTS
`E.A. SWEEN COMPANY
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.S.P CASES)
`
`
`BUCKS
`County of Residence of First Listed lkfendant
`H°T1flePi"
`(IN U.S. PLAINTIFF CASES ONLY)
`NOTE:
`IN LAND CONDEIVDIATION CASES, USE THE LOCATION OF THE
`
`‘
`(C) Attomey’s (Fimi Name, Address, and Telephone Number)
`White and Williams LLP
`1650 Market Street, 1800 One Liberty Place
`Philadelphia, PA 19103-7395; (215) 864-7174
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`El 1. U.S. Govemrnent
`E 3
`Federal Question
`Plaintiff
`(U.S. Government Not a Party)
`
`LAND INVOLVED.
`Attorneys (If Known)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Phee an “X” in One Box for Plaintifi‘
`(For Diversity Canes Only)
`and One Box for Defendant)
`1711:
`DEF
`1711:
`DE}?
`g 1
`El 1
`[3 4
`[I 4
`
`Citizen of This Slate
`
`Incorporated or Principal Place
`of Business In This State
`
`El 2. U.S. Government
`Defendant
`
`E] 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`Citizen or Subject of a
`Forei Coun
`
`[3 2
`
`E] 3
`
`E1 2
`
`E] 3
`
`Incorporated and Principal Place
`of Business In Another State
`Foreign Nation
`
`E] 5
`
`[1 6
`
`E 5
`
`E] 6
`
`‘.lOTHER‘STXTUTES‘£=.¥?r T
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`VIII. RELATED CASE(S)
`(See instructions): DOCKET NUMBER
`
`
`
`FOR OFFICE USE ONLY
`
`
`
`
`AMOUNT
`APPLYING IFP
`JUDGE
`
`MAG. JUDGE
`
`RECEIPT ill
`
`6873430v.1
`
`
`
`El
`El 422 Appeal 28 USC 158
`El 400 State Reappnnionment
`
`E] 120 Marine
`El 310 Airplane
`El 362 Personal Injury —
`D 620 Other Food & Drug
`E] 423 Withdrawal
`E] 410 Antitrust
`
`
`El 28 USC 157
`Med. Malpractice
`El 625 Ixug Related Sdzure
`El 130 Miller Act
`El 315 Airplane Product
`E] 430 Bank: and Banking
`E] 365 Personal Injury -
`ofPropeny 21 USC 381
`D 140 Negotiable Instrument
`Liability
`El 450 Commerce
`
`i: 530 Liquor Laws
`.
`.ROBER*1’Y§ f1iI,_G'ir1'.'i"[ (
`3. El 460 Deportation
`[1 I50 Recovery of Overpayment
`I: no Assault, Libel &
`Product Liability
`
`El 820 Copyright:
`& Enforcement ofJudgrnen!
`Slander
`E] 368 Asbestos Personal
`El 640 RR. & Truck
`El 470 Rackaeer Influenced and
`D 830 Patent
`El 151 Medicare Act
`E] 330 Federal Employers’
`Injury Product
`E] 650 Airline Reg;
`Cornipt Organizations
`El 152 Rworvery of Defaulted
`liability
`Llability
`E] 660 Occupational
`E 340 Trademark
`El 480 Consumer Credit
`Student Louis
`D 340 Marine
`PERSONAL PROPERTY
`Safety]!-Iealth
`El 490 Cable/Sat TV
`CI 345 Marine Product
`U 370 Other Fraud
`(Exel. Veterans)
`El 310 Sdeaive Service
`
`Liability
`:i 371 Truth in Lending
`:‘sojCIA1j’sECURl.'rY:
`f .«. El 850 secumieslcommodifiesl
`in 153 Recovery ofoverpayment
`E] 350 Motor Vehicle
`E] 380 Other Personal
`El 861 I-IIA (l395fi)
`ofVetenn's Benefits
`Exchange
`160 Stockholders‘ Suits
`El 355 Motor Vehicle
`Property Damage
`El 862 Black Lung (923)
`El 875 Customer Challenge
`El
`Act
`El 190 Other cormoz
`Product Liability
`[:1 335 Property Damage
`[:1 sea DIWC/DIWW (40S(g))
`12 use 3-no
`El 720 Labor/Mgmt. Relations
`D 195 Contract Product Liability
`D 360 Other Personal
`Product Liability
`El 864 SSID Title XVI
`El 890 Other Statutory Actions
`El 730 Labor/Mgrnt. Reporting
`El 196 Franchise
`In"
`El 365 RSI (405(g))
`El 891 Agrir:ulri.iral Acts
`dc Disclosure Act
`
`V
`.
`;;__.+1(EAi£1>)1i0pia1§zrfyv
`i
`_:Ԥ1i-EDERAL~nrAx:-su1Ts. :; '3
`I: 392 Economic Stabilization Act
`’ '
`j; :1 740 Railway Labor Act
`I] 210 Land Condeinnatlon
`D 441 Voting
`El 870 Taxes (U.S. Plaintiff
`El 893 Environmental Manet:
`E] 510 Motions to Vacate
`El 790 Other Labor Litigation
`
`El 220 Foreclosure
`El 442 Employment
`orDefendan1)
`U 894 Energy Allocation Act
`U 791 Empl. Rev. Inc.
`Sentence
`I] 230 Rent Laue & I-Zjectrnerit
`El 443 Housing!
`Security Act
`D 871 fllS—Tliird Party
`Haluar Corpiu:
`El 895 Freedom oflnfonnation
`
`
`
`26 USC 7609
`U 240 Torts to Land
`Accommodations
`U 530 General
`Act
`
`
`, _IMMIGRA:TlON;
`,
`.
`‘
`:1 245 Tort Product Liability
`El 444 Welfare
`1:] 535 Death Penalty
`I] 900 Appeal ofFee Determination
`U 462 Nimmliurion Application
`E] 290 All Otherkeal Propeny
`D 445 Amer. w/Disabilities -
`D 540 Mandamus EL Oflm
`Under Equal Access
`
`E] 550 civil Righu
`D 463 Habeas Corpus —
`Employment
`to Justice
`El 555 Prism Condition
`Alien Detainee
`D 446 Amer. wlbisabilities -
`El 950 Constiliriionality of
`
`
`Other
`State Statutes El 465 Other Immigration
`
`Action:
`El 440 Other Civil Rights
`
`[3115 EH8
`In
`_
`_
`_
`V. ORIGIN
`(Place an “X” in One Box Only)
`T
`f
`d fm
`.;\i3peal_Tt: District
`E] 4 Reinstated or
`El 7
`E 1 Original
`I] 2 Removed fi'om
`El 3 Rernanded from
`Cl 5 mom, dimer
`,j4’a§lT"s,m'§‘
`1:] 6 Multidisitnct
`Jud men]
`Reopened
`Proceeding
`State Court
`Appellate Court
`(specify)
`Litigation
`
`
`
`Cite the U.S.
`ivil Statute under w ich you are filing (Do not cite jurisdiction statutes unless diversity):
`
`15 U.S.C.
`1051 etse .
`
`VI. CAUSE OF ACTION
`Brief description of cause:
`
`
` . Trademark Infi'in ement
`VIL REQUESTED IN
`El CHECK IF THIS Is A CLASS A(_‘n0N
`DEMAND 3
`CHECK YES only if demanded in complaint:
`COMPLAINT:
`UNDER F.R.C.P. 23
`JURY DEMAND;
`Yes
`No
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`Case 2:10-cv-05639-BMS Document 1
`
`Filed 10/26/10 Page 2 of 51
`
`UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA —— DESIGNATION FORM to be used by counsel to indicate the category of the case for the purpose of
`assignment to appropriate calendar.
`
`Address of Plaintiff:
`
`3634 Newbolt Court, Doylestown, PA 18902
`
`Address of Defendant:
`
`16101 West 78"‘ Street, Eden, Minnesota 55344
`
`Place of Accident, Incident or Transaction:
`
`(Use Reverse Sidefor Additional Space)
`
`Does this civil action involve a nongovemmental corporate party with any parent corporation and any publicly held corporation owning 10% or more of its stock?
`
`
`
`(Attach two copies of the Disclosure Statement Fomi in accordance with Fed.R.Civ.P. 7. l (a)). Yes D No X
`
`Does this case involve multidistrict litigation possibilities?
`RELA TED CASE IF ANY:
`
`Case Number:
`
`Judge
`
`Date Terminated:
`
`Civil cases are deemed related when yes is answered to any of the fol lowing questions:
`
`Yes D No K
`
`
`
`1.
`
`Is this case related to property included in earlier numbered suit pending or within one year previously temtinated action in this court?
`Yes E] No D
`
`2. Does this case involve the same issue of fact or grow out of the same transaction as a prior suit pending or within one year previously terminated
`action in this court?
`Yes C] No C]
`
`3. Does this case involve the validity or infringement of a patent already in suit or any earlier numbered case pending or within one year previously
`terminated action in this court?
`Yes E] No C}
`
`4.
`
`Is this case a second or successive habeas corpus, social security appeal, or pro se civil rights case filed by the same individual?
`Yes E] No [:1
`
`CIVIL: (Place
`
`in ONE CATEGORY ONLY)
`
`A. Federal Question Cases:
`
`B. Diversity Jurisdiction Cases:
`
`1. El Insurance Contract and Other Contracts
`D Airplane Personal Injury
`
`D Assault, Defamation
`El Marine Personal Injury
`
`E] Motor Vehicle Personal Injury
`
`2 3 4 5
`
`1. E] Indemnity Comract, Marine Contract, and All Other Contracts
`C] FELA
`
`2 3 4 5
`
`E} Jones Act-Personal Injury
`D Antitrust
`
`, D Patent
`
`6. D Other Personal Injury (Please specify)
`7
`D Products Liability
`
`D Products Liability —— Asbestos
`
`C] All Other Diversity Cases
`(Please specify)
`
`89
`
`E] Labor-Management Relations
`[1 Civil Rights
`
`E] Habeas Corpus
`C] Security Act(s) Cases
`
`6 7 3 9
`
`10. C] Social Security ReviewCases
`
`I I.
`
`All other Federal Question Cases —- Trademark Infringement
`(please specify)
`
`
`1, Michael N. Onufrak
`
`ARBITRATION CERTIFICATION
`(Check appropriate category)
`, counsel of record do hereby certify:
`
`Pursuant to Local Civil Rule 53.2, Section 3(c)(2), that to the best of my knowledge and belief, the damages recoverable in this civil action case
`exceed the sum of $150,000.00 exclusive of interest and costs;
`E Relief other than monetary damages is sought.
`43064
`
`Attorney l.D. #
`Attomey-at-L
`re has been compliance with F.R.C.P. 38.
`NOTE: A trial de novo will be atrial by jury 0
`
`
`
`ne year previously terminated action in this court
`
`43064
`
`Attomey I.D. #
`
`
`
`I certify that, to my knowledge, the within case is not related to airy case now pending or with’
`except as noted above.
`DATE:
`NZ '‘-'5[(0
`CIV. 609 (6/08)
`
`Attomey-at-Law
`
`
`
`687345 lv.l
`
`

`
`Case 2:10-cv-05639-BMS Document 1
`
`Filed 10/26/10 Page 3 of 51
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`CASE MANAGEMENT TRACK DESIGNATION FORM
`
`KURT L. BALDERSON
`
`:
`
`CIVIL ACTION
`
`V
`E.A. SWEEN COMPANY
`
`- NO.
`
`In accordance with the Civil Justice Expense and Delay Reduction Plan of this court, counsel for
`plaintiff shall complete a Case Management Track Designation Form in all civil cases at the time
`of filing the complaint and serve a copy on all defendants.
`(See § 1203 of the plan set forth on
`the reverse side of this form.)
`In the event that a defendant does not agree with the plaintiff
`regarding said designation, that defendant shall, with its first appearance, submit to the clerk of
`court and serve on the plaintiff and all other parties, a case management track designation form
`specifying the track to which that defendant believes the case should be assigned.
`
`SELECT ONE OF THE FOLLOWING CASE MANAGEMENT TRACKS:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`Habeas Corpus -— Cases brought under 28 U.S.C. §224l
`through §2255.
`
`Social Security -- Cases requesting review of a decision of
`the Secretary of Health and Human Services denying
`plaintiff Social Security Benefits.
`
`Arbitration —- Cases required to be designated for
`arbitration under Local Civil Rule 53.2.
`
`Asbestos -- Cases involving claims for personal injury or
`property damage from exposure to asbestos.
`
`Special Management -- Cases that do not fall into tracks (a)
`through (d) that are commonly referred to as complex and
`that need special or intense management by the court. (See
`reverse side of this form for a detailed explanation of
`special management cases.)
`
`(t)
`
`Standard Management -— Cases that do not fall into any one
`of the other tracks.
`
`( )
`
`( )
`
`( )
`
`( )
`
`( )
`
`(x)
`
`Michael N. Onufrak
`Attorney-at-law
`
`Plaintiff
`Attorney for
`
`(215) 789-7674
`Fax Number
`
`onufrakrn@whiteandwilliams.com
`E-mail Address
`
`October 26, 2010
`Date
`
`g 215) 864-7174
`Telephone
`
`6873459v.l
`
`

`
`Case 2:10-cv-05639-BMS Document 1
`
`Filed 10/26/10 Page 4 of 51
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`KURT L. BALDERSON
`3634 Newbolt Court
`Doylestown, PA 18902
`
`: CIVIL ACTION
`
`j COMPLAINT
`
`Plaintiff,
`
`IURY TRIAL DEMANDED
`
`v.
`
`E.A. SWEEN COMPANY
`16101 West 73”‘ Street
`
`Eden Prairie, MN 55344
`
`Defendant.
`
`COMPLAINT
`
`Plaintiff, Kurt L. Balderson (“Balderson”), by and through his counsel, sues defendant
`
`E.A. Sween Company d/b/a Deli Express (“E.A. Sween”), and states the following:
`
`PARTIES
`
`1.
`
`Plaintiff, Balderson, is an individual domiciled at 3634 Newbolt Court, Doylestown,
`
`Pennsylvania 18902.
`
`2.
`
`Defendant, E.A. Sween, is a Minnesota corporation that maintains its principal place of
`
`business at 16101 West 78* Street, Eden Prairie, Minnesota 55344.
`
`NATURE OF ACTION
`
`3.
`
`This is an action for intentional trademark infringement and false designation of origin
`
`under the Trademark Act of 1946, as amended (The Lanham Act, 15 U.S.C. § 1051 et seq.), and
`
`for unjust enrichment, common law trademark infringement and unfair competition, conversion,
`
`and misappropriation of Balderson’s registered marks, goodwill, reputation, and business
`
`property under Pennsylvania common law.
`
`6873032v.l
`
`

`
`Case 2:10-cv-05639-BMS Document 1
`
`Filed 10/26/10 Page 5 of 51
`
`JURISDICTION AND VENUE
`
`4.
`
`E.A. Sween does business in interstate commerce, within the Commonwealth of
`
`Pennsylvania, and within the Eastern District of Pennsylvania.
`
`5.
`
`Subject matter jurisdiction is proper pursuant to 28 U.S.C. § 1331 because this
`
`case involves a federal question pursuant to 15 U.S.C. §§ 1114 and 1125(a).
`
`6.
`
`Subject matter jurisdiction is also proper pursuant to 28 U.S.C. § 1332 because
`
`the parties are citizens of different states, and the matter in controversy exceeds the sum or value
`
`of $75,000, exclusive of interest and costs.
`
`7.
`
`Venue is proper in this judicial district because a substantial part of the events or
`
`omissions giving rise to the claims occurred in and because E.A. Sween is subject to jurisdiction
`
`within the Eastern District of Pennsylvania, pursuant to 28 U.S.C. § 1391.
`
`FACTS
`
`Balderson’s Idea-Introduction of STUFFITS and STUFFIT Marks
`
`8.
`
`In September 2001, Balderson began working full time on developing the
`
`STUFFITS and STUFFIT business and brand.
`
`9.
`
`Commencing on July 17, 2002, Balderson operated the STUFFITS Restaurant in
`
`Doylestown, Pennsylvania, and engaged in substantial promotional and advertising efforts under
`
`the STUFFITS and STUFFIT trademarks in interstate commerce.
`
`10.
`
`During this period of time in addition to using the marks at the restaurant,
`
`Balderson used the marks in interstate commerce in connection with catering, special events, and
`
`6873032v.1
`
`

`
`Case 2:10-cv-05639-BMS Document 1
`
`Filed 10/26/10 Page 6 of 51
`
`other food-service establishments. In addition, he used the marks in connection with Take Home
`
`Refrigerated STUFFIT food items.
`
`Balderson’s Two Registrations
`
`11.
`
`On April 15, 2002, Balderson filed an application to register the mark STUFFITS
`
`for restaurants, cafes, snack bars, and catering services. That registration issued on April 6, 2004
`
`and is currently in full force and effect. A copy of the registration is attached hereto as Exhibit 1.
`
`12.
`
`Balderson is exclusively entitled to use the STUFFITS mark for the goods and/or
`
`services for which they are registered.
`
`13.
`
`On April 15, 2002, Balderson filed an application to register the mark STUFFIT
`
`for prepared food product, namely pastry pockets containing primarily meats, vegetables,
`
`cheeses for consumption at the location of sale and/or away from the location of sale. That
`
`registration issued on April 6, 2004 and is currently in fiill force and effect. A copy of the
`
`registration is attached hereto as Exhibit 2.
`
`14.
`
`Balderson is exclusively entitled to use the STUFFIT mark for the goods for
`
`which it is registered.
`
`E.A. Sween’s Application and Launch of the Infringing Product
`
`15.
`
`On or before December 19, 2006, E.A. Sween became aware of Mr. Balderson
`
`and the STUFFITS and STUFFIT marks as a result of a trademark search report it obtained on
`
`that date.
`
`16.
`
`On December 28, 2006, despite its actual knowledge of Balderson’s registrations,
`
`E.A. Sween filed an intent to use application to register the mark DELI EXPRESS STUFF-ITZ
`
`6873032v.l
`
`

`
`Case 2:10-cv-05639-BMS Document 1
`
`Filed 10/26/10 Page 7 of 51
`
`for “sandwiches” (the “Infringing Product” or “STUFF-ITZ”), which is attached hereto as
`
`Exhibit 3.
`
`17.
`
`Upon information and belief, when E.A. Sween applied to register its STUFF—ITZ
`
`name, it placed its house mark in front of the proposed name in an attempt to avoid rejection by
`
`the USPTO based on Ba1derson’s preexisting registrations. E.A. Sween’s product packaging
`
`clearly shows that “Deli Express” is used separately from its “STUFF—ITZ” mark.
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`18.
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`Balderson filed an opposition to E.A. Sween’s application. The opposition
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`proceeding is still pending.
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`19.
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`On February 13, 2007 and October 22, 2007, in connection with its initial and
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`final office actions respectively (which are attached hereto as Exhibit 4 and 5), the United States
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`Patent and Trademark Office (“USPTO”) refused E.A. Sween’s request for “registration of the
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`proposed mark—Deli Express Stuff-Itz because of a likelihood of confusion with the mark in
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`U.S. Registration Nos. 2830566——Stuffit and 2830565—Stuffits”, Ba1derson’s marks.
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`20.
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`In the USPTO’s Final Refusal of E.A. Sween’s Trademark Application dated
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`October 22, 2007, the examining attorney stated: “As to the addition of the house mark, where
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`the marks are otherwise virtually the same, the addition of a house mark is more likely to add to
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`the likelihood of confusion than to distinguish the marks. It is likely not only that the two
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`products sold under these marks would be attributed to the same source but also that purchasers
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`would mistakenly assume that both were products of applicant by virtue of its use of Deli
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`Express with the shared term Stuffi .”
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`21.
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`Despite its knowledge of Balderson’s registrations, and awareness that such use
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`was likely to cause consumer confusion with Balderson’s marks, E.A. Sween stated that it first
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`used its proposed STUFF—ITZ mark on or about January 26, 2007.
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`22.
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`Despite its knowledge of Balderson’s registrations, and awareness that such use
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`was likely to cause consumer confusion with Balderson’s marks, E.A. Sween stated that it first
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`commenced sales of the Infiinging Product on or about February 8, 2007.
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`23.
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`E.A. Sween’s use of Balderson’s marks was likely to cause confusion.
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`24.
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`There was actual confusion among consumers as a result of the conduct of E.A.
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`Sween.
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`25.
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`By way of example, on January 8, 2009, a consumer alerted Balderson as to the
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`availability of E.A. Sween’s STUFF-ITZ in a Philadelphia-area Turkey Hill convenience store
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`and inquired whether it was related to Balderson’s STUFFITS/STUFFIT business and marks.
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`26.
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`Notwithstanding its awareness of Balderson’s marks, E.A. Sween continues to
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`willfully infringe on Balderson’s trademark rights and seeks to use and register DELI EXPRESS
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`STUFF-ITZ with the United States Patent and Trademark Office.
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`E.A. Sween’s Profits from its Intentional Infringement and False Desigation
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`27.
`
`Upon information and belief, from February 2007 through June 2009, E.A. Sween
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`sold over 4 million units of the Infringing Product and contained thereafter.
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`28.
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`During that same time period, E.A. Sween procured sales revenue of over
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`$6,000,000.00 and continued thereafter to sell and further profit from sales of the Infringing
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`Product.
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`29.
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`Despite actual notice of Balderson’s federally registered STUFFITS and
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`S'IUFFIT marks, E.A. Sween willfully and deliberately used and seeks to continue to use and
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`infringe upon Balderson’s marks and his goodwill.
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`30.
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`Upon information and belief, E.A. Sween intended to confuse and deceive
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`COl'1S111’l’1Cl'S.
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`31.
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`E.A. Sween’s deception and willful infringement damaged the value of
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`Balderson’s marks.
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`32.
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`Balderson dedicated a decade of his life and significant amount of money
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`creating, establishing and building the STUFFITS and STUFFIT marks, brands and associated
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`goodwill.
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`33.
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`E.A. Sween was aware of Balderson’s marks since December 19, 2006.
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`34.
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`E.A. Sween never requested Balderson’s permission to use his marks.
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`35.
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`E.A. Sween never offered to pay Balderson for its use of his marks.
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`36.
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`E.A. Sweenknowingly and intentionally used Balderson’s property without his
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`permission.
`37.
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`E.A. Sween knowingly and intentionally profited from the use ofBalderson’s
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`property without his permission.
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`38.
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`Upon information and belief, E.A. Sween willfully deceived or otherwise misled
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`the USPTO Trademark Trial and Appeal Board (the “Board”) in connection with its ultimately
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`unsuccessful attempt to have it cancel Balderson’s marks without him knowing by failing to
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`provide the Board with Balderson’s last known address, notwithstanding the fact that E.A.
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`Sween was aware of that address.
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`39.
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`Upon information and belief, E.A. Sween took the foregoing actions so as to
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`continue its willful infringement on Balderson’s marks without him knowing and for the purpose
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`of taking his property.
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`E.A. Sween Damaged Balderson’s Proge_1;t_'y
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`40.
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`For several years, E.A. Sween sold its similar product, but of lower quality, under
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`a confusingly similar name and at a significantly lower price point than Balderson’s product.
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`41.
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`As a result, Balderson’s marks were damaged and are no longer marketable as the
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`brand he spent considerable time and money creating.
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`42.
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`Upon infonnation and belief, E.A. Sween engaged in advertising activity
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`involving self promotion, solicitation of business and the dissemination of promotional material
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`concerning the STUFF-ITZ name and product to the public.
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`43.
`
`Through such advertising activities, E.A. Sween connected its STUFF-ITZ name
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`with Balderson’s STUFFIT and STUFFITS marks thereby damaging them and engaged in unfair
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`competition, and misappropriation of his property, advertising ideas and style of business.
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`44.
`
`Now, as a result of E.A. Sween’s unauthorized use of Balderson’s marks,
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`— advertising activity, and sales revenues of over $6,000,000.00 through June 2009 and continuing
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`thereafter, consumers and potential business partners associate Balderson’s mark with the lower
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`quality and lower priced product sold by E.A. Sween, and not with Balderson’s marks.
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`45.
`
`Balderson’s primary business goal, since the inception of the
`
`STUFFITS/STUFFIT concept in 2001, was/is to create a certain high quality image for his marks
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`and build the STUFFITS/STUFFIT brands into a sought after consumer product and concept that
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`would attract the interest of a larger corporation for acquisition.
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`46.
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`Upon information and belief, instead of purchasing his property or licensing the
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`use of his marks, E.A. Sween chose to steal that property so as to profit from it without
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`Balderson knowing.
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`47.
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`E.A. Sween’s intentional use of Balderson’s marks and advertising activities
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`damaged his property and his ability to attract the interest of a potential business partner and/or a
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`large corporation for sale or licensing purposes.
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`48.
`
`Balderson’s registrations are in full force and effect.
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`Filed 10/26/10 Page 11 of 51
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`49.
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`E.A. Sween infringed upon Balderson’s exclusive right to use and control the
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`reputation of his marks.
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`TRADEMARK INFRINGEMENT UNDER 15 U.S.C. § 1114
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`COUNT I
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`50.
`
`Paragraphs 1-49 of this Complaint are adopted herein by reference as though fully
`
`set forth herein.
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`51.
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`Since April 15, 2002, Balderson used his STUFFITS and STUFFIT marks in
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`connection with and to identify his restaurant and products and distinguish them from similar
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`products offered by other companies, by, and without limitation, prominently displaying said
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`marks on the products and advertising and promotional materials distributed in interstate
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`commerce.
`
`52.
`
`In addition, as of the date of the filing of this complaint, although severely
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`hindered by events that have transpired since discovering E.A. Sween’s willful infringement and
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`other wrongdoings, Balderson is actively engaged in expanding its use of his marks in
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`connection with its product in interstate commerce.
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`53.
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`E.A. Sween infringed upon Balderson’s marks in interstate commerce by various
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`acts, including, without limitation, the selling, offering for sale, promotion and advertising
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`“stuffed sandwiches” under the name DELI EXPRESS STUFF-ITZ of a type virtually identical
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`to the type of stuffed sandwiches offered by Balderson, and prominently displaying, advertising,
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`and promoting the stuffed sandwiches products under the DELI EXPRESS STUFF-ITZ name.
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`54.
`
`E.A. Sween’s intentional use of the name DELI EXPRESS STUFF-ITZ in
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`connection with the sale, marketing and advertisement of stuffed sandwiches is without
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`permission or authority of Balderson and said use caused actual confusion and is likely to cause
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`confusion, to cause mistake and/or to deceive.
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`55.
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`E.A. Sween’s use of DELI EXPRESS STUFF-ITZ in connection with the sale of
`
`stuffed sandwiches was made notwithstanding E.A. Sween’s actual knowledge of Balderson’s
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`prior established rights in the trademark STUFFITS and STUFFIT and with both actual and
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`constructive notice of Balderson’s federal registration rights under 15 U.S.C. § 1072.
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`56.
`
`Upon information and belief, E.A. Sween’s infringing activities have caused and,
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`unless enjoined by this Court, will continue to cause, irreparable injury and other damage to
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`Ba1derson’s property, business, reputation and goodwill in its federally registered STUFFIT and
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`STUFFITS trademarks.
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`57.
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`An accounting of defendant’s profits is necessary to deter it from infringing again
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`and from being unjustly enriched as a result of its intentional infringement upon Balderson’s
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`marks.
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`58.
`
`Balderson has no adequate remedy at law.
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`FALSE DESIGNATION OF ORIGIN UNDER 15 U.S.C. § ll25§a[
`
`COUNT II
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`59.
`
`Balderson hereby realleges and incorporates by reference the allegations of
`
`paragraphs 1-58 of this Complaint as if fully set forth herein.
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`60.
`
`Upon information and belief, E.A. Sween used the designation DELI EXPRESS
`
`STUFF-ITZ in connection with stuffed sandwiches in interstate commerce.
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`61.
`
`Said use of the designation DELI EXPRESS STUFF-ITZ is a willfully false
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`designation of origin, a false or misleading description and representation of fact which caused
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`and is likely to cause confusion and to cause mistake, and to deceive as to the affiliation,
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`connection or association of E.A. Sween with Balderson and as to the origin, sponsorship, or
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`approval of E.A. Sween’s products and commercial activities and property rights of Balderson.
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`62.
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`Upon information and belief, E.A. Sween’s wrongful activities have caused, and
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`unless enjoined by this Court will continue to cause, irreparable injury and other damage to
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`Balderson’s business, reputation and goodwill in its STUFFITS and STUFFIT marks.
`
`63.
`
`An accounting of defendant’s profits is necessary to deter it from such conduct
`
`and from being unjustly enriched.
`
`64.
`
`Balderson has no adequate remedy at law.
`
`COUNT III
`UNJUST ENRICHMENT
`
`65.
`
`Paragraphs 1 through 64 of this Complaint are adopted herein by reference as
`
`though fully set forth.
`
`66.
`
`E.A. Sween received and retained funds as a result of its infringement of
`
`Balderson’s registrations and false designation.
`
`67.
`
`E.A. Sween acted without Balderson’s consent and without lawful justification.
`
`68.
`
`E.A. Sween would be unjustly enriched if it retained such funds and goodwill it
`
`received in connection with its use and infringement of Balderson’s registrations and false
`
`designation.
`
`69.
`
`By its intentional disregard of Balderson’s registrations and sale of its stuffed
`
`sandwich under the STUFF-ITZ name, E.A. Sween received benefits in the form of money that it
`
`wrongfully secured under circumstances that it would be inequitable for it to retain.
`
`70.
`
`As a result, Balderson has sustained damages and E.A. Sween should be required
`
`to disgorge funds it received.
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`COUNT IV — COMMON LAW UNFAIR COMPETITION
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`71.
`
`Plaintiff hereby realleges and incorporates by reference the allegations of
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`Paragraphs 1 through 70 of this Complaint.
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`72.
`
`Balderson has an exclusive right touuse the STUFFITS and STUFFIT
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`marks/names.
`
`73.
`
`E.A. Sween used the confusingly similar STUFF-ITZ name.
`
`74.
`
`There was actual confusion and a likelihood of C0l'1fl1Si0I1 caused by E.A. Sween’s
`
`use of the similar term STUFF—ITZ.
`
`75.
`
`Consumers viewing the term STUFF-ITZ would likely assume and in fact did
`
`assume that it was associated with Balderson’s services and marks.
`
`76.
`
`The aforementioned acts of E.A. Sween constitute use that is likely to, and did in
`
`fact, cause confusion as to the source of its products.
`
`77.
`
`The aforementioned acts of E.A. Sween misappropriated the equity and goodwill
`
`of Balderson and constitute unfair competition in violation of Pennsylvania common law.
`
`COUNT V — COMMON LAW TRADEMARK INFRINGEMENT
`
`78.
`
`Plaintiff hereby realleges and incorporates by reference the allegations of
`
`Paragraphs 1 through 77 of this Complaint.
`
`79.
`
`At all times relevant, Balderson had a legal right to the exclusive use of the
`
`STUFFITS and STUFFIT marks.
`
`80.
`
`E.A. Sween used the confusingly similar term/name STUFF-ITZ.
`
`81.
`
`The aforesaid acts of E.A. Sween constitute use that did cause and is likely to
`
`cause confusion as to the source of its goods.
`
`82.
`
`The aforesaid acts of E.A. Sween constitute trademark infringement in violation
`
`of Pennsylvania common law.
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`COUNT VI
`CONVERSION
`
`83.
`
`Paragraphs 1 through 82 of this Complaint are adopted herein by reference as
`
`though fully set forth.
`
`84.
`
`As set