throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA392803
`ESTTA Tracking number:
`02/10/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91189378
`Plaintiff
`Wright Medical Technology, Inc.
`Anthony J. Fitzpatrick
`Duane Morris LLP
`30 South 17th Street
`Philadelphia, PA 19103
`UNITED STATES
`mavoltchenko@duanemorris.com, ajfitzpatrick@duanemorris.com
`Motion to Suspend for Civil Action
`Maxim A. Voltchenko
`mavoltchenko@duanemorris.com, ajfitzpatrick@duanemorris.com
`/mav/
`02/10/2011
`motion_suspend_with_exhibits_20110210.pdf ( 53 pages )(3445685 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Application Serial No. 78/716,745
`Filed: 09/20/2005
`
`For the mark: ORTHOLOCK
`
`Published in the Official Gazette on: January 20, 2009
`
`WRIGHT MEDICAL TECHNOLOGY, INC.
`
`Opposer,
`
`v.
`
`: Opposition No. 91189378
`
`ORTHOHELIX SURGICAL DESIGNS, INC.
`
`Applicant.
`
`FILED ELECTRONICALLY VIA ESTTA
`
`OPPOSER’S MOTION TO SUSPEND TTAB PROCEEDINGS
`
`PENDING DISPOSITION OF CIVIL ACTION
`
`Opposer Wright Medical Technology, Inc. (“Wright Medical” or “Opposer”) moves
`
`pursuant to 37 C.F.R. § 2.1 17(a) to suspend this proceeding pending a final determination of a
`
`civil action filed by Wright Medical against Applicant OrthoHelix Surgical Designs, Inc.
`
`(“Applicant” or “OrthoHe1ix”) in the United States District Court for the District of Delaware.
`
`(A copy of Wright Medical’s Complaint in Civil Action No. 1:1 1-CV—00116-UNA is attached
`
`hereto as Exhibit A.) The outcome of that action will effectively be dispositive of the issues in
`
`this proceeding. The interests ofjudicial economy dictate that this proceeding be suspended. In
`
`support of its motion, Wright Medical states as follows:
`
`1.
`
`Wright Medical, a medical device company, sells medical devices and
`
`implants under the ORTHOLOC trademark and has done so since at least as early as January 28,
`
`1983 — more than twenty years before OrthoHelix was founded in or about 2004.
`
`2.
`
`In an effort to appropriate for itself the goodwill built up by Wright
`
`

`
`Medical over more than twenty years, OrthoHelix filed an intent-to-use application with the
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`Patent and Trademark Office (“PTO”), Serial No. 78/716,745, on or about September 20, 2005,
`
`to register on the Principal Register the ORTHOLOCK trademark for related and overlapping
`
`products. The ORTHOLOCK mark is identical in meaning, pronunciation and appearance
`
`(except for a single letter) to Wright Medical’s ORTHOLOC trademark.
`
`3.
`
`In March 2009, Wright Medical initiated this proceeding before the
`
`Trademark Trial and Appeal Board (“TTAB” or “Board”).
`
`4.
`
`Rather than moving forward with this proceeding and having the Board
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`decide the likelihood of confusion and priority issues, OrthoHelix first filed a counterclaim
`
`seeking cancellation of Wright Medical’s federal registration for the ORTHOLOC trademark.
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`Wright Medical moved to dismiss that counterclaim for failure to state a claim upon which relief
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`could be granted. On November 23, 2010, the TTAB granted that motion and dismissed
`
`OrthoHelix’s counterclaim. The TTAB ordered that “[t]o the extent that [OrthoHelix] believes
`
`that it can state a claim upon which relief may be granted, it is allowed THIRTY DAYS to file an
`
`amended counterclaim, failing which [OrthoHelix’s] counterclaim will be dismissed with
`
`prejudice.” OrthoHelix failed to file an amended counterclaim, and hence its challenge to
`
`Wright Medical’s ORTHOLOC trademark has been resolved with prejudice in favor of Wright
`
`Medical.
`
`5.
`
`Most recently, in an apparent attempt to further delay the commencement
`
`of the discovery and the ultimate resolution of this dispute in the TTAB, on January 21, 2011,
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`(and just prior to the Board’s issuing an order scheduling discovery and other important
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`deadlines in this proceeding), OrthoHelix filed a Motion for Judgment on the Pleadings
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`(“OrthoHelix’s Motion”).
`
`

`
`6.
`
`A motion for judgment on the pleadings is a test solely of the undisputed
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`facts in the pleadings, supplemented by any facts of which the Board will take judicial notice.
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`Ava Enterprises Inc. v. P.A.C. Trading Group, Inc., 86 USPQ2d 1659 (TTAB 2008).
`
`7.
`
`“While rarely filed and even more rarely granted, [a motion for judgment
`
`on the pleadings] is available where all well pleaded factual allegations of the non-moving party
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`are accepted as true, there are no genuine issues of material fact to be resolved and the moving
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`party is entitled to judgment as a matter of law.” Gary D. Krugman, Trademark Trial and
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`Appeal Board. Practice and Procedure (2009-2010 Edition), §3:47 at page 145 (emphasis
`
`added).
`
`8.
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`In its Motion, OrthoHelix alleges that no material facts are in dispute.
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`Nothing can be further from the truth. In particular, Wright Medical contends that it has prior
`
`rights to the ORTHOLOC mark and the phonetically identical ORTHOLOCK based on the
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`doctrine of natural expansion, and that there is a likelihood of confusion caused by OrthoHelix’s
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`attempted registration and junior use of the ORTHOLOCK mark. OrthoHelix’s Motion neglects
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`to acknowledge these disputed issues of material facts.
`
`9.
`
`In View of OrthoHelix’s public statements concerning its use of the
`
`ORTHOLOCK trademark, and in order to seek remedies not available in a TTAB proceeding, on
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`February 3, 2011, Wright Medical filed a complaint against OrthoHelix in U.S. District Court for
`
`the District of Delaware (“Civil Action”). In that Civil Action, Wright Medical seeks, among
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`other things, an Order from the district court requiring OrthoHelix to withdraw its Trademark
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`Application Ser. No. 78/716,745 before the PTO, as well as preliminary and permanent
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`injunctive relief barring OrthoHelix from infringing Wright Medical’s registered trademark for
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`the ORTHOLOC mark and from engaging in acts of unfair competition, false advertising, false
`
`

`
`designation of origin, and unfair business practices.
`
`10.
`
`Under 37 C.F.R. § 2.117(a), “[w]henever it shall come to the attention of
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`the [Board] that a party or parties to a pending case are engaged in a civil action or another
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`Board proceeding which may have a bearing on the case, proceedings before the Board may be
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`suspended until termination of the civil action or the other Board proceeding.”
`
`11.
`
`Because the Civil Action in the District Court in Delaware involves the
`
`same parties and largely the same issues as this proceeding, and becauseits outcome will have a
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`significant bearing on this proceeding, Wright Medical requests that this proceeding be
`
`suspended pending resolution of the Civil Action.
`
`12.
`
`Generally, under the Trademark Act, the TTAB determines only the right
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`to secure a registration of a mark or to maintain one. Trademark Act, Sections 17 and 18, 15
`
`U.S.C. §§1067, 1068. District courts determine the right to use a mark (including whether such
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`may constitute trademark infringement) but may also decide the right to registration. Trademark
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`Act, Sections 21, 34, 37, 39, 15 U.S.C. §§1071, 1116, 1119, 1121. Because registration does not
`
`create any rights greater than those already possessed at common law without registration, both
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`parties are free to assert whatever rights they may have at law or in equity with respect to the
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`challenged mark. E Tuvache Inc. v. Emilio Pucci Perfumes International, 263 F. Supp. 104,
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`106, 152 U.S.P.Q. 574 (S.D.N.Y. 1967). Because the scope of inquiry of the district court is
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`broader than that of the TTAB, the interests ofjudicial economy dictate that the court proceed
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`first with its determination of those issues. Q at 107.
`
`13.
`
`“Ordinarily, the Board will suspend proceedings in the case before it if the
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`final determination of the other proceeding will have a bearing on the issues before the Board.”
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`Trademark Trial and Appeal Board Manual of Procedure (Second Edition, March 2004),
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`

`
`510.02(a); see also 6 J. Thomas McCarthy, Trademarks and Unfair Competition, §32:47, at p.
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`32-117, 118 (2010). To the extent that a civil action in a Federal district court involves issues in
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`common with those in a proceeding before the TTAB, the decision of the Federal district court
`
`will be binding upon the TTAB, while the decision of the TTAB is not binding upon the court.
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`Tuvache Inc. v. Emilio Pucci Perfumes International, 263 F Supp 104, 152 USPQ 574; General
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`Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933 (TTAB 1992) (relief sought in
`
`district court included an order to cancel registration involved in cancellation proceeding).
`
`14.
`
`The Board should suspend this proceeding pending the outcome of the
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`Civil Action because the disposition of the Civil Action by the district court will be dispositive of
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`the issues in this proceeding and will be binding on Applicant (OrthoHelix) and the Board.
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`Among other relief, Wright Medical is seeking an Order requiring OrthoHelix to withdraw its
`
`Trademark Application Ser. No. 78/716,745.
`
`WHEREFORE, because of the overlap of the issues in the Civil Action with this
`
`proceeding and the likely issue and/or claim preclusion effect of the district court’s judgment,
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`Wright Medical requests this proceeding be suspended pending the resolution of Civil Action
`
`File No. 1:11-CV-00116-UNA.
`
`

`
`In the alternative, should the Board decide to continue this proceeding despite (or
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`in parallel with) the district court’s Civil Action and/or consider OrthoHelix’s Motion for
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`Judgment on the Pleadings, Wright Medical requests that OrthoHelix’s Motion be denied, or that
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`Wright Medical be given twenty-one days from the date of the Board’s Order on this motion to
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`submit a brief in opposition to OrthoHelix’s Motion.
`
`Date: February L0, 2011 Anthoy J. Fitzpatrick
`
`Duane Morris L '
`
`470 Atlantic Avenue, Suite 500
`
`Boston, MA 02210
`
`Tel.: (857) 488-4220
`Fax: (857)488-4201
`Email: aif1tz1@ick@duanemorris.com
`
`Maxim A. Voltchenko
`
`Duane Morris LLP
`
`30 South 17th Street
`
`Philadelphia, PA 19103-4196
`Tel.: (215) 979 1823
`Fax: (215) 979 1020
`Email: mavoltchenko@duanemorris.com
`
`Attorneys for Opposer
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the OPPOSER’S MOTION TO SUSPEND TTAB
`PROCEEDINGS PENDING DISPOSITION OF CIVIL ACTION was mailed by prepaid first
`class mail to Applicant’s counsel of record, Laura F. Shunk, HUDAK, SHUNK & FARINE CO.
`LPA, 2020 Front Street, Suite 307, Cuyahoga Falls, OH 44221 on this Lflday of February, 2011.
`
`
`
`
`
` axi A.
`Attorneyfor Opposer
`
`oltchenko
`
`DM2\2666658.5
`
`DUANE MORRIS LLP
`
`
`
`

`
`
`
`Exhibit “A”Exhibit “A”
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 1 of 13 Page|D #: 1
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF DELAWARE
`
`
`WRIGHT MEDICAL TECHNOLOGY, INC.
`
`Plaintiff,
`
`Civil Action No.
`
`V.
`ORTHOHELIX SURGICAL DESIGNS, INC.
`Defendant.
`
`
`.
`
`I
`
`JURY TRIAL DEMANDED
`
`COMPLAINT FOR PRELIMINARY & PERMANENT
`INJUNCTIVE RELIEF AND DAMAGES
`
`Wright Medical Technology, Inc. (“Wright Medical”) brings this action for trademark
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`infringement and related claims of unfair competition, false advertising, and false designation of
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`origin arising under the trademark and unfair competition laws of the United States of America,
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`15 U.S.C. § 1051 et seq. (also referred to as the “Lanham Act”), and of the State of Delaware,
`
`seeking injunctive relief and damages, and alleges, in support there of, as follows:
`
`THE PARTIES
`
`1.
`
`Wright Medical is a Delaware corporation, with its mailing address and principal
`
`place of business at 5677 Airline Road, Arlington, TN 38002.
`
`2.
`
`Defendant OrthoHelix Surgical Designs, Inc. (“Defendant” or “OrthoHelix”) is a
`
`Delaware corporation, with its mailing address and principal place of business at 3975 Embassy
`
`Pkwy, Akron, OH 44333.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has jurisdiction under the provisions of the Lanham Act involving a
`
`federal question concerning infringement of a registered trademark, l5 U.S.C. § 1121 et seq., and
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`28 U.S.C. § 1338, and has supplemental jurisdiction pursuant to 28 U.S.C. § l367(a).
`
`

`
`Case 1:11—cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 2 of 13 Page|D #: 2
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`4.
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`Personal jurisdiction and venue over Defendant are properly found in this District
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`pursuant to 28 U.S.C. § 1391 because, upon and information belief, a substantial part of the
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`events giving rise to this action occurred in this judicial district and because Defendant resides in
`
`this district.
`
`FACTS
`
`Plaintiff Wright Medical’s Business And Its ORTHOLOC Trademark
`
`5.
`
`Wright Medical is a global orthopedic medical device company specializing in the
`
`design, manufacture, and marketing of reconstructive joint devices and biologics.
`
`6.
`
`Wright Medical’s product offerings include large joint implants for the hip and
`
`knee; extremity implants for the hand, elbow, shoulder, foot and ankle; and both synthetic and
`
`tissue-based bone graft substitute materials.
`
`7.
`
`In connection with its product offerings, Wright Medical owns the trademark
`
`ORTHOLOC (the “ORTHOLOC Trademark”) and the federal registration thereof (Reg. No.
`
`1,417,357). A copy of the ORTHOLOC Trademark registration is attached hereto as Exhibit
`
`“A” and incorporated herein as though set forth at length.
`
`8.
`
`The ORTHOLOC Trademark was registered on November 18, 1986, on the
`
`Principal Register, in connection with the following products manufactured and sold by Wright
`
`Medical: “orthopaedic implant for the knee.”
`
`9.
`
`The ORTHOLOC Trademark is
`
`inherently distinctive. Wright Medical’s
`
`registration of the ORTHOLOC Trademark is valid and existing, has achieved incontestability,
`
`and is conclusive evidence of Wright Medical’s exclusive right
`
`to use the ORTHOLOC
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`Trademark in commerce.
`
`10.
`
`Wright Medical also owns a pending intent-to-use trademark application, Serial
`
`No. 77/636,931, for ORTHOLOC, reciting Wright Medical’s intent to use the ORTHOLOC
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 3 of 13 Page|D #: 3
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`Trademark in connection with “medical devices, namely orthopedic implants; orthopedic
`
`implants comprising internal fixation devices for treatment of bone fractures and diseases; bone
`
`plates.”
`
`(See copy of Wright Medical’s intent
`
`to use trademark application, Serial No.
`
`77/636,931, attached hereto as Exhibit “B” and incorporated herein as though set forth at length).
`
`These intended uses encompass, among other things, surgical procedures done to the hand and
`
`foot.
`
`11. Wright Medical, itself and/or through its predecessors, has continuously used the
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`ORTHOLOC mark in commerce since at least as early as January 28, 1983 — more than twenty
`
`years before OrthoHelix was founded in or about 2004 — and Wright Medical first used the
`
`ORTHOLOC trademark in connection with bone plates in August 2009.
`
`12.
`
`During this long period of continuous use, the ORTHOLOC Trademark has been
`
`uniquely associated with Wright Medical and recognized by Wright Medical’s customers and
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`others in the market and industry for medical devices and implants as identifying Wright Medical
`
`and its products.
`
`13.
`
`As
`
`the result of this continuous use,
`
`the inherent distinctiveness of the
`
`ORTHOLOC Trademark, and Wright Medical’s substantial advertising and promotion of
`
`products marketed and sold under the ORTHOLOC trademark, the ORTHOLOC Trademark has
`
`acquired strong commercial goodwill and has come to symbolize the superior quality of the
`
`products manufactured and sold by Wright Medical.
`
`Defendant OrthoHelix’s Unlawful Conduct
`
`14.
`
`OrthoHelix is a medical device company that develops and sells implants and
`
`instruments for use in hand and foot reconstructive surgery.
`
`15.
`
`OrthoHelix, which was founded in or about 2004,
`
`is a competitor of Wright
`
`Medical in the field of orthopedic implants.
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 4 of 13 PagelD #: 4
`
`16.
`
`As a competitor of Wright Medical, OrthoHelix targets and seeks to do business
`
`with many of the same customers with whom Wright Medical has done business for over fifty
`
`years. Additionally, OrthoHelix’s products travel
`
`in the same channels of trade as Wright
`
`Medical’s products.
`
`17.
`
`In an effort to appropriate for itself the goodwill built up by Wright Medical over
`
`more than twenty years, OrthoHelix filed an intent-to-use application, Serial No. 78/716,745, on
`
`or about September 20, 2005, to register on the Principal Register a mark that, except for a single
`
`letter, is identical in appearance, meaning, and pronunciation to Wright Medical’s ORTHOLOC
`Trademark.
`I
`
`18.
`
`Through its intent-to-use application, Serial No. 78/716,745, OrthoHelix seeks to
`
`register the designation ORTHOLOCK for:
`
`“specialized implants and instruments for foot and hand surgery, namely, plates, screws,
`wires, fasteners, plate holders, benders, cutters, screwdrivers, drill guides, guide pins,
`forceps, retractors, depth gauges and salvage instruments”
`
`in International Class 10.
`
`(See copy of OrthoHelix’s intent to use trademark application, Serial
`
`No. 78/716745, attached hereto as Exhibit “C”).
`
`19.
`
`In March 2009, Wright Medical filed parallel proceedings before the Trademark
`
`Trial and Appeal Board (“TTAB”) in opposition to OrthoHelix’s intent-to-use application (the
`
`“TTAB Proceedings”).
`
`In October 2009, OrthoHelix admitted in the TTAB Proceedings,
`
`through its Vice President of Research and Development Derek Lewis and its CEO Dennis
`
`Stripe,
`
`that
`
`it had expended “considerable time and resources” in connection with the
`
`development of a plate and screw system for the hand and foot under the designation
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`ORTHOLOCK.
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 5 of 13 PagelD #: 5
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`20.
`
`OrthoHelix further admitted in the TTAB Proceedings that it was “finalizing its
`
`preparation” to launch the aforementioned plate and screw system under the designation
`
`ORTHOLOCK.
`
`21.
`
`Upon information and belief,
`
`in or about July 2009 OrthoHelix registered the
`
`internet domain name ortholock.com through a company called Domain Discreet, having an
`
`address in Portugal.
`
`The ortholock.com website states: “Coming Soon from OrthoHelix --
`
`OrthoLockTM innovative locking plate and screw technology for the foot and ankle.” A copy of
`
`the ortholock.com website is attached hereto as Exhibit “D.”
`
`22.
`
`OrthoHelix’s own company website (http://www.orthohelix.com) indicates that
`
`Orthohelix has been using the designation ORTHOLOCK and promoting what it calls the
`
`“OrthoLockTM” product in the market. A copy of these pages from OrthoHelix’s website is
`
`attached hereto as Exhibit “E.”
`
`23.
`
`In or about November 2010, OrthoHelix posted on its company website
`
`(http://www.orthohelix.com) a “CEO Blog” entry that reads in relevant part as follows: “Since
`
`receiving FDA clearance to market our exclusive OrthoLockTM variable screw locking
`
`technology, we had very positive results from a limited roll out .
`
`.
`
`.
`
`. We are looking forward to
`
`our mass roll out in a few weeks.” A copy of this page from OrthoHelix’s website is attached
`
`hereto as Exhibit “F.”
`
`24.
`
`The ortholock.com website and OrthoHelix’s own website are accessible
`
`worldwide and in the forum jurisdiction.
`
`25.
`
`Despite knowing that Wright Medical owns and has continuously used the
`
`ORTHOLOC Trademark in connection with medical devices, upon information and belief
`
`

`
`Case 1:11-cv-00116—UNA Document 1
`
`Filed 02/03/11 Page 6 of 13 Page|D #: 6
`
`OrthoHelix is using the ORTHOLOCK designation in U.S. commerce to market and sell its own
`
`medical devices.
`
`26.
`
`OrthoHelix’s use of the ORTHOLOCK designation began more than twenty years
`
`after the ORTHOLOC Trademark was first used and registered, and long after Wright Medical
`
`had built up substantial goodwill in the ORTHOLOC Trademark.
`
`27.
`
`OrthoHelix is using the ORTHOLOCK designation to sell medical devices that
`
`are substantially the same as the medical devices sold by Wright Medical.
`
`28.
`
`Thus, the purpose and intended result of OrthoHelix’s use of the ORTHOLOCK
`
`designation is to cause confusion in the marketplace and to appropriate, for OrthoHelix’s benefit,
`
`the goodwill and name recognition associated with Wright Medical’s ORTHOLOC Trademark,
`
`the high-quality medical devices sold thereunder, and Wright Medical itself.
`
`29.
`
`Indeed, upon information and belief, OrthoHelix’s use of the designation
`
`ORTHOLOCK on its website (and potentially elsewhere) has (or is very likely to have) caused
`
`consumer confusion wherein consumers believe they are obtaining, being offered, reviewing, or
`
`handling products manufactured by Wright Medical,
`
`thereby resulting in pecuniary and
`
`reputational damage and injury to Wright Medical.
`
`30.
`
`OrthoHelix’s use of the ORTHOLOCK designation, which is substantially
`
`identical to the ORTHOLOC Trademark, with actual and constructive knowledge of Wright
`
`Medical’s rights in the ORTHOLOC Trademark constitutes willful
`
`infringement of the
`
`ORTHOLOC Trademark.
`
`31.
`
`Further, OrthoHelix’s use of
`
`the ORTHOLOCK designation, which is
`
`substantially identical to the ORTHOLOC Trademark, coupled with the substantially similar
`
`products offered thereunder, is likely to cause and continue to cause confusion, mistake, and
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 7 of 13 Page|D #: 7
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`deception in the minds of consumers, as to the origin of OrthoHelix’s ORTHOLOCK product or
`
`as to the affiliation, connection or association of OrthoHelix and its products with Wright
`
`Medical.
`
`OrthoHelix’s Failed Challenge to Wright Medical’s ORTHOLOC Trademark Registration
`
`32.
`
`After Wright Medical filed the TTAB Proceedings in opposition to OrthoHelix’s
`
`intent-to-use application, OrthoHelix filed a counterclaim seeking cancellation of Wright
`
`Medical’s federal registration for the ORTHOLOC Trademark. Wright Medical moved to
`
`dismiss that counterclaim for failure to state a claim upon which relief could be granted.
`
`33.
`
`On November 23, 2010,
`
`the TTAB granted that motion and dismissed
`
`OrthoHelix’s counterclaim. The TTAB ordered that “[t]o the extent that [OrthoHelix] believes
`
`that it can state a claim upon which relief may be granted, it is allowed THIRTY DAYS to file an
`
`amended counterclaim,
`
`failing which [OrthoHelix’s] counterclaim will be dismissed with
`
`prejudice.” OrthoHelix failed to file an amended counterclaim, and hence its challenge to
`
`Wright Medical’s ORTHOLOC Trademark has been resolved with prejudice in favor of Wright
`
`Medical.
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 8 of 13 Page|D #: 8
`
`COUNT I
`
`TRADEMARK INFRINGEMENT IN VIOLATION OF
`THE LANHAM ACT 15 U.S.C.
`1114
`
`34. Wright Medical repeats and incorporates by reference the allegations set forth in
`
`the foregoing paragraphs as though set forth at length herein.
`
`35. Wright Medical is the legal owner of the ORTHOLOC Trademark, which is valid
`
`and legally entitled to protection.
`
`36.
`
`OrthoHelix’s use of copy, variation,
`
`reproduction, simulation or colorable
`
`imitation of the ORTHOLOC Trademark in connection with medical devices infringes upon
`
`Wright Medical’s rights in its federally registered trademark, is likely to cause (or has already
`
`caused) confusion, mistake, or deception regarding the origin of the medical devices offered by
`
`OrthoHelix, and constitutes trademark infringement, in violation of the Lanham Act.
`
`37.
`
`OrthoHelix has used and is using a copy, variation, reproduction, simulation or
`
`colorable imitation of Wright Medical’s ORTHOLOC Trademark in connection with medical
`
`devices — substantially similar and related to the medical devices manufactured and sold by
`
`Wright Medical in connection with the ORTHOLOC Trademark — with knowledge of the long
`
`and extensive prior use of the ORTHOLOC Trademark by Wright Medical.
`
`38.
`
`OrthoHelix’s use of the ORTHOLOC Trademark is unauthorized.
`
`39.
`
`OrthoHelix’s conduct is causing damage to Wright Medical, its goodwill, and
`
`reputation, and will continue to damage Wright Medical and to confuse the public unless such
`
`conduct is enjoined by this Court.
`
`40.
`
`Unless OrthoHelix is enjoined from engaging in its wrongful conduct, Wright
`
`Medical will suffer further irreparable injury and harm, for which it has no adequate remedy at
`
`law.
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 9 of 13 Page|D #: 9
`
`COUNT II
`
`UNFAIR COMPETITION, FALSE ADVERTISING AND FALSE DESIGNATION OF
`ORIGIN IN VIOLATION OF THE LANHAM ACT, 15 U.S.C. § 1125§a[
`
`41. Wright Medical repeats and incorporates by reference the allegations set forth in
`
`the foregoing paragraphs as though set forth at length herein.
`
`42.
`
`OrthoHelix’s conduct, as described above, constitutes unfair competition, false
`
`advertising and false designation of origin in violation of Section 43(a) of the Lanham Act, 15
`
`U.S.C. § 1125(a).
`
`43.
`
`OrthoHelix has used and is using in commerce the ORTHOLOCK name, which is
`
`substantially similar to and infringes upon Wright Medical’s ORTHOLOC Trademark,
`
`in
`
`connection with the offer and sale of medical devices substantially similar and related to those
`
`offered and sold by Wright Medical.
`
`44.
`
`OrthoHelix’s use of the ORTHOLOCK name has caused, and is likely to continue
`
`to cause, confusion or mistake, or to deceive as to OrthoHelix’s affiliation, connection or
`
`association with Wright Medical, of which there is none.
`
`45.
`
`OrthoHelix’s medical devices are offered and promoted, among other ways, over
`
`the internet and, upon information and belief, affect interstate commerce.
`
`46.
`
`OrthoHelix’s conduct is causing damage to Wright Medical,
`
`its goodwill, and
`
`reputation, and will continue damage Wright Medical and to confuse the public unless such
`
`conduct is enjoined by this Court.
`
`47.
`
`OrthoHelix’s wrongful conduct has deprived Wright Medical of, among other
`
`things,
`
`the right
`
`to control
`
`the reputation and goodwill associated with the ORTHOLOC
`
`Trademark.
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 10 of 13 Page|D #: 10
`
`48.
`
`Unless OrthoHelix is enjoined from engaging in this wrongful conduct, Wright
`
`Medical will suffer further irreparable injury and harm for which it has no adequate remedy at
`
`law.
`
`COUNT III
`
`TRADEMARK INFRINGEMENT, UNFAIR BUSINESS PRACTICES,
`AND UNFAIR COMPETITION IN VIOLATION OF DELAWARE LAW
`
`49. Wright Medical repeats and incorporates by reference the allegations set forth in
`
`the foregoing paragraphs as though set forth at length herein.
`
`50.
`
`OrthoHelix’s conduct, described above, constitutes trademark infringement,
`
`unfair competition, and deceptive business practices in violation of Delaware common law, 6
`
`Del. C. § 3301 et seq. and 6 Del. C. §2531 et seq.
`
`51.
`
`Unless OrthoHelix is restrained by the Court, Wright Medical will continue to
`
`suffer irreparable injury and harm, for which it has no adequate remedy at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Wright Medical requests that this Court grant the following relief:
`
`(1)
`
`Preliminary and permanent injunctive relief enjoining OrthoHelix, its employees,
`
`agents, officers, directors, attorneys, representatives, successors, affiliates, parents, subsidiaries,
`
`licensees, and assigns, and all those in active concert or participation with OrthoHelix, from the
`
`following acts:
`
`(a)
`
`using or attempting to use on or in connection with any business, product,
`
`or service, or the sale, offering for sale, distribution, advertising, promotion,
`
`labeling or
`
`packaging, of any services or any goods, or from using for any purpose whatsoever:
`
`(i) the name
`
`or mark ORTHOLOCK, ORTHOLOC, OrthoLock or any other name, mark or designation
`
`which colorably imitates or is confusingly similar to said name or mark, alone or in combination
`
`10
`
`

`
`Case 1:11-cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 11 of 13 Page|D #: 11
`
`with any other mark(s), designation(s), word(s),
`
`term(s) and/or design(s);
`
`(ii) any false
`
`description or representation or any other thing calculated or likely to cause confusion or mistake
`
`in the public mind or to deceive the public into the belief that OrthoHelix or its products or
`services are connected to Wright Medical or that OrthoHelix’s products and services come from
`
`or are approved or endorsed by Wright Medical; and (iii) any name or mark which is likely to
`
`injure the business reputation of Wright Medical, alone or in combination with any other
`
`mark(s), designation(s), word(s), term(s) and/or design(s); and
`
`(b)
`
`otherwise engaging in acts, either directly or through other entities, of
`
`infringement, unfair competition, false advertising, false designation of origin, or unfair business
`
`practices;
`
`(2)
`
`An Order requiring OrthoHelix to contact all distributors, health care providers,
`
`and other entities to which it had sold and/or shipped product using the ORTHOLOCK
`
`designation, to advise them that OrthoHelix and its products have no affiliation with Wright
`
`Medical and that OrthoHelix is no longer using the ORTHOLOCK designation;
`
`(3)
`
`An Order requiring Defendant
`
`to withdraw its Trademark Application Ser.
`
`No. 78/716,745 before the Patent and Trademark Office;
`
`(4)
`
`An Order requiring Defendant to file with the Court and serve upon Wright
`
`Medical, within thirty (30) days after the entry of such order or judgment, a report in writing and
`
`under oath setting forth in detail the manner and form in which it has complied with the
`
`injunction;
`
`(5)
`
`A declaration that Defendant’s acts of trademark infringement, false designation
`
`of origin, and unfair competition were knowing, willful and “exceptional” within the meaning of
`
`15 U.S.C. § 1117;
`
`ll
`
`

`
`Case 1:11-cv—00116-UNA Document 1
`
`Filed 02/03/11 Page 12 of 13 Page|D #: 12
`
`(6)
`
`An Order awarding to Wright Medical actual damages and an accounting of
`
`Defendant’s profits, including any statutory enhancements, or enhancements on account of the
`
`willful nature of Defendant’s acts;
`
`(7)
`
`(8)
`
`An Order awarding to Wright Medical prejudgment and post-judgment interest;
`
`An award of Wright Medical’s costs and expenses, including, without limitation,
`
`reasonable attorneys’ fees;
`
`(9)
`
`An Order awarding to Wright Medical punitive damages on account of
`
`Defendant’s willful violations of Delaware law;
`
`(10) An Order
`
`that Defendant
`
`transfer the domain <ortholock.com> to Wright
`
`Medical;
`
`(11) All other relief, in law or in equity, to which Wright Medical may be entitled, or
`
`which the Court deems just and proper.
`
`Plaintiff respectfully requests ajury trial of all issues so triable.
`
`DUANE MORRIS LLP
`
`/s/ Matt Neiderman
`
`Matt Neiderman (Del. Bar I.D. No. 4018)
`Gary W. Lipkin (Del. Bar I.D. No. 4044)
`222 Delaware Avenue, Suite 1600
`
`Wilmington, DE 19801
`Tel.: (302) 657-4900
`Fax: (302) 657-4901
`Email: mneiderman@duanemorris.com
`gwlipkin@duanemorris.com
`
`Attorneys for Plaintifl
`Wright Medical Technology, Inc.
`
`12
`
`

`
`Case 1:11—cv-00116-UNA Document 1
`
`Filed 02/03/11 Page 13 of 13 Page|D #: 13
`
`Of Counsel:
`
`Anthony J. Fitzpatrick
`DUANE MORRIS LLP
`
`470 Atlantic Avenue, Suite 500
`
`Boston, MA 02210
`Tel.: (857) 488-4200
`Fax: (857)488-4201
`Email: ajfitzpatrick@duanemorris.com
`
`Mathew A. Taylor
`Samuel W. Apicelli
`Jeffrey S. Pollack
`DUANE MORRIS LLP
`30 South 17th Street
`
`Philadelphia, PA 19103-4196
`Tel.: (215) 979 1000
`Fax: (215) 979 1020
`Email: mataylor@duanemorris.com
`swapicelli@duanemorris.com
`jspo1lack@duanemorris.com
`
`Dated: February 3, 2011
`
`DM2\2208034.5
`
`13
`
`

`
`Case 1:11-cv-00116-UNA Document 1-1
`
`Filed 02/03/11 Page 1 of 30 Page|D #: 14
`
`EXHIBIT A
`
`

`
`Case 1:11-cv-00116-UNA Document 1-1
`
`Filed 02/03/11 Page 2 of 30 Page|D #: 15
`
`EXHIBIT A
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria. VA 223‘|3-1451
`www.uspto.gov
`
`SERIAL NO: 73/596966
`REGISTRATION NO: 1417357
`REGISTRATION DATE: 11/18/1986
`MARK: ORTHOLOC
`REGISTRATION OWNER: WRIGHT MEDICAL TECHNOLOGY, INC.
`
`MAILING DATE:
`
`‘I2/21/2006
`
`CORRESPONDENCE ADDRESS:
`
`SHAWN D. SENTILLES
`WRIGHT MEDICAL TECHNOLOGY, INC.
`5677 AIRLINE ROAD
`ARLINGTON, TENNESSE 38002
`
`NOTICE OF ACCEPTANCE
`15 u.s.c. Sec. 1058(a)(3)
`
`THE COMBINED AFFIDAVIT AND RENEWAL APPLICATION FILED FOR THE ABOVE—IDENTIF|ED REGISTRATION MEETS
`THE REQUIREMENTS OF SECTION 8 OF THE TRADEMARK ACT, 15 U.S.C. Sec. 1058.ACCORDlNGLY, THE SECTION 8
`AFFIDAVIT IS ACCEPTED.
`
`itfinfikkttiknktititifiiiIIiihkfiiifintitfitikknfiifififi
`
`NOTICE OF RENEWAL
`15 u.s.c. Sec. 1059(a)
`
`THE COMBINED AFFIDAVIT AND RENEWAL APPLICATION FILED FOR THE ABOVE-IDENTIFIED REGISTRATION MEETS
`THE REQUIREMENTS OF SECTION 9 OF THE TRADEMARK ACT, 15 U.S.C. Sec. 1059.ACCORDINGLY, THE.
`REGISTRATION IS RENEWED.
`
`tkikittiitwtwhtnnnnittttaktkktih*it*kt£i&tk*kk«
`
`THE REGISTRATION WILL REMAIN IN FORCE FOR CLASS(ES):
`010.
`-
`
`AUSTIN, DANA DIONNE
`PARALEGAL SPECIALIST
`POST-REGISTRATION DIVISION
`571-272-9

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