Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA577822
`ESTTA Tracking number:
`12/20/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91190278
`Defendant
`Harmonic Drive L.L.C.
`BASSAM N IBRAHIM
`BUCHANAN INGERSOLL ROONEY PC
`1737 KING STREET, SUITE 500
`ALEXANDRIA, VA 22314 2727
`UNITED STATES
`bassam.ibrahim@bipc.com, florence.goodman@bipc.com,
`lloyd.smith@bipc.com
`Motion to Suspend for Civil Action
`Bassam N. Ibrahim
`bassam.ibrahim@bipc.com, florence.goodman@bipc.com
`/Bassam N. Ibrahim/
`12/20/2013
`Motion and Memorandum to Suspend .pdf(2283404 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
`
`In re Matter of Serial No. 77/3 73,925 for the
`mark: HARMONIC DRIVE
`
`NAC HARMONIC DRIVE, INC.,
`
`Opposition No. 91190278
`
`Opposer,
`
`VS.
`
`HARMONIC DRIVE LLC,
`
`Applicant.
`;__M_____;.____,,___
`
`MOTION AND MEMORANDUM TO SUSPEND PURSUANT TO 37 C.F.R.
`
`
`2.177 a
`
`
`Pursuant to 37 C.F.R. § 2.177(a) and TBMP §5l0, Applicant Harmonic Drive
`
`LLC ("Applicant"), by and through its counsel, hereby moves to suspend the above
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`proceeding on the grounds that Opposer NAC Harmonic Drive, Inc. (“Opposer") and
`
`Applicant are engaged in a civil case that will be dispositive of these proceedings. This
`
`Motion is supported by the Memorandum in Support of Motion to Suspend Proceedings
`
`below.
`
`MEMORANDUM IN SUPPORT OF MOTION TO SUSPEND
`
`Applicant submits this Memorandum in support of its Motion to suspend Opposition No.
`
`91190278.
`
`I.
`
`INTRODUCTION
`
`On May 19, 2009, Opposer filed a Notice of Opposition to Applicant's registration of
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`HARMONIC DRIVE in Class 7 in connection with “electric motors; motor shaft retention
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`brakes; adjustable shaft couplings and couplings for machines; servo motors for positioning in
`
`response to electrical control signals; drives and transmissions in the nature of speed and power
`
`

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`increasers and reducers, all accept for land vehicles” and Class 9 for “electric: rotary actuators
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`and electronic controllers for producing control signals for electric rotary actuators and motor
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`shaft retention brakes” (Appl. No. 77/373,925) (the “HARMONIC DRIVE Application”).
`
`Opposer’s Notice of Opposition was based on allegations of descriptiveness and/or genericness.
`
`On July 24, 2009, Applicant filed its answer to Opposer’s Notice of Opposition, denying
`
`Applicant's allegations.
`
`Opposer filed a Motion for Summary Judgment on December 9, 2009, which was denied
`
`by the Board on September 7, 2010. The case is currently in the discovery period, which has
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`been extended several times to allow the parties time to engage in settlement negotiations.
`
`On December 12, 2013, Applicant filed a complaint against Opposer and its affiliates
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`alleging that Opposer’s use of NAC HARMONIC DRIVE infringed upon Applicant’s rights in
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`the mark HARMONIC DRIVE mark. The case is pending in the United States District Court for
`
`the District of Delaware (the "Civil Action"). The Civil Action is designated as Case No. 1:13-
`
`cv-131 10. A true and correct copy of the complaint in the Civil Action is attached hereto as
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`Exhibit A.
`
`Applicant respectfully requests that this proceeding be suspended pending resolution of
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`the Civil Action, since the Civil Action has a bearing on the issues in the current opposition, and
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`is likely to be dispositive of these issues.
`
`II.
`
`THE MOTION TO SUSPEND SHOULD BE GRANTED
`
`Under 37 C.F.R. § 2.1l7(a), "[w]henever it shall come to the attention of the Board that
`
`parties to a pending case are engaged in a civil action which may be dispositive of the case,
`
`proceedings before the Board may be suspended until termination of the civil action." 37 C.F.R.
`
`§ 2.1l7(a); see also TBMP §5 10 ("Ordinarily, the Board will suspend proceedings in the case
`
`before it if the final determination of the other proceedings will have a bearing on the issues
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`

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`before the Board") (emphasis added).
`
`Here, the Civil Action may be dispositive of the proceeding, and will undoubtedly have a
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`bearing on the issues before the Board, as the issues to be determined in the Opposition are
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`identical to issues that the District Court will have to decide in the Civil Action.
`
`Specifically, Applicant has alleged in the Civil Action that Opposer’s use of
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`HARMONIC DRIVE constitutes trademark infringement, unfair competition, and false
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`designation of origin. Applicant has relied in part upon the rights embodied in Application
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`Serial No. 77/373,925, the same application being opposed in this proceeding. Applicant
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`specifically alleges, in Paragraph 13 of the complaint in the Civil Action, that “Plaintiff’s
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`HARMONIC DRIVE Mark is inherently distinctive.” In Paragraph 14, Applicant goes on to
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`allege that “Plaintiff’s HARMONIC DRIVE Mark has achieved a secondary meaning in the
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`marketplace.” Exhibit A, 1[ 13-14.
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`As Plaintiff in the Civil Action, Applicant will be required to prove, either through
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`inherent distinctiveness or secondary meaning, that its HARMONIC DRIVE mark is distinctive,
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`and is not descriptive or generic. This is the same issue at stake in the current opposition
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`proceeding, which alleges that the mark is descriptive and/or generic. Further, Registrant will
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`presumably deny these allegations in its Answer in the Civil Action, and file affirmative
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`defenses and/or counterclaims in the Civil Action alleging that the HARMONIC DRIVE mark is
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`descriptive and/or generic. Although the Civil Action also includes the separate issue of whether
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`Opposer’s use of NAC HARMONIC DRIVE is confusingly similar to Applicant’s HARMONIC
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`DRIVE mark — which is not at issue in the present opposition — this does not mean that the
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`Board should not suspend the Opposition. Indeed, the Civil Action need only have a bg1ri_ng on
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`the Board's decisions with respect to the consolidated proceedings to justify a suspension.
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`TBMP § 5 lO(a). If the District Court decides that Applicant’s HARMONIC DRIVE mark is
`
`

`
`inherently distinctive, that would obviously obviate the need for the Board to consider Opposer’s
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`arguments that the mark is descriptive and/or generic.
`
`Although the Board is certainly just as capable of deciding whether Applicant’s
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`HARMONIC DRIVE mark is descriptive or generic as the U.S. District Court deciding the Civil
`
`Action, it should not do so for the three reasons outlined below.
`
`First, and most importantly, if the Board suspends the Opposition and allows the District
`
`Court to rule first, the District Court's decision would be binding on the Board under the
`
`doctrines of res judicata and collateral estoppel. Mother's Restaurant Inc. V. Mama's Pizza, Inc.,
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`723 F.2d 1566, 1569-73 (Fed. Cir. 1983) (collateral estoppel); Midland Cooperatives, Inc. v.
`
`Midland International Corp., 421 F.2d 754, 758-59 (C.C.P.A. 1970) (res judicata).
`
`By contrast, if the Board decides these proceedings before the District Court adjudicates
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`the Civil Action, the Board's findings could be challenged in the Civil Action or in another civil
`
`action in another federal district court. 15 U.S.C. § l071(b). Similarly, whereas federal district
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`courts may rule on issues related to both use and registration of trademarks, the Board may only
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`decide issues relating to the registration of trademarks. 15 U.S.C. § 1119; PHC, Inc. v. Pioneer
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`Healthcare, Inc., 75 F.3d 75, 79 (1st Cir. 1996). A ruling by the District Court in the Civil
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`Action will thus control the outcome of the Opposition, but not vice versa. TBMP § 510.02(a).
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`Therefore, in the interest ofjudicial economy, the Board should suspend the Opposition.
`
`Second, allowing these matters to be resolved by the Civil Action promotes judicial
`
`efficiency and encourages the parties themselves to resolve this dispute in the most efficient
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`matter possible. The fundamental issues in this Opposition are indisputably encompassed within
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`the issues in the Civil Action, as described above. If the Opposition is suspended pending the
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`disposition of the Civil Action, the parties will avoid unnecessarily expending resources fighting
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`the proverbial "battle" on two "fronts" instead ofjust one. Thus, suspending the Opposition will
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`

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`not prejudice either party, as it will allow the parties to resolve their entire dispute while
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`expending the least amount of resources.
`
`Similarly, and as addressed above, the District Court hearing the Civil Action will
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`ultimately determine not only whether Applicant’s HARMONIC DRIVE mark is distinctive, but
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`other issues relating to Opposer’s alleged infringement of the mark, i.e. whether Opposer’s use
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`of NAC HARMONIC DRIVE mark is likely to cause confusion, whether Applicant has suffered
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`any damages, etc. The Civil Action will thus resolve all issues before the Board and then some,
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`whereas the converse is not true.
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`Third, the proceeding should be suspended to avoid inconsistent rulings between the
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`Board and the District Court, especially since the District Court's decision will ultimately be
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`binding on the Board.
`
`III.
`
`CONCLUSION
`
`For the reasons stated herein, the Board should suspend the Opposition pending the
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`outcome of the Civil Action. Should the Board deny its motion to suspend, Applicant
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`respectfully requests the Board to reset all pending deadlines to run from the Board's decision on
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`this motion. 37 C.F.R. § 2.l21(a)(l).
`
`Date: December 20, 2013
`
`Respectfully submitted,
`'67
`( ‘V “"9 ‘T§;,\.,(//" "
`BUCHAfiAN INGERSOLL & ROONE§PC
`
`Bassam N. Ibrahim
`
`S. Lloyd Smith
`Bryce J. Maynard
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2756
`703-836-6620 (phone)
`703-836-2021 (fax)
`
`Attorneys for Applicant
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing MOTION AND MEMORANDUM_TO
`
`SUSPEND PURSUANT TO 37 C.F.R. § 2.177(a) was served this 20”‘ day of December, 2013
`
`Via e-mail and U.S. first class mail on:
`
`Lawrence C. Hersh, Esq.
`Attorney At Law
`17 Sylvan Street
`Suite 102B
`
`Rutherford, NJ 07070
`hersh222@yahoo.com
`
`/ flgz 475% K
`
`5'
`/C”
`C
`Florence Goodman
`
`‘
`
`//4 "’
`
`

`
`EXHIBIT A
`
`

`
`Case 1:99-mc-09999 Document 1573 Filed 12/12/13 Page 1 of 17 PageID #: 126913
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Civil Action No.
`
`
`
` I-IARMONIC DRIVE LLC,
`
`
`
`Plaintiff,
`
`v.
`
`NAC HARMONIC DRIVE, lNC.,
`I-IARMONIC DRIVE CANADA, and
`BELTING CTKM HARMONIC DRIVE CO.,
`LTD.,
`
`
`Defendants.
`
`COMPLAINT
`
`Plaintiff, Harmonic Drive LLC (“Plaintiff”), by and through its undersigned
`
`counsel, for its Complaint against Defendants NAC Harmonic Drive, Inc. (“NAC"),
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`Harmonic Drive Canada (“I-Iarinonic Drive Canada”) and Beijing CTKM Harmonic
`
`Drive Co., Ltd. (“CTKM”), hereby alleges the following:
`
`PARTIES
`
`1.
`
`Plaintiff is a limited liability company organized under the laws of the
`
`State of Delaware, and has its principal place of business at 247 Lynnfield Street,
`
`Peabody, MA 01960.
`
`2.
`
`Defendant NAC is a Delaware corporation with its principal place of
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`business at 4720 Salisbury Road, Suite 1, Jacksonville, FL 32256.
`
`

`
`Case 1:99—mc-09999 Document 1573 Filed 12/12/13 Page 2 of 17 PagelD #: 126914
`
`3.
`
`Defendant Harmonic Drive Canada is a Canadian corporation with its
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`principal place of business at 89 Fawndale Crescent, Toronto, Ontario MIW 2X3
`
`Canada.
`
`4.
`
`Defendant CTKM is a Chinese corporation with its principal place of
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`business at A21, Yuhua Road, B of Beijing Airport industrial Zone, Shunyi Beijing,
`
`China, 100044.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is a claim for damages and injunctive relief for trademark
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`infringement, unfair competition, and false advertising under the Lanham Act, 15 U.S.C.
`
`§ 1051, et seq., unfair competition and trademark infringement under Delaware statutory
`
`and common law.
`
`6.
`
`The Court has subject matterjurisdiction over this action pursuant to the
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`Lanharn Act, 15 U.S.C. § 1121, and 28 U.S.C. §§ 1331 and 1338. This court has pendant
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`jurisdiction over Plaintiffs state law claims pursuant to 28 U.S.C. § l338(b).
`
`7.
`
`Venue is proper in this judicial district under 28 U.S.C. § l39l(b) because
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`Defendant NAC is incorporated in this judicial district, Defendant transacts business
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`within this district, and the acts complained of herein that have caused and are continuing
`
`to cause injury to Plaintiff have occurred and are continuing to occur within this district.
`
`PLAINTIFFS HARMONIC DRIVE MARK
`
`8.
`
`Plaintiff and their affiliates are the world's leading manufacturer of strain
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`wave gearing. Strain wave gearing is a type of mechanical gearing that is more accurate
`
`and compact than traditional types of gearing, such as planetary gearing. Strain wave
`
`

`
`Case 1:99-mc-09999 Document 1573 Filed 12/12/13 Page 3 of 17 PagelD #: 126915
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`gearing is used in a variety of industries and applications, including robotics, motion
`
`control, aeronautics, machine tools, and others.
`
`9.
`
`Plaintiff and its predecessors in interest have been using the mark
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`HARMONIC DRIVE (hereinafter "Plaintiffs HARMONIC DRIVE Mark") in connection
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`with strain wave gearing and related goods and services in commerce in the United States
`
`continuously since at least as early as 1960. Plaintiff sells its products bearing Plaintiff’ s
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`HARMONIC DRIVE Mark throughout the United States.
`
`10.
`
`Plaintiff is the owner of the following US. Trademark Registrations and
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`Applications consisting of or containing Plaintiffs HARMONIC DRIVE Mark:
`
`
`
`Hggpfig lic
`Qgggnocvu
`
`1,728,918
`
`1,727,054
`
`(Intl Class: 7) Electric motors,
`adjustable couplings, drives,
`transmissions in the nature of speed and
`ower increasers and reducers
`
`(Int'l Class: 9) Stepping motors and
`servo actuators in the nature of
`
`lectromechanical stepping devices for
`positioning in response to electrical
`ontrol sinals
`(Int'l Class: 7) Electric motors,
`djustable couplings, drives,
`ransmissions in the nature of speed and
`ower increasers and reducers
`
`I egistered:
`ovember 3, 1992
`
`Registered:
`October 27, 1992
`
`(Int'l Class: 9) Stepping motors and
`servo actuators in the nature of
`- lectromechanical stepping devices for
`ositioning in response to electrical
`ontrol si nals
`Filed:
`77/391,285 (Int'l Class: 7) Stepping motors for
`machines; electric motors for machines; February 7, 2008
`nachine coupiings and transmission
`omponents except for land vehicles,
`namely, adjustable couplings, drives,
`and transmission components in the
`ature of speed and power increasers
`and reducers
`
`‘E
`
`

`
`Case 1:99-mc-09999 Document 1573 Filed 12/12/13 Page 4 of 17 PagelD #: 126916
`
`I-IARMONIC
`
`(Int'l Class: 9) Electronic servo motor
`ontrollers, namely, actuators in the
`nature of electromechanical stepping
`levices for positioning in response to
`lectrical control ulses
`
`7/373,925 (Int'l Class: 7) Electric motors; motor
`shaft retention brakes; adjustable shaft
`ouplings and couplings for machines;
`servo motors for positioning in
`response to electrical control signals;
`drives and transmissions in the nature
`
`f speed and power increasers and
`
`.
`I iled:
`anuary 17, 2008
`
`ontrol signals for electric rotary
`ctuators and motor shaft retention
`brakes
`
`U.S. Reg. Nos. l,727,054 and 1,728,918 are valid, subsisting, and incontestable pursuant
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`to 15 U.S.C. § 1065. Copies of the Certificates of Registration for these marks, and the
`
`documents showing that the registrations have been assigned to Plaintiff, are attached as
`
`Exhibit l.
`
`11.
`
`Plaintiffand its affiliates own numerous domain names containing
`
`Plaiiitiffs I-IARMONIC DRIVE Mark, including www.harmonicd1'ive.con1,
`
`www.harmonicdrivenet, www.harmonicdrivede, and www.harmonicdrivejp.
`
`12.
`
`The products sold under Plaintiff’ S HARMONIC DRIVE Mark are
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`recognized throughout the United States for their superior technical qualities. Consumers
`
`associate Plaintiffs HARMONIC DRIVE Mark with products of high quality and
`
`reliability.
`
`13.
`
`Plaintiffs HARMONIC DRIVE Mark is inherently distinctive.
`
`

`
`Case 1:99-mc—O9999 Document 1573 Filed 12/12/13 Page 5 Of 17 PagelD #2 126917
`
`14.
`
`As a result of the extensive advertising and promotion of Plaintiffs
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`HARMONIC DRIVE Mark, the volume of sales of the services offered in connection
`
`with Plaintiffs I-IARMONIC DRIVE Mark, the unsolicited media coverage of Plaintiffs
`
`HARMONIC DRIVE Mark, and other factors, Plaintiffs HARMONIC DRIVE Mark has
`
`achieved a secondary meaning in the marketplace among consumers identifying Plaintiff
`
`as the sole source of goods and services offered under the I-IARMONIC DRIVE Mark
`
`15.
`
`Plaintiff has developed substantial goodwill in Plaintiffs HARMONI C
`
`DRIVE Mark, which is a business asset of immense value to Plaintiff.
`
`16.
`
`Plaintiff has actively and consistently policed Plaintiffs I-IARMONIC
`
`DRIVE Mark, by demanding that third party users of similar marks cease and desist such
`
`use and by pursuing legai remedies where necessary.
`
`DEFENDANTS’ INFRINGING ACTIVITIES
`
`17.
`
`Defendant CTKM is a Chinese manufacturer of strain wave gearing
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`products and related goods and services.
`
`18.
`
`Upon information and belief, Defendant NAC is the primary U.S. importer
`
`and distributor for the strain wave gearing products manufactured by Defendant CTKM.
`
`19.
`
`Upon information and belief, Defendant Harmonic Drive Canada is a
`
`Canadian importer and distributor for the strain wave gearing products manufactured by
`
`Defendant CTKM. Defendant Harmonic Drive Canada is actively marketing and selling
`
`these products in the United States.
`
`20.
`
`Defendants are operating under the trade names "NAC Harmonic Drive,
`
`1110.," “Harmonic Drive Canada” and "Beijing CTKM Harmonic Drive Co., Ltd." without
`
`Plaintiffs permission.
`
`

`
`Case 1:99-mc—O9999 Document 1573 Filed 12/12/13 Page 6 of 17 PageID #2 126918
`
`21.
`
`Defendants are using the mark I-IARMONIC DRIVE in interstate
`
`commerce in the United States in connection with their strain wave gearing products
`
`without Plaintiffs permission.
`
`22.
`
`Upon information and belief Defendants did not begin using the
`
`HARMONIC DRIVE mark in commerce in the United States or the various trade names
`
`containing "I-Iarnionic Drive" until long after Plaintiffs first use of its HARMONIC
`
`DRIVE Mark, and long after PIaintiff‘s HARMONIC DRIVE Mark became distinctive
`
`and famous in the United States.
`
`23.
`
`Upon information and belief, Defendants adopted and are currently using
`
`the mark HARMONIC DRIVE with full knowledge of Plaintiffs prior rights in
`
`Plaintift"s I-IARMONIC DRIVE Mark, and with the intent to trade off the consumer
`
`recognition and goodwill associated with Plaintift’s HARMONIC DRIVE Mark.
`
`24.
`
`Defendants’ strain wave gearing products are used in the same industries
`
`and applications as Plaintifl”s strain wave gearing products, and are sold to the same
`
`types of consumers.
`
`25.
`
`Defendants’ strain wave gearing products are marketed and sold through
`
`the same channels of trade as Plaintiffs strain wave gearing products.
`
`26.
`
`Defendants’ strain wave gearing products are sold at price levels similar to
`
`those at which Plaintiffs strain wave gearing products are sold.
`
`27.
`
`Upon information and belief, Defendants are colluding in a pattern of
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`misleading and deceptive conduct and representations in order to mislead the purchasing
`
`public as to the source, origin and quality of Defendants’ goods.
`
`

`
`Case 1:99-mc-09999 Document 1573 Filed 12/12/13 Page 7 of 17 PageID #: 126919
`
`28.
`
`Defendant NAC has registered the domain name
`
`www.nacharrnonicdrive.com without the permission of Plaintiff, and is operating a web
`
`site at this domain name promoting the infringing products bearing the HARMONIC
`
`DRIVE mark. A printout of Defendant NAC's web site is attached as Exhibit 2.
`
`29.
`
`Defendant NAC’s website at www.nacharmonicdrive.com has displayed
`
`photographs of Plaintiffs products in a manner that was intended to confuse the
`
`purchasing public into believing that Defendant NAC’s products and Plaintiffs products
`
`are identical, or that the products sold by Defendant NAC are manufactured by, licensed
`
`by, or otherwise associated with Plaintiff.
`
`30.
`
`Defendant NAC is using product model numbers that are confusingly
`
`similar to Plaintiffs model numbers, including using the identical prefix “CSF~” that
`
`Plaintiff uses for its model numbers and which consumers associate with Plaintiff’s
`
`products sold under Plaintiff’ s HARMONIC DRIVE Mark.
`
`31.
`
`Defendant Harmonic Drive Canada has registered the domain names
`
`www.harnionicdriveca and www.harmonicdrivegearingcom without the permission of
`
`Plaintiff, and is operating web sites at these domain names promoting the infringing
`
`products bearing the HARMONIC DRIVE mark. A printout of Defendant Harmonic
`
`Drive Canada’s web site at www.harmonicdriveca and www.harmonicdrive@afiig.coni
`
`(the content is the same on both web sites) is attached as Exhibit 3. Defendant Harmonic
`
`Drive Canada has registered the domain name www.hdinfonetcom which promotes the
`
`infringing products bearing the l-IARMONIC DRIVE mark.
`
`32.
`
`Defendant Harmonic Drive Canada’s web sites at www.liarmonicdriveca,
`
`www.harn1onicdrivegearing.co1n and www.hdinfonet.com.have displayed photographs of
`
`

`
`Case 1:99-mc-09999 Document 1573 Filed 12/12/13 Page 8 of 17 Page|D #: 126920
`
`Plaintiffs products and photographs of actual Plaintiff’ s applications in a manner that
`
`was intended to confuse the purchasing public into believing that Defendant Harmonic
`
`Drive Canada’s products and Plaintiff’ s products are identical, or that the products sold
`
`by Defendant Harmonic Drive Canada are manufactured by, licensed by, or otherwise
`
`associated with Plaintiff.
`
`33.
`
`Defendant Harmonic Drive Canada is using product model numbers that
`
`are confusingly similar to Plaintiffs model numbers, including using the identical prefix
`
`“I-IDC~” that Plaintiff uses for its model numbers and which consumers associate with
`
`Plaintiffs products sold under Plaintiffs HARMONIC DRIVE Mark.
`
`34.
`
`Defendants‘ conduct has created actual confusion among purchasing
`
`consumers, and Plaintiff has received misdirected complaints about Defendants’
`
`products.
`
`35.
`
`Defendants have misrepresented the country of origin of their products.
`
`36.
`
`Defendants have sought to mislead consumers as to the source of their
`
`products by failing to mark their products with the country of origin of the products.
`
`37.
`
`Defendants have misrepresented to consumers an affiliation with Plaintiff.
`
`38.
`
`Defendants‘ unauthorized use of Plaintiffs HARMONIC DRIVE Mark,
`
`Plaintiffs part numbers, depictions of Plaintiffs products, and other activities are
`
`misleading consumers concerning the origin or sponsorship of Defendants’ products, with
`
`intent to create a false impression among consumers that Defendants’ products are
`
`associated with or sponsored by Plaintiff.
`
`39.
`
`Defendants’ activities have caused actual confusion in the marketplace.
`
`Plaintiff has received several purchase orders, inquiries, and other communications from
`
`

`
`Case 1:99-me-09999 Document 1573 Filed 12/12/13 Page 9 of 17 PagelD #: 126921
`
`consumers that were intended for Defendant NAC. An example of a purchase order
`
`showing consumer confusion is attached as Exhibit 4. This order was sent to Plaintiff but
`
`lists several products manufactured by Defendant NAC.
`
`40.
`
`Upon information and belief, Defendants have actively encouraged and
`
`abetted this consumer confusion. For example, one consumer performed a Google
`
`search to locate an item manufactured by Plaintiff, and came up with Defendant
`
`Harmonic Drive Canada. Defendant Harmonic Drive Canada subsequently referred this
`
`consumer to Defendant NAC, stating that Defendant NAC was the current supplier for
`
`the product.
`
`COUNT I - TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT
`
`41.
`
`Plaintiff repeats and re-alleges paragraphs 1 through 40 above, as if set
`
`forth fully herein.
`
`42.
`
`Without Plaintiffs permission, Defendants adopted and are currently using
`
`in connection with their strain wave gearing the mark I-IARMONIC DRIVE, which is
`
`identical and/or confusingly similar to Plaintiffs HARMONIC DRIVE Mark.
`
`Defendants are also using trade names containing Plaintiff‘ s HARMONIC DRIVE Mark.
`
`43.
`
`Defendants are advertising and promoting to the general public their line
`
`of strain wave gearing using the I-IARMONIC DRIVE mark.
`
`44.
`
`Defendants’ strain wave gearing products directly compete with and are
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`sold to the same consumers as Plaintiffs strain wave gearing products.
`
`45.
`
`Upon information and belief, Defendants have sold, advertised and
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`transported their strain wave gearing in connection with the HARMONIC DRIVE mark
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`in interstate commerce in the United States.
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`

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`Case 1:99-mc—O9999 Document 1573 Filed 12/12/13 Page 10 of 17 PagelD #: 126922
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`46.
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`As a direct consequence of Defendants’ actions, consumers have been, and
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`are likely to continue to be, deceived, confused, and/or mistaken as to the source, origin,
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`sponsorship and/or endorsement of Defendants’ products and their relationship to
`
`Plaintiff.
`
`47.
`
`Upon information and belief, Defendants adopted and are currently using
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`the mark HARMONIC DRIVE, and the trade names “NAC I-Iarmonic Drive,” “Harmonic
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`Drive Canada” and “Beijing CTKM I-Iarmonic Drive Co., Ltd.” with full knowledge of
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`Plaintiffs rights and with the intent to deceive, mislead and confuse consumers into
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`believing that Plaintiff are the source of Defendants’ products, or that Defendants’
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`products are sponsored by, licensed by, or otherwise affiliated with Plaintiff, so as to
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`trade on the substantial fame, reputation and goodwill associated with Plaintiffs
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`HARMONIC DRIVE Mark.
`
`48.
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`Defendants’ unlawful acts constitute trademark infringement in violation
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`ofthe Lanham Act, 15 U.S.C. § H14.
`
`49.
`
`As a direct and proximate result of Defendants’ unlawful acts and
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`H practices in violation of the Lanham Act, Plaintiff has suffered, and will continue to
`
`suffer damage to its business, reputation and goodwill, for which Plaintiff is entitled to
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`injunctive relief and damages.
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`COUNT II — UNFAIR COMPETITION UNDER THE LANHAM ACT
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`50.
`
`Plaintiff repeats and re—alleges paragraphs 1 through 49 above, as if fully
`
`set forth herein.
`
`51.
`
`Plaintiffs continuous and substantially exclusive use of Plaintiffs
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`HARMONIC DRIVE Mark for decades has established a strong association between
`
`10
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`

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`Case 1:99-mc-09999 Document 1573 Filed 12/12/13 Page 11 of 17 PagelD #: 126923
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`Plaintiffs HARMONIC DRIVE Mark and Plaintiff in the minds of consumers and the
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`general public.
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`52.
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`Without Plaintiffs permission, Defendants have adopted and are
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`continuing to use the mark HARMONIC DRIVE in connection with their products, and
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`are advertising and promoting to the general public their products bearing this mark,
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`which is identical and/or confusingly similar to Plaintiffs HARMONIC DRIVE Mark.
`
`Defendants are also using the trade names “NAC I-larmonic Drive,” “Harmonic Drive
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`Canada” and “Beijing CTKM Harmonic Drive Co., Ltd.,’’ all of which fully incorporate
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`and are confusingly similar to Plaintiff’ s HARMONIC DRIVE Mark.
`
`53.
`
`Upon information and belief, Defendants have sold, advertised and
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`transported their strain wave gearing bearing the HARMONIC DRIVE mark in interstate
`
`commerce.
`
`54.
`
`As a direct consequence of Defendants’ actions, Plaintiffs customers and
`
`potential customers have been and are likely to continue to be mistaken, deceived or
`
`confused into believing that Defendants’ products were made by, licensed by, sponsored
`
`by, endorsed by, approved by, authorized by, or otherwise affiliated with Plaintiff.
`
`55.
`
`Upon information and belief, Defendants adopted and are currently using
`
`the HARMONIC DRIVE mark with full knowledge of Plaintiffs rights and with the
`
`intent to deceive, mislead and confuse customers and the public into believing that
`
`Plaintiff is the source of Defendants’ strain wave gearing, or that Defendants’ strain wave
`
`gearing is sponsored by, endorsed by, licensed by, or affiliated with Plaintiff so as to
`
`enable Defendants to take advantage of Plaintiffs HARMONIC DRIVE Mark and the
`
`11
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`

`
`Case 1:99-mc-09999 Document 1573 Filed 12/12/13 Page 12 of 17 PagelD #: 126924
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`substantial fame, reputation and goodwill enjoyed by Plaintiff in CO1111CCtlO1‘IWltl1
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`Plaintiffs HARMONIC DRIVE Mark.
`
`56.
`
`Defendants’ use of Plaintiffs HARMONIC DRIVE Mark and of the trade
`
`names “NAC Harmonic Drive,” “Harmonic Drive Canada” and “Beijing CTKM
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`Harmonic Drive Co., Ltd.” constitutes false representation as to source in violation of the
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`Lanham Act, 15 USC. § ll25(a).
`
`57.
`
`As a direct and proximate result of Defendants’ unlawful acts and
`
`practices, Plaintiff has suffered, and will continue to suffer damage to its business,
`
`reputation and goodwill, for which Plaintiff is entitled to injunctive relief and damages.
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`COUNT III — FALSE ADVERTISING UNDER THE LANHAM ACT
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`5 8.
`
`Plaintiff repeats and re~alleges paragraphs 1 through 57 above, as if fully
`
`set forth herein.
`
`59.
`
`Defendants have, in connection with goods or services, used a false or
`
`misleading description of fact, or a false or misleading representation of fact, which in
`
`commercial advertising or promotion, misrepresents the nature, characteristics and/or
`
`qualities of Defendants’ goods or services.
`
`60.
`
`Defendants’ statements have actually deceived or have the tendency to
`
`deceive a substantial segment of their audience.
`
`61.
`
`Defendants’ false and misleading statements and representations are
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`material and are likely to influence consumer purchasing decisions.
`
`62.
`
`Defendants’ false and misleading statements and representations were and
`
`are made in interstate commerce.
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`

`
`Case 1:99—mc-09999 Document 1573 Filed 12/12/13 Page 13 of 17 PageID #: 126925
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`63.
`
`Defendants’ false and misleading statements and representations are in
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`violation of the Lanhain Act, 15 U.S.C. § 1 125(a).
`
`64.
`
`As a result of Defendants’ improper activities, Plaintiff has suffered and
`
`continues to suffer substantial injury, including irreparable injury and damages, including
`
`but not limited to lost profits which would have made but for the false and deceptive
`
`advertising by Defendants, unless Defendants are preliminarily and/or permanently
`
`enjoined by this Court. Defendants’ improper activities, as described above, have been
`
`willful and deliberate, thereby making this an exceptional case under the Lanham Act.
`
`COUNT IV — CYBERSQUATTING UNDER THE LANHAM ACT
`
`65,
`
`Plaintiff repeats and re~alleges paragraphs 1 through 64 above, as if fully
`
`set forth herein.
`
`66.
`
`Defendant NAC has registered, trafficl<cd in, and used the domain name
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`W\-‘VW.l1E1Cl1al‘l11011lCCl1‘lVC.COm which incorporates Plaintiffs HARMONIC DRIVE Mark.
`
`67.
`
`Defendant NAC’s domain name wwwnacliarmonicdrivecom is identical
`
`or confusingly similar to Plaintiffs HARMONIC DRIVE Mark.
`
`68.
`
`Defendant NAC has registered and used the domain name
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`www.nacl1armonicdrive.com with a bad faith intent to profit from the reputation and
`
`goodwill associated with Plaintiffs HARMONIC DRIVE Mark.
`
`69.
`
`Defendant NAC’s registration and use of the domain name
`
`www.nacharmonicdrivecom is not fair use or otherwise lawful use.
`
`70.
`
`Defendant Harmonic Drive Canada has registered, trafficked in, and used
`
`the domain names www.liarmonicdi'ive.ca and www.harmonicdrivegearing.com, both of
`
`which fully incorporate Plaintiffs I-IARMONIC DRIVE Mark.
`
`

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`Case 1:99—mc-09999 Document 1573 Filed 12/12/13 Page 14 of 17 PagelD #: 126926
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`71.
`
`Defendant Harmonic Drive Canada’s domain name is identical or
`
`confusingly similar to Plaintiffs I-IARMONIC DRIVE Mark.
`
`72.
`
`Defendant Harmonic Drive Canada has registered and used the domain
`
`name www.harmonicdrive.ca and wwwharmoniedrivcgearing.com with a bad faith intent
`
`to profit from the reputation and goodwill associated with Plaintiffs HARMONIC
`
`DRIVE Mark.
`
`73.
`
`Defendant Harmonic Drive Canada’s registration and use of the domain
`
`names www.harmonicdrive.ca and wwwharinonicdrivegearing.com is not fair use or
`
`otherwise lawful use.
`
`74.
`
`Defendants’ registration and use of domain names confusingly similar to
`
`Plaiiitiffs HARMONIC DRIVE Mark has been in bad faith.
`
`75.
`
`Defendants’ registration and use of domain names confusingly similar to
`
`Plaintiff’ s HARMONIC DRIVE Mark is in violation of the Lanham Act, 15 U.S.C. §
`
`l125(d).
`
`76.
`
`As a result of Defendants’ improper activities, Plaintiff has suffered and
`
`continues to suffer substantial injury, including irreparable injury and damages, including
`
`but not limited to lost profits which would have made but for the cybersquatting by
`
`Defendants, unless Defendants are preliminarily and/or permanently enjoined by this
`
`Court. Defendants’ improper activities, as described above, have also been willful and
`
`deliberate, thereby making this an exceptional case under the Lanham