throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA374074
`ESTTA Tracking number:
`10/19/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91196597
`Plaintiff
`Jackel International Limited
`Jessica Parise
`Fulbright & Jaworski L.L.P.
`666 Fifth Avenue
`New York, NY 10103
`UNITED STATES
`mmutterperl@fulbright.com, jparise@fulbright.com, mrosenfeld@fulbright.com,
`hrosenberg@fulbright.com, nyipdocket@fulbright.com
`Motion to Suspend for Civil Action
`Jessica S. Parise
`Jparise@fulbright.com, mrosenfeld@fulbright.com, nyipdocket@fulbright.com,
`jfoster@fulbright.com,
`/Jessica S. Parise/
`10/19/2010
`Jackal Motion to Suspend.pdf ( 31 pages )(404503 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 the matter of Application Serial Nos.: 85/003,453, 85/003,408, 85/003,358
`By: Admar International Inc.
`Filed: March 31, 2010
`
`Published in the Official Gazette on August 24, 2010
`Marks: SIP IT UP, DURA SPOUT, SPORTSTER
`
`Jackel International Limited,
`
`Opposer,
`
`v.
`
`Admar International Inc.,
`
`Applicant.
`
`Opposition Nos. 91196598, 91196597,
`91 195599
`
`MOTION TO SUSPEND
`
`Opposer Jackel International Limited (“Jackel” or “Opposer”) hereby requests pursuant to
`
`Trademark Rule 2.1 17(a), 37 C.F.R. § 2.117(a), the suspension of the above-identified opposition
`
`proceedings (“the Oppositions”) until such time as there is a final ruling in civil case number 10-
`
`CV-00706, Mayborn USA, Inc, and Jackel International, Limited v. Luv N’ Care, Ltd., and
`
`Admar International, Inc., which is currently pending in the United States District Court for the
`
`District of Connecticut (“the Lawsuit”). A copy of the Second Amended Complaint in the
`
`Lawsuit is enclosed as Exhibit A.
`
`The Lawsuit involves all of the parties, marks, and issues currently before the Board in the
`
`Oppositions. For example, the Lawsuit includes issues of whether the referenced marks are
`
`registered and whether Defendants unfairly and in bad faith applied to register the marks, which
`
`are identical or nearly identical to Opposer’s own marks, to interfere with Jackel’s expansion in
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`the United States.
`
`90] 89830.1
`
`

`
`While the issue of suspension falls within the discretion of the Board, the Trademark Trial
`
`and Appeal Board (“TTAB”) Manual of Procedure (“TBMP”) notes that “ordinarily, the Board
`
`will suspend proceedings in the case before it if the final determination of the other proceeding
`
`will have a bearing on the issues before the Board.” TBMP § 510.02(a). Similarly, Trademark
`
`Rule 2.117(a) states that:
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal Board
`that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action or the other Board
`proceeding.
`
`37 C.F.R. 2.1 17(a).
`
`Thus,
`
`it is standard practice for the Board to suspend opposition proceedings when a
`
`lawsuit “will have a bearing on the issues before the Board.” TBMP § 510.02(a). See Whopper-
`
`Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807 (TTAB. 1971) (granting motion to stay
`
`proceeding pending the outcome of civil litigation).
`
`Here, the court’s findings in the Lawsuit will have a bearing on the issues before the
`
`Board. A failure to stay the Oppositions would force the parties to duplicate their efforts and
`
`litigate the same issues twice. This would present the possibility of potentially inconsistent
`
`opinions, and would waste the resources of the Board, the court and the parties.
`
`For the foregoing reasons, Jackel requests that the Board suspend all proceedings in the
`
`Oppositions pending final resolution of the Lawsuit.
`
`901 89830. 1
`
`2
`
`

`
`Date: October 19, 2010
`
`Respectfiflly submitted,
`
`/Jessica S. Parise/
`
`Mark N. Mutterperl
`Jessica S. Parise
`FULBRIGHT & JAWORSKI L.L.P.
`
`666 Fifth Avenue, 31st Floor
`New York, New York 10103-3198
`Telephone: (212) 318-3000
`Facsimile: (212) 318-3400
`
`Attorneys for Opposer
`Jackel International Limited
`
`901 89830.]
`
`

`
`Exhibit A
`
`

`
`UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
`
`MAYBORN USA, INC., AND
`JACKEL INTERNATIONAL, LIMITED,
`
`Plaintiffs,
`
`"-
`
`LUV N’ CARE, LTD., AND
`ADMAR INTERNATIONAL, INC.,
`
`Defendants.
`
`\/\/\p/\_/\./Q/\/\./Q/\./%
`
`Civil Action No. 10-CV-00706
`
`SECOND AMENDED COMPLAINT
`
`Plaintiffs Maybom USA, Inc. (“Maybom”) and Jackel International Limited (“Jackel”)
`
`(together, “Plaintiffs”) for their amended complaint against defendants, Luv N’ Care, Ltd. (“Luv
`
`N’ Care”) and Admar International, Inc. (“Admar”) (collectively “Defendants”), allege as
`
`follows:
`
`PARTIES
`
`1.
`
`Plaintiff Maybom USA, Inc. is a corporation duly organized and existing under
`
`the laws of the State of New York and having its principal place of business at 175 Post Road
`
`West, Westport, Connecticut 06880.
`
`2.
`
`Plaintiff Jackel International Limited is a corporation organized and existing
`
`under the laws of the United Kingdom and having its principal place of business at Dudley Lane,
`
`Cramlington, Noithumberland NE23 7RH.
`
`3.
`
`On information and belief, defendant, Luv N’ Care, Ltd. is a corporation duly
`
`organized and existing under the laws of the State of Louisiana and having its principal place of
`
`

`
`business at 3030 Aurora Avenue, Monroe, Louisiana 71201. Its registered agent is N. Edward
`
`Hakim having an address of 200 Sabine Street, Monroe, Louisiana 71201.
`
`4.
`
`On information and belief, defendant Admar International, Inc. is a corporation
`
`duly organized and existing under the laws of the State of Delaware and having its principal
`
`place of business at 309 Rehoboth Avenue, Rehoboth Beach, Delaware.
`
`Its registered agent is
`
`Daniel P. Myers, II, having an address of 309 Rehoboth Avenue, Rehoboth Beach, Delaware.
`
`JURISDICTION AND VENUE
`
`5.
`
`This is an action for cybersquatting; trademark, trade dress, and design patent
`
`infringement; and unfair competition. The action seeks monetary and injunctive relief including
`
`a declaration that Defendants have or will violate Plaintiffs’ rights as described herein and an
`
`order requiring, among other things, Defendants to expressly abandon certain federal trademark
`
`applications.
`
`6.
`
`This Court has jurisdiction pursuant to 15 U.S.C. §112l (Lanham Act), 28
`
`U.S.C. §1331 (federal question), 28 U.S.C. §1338 (trademarks) and 28 U.S.C. §1367 (pendent
`
`state claims).
`
`7.
`
`This Court has personal jurisdiction over Defendants because Defendants
`
`committed tortious acts in the State of Connecticut, which constitute the subject matter of this
`
`action, and have transacted business within the State of Connecticut.
`
`8.
`
`This Court also has personal jurisdiction over Defendants pursuant to Section
`
`33-929 of the Connecticut General Statutes, because these tortious acts and business transactions
`
`constitute the subject matter of these actions.
`
`

`
`9.
`
`Venue is proper in the District of Connecticut under 28 U.S.C. §l39l because,
`
`inter alia, Defendants’ tortious activities have caused damage to Plaintiffs, Maybom resides in
`
`this judicial district, and Defendants are doing business in this judicial district.
`
`10.
`
`Defendant Admar is the owner of two United States trademarks applications,
`
`Serial Nos. 85/003,408 and 85/003,453, which violate Plaintiffs’ trademarks and thus is a
`
`necessary party.
`
`FACTUAL BACKGROUND
`
`Plaintiffs And Their Products
`
`11.
`
`Plaintiffs market and sell high-quality, innovative baby accessories, including
`
`bottles, sippy cups, pacifiers and feeding products, throughout the world.
`
`Jackel is recognized as a leader in the baby accessories industry.
`
`Jackel is the owner of various intellectual property used in connection with its
`
`12.
`
`13.
`
`products.
`
`14.
`
`Maybom is the exclusive distributor in the United States for these products and
`
`the exclusive United States licensee for the Jackel
`
`intellectual property described below
`
`(“P1aintiffs’ IP”).
`
`15.
`
`Plaintiffs have expended substantial resources developing and promoting the
`
`Plaintiffs’ IP and the Plaintiffs’ IP is of inestimable value.
`
`16.
`
`As a result of Plaintiffs’ efforts, consumers have come to recognize the
`
`Plaintiffs’ IP as designating Plaintiffs’ high-quality, innovative products.
`
`

`
`The Plaintiffs’ IP
`
`TOMMEE TIPPEE Trademarks And Products
`
`17.
`
`For nearly 50 years, Jackel and its predecessors-in-interest have been using
`
`TOM1\/IEE TIPPEE and variations of that trademark to identify and distinguish their baby
`
`feeding products, namely, baby bottles, cups and pacifiers, from the goods and services of others.
`
`18.
`
`Since 1965, Jackel and its TOMMEE TIPPEE products have earned a reputation
`
`for clever ideas, product quality and simply intuitive designs that promote natural development at
`
`every age, stage and feeding need. Jackel’s smart ideas have earned the company top ranks in
`
`the prestigious Mother and Baby awards — a head-to-head assessment of competitive products
`
`voted on by mothers.
`
`In fact, the TOMMEE TIPPEE CLOSER TO NATURE line of baby
`
`bottles has been chosen as Great Britain’s best baby bottle, winning the Gold Award in 2006/7,
`
`2008/9 and again in 2009/10.
`
`19.
`
`Today, TOMMEE TIPPEE innovations provide comfort for babies and peace of
`
`mind for parents in 48 countries.
`
`20.
`
`Plaintiffs’ products are known by the purchasing public throughout the world as
`
`being of the highest quality and a trusted brand.
`
`21.
`
`Jackel is the owner of numerous trademark registrations for the mark TOMMEE
`
`TIPPEE and marks containing the terms TOMMEE TIPPEE.
`
`22.
`
`For example, Jackel owns incontestable U.S. Trademark Registration No.
`
`2,209,354 for TOMMEE TIPPEE, which the United States Patent and Trademark Office
`
`(“PTO”) issued on December 8, 1998. This registration covers bottles and cups in International
`
`Class 21. A copy of the registration certificate for the mark is attached as Exhibit 1.
`
`

`
`23.
`
`Jackel also owns incontestable U.S. Trademark Registration No. 2,209,344 for
`
`TOMMEE TIPPEE, which the PTO issued on December 8, 1998, for spoons and nail clippers in
`
`International Class 8 and pacifiers for babies and baby bottles in International Class 10. A copy
`
`of the registration certificate for this mark is attached as Exhibit 2.
`
`24.
`
`Additionally, Jackel owns U.S. Trademark Application Serial Nos. 77/660,125
`
`and 77/713,609 for TOMMEE TIPPEE and TOMMEE TIPPEE and design, respectively, for,
`
`inter alia, children’s feeding instruments, feeding bottles and cups. Copies of printouts from
`
`PTO database showing the status of these applications are attached as Exhibits 3 and 4,
`
`respectively.
`
`25.
`
`Jackel also owns several other registrations including, for example, United
`
`Kingdom Trademark Registration Nos. 1,244,551 and 2,027,608 for marks containing the terms
`
`TOMMEE TIPPEE in association with various feeding products.
`
`It
`
`is also the owner of
`
`Community Trademark Registration Nos. 7,314,784, 3,388,683 and 2,384,667, to identify baby
`
`feeding products.
`
`26.
`
`Plaintiffs’ use of the TOMMEE TIPPEE marks as described above (the
`
`“TOMMEE TIPPEE Marks”) has been and continues to be widespread, extensive, and nationally
`
`and internationally recognized by the public.
`
`27.
`
`The distinctive TOMMEE TIPPEE Marks are well known in the field of baby
`
`feeding products. For example,
`
`the baby feeding products advertised and sold under the
`
`TOMMEE TIPPEE Marks are the number one feeding products brand in the United Kingdom.
`
`28.
`
`In 2009, the baby feeding products sold and advertised under the TOMMEE
`
`TIPPEE Marks were recognized as a United Kingdom “Superbrand.”
`
`To qualify as a
`
`“Superbrand,” over 2,000 British consumers voted the products sold under the TOMMEE
`
`

`
`TIPPEE Marks as one of the United Kingdom’s top 500 brands. The TOMMEE TIPPEE brand
`
`is ranked just above PLAY—DOH®. Therefore, this award is a recognition of the fame the baby
`
`feeding products under TOMMEE TIPPEE Marks have garnered from the public as a result of
`
`their quality, reliability and distinctiveness.
`
`29.
`
`The readers of PRIMA MAGAZINE awarded the number one product in the
`
`Best Bottle category and Best Feeding Range category to two baby feeding products used in
`
`association with the TOMMEE TIPPEE Marks.
`
`30.
`
`Jackel and its predecessors—in—interest have spent significant amounts of time,
`
`effort, money and resources in advertising and promoting goods and services offered and sold
`
`under the TOMMEE TIPPEE Marks.
`
`31.
`
`All of Jackel’s products sold worldwide are sold under the TOMMEE TIPPEE
`
`Marks, apart fiom those of its products which are supplied under retailers’ own label.
`
`32.
`
`All of the products Mayborn distributes in the United States are under the
`
`TOMMEE TIPPEE Marks, including:
`
`“CLOSER TO NATURE” Products
`
`33.
`
`In April 2006, Jackel launched in the United Kingdom a line of unique bottle and
`
`nipple products directed toward infant feeding and designed to help infants successfiilly switch
`
`back and forth between breast and bottle feeding. Since 2007, Jackel expanded this line of
`
`products to include unique cups, pacifiers, breast pumps and accessories.
`
`34.
`
`Jackel markets and sells these products under the trademark CLOSER TO
`
`NATURE.
`
`

`
`35.
`
`In January 2010, Maybom began selling the CLOSER TO NATURE line of
`
`baby feeding products in retail stores throughout the United States, including within this judicial
`
`district.
`
`36.
`
`Both Jackel and Maybom sell
`
`the CLOSER TO NATURE products in
`
`distinctive packaging depicted in Exhibit 5, which consists of a rectangular box in both dark and
`
`light shades of gray; and on the front display panel, a TOMMEE TIPPEE trademark near the
`
`upper left hand comer, a picture of the product below and to the right of TOMMEE TIPPEE,
`
`and, on most CLOSER TO NATURE products, a circle containing the words “BPA free” (the
`
`“CLOSER TO NATURE Trade Dress”).
`
`37.
`
`The CLOSER TO NATURE range of products is for the newborn market, and
`
`the CLOSER TO NATURE Trade Dress is very distinctive as against packaging of competitor
`
`products generally, since no other competitors of Jackel or Maybom have packaging that is gray.
`
`Instead, with the exception of Defendants’ recently redesigned competitive products, most
`
`competitor packaging aimed at newborns is white and/or pastel colored. Feeding products for
`
`infants and toddlers beyond newborn are not gray either but are usually brightly colored, which
`
`adds to the distinctiveness of the CLOSER TO NATURE Trade Dress.
`
`38.
`
`Plaintiffs’ CLOSER TO NATURE Trade Dress is unique in the marketplace for
`
`these products. See Exhibit 6 depicting an example planogram of a retail store shelf space.
`
`“CLOSER TO NATURE” Pacifier
`
`39.
`
`Jackel is the owner of U.S. Design Patent No. US D599,026 S for a unique
`
`pacifier sold in the United Kingdom under the CLOSER TO NATURE and PURE brand names,
`
`and sold in the United States under the CLOSER TO NATURE and CLEAR SHIELD brand
`
`

`
`names (in each case the “CTN Pure Pacifier”). A copy of the patent is attached hereto as Exhibit
`
`7 and images of the CTN Pure Pacifier are attached hereto as Exhibit 8.
`
`40.
`
`In June 2008, Jackel began selling the CTN Pure Pacifier in the United
`
`Kingdom. The CTN Pure Pacifier has been very successful in just under two years.
`
`41.
`
`In January, 2010, Maybom began selling the CTN Pure Pacifier in retail stores
`
`throughout the United States, including within this judicial district. Maybom has been very
`
`successfiil with the CTN Pure Pacifier in the United States.
`
`42.
`
`The CTN Pure Pacifier is Plaintiffs’ best selling product in the category.
`
`“EXPLORA” Products
`
`43.
`
`In June 2009, Jackel launched its EXPLORA line of products in the United
`
`Kingdom, which focus on progressively staged drinking and feeding products to aid in the
`
`transition from first sips to independent feeding. A depiction of several EXPLORA products is
`
`attached hereto as Exhibit 9 (the “EXPLORA Products”).
`
`44.
`
`The EXPLORA sippy cups utilize a superior Advance-FloTM technology, which
`
`guarantees easier, super sensitive drinking without spills or leaks. The EXPLORA sippy cups
`
`are progressively staged to help children transition through all their drinking phases and needs
`
`with specific grips to fit little fingers and unique spouts to meet the needs of every age and
`
`support natural oral development. The superior Advance-FloTM technology used in these
`
`EXPLORA sippy cups was not commissioned by the Plaintiffs, but was developed by an
`
`independent third party who subsequently licensed that technology to the Plaintiffs.
`
`45.
`
`The EXPLORA Products are intuitively designed for less mess and stress.
`
`

`
`46.
`
`Some of the EXPLORA Products include a unique straw feature, which allows
`
`for the easy flow of liquid, while at the same time prevents against leaks and spills. The
`
`EXPLORA Products’ straws consist of a straw with a valve.
`
`47.
`
`In January 2010, Maybom began selling an EXPLORA line of baby feeding
`
`products in retail stores throughout the United States, including within this judicial district.
`
`“TIP IT UP” Products
`
`48.
`
`In March 2010, Jackel launched in the United Kingdom a unique line of sippy
`
`cups designed with a superior Lip TouchTM Technology in the soft silicone spout, which allows
`
`for the easy flow of liquid when gentle pressure is applied by a child to the spout while at the
`
`same time prevents leaks and spills from the spout when not in use by a child. The technology
`
`used in these sippy cups was not commissioned by the Plaintiffs, but was developed by an
`
`independent third party who subsequently licensed that technology to the Plaintiffs.
`
`49.
`
`50.
`
`A depiction of the TIP IT UP products is attached hereto as Exhibit 10.
`
`Jackel is the owner of various trademark registrations and applications for TIP
`
`IT UP throughout the world, including U.S. Application Serial No. 77/857,399, to identify,
`
`among other things, bottles, cups and feeding utensils in Classes 10 and 21, and Community
`
`Trademark registration No. 8418717 (the “TIP IT UP Mark”). In the United Kingdon Jackel has
`
`had continuous use of the TIP IT UP Mark in different cup ranges since 2000. See Exhibit 11.
`
`51.
`
`Maybom is the exclusive United States distributor of these products, and all
`
`others described herein, and such products are or are intended to be sold in retail stores
`
`throughout the United States.
`
`

`
`DURA SPOUT
`
`52.
`
`Since December 2009, Maybom has used the DURA SPOUT trademark (the
`
`“DURA SPOUT Mark”) in the United States on and in connection with the EXPLORA Products.
`
`SPORTSTER
`
`53.
`
`Since at least as early as 2006, Jackel has used the SPORTSTER trademark (the
`
`“SPORTSTER Mark”) in the United Kingdom on and in connection with cups.
`
`54.
`
`In addition, Jackel also uses its SPORTSTER mark on its United Kingdom
`
`website, which is accessible in the United States.
`
`55.
`
`On September 23, 2010, Jackel filed with the PTO an application to register
`
`SPORTSTER.
`
`SUPER SIPPER
`
`56.
`
`Since at least as early as 2002, Jackel has used the SUPER SIPPER trademark
`
`(the “SUPER SIPPER Mark”) in the United Kingdom on and in connection with cups.
`
`57.
`
`In addition, Jackel also uses its SUPER SIPPER mark on its United Kingdom
`
`website, which is accessible in the United States.
`
`58.
`
`On September 23, 2010, Jackel filed with the PTO an application to register
`
`SUPPER SIPPER.
`
`The Tommee Tippee Website
`
`59.
`
`On December 10, 2009,
`
`in time for the launch of the TOMMEE TIPPEE
`
`products in the United States in January 2010, Maybom launched its United State’s website at
`
`http://www.tommeetippee.us with the TOMMEE TIPPEE DESIGN as defined below. The
`
`website has a distinctive theme, layout and color scheme, which was designed to complement the
`
`unique CLOSER TO NATURE Trade Dress (the “TOMMEE TIPPEE DESIGN”). Attached
`
`

`
`hereto as Exhibit 12 is a printout of the United States website depicting the TOMMEE TIPPEE
`
`DESIGN.
`
`Defendants And Their Products
`
`60.
`
`Luv N’ Care is also a distributor of baby feeding products and is a competitor of
`
`Plaintiffs.
`
`Its products are sold under the trade name “NUBY” and “NUBY NATURAL
`
`TOUCH” (“NUBY Trademarks”) in the United States, Europe and elsewhere.
`
`61.
`
`On information and belief, the NUBY trademarks are owned by Admar. Admar
`
`is listed as the owner of several
`
`trademark applications in the United Kingdom and the
`
`Community Trademark Office for the marks NUBY and NUBY NATURAL TOUCH in
`
`association with various baby feeding products. Luv N’ Care, however, is listed as the owner of
`
`one trademark application in the United Kingdom for the mark NUBY in association with baby
`
`feeding products.
`
`62.
`
`In 2003, Luv N’ Care was able to enter the baby feeding products industry in
`
`the United Kingdom, Ireland and Gibraltar through a relationship with Jackel. As a result of
`
`Jackel’s fame and notoriety in these territories, Jackel was able to introduce Luv N’ Care’s
`
`products in many retailers throughout the United Kingdom, Ireland and Gibraltar. Jackel was the
`
`exclusive distributor of NUBY products in the United Kingdom, Ireland and Gibraltar. All of
`
`the packaging for the products sold in these territories were branded TOMMEE TIPPEE and also
`
`displayed the NUBY or NUBY NATURAL TOUCH marks.
`
`63.
`
`In 2008, after the expiration of the 2003 contract between Luv N’ Care and
`
`Jackel,
`
`the parties entered into a new contract
`
`for Jackel
`
`to distribute the TOMMEE
`
`TIPPEE/NUBY co-branded products in the territories (the “2008 Agreement”).
`
`11
`
`

`
`64.
`
`In August 2009, Luv N’ Care served a six month notice to terminate the 2008
`
`Agreement. The notice of termination was without cause. The contractual relationship therefore
`
`ceased in February 2010.
`
`Defendants’ Unlawful Conduct
`
`65.
`
`Since at least the termination of the Agreement, without Jackel’s consent,
`
`Defendants have attempted to trade off the goodwill of the Plaintiffs’ IP and to generally
`
`compete unfairly.
`
`66.
`
`Despite actual knowledge of the use by Plaintiffs of their DURA SPOUT Mark,
`
`on March 31, 2010, Admar filed with the PTO an intent
`
`to use based federal
`
`trademark
`
`application (Serial No 85/003,408) for DURA SPOUT for cups adapted for feeding babies and
`
`children in Class 10.
`
`67.
`
`Despite this knowledge of Plaintiffs’ use of DURA SPOUT, Mr. Hakim signed
`
`a declaration dated March 31, 2010, under penalty of perjury filed with Admar’s trademark
`
`application stating that he “believes the applicant to be the owner of the trademark/service mark
`
`sought to be registered, or... that applicant. . .[is] entitled to use such mark in commerce; to the
`
`best of his/her knowledge and belief no other person, firm, corporation, or association has the
`
`right to use the mark in commerce, either in the identical form thereof or in such near
`
`resemblance thereto as to be likely, when used on or in connection with the goods/services of
`
`such other person, to cause confusion, or to cause mistake, or to deceive.” See Exhibit 13.
`
`68.
`
`Admar’s DURA SPOUT mark is identical to Plaintiffs’ DURA SPOUT Mark
`
`and both are used or intended to be used with the same or similar types of products.
`
`If
`
`Defendants mark were registered, or if Defendants were to use DURA SPOUT, consumers
`
`would be likely to be confused as to the source or origin, affiliation, association, sponsorship or
`
`12
`
`

`
`connection between Plaintiffs’ and Plaintiffs’ products on the one hand and Defendants and their
`
`products on the other.
`
`69.
`
`Despite actual knowledge of Plaintiffs’ TIP IT UP Mark, on March 31, 2010
`
`Admar filed with the PTO an intent to use based federal trademark application, Serial No.
`
`85/003,453, for SIP IT UP to identify products in Class 10, just like Plaintiffs’ TIP IT UP
`
`Products, namely “cups adapted for feeding babies and children.”
`
`70.
`
`For this application, too, Mr. Hakim signed a declaration stating that “no other
`
`person, firm, corporation or association has the right to use the mark in commerce, either in
`
`identical form thereof or in such near resemblance thereto as to be likely, when used on or in
`
`connection with the goods/services of such other person, to cause confusion, or to cause mistake,
`
`or to deceive.” See Exhibit 14.
`
`71.
`
`If Defendants SIP IT UP mark were registered, or if Defendants were to use SIP
`
`IT UP, consumers would be likely to be confused as to the source or origin, affiliation,
`
`association, sponsorship or connection between Plaintiffs’ and Plaintiffs’ products on the one
`
`hand and Defendants and their products on the other.
`
`72.
`
`Despite actual knowledge of Plaintiffs’ SPORTSTER Mark, on March 31, 2010
`
`Admar filed with the PTO an intent to use based federal trademark application, Serial No.
`
`85/003,358, for SPORTSTER to identify products in Class 10, virtually identical to Plaintiffs’
`
`products used in connection with SPORTSTER, namely “cups adapted for feeding babies and
`
`children.”
`
`73.
`
`For this application, too, Mr. Hakim signed a declaration stating that “no other
`
`person, firm, corporation or association has the right to use the mark in commerce, either in
`
`identical form thereof or in such near resemblance thereto as to be likely, when used on or in
`
`13
`
`

`
`connection with the goods/services of such other person, to cause confusion, or to cause mistake,
`
`or to deceive.” See Exhibit 20.
`
`74.
`
`Defendants applied to register SPORTSTER in a bad faith attempt to block
`
`Plaintiffs’ expansion of products bearing the SPORTSTER Mark into the United States.
`
`75.
`
`Despite actual knowledge of Plaintiffs’ SUPER SIPPER Mark, on April 1,
`
`2010, Nuby U.K. L.L.P. (“Nuby U.K.”) filed with the United Kingdom Intellectual Property
`
`Office an application, serial number 2,543,681, to register SUPER SIPPER for a wide range of
`
`baby products in the United Kingdom. This application was filed within one day of the DURA
`
`SPOUT, SIP IT UP and SUPER SIPPER applications filed by Defendants in the United States.
`
`76.
`
`Nuby U.K. currently uses SUPER SIPPER on its products in the United
`
`Kingdom.
`
`77.
`
`Defendant Luv N’ Care, Ltd. is affiliated and controls Nuby U.K. In fact, Nuby
`
`U.K.’s website’s “Terms and Conditions” page states that its website “is provided by Luv N’
`
`Care, Ltd. (the owner of Nuby UK LLP. . .).” Moreover, the packaging on some of Nuby UK’s
`
`products states that the trademark SUPER SIPPER, among others, is owned by defendant Luv N’
`
`Care, Ltd.
`
`78.
`
`From approximately February 2008, Luv N’ Care set up a small office in
`
`Sunderland in the United Kingdom. After Luv N’ Care served six (6) months notice to terminate
`
`the 2008 Agreement without cause in August 2009, Luv N’ Care formed its own limited liability
`
`partnership organization in Sunderland to distribute NUBY branded products (“LNC UK”).
`
`Instead of building its United Kingdom operation based on its own ingenuity and creativity, LNC
`
`UK hired several key employees of Jackel.
`
`In particular, in approximately February 2008, LNC
`
`UK hired Jackel’s Innovation, New Product Development and Marketing Manager, Maria
`
`

`
`Bumell, and later, other members of her then team at Jackel, apparently to improperly benefit
`
`from Plaintiffs’ trade secrets, business plans, confidential information and resources —— financial,
`
`creative and otherwise — to which the former employees had access.
`
`In total, there are six (6)
`
`former employees of Jackel currently employed at LNC UK.
`
`79.
`
`Defendants have recently launched a pacifier that is substantially similar to
`
`Plaintiffs’ unique and innovative CTN Pure Pacifier. Attached hereto as Exhibits 8 and 15 are
`
`images of the CTN Pure Pacifier and Luv N’ Care’s pacifier, respectively. An ordinary observer
`
`familiar with the pacifier marketplace would be deceived into believing that Luv N’ Care’s
`
`pacifier is substantially similar to or the same as the CTN Pure Pacifier.
`
`80.
`
`Shortly after Jackel
`
`launched its CLOSER TO NATURE Trade Dress,
`
`Defendants followed suit with a redesign of their Natural Touch packaging. Attached hereto as
`
`Exhibit 16 is a depiction of the Natural Touch packaging prior to and after Defendants changed
`
`their packaging to mimic the CLOSER TO NATURE Trade Dress.
`
`81.
`
`Defendants revised the packaging of their Natural Touch products to look like
`
`the CLOSER TO NATURE Trade Dress. Plaintiffs’ competitors in the newborn market, with
`
`the exception of Defendants, offer similar products in white packaging with touches of other
`
`colors. With the exception of Defendants, no other competitors use trade dress even remotely
`
`similar to Plaintiffs.
`
`82.
`
`Defendants revised packaging copies many of the elements of the distinctive
`
`CLOSER TO NATURE Trade Dress and is strikingly similar to it. Like the CLOSER TO
`
`NATURE Trade Dress, the Natural Touch packaging is now gray. Defendants’ package change
`
`occurred after Plaintiffs entered the market with the CLOSER TO NATURE Trade Dress and
`
`

`
`with knowledge of the same. Attached as Exhibit 17 is a side by side image of one of the
`
`CLOSER TO NATURE products and the competitive Natural Touch product.
`
`83.
`
`On information and belief, Defendants, through other entities, have used the
`
`TOMMEE
`
`TIPPEE Marks
`
`in
`
`association with
`
`at
`
`least
`
`two
`
`domain
`
`names,
`
`tommeetippeenubycupscom and tommeetippeenubycups.co.uk, to advertise and offer for sale
`
`their baby feeding products. On information and belief, the tommeetippeenubycupscom and
`
`tommeetippeenubycups.co.uk domain names are controlled by Luv N’ Care. A printout of the
`
`tommeetippeenubycupscom website is attached hereto as Exhibit 18.
`
`84.
`
`On
`
`information
`
`and
`
`belief,
`
`the
`
`websites
`
`located
`
`at
`
`the
`
`tommeetippeenubycupscom and tommeetippeenubycups.co.uk domain names recently began
`
`advertising Defendants’ NUBY baby feeding products. When various links are clicked on these
`
`websites including, but not limited to,
`
`the “Newbom,” “Drinking,” “Soothing,” “Teething,”
`
`“Weaning & Tableware,” and “Privacy Policy” sub-menu links,
`
`the user was directed to
`
`Defendants’ United Kingdom website for baby feeding products.
`
`85.
`
`Subsequent to the start of this lawsuit, Luv N’ Care denied responsibility for
`
`diverting intemet traffic to its own websites by using the TOMMEE TIPPEE Marks, but the
`
`domain names are no longer active. Discovery likely will reveal that Luv N’ Care or a related
`
`entity directed the improper use of the TOMMEE TIPPEE Marks in connection with Luv N’
`
`Care’s website because there appears to be no other entity with a motive to do so.
`
`86.
`
`Defendants have committed additional acts, which separately and together,
`
`constitute unfair competition and unlawful business practices.
`
`16
`
`

`
`87.
`
`For example, shortly after Plaintiffs launched their United States website
`
`utilizing the TOMMEE TIPPEE DESIGN, Defendants launched a site in the United Kingdom,
`
`which mimics the TOMMEE TIPPEE Design. See attached Exhibit 19.
`
`88.
`
`Defendants have attempted to divert traffic fiom Plaintiffs’ Facebook page to
`
`the NUBY Facebook page by soliciting “fans” of the TOMMEE TIPPEE Facebook page
`
`immediately after an individual becomes a TOMMEE TIPPEE “fan.”
`
`Effect Of Defendants’ Activities On
`
`Plaintiffs And The Consuming Public
`
`89.
`
`Defendants’ unauthorized use of Plaintiffs’ IP in the manner described above is
`
`likely to cause confusion or mistake or deceive Plaintiffs’ customers and potential customers and
`
`other relevant members of the public, at least as to an affiliation, connection, or association
`
`between Plaintiffs and Defendants, or as to the origin, source, sponsorship, or approval by
`
`Plaintiffs of Defendants’ products.
`
`90.
`
`Defendants’ unauthorized use of the Plaintiffs’
`
`IP falsely indicates to the
`
`purchasing public that Defendants’ products originate with Plaintiffs, or are affiliated, connected,
`
`associated, sponsored, endorsed, or approved by Plaintiffs, or are in some manner related to
`
`Plaintiffs or the Plaintiffs’ Products.
`
`91.
`
`Defendants’ unauthorized use of the Plaintiffs’ IP falsely designates the origin
`
`of Defendants’ products and falsely and misleadingly describes and represents facts with respect
`
`to Defendants and Defendants’ products.
`
`92.
`
`Defendants’ unauthorized use of the Plaintiffs’ IP enables Defendants to trade
`
`on and to receive the benefit of the goodwill in the Plaintiffs’ IP, which Plaintiffs and their
`
`predecessors in interest have developed over many years. Defendants’ unauthorized use also
`
`1?
`
`

`
`enables them to gain acceptance for their own goods, not solely on their merits, but on the
`
`reputation and goodwill of Plaintiffs and the Plaintiffs’ IP.
`
`93.
`
`Defendants’ unauthorized use of the Plaintiffs’ IP unjustly enriches Defendants
`
`at Plaintiffs’ expense.
`
`94.
`
`Defendants’ unauthorized use of the Plaintiffs’ [P deprives Plaintiffs of the
`
`ability to

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