Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA412897
`ESTTA Tracking number:
`06/06/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91199384
`Plaintiff
`Navitar, Inc.
`NEAL L SLIFKIN
`HARRIS BEACH PLLC
`99 GARNSEY ROAD
`PITTSFORD, NY 14534
`UNITED STATES
`nslifkin@harrisbeach.com
`Opposition/Response to Motion
`Neal L. Slifkin
`nslifkin@harrisbeach.com, mdipaolo@harrisbeach.com
`/neal l. slifkin/
`06/06/2011
`int2F4.PDF ( 5 pages )(164543 bytes )
`int2F5.PDF ( 14 pages )(561306 bytes )
`int2F6.PDF ( 16 pages )(755855 bytes )
`int2F7.PDF ( 4 pages )(93851 bytes )
`int2F8.PDF ( 6 pages )(200347 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NAVITAR, INC.,
`
`v.
`
`eSCHOLAR, LLC,
`
`Opposer,
`
`Applicant.
`
`Opposition No. 91 1993 84
`
`OPPOSER’S RESPONSE TO APPLICANT’S MOTION TO SUSPEND PROCEEDING
`
`Navitar, Inc. (“Navitar”) opposes eScholar, LLC’s (“Applicant”) motion to suspend the
`
`subject Opposition on the following grounds:
`
`1.
`
`The presently pending litigation between Navitar and Applicant is not, at this
`
`time, likely to resolve factual or legal issues that will bear on this Opposition.
`
`2.
`
`Applicant’s motion to suspend the subj ect Opposition is premature. Applicant has
`
`not yet answered Navitar’s Complaint in the action in the U.S. District Court for the Southern
`
`District of Florida, Docket No. 1:11-cv-20266-PAS.
`
`3.
`
`Instead, Applicant filed a motion to dismiss the Southern District of Florida
`
`action. Applicant moved to dismiss asserting improper venue, lack of personal jurisdiction, and
`
`failure to state a claim. With regard to the last, at page 8 of its motion to dismiss, Applicant
`
`stated to that court
`
`that “Navitar categorically fail[ed]
`
`to meet
`
`the Twombly pleading
`
`requirements in alleging trademark infringement against eScho1ar, and thus the Complaint should
`
`be dismissed outright.” (S.D. F1a., Docket No. 1:11-cv-20266-PAS, Docket Entry 10.) A copy
`
`of Applicant’s motion to dismiss the Southern District of Florida action is attached as Exhibit A.
`
`

`
`4.
`
`On May 16, 2011, Navitar moved for discovery regarding jurisdictional issues in
`
`the Southern District of Florida action.
`
`(S.D. F1a., Docket No. 1:ll—cv—20266-PAS, Docket
`
`Entry 15.)
`
`5.
`
`Navitar has also moved for a preliminary injunction in the Southern District of
`
`Florida action.
`
`(S.D. Fla., Docket No. 1:1 l-cv-20266-PAS, Docket Entry 14.) Decision of that
`
`motion does not, however, call for the court to determine whether Applicant’s use of Navitar’s
`
`mark causes a likelihood of confusion.
`
`Instead, it requires the court to consider, among other
`
`things, the likelihood that Navitar will ultimately be able to succeed on the merits —— but not a
`
`final resolution of whether there is a likelihood of confusion. A copy of Navitar’s motion for a
`
`preliminary injunction (without exhibits) is attached as Exhibit B.
`
`6.
`
`Thus, the issues currently presented in the Southern District of Florida action
`
`relate to venue, personal jurisdiction, pleading requirements, and Navitar’s likelihood of success
`
`on the merits.
`
`7.
`
`Applicant’s Answer to the Notice of Opposition, on the other hand, defends based
`
`on Applicant’s position that “There is no overlap between the parties’ respective consumers,
`
`retailers, channels of trade, nor in their advertising.” (Answer 1[ 16.) Applicant, by its Answer,
`
`also asserts that “Even if Opposer were to expand into software,
`
`it would have no relation
`
`whatsoever to Applicant’s educational software products.” (Id. 1] 17.) A copy of Applicant’s
`
`Answer to the Notice of Opposition is attached as Exhibit C.
`
`8.
`
`As stated in Navitar’s Notice of Opposition, however, Navitar has been using the
`
`NAVITAR mark in conjunction with goods sold to all levels of educational institutions ranging
`
`from K-12 up to research labs at major universities for over 30 years. (Notice of Opposition 1] 8.)
`
`Navitar uses its mark NAVITAR in conjunction with optics products and software products and
`
`

`
`is in the process of expanding its software product offerings. (Notice of Opposition 1] 7; see also
`
`U.S. Patent No. 7,149,662 (claiming a software system that simplifies optical component
`
`selection).) A copy of the Notice of Opposition is attached as Exhibit D.
`
`9.
`
`Because Applicant’s application to register the mark MYNAVITAR covers a
`
`“computer software application allowing students, educators, administrators and parents to build
`
`and create pathways to success for education, personal and career goals” (Notice of Opposition 1]
`
`5), it is directed to the same markets and for a product of similar nature as Navitar’s products,
`
`and the use for which Applicant applied would result in confusion in the marketplace.
`
`10.
`
`Determination of the issues presently before the District Court for the Southern
`
`District of Florida will not bear on the issues before the Trademark Trial and Appeal Board in
`
`this Opposition, namely, whether there is “overlap between the parties’ respective consumers,
`
`retailers, channels of trade, nor in their advertising” and whether Navitar’s present and expected
`
`software products have any relation to Applicant’s software products. (Answer {[1] 16-17.)
`
`11.
`
`Because the Southern District of Florida action currently involves different issues
`
`than the present Opposition, proceeding with the present Opposition will not result
`
`in
`
`inconsistent results, duplication of effort, or waste of the parties’ or the Board’s time and
`
`resources.
`
`12.
`
`Suspending the present Opposition before Applicant has even filed an Answer in
`
`the Southern District of Florida action — and before it is known what substantive issues will be
`
`contested in the Southern District of Florida action — will unduly delay this Opposition without
`
`any benefit of preventing duplication of effort.
`
`13.
`
`S
`
`37 C.F.R. § 2.117(a) does not mandate suspension of the proceedings before the
`
`Trademark Trial and Appeal Board.
`
`Instead, it uses permissive language: “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 which may have a bearing on the case, proceedings
`
`before the Board may be suspended until termination of the civil action ....”
`
`14.
`
`Navitar and Applicant sell to the same markets, including to schools and other
`
`educational institutions. Navitar’s interest in this proceeding is not to interfere with Applicant’s
`
`business but, rather, to prevent confusion as to the source of goods and services and to protect
`
`Navitar’s mark.
`
`15.
`
`For the above reasons, suspension of the present Opposition is not warranted.
`
`WHEREFORE, Navitar,
`
`Inc. respectfully requests that
`
`the Board deny Applicant’s
`
`Motion to Suspend Proceeding.
`
`Dated: June 1, 2011
`
`HARRIS BEACH PLLC
`
`Neal L. S1ifl<in
`
`Attorneys for Navitar, Inc.
`99 Garnsey Road
`Pittsford, New York 14534
`Telephone: 585-419-8800
`nslifkz'n@harrz'sbeach. com
`
`

`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that on this éth day of June, 2011, I mailed by the United States
`Postal Service the foregoing document to the following:
`
`Erica R. Halstead, Esq.
`222 Bloomingdale Rd.
`White Plains, New York 10605
`
`Neal L. Slifkin
`
`HARRIS BEACH PLLC
`
`Attorneys for Navitar, Inc.
`99 Garnsey Road
`Pittsford, New York 14534
`Telephone: 585-419-8800
`Fax: 585-419-8813
`
`nslzfkz'n@harrz'sbeach. com
`
`230349 15983822
`
`

`
`> C
`
`ase 1:11 —cv—20266-PAS. Document 10 Entered on FLSD Docket 04/06/2011 Page 1 of 12
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO. 1 1-CV-20266-PAS
`
`NAVITAR, INC.,
`a New York, Corporation
`
`Plaintiff,
`
`v.
`
`eSCHOLAR, LLC, a New York
`Limited Liability Company,
`
`Defendant.
`
`/
`
`DEFENDANT ESCHOLAR’S MOTION To DISMISS PURSUANT To FEDERAL
`RULES 12(b)(3) FOR IMPROPER VENUE (OR To TRANSFER UNDER 28 U.S.C. §
`l404(a)), 12(b)(2) FOR LACK OF PERSONAL JURISDICTION,
`l2(b)(6) FOR FAILURE To STATE A CLAIM,
`AND INCORPORATED MEMORANDUM OF LAW
`
`Defendant, eScholar LLC (“eScholar”), respectfully moves this Court for an order of
`
`dismissal of Navitar Inc.’s (“Navitar”) Complaint pursuant to Federal Rules 12(b)(3) (improper ‘
`
`venue) (or to transfer under 28 U.S.C. § l404(a)), 12(b)(2) (lack of personal jurisdiction), and
`
`l2(b)(6) (failure to state of claim).
`
`STATEMENT OF FACTS
`
`Plaintiff, Navitar, instituted this trademark infringement action against eScholar based
`
`upon eScholar’s use of its trademark “myNavitar”. Navitar’s sole issue associated with the
`
`“myNavitar” trademark is that eScholar’s use of such trademark “has caused and/or is likely to
`
`cause confusion, deception and mistake” in the marketplace causing injury to Navitar (Complaint
`
`paras. 8, 15). Navitar further contends that eScholar’s use of the “myNavitar” mark “has caused
`
`or is likely to cause, dilution of Plaintiff’ s famous mark” (Complaint para. 19), and that such use
`
`violates the Lanham Act, 15 U.S.C. sections 1114 and 1125(0), respectively (Complaint para. 12,
`
`

`
`Case 1:11-cv—20266-PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 2 of 12
`
`19). Navitar also asserts various common law violations (trademark infringement and unfair
`
`competition) (Complaint paras. 22 through 25), and state law claims under Florida statute arising
`
`out of eScholar’s use of the “myNavitar” trademark (Complaint paras. 27, 28). Navitar seeks
`
`permanent injunctive relief and damages against eScholar.
`
`Venue, according to Navitar, is proper in this District, since “a substantial part of the
`
`events and/or omissions giving rise to the claims asserted herein occurred within this district, and
`
`because this Court has personal jurisdiction over the Defendant.” (Complaint para. 3.) Navitar’s
`
`I sole basis for alleging personal jurisdiction over eScholar in the State of Florida rests on its bare
`
`allegations that:
`
`(i) Navitar, a New York corporation headquartered in Rochester, New York,
`
`maintains a “place of business in Florida”1 (Complaint para. 1), and (ii) Defendant has
`
`committed a tortious act within the State of Florida (Complaint para. 4).
`
`As discussed more fully below, Navitar’s Complaint is wholly deficient under Federal
`
`Rules 12(b)(3), 12(b)(2) and 12(b)(6) and should be dismissed as a matter of law.
`
`By way of background, Navitar is _a New York company that designs, develops,
`
`manufacturers and distributes precision optical solutions. Navitar’s three corporate divisions,
`
`Imaging Solutions, Navitar Protection Optics and Special Optics, produce leading edge optical
`
`and electro-optical technologies.
`
`On the other hand, eScholar, a New York limited liability company with an office in
`
`White Plains New York, is engaged in a totally unrelated business providing data—base software
`
`solutions for state and local educational agencies to manage and use data to enable data-driven
`
`decision making to improve the quality and effectiveness of educational reporting and programs
`
`1 Upon information and belief, Navitar’s “place of business in Florida” in actuality is the
`President of NaVitar’s personal residence—hardly a place of business under any legal standard
`for purposes of establishing venue or jurisdiction for that matter.
`
`

`
`Case 1:11—cv—20266—PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 3 of 12
`
`in general. As part of eScholar’s software product line, the Company offers “myNavitar”, a
`
`software application tool that enables educators, students, teachers and parents to build and
`
`create pathways to successfully achieve personal and career goals. Simply put, eScholar is in the
`
`business of educational data management systems and nothing more.
`
`Moreover, neither eScholar (nor any of the Company’s employees or representatives) has
`
`ever made a telephone call to, visited, offered for sale and/or sold the “myNavitar” software
`
`program within the State of Florida (fl Affidavit of Wolf Boehme para. 5 hereinafter “Boehme
`
`Affidavit”).
`
`ARGUMENT
`
`POINT I
`
`VENUE IN FLORIDA IS IMPROPER
`
`As an initial matter, Navitar has brought this action in an improper venue.
`
`Indeed, other
`
`than Navitar’s hollow allegation that “a substantial part of the events and/or omissions giving
`
`rise to the claims asserted herein occurred within this district” -— without offering a modicum of
`
`substantiation around this baseless assertion -— the Complaint asserts no factual connection to the
`
`Southern District of Florida.
`
`Thus, because Navitar’s conclusory statement
`
`is inherently
`
`insufficient to establish that venue is proper, and because eScholar has submitted an affidavit that
`
`denies any connection to Florida, the Complaint must be dismissed under Rule 12(b)(3). &
`
`Wai v. Rainbow Holdings, 315 F. Supp. 2d. 1261, 1268 (S.D. Fla. 2004) (noting that a plaintiff
`
`bears the burden of showing that venue is proper and that a factual inquiry must be conducted
`
`upon a defendant’s submission of a contrary affidavit, as the standard of review is generally the
`
`same as that for deciding a motion to dismiss for lack of personal jurisdiction.); see also, e.g.,
`
`. Jackson v. BellSouth Telecomms., 372 F.3d 1250, 1262 (1 1th Cir. 2004) (noting in the context
`
`

`
`Case 1:11-cv-20266—PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 4 of 12
`
`of l2(b)(6) motions that “[c]onclusory allegations, unwarranted deductions of facts or legal
`
`conclusions masquerading as facts will not prevent dismissal”) (quotation marks omitted);
`
`accord Ashcroft V. Igbal, 129 S.Ct. 1937, 1949-50 (2009).
`
`Moreover, even if there was a basis for venue in the Southern District of Florida (which
`
`is not the case), under 28 U.S.C. Section 1404(a), a district courtpmay transfer any civil action to
`
`any district where it could have been brought for (1) the convenience of the parties,
`
`(2)
`
`convenience of the witnesses, and (3) interests of justice. Congress authorized courts to transfer
`
`the venue in a casein order to avoid unnecessary inconvenience to the litigants, witnesses, the
`
`public, and to conserve time, energy and money.
`
`The Court gives great weight to the
`
`convenience of the parties and witnesses. American Aircraft Sales v. Airwarsaw Inc., 55 F.
`
`Supp. 2d 1347, 1350-52 (M.D. Fla. 1999).
`
`The threshold question is whether this civil case may have been brought in the desired
`
`district of transfer, in this case the Southern District of New York.
`
`I_d_. at 1351. Here, because
`
`both Navitar and eScholar are incorporated under laws of the State of New York, their principal
`
`places of business are in New York, and all the witnesses and alleged events giving rise to the
`
`cause of action took place within the State of New York, this action could have been readily
`
`brought in New York. Florida, on the other hand, has absolutely no connection to this action.
`
`Therefore, it is apparent that in the interest of justice and the convenience of the parties and
`
`witnesses, this action should proceed ~ if at all -- in the Southern District of New York, where
`
`Defendant’s office is located and where it operates its allegedly infringing business. See 28
`
`U.S.C. § l39l§b).
`
`

`
`Case 1:11-cv—20266—PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 5 of 12
`
`POINT II
`
`THIS COURT LACKS PERSONAL JURISDICTION OVER DEFENDANT
`
`Navitar bases personal jurisdiction over eScholar in the State of Florida on its bare
`
`allegations that (i) Navitar, a New York corporation headquartered in Rochester, New York,
`
`maintains a “place of business in Florida”2 (Complaint para. 1), and (ii) Defendant has
`
`committed a tortious act within the State of Florida (Complaint Para. 4). Specifically, Navitar
`
`contends that this Court has personal jurisdiction over eScholar pursuant to Florida Statutes
`
`Section 48.193, F lorida’s Long-Arm Statute.
`
`In Kelly v. Kelly, 901 F. Supp. 1567, 1569 (M.D.
`
`Fla.
`
`1995), the District Court for the Middle District of Florida lays out the two-part test
`
`employed by federal courts for purposes of determining jurisdiction over non-resident persons.
`
`In E, the Court stated, “First, this Court must inspect F lorida’s Long-Arm Statute, Fla Stat.
`
`Section 48.193 to consider the jurisdictional issue.” I_ci.3
`
`“Second, the Court must consider whether there are sufficient minimum contacts to
`
`satisfy the Due Process Clause of the Fourteenth Amendment so that the maintenance of the suit
`
`does not violate traditional notions of fair play and substantial justice.” Kelly at 1569 (citations
`
`omitted).
`
`2 As noted above, upon information and belief, Navitar’s “place of business in Florida” is the
`President of Navitar’s personal residence.
`V
`
`3 Florida Statutes section 48.193 provides, in relevant part:
`
`(1)
`
`Any person, whether or not a citizen or resident of this state, who personally or
`through an agent does any of the acts enumerated in this subsection thereby
`submits himself and, if he is a natural person, his personal representative to the
`jurisdiction of the courts of this state for any cause of action arising from the
`doing of any of the following acts: .
`.
`.
`
`(b)
`
`Committing a tortious act within this state.
`
`

`
`Case 1:11—cv—20266—PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 6 of 12
`
`A. Plaintiff Fails To Allege Any Tortious Conduct On The Part Of eScholar
`
`In Kelly, the Court in analyzing the Florida Long-Arm Statute held that “where the Court
`
`does not conduct an evidentiary hearing to determine the sufficiency of a defendant’s contacts
`
`with the forum state, the plaintiff must establish a prima facie case of personal jurisdiction over
`
`the non-resident defendant.4 This occurs only when the plaintiff presents ‘sufficient evidence to
`
`defeat a motion for a directed verdict.” Kelly supra at 1569 (citations omitted) (In Kglfl, the
`
`Court found that plaintiff failed to show that any alleged tortious activity occurred in Florida to
`
`support exercise of jurisdiction and dismissed the complaint pursuant to Federal Rule 12 (c).
`
`The Court made its finding despite plaintiff’s affidavit showing “telephone calls, letters, and
`
`meetings with [Defendants’] attorneys for seven months in Florida and New York.” K_elly sgjmi
`
`at 1570.); E Meier v. Sun Int’l hotels Ltd., 288 F. 3d. 1264,1269 (11th 2002) (“Where, as
`
`here, the defendant submits affidavits to the contrary, the burden traditionally shifts back to the
`
`plaintiff to produce evidence supporting jurisdiction.“) To meet this requirement, the plaintiff
`
`must go beyond the pleadings and make affirmative proof.
`
`Purdue Research v.
`
`Sanofi-
`
`Synthelabo, S.A. 338 F. 3d. 773, 783 (7th Cir. 2003).
`
`Here, Navitar makes only a single conclusory allegation in support of this Court
`
`exercising personal jurisdiction; that is “defendant committed a tortious act within the State of
`
`Florida”. (Complaint para. 4) and nothing more. Against this bare allegation, Navitar offers not a
`
`scintilla of facts in its Complaint in support of such claim. This sort of pleading technique is
`
`unacceptable under Kelly and the general pleading requirements set forth by the Supreme Court
`
`in Twombly, and, thus, should be rejected by this Court as entirely deficient, as a matter of law.
`
`4 Significantly, Kelly also found that in instances where the defendant sufficiently challenges
`plaintiff’s allegations then in such instance plaintiff must support plaintiff’s allegations and
`cannot rely only on the factual allegations published in the complaint. See Prentice v. Prentice
`Colour, Inc., 779 F. Supp. 578, 586 (M.D. Fla. 1991).
`
`

`
`Case 1:11-cv—20266—PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 7 of 12
`
`B. Navitar Fails To Allege That eScholar Had Any
`Minimum Contacts Within The State Of Florida
`
`In its Complaint, Navitar does not allege any minimum contacts on the part of eScholar
`
`that would support personal jurisdiction by this Court. Navitar’s failure to plead any minimum
`
`contacts should not come as a surprise since eScholar has never availed itself within the State of
`
`Florida.
`
`Indeed, as set forth in the Boehme Affidavit, eScholar (including the Company’s
`
`employees or representatives) has never made a telephone call to, visited, offered for sale and/or
`
`sold the “myNavitar” software program within the State of Florida. (Boehme Affidavit para. 5)
`
`Therefore, this Court should dismiss the Complaint for lack of personal jurisdiction, as a
`
`matter of law.
`
`POINT III
`
`PLAINTIFF’S COMPLAINT FAILS TO STATE A CLAIM FOR TRADEMARK
`INFRINGEMENT AND SHOULD BE DISMISSED UNDER FEDERAL RULE 12gb)(6)
`
`1. Standard of Review Under Federal Rule 12gb)g6)
`
`Although Courts routinely encourage brevity, the federal pleading requirements are far
`
`from trivial; specifically, under rules 8 and 9, a pleading must still contain “enough” to give
`
`defendants fair notice of both the complaint’s claims and grounds for those claims. Tellabs, Inc.
`
`v. Makor Issues & Rights, Ltd., 551 U.S. 308, 319 (2007); Bell Atlantic Corp. V. Twombly, 550
`
`U.S. 544, 555-56, 127 S. Ct. 1955, 1665 (2007) (There, the Supreme Court held, “While a
`
`complaint attacked by rule 12(b)(6) motion to dismiss does not need detailed factual allegations a
`
`plaintiff’ s obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’ require more than
`
`labels and conclusions, and a formulaic recitation of the elements of a cause of action will not
`
`do. Factual allegations must be enough to raise a right to relief above the speculative level.
`
`[T]he pleading must contain something more than a statement of facts that merely creates a
`
`

`
`Case 1:11-cv-20266—PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 8 of 12
`
`suspicion [of] a legally cognizable right of action”) (citations omitted”); see also Phillips v.
`
`Counfl of Albany 515 F. 3d. 224 (3rd Cir. 2008) (“.
`
`.
`
`.
`
`in light of Twombly, Rule 8(a)(2)
`
`requires ‘a showing’ rather than a blanket assertion of an entitlement to relief. We caution that
`
`without some factual allegation in the complaint, a claimant cannot satisfy the requirement that
`
`he or she provide not only ‘fair notice,’ but also the ‘grounds’ on which a claim rests (citation
`
`omitted)”).
`
`As discussed more fully below, Navitar categorically fails to meet the Twombly pleading
`
`requirements in alleging trademark infringement against eScholar, and thus the Complaint should
`
`be dismissed outright.
`
`2. Plaintiff’s Trademark Claim Should Be Dismissed
`
`A trademark infringement claim based on a federally registered mark under Section 32
`
`(1) of the Lanham Act, 15 U.S.C. Section 1114(1), requires proof:( 1) that plaintiff has a valid
`
`mark, (2) that, without authorization, defendant used the mark or a colorable imitation thereof in
`
`commerce in connection with the sale or advertising of goods or services, and (3) that defendant
`
`used the mark in a manner likely to confuse consumers.5 Sound Surgical Technologies, LLC v.
`
`Leonard A. Rubinstein M.D. P.A., 734 F. Supp 2d 1262, 1269 (M.D. Fla. 2010).
`
`In Sound
`
`Surgical, the Middle District Court set forth seven factors that a court needs to consider when
`
`5 Nowhere in plaintiff’s complaint does Navitar allege that its mark is a federally registered
`mark, so for purposes of this motion eScholar can only assume that plaintiff is seeking relief
`pursuant to Section 43(a) of the Lanham Act dealing with common law trademark infringement
`relief. Specifically, Section 43(a) of the Lanham Act creates a federal cause of action for unfair
`competition by prohibiting the use in commerce of any designation likely to cause confusion ( 1)
`as to “origin, sponsorship, or approval of [the user’s] goods, services, or commercial activities by
`another person.” 15 U.S.C. Section 1l25(a).
`“To establish a prima facie case of trademark
`infringement under Section 43(a), a plaintiff must show (1) that it had trademark rights in the
`mark or name at issue and (2) that the other party had adopted a mark or name that was the same,
`or confusingly similar to its mark, such that consumers were likely to confuse the two.” E
`Sound Surgical at 1269; see also _Tana v. Dantanna’s 611 F. 3 d 767, 773 (1 1th Cir. 2010).
`
`

`
`Case 1:11—cv-20266-PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 9 of 12
`
`making a determination as to whether a “likelihood of confusion” exists. Specifically, the
`
`Middle District determined the seven following factors to control with respect to the “likelihood
`
`of confusion” standard: (1) type of mark, (2) similarity of mark, (3) similarity of the products the
`
`mark represents, (4) similarity of the parties retail outlets and customers, (5) similarity of
`
`advertising media used, (6) defendant’s intent, and (7) actual confusion. Sound Surgical at 1269.
`
`In Lone Star Steakhouse v. Longhorn Steaks 122 F. 3d 1379, 1382 (11th Cir. 1997), the
`
`Court in analyzing the importance of the “likelihood of confusion” element found that, “of these
`
`seven factors, we consider the type of mark and the evidence of actual confusion to be the two
`
`most important factors.
`
`In reviewing the evidence, there are no set of rules as to how much
`
`evidence of confusion is needed; rather, a district court ‘must take into consideration the
`
`circumstances surrounding each particular case’.” (citation omitted).
`
`In Tana V. Dantanna’s 611 F. 3d 767, 775 (11th cir.
`
`2010), the Court found that
`
`“[a]lthough likelihood of confusion is a question of fact, it may be decided as a matter of law.
`
`See Welding Servs., Inc. V. Forman, 509 F. 3d 1351, 1361 (11th 2007); see also Alliance 1&1];
`
`Inc. V. Hinely Indus., Inc., 222 F. 3d 895, 907 (1 1th 2000). In L the Court affirmed summary
`
`judgment in favor of defendant on the issue of “likelihood of confusion” despite the fact that
`
`both parties’ marks are virtually identical and both parties sell food prepared and served in
`
`restaurant establishments. The Court also noted that, “the last factor, actual confusion in the
`
`consuming public, is the most persuasive evidence in assessing likelihood of confusion.“ §c_e
`
`Alliance Metals at 907.
`
`In analyzing the seven factors discussed above against the undisputed facts presented in I
`
`this case, it is incredible that Navitar would even consider filing an infringement action in the
`
`first instance. To be sure, the respective parties in this action sell completely unrelated products-
`
`

`
`Case 1:11—cv—20266-PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 10 of 12
`
`optical products versus educational software products (factor 3), have no similarity or any
`
`overlap whatsoever with respect to distribution outlets and/or customers (factor 4), and utilize
`
`completely different advertising media trade (factor 5). Significantly, Navitar has made no
`
`allegation of “actual confusion” in the marketplace for the obvious reason that such a claim
`
`would be totally absurd given the unrelated nature of each of the company’s respective
`
`businesses.6
`
`Thus, the Court should dismiss Navitar’s trademark infringement claim for failure to state
`
`a claim.
`
`3. Plaintiff’s Demand For Injunctive Relief Should Be Denied.
`
`Finally, Navitar’s request for preliminary injunctive relief is equally flawed for the
`
`reasons discussed above, and should be rejected outright by this Court.
`
`It is axiomatic that to
`
`prevail on a claim for injunctive relief in a trademark case, a plaintiff must demonstrate either,
`
`(1) a combination of “probable success on the merits” and “the possibility of irreparable injury,
`
`or (2) the existence of “serious questions gong to the merits“ and that the “balance of hardships
`
`tips sharply in plaintiff’s favor”. Goto.com, Inc. v. Walt Disney Co., 202 F. 3d 1199, 1205 (9th
`
`Cir. 2000). A showing of any of these factors, however, requires that the moving party show a
`
`“likelihood of confusion” and more precisely, because this case is at the preliminary injunction
`
`stage, that the moving party “likely to be able to show a likelihood of confusion.” Goto.com at
`
`1205.
`
`6 Interestingly enough, the “Navitar” mark currently co-exists on the register with several third
`' party “Navitar” marks presumably without confusion. Moreover, a simple Internet search
`reveals scores of other businesses —— unrelated to plaintiffs business -- currently using the
`“Navitar” mark.
`
`

`
`Case 1:11-cv-20266-PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 11 of 12
`
`As discussed above, there is no scenario that Navitar can proffer that would establish
`
`“likelihood of confusion” given the totally unrelated nature of the parties’ respective businesses.
`
`Therefore, this demand is ripe for dismissal.
`
`CONCLUSION
`
`For the reasons set forth above, Defendant respectfully requests that this Court dismiss
`
`Plaintiff’s Complaint in its entirety since venue is improper before this Court pursuant to Federal
`
`Rule l2(b)(3). Alternatively, for the reasons discussed above, Defendant respectfully requests
`
`that this Court transfer the lawsuit to the Southern District of New York. Moreover, the Court
`
`lacks personal jurisdiction over Defendant and the action must be dismissed under Federal Rule
`
`l2(b)(2). Finally, Plaintiff failed to state a claim for trademark infringement and dismissal is
`
`warranted under Federal Rule 12(b)(6).
`
`Respectfully submitted,
`
`WARSHAW BURSTEIN COHEN SCHLESINGER & KUH, LLP
`555 Fifth Avenue
`
`New York, NY 10017
`Telephone: (212) 984-7700
`Facsimile: (212) 972-9150
`
`SHUTTS & BOWEN LLP
`
`1500 Miami Center
`
`201 South Biscayne Boulevard
`Miami, FL 33131
`Telephone: (305) 358-6300
`Facsimile: (305) 381-9982
`
`Attorneys for eSch0lar, LLC
`
`By: s/Arturo Martinez
`Paul McMenamin
`
`New York Bar No. 2527604
`
`E-mail: PMcMenamin@wbcsk.com
`Arturo C. Martinez
`Florida Bar No. 526231
`
`E-mail: ArturoMartinez@Shutts.com
`
`

`
`1.5
`
`Case 1:11-cv-20266—PAS Document 10 Entered on FLSD Docket 04/06/2011 Page 12 of 12
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on April 6, 2011, I electronically filed the foregoing document with
`the Clerk of the Court using CM/ECF.
`I also certify that the foregoing document is being served
`this day on counsel for Plaintiff, Bernardo Burstein and Robert A. Bouvatte, Jr., of Burstein &
`Associates, P.A., 744 Northeast 125th Street, Miami, Florida 33161, Tel.
`(305) 981-9033, Fax
`(305) 981-9034, either via transmission of notices Electronic Filing generated by CM/ECF or in
`some other authorized manner for those counsel or parties who are not authorized to receive
`electronically Notices of Electronic Filing.
`
`MIADOCS 5254409 1
`
`s/Arturo Martinez
`
`OF COUNSEL
`
`

`
`Case 1:11-cv—20266—PAS Document 10-1
`
`Entered on FLSD Docket 04/06/2011 Page 1 of 2
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`CASE NO. 1 1-CV-20266-PAS
`
`NAVITAR, lNC.,
`a New York, Corporation
`
`Plaintiff,
`
`v.
`
`,
`
`AFFIDAVIT IN SUPPORT OF MOTION
`
`eSCHOLAR, LLC, a New York
`Limited Liability Company,
`
`A Defendant.
`
`Wolf Boehme, being duly sworn, deposes and says:
`
`1. I am the President at eScholar LLC (“eScholar” or “Company”). I have worked at
`
`eScholar for over ten years, and am very familiar with the Company’s software products, sales
`
`and marketing practices.
`
`2. As part of my job responsibilities at eScholar, I manage the sales department at the
`
`Company.
`
`3. eScholar is a New York limited liability company with an office in White Plains, New
`
`York. The Company provides data-base software solutions to state and local educational
`
`agencies enabling these agencies to better manage and use their data improving the quality and
`
`effectiveness of educational reporting and programs in general.
`
`

`
`Case 1:11—cv-20266-PAS Document 10-1
`
`Entered on FLSD Docket 04/06/2011 Page 2 of 2
`
`4. The Company offers “myNavitar”, a software application tool that enables educators,
`
`students, teachers and parents to build and create pathways to successfully achieve personal and
`
`career goals.
`
`5. eScholar (including the Company’s employees or representatives), has never made a
`
`telephone call to, visited, offered for sale and/or sold the “myNavitar” software program within
`
`the State of Florida.
`
`I t
`Sworn to before me this 1 day of
`
`April2011
`
`/@w%/
`
`Wol Boehme
`
`P. JAWA
`CHAN
`Notary Public. state of New York.
`Qualified in Westchester county
`Reg. No. O1JA6084918
`My cor-w~i--:‘mn Expires 12-16-2014
`
`

`
`3 C
`
`ase 1:11—cv-20266—PAS Document 14 Entered on FLSD Docket 05/16/2011 Page 1 of 16
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`MIAMI DIVISION
`
`CASE NO.: 11—CV-20266-PAS
`
`NAVITAR, INC., a New York
`Corporation,
`
`Plaintiff,
`
`V.
`
`eSCHOLAR, LLC, a New York
`Limited Liability Company,
`
`Defendant.
`
`/
`
`PLAINTIFF, NAVITAR_, INC.’S MOTION FOR PRELIMINARY, INJUNCTION
`
`The Plaintiff, Navitar, Inc. (“Navitar” or the “Plaintiff’), by and through its undersigned
`
`counsel and pursuant to Rule 65 of the Federal Rules of Civil Procedure and Rule 7.1 of the
`
`Local Rules of the United States District