throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA420553
`ESTTA Tracking number:
`07/19/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91200660
`Defendant
`KINGSDOWN, INC.
`Plaintiff
`King Koil Licensing Company, Inc.
`
`Proceeding.
`Applicant
`
`Other Party
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly,
`KINGSDOWN, INC. hereby requests suspension of this proceeding pending a final determination of the civil
`action. Trademark Rule 2.117.
`KINGSDOWN, INC. has secured the express consent of all other parties to this proceeding for the
`suspension and resetting of dates requested herein.
`KINGSDOWN, INC. has provided an e-mail address herewith for itself and for the opposing party so that any
`order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Facsimile or email (by agreement only) on this date.
`Respectfully submitted,
`/Kevin G. Smith/
`Kevin G. Smith
`tm@sughrue.com, vmullineaux@sughrue.com, ksmith@sughrue.com
`Michael.Carrillo@btlaw.com
`07/19/2011
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Attorney Docket No.: H00052
`
`In re Application Serial No. 85/126,656
`Mark: PILLOWMATCH
`
`KING KOIL LICENSING COMPANY, INC.,
`
`Opposer,
`
`v.
`
`Opposition No. 91200660
`
`KINGSDOWN, INC.,
`
`Applicant.
`
`CONSENTED MOTION FOR SUSPENSION OF PROCEEDINGS
`PENDING DISPOSITION OF PENDING CIVIL ACTION
`
`Applicant, by its attorneys, hereby moves to suspend all proceedings herein pending
`
`disposition of a civil action now pending before the U.S. District Court for the Middle District of
`
`North Carolina (Civil Action No. 1:11-cv-00220). Opposer’s consent has been obtained. A copy of
`
`the complaint filed in the U.S. District Court is enclosed herewith for the Board’s information.
`
`Trademark Rule 2.1 l7(a) provides that whenever it shall come to the attention of the Board
`
`that the parties to a pending case are engaged in a civil action which may have a bearing on the
`
`issues before the Board, proceedings before the Board may be suspended until the civil action is
`
`terminated. It is the Board’s practice to suspend its proceeding pending disposition of a co-pending
`
`civil action inasmuch as the Board will be bound by a decision in the civil action which has a
`
`bearing on the issues in the case before the Board. See TBMP § 510.02, and cases cited therein.
`
`

`
`As the Board can see from reviewing a copy of the complaint filed in the U.S. District
`
`Court for the Middle District of North Carolina, Applicant (Plaintiff in the USDC Action) has
`
`asserted various claims of trademark infringement and related causes against Opposer’s use of
`
`various infringing marks, including BODYMATCH. Opposer asserts this mark as the basis of this
`
`opposition. Applicant has requested that the U.S. District Court issue an injunction prohibiting
`
`Opposer herein from using BODYMATCH and it is submitted that a decision in the civil action
`
`could well be dispositive of the issues involved in this opposition relating to App1icant’s right to
`
`registration of PILLOWMATCH.
`
`Under the circumstances, the issues involved in the civil action clearly may be dispositive
`
`of the issues before the Board and, under Trademark Rule 2.1 17(a) and the rationale set forth in
`
`TBMP § 510.02, suspension of this opposition is appropriate.
`
`In view of the foregoing, it is respectfully requested that the motion for suspension be
`
`granted and that proceedings herein be suspended pending disposition of the co-pending civil
`
`action.
`
`Respectfully submitted,
`
`KIN S OWN, lNC..
`
` By: K__;_
`Ke in
`. Smith
`
`Jody H. Drake
`Gary D. Krugman
`Shahrzad Poorrnosleh
`
`SUGHRUE MION, PLLC
`2100 Pennsylvania Avenue, N.W.
`Washington, D.C. 20037-3202
`Telephone: (202)293-7060
`Facsimile: (202) 293-7860
`Attorneys for Applicant
`
`.
`)
`Date: July l__, 2011
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on this /Qfiéday of July 2011, per the agreement
`between the parties, a true and correct copy of the foregoing CONSENTED MOTION FOR
`SUSPENSION OF PROCEEDINGS PENDING DISPOSITION OF PENDING CIVIL
`ACTION was sent Via email, to Opposer’s attorney of record, Michael A. Carrillo
`(Michael. CarriZZo@btZaw. com), Barnes & Thornburg LLP , One North Wacker Drive,
`Suite 4400, Chicago, IL 60606-2833.
`\,
`
`Z/Z5taflt”*«K/
`
`Valerie L. Mullineaux
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`GREENSBORO DIVISION
`
`KINGSDOWN, INC.
`
`Plaintiff,
`
`Civil Action No. 1:11-cv-220
`
`V.
`
`KING KOIL LICENSING COMPANY, INC.
`
`Defendant.
`
`
`COMPLAINT
`
`Plaintiff, Kingsdown, Inc. (“Kingsdown”), for its Complaint states and alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Kingsdown is a corporation organized under the laws of North Carolina,
`
`with a principal place of business at 126 West Holt Street, Mebane, North Carolina 27302.
`
`2.
`
`Upon information and belief, Defendant King Koil Licensing Company, Inc.
`
`(“King Koi1” or “Defendant”), is a corporation organized under the laws of Delaware with a
`
`principal place of business at 7501 S. Quincy Street, Suite 130, Willowbrook, Illinois 60527-
`
`5574.
`
`JURISDICTION AND VENUE
`
`3.
`
`This is an action for patent infringement, federal trademark infringement, federal
`
`unfair competition, common law trademark infringement, and common law unfair competition.
`
`The applicable laws are the patent laws of the United States, 35 U.S.C. §§ 1 et seq., the Lanham
`
`Act, 15 U.S.C. §§ l051 et seq. (The Trademark Act of 1946 as amended), N.C.G.S. § 75-1.1, et
`
`seq. and the common laws of North Carolina.
`
`Case1:11-cv-00220 Document1
`
`Filed 03/17/11 Paoe1of16
`
`

`
`4.
`
`This Court has jurisdiction over the subject matter of this action under 28 U.S.C.
`
`§§ 1331 and 1338 and pursuant to principles of pendant jurisdiction.
`
`5.
`
`King Koil has been and continues doing business in this judicial district and
`
`others by selling and offering to sell its bedding products and using a bedding diagnostic system
`
`that infringes Kingsdown’s United States Patent No. 6,585,328 (hereinafter “the ‘328 patent”),
`
`entitled “Customized mattress evaluation system.”
`
`6.
`
`Venue is proper in this district under 28 U.S.C. §§ 1391 (b) and (c), and 1400(b).
`
`FACTUAL ALLEGATIONS AND BACKGROUND
`
`Kingsdown’s Patented Technology
`
`7.
`
`Since 1904, Kingsdown has been at the forefront of designing, manufacturing,
`
`distributing and selling mattresses worldwide.
`
`8.
`
`Kingsdown is the developer and owner of patented bedding diagnostic technology
`
`that analyzes and evaluates individual customers, and prescribes preferred mattress components
`
`to those customers. In brief, this technology helps the consumer find the right mattress for that
`
`person’s body type.
`
`9.
`
`Kingsdown has spent millions of dollars in research and development of sleep
`
`technology. In 2007, Kingsdown established the Kingsdown Sleep to Live Research Center,
`
`dedicated to the study of the science of sleep. Kingsdown’s diagnostic technology is based in
`
`part on a multimillion dollar study of the development of healthful sleep conducted at Research
`
`Triangle Institute located in the Research Triangle Park, North Carolina and at the Kingsdown
`
`Sleep to Live Research Center.
`
`Page 2 of 16
`
`Case1:11-cv-00220 Document1
`
`Filed O3/17/11 Paoe2of16
`
`

`
`10.
`
`Kingsdown owns numerous patents and pending patent applications, and is the
`
`owner of the entire right, title and interest to the ‘328 patent, including the right to recover for
`
`infringement thereof. On July 1, 2003, the ‘328 patent issued from the United States Patent and
`
`Trademark Office, listing Robert Oexman and David Scott as inventors. A true and correct copy
`
`of the ‘328 patent is attached to this Complaint as Exhibit A.
`
`1 1.
`
`The ‘328 patent is entitled by statute to a presumption of validity.
`
`Kingsdown’s Trademarks
`
`12.
`
`As part of its marketing plans, Kingsdown has developed, used, and owns two
`
`families of marks based on the terms BODY and MATCH, in connection with its bedding
`
`diagnostic technology, beds, mattresses, and other bedding products.
`
`13.
`
`Since at least as early as 1990, Kingsdown has continuously used various marks
`
`containing the term‘ BODY (hereinafter “BODY formative” marks), including, BODY SYSTEM;
`
`BODY PROFILE; BODY MOTION; BODY PERFECT; BODY BLEND; BODYSYSTEM
`
`PLUS; BODYDIAGNOSTICS; BODYDUET; BODY ESSENTIAL; BODY ADVANCE;
`
`BODYPREMIER; BODY CARESS & Design; and BODY NATURAL, in connection with its
`
`bedding diagnostic.system technology, beds, mattresses, box springs and related goods and
`
`services, both domestically and internationally.
`
`14.
`
`Kingsdown uses and promotes its BODY formative marks as a family of
`
`trademarks. By virtue of such use, the consumers and prospective consumers have come to
`
`recognize Kingsdown’s family of BODY marks and recognize that they indicate a single source
`
`of goods and services, particularly in the bedding industry.
`
`Page 3 of 16
`
`Case 1:11-cv-00220 Document 1
`
`Filed 03/17/11 Pace 3 of 16
`
`

`
`15.
`
`By virtue of Kingsdown’s use of the BODY formative marks, Kingsdown’s
`
`family of BODY marks has become distinctive and known in the United States and around the
`
`world, and is associated with Kingsdown and its products.
`
`16.
`
`As a result of Kingsdown’s long and extensive use of its family of BODY marks
`
`in connection with the sales and marketing of its mattresses, box springs and bedding diagnostic
`
`units, Kingsdown’s BODY formative marks have become well known, renowned and are
`
`extremely valuable assets of Kingsdown.
`
`17.
`
`Kingsdown is the owner of following U.S. Trademark Registrations for its BODY
`
`formative marks, which registrations are valid and subsisting.
`
`
`
`
`BODY SYSTEM
`BODY PROFILE
`
`1654338
`2422867
`
`08/20/1991
`01/23/2001
`
`Date
`
`
`
`
`Beds, mattresses and box srins
`Bedding diagnostic system comprising a
`computer and computer software, a
`mattress and box spring, and a pressure
`sensitive pad, sold as a unit for use in
`analyzing and evaluating individuals and
`prescribing preferred mattress
`
`
`
`S
`Mattresses and box srins
`
`
`
`3419236
`
`04/29/2008
`
`
`
`BODYDIAGNOSTICS
`
`
`
`Bedding diagnostic system comprising a
`mattress and box spring, a pressure
`sensitive pad, and a computer and
`computer software, sold as a unit for use
`
`in analyzing and evaluating individuals
`and prescribing preferred mattress
`
`com a onents therefor
`
`
`BODYDUET
`‘
`3419224
`04/29/2008
`
`Mattresses and box srins
`04/29/2008
`3419286
`
`
`Mattresses and box springs
`
`
`
`
`
`
`
`
`
`
`BODYES SENTIAL
`
`Page 4 of 16
`
`Case 1:11-cv-00220 Document1
`
`Filed 03/17/11 Paae4of16
`
`

`
`
`
`
`
`
`
`
`BODYADVANCE
`
`3463115
`
`07/08/2008
`
`Mattresses and box springs not intended
`for use in health care facilities
`
`BODYPREMIER
`BODY CARESS &
`Design
`BODY NATURAL
`
`3472877
`3628399
`
`07/22/2008
`05/26/2009
`
`3794293
`
`05/25/2010
`
`
`
`Mattresses and box springs
`
`
`
`
`
`
`
`A true and correct copy of the above Registrations is attached to this Complaint as Exhibit B.
`
`18.
`
`Kingsdown developed a confidential business plan to launch a family of MATCH
`
`formative marks.
`
`19.
`
`Pursuant to this plan, Kingsdown filed trademark applications for and/or acquired
`
`a family of MATCH formative marks, including BEDMATCH, MATTRESSMATCH,
`
`PILLOWMATCH, SUPPORTMATCH, POSTUREMATCH, PERFECTMATCH and
`
`COMFORTMATCH, in connection with its bedding diagnostic systems, mattresses, box springs,
`
`pillows, and related goods and services. Kingsdown’s earliest date of use of its MATCH
`
`formative marks is 2005.
`
`20.
`
`By virtue of Kingsdown’s use of certain MATCH formative marks, Kingsdown’s
`
`MATCH marks have become distinctive and known in the United States and globally, and are
`
`associated with Kingsdown and its products.
`
`21.
`
`As a result of Kingsdown’s use of certain MATCH formative marks in connection
`
`with the sales and marketing of its products and services, Kingsdown’s MATCH marks have
`
`become well known, renowned and are extremely valuable assets of Kingsdown.
`
`22.
`
`Kingsdown is the owner of following U.S. Trademark Registrations, which
`
`registrations are valid and subsisting.
`
`COMFORTMATCH 3220851
`
`03/20/2007
`
`Descrition of Goods
`Mattresses, illows and mattress
`
`-
`
`Page 5 of 16
`
`Case 1:11-cv-00220 Document 1
`
`Filed 03/17/11 Pace 5 of 16
`
`

`
` individual consumer slee needs
`
`A true and correct copy of the above Registrations is attached to this Complaint as Exhibit C.
`
`23.
`
`Kingsdown has invested substantially in advertising and promoting products
`
`under its BODY formative marks, as well as MATCH formative marks throughout the United
`
`States and the world. Kingsdown’s BODY and MATCH formative marks are very well known
`
`and highly regarded in the bedding industry.
`
`24.
`
`As a result of care and skill exercised by Kingsdown in the conduct of its business,
`
`the uniformly high quality of Kingsdown’s products and services, including those sold and
`
`rendered under the BODY and MATCH fonnative marks, said marks and goods and services
`
`sold thereunder have acquired an excellent reputation among the relevant purchasing public and
`
`the public at large. Kingsdown’s BODY and MATCH formative marks have been and remain
`
`extremely valuable symbols of its business and goodwill.
`
`DEFENDANT’S ACTIVITIES
`
`25.
`
`King Koil is a manufacturer and distributor of bedding products, in direct
`
`competition with Kingsdown.
`
`26.
`
`King Koil has engaged in systematic unlawful and unfair competition specifically
`
`targeted at Kingsdown.
`
`27.
`
`King Koil hired former employees of Kingsdown to obtain proprietary
`
`information about Kingsdown’s business plans, products and services, including specifically,
`
`Kingsdown’s bedding diagnostic system.
`
`Page 6 of 16
`
`Case 1:11-cv-00220 Document 1
`
`Filed 03/17/11 Pace 6 of 16
`
`

`
`28.
`
`Mr. Owen Shoemaker, a former employee of Kingsdown, signed an Employment
`
`Agreement with Kingsdown on December 1, 2005. The Employment Agreement contains
`
`confidentiality provisions, whereby Mr. Shoemaker agreed to keep Kingsdown’s proprietary
`
`information confidential.
`
`29.
`The confidentiality requirements of Mr. Shoemaker’s Employment Agreement
`have not expired or been terminated. S
`
`30.
`
`Upon information and belief, in January, 2009, King Koil hired Mr. Owen
`
`Shoemaker.
`
`31.
`
`On January 1, 2008, Mr. Christopher Henning had signed an Employment
`
`Agreement with Kingsdown in connection with his employment by Kingsdown. The
`
`Employment Agreement contains confidentiality provisions, whereby Mr. Henning agreed to
`
`keep Kingsdown’s proprietary information confidential.
`
`32.
`
`The confidentiality requirements of Mr. Henning’s Employment Agreement have
`
`not expired or been terminated.
`
`33.
`
`Upon information and belief, in or around July 2010, King Koil hired Mr.
`
`Christopher Henning, who had been employed by Kingsdown until July 14, 2010.
`
`34.
`
`Both Messrs. Shoemaker and Henning had access to Kingsdown confidential
`
`information while employed at Kingsdown.
`
`35.
`
`Both Messrs. Shoemaker and Henning have a continuing obligation to keep
`
`Kingsdown’s proprietary information confidential.
`
`36.
`
`After hiring Mr. Shoemaker, King Koil introduced a bedding diagnostic system.
`
`Page 7 of 16
`
`Case1:11—cv-00220 Document1
`
`Filed 03/17/11 Paoe7of16
`
`

`
`37.
`
`King Koil’s bedding diagnostic system infringes Kingsdown’s ‘328 patent and
`
`that infringement irreparably harms Kingsdown.
`
`38.
`
`King Koil had knowledge of the ‘328 patent and its infringement thereof, prior to
`
`the filing ofthis Complaint.
`
`39.
`
`King Koil is infringing the ‘328 patent in violation of 35 U.S.C. § 271 by, inter
`
`alia, making, using, selling, offering to sell, importing, inducing others to use, and contributing
`
`to the use by others in the United States, the bedding diagnostic system which is covered by the
`
`‘328 patent.
`
`40.
`
`After hiring Messrs. Shoemaker and Henning, King Koil developed a plan to
`
`brand its products and services under marks and brands that are extremely close in sight, sound
`
`and meaning to the marks and brands that Kingsdown had been using and/or had confidential
`
`plans to further develop.
`
`41.
`
`Specifically, despite being on actual and constructive notice of Kingdown’s
`
`family of BODY and MATCH formative marks, King Koil sought to register BODYMATCH;
`
`BODYMATCH BY COMFORT SOLUTIONS; BODYMATCH BY KING KOIL;
`
`SLEEPMATCH; and DATAMATCH, all in connection with bedding products}
`
`42.
`
`On January 7, 2011, King Koil filed an application to register BEDMATCH,
`
`alleging a bona fide intent to use.
`
`1 Kingsdown filed an Opposition in the U.S. Patent and Trademark Office against King Koil’s
`applications to register said marks. Opposition Nos. 91198079 and 91198076 are currently pending
`before the Trademark Trial & Appeal Board (“Board”). The Board will suspend the proceedings
`pending the resolution of the instant litigation, shortly.
`
`Page 8 of 16
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`
`

`
`43.
`
`King Koil’s BEDMATCH application included a sworn declaration dated January
`
`7, 2011 (“January 7, 2011 Declaration”) and signed by Owen Shoemaker, which stated in part
`
`“To the best of my knowledge and belief, no other person, firm, corporation or association has
`
`the right to use the mark in commerce, either in identical form 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.”
`
`44.
`
`King Koil’s application for BEDMATCH was filed two days after Kingsdown
`
`launched its BEDMATCH diagnostic system. Kingsdown’s launch of its BEDMATCH system
`
`on January 5, 2011 ‘included an industry event attended by trade and national press such as NBC
`
`News and Google Health, and other industry professionals held at the NASDAQ in New York,
`
`New York.
`
`45.
`
`On information and belief, Mr. Shoemaker knew of Kingsdown’s launch of the
`
`BEDMATCH diagnostic system when he signed the January 7, 2011 declaration.
`
`46.
`
`47.
`
`On information and belief, Mr. Shoemaker’s January 7, 2011 declaration is false.
`
`On information and belief, Mr. Shoemaker and King Koil havecommitted fraud
`
`on the U.S. Trademark Office, punishable by fine and imprisonment or both under 18 U.S.C. §
`
`1001.
`
`COUNT I
`INFRINGEMENT OF THE ‘328 PATENT
`
`48.
`
`Paragraphs 1- 47 of this Complaint are incorporated herein by reference.
`
`49.
`
`King Koil manufactures, uses, sells, offers to sell and/or imports into the United
`
`States for subsequent use and sale, systems and services that directly infringe one or more claims
`
`Page 9 of 16
`
`Case 1:11-cv-00220 Document 1
`
`Filed 03/17/11 Pace 9 of 16
`
`

`
`of the ‘328 patent, including without limitation King Koil’s bedding diagnostic system. This
`
`infringement irreparably harms Kingsdown.
`
`50.
`
`King Koil also indirectly infringes one or more claims of the ‘328 patent by,
`
`without limitation, supplying, encouraging, aiding and abetting others to use King Koil’s
`
`bedding diagnostic system in a manner that directly infringes the ‘328 patent. King Koil’s
`
`bedding diagnostic system is not a staple item of commerce and has no noninfringing uses. This
`
`infringement irreparably harms Kingsdown.
`
`51.
`
`King Koil had knowledge of the ‘328 patent and of its infringing activity prior to
`
`the filing of this Complaint.
`
`52.
`
`King Koil acted with the requisite knowledge and intent to cause others to directly
`
`infringe the ’328.
`
`A
`
`COUNT II
`
`FEDERAL TRADEMARK INFRINGEMENT
`
`53.
`
`Paragraphs 1-52 of this Complaint are incorporated herein by reference. This
`
`cause of action arises under Section 32 of The Lanham Act, 15 U.S.C. §1l14.
`
`54.
`
`King Koil’s use of the marks, BODYMATCH; BODYMATCH BY COMFORT
`
`SOLUTIONS; BODYMATCH BY KING KOIL; SLEEPMATCH; DATAMATCH; and
`
`BEDMATCH, in commerce in connection withlbedding diagnostic systems, beds, box springs,
`
`and mattresses, is likely to cause confusion, mistake or deception of the public as to the source,
`
`origin, association or sponsorship of King Koil’s products and services vis—a-vis Kingsdown’s
`
`bedding diagnostic systems, beds, box springs, and mattresses. The marks at issue, as well as the
`
`products and services under said marks are substantially similar and/or identical.
`
`55.
`
`King Koil acted willfully and with full knowledge of the trademark rights of
`
`Page 10 of 16
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`
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`
`

`
`Kingsdown in its family of BODY and MATCH formative trademarks. King Koil continues to
`
`act willfully and intentionally, notwithstanding that King Koil has actual knowledge of
`
`Kingsdown’s rights in its family of BODY and MATCH formative marks.
`
`56.
`
`The acts of Defendant will continue unless said acts are enjoined by this Court.
`
`Kingsdown’s goodwill is being irreparably injured by the acts of Defendant and the injury cannot
`
`be remedied by monetary award alone.
`
`« COMMON LAW TRADEMARK INFRINGEMENT
`
`COUNT III
`
`57.
`Paragraphs 1 through 56 are incorporated herein by reference. This cause of
`action arises under the common law ofthe State ofNorth Carolina.
`
`I
`
`58.
`
`Plaintiff has used and been the owner of its family of BODY and MATCH
`
`formative trademarks in commerce and in North Carolina since at least as early as 1990 and
`
`2005, respectively, and long prior to the adoption and use of BODYMATCH; BODYMATCH
`
`BY COMFORT SOLUTIONS; BODYMATCH BY KING KOIL; SLEEPMATCH;
`
`DATAMATCH; and BEDMATCH marks by Defendant in the State of North Carolina.
`
`59.
`
`Kingsdown has the exclusive right to use its family of BODY and MATCH
`
`formative marks for bedding diagnostic systems, beds, box springs, and mattresses.
`
`60.
`
`The acts of Defendant in using the BODYMATCH; BODYMATCH BY
`
`COMFORT SOLUTIONS; BODYMATCH BY KING KOIL; SLEEPMATCH; DATAMATCH;
`
`and BEDMATCH marks for bedding diagnostic systems, beds, box springs, and mattresses, in
`
`North Carolina are likely to cause confusion, mistake or to deceive the relevant purchasing
`
`public as to the source, origin or association between Kingsdown, Defendant and Defendant’s
`
`products and services.
`
`Page 11 of 16
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`

`
`61.
`
`The ‘Defendant acted willfully and with full knowledge ofKingsdown’s trademark
`
`rights in its family of BODY and MATCH formative marks, and continue to be done willfully
`and intentionally notwithstanding that Defendant has actual knowledge of Kingsdown’s rights in
`
`its family of BODY and MATCH formative marks.
`
`62.
`
`The acts of Defendant will continue unless said acts are enjoined by this Court.
`
`Kingsdown’s goodwill is being irreparably injured by the acts of Defendant and the injury cannot
`
`be remedied by monetary award alone.
`
`COUNT IV
`
`FEDERAL UNFAIR COMPETITION
`
`63.
`
`Paragraphs 1 through 62 are incorporated herein by reference. This cause of
`
`action arises under Section 43(a) of The Lanham Act, 15 U.S.C. §l 125a.
`
`64.
`
`The acts of Defendant in using the BODYMATCH; BODYMATCH BY
`
`COMFORT SOLUTIONS; BODYMATCH BY KING KOIL; SLEEPMATCH; DATAMATCH;
`
`and BEDMATCH marks to identify and sell bedding diagnostic systems, beds, box springs, and
`
`mattresses are the use of a false designation of origin, false or misleading description of fact, or
`
`false or misleading representation of fact, which is likely to cause confusion, mistake or to
`
`deceive as to the affiliation, connection, or association of Defendant and Kingsdown’s and
`
`Defendant’s products and services in violation of § 43 (a) of the Lanham Act, 15 U.S.C. § 1125.
`
`The acts of Defendant were done willfully and with full knowledge of the rights of Kingsdown in
`
`its family of BODY and MATCH formative trademarks and the acts of Defendant continue to be
`
`done willfully and intentionally, notwithstanding that Defendant has actual knowledge of
`
`Kingsdown’s rights in its family of BODY and MATCH formative marks.
`
`65.
`
`The acts of Defendant will continue unless said acts are enjoined by this Court.
`
`Page 12 of 16
`
`Case1:11—cv-00220 Document1
`
`Filed 03/17/11 Paqe12of16
`
`

`
`Kingsdown’s goodwill is being irreparably injured by the acts of Defendant and the injury cannot
`
`be remedied by monetary award alone.
`
`NORTH CAROLINA UNFAIR COMPETITION
`
`COUNT V
`
`66.
`
`Paragraphs 1 through 65 are incorporated herein by reference. This cause of
`
`action arises under N.C.G.S. § 75-1.1, et seq.
`
`67.
`
`The acts of Defendant in using the BODYMATCH; BODYMATCH BY
`
`COMFORT SOLUTIONS; BODYMATCH BY KING KOIL; SLEEPMATCH; DATAMATCH;
`
`and BEDMATCH marks in the State of North Carolina to identify and sell Defendant’s
`
`diagnostic systems, beds, box springs, and mattresses, is likely to cause confiasion, mistake or to
`
`deceive as to the affiliation, connection, or association of Kingsdown, Defendant and
`
`Defendant’s goods and services, and violates the North Carolina’s law of unfair competition.
`
`68.
`
`Defendant’s acts and omissions constitute unfair and deceptive trade acts and
`
`practices in violation of N.C.G.S. § 75-1.1, entitling Kingsdown to recover treble compensatory
`
`damages pursuant to N.C.G.S. § 75-16, and an award or reasonable attorneys fees pursuant to
`
`N.C.G.S. § 75-161.
`
`69.
`
`Defendant’s acts and omissions as set forth herein were in or affecting commerce.
`
`70.
`The acts of Defendant were done willfully and continue to be done willfully
`notwithstanding that Defendant has actual knowledge ofKingsdown’s rights in its family of
`
`BODY and MATCH formative marks.
`
`71.
`
`The acts of Defendant will continue unless said acts are enjoined by this Court.
`
`Kingsdown’s goodwill is being irreparably injured by the acts of Defendant and the injury cannot
`
`be remedied by monetary award alone.
`
`Page 13 of 16
`
`Case1:11-cv—0022O Document1
`
`Filed 03/17/11 Paoe13of16
`
`

`
`WHEREFORE, Plaintiff Kingsdown, Inc. prays for:
`
`Judgment on this Complaint in its favor and against Kings Koil for the above mentioned
`
`acts of infringement of the ‘328 patent, trademark infringement in violation of the
`
`Lanham Act, unfair competition in violation of the Lanham Act, trademark infringement
`
`in violation of North Carolina’s common laws, and unfair competition in violation of
`
`Chapter 75 of North Carolina’s General Statutes;
`
`b)
`
`A declaration that Kings Koil’s infringement of the ‘328 patent is willful;
`
`A preliminary and a permanent injunction against King Koil and all those in privity,
`
`association, and/or concert with it from further infringement of the ‘328 patent and from
`
`committing any other acts calculated to cause consumers to believe that King Koil or its
`
`products or services are in any manner affiliated, connected, or associated with, or
`
`certified by‘Kingsdown;
`
`d)
`
`Damages adequate to compensate Kingsdown for King Koil’s acts of infringement of the
`
`‘328 patent and an increase of said damages up to three times pursuant to 35 U.S.C. 284;
`
`An award of reasonable attorney fees and taxable costs in view of the intentional and
`
`willful nature of King Koil’s patent infringement, rendering this an exceptional case
`pursuant to 55 U.S.C. 285;
`
`A preliminary and permanent injunction against King Koil and all those in privity,
`
`association and/or concert with it enjoining any and all use of the following marks:
`
`BODYMATCH; BODYMATCH BY COMFORT SOLUTIONS; BODYMATCH BY
`
`KING KOIL; SLEEPMATCH; DATAMATCH; and BEDMATCH marks, or any mark
`
`or name confusingly similar to Kingsdown’s family of BODY and MATCH formative
`
`Page 14 of 16
`
`Case1:11-cv-00220 Document1
`
`Filed 03/17/11 Pace 14 of16
`
`

`
`marks;
`
`g) An accounting of all of King Koil’s revenues from infringing sales;
`
`h) An award of actual damages, trebled in view of the intentional and willful nature of King
`
`Koil’s trademark infringement and unfair competition, pursuant to 15 U.S.C. l l 17;
`
`i) An award of reasonable attorneys fees and taxable costs in View of the intentional and
`
`willful nature of King Koil’s trademark infringement under 15 U.S.C. 1117;
`
`j) An award of actual damages, treble damages and reasonable attorneys fees pursuant to
`
`N.C.G.S. § 75-1.1, et seq. and other applicable North Carolina law; and
`
`k) Such further relief as this Court deems just and appropriate.
`
`Page 15 of16
`
`Case 1:11-cv-00220 Document 1
`
`Filed 03/17/11 Paae 15 of 16
`
`

`
`Respectfully submitted,
`
`KINGSDOWN, INC.
`
`/s/ Jeffrey M. Davis
`Jeffrey M. Davis
`N.C. State Bar No. 31475
`Gilbert J. Andia
`N.C. State Bar No. 16533
`
`Attorneys for Plaintiff
`
`FOR THE FIRM:
`
`HIGGINS BENJAMIN EAGLES & ADAMS, PLLC
`101 W. Friendly Avenue, Suite 500
`Greensboro, North Carolina 27401
`Telephone Number:
`(336)273-1600
`Facsimile Number:
`(336)274-4650
`
`OF COUNSEL
`John F. Rabena
`
`J. Warren Lytle, Jr.
`A
`Kevin G. Smith
`Shahrzad Poormosleh
`
`SUGHRUE, MION PLLC
`
`2100 Pennsylvania Avenue, N.W.
`Washington, D.C. 20037
`Tel: (202) 293-7060
`Fax: (202) 293-7860
`
`Attorneys for Plaintiff
`
`Page 16 of16
`
`Case 1:11-cv-00220 Document 1
`
`Filed O3/17/11 Pace 16 of 16

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