throbber
Trademark Trial and Appeal Board Electronic Filing System. htfQJ/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91201239
`
`Defendant
`
`Gelicity (UK) Ltd
`JEFFREY SONNABEND
`SONNABENDLAW
`600 PROSPECT AVE
`BROOKLYN, NY 11215-6012
`UNITED STATES
`
`jsonnabend@sonnabend|aw.com
`
`Motion to Suspend for Civil Action
`
`
`
`Jeffrey Sonnabend
`
`jsonnabend@sonnabend|aw.com
`/JS/
`
`08/19/201 1
`
`gelicity motion to suspend [2011-08-18].pdf ( 36 pages )(1047389 bytes)
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA425987
`ESTTA Tracking number:
`08/19/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201239
`Defendant
`Gelicity (UK) Ltd
`JEFFREY SONNABEND
`SONNABENDLAW
`600 PROSPECT AVE
`BROOKLYN, NY 11215-6012
`UNITED STATES
`jsonnabend@sonnabendlaw.com
`Motion to Suspend for Civil Action
`Jeffrey Sonnabend
`jsonnabend@sonnabendlaw.com
`/JS/
`08/19/2011
`gelicity motion to suspend [2011-08-18].pdf ( 36 pages )(1047389 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Jell-E-Bath, Inc.,
`
` v.
`
`Gelicity (UK) Ltd,
`
`Opposer,
`
`Applicant.
`
`Opposition No. 91/201239
`
`APPLICANT’S MOTION TO
`SUSPEND
`
`Applicant submits the instant paper moving the Board to suspend the proceedings in view
`
`of a currently pending case in the Easter District of New York concerning the same parties and
`
`same marks at issue here. For the following reasons, the Board should suspend the present
`
`proceedings.
`
`On December 7, 2010, roughly eight months before the present proceeding was
`
`instituted, Applicant filed suit against Opposer in the United States District Court for the Eastern
`
`District of New York. The case, Gelicity UK Limited v. Jell-E-Bath, Inc. et al., CV10-5677,
`
`concerns the same parties as this proceeding and the same mark at issue here. A copy of the
`
`complaint and answer/counterclaims are included herewith as Exhibits 1 and 2.
`
`In the Eastern District of New York action, the parties are disputing precisely the same
`
`issue presently before the Board in this proceeding, namely, whether Applicant’s mark, when
`
`used in connection with the goods listed in the instant application, is likely to cause confusion
`
`with Opposer’s mark. Opposer confirms the relevancy of the Eastern District of New York case
`
`by citing the same in its Notice of Opposition. See Notice of Opposition ¶¶ 12-13 at 3.
`
`

`
`The outcome of the Eastern District of New York action will be dispositive of the same
`
`issues presently before the Board. In particular, the action there will determine whether
`
`Applicant’s mark, when used in conjunction with Applicant’s goods, is likely to cause confusion
`
`with Opposer’s mark, thereby violating section 2(d) of the Lanham Act. This is precisely the
`
`issue now before the Board in this proceeding.
`
`Resolution of the parties’ dispute has recently been complicated. Opposer’s principal has
`
`entered bankruptcy, terminating representation by her attorney in the Eastern District of New
`
`York case and forcing that case to be suspended for just over one month. See Order of July 28,
`
`2011, attached hereto as Exhibit 3. Opposer’s counsel the Easter District of New York case is the
`
`same attorney representing Opposer here. The undersigned, seeking to enter into stipulated
`
`suspension of this proceeding, was informed by Opposer’s counsel that Opposer (i.e., its
`
`principal, Ms. De Alicante) he has been uncommunicative with him. All indications are that
`
`Opposer will terminate its counsel here as Opposer did in the Eastern District of New York case.
`
`What is more, Opposer’s recent conduct in the Eastern District of New York case indicate that
`
`Opposer will be unable and/or unwilling to prosecute this matter before the Board. Thus,
`
`moving forward with this proceeding presently would not likely lead expeditiously to resolution.
`
` 2
`
`

`
`For these reasons, pursuant to 37 CFR § 2.117, Applicant respectfully requests that the
`
`present proceedings be suspended pending outcome of the Eastern District of New York Action.
`
`Dated: August 18, 2011
`
`Respectfully Submitted,
`Applicant Gelicity UK Ltd.,
`by its Attorney
`
`
`
`
`_______________________
`Jeffrey Sonnabend
`SonnabendLaw
`600 Prospect Ave.
`Brooklyn, NY 11215
`718-832-8810
`jsonnabend@sonnabendlaw.com
`
` 3
`
`

`
`EXHIBIT 1
`
`EXHIBIT 1
`
`

`
`*
`
`IN!'LED
`u.s. D/STRfRK'S OFFICE
`CTCOURTEDf~ITED STATES DISTRICT COURT
`
`DEC 0S2C.J ESTERN DlSTRlCTCNEW YORK
`
`77
`
`Plaintiff,
`
`v.
`
`Jell-E-Bath, Inc., and
`Elizabeth DeAlicante,
`
`Defendants.
`--------------------------------------------------------](
`
`CIVTL COMPLAINT
`
`cv
`
`JURy TRIAL DEMANDED
`
`~'-A~~ER. J.
`M~N \. r\:~·
`
`The Parties.
`
`J.
`
`Plaintiff, Gelicity UK Limited, is a United Kingdom corporation with offices
`
`located at Units G40 & G41, Ashmount Enterprise Park, Aber Road, Aber Industrial Estate, Flint
`
`CH6 SYL, UK.
`
`2.
`
`Defendant, Jell-E-Bath, Inc. ("Jell-E-Bath"), is an Oregon corporation with a
`
`principle place of business located at 2546 NE 20"' Avenue in Portland, Oregon.
`
`3.
`
`Upon information and belief. Defendant Elizabeth De Alicante is domiciled in
`
`Oregon.
`
`4.
`
`Upon information and belief, Defendant Elizabeth De Alicante conducts
`
`significant business in the nature of licensing from within this judicial district, through her
`
`attorney, Anthony Cannatella.
`
`Nature of Action
`
`5.
`
`This is an action for a declaratory judgment oftrademark non-infringement,
`
`invalidity of a United States Trademark Registration, non-infringement of a United States Patent,
`
`patent misuse and fraud.
`
`

`
`Jurisdiction and Venue
`
`6.
`
`The Court has jurisdiction over this action under 28 U.S.C. § 1331, 28 U.S.C. §
`
`1338(a), and 28 U.S.C. § 2201.
`
`
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`Personal jurisdiction is proper under CPLR §§ 301 and 302.
`
`Venue in this judicial district is proper pursuant to 28 U.S.C. § 1391.
`
`Facts
`
`Plaintiff produces and markets children’s bath toys under the mark GELLI BAFF.
`
`Upon information and belief, Defendant Jell-E-Bath sells home spa treatments.
`
`Upon information and belief, Defendant Elizabeth De Alicante is the president of
`
`Defendant Jell-E-Bath, Inc.
`
`12.
`
`Defendant Jell-E-Bath claims ownership of United States Trademark Registration
`
`3,143,942 (the ‘942 Registration”) for the mark JELLYBATH for “bath soaks, bath beads, body
`
`salt scrubs, bath lotions, bath milks, bath oils, bath crystals, body oils, essential oils for inclusion
`
`in baths, eye compresses for cosmetic purposes, mineral bath salt treatments not for medicinal
`
`use and exfoliating bath soaks”.
`
`13.
`
`Upon information and belief, Defendant Jell-E-Bath filed the application leading
`
`to the ‘942 Registration (the “‘942 Application”) on or about September 9, 2004.
`
`14.
`
`Upon information and belief, Defendant Jell-E-Bath filed the ‘942 Application
`
`under the sole direction of Defendant De Alicante.
`
`15.
`
`Defendant Jell-E-Bath filed the ‘942 Application under section 1(a) of the Lanham
`
`Act.
`
`2
`
`

`
`16.
`
`In the ‘942 Application, Defendant Jell-E-Bath, through its president, Defendant
`
`De Alicante, swore under penalty of perjury that it was using the JELLYBATH mark in
`
`commerce, inter alia, for “eye compresses for cosmetic purposes,” “salt scrubs,” and “body
`
`oils.”
`
`17.
`
`Upon information and belief, Defendant Jell-E-Bath was not at the time it filed the
`
`‘942 Application using the JELLYBATH mark in commerce for “eye compresses for cosmetic
`
`purposes,” “salt scrubs,” and/or for “body oils”.
`
`18.
`
`Upon information and belief, at the time Defendant De Alicante made the
`
`aforementioned statements under penalty of perjury, she knew them to be false.
`
`19.
`
`Upon information and belief, at the time Defendant De Alicante made the
`
`aforementioned statements under penalty of perjury, she made them with the intention and
`
`purpose of deceiving the United States Trademark Office.
`
`20.
`
`Upon information and belief, but for Defendant De Alicante’s aforementioned
`
`statements under penalty of perjury, the United States Trademark Office would not have issued
`
`the ‘942 Registration as otherwise filed.
`
`21.
`
`Upon information and belief, Defendant Jell-E-Bath has never used the
`
`JELLYBATH mark in commerce for “eye compresses for cosmetic purposes,” “salt scrubs,”
`
`and/or for “body oils”.
`
`22.
`
`On or about February 13, 2007, Defendant Jell-E-Bath filed with the United States
`
`Trademark Office an intent to use application for the mark JELLIBAFF (the “Intent to Use
`
`Application”) for “Bath soaks for adults and children, namely, non-medicated body soaks, bath
`
`beads, salt scrubs, namely, body scrubs, bath lotions, bath milks, bath oils, bath crystals, body
`
`3
`
`

`
`oils, essential oils for inclusion in baths, eye compresses for cosmetic purposes, mineral bath
`
`treatments, namely, mineral salt in the nature of bath salts not for medical purposes and
`
`exfoliating bath soaks, non-medicated body soaks”.
`
`23.
`
`The Intent to Use Application was allowed on November 27, 2007 and abandoned
`
`on August 11, 2008.
`
`24.
`
`Upon information and belief, as of the date of filing its intent to use application
`
`for JELLIBAFF, Defendant Jell-E-Bath had no bona fide intent to use the JELLIBAFF mark in
`
`commerce as claimed in the application.
`
`25.
`
`In October 2010, Defendant Jell-E-Bath contacted Plaintiff alleging that Plaintiff’s
`
`use of its GELLIE BAFF mark infringed Defendant’s trademark rights.
`
`26.
`
`Upon information and belief, Defendant De Alicante is owner by assignment of
`
`US Patent No. 6,281,177 (the “’177 Patent”).
`
`27.
`
`Every claim of the ‘177 patent requires, inter alia, the use of “.001 to 2 percent by
`
`weight L-menthol.”
`
`28.
`
`29.
`
`Plaintiff’s product contains no L-menthol or equivalent thereof.
`
`Defendant, through its attorney, has stated that it never conducted a chemical
`
`analysis of Plaintiff’s allegedly infringing product to determine its chemical composition.
`
`30.
`
`On or about November 3, 2010, Defendants’ attorney, Anthony Cannatella, stated
`
`to Plaintiff:
`
`Any use of the confusingly similar Gelli Baff or the patent
`infringing goods manufactured and/or distributed in the United
`States will not be tolerated by JELL-E-BATH. JELL-E-BATH has
`instructed us to take all steps necessary to protect its rights,
`including seeking injunctive relief, as well as compensatory
`damages, punitive damages, and attorney's fees.
`
`4
`
`

`
`First Count
`Declaratory Judgment
`Trademark Non-Infringement
`as to Defendant Jell-E-Bath
`
`31.
`
`32.
`
`Plaintiff repeats the allegations above as if fully set forth herein.
`
`There no likelihood of confusion between Plaintiff’s and Defendant Jell-E-Bath’s
`
`marks as each is used in commerce.
`
`33.
`
`Plaintiff’s use of the mark GELLI BAFF does not infringe upon any enforceable,
`
`subsisting rights of defendant in the JELLYBATH mark.
`
`34.
`
`Defendant Jell-E-Bath’s baseless allegations of trademark infringement and
`
`threats of litigation have and continue to interfere with Plaintiff’s ability to conduct its business.
`
`35.
`
`36.
`
`37.
`
`Plaintiff has been and continues to be harmed by Defendant Jell-E-Bath’s actions.
`
`Plaintiff and Defendant Jell-E-Bath having adverse legal interests.
`
`Defendant Jell-E-Bath’s actions create a substantial controversy, between Plaintiff
`
`and Defendant Jell-E-Bath, of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`Second Count
`Declaratory Judgment
`Invalidity of the ‘942 Registration
`as to Defendant Jell-E-Bath
`
`38.
`
`39.
`
`Plaintiff repeats the allegations above as if fully set forth herein.
`
`Upon information and belief, US Trademark Registration No. 3,143,942 was
`
`procured through fraud and is therefore invalid and subject to cancellation.
`
`40.
`
`Plaintiff has been and continues to be harmed by Defendant Jell-E-Bath’s actions.
`
`5
`
`

`
`41.
`
`42.
`
`Plaintiff and Defendant Jell-E-Bath having adverse legal interests.
`
`Defendant Jell-E-Bath’s actions create a substantial controversy, between Plaintiff
`
`and Defendant Jell-E-Bath, of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`Third Count
`Declaration of Patent Non-Infringement
`as to Defendant De Alicante
`
`43.
`
`44.
`
`Plaintiff repeats the allegations above as if fully set forth herein.
`
`Plaintiff’s product does not infringe any of the ‘177 patent’s claims either literally
`
`or under the doctrine of equivalents.
`
`45.
`
`46.
`
`47.
`
`Plaintiff has been and continues to be harmed by Defendant De Alicante’s actions.
`
`Plaintiff and Defendant De Alicante having adverse legal interests.
`
`Defendant De Alicante’s actions create a substantial controversy, between Plaintiff
`
`and Defendant De Alicante, of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`Fourth Count
`Patent Misuse
`as to Defendant De Alicante
`
`48.
`
`49.
`
`Plaintiff repeats the allegations above as if fully set forth herein.
`
`Defendant De Alicante’s actions constitute a bad faith effort to interfere with
`
`Plaintiff Gelicity’s business and extract an unjustified patent royalty.
`
`50.
`
`Defendant De Alicante’s infringement threats are objectively baseless, and its
`
`attempted enforcement was undertaken with anti-competitive intent.
`
`6
`
`

`
`Second Count Declaratory
`Judgment Invalidity of the ‘942 Registration
`as to Both Defendants
`
`Plaintiff repeats the allegations above as if fully set forth herein.
`
`Defendants’ false statements to the United States Trademark Office constitute
`
`51.
`
`52.
`
`fraud.
`
`53.
`
`Plaintiff has been and continues to be harmed by Defendants’ fraud in that the
`
`fraud directly led to the issuance of the ‘942 Registration which forms the basis in part for
`
`Defendants’ threats against Plaintiff.
`
`54.
`
`55.
`
`Plaintiff and Defendant De Alicante having adverse legal interests.
`
`Defendant De Alicante’s actions create a substantial controversy, between Plaintiff
`
`and Defendant De Alicante, of sufficient immediacy and reality to warrant the issuance of a
`
`declaratory judgment.
`
`Prayer For Relief
`
`WHEREFORE, Gelicity respectfully requests that the Court enter judgment in its favor
`
`as follows:
`
`A.
`
`Declaring that Plaintiff’s GELLI BAFF mark does not infringe the JELLYBATH
`
`marks as each is used in commerce;
`
`B.
`
`Preliminarily and permanently enjoining Defendants from asserting United States
`
`Trademark Registration No. 3,143,942 against Plaintiff, or otherwise interfering with Gelicity’s
`
`use of the trademark GELLI BAFF, and from opposing, seeking to cancel, or otherwise objecting
`
`to any attempt by Gelicity to register the GELLI BAFF mark;
`
`C.
`
`Canceling the ‘942 Registration;
`
`7
`
`

`
`D.
`
`E.
`
`Declaring that Plaintiff’s bath toy product does not infringe the ‘177 Patent;
`
`Awarding Plaintiff actual and punitive damages for Defendants acts of patent
`
`misuse and unfair competition;
`
`F.
`
`Ordering Defendants to pay Plaintiff’s attorneys’ fees, costs and other expenses
`
`incurred as a result of this controversy; and
`
`G.
`
`Granting other and further relief as this Court may deem just and proper.
`
`Dated: December 7, 2010
`
`Respectfully submitted,
`Plaintiff by its attorney,
`
`___________________________________
`Jeffrey Sonnabend (JS1243)
`SonnabendLaw
`600 Prospect Avenue
`Brooklyn, NY 11215-6012
`718-832-8810
`JSonnabend@SonnabendLaw.com
`
`8
`
`

`
`EXHIBIT 2
`
`EXHIBIT 2
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 1 of 19
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF NEW YORK
`
`-------------------------------------------------------------------------)(
`
`Gelicity UK Limited,
`
`Plaintiff
`
`v.
`
`lell-E-Bath, Inc. and
`Elizabeth De Alicante
`
`Defendants/Third Party Plaintiffs
`
`lell-E-Bath, Inc. and Elizabeth De Alicante
`
`Defendants/Third Party Plaintiffs
`
`v.
`
`Gelicity UK Limited, Wayne Walton, and Paul Morris,
`
`Third Party Defendants.
`
`-------------------------------------------------------------------------)(
`
`Case No. CVI0-5677
`(ILG)(RLM)
`
`ANSWER TO
`AMENDED
`COMPLAINT,
`COUNTERCLAIM
`AND THIRD
`PARTY
`COMPLAINT
`
`Defendants, lell-E- Bath, Inc. ("lELL-E-BATH") and Elizabeth De Alicante ("De
`
`Alicante") (Jell-E-Bath, Inc. and De Alicante hereinafter collectively referred to in this
`
`answer as "Defendants"), by their attorneys, the Law Offices of Anthony S. Cannatella,
`
`hereby respond to the Amended Complaint as follows:
`
`1.
`
`Defendants deny knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraph 1 of the Amended Complaint.
`
`2.
`
`Defendants admit the allegations set forth in Paragraphs 2 and 3 of the
`
`Amended Complaint.
`
`1
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 2 of 19
`
`3.
`
`Defendants deny the allegations set forth in Paragraph 4 of the Amended
`
`Complaint, except admit that JELL-E-BATH does conduct business within this judicial
`
`district to the extent its trademarked and patented products are sold therein.
`
`4.
`
`No responsive pleading is required to Paragraph 5 of the Amended
`
`Complaint.
`
`5.
`
`Defendants admit to the allegations of Paragraphs 6 and 7 of the Amended
`
`Complaint to the extent that they are not conclusions of law.
`
`6.
`
`Defendants reserve its rights with respect to the allegations set forth in
`
`Paragraph 8 of the Amended Complaint inasmuch as Defendants do not have sufficient
`
`information to form a belief as to the truth of such allegations.
`
`7.
`
`Defendants deny the allegations set forth in Paragraph 9 of the Amended
`
`Complaint, except admit that Plaintiffs manufacture and sell an infringing product that
`
`converts bath water into a jell under the infringing mark GELLI BAFF .
`
`8.
`
`Defendants admit to the allegations set forth in Paragraph 10 of the
`
`Amended Complaint and further aver that JELL-E-BATH sells other products under its
`
`JELLYBATH trademark as well.
`
`9.
`
`Defendants admit to the allegations set forth in Paragraphs 11, 12, and 13
`
`of the Amended Complaint.
`
`10.
`
`Defendants deny the allegations set forth in Paragraph 14 of the Amended
`
`Complaint.
`
`11.
`
`Defendants admit to the allegations set forth in Paragraphs 15 and 16 of
`
`the Amended Complaint.
`
`2
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 3 of 19
`
`12.
`
`Defendants deny the allegations set forth in Paragraphs 17, 18, and 19 of
`
`the Amended Complaint.
`
`13.
`
`Defendants deny knowledge or information sufficient to form a belief as
`
`to the truth of allegations contained in Paragraph 20 of the Amended Complaint.
`
`14.
`
`Defendants deny the allegations set forth in Paragraph 21 of the Amended
`
`Complaint.
`
`15.
`
`Defendants deny knowledge or information sufficient to form a belief as
`
`to the truth of the allegations set forth in Paragraphs 22 and 23 of the Amended
`
`Complaint.
`
`16.
`
`Defendants deny the allegations set forth in Paragraph 24 of the Amended
`
`Complaint inasmuch as Defendants assert that the JELLYBATH trademark owned by
`
`Defendants and the JELLIBAFF or GELLI BAFF marks proposed by Plaintiffs are
`
`confusingly similar and Defendants have been using the JELLYBATH mark since
`
`December 15, 1998.
`
`17.
`
`Defendants admit to the allegations set forth in Paragraphs 25 and 26 of
`
`the Amended Complaint.
`
`18.
`
`Defendants deny the allegations set forth in Paragraph 27 of the Amended
`
`Complaint.
`
`19.
`
`Defendants deny knowledge or information sufficient to form a belief as
`
`to the truth of the allegations contained in Paragraph 28 of the Amended Complaint.
`
`20.
`
`Defendants admit the allegations set forth in Paragraphs 29,30,31,32,33
`
`and 34 of the Amended Complaint.
`
`3
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 4 of 19
`
`21.
`
`Defendants deny the allegations set forth in Paragraphs 35, 36, 37, 38 and
`
`39 of the Amended Complaint.
`
`As to the First Count
`Declaratory Judgment
`Trademark Non-Infringement
`As to Defendant JELL-E-BATH
`
`22.
`
`In response to the allegations contained in Paragraph 40 of the Amended
`
`Complaint, Defendants repeat and reallege each and every response to the allegations
`
`contained in Paragraphs" 1" throughout "39" of the Amended Complaint as if fully set
`
`forth herein.
`
`23.
`
`Defendants deny the allegations set forth in Paragraphs 41, 42, 43, and 44
`
`of the Amended Complaint.
`
`24.
`
`Defendants deny the allegations set forth in Paragraph 45 of the Amended
`
`Complaint, except admit that Plaintiffs' infringing actions are adversely affecting
`
`Defendants rights.
`
`25.
`
`Defendants deny the allegations set forth in Paragraph 46 of the Amended
`
`Complaint, except admit that Plaintiff's infringing actions are adversely affecting
`
`Defendants' rights for which there is no adequate remedy at law.
`
`As to the Second Count
`Declaratory Judgment
`Invalidity of the '942 Registration
`As to Defendant JELL-E-BATH
`
`26.
`
`In response to the allegations contained in Paragraph 47 of the Amended
`
`Complaint, Defendants repeat and reallege each and every response to the allegations
`
`contained in Paragraphs "I" throughout "46" of the Amended Complaint as if fully set
`
`forth herein.
`
`4
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 5 of 19
`
`27.
`
`Defendants deny the allegations set forth in Paragraphs 48 and 49 of the
`
`Amended Complaint.
`
`28.
`
`Defendants deny the allegations set forth in Paragraph 50 of the Amended
`
`Complaint, except admit that Plaintiff's infringing actions are adversely affecting
`
`Defendants' rights.
`
`29.
`
`Defendants deny the allegations set forth in Paragraph 51 ofthe Amended
`
`Complaint, except admit that Plaintiff's infringing actions are adversely affecting
`
`Defendants' rights for which there is no adequate remedy at law.
`
`As to the Third Count
`Declaration of Patent Non-Infringement
`As to Defendant De Alicante
`
`30.
`
`In response to the allegations contained in Paragraph 52 of the Amended
`
`Complaint, Defendants repeat and reallege each and every response to the allegations
`
`contained in Paragraphs "I" throughout "51" of the Amended Complaint as if fully set
`
`forth herein.
`
`31.
`
`Defendants deny the allegations set forth in Paragraphs 53 and 54 of the
`
`Amended Complaint.
`
`32.
`
`Defendants deny the allegations set forth in Paragraph 55 ofthe Amended
`
`Complaint, except admit that Plaintiff's infringing actions are adversely affecting
`
`Defendants' rights.
`
`33.
`
`Defendants deny the allegations set forth in Paragraph 56 of the Amended
`
`Complaint, except admit that Plaintiff's infringing actions are adversely affecting
`
`Defendants' rights for which there is no adequate remedy at law.
`
`5
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 6 of 19
`
`As to the Fourth Count
`Patent Misuse
`As to Defendant De Alicante
`
`34.
`
`In response to the allegations contained in Paragraph 57 of the Amended
`
`Complaint, Defendants repeat and reallege each and every response to the allegations
`
`contained in Paragraphs "1" throughout "56" of the Amended Complaint as if fully set
`
`forth herein.
`
`35.
`
`Defendants deny the allegations set forth in Paragraphs 58 and 59 of the
`
`Amended Complaint.
`
`As to the Fifth Count
`False Marking under 35 U.S.c. § 292
`As to Both Defendants
`
`36.
`
`In response to the allegations contained in Paragraph 60 of the Amended
`
`Complaint, Defendants repeat and reallege each and every response to the allegations
`
`contained in Paragraphs" I" throughout "59" of the Amended Complaint as if fully set
`
`forth herein.
`
`37.
`
`Defendants deny the allegations set forth in Paragraph 61 of the Amended
`
`Complaint, except admit that Defendant has made the aforementioned statements on the
`
`Jellybath Website and the aforementioned patent markings.
`
`38.
`
`Defendants deny the allegations set forth in Paragraphs 62, 63 and 64 of
`
`the Amended Complaint.
`
`Affirmative Defenses
`
`Defendant affirmatively states the following defenses without assuming the
`
`burden of proof on such defenses that would otherwise rest with Plaintiff.
`
`6
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 7 of 19
`
`First Affirmative Defense
`
`39.
`
`Defendants withdraw the first affirmative defense which was stated in the
`
`Answer, Counterclaim and Third Party Complaint filed on January 18,2011.
`
`Second Affirmative Defense
`
`40.
`
`Defendants withdraw the second affirmative defense which was stated in
`
`the Answer, Counterclaim and Third Party Complaint filed on January 18,2011.
`
`WHEREFORE, Defendants respectfully request a judgment that denies
`
`the Plaintiff the equitable relief requested in the Amended Complaint and such other and
`
`further relief to Defendants as the Court deems just and proper.
`
`COUNTERCLAIMS AND THIRD PARTY COMPLAINT
`
`The Defendants/Counterclaimants and Third Party Plaintiffs, Jell-E-Bath, Inc. and
`
`Elizabeth De Alicante (Jell-E-Bath, Inc. and Elizabeth De Alicante collectively
`
`hereinafter referred to as "Third Party Plaintiffs"), by their attorneys, the Law Offices of
`
`Anthony S. Cannatella, for their counterclaims against Plaintiff, Gelicity UK Limited,
`
`and for their third party complaint against the third party defendants, Wayne Walton and
`
`Paul Morris (Gelicity UK Limited, Wayne Walton and Paul Morris hereinafter
`
`collectively referred to herein as "Third Party Defendants"), allege as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`In this action, Third Party Plaintiffs seek, inter alia, injunctive relief and
`
`damages for acts of trademark infringement engaged by Third Party Defendants in
`
`7
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 8 of 19
`
`violation of the laws of the United States and acts of unfair competition and trademark
`
`infringement in violation of the laws of the State of New York.
`
`JURISDICTION AND VENUE
`
`2.
`
`Jurisdiction and Venue for the federal trademark action was set forth in the
`
`underlying Amended Complaint.
`
`3.
`
`Third Party Plaintiffs are asserting claims of unfair competition and
`
`trademark infringement under the common law of the State of New York. This Court has
`
`original jurisdiction over these claims pursuant to 28 U.S.C. § 1338(b).
`
`THE PARTIES
`
`4.
`
`Defendant/Counterclaimant/Third Party Plaintiff, Jell-E-Bath, Inc.,
`
`("JELL-E-BATH") is a corporation organized under the laws of the State of Oregon and
`
`is one of the Defendants in the above captioned proceedings.
`
`5.
`
`Defendant/Counterclaimant/Third party Plaintiff, Elizabeth De Alicante is
`
`an individual domiciled in the State of Oregon residing at 2546 NE 20th Avenue,
`
`Portland, Oregon 97212, and is a principal of JELL-E-BATH.
`
`6.
`
`Upon information and belief, Plaintiff/Counterclaim Defendant, Gelicity
`
`UK Limited ("Gelicity"), is a United Kingdom corporation with offices located at Units
`
`G40 and G41, Ashmount Enterprise Park, Aber Road, Aber Industrial Estate, Flint CH6
`
`5YL, UK.
`
`7.
`
`Upon information and belief Third Party Defendant Wayne Walton is an
`
`individual domiciled in the United Kingdom and a principal of Gelicity.
`
`8.
`
`Upon information and belief Third Party Defendant Paul Morris is an
`
`individual domiciled in the United Kingdom and a principal of Gelicity.
`
`8
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 9 of 19
`
`FACTS RELEVANT TO COUNTERCLAIMS AND THIRD PARTY CLAIMS
`
`9.
`
`JELL-E-BATH is the owner of the "JELLYBATH" trademark under
`
`federal registration number 3,142,942 (the "JELLYBATH" trademark) for bath soaks and
`
`related items.
`
`10.
`
`The JELLYBATH trademark is valid, subsisting and in full force and
`
`effect and the JELLYBATH trademark and the goodwill of the business of Third Party
`
`Plaintiffs in connection with which the "JELLYBATH" trademark is used has never been
`
`abandoned.
`
`11.
`
`The JELLYBATH trademark has been used in commerce in the United
`
`States by Third Party Plaintiffs since at least December 15, 1998.
`
`12.
`
`As a result of Third Party Plaintiffs' exclusive and extensive use and
`
`promotion of the JELLYBATH trademark in connection with bath soaks and related
`
`items, the JELLYBATH trademark has acquired great value; it is well known to the
`
`consuming public and the trade.
`
`13.
`
`Third Party Plaintiffs continue to preserve and maintain their rights with
`
`respect to the JELLYBATH trademark.
`
`14.
`
`Third Party Plaintiffs maintain stringent quality control standards for all
`
`JELL-E-BATH products bearing the JELLYBATH trademark.
`
`15.
`
`As a result of the prestige and quality that have come to be represented by
`
`the JELLYBATH trademark, the JELLYBATH trademark and the goodwill associated
`
`therewith have substantial monetary value.
`
`16.
`
`Third Party Defendants have engaged in a course of conduct that is
`
`infringing the trademark rights of the Third Party Plaintiffs.
`
`9
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 10 of 19
`
`17.
`
`Upon information and belief, Third Party Defendants have manufactured
`
`and sold goods under a mark "GELLI BAFF" that are substantially similar to Third Party
`
`Plaintiffs' JELLYBATH trademarked goods.
`
`18.
`
`Upon information and belief, notwithstanding being notified of its
`
`infringing activities by Third Party Plaintiffs, Third Party Defendants continued in its
`
`manufacture and sale of infringing goods.
`
`19.
`
`Upon information and belief, Third Party Defendants, in a concerted effort
`
`to continue its infringing activities, has once again attempted to file infringing trademark
`
`applications under Serial Nos. 85,178,681 and 85,178,665 claiming the goods as "toys"
`
`and "bath-time playthings" and not fully describing the products it intends to sell under
`
`the mark GELLI BAFF, namely a product that turns bathwater into ajell.
`
`AS AND FOR A FIRST COUNTERCLAIM AND THIRD PARTY CAUSE OF
`ACTION
`
`"Trademark Infringement"
`(For violation of 15 U.S.c. § 1114)
`
`20.
`
`Third Party Plaintiffs repeat and reallege each and every allegation
`
`contained in Paragraphs 1 through 21 of this Counterclaim and Third Party Complaint
`
`above as if fully set forth herein.
`
`21.
`
`Third Party Defendants used in commerce infringements of Third Party
`
`Plaintiffs' registered trademark in connection with the manufacturing and sale of goods
`
`on which such use is likely to cause confusion, or cause mistake, or to deceive.
`
`22.
`
`Third Party Defendants have made substantial profits as a result of its
`
`infringing conduct.
`
`10
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 11 of 19
`
`23.
`
`Third Party Defendants' unlawful conduct has caused damage to Third
`
`Party Plaintiffs.
`
`24.
`
`By reason of the foregoing, Third Party Defendants have violated 15
`
`u.s.c. §1114(a), and are liable, pursuant to 15 U.S.C. §1117(a):
`
`a) To account for their profits and to disgorge the same to Third Party
`
`Plaintiffs;
`
`b) To compensate Third Party Plaintiffs for their damages;
`
`c) To pay Third Party Plaintiffs' costs in bringing this action;
`
`d) To pay Third Party Plaintiffs' reasonable attorneys' fees.
`
`25.
`
`Furthermore, unless Third Party Defendants are preliminary and
`
`permanently restrained from continuing their wrongful acts, Third Party Defendants will
`
`continue to offer for sale and sell merchandise bearing infringements of Third Party
`
`Plaintiffs' trademark, and the damage to Third Party Plaintiffs, which is irreparable, will
`
`Increase.
`
`26.
`
`27.
`
`Third Party Plaintiffs have no adequate remedy at law.
`
`Accordingly, in addition to the damages set forth above, Third Party
`
`Plaintiffs are entitled to preliminary and permanent injunctive relief pursuant to 15
`
`U.S.c. §1116(a) to prevent violation of the rights of the registrant of the trademarks set
`
`forth above
`
`11
`
`

`
`Case 1:10-cv-05677-ILG -RLM Document 21 Filed 05/10/11 Page 12 of 19
`
`AS AND FOR A SECOND COUNTERCLAIM AND THIRD PARTY CAUSE OF
`ACTION
`
`"Patent Infringement"
`(For violation of35 U.S.c. § 271)
`
`28.
`
`Third Party Plaintiffs withdraw without prejudice the Second
`
`Counterclaim and Third Party Cause of Action alleged in the Answer, Counterclaim and
`
`Third Party Complaint filed on January 18,2011, and reserve the right to file a Patent
`
`Infringement cause of action for violation of 35 U.S.C. § 271 upon testing of the Third
`
`Party Defendant's products.
`
`AS AND FOR A THIRD COUNTERCLAIM AND THIRD PARTY CAUSE OF
`ACTION
`
`"Federal Trademark Dilution"
`(For violation of 15 U.S.c. § 1125)
`
`29.
`
`Third Party Plaintiffs withdraw with prejudice the Third Counterclaim and
`
`Third Party Cause of Action alleged in the Answer, Counterclaim and Third Party
`
`Complaint filed on January 18,2011.
`
`AS AND FOR A FOURTH COUNTERCLAIM AND THIRD PARTY CAUSE OF
`ACTION
`
`"Common Law Trademark Infringement"
`
`30.
`
`Third Party Plaintiffs repeat and reallege each and every allegation
`
`contained in Paragraphs 1 through 29 of this Counterclaim and Third Party Complaint
`
`above as if fully set forth herein.
`
`31.
`
`Third Party Plaintiffs own the common law trademark rights to the
`
`JELLYBATH trademark and have the exclusive right t

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