Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA434702
`ESTTA Tracking number:
`10/10/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201691
`Defendant
`Amendia, Inc.
`Anthony J. DoVale
`FSB FisherBroyles, a limited liability p
`The Pinnacle Building, Fifth Floor 3455 Peachtree Road, NE
`Atlanta, GA 30326
`
`trademark@fsblegal.com
`Motion to Suspend for Civil Action
`J. Scott Anderson
`Anderson@FSBLegal.com, Trademark@FSBLegal.com
`/J. Scott Anderson/
`10/10/2011
`M_Suspend.pdf ( 4 pages )(2062530 bytes )
`Civil_Complaint_Utah.pdf ( 25 pages )(3206447 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA434702
`ESTTA Tracking number:
`10/10/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201691
`Defendant
`Amendia, Inc.
`Anthony J. DoVale
`FSB FisherBroyles, a limited liability p
`The Pinnacle Building, Fifth Floor 3455 Peachtree Road, NE
`Atlanta, GA 30326
`
`trademark@fsblegal.com
`Motion to Suspend for Civil Action
`J. Scott Anderson
`Anderson@FSBLegal.com, Trademark@FSBLegal.com
`/J. Scott Anderson/
`10/10/2011
`M_Suspend.pdf ( 4 pages )(2062530 bytes )
`Civil_Complaint_Utah.pdf ( 25 pages )(3206447 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of: Application Serial No. 85/135,485
`For the Mark: AMENDIA
`
`Filed: September 22, 2010
`Published in the Official Gazette: May 24, 2011
`
`AMEDICA CORPORATION,
`
`Opposer
`
`V.
`
`AMENDIA, INC.,
`
`Applicant
`
`Opposition No. 91/201,691
`
`MOTION TO SUSPEND
`
`The Applicant, AMENDIA, INC., pursuant to 37 C.F.R. § 2.117, hereby files this
`
`motion to suspend these Board proceedings until termination of the civil action currently
`
`pending between the parties and, as grounds, states as follows:
`
`1.
`
`The Opposer initiated these proceedings by filing a Notice of Opposition
`
`dated September 20, 2011.
`
`2.
`
`Previously, on or about June 23, 2011, the Opposer filed a civil action
`
`against the Applicant in the United States District Court in and for the District of Utah;
`
`Civil Action File No. 2:11-CV-00578—DB. A copy of the civil Complaint is attached
`
`hereto as Exhibit A.
`
`3.
`
`Suspending these proceedings now, before the Answer is due and before
`
`discovery begins, would promote efficiency and avoid needless duplication of effort. The
`
`Answer is due October 30, 2011. Discovery is set to begin November 29, 2011. See
`
`
`
`Notice and Trial Dates, at p. 2 (“Time to Answer: 10/30/2011. Deadline for Discovery
`
`Conference 11/29/2011. Discovery Opens 11/29/2011.”).
`
`4.
`
`In response to a request for consent to suspend these proceedings, the
`
`Opposer declined to consent.
`
`These proceedings should be suspended pending the outcome of the civil action
`
`for three reasons. First; the civil action involves the same issue. The civil action alleges,
`
`among other things, trademark infringement based on likelihood of confusion — the same
`
`grounds alleged by the Opposer in these proceedings. See Civil Complaint (Exhibit A) at
`
`p. 9 (“34.
`
`Amendia’s use of the Mark has caused and is likely to continue causing
`
`confusion or mistake, or deception, in violation of Section 32(1) of the Lanham Act, 15
`
`U.S.C. § 1114.”).
`
`Second; the Opposer is asking the federal district court to issue an order directing
`
`the Office to refuse the registration — the same relief sought in these proceedings. See
`
`Civil Complaint (Exhibit A) at p. 18 (“3. For an order directing the Commissioner of
`
`Trademarks not to allow the registration of Serial No. 85/ 135,485 for AMENDIA;”).
`
`Third and finally; suspension is just and proper in these circumstances. The
`
`Applicant has met its burden of showing that the civil action “may have a bearing on”
`
`these proceedings. 37 C.F.R. § 2.117(a). The Board will ordinarily suspend proceedings
`
`when the outcome of a civil action may have a bearing on the issues before the Board.
`
`TBMP fll 510.02(a) Suspension, Note 7: See, e. g., General Motors Corp. v. Cadillac Club
`
`Fashions, Inc., 22 U.S.P.Q.2d 1933 (TTAB 1992) (where the relief sought in federal
`
`district court included an order directing the Office to cancel the registration).
`
`
`
`Accordingly, the Applicant asks the Board to issue an order suspending these
`
`proceedings until termination of the civil action between the parties.
`Respectfully submitted on this
`/fl #day of October 2011, by:
`
`FSB FISHERBROYLES, A LIMITED LIABILITY PARTNERSHIP
`
`B
`
`J. Scott Anderson
`
`Georgia Bar No. 017266
`Anderson@FSBLegal.com
`FSB FISHERBROYLES, A LIMITED LIABILITY PARTNERSHIP
`The Pinnacle Building, Fifth Floor
`3455 Peachtree Road NE
`
`Atlanta, Georgia 30326
`(404) 806-1488
`Fax (888) 909-0255
`Attorneys for the Applicant
`
`
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that on this date,
`
`/0 , 2011, I electronically
`
`filed the foregoing, MOTION TO SUSPEND, using the Electronic System for Trademark
`
`Trials and Appeals (ESTTA), which should send a notice of its filing to the attorneys of
`
`record.
`
`I FURTHER CERTIFY that a true and complete copy of the foregoing MOTION
`
`TO SUSPEND has been served on the attorneys listed below by electronic mail and by
`
`First-Class U.S. Mail, postage prepaid, to:
`
`Catherine Parrish Lake, Esq.
`AIt0rney_for the Opposer
`STOEL RIVES LLP
`
`One Utah Center
`
`201 South Main Street, Suite 1100
`
`Salt Lake City, Utah 841 l l
`(801) 328-3131
`CIPl,akc«’c_?>Stoe1.coni
`
`By
`
`J. Scott Anderson
`
`Georgia Bar No. 017266
`Anderson@FSBLegal.com
`FSB FISHERBROYLES, A LIMITED LIABILITY PARTNERSHIP
`
`The Pinnacle Building, Fifth Floor
`3455 Peachtree Road NE
`
`Atlanta, Georgia 30326
`(404) 806-1488
`Fax (888) 909-0255
`Attorneys for the Applicant
`
`
`
`Case 2:11~cv-00579-DB Document 2
`
`Filed 08/23/11 Page 1 of 24
`
`Marc T. Rasich (USB No. 9279)
`mtrasich@st0el.c0m
`Catherine Parrish Lake (USB No. 11454)
`cplake@st0eI. com
`Cameron L. Ward (USB No. 12271)
`clward@stoe1. com
`STOEL RIVES LLP
`
`Suite 1100, One Utah Center
`201 South Main Street
`
`Salt Lake City, Utah 84111
`Telephone: (801) 328-3131
`Facsimile: (801) 578-6999
`
`Attorneys for Plaintiff
`Amedica Corporation
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF UTAH CENTRAL DIVISION
`
`Amedica Corporation, a Delaware
`corporation,
`
`COMPLAINT
`
`Plamnff’
`
`Civil Action No.
`
`v.
`
`Amendia, lnc., a Georgia corporation,
`
`The Honorable -—
`
`i
`Defendant.
`,___________,_____,_____,______%j
`
`Amedica Corporation (“Amedica”), by and through its attorneys, Stoel Rives LLP, alleges
`
`for its complaint against Amendia, Inc. (“Arnendia”):
`
`?O750983,l 0033939-00061
`
`
`
`Case 2:11-cv—00579-DB Document 2
`
`Filed 06!23/11 Page 2 of 24
`
`PARTIES, JURISDICTION AND VENUE
`
`1.
`
`Amedica is a corporation organized and existing under the laws of the State of
`
`Delaware, with its principal place of business at 1885 West 2100 South, Salt Lake City, Utah
`
`84119.
`
`2.
`
`On information and belief, Amendia is a corporation organized and existing under
`
`the laws of the State of Georgia, with its principal place of business at 1155 Allgoocl Road, Suite
`
`6, Marietta, Georgia 30062.
`
`3.
`
`This Court has jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 (federal
`
`question), l332(a)(l) (diversity), 1338 (trademark and unfair competition), 3367 (supplemental
`
`jurisdiction), and 15 U.S.C. §§ 1 116 (Lanham Act injamctive relief) and l 121 (Lanham Act).
`
`4.
`
`This Court has personal jurisdiction over Amendia because, on information and
`
`belief, Amendia has had continuous and systematic contacts with this forum and/or specific
`
`contacts with Utah sufficiently related to this cause of action to warrant the exercise of personal
`
`jurisdiction by this Court. Moreover, Amendia has knowingly and purposefully directed
`
`infringing and unlawful products at customers in Utah, the harm of which has been felt by
`
`Amedica in Utah.
`
`5.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391.
`
`FACTUAL BACKGROUND
`
`A.
`
`Amedica
`
`6.
`
`Amedica manufactures and distributes spinal and orthopedic implants and
`
`medical devices, including advanced surgical applications such as silicon nitride ceramic
`
`technologies. Since its founding in 1996, Amedica has achieved wide-acclaim for its products,
`
`
`
`Case 2:11- v-00579-DB Document 2
`
`Filed 06/23/11 Page 3 of 24
`
`which are distributed across the United States and in six countries worldwide and marketed in an
`
`additional seven countries. Amedica’s success has come in large part due to the quality,
`
`durability and ingenuity of its products and through its widespread and continuous marketing and
`
`promotional efforts.
`
`7.
`
`On or about December 10, 1996 Amedica incorporated as Arnedica Corporation
`
`(the “Trade Name”) in the State of Delaware. A true copy ofthe entity details from the
`
`Delaware Division of Corporations online service is attached as Exhibit A.
`
`8.
`
`On or about February l l, 2002, Amedica applied to do business in Utah under the
`
`Trade Name. A true copy of Amedica’s application trom the Utah Division of Corporations
`
`online service is attached as Exhibit B.
`
`9.
`
`Since at least as early as November 2001, Amedica has continuously and
`
`extensively used the Trade Name and the AMEDlCA® mark (the “Mark”) in connection with its
`
`marketing and promotion of orthopedic and spinal products and its design and development
`
`services related to orthopedic devices. Between the years 2007 and 2010, Amcdica’s sales of
`
`products and services under the Mark and Trade Name exceeded $23 million.
`
`10.
`
`To protect the valuable Mark, Amedica filed two different applications for
`
`registration with the U.S. Patent and Trademark Office (“USPTO”). The application for the
`
`word mark AMEDICA, Registration No. 3,274,941 for “medical and surgical apparatus, namely,
`
`reconstructive orthopedic implants, spinal implants comprised of artificial materials” and “design
`
`and development of orthopedic devices” was filed on May 30, 2006 and registered on August 7,
`
`2008. A true copy of USPTO records for Registration No. 3,274,941 is attached hereto as
`
`Exhibit C. The application for the word and design mark AMEDICA (and design), Registration
`
`
`
`Case 2:11—cv—0O579—DB Document 2
`
`Filed 06/23/11 Page 4 of 24
`
`No. 3,5 84,131 for “medical and surgical apparatus, namely, reconstructive orthopedic implants,
`
`spinal implants comprised of artificial materials” and “design and development of orthopedic
`
`devices” was filed on September 28, 2007 and registered on March 3, 2009. A true copy of
`
`USPTO records for Registration No. 3,584,131 is attached hereto as Exhibit D.
`
`ll.
`
`Even before registering the Mark, Amedica had established common law rights to
`
`the Mark and Trade Name, which now enjoy a high level of consumer recognition and goodwill
`
`for Amedica, and are reiicd upon by the consuming public to distinguish Amedica’s products,
`
`related services and business from those of its competitors.
`
`12.
`
`Amedica owns and operates a website under the amedicacorpcom domain name
`
`through which Amedica promotes and advertises its AMEDlCA® products. A true copy of
`
`Amedica’s home page is attached as Exhibit E. The site has been visited by about 96 unique
`
`Internet users per month on average during 2011.
`
`13.
`
`The Mark is prominently featured on, and incorporated into, all of the individual
`
`pages within Amedica’s website. True copies of sample pages showing AMEDlCA® as used on
`
`Amedica’s website are attached as Exhibits F.
`
`14.
`
`Because of Amedica"s efforts, the Mark and Trade Name have become
`
`extremely valuable and, accordingly, Amedica has taken care to promote, protect and enforce its
`
`rights in the Mark and Trade Name. Amedica has expended and continues to expend substantial
`
`resources in advertising, promoting, and marketing the Mark and Trade Name and its associated
`
`products. Between 2007 and 2010, Amedica spent in excess of $30 million on advertising,
`
`promotions and other sales expenses related to promotion of the Mark and Trade Name. As a
`
`result, the Mark and Trade Name have grown and developed into a widely recognized and
`
`
`
`Case 2:11-cv—00579-DB Document 2
`
`Filed 06/23/11 Page 5 of 24
`
`familiar brand name, which Amedica’s customers and consumers rely on to distinguish
`
`Amedica’s products and related services from those of its competitors.
`
`B.
`
`Amerrdiatv Name Change and Initial Use at the Trademark AMENDIA
`
`15.
`
`Amendia has had actual or constructive knowledge of Amedica’s registration and
`
`use of the Mark since at least as early as August 2007, the date that AMEDICA (Reg. No.
`
`3,274,941) registered with the United States Patent and Trademark Office.
`
`16.
`
`Notwithstanding Amedica’s established rights in the Mark and Trade Name and
`
`Amendia’s knowledge of Amedica‘s registration and use of the Mark, on or about September 10,
`
`2007, Amendia changed its corporate name from Coastal Capital Partners, Inc. to Arnendia, Inc.,
`
`a name that is virtually identical to the Trade Name, differing only in the inclusion of the letter
`
`“n” and omitting the letter “c” and use of “inc.” rather than “corporation.” A true copy of a
`
`printout from the Georgia Secretary of State office, showing the creation of the entity Amendia,
`
`Inc., with a prior name of Coastal Capital Partners, Inc. is attached as Exhibit G.
`
`17.
`
`Notwithstanding Arnedicafs established rights in the Mark and Trade Name and
`
`Amendia’s knowledge of Amedica’s registration and use of the Mark, on or about October 1,
`
`2008, Amendia adopted and began using the trademark AMENDIA, a trademark that is virtually
`
`identical to the Mark, differing only in the inclusion of the letter “m” and omitting the letter “:2,”
`
`in interstate commerce directly competing with Amedica, including, without iimitation, in
`
`connection with the marketing, design and sale of orthopedic implants, spinal implants and other
`
`medical devices.
`
`
`
`Case 2:11-cv-00579-DB Document 2
`
`Filed O6/23!11 Page 6 of 24
`
`C.
`
`Amemiia ’s Registration of the Domain Name
`
`18.
`
`Amendia registered the Internet domain name, arnendiacom (the “Domain
`
`Name”) sometime after February 7, 2008. A true copy of a printout from the WHOIS database
`
`at http:X/www.networksolutions.com/whois/index.jsp for the foregoing Domain Name is attached
`
`as Exhibit H. A true copy of a printout from the WHOIS archive database at
`
`http://who.is/clomain_archive-com/amendia.com, showing that as of February 7, 2008 the
`
`Domain Name was registered to Christine Heinneccius of Hamburg Germany, is attached as
`
`Exhibit 1.
`
`19.
`
`Despite Amedica’s federal registration of the Mark, Amendia has the Domain
`
`Name directed to a website that is owned and controlled by Amendia. A true copy of the
`
`homepage for amendiacom is attached hereto as Exhibit J. The pages that resolve under the
`
`Domain Name contain numerous advertisements, including advertisements for various medical
`
`devices, including orthopedic and spinal implants sold by Amendia. True copies of printouts of
`
`sample pages where Amendia’s orthopedic and spinal implants are advertised are attached hereto
`
`as Exhibit K.
`
`20. When an Internet user looking for Amedica’s web site or its products mistakenly
`
`enters the Domain Name as the Internet address, he or she is diverted to a website other than
`
`Amedica’s website. As a result, Arnendia gains and/or Amedica loses the opportunity to transact
`
`business with that Internet user.
`
`21.
`
`Consequently, Amendia profits from its improper use of the Domain Name by
`
`making money from the marketing of its products and services through the Domain Name.
`
`
`
`Case 2:11-cv~005'/'9-DB Document 2
`
`Filed 06/23/11 Page 7 of 24
`
`22.
`
`Amedica has not authorized Amendia to use the Mark or to register any domain
`
`name that is confusingly similar to the Mark. Amendia is not otherwise affiliated or associated
`
`with Amedica.
`
`23.
`
`Because Amedica uses the Mark on the Internet and because of the widespread
`
`recognition, distinctiveness and goodwill of the Mark and Trade Name, Amendia’s use of the
`
`Domain Name is likely to cause confusion and mistake in the minds of consumers, and/or
`
`deceive consumers, as to the affiliation, connection, or association of the parties and as to the
`
`origin, quality, sponsorship, approval, or endorsement of the parties’ activities.
`
`24.
`
`Additionally, on information and belief, Amendia’s use of the Domain Name and
`
`the Mark has caused actual confusion with and will continue to cause confusion with and
`
`dilution of the distinctive quality of the Mark.
`
`C.
`
`Amendia 's Agglications to Register the Mark
`
`25.
`
`Notwithstanding Amedica’s established rights in the Mark and Trade Name and
`
`Amendia’s knowledge of Amediczfis registration and/or use of the Mark, Amendia filed a
`
`trademark application to register the confusingly similar mark AMENDIA.
`
`26.
`
`On or about September 22, 2010, Amendia tiled trademark application Serial No.
`
`85;’ l 35,485 with the USPTO to register AMENDIA for “distribution services, namely, delivery
`99 66
`of medical devices, manufacturing services for others in the field of medical devices,” and
`
`“product development, namely, development of medical devices” (the “Amendia Application”).
`
`On or about May 24, 201 l, the Amendia Application was published for opposition. A true copy
`
`of USPTO records for Serial No. 85;’ 135,485 is attached hereto as Exhibit L.
`
`
`
`Case 2:11-cv-00579-DB Document 2
`
`Filed 06f23!11 Page 8 of 24
`
`27.
`
`On information and belief, Amendia’s use of the Domain Name and filing the
`
`Amendia application were wanton, willfiil and committed in bad faith with the intent to profit
`
`from Amedica’s goodwill and to cause confusion, mistake, and deception.
`
`28.
`
`As a result of Amendia’s wrongful acts, Amedica has suffered, and will continue
`
`to suffer, irreparable injury in the form of lost goodwill and injury to its reputation. No monetary
`
`remedy alone would be adequate to compensate Arnedica for all the harm that Amendia’s
`
`wrongfiil acts have caused to Amedica’s trademarks, reputation, and goodwill, and for the harm
`
`that Amedica will suffer if Amendia is not enjoined from its wrongful acts.
`
`FIRST CLAIM FOR RELIEF
`
`Federal Trademark Infringement, 15 U.S.C. § 1114
`
`29.
`
`Amedica hereby incorporates by reference the allegations set forth in paragraphs
`
`l through 28 above as though fully get forth herein.
`
`30.
`
`Amedica owns valid and enforceable registrations for the Mark.
`
`31.
`
`Amedica has continuously used the Mark in connection with medical and surgical
`
`apparatus and the design and development of orthopedic devices since at least as early as 2001.
`
`32.
`
`Amendia began use of AMENDIA in or about October 2008, registered the
`
`Domain Name in or about 2008 and has used AMENDIA and the Domain Name in interstate
`
`commerce to market, sell and distribute medical devices and to develop medical devices,
`
`including orthopedic and spinal implants.
`
`33.
`
`The trademark and service mark AMENDIA and the Domain Name are
`
`confusingly similar to AMEDICA in that both marks begin with the three letter combination
`
`“ame,” end in “a,” and use the letters “d” and “i” in that order in the middle of the mark. The
`
`marks differ only in that AMENDIA includes an “n” and omits a “c.” Accordingly, AMENDIA
`
`8
`
`
`
`Case 2:11-cv-00579-DB Document 2
`
`Filed 06/23/11 Page 9 of 24
`
`and AMEDICA produce a similar appearance, sound, meaning and commercial impression and,
`
`therefore, are confusingly similar.
`
`34.
`
`Because Amedica and Amendia both sell simiiar products, Amendia’s use of the
`
`Mark has caused and is likely to continue causing confusion or mistake, or deception, in
`
`violation of Section 32(1) of the Lanham Act, 15 U.S.C. § l 114.
`
`35.
`
`Amendia’s use of a confusingly similar mark and Domain Name is also likely to
`
`cause initial interest and other confusion among users and potential users of Amedica’s goods
`
`and related services.
`
`36.
`
`Amendia will continue, unless enjoined, to cause irreparable harm to, and injury
`
`to the goodwill and reputation of Amedica.
`
`37.
`
`As a direct and proximate result of Amendia’s wrongful acts, Amedica has also
`
`suffered pecuniary damages from Amendia’s actions in an amount to be determined at trial.
`
`38.
`
`On information and belief, Amendia’s activities were taken with knowledge of
`
`Amedica’ rights, and thus constitute deliberate, willful, andfor intentional infringement. As a
`
`result, pursuant to l5 U.S.C. § Ill’? Amedica is further entitled to treble damages, together with
`
`interest thereon, in an amount to be determined at trial.
`
`39.
`
`Amedica is also entitled to recover its costs associated with this action pursuant to
`
`l5 U.S.C. § lll7.
`
`SECOND CLAIM FOR RELIEF
`
`Federal Trademark Infringement, 15 U.S.C. § 1125(a)
`
`40.
`
`Amedica hereby incorporates by reference the allegations set forth in paragraphs
`
`1 through 39 above as though fully set forth herein.
`
`
`
`Case 2:11-cv—0O579-DB Document 2
`
`Filed 06/23/11 Page 10 of 24
`
`41.
`
`Amedica is the owner of the Mark, and the consuming public recognizes the Mark
`
`as being distinctive, and as an identifier of the high quality products associated with Amedica.
`
`42.
`
`Amedica’s Mark has acquired secondary meaning.
`
`43.
`
`Notwithstanding Amedica’s prior rights in the Mark, Amendia uses and has
`
`continued to use a confusingly similar trademark and service mark and a Domain Name that
`
`compete with Amedica by selling identical types of products and providing identical types of
`
`services to those of Amedica.
`
`44.
`
`Amendia’s use of AMENDIA and the Domain Name in connection with goods or
`
`services in commerce that compete with Amedica has caused and is likely to cause confiision,
`
`mistake, or deception as to the origin, sponsorship or approval of such goods or services.
`
`45.
`
`Amendia’s use of AMENDIA and the Domain Name is also likely to cause initial
`
`interest and other confusion among users and potential users of Amedica’s goods and related
`
`services.
`
`46.
`
`Accordingly, Amendia’s actions constitute trademark infringement in violation of
`
`Section 43(a) of the Lanham Act, 15 U.S.C. § l l25(a).
`
`47.
`
`Amendia will continue, unless enjoined, to cause irreparable harm to, and injury
`
`to the goodwill and reputation of Amedica.
`
`48.
`
`As a direct and proximate result of Amendia’s wrongful acts, Amedica has also
`
`suffered pecuniary damages from Ame-ndia’s actions in an amount to be determined at trial.
`
`49.
`
`On information and belief, Amendiafs activities were taken with knowledge of
`
`Amedica’ rights, and thus constitute deliberate, willfiil, and/or intentional infringement. As a
`
`10
`
`
`
`Case 2:11-cv-0O579—DB Documentz
`
`Filed 06i23/11 Page 11 of 24
`
`result, pursuant to 15 U.S.C. § 1 117 Amedica is further entitled to treble damages, together with
`
`interest thereon, in an amount to be determined at trial.
`
`50.
`
`Amedica is also entitled to recover its costs associated with this action pursuant to
`
`15 U.S.C.§ lll7.
`
`THIRD CLAIM FOR RELIEF
`
`Cybersquatting, 15 U.S.C. § 11250;!)
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`S 1.
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`Amedica hereby incorporates by reference the allegations set forth in paragraphs
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`1 through 50 above as though fully set forth herein.
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`52.
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`The Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1 125(d), provides
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`that “{a]ny person shall be liable in a civil action by the owner of a mark, including a personal
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`name which is protected as a mark under this section, if, without regard to the goods or services
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`of the parties, that person (i) has a bad faith intent to profit from that mark, including a personal
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`name which is protected as a mark under this section; and (2) registers, trafiics in, or uses a
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`domain name that in the case of a mark that is distinctive at the time of registration of the domain
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`name, is identical or confusingly similar to that mark.”
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`53.
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`Amedica is the rightful owner of the Mark.
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`54.
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`Amedica’s federally-registered Mark is distinctive and was distinctive before
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`Amendia registered the Domain Name.
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`55.
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`The Domain Name is confusingly similar to the Mark.
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`56.
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`On information and belief, Amendia registered and used the Domain Name to
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`divert consumers from Amedica to a website accessible under the Domain Name for Amendia’s
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`commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or
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`endorsement of the website.
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`1]
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`Case 2:11-cv-00579-DB Document 2
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`Filed 06/23/11 Page 12 of 24
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`5'7.
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`On information and belief, Amendia’s registration and use of the Domain Name is
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`intended to capitalize on the good will associated with Amedica’s use of the Mark.
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`58.
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`On information and belief, Amendia registered, trafficked in or used the Domain
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`Name with a bad faith intent to profit from the Mark and its associated goodwill.
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`59.
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`On information and belief, Amendia knew or should have known of Amedica’s
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`ownership and use of the Mark before Amendia registered and began using the Domain Name.
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`60.
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`Amendia’s diversion of Internet traffic to Amendia’s website has harmed and
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`continues to harm Amedica’s ability to generate business.
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`61.
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`Amendia’s use of the Domain Name and other acts, as set forth herein, constitute
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`cybersquatting in violation of Section 1 l25(d) of the Anticybersquatting Consumer Protection
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`Act (15 U.C.s. § ]125(d)).
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`62.
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`Amendia will continue, unless enjoined, to cause irreparable harm to, and injury
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`to the goodwill and reputation of Amedica.
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`63.
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`As a direct and proximate result of Amendia’s wrongful acts, Amedica has also
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`suffered pecuniary damages from Amendia’s actions in an amount to be determined at trial.
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`64.
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`Alternatively, at its election, Amedica is entitled to recover statutory damages as
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`provided under Section 35 of the Lanham Act, 15 U.S.C. § 1ll7(d).
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`65.
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`On information and belief, Amendia’s activities were taken with knowledge of
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`Amedica°s rights, and thus constitute deliberate, willful, and/or intentional cybersquatting. As a
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`result, pursuant to 15 U.S.C. § 1 l 1? Amedica is further entitled to treble damages, together with
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`interest thereon, in an amount to be determined at trial.
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`12
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`
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`Case 2:11—cv-00579438 Document 2
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`Filed 06/2311 Page 13 of 24
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`66.
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`Amedica is also entitled to recover its costs associated with this action pursuant to
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`15 U.S.C.§ll17.
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`FOURTH CLAIM FOR RELIEF
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`Common Law Trade Name Infringement
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`67.
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`Amedica hereby incorporates by reference the allegations set forth in paragraphs
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`1 through 66 above as though fully set forth herein.
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`68.
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`Since 1996, Amedica has continuously and extensively used the Trade Name as
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`the trade name for its business of marketing and promoting orthopedic and spinal products and
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`its design and development services related to orthopedic devices.
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`69.
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`As a result, the public has come to identify the Trade Name with Amedica.
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`70.
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`On or about September 10, 2007, Amendia changed its corporate name from
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`Coastal Capital Partners, Inc. to Amendia, lnc., a name that is virtually identical to the Trade
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`Name, differing only in the inclusion of the letter “n” and omitting the letter “c” and use of “inc.”
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`rather than “corporation.”
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`71.
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`Notwithstanding Amedica’s prior rights in the Trade Name, Amendia uses and
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`has continued to use a confusingly similar trade name for a business that directly competes with
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`Amedica by selling identical types of products and providing identical types of services to those
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`of Amedica.
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`72.
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`Amendia’s use of the similar trade name for a business that directly competes
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`with Amedica has caused confusion and is likely to continue to cause confusion.
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`73.
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`Amendia’s actions constitute common law trade name infringement.
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`74.
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`Amendia will continue, unless enjoined, to cause irreparable harm to, and injury
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`to the goodwill and reputation of, Amedica.
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`l3
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`
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`Case 2:11—cv—OO579-DB Document 2
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`Filed 06/23/11 Page 14 of 24
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`75.
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`As a direct and proximate result of Amendia’s wrongful acts, Amedica has also
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`suffered pecuniary damages from Amendia’s actions in an amount to be determined at trial.
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`FIFTH CLAIM FOR RELIEF
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`Common Law Trademark Infringement
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`76.
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`Amedica hereby incorporates by reference the allegations set forth in paragraphs
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`l through 75 above as though fully set forth herein.
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`77.
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`Amedica is the owner of the Mark, and the consuming public recognizes the Mark
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`as being distinctive, and as an identifier of the high quality products associated with Amedica.
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`78.
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`Amedica’s Mark is fancifiil.
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`79.
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`Arnedica’s Mark has acquired secondary meaning.
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`80.
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`Notwithstanding Amedica’s prior rights in the Mark, Amendia uses and has used
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`a mark and Domain Name that are confusingly similar to the Mark in connection with goods and
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`services in interstate commerce that compete with Amedica and that have caused confusion and
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`are likely to continue causing confusion, mistake or deception as to the origin, sponsorship or
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`approval of such goods or services.
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`8 l.
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`Amendia’s use ofa mark and Domain Name that are confusingly similar to the
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`Mark in connection with goods and services in interstate commerce that compete with Amedica
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`is likely to cause initial interest and other confusion among users and potential users of
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`Amedica’s goods and related services.
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`82.
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`Amendia’s actions constitute common law trademark infringement.
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`83.
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`Amendia will continue, unless enjoined, to cause irreparable harm to, and injury
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`to the goodwill and reputation of, Amcdica.
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`l4
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`Case 2:11-cv—00579-DB Document 2
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`Filed 0612311 Page 15 of 24
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`84.
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`As a direct and proximate result of Amendia’s wrongful acts, Amedica has also
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`suffered pecuniary damages from Amendia’s actions in an amount to be determined at trial.
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`SIXTH CLAIM FOR RELIEF
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`False Designation of Origin, 15 U.S.C. §1125
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`85.
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`Amedica hereby incorporates by reference the allegations set forth in paragraphs
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`1 through 84 above as though fully set forth herein.
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`86.
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`Amendia’s use in commerce of a mark and Domain Name that are confusingly
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`similar to the Mark in connection with goods and services in interstate commerce that compete
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`with Amedica is likely to cause confiision, or to cause mistake, or to deceive the relevant public
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`into believing that goods and services bearing the mark AMENDIA as well as the websites and
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`advertisements displayed at the Domain Name are authorized, sponsored or approved by
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`Amedica.
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`87.
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`The above—described acts of Amendia constitute false designations of origin in
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`violation of15 U.S.C. § ll25(a).
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`88.
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`Amendia will continue, unless enjoined, to cause irreparable harm and injury to
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`the goodwill and reputation of Amedica.
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`89.
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`As a direct and proximate result of Amendia’s wrongful acts, Amedica has also
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`suffered pecuniary damages from Amendia’s actions in an amount to be determined at trial.
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`90.
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`On information and belief, Amendia’s activities were taken with knowledge of
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`Amedica’s rights, and thus constitute deliberate, willful, and/or intentional infringement. As a
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`result, Amedica is further entitled to treble damages and attorneys’ fees.
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`15
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`
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`Case 2:11-cv—O0579-DB Document2
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`Filed 06/23/11 Page 1601‘ 24
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`SEVENTH CLAIM FOR RELIEF
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`Unfair Competition, Utah Code Ann. § 13—11a-3 et seq.
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`91.
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`Amedica hereby incorporates by reference the allegations set forth in paragraphs
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`1 through 90 above as though fully set forth herein.
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`92.
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`Amenclia has engaged in unfair methods of competition by intentionally using and
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`continuing to use a mark and Domain Name that are confusingly similar to the Mark in
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`connection with goods or services in commerce, in a manner that is likely to cause confusion,
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`mistake, or deception as to the source, sponsorship, approval or certification of such goods or
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`services.
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`93.
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`Amendia’s actions constitute unfair competition under Utah Code § 13-1 la-3.
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`94.
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`Based on the foregoing, Amedica is entitled to declaratory, inj unctive and
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`monetary relief against Amendia, along with its attorneys’ fees and costs, pursuant to at least
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`Utah Code § 13-11a~4(2)(a), (b) and (c).
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`EIGHTH CLAIM FOR RELIEF
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`Unfair Competition, Utah Code Ann. § 13-53-101 et seq.
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`95. Amedica hereby incorporates by reference the allegations set forth in paragraphs 1
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`through 94 above as though fully set forth herein.
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`96.
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`Amendia, by its actions set forth above, has engaged in intentional business acts
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`or practices that are unlawful, unfair and fraudulent, and which have caused a material
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`diminution in the value of the trademarks held by Amedica, including, but not limited to, the
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`Mark, and also constitute infringement of such trademarks, and has thereby engaged in unfair
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`competition pursuant to Utah Code § 13-5a—102(4).
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`16
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`Case 2:11~cv—00579—DB Document2
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`Filed O6/23f11 Page17of24
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`9?.
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`On information and beliefl Amendia has engaged in unfair competition in willful
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`and deliberate disregard of the rights of Amedica and the consuming public.
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`98.
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`Due to Amendia’s unfair competition practices, Amedica has suffered damages
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`and irreparable harm.
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`99.
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`Amendia’s conduct, as set forth above, gives rise to a cause of action for unfair
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`competition under Utah Code § 13-5a—l01 et seq.
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`100. Based on the foregoing, Amedica is entitled to declaratory, injunctive and
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`monetary relief against Amendia, along with its attorneys’ fees and costs.
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`NINTH CLAIM FOR RELIEF
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`Common Law Unfair Competition
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`101. Amedica hereby incorporates by reference the allegations set forth in paragraphs
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`1 through 100 above as though fully set forth herein.
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`102. Amendia’s actions constitute unfair competition by misappropriation of
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`Amedica’s labors and expenditures in violation of the co
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