Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA471470
`ESTTA Tracking number:
`05/09/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201901
`Plaintiff
`OMS Investments, Inc.
`John Gary Maynard, III
`Hunton & Williams LLP
`951 East Byrd StreetRiverfront Plaza - East Tower
`Richmond, VA 23219-4074
`UNITED STATES
`HWRITM@hunton.com
`Other Motions/Papers
`John Gary Maynard, III
`HWRITM@hunton.com
`/John Gary Maynard, III/
`05/09/2012
`Supplemental to Motion to Suspend Opposition Proceedings.pdf ( 49 pages
`)(9887329 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA471470
`ESTTA Tracking number:
`05/09/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201901
`Plaintiff
`OMS Investments, Inc.
`John Gary Maynard, III
`Hunton & Williams LLP
`951 East Byrd StreetRiverfront Plaza - East Tower
`Richmond, VA 23219-4074
`UNITED STATES
`HWRITM@hunton.com
`Other Motions/Papers
`John Gary Maynard, III
`HWRITM@hunton.com
`/John Gary Maynard, III/
`05/09/2012
`Supplemental to Motion to Suspend Opposition Proceedings.pdf ( 49 pages
`)(9887329 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. 85/147,170
`Published in the Ofiicial Gazette on June 7, 2011
`Mark: MOJOGRO
`
`OMS Investments, lnc.,
`
`Opposer,
`
`Mojogro Soils, LLC.
`
`Applicant.
`
`\2\/\/\./\./€\J\)\2\_/§/
`
`Opposition N0. 91201901
`
`SUPPLEMENTAL TO MOTION TO SUSPEND OPPOSITION PROCEEDINGS
`
`A copy of the complaint was inadvertently omitted from Exhibit 1 when the Motion to
`
`Suspend Opposition Proceedings was filed on May 3, 2012. Therefore, a copy of Exhibit 1 that
`
`includes the complaint is being submitted as a supplemental to the Motion to Suspend
`
`Opposition Proceedings.
`
`May
`
`, 2012
`
`Respectfully submitted,
`
` John Gary
`Bradley W. Grout
`Hunton & Williams LLP
`
`951 East Byrd Street
`Riverfront Plaza, East Tower
`
`Richmond, VA 23219-4074
`
`Telephone (804)788-8200
`
`Attorneys for Opposer,
`OMS Investments, Inc.
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing SUPPLEMENTAL TO MOTION TO SUSPEND
`OPPOSITION PROCEEDINGS has been properly served upon counsel of record for Applicant,
`Via U.S. first class mail, postage prepaid, on this 9”‘ day of May, 2012.
`
`Christopher A. Johnson, Esq.
`BOTKIN & HALL, LLP
`
`105 East Jefferson Boulevard, Suite 400
`South Bend, Indiana 46601
`
`
`
`/1?
`
`Early Wortham
`
`77730040033 EMF__US 40075993v1
`
`
`
`Case: 2:l2—cv—0O372—.JLG-NMK Doc #: 1 Filed: 04/30/12 Page: 1 of 15 PAGEID #: 1
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`THE SCOTTS COMPANY LLC
`
`and
`
`OMS INVESTMENTS, INC.,
`Plaintiffs,
`
`.
`
`Civil Action N0.:
`
`JURY TRIAL DEMANDED
`
`v.
`
`MOJOGRO SOILS, LLC,
`
`and
`
`MOJOGRO, LLC,
`
`and
`
`MOJOGRO, INC.,
`
`Defendants.
`
`COMPLAINT
`
`Plaintiffs The Scotts Company LLC (“Scotts Company”) and OMS Investments, Inc.
`
`(“OMS”), collectively (“Scotts”), by counsel,
`
`respectfully submit
`
`this Complaint against
`
`Defendants Mojogro Soils, LLC, Mojogro, LLC and Mojogro, Inc. for acts of (1) federal
`
`trademark infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1);
`
`(2) federal unfair competition and false advertising in Violation of Section 43(a) of the Lanham
`
`Act, 15 U.S.C. § l125(a); (3) federal dilution in Violation of Section 43(c) of the Lanham Act, 15
`
`U.S.C. § 1125(0); (4) federal cyberpiracy, in violation of Section 43(d) of the Lanham Act, 15
`
`U.S.C. §1125(d); (5) common law unfair competition in violation of Ohio law; and (6) unfair and
`
`deceptive trade practices in Violation of Ohio law.
`
`
`
`Case: 2:12-cv—OO372-JLG-NMK Doc #2 1 Filed: 04/30/12 Page: 2 of 15 PAGEID #: 2
`
`THE PARTIES
`
`1.
`
`Plaintiff Scotts Company is an Ohio limited liability company with its principal
`
`place of business at 14111 Scottslawn Road, Marysville, Ohio 43041.
`
`2.
`
`Plaintiff OMS is a Delaware corporation with its principal place of business at
`
`10250 Constellation Boulevard, Suite 2800, Los Angeles, California 90067. OMS is a
`
`subsidiary of Scotts Company LLC, and was incorporated to hold Various Scotts Company
`
`LLC’s intellectual property assets. OMS licenses to Scotts Company LLC many of these
`
`intellectual property assets, including the trademarks being infringed by Defendants.
`
`3.
`
`Upon information and belief, Defendant Mojogro Soils, LLC is a limited liability
`
`company in Michigan with its principal place of business at 5120 Naomi Road, Eau Claire,
`
`Michigan 491 l 1.
`
`4.
`
`Upon information and belief, Defendant Mojogro, LLC is a limited liability
`
`company in Michigan with its principal place of business at 5120 Naomi Road, Eau Claire,
`
`Michigan 49l ll.
`
`5.
`
`Upon information and belief, Defendant Mojogro,
`
`Inc.
`
`is a corporation in
`
`Michigan with its principal place of business at 5120 Naomi Road, Eau Claire, Michigan 491 l l.
`
`6.
`
`Defendants Mojogro Soils, LLC, Mojogro, LLC and Mojogro,
`
`Inc.
`
`are
`
`collectively defined as “Mojogro” or “Defendants”.
`
`7.
`
`Scotts and Mojogro are competitors in the manufacturing, advertising, promoting
`
`and selling of consumer and professional lawn and garden care products, including potting soil
`
`and garden soil in this district and across the United States.
`
`
`
`Case: 2:12-cv-OO372—.JLG-NMK DOC #1 1 Filed: 04/30/12 Page: 3 Of 15 PAGEID #: 3
`
`JURISDICTION AND VENUE
`
`8.
`
`This Court has subject matter jurisdiction over Scotts’ Lanham Act claims
`
`pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a).
`
`9.
`
`This Court has subject matter jurisdiction over Scotts’ state—law claims pursuant
`
`to 28 U.S.C. § 1332, because the citizenship of the parties is diverse and the amount
`
`in
`
`controversy exceeds seventy—f1ve thousand dollars ($75,000.00) exclusive of interest, costs and
`
`attorneys’ fees.
`
`10.
`
`This Court has supplemental jurisdiction over Scotts’ state—law claims pursuant to
`
`28 U.S.C. § 1367(a).
`
`11.
`
`Venue is appropriate in this district and division pursuant to 28 U.S.C. § l391(b)
`
`and Local Rule 82.l(e) because Defendants are subject to personal jurisdiction here and the
`
`misconduct giving rise to Scotts’ claims in substantial part is occurring here. Defendants market
`
`and sell infringing Moj ogro products in Kroger stores throughout this district.
`
`FACTS COMMON TO ALL COUNTS
`
`12.
`
`Scotts is the leading supplier of products for consumer lawn and garden care
`
`worldwide. Scotts has been in business for over 140 years, and has a national reputation for high
`
`quality and integrity.
`
`13.
`
`Scotts owns and uses the most recognizable and valuable brands in the consumer
`
`lawn and garden care industry. In the United States, consumer awareness of Scotts’ MIRACLE-
`
`GRO®, ORTI-lO®, and SCOTTS® brands is several times greater than for Scotts’ nearest
`
`competitors.
`
`
`
`Case: 2:12-cv-00372-JLG-NMK Doc #: 1 Filed: 04/30/12 Page: 4 of 15 PAGEID #: 4
`
`l4.
`
`Throughout its 140 year history, Scotts has maintained a national reputation for
`
`high quality and integrity.
`
`That reputation, as symbolized by Scotts’ brand names and
`
`proprietary trade dress, is of inestimable value.
`
`15.
`
`Mojogro is a competitor of Scotts which markets its products to consumers and to
`
`national chain store retail accounts as alternatives to Scotts’ products.
`
`SCOTTS’ MIRACLE-GRO® MARK
`
`16.
`
`Scotts, through its predecessors in interest and affiliates, has used in commerce
`
`the famous and distinctive mark MIRACLE—GRO since at least as early as 195 l. Over the years,
`
`the mark has been used in connection with a wide range of lawn and garden goods and services,
`
`including soil, fertilizers, soil amendments, and plant food.
`
`17.
`
`Scotts owns several federal trademark registrations incorporating the famous and
`
`distinctive MIRACLE—GRO mark as refleeted in the following representative registrations
`
`(“Scotts’ Marks”):
`
`MIRACLE-GRO
`
`0668,868
`
`Class 10: Water soluble plant food.
`
`MIRACLBGRO
`
`1,223,038
`
`glllalslsslz Fertilizer in the form of spikes for trees and
`
`p
`
`.
`
`_
`
`.
`
`MIRACLE-GRO & Design
`
`2,820,953
`
`MIRACLE—GRO and
`Design
`
`2,822,655
`
`Class 1: Fertilizers for domestic use; plant food;
`garden soil; potting mix; seed starter mix for domestic
`use; root stimulating hormone that converts plant cells
`to stem cells.
`
`Class 5: Herbicides for domestic use.
`
`Class 21: Garden feeders, namely containers designed
`to hold plant food and are used to feed and water
`plants.
`
`Class 31: Sphagnum peat moss.
`
`Class 1: Fertilizers for domestic use; plant food;
`garden soil; potting mix; seed starter mix for domestic
`use; root stimulating hormone that converts plant cells
`to stem cells.
`
`
`
`Case: 2:12-CV-OO372—JLG-NMK DOC #: 1 Filed: 04/30/12 Page: 5 of 15 PAGEID #1 5
`
`plants. Class 31: Sphagnum peat moss.
`
`A
`
`A coeds/services
`
`o I
`
`Class 5: Herbicides for domestic use.
`
`Class 21: Garden feeders, namely containers designed
`to hold plant food and are used to feed and water
`
`True and correct copies of the electronic records for these registrations printed from the United
`
`States Patent and Trademark Office’s (“USPTO”) Trademark Applications and Registrations
`
`Retrieval (“TARR”) online database are attached hereto as Exhibit A.
`
`18.
`
`Each of the registrations noted above was issued on the Principal Register and is
`
`presently in full force and effect. Notably, all of the registrations cited above are incontestable.
`
`Scotts’ Marks are valid and distinctive.
`
`l9.
`
`Scotts has expended and continue to expend substantial time, money and effort in
`
`advertising and promoting Scotts’ Marks to identify itself as the source of its goods and services,
`
`such as in newspapers, magazines, sponsorships, and through nationally broadcast television and
`
`radio commercials. As a result, Scotts’ Marks are some of the most recognizable and valuable
`
`brands in the lawn, garden and horticulture industry. Moreover, due to the national, and indeed,
`
`worldwide consumer
`
`recognition of Scotts’ Marks, consumers have come to recognize
`
`“MIRACLE—GRO” as also symbolizing the goodwill inherent in Scotts’ Marks, and further,
`
`associate MIRACLE-GRO solely with Scotts and its line of high quality products.
`
`20.
`
`Scotts also owns domain names that fully incorporate Scotts’ Marks, including
`
`MIRACLE-GRO.COM, MIRACLEGRO.COM, and MIRACLEGRONET (“Scotts’ Names”),
`
`and it uses these domain names in connection with its principal websites. At these websites,
`
`Scotts uses Scotts’ Marks to describe and actively promote its products and services.
`
`
`
`Case: 2:l2—cv—OO372-JLG—NMK Doc #2 1 Filed: 04/30/12 Page: 6 of 15 PAGEID #: 6
`
`DEFENDANTS’ INFRINGEMENT OF SCOTTS’ MIRACLE-GRO® MARK
`
`21.
`
`Defendants manufacture and sell competing potting soil and garden soil.
`
`Defendants recently began selling products under their MOJOGRO mark.
`
`In addition to selling
`
`products through local stores and chains in Michigan, Wisconsin, and Colorado, Defendants sell
`
`MOJOGRO products in Kroger stores throughout this district and across the United States.
`
`Defendants advertise their products, among other places, at www.mojogro.com.
`
`22.
`
`Upon information and belief, on or about October 16, 2008, Defendants registered
`
`the domain name MOJOGROCOM through GoDaddy.com, LLC (http://www.godaddy.com).
`
`See Exhibit B (copy of Defendants’ domain name registration). The domain name is registered
`
`to Mojogro’s principal, Timothy Beall.
`
`23.
`
`Upon information and belief, Defendants have used the domain name
`
`MOJOGRO.COM with a bad faith intent to profit from Scotts’ Marks, with intent to cause
`
`confusion, and with actual knowledge of Scotts’ Names and Scotts’ Marks, which were
`
`distinctive and famous at the time of the registration of MOJOGROCOM.
`
`24.
`
`Defendants’ domain name MOJOGROCOM is confusingly similar to Scotts’
`
`Marks, and, upon information and belief, Defendants registered and have used the domain name
`
`for commercial gain and with the intent to divert consumers from Scotts’ websites to its own and
`
`to tarnish Scotts’ Marks by creating a likelihood of confusion as to the source, sponsorship,
`
`affiliation, or endorsement of the MOJOGRO.COM website.
`
`25.
`
`On October 7, 2010, Defendants applied to the United States Patent and
`
`Trademark Office to register the mark MOJOGRO for “Potting compost; Potting soil; Soil
`
`amendments” in International Class 1 (Application Serial No. 85/147,170), and, on December 9,
`
`
`
`Case: 2:12—cv—0O372-JLG—NMK Doc #: 1 Filed: 04/30/12 Page: 7 of 15 PAGEID #: 7
`
`2011, applied to register the mark POWERED BY MOJOGRO for “Potting soil for plants and
`
`potted plants having potting soil” in International Class 1 (Application Serial No. 85/491,294).
`
`26.
`
`Defendants’ placement of its MOJOGRO mark on the packaging of its
`
`competitive products constitutes trademark infringement. Examples of Defendants’ packaging
`
`and advertising of its infringing potting soil and garden soil are attached as Exhibit C.
`
`27.
`
`The MOJOGRO mark is likely to confuse and has confused consumers into
`
`believing that Scotts is the source of Defendants’ infringing potting soil and garden soil products,
`
`that Defendants are affiliated with, connected with, sponsored by, approved by, or otherwise
`
`associated with Scotts, and/or that Defendants’ infringing products are the same as Scotts’
`
`MIRACLE-GRO® products. Given the goodwill and public recognition arising from the
`
`association of Scotts’ Marks with Scotts, consumers are likely to believe that Scotts has licensed,
`
`approved or otherwise authorized Defendants’ use of the MOJOGRO mark when it has not.
`
`28.
`
`Defendants’ MOJOGRO mark is confusingly similar to Scott’s Marks because it
`
`is similar in appearance, sound and commercial impression, pursuant to 15 U.S.C. § l052(d).
`
`Among other things, the MOJOGRO mark incorporates the word element “GRO,” which is
`
`identical to the famous and distinctive “GRO” element in Scotts’ Marks. Furthermore, the
`
`MOJOGRO mark shares a similar commercial impression with Scotts’ Marks, thereby creating a
`
`risk of consumer confusion. Specifically, consumers may believe, incorrectly, that MOJOGRO
`
`is an extension of Scotts’ family of MIRACLE-GRO marks. The likelihood of confusion
`
`between the MOJOGRO mark and Scotts’ Marks is further exacerbated because the goods sold
`
`under the Defendants’ MOJOGRO mark, namely potting soil and garden soil, are identical to the
`
`products sold under Scotts’ Marks.
`
`
`
`Case: 2:12—cv—OO372—JLG-NMK Doc #: 1 Filed: 04/30/12 Page: 8 of 15 PAGEID #: 8
`
`29.
`
`Upon information and belief, Defendants’ infringement of Scotts’ MIRACLE-
`
`GRO® Mark has caused irreparable harm to Scotts and its reputation, and has diminished Scotts’
`
`sales of its own MIRACLE-GRO® potting soil and garden soil products.
`
`Scotts believes
`
`registration of the mark MOJOGRO and POWERED BY MOJOGRO marks will cause further
`
`damage.
`
`30.
`
`Unless enjoined by this Court, Defendants’ intentional infringement will cause a
`
`likelihood of confusion, leading consumers to believe that the infringing MOJOGRO products
`
`are supplied by Scotts, and/or that Defendants and the infringing MOJOGRO products are
`
`affiliated with, connected with, sponsored by, approved by, or otherwise associated with Scotts.
`
`31.
`
`Unless enjoined by this Court, Defendants’ intentional infringement will cause
`
`irreparable injury to Scotts, by confusing and deceiving consumers, by disrupting customer
`
`relationships, by damaging Scotts’ reputation, and by lessening the capacity of Scotts’ famous
`
`marks to identify and distinguish its goods.
`
`(Trademark Infringement under the Lanham Act § 32)
`
`COUNT I
`
`32.
`
`Scotts repeats the allegations in paragraphs 1 through 31 of this Complaint as
`
`though fully set forth herein.
`
`33.
`
`Scotts owns valid and subsisting rights in Scotts’ Marks.
`
`34.
`
`Defendants use the confusingly similar MOJOGRO mark in selling their
`
`competing garden soil and potting soil products.
`
`35.
`
`Defendants’ unauthorized use of Scotts’ Marks in connection with Defendants’
`
`competing products is likely to confuse and has confused consumers into believing that Scotts is
`
`the source of Defendants’ competing products, that Defendants are affiliated with, connected
`
`
`
`Case: 2:12—cv—OO372-JLG—NMK Doc #: 1 Filed: 04/30/12 Page: 9 of 15 PAGEID #: 9
`
`with, sponsored by, approved by, or otherwise associated with Scotts, and /or that Defendants’
`
`competing products are the same as Scotts’ products.
`
`36.
`
`Defendants have adopted and used, and is continuing to use, its infringing mark
`
`with constructive and actual knowledge of Scotts’ prior rights, with the intent to cause confusion,
`
`and in bad faith.
`
`37.
`
`Defendants’ acts are causing Scotts to suffer irreparable harm, for which it has no
`
`adequate remedy at law, and has damaged Scotts in an amount to be determined at trial. Scotts is
`
`entitled to injunctive relief against Defendants, pursuant to Section 34 of the Lanham Act, 15
`
`U.S.C. § 1116. Scotts is also entitled to Defendants’ profits and its damages, trebled, and to
`
`reasonable attorneys’ fees and costs, pursuant to Section 35 of the Lanham Act, 15 U.S.C. §
`
`1117.
`
`(Unfair Competition and False Advertising under the Lanham Act § 43(a))
`
`COUNT II
`
`38.
`
`Scotts repeats the allegations in paragraphs 1 through 37 of this Complaint as
`
`though fully set forth herein.
`
`39.
`
`By making unauthorized use of Scotts’ Marks in connection with Defendants’
`
`competing products, Defendants have engaged in unfair competition against Scotts in violation
`
`of Section 43 of the Lanham Act, 15 U.S.C. § 1125.
`
`40.
`
`Defendants’ unauthorized use of Scotts’ Marks in connection with Defendants’
`
`competing products is likely to confuse and has confused consumers into believing that Scotts is
`
`the source of Defendants’ competing products, that Defendants are affiliated With, connected
`
`with, sponsored by, approved by, or otherwise associated with Scotts, and/or that Defendants’
`
`competing products are the same as Scotts’ products.
`
`
`
`Case: 2:12—cv-00372-JLG—NMK Doc #: 1 Filed: 04/30/12 Page: 10 of 15 PAGEID #: 10
`
`41.
`
`Defendants’ unfair competition, false advertising, and false designations of origin
`
`using Scotts’ Marks has been conducted intentionally, willfully, and with full knowledge of
`
`Scotts’ ownership and prior use of these marks.
`
`42.
`
`Defendants’ acts are causing Scotts to suffer irreparable harm, for which it has no
`
`adequate remedy at law, and has damaged Scotts in an amount to be determined at trial. Scotts is
`
`entitled to injunctive relief against Defendants, pursuant to Section 34 of the Lanham Act, 15
`
`U.S.C. § 1116. Scotts is also entitled to Defendants’ profits and its damages, trebled, and to
`
`reasonable attorneys’ fees and costs, pursuant to Section 35 of the Lanham Act, 15 U.S.C. §
`
`1117.
`
`COUNT III
`
`(Trademark Dilution under the Lanham Act § 43(0))
`
`43.
`
`Scotts repeat the allegations in paragraphs 1
`
`through 42 of this Complaint as
`
`though fully set forth herein.
`
`44.
`
`By Virtue of Scotts’ prominent, longstanding, and continuous use of Scotts’ Marks
`
`in interstate commerce, these marks became famous within the meaning of Section 43(0) of the
`
`Lanham Act, 15 U.S.C. § ll25(c).
`
`45.
`
`Defendants’ use of Scotts’ Marks began after Scotts’ Marks became famous.
`
`46.
`
`Defendants’ use of Scotts’ Marks dilutes the quality of Scotts’ Marks by lessening
`
`the capacity of Scotts’ famous marks to identify and distinguish its goods.
`
`47.
`
`Defendants have adopted and used, and are continuing to use, their dilutive mark
`
`with actual knowledge of Scotts’ prior rights, with the willful intent to trade on the recognition of
`
`Scotts’ Marks, and with the willful intent to harm the reputation of those famous marks.
`
`48.
`
`Defendants’ acts are causing Scotts to suffer irreparable harm, for which it has no
`
`adequate remedy at law, and has damaged Scotts in an amount to be determined at trial. Scotts is
`
`-10-
`
`
`
`Case: 2:12-cv—O0372-JLG—NMK Doc #: 1 Filed: 04/30/12 Page: 11 of 15 PAGEID #: 11
`
`entitled to injunctive relief against Defendants, pursuant to Sections 43(c)(1), 43(c)(5), and 34 of
`
`the Lanham Act, 15 U.S.C. §§ l125(c)(1),
`
`l125(c)(5), and 1116.
`
`Scotts is also entitled to
`
`Defendants’ profits and its damages, trebled, and to reasonable attorneys’ fees and costs as a
`
`result of Defendants’ willful conduct.
`
`COUNT IV
`
`(Cyberpiracy under the Lanham Act § 43(d))
`
`49.
`
`Scotts repeats the allegations in paragraphs 1 through 48 of this Complaint as
`
`though fully set forth herein.
`
`50.
`
`By registering and using the domain name MOJOGROCOM, Defendants have
`
`demonstrated a bad faith intent to profit from Scotts’ Marks, and have registered, trafficked in,
`
`and used domain names that are identical or confusingly similar to Scotts’ Marks and Scotts’
`
`Names. Defendants are thus engaging in cyberpiracy in Violation of Section 43(d) of the
`
`Lanham Act. 15 U.S.C. § 1125(d).
`
`51.
`
`Defendants have used the domain name MOJOGROCOM with actual knowledge
`
`of Scotts’ Marks, with the intent to cause confusion, and in bad faith.
`
`52.
`
`Defendants’ use of the confusingly similar domain name is likely to cause
`
`confusion among consumers who may falsely associate Defendants and their services and
`
`products with Scotts’ and Scotts’ Marks.
`
`53.
`
`Defendants’ use of the confusing domain name is also likely to lead customers
`
`and potential customers of Scotts to mistakenly access the website of Defendants when
`
`attempting to locate Scotts’ Marks and related marks on the Internet.
`
`54.
`
`Scotts has no adequate remedy at law to address Defendants’ cyberpiracy. Scotts
`
`has been, and absent injunctive relief, will continue to be, irreparably harmed by Defendants’
`
`actions.
`
`-1]-
`
`
`
`Case: 2:12-cv-OO372—JLG—NMK Doc #: 1 Filed: 04/30/12 Page: 12 of 15 PAGEID #: 12
`
`55.
`
`Scotts is entitled to preliminary and permanent injunctive relief to prevent further
`
`damage and to prohibit Defendants from further violations of Section 43(d) of the Lanham Act,
`
`15 U.S.C. § 1l25(d).
`
`56.
`
`Pursuant to 15 U.S.C. § lll7(d), Scotts’ is entitled to an award of statutory
`
`damages in an amount up to $100,000 per domain name.
`
`57.
`
`Pursuant to 15 U.S.C. § 1l25(d)(1)(C), Scotts’ is entitled to an Order from the
`
`Court transferring the pirated domain name, MOJOGROCOM, to Scotts.
`
`COUNT V
`
`(Common Law Unfair Competition)
`
`58.
`
`Scotts repeats the allegations in paragraphs 1 through 57 of this Complaint as
`
`though fully set forth herein.
`
`59.
`
`Defendants’ misleading and confusing use of Scotts’ Marks in connection with
`
`Defendants’ competing products constitutes unfair competition under the common law of Ohio.
`
`60.
`
`Defendants’ acts are causing Scotts to suffer irreparable harm, for which it has no
`
`adequate remedy at law, and has damaged Scotts in an amount to be determined at trial for which
`
`they are jointly and severally liable.
`
`61.
`
`Unless Defendants’ misconduct is enjoined, Scotts will continue to be irreparably
`
`harmed by Defendants’ unfair competition.
`
`62.
`
`Defendants have engaged in unfair competition against Scotts Willfiilly,
`
`maliciously, with the intent to injure Scotts, and with reckless disregard for Scotts’ rights.
`
`Therefore, Scotts is entitled to recover punitive damages for Defendants’ unfair competition.
`
`-12-
`
`
`
`Case: 2:12—cv-00372-JLG—NMK Doc #1 1 Filed: 04/30/12 Page: 13 of 15 PAGEID #: 13
`
`COUNT VI
`
`(Ohio Unfair and Deceptive Trade Practices Act)
`
`63.
`
`Scotts repeats the allegations in paragraphs 1 through 62 of this Complaint as
`
`though fully set forth herein.
`
`64.
`
`Defendants’ misleading and confiising use of Scotts’ Marks in connection with
`
`Defendants’ competing products violates the Ohio Unfair and Deceptive Trade Practices Act,
`
`O.R.C. §§ 4165.01-4165.04.
`
`65.
`
`Defendants’ acts are causing Scotts to suffer irreparable harm, for which it has no
`
`adequate remedy at law, and has damaged Scotts in an amount to be determined at trial for which
`
`they are jointly and severally liable.
`
`66.
`
`Unless Defendants’ misconduct is enjoined, Scotts will continue to be irreparably
`
`harmed by Defendants’ unfair and deceptive trade practices.
`
`67.
`
`Defendants have engaged in unfair and deceptive trade practices against Scotts
`
`willfully, maliciously, with the intent to injure Scotts, with reckless disregard for Scotts’ rights,
`
`and knowing that its conduct is deceptive. Therefore, Scotts is entitled to recover punitive
`
`damages and attorneys’ fees for Defendants’ unfair and deceptive trade practices pursuant to
`
`O.R.C. § 4165.03(B).
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Scotts prays that the Court enter an Order:
`
`A.
`
`Adjudging that Defendants have been and are engaging in acts of federal
`
`trademark infringement, federal unfair competition and false advertising, federal dilution, unfair
`
`competition, and unfair and deceptive trade practices in violation of Ohio law, as alleged herein;
`
`B.
`
`Preliminarily and permanently enjoining Defendants, and their officers, agents,
`
`servants, employees and attorneys, and all persons in active concert or participation with any of
`
`-13-
`
`
`
`Case: 2:12-cv-00372-JLG-NMK DOC #2 1 Filed: 04/30/12 Page: 14 of 15 PAGEID #: 14
`
`them, from using any trademarks, trade dress, packaging, promotional materials, or other items
`
`which incorporate, which are confusingly similar to, or which dilute Scotts’ Marks, including,
`
`but not limited to, the domain name MOJOGRO.COM;
`
`C.
`
`Permanently enjoin Defendants from pursuing any United States trademark
`
`application for, and using the trademarks MOJOGRO, POWERED BY MOJOGRO or any
`
`confusingly or substantially similar trademark;
`
`D.
`
`Requiring Defendants to transfer to Scotts the domain name, and domain name
`
`registration for MOJOGROCOM;
`
`E.
`
`Pursuant to 15 U.S.C. § 1117, awarding Scotts its actual compensatory damages
`
`as a judgment against Defendants in an amount to be determined at trial for Defendants’
`
`Violations of 15 U.S.C. § 1114(1), for Defendants’ violations of 15 U.S.C. §§ l125(a), 1125(c)
`
`and 1125(d) and for Defendants’ unfair and deceptive trade practices in Violation of Ohio law;
`
`F.
`
`Awarding Scotts treble damages as a judgment against Defendants for their
`
`knowing, intentional, and willful Violations of the Lanham Act;
`
`G.
`
`Awarding Scotts its costs and reasonable attorneys’
`
`fees from Defendants
`
`pursuant to the Lanham Act;
`
`H.
`
`Awarding Scotts its costs and reasonable attorneys’ fees for Defendants’ willful
`
`unfair and deceptive trade practices;
`
`I.
`
`Awarding Scotts punitive damages as a judgment against Defendants for their
`
`willful and malicious unfair competition and unfair and deceptive trade practices;
`
`J.
`
`Awarding such other relief as may be just and proper.
`
`-14-
`
`
`
`Case: 2:12-cv—O0372-JLG—NMK Doc #: 1 Filed: 04/30/12 Page: 15 of 15 PAGEID #: 15
`
`Dated: April 30, 2012
`
`Respectfully submitted,
`
`/s/ Bradley T. Ferrell
`
`Bradley T. Ferrell (0070965), Trial Attorney
`Daniel P. Mead (0083854)
`ZEIGER, TIGGES & LITTLE LLP
`
`41 South High Street
`3500 Huntington Center
`Columbus, Ohio 43215-6101
`Telephone: (614) 365-9900
`Facsimile: (614) 365-7900
`Email: ferrell@litohio.com
`mead@litohio.com
`
`Counsel for Plaintiffs The Scotts Company LLC
`and OMS Investments, Inc.
`
`OF COUNSEL:
`
`John Gary Maynard, 111 (Va. Bar No. 40596)*
`Bradley W. Grout (Ga. Bar No. 313950)*
`HUNTON & WILLIAMS LLP
`
`954 East Byrd Street
`Riverfront Plaza, East Tower
`Richmond, Virginia 23219-4074
`Telephone: (804) 788-8200
`Facsimile: (804) 788-8218
`Email: jgmaynard@hunton.com
`bgrout@hunton.com
`*pro hac vice motions to befiled
`
`640-2661364220
`
`77730.040033 EMF_US 39657498v7
`
`
`
`Case: 2:12—cv-OO372—.JLG—NMK Doc #: 1-1 Filed: 04/30/12 Page: 1 of 15 PAGEID #2 16
`
`EXHIBIT A
`
`
`
`Lat£aSE:Iu'i§Iflf@V—OO372—JLG-NMK Doc #: 1-1 Filed: 04/30/12 Page: 2 of 15 PAGEI[3;§ge1fof3
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2012-04-26 10:06:39 ET
`
`Serial Number: 72046856 _AS._S‘lg1’ll11Bl‘1t Information
`
`Trademark Document Retrieval
`
`Registration Number: 668868
`
`Mark (words only): MIRACLE-GRO
`
`Standard Character claim: No
`
`Current Status: The registration has been renewed.
`
`Date of Status: 2008-07-23
`
`Filing Date: 1958-02-28
`
`Transformed into a National Application: No
`
`Registration Date: 1958-10-28
`
`Register: Principal
`
`Law Office Assigned: (NOT AVAILABLE)
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@uspto.gov
`
`Current Location: 40S —Scanning On Demand
`
`Date In Location: 2009-01-I6
`
`.........._....................,..__.._.........._..-......._.,_.........l.m.*-¢..rwv_w.m__$~*»»* _:.-,n*~_—
`LAST APPLICA.NT(S)/OWNEl.{(S) OF
`C
`1. OMS INVESTMENTS, INC.
`
`
`
`
`
`Address:
`
`OMS INVESTMENTS, INC.
`10250 Constellation Boulevard Suite 280
`Los Angeles, CA 900676228
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Delaware
`
`
`Goons Ann/on sienvicns
`
`U.S. Class: 010 (International Class 001)
`Class Status: Active
`
`’
`
`http://tarr.uspto.gov/tan‘?regser=registration&entry=668868&action=Request+Status
`
`4/26/2012
`
`
`
`Lat£aSB:t1?s'I€f@V-00372-JLG—NMK DOC #2 1-1 Filed: 04/30/12 Page: 3 of 15 PAGEI|3>§ge1§ 01:3
`
`WATER SOLUBLE PLANT FOOD
`
`Basis: 1(a)
`First Use Date: 1951-04-15
`First Use in Commerce Date: 1951-04-15
`
`
`
`ADDITIONAL INFORMATION
`
`(NOT AVAILABLE)
`
`(NOT AVAILABLE)
`
`MADRID PROTOCOL INFORMATION
`
`
`PROSECIITION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2010-07-22 - Notice Of Suit
`
`2009-01-1.6 - Case File In TICRS
`
`2008-07-23 - Third renewal 10 year
`
`2008-07-23 - Section 8 (10-year) accepted/ Section 9 granted
`
`2008-07-22 — Assigned To Paralegal
`
`2008-07-10 - TEAS Section 8 & 9 Received
`
`1999-01-25 - Second renewal 10 year
`
`1998-10-28 - Section 9 filed/check record for Section 8
`
`1978-10-28 - First renewal
`
`........................._....___......_....,...__......a...................._....._._...
`ATTORNEY/ICORRESPONDEVNT INFORMATION
`
`Attorney of Record
`Aimee A. Zaleski
`
`Correspondent
`Aimee A. Zaleski
`
`The Scotts Company LLC
`14111 Scottslawn Road
`
`Marysville OH 43041
`Phone Number: 937-644-7667
`Fax Number: 937-644-7568
`
`http://tarr.uspto.gov/tarr?1'egser=registration&entry=668868&action=Request+Status
`
`4/26/2012
`
`
`
`LataC~*;I:at$tan£§1fl€co:v-00372-JLG-NMK Doc #2 1-1 Filed: 04/30/12 Page: 4 of 15 PAGE|[P§§el§Qf3
`
`http://tarxzuspto.gov/tan‘?regser=registration&entry=668868&action=Request+Status
`
`4/26/2012
`
`
`
`Lategegsggmgzgzfgv-O0372—JLG—NMK Doc #: 1-1 Filed: 04/30/12 Page: 5 of 15 PAGEI[i,§ge2p 0133
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2012-04-26 10:07:58 ET
`
`Serial Number: 7328328 1 Assignment Information
`
`Trademark Document Retrieval
`
`Registration Number: 1223038
`
`Mark (words oniy): MIRACLE~GRO
`
`Standard Character claim: No
`
`Current Status: The registration has been renewed.
`
`Date of Status: 2003-03-22
`
`Filing Date: 1980-l0~24
`
`Transformed into a National Application: No
`
`Registration Date: 1983-0141
`
`Register: Principal
`
`Law Office Assigned: (NOT AVAILABLE)
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact
`the Trademark Assistance Center at TrademarkAssistanceCenter@usgt;;gm_
`
`Current Location: 408 —Scanning On Demand
`
`Date In Location: 2008—04~l 1
`
`..........-..._..............................._-..............._......................._...............-__»_»~¢___.?
`LAST A1;P.LICANTi(S)/OWNEIl(iS)
`RECORD
`1. OMS INVIESTMENTS, INC. I
`
`
`
`
`
`Address:
`
`OMS INVESTMENTS, INC.
`100 WILSHIRE BLVD., SUITE 1230
`SANTA MONICA, CA 90401
`United States
`
`Legal Entity Type: Corporation
`State or Country of Incorporation: Delaware
`
`
`AND/201.1 SERVICES
`
`International Class: 001
`Class Status: Active
`
`http 1//tarr.uspto. gov/ta1‘r?regserzregistration&entry==1 %2C223 %2C03 8&action=Request+.. .
`
`4/26/2012
`
`
`
`Late(§a§m11PsIR€<ev-00372-JLG-NMK DOC #2 1-1 Filed: 04/30/12 Page: 6 Of 15 PAG-E|[}>§*g'e2;;1Of3
`
`Fertilizer in the Form of Spikes for Trees and Shrubs
`Basis: 1(a)
`First Use Date: 1980-10-01
`First Use in Commerce Date: 1980-10-01
`
`
`
`ADDITIONAL INFORMATION
`
`Prior Registration Number(s):
`1 141943
`6688680
`
`
`MADRID PROTOCOL FORMATION
`
`
`
`
`(NOT AVAILABLE)
`
`I
`
`I
`
`H
`
`I
`
`A
`
`in RROSECUTION HISTORY
`
`I
`
`A
`
`M
`
`A
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2010-07-22 - Notice Of Suit
`
`2008-04-11 - Case File In TICRS
`
`2003-03-22 ~ First renewal 10 year
`
`2003-03-22 - Section 8 ( 10-year) accepted! Section 9 granted
`
`2003-01-06 - Combined Section 8 (10-year)/Section 9 filed
`
`2003-01-06 - PAPER RECEIVED
`
`1989-05-22 - Section 8 (6—year) accepted & Section 15 acknowledged
`
`1989-05-12 - Response received for Post Registration action
`
`1989-04-18 — Post Registration action mailed Section 8 & 15
`
`1988-12-30 ~ Section 8 (6-year) and Section 15 Filed
`
`1983-01-11 - Registered - Principal Register
`
`1982-10-19 - Published for opposition
`
`1982-09-07 - Notice of publication
`
`1982-01-05 - Non-final action mailed
`
`1981-09-16 - Assigned To Examiner
`
`http://tarizuspto.gov/tarr?regser=registration&entry=1%2C223%2C03 8&action=Request+. ..
`
`4/26/2012
`
`
`
`LateflISmuQiiJ2eCV-00372-JLG—NMK DOC #: 1-1 Filed: 04/30/12 Page: 7 Of
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
