Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA457251
`ESTTA Tracking number:
`02/17/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91203317
`Defendant
`MSD Consumer Care, Inc.
`SOPHIE B. ANGER
`MERCK & CO., INC.
`2000 GALLOPING HILL RD
`KENILWORTH, NJ 07033-1310
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`trademarkus@merck.com
`Motion to Suspend for Civil Action
`Darren B. Cohen
`dcohen@reedsmith.com
`/Darren B. Cohen/
`02/17/2012
`P.R.O. Opposition - Motion to Suspend Proceedings.pdf ( 3 pages )(23406 bytes
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`)P
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`rofoot Complaint.pdf ( 70 pages )(2252659 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91203317
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`CONSENTED MOTION TO SUSPEND PROCEEDINGS
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`Applicant, MSD Consumer Care, Inc., respectfully requests that the Trademark
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`PROFOOT, INC.
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`Opposer,
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`v.
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`MSD CONSUMER CARE, INC.
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`Applicant.
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`85/303,467
`Serial. No.:
`P.R.O. and Design
`Mark:
`Filing Date: April 25, 2011
`Published:
`September 13, 2011
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`Trial and Appeal Board (“TTAB”) suspend this Opposition Proceeding pending the resolution of
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`the lawsuit filed against Applicant by Opposer, Profoot, Inc., on December 5, 2011 in the United
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`States District Court for the District of New Jersey (the “District Court Litigation”). A copy of
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`the Complaint filed by Opposer in the District Court Litigation (asserting, inter alia, claims that
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`Applicant has infringed Opposer’s trademark) is attached as Exhibit A.
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`The Trademark Rules grant the TTAB the discretion to suspend proceedings
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`when the parties are engaged in a civil action which may be disposition of the case. TMRP, 37
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`CFR 2.117(a) (1997). It is standard procedure for the TTAB to stay administrative proceedings
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`pending the outcome of court litigation between the same parties including related issues.
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`Whopper-Burger, Inc. v. Burger King Corporation, 171, USPQ 805 (TTAB 1971).
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`Applicant seeks the requested suspension in the interests of judicial economy, and to reduce
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`duplication of effort and needless expense to the parties, since resolution of the matters at issue
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`in the District Court Litigation will likely be dispositive of matters at issue in this Opposition
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`Proceeding. In fact, the issues to be litigated in the District Court Litigation include trademark
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`infringement, unfair competition and trademark dilution, issues central to this Opposition
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`Proceeding.
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`This motion is being submitted with the consent of counsel for Opposer,
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`communicated via email on February 16, 2012.
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`For the above reasons, Applicant respectfully requests that the Board grant its
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`motion to suspend.
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`Dated:
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`New York, New York
`February 17, 2012
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`Respectfully submitted,
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`__________________________________
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`Darren B. Cohen
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`REED SMITH LLP
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`599 Lexington Avenue
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`New York, NY 10022
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`(212) 549-0346
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`Attorneys for Applicant
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`-2-
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`Certificate of Service
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`I hereby certify that a copy of the foregoing Consented Motion To Suspend Proceedings
`was mailed first-class mail postage prepaid to Alisa Simmons, Esq., Fitch, Even, Tabin &
`Flannery LLP, 120 S. LaSalle Street, Suite 1600, Chicago, Illinois 60603 and emailed to
`trademark@fitcheven.com and asimmons@fitcheven.com this 17th day of February 2012.
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`Ibis M. Vega
`Assistant to Attorney for Applicant
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`Case 3:11-cv-07079-AET-LHG Document 1 Filed 12/05/11 Page 1 of 33 PageID: 1
`Case 3:11—cv—07079-AET-LHG Document 1
`' Filed 12/05/11 Page 1 of 33 Page|D: 1
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`David S. Stone
`Jason C. Spiro
`Carolyn B. Rendell
`Stone & Magnanini LLP
`150 John F Kennedy Parkway, 4th Floor
`Short Hills, NJ 07078
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`Tel: (973) 218-1111
`Fax: (973)218-1106
`Attorneysfor Plaz'ntifi’Pr0Fo0t, Inc.
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`__
`lit? E’ 57.1 1.7 ll
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`.
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`ti-;...i:.;‘:=.'
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`Z1111 QEC - 5
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`{D f: L; L;
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF NEW JERSEY
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`PROFOOT, INC.,
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`V.
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`Plaintiff,
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`Civil Action No.
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`MSD CONSUMER CARE, INC. and
`MERCK & CO, INC.,
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`:
`2
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`JURY TRIAL DEMANDED
`
`:
`Defendants.
`X
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`VERIFIED COMPLAINT
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`Plaintiff ProFoot, Inc. (“ProFoot”), as and for its Complaint against Defendants MSD
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`Consumer Care, Inc. (“MSD Consumer Care”) and Merck & Co., Inc. (“Merck”) (collectively
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`“MSD”), through its attorneys, states the following:
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`NATURE OF THE ACTION
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`1.
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`This is an action seeking preliminary and permanent injunctive reliefand damages for
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`MSD’s infringement of ProFoot’s trademarks. Specifically, ProFoot brings this action for: (1)
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`trademark infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114; (2) unfair
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`

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`competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) trademark
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`dilution in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1 125(a)(1)(A); (4) trademark
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`infringement in violation ofN.J. Stat. Ann. § 5624-1; (5) unfair competition in violation ofN.J. Stat.
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`Ann. § 56:4-1; (6) trademark infringement under the common law ofthe State ofNew Jersey; and (7)
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`unfair competition under the common law of the State of New Jersey.
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`2.
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`ProFoot was founded in 1987 . For twenty-five years, PROFOOT has been a trusted
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`brand in the foot care products industry.
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`3.
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`ProFoot is the owner of all right, title and interest in and to the PROFOOT trademarks
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`as well as a family of related PROFOOT marks, including PROFOOT FOOTCARE PRODUCTS,
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`PROFESSIONAL, PROFESSIONAL FOOTCARE PRODUCTS, PRO SUPERSPORT ARCH
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`SUPPORT, and PRO-MAX (collectively the “PROFOOT trademarks”). Since ProFoot’s inception,
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`it has used the PROFOOT trademarks continuously in commerce in connection with the sale of its
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`foot care products.
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`4.
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`When ProFoot entered the foot care devices market, it was dominated by a single
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`brand, the Dr. Scholl’s line of products offered by Schering-Plough Corporation (“Schering-
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`Plough”).
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`5.
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`ProFoot’s innovative foot care devices, sold in connection with the PROFOOT
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`trademarks, provided customers with an attractive alternative to the Dr. Scholl’s brand and thus
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`posed a serious challenge to its market dominance.
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`6.
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`By the late 1990s, ProFoot had grown to become the second largest brand of retail
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`foot care devices in the food, drug, and mass sales markets (“mass markets”) in the United States.
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`As a result of ProFoot’ s sales success and advertising efforts, PROFOOT has become a famous mark
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`

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`that is known for and associated with innovative, patented and high-quality foot care devices.
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`7.
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`Over the years, the owners ofthe DR. SCHOLL’S brand (“Dr. Scholl’s”) have viewed
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`ProFoot as an increasing threat to Dr. Scholl’s market dominance. As a result, Dr. Scholl’s has
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`targeted ProFoot and blatantly sought to trade on ProFoot’s goodwill through a number ofdeceptive
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`trade practices, including by copying ProFoot’s highly successful “triad” orthotic and marketing a
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`nearly identical “tri-comfort” orthotic to the exact same consumers in the exact same channels of
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`trade. In doing so, Dr. Scholl’s conspicuously used the familiar “tri” brand, including the distinctive
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`lowercase “t,” that consumers associate with ProFoot’s well-known triad orthotic.
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`8.
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`Most recently and egregiously, MSD (the current owner of Dr. Scholl’s) launched a
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`sales campaign using the designation “P.R.O.” in connection with the sale of products that directly
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`compete with ProFoot’s foot care devices, without ProFoot’s authorization, in violation ofProFoot’s
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`rights in the PROFOOT trademarks.
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`9.
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`The likelihood of confusion is unmistakable. By marketing products using the
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`“P.R.O.” designation in the same charmels of trade used by ProFoot, Dr. Scholl’s creates the false
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`impression among consumers that ProFoot is a source or sponsor of Dr. Scholl’s products, that Dr.
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`Scholl’s has acquired ProFoot or the rights to the ProFoot name, and/or that Dr. Scholl’s is in some
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`way affiliated with ProFoot. Dr. Scholl’s enhances this confusion by marketing its “P.R.O.”
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`products in combination with “FOOT” and other foot care terms.
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`10.
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`Dr. Scholl’ s deceptive conduct is egregious because it is obviously anti-competitive.
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`Dr. Scholl’s continues to dominate the foot care devices market (holding a greater than 60% share of
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`mass market sales in the United States), which dwarfs the share of its closest competitor, ProFoot
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`(with less than 10% of the market).
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`

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`11.
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`There is no question that Dr. Scholl’s conduct is knowing and intentional. Dr.
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`Scholl’s is aware that for years ProFoot has continuously used the PROFOOT trademarks in
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`connection with its sale of foot care products. By using the “P.R.O.” designation in this way, Dr.
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`Scholl’s is using its market power to seize the brand name and associated goodwill of its much
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`smaller competitor — ProFoot — in order to trade on ProFoot’s reputation and goodwill and/or
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`maintain its dominant market position by diluting the PROFOOT trademarks in order to eliminate
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`ProFoot from the foot care products marketplace.
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`12.
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`ProFoot is being irreparably harmed by these unfair trade practices through at least its
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`loss of the ability to control its trademarks, loss of goodwill and reputation in its company and
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`products with both consumers and retailers, and loss of market share to the dominant brand of foot
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`care devices -- Dr. Scholl’s.
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`THE PARTIES
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`13.
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`ProFoot is incorporated in New York, with its principal place ofbusiness in Brooklyn,
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`New York.
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`14.
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`ProFoot is a leading designer and distributor of foot care products, such as insoles,
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`arch supports, heel insert pads, toe reliefpads and inserts, callous and bunion pads, and foot creams
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`and ointments. PROFOOT is the second largest brand of foot care devices in mass markets in the
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`United States.
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`15.
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`MSD Consumer Care is incorporated in Delaware, with its principal place ofbusiness
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`in Memphis, Tennessee.
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`16.
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`MSD Consumer Care is a global consumer products division and subsidiary ofMerck.
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`MSD develops, manufactures, and distributes foot care products in the United States.
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`

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`17.
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`MSD Consumer Care owns the trademarks for DR. SCHOLL’ S, which is the largest
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`brand of foot care devices in mass markets in the United States.
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`18.
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`Merck is incorporated in New Jersey, with its principal place of business in
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`Whitehouse Station, New Jersey.
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`19.
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`Merck is a global healthcare company with a portfolio of prescription medication
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`and consumer and animal health products. In 2009, Merck merged with Schering-Plough. As a
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`result of the merger, Merck became one of the world’s largest health care companies and the
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`owner of the DR. SCHOLL’s brand.
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`JURISDICTION AND VENUE
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`20.
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`This Court has federal questionjurisdiction because this action arises out ofviolations
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`offederal law pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331.
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`21.
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`This Court has supplemental jurisdiction over ProFoot’s state law causes of action
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`pursuant to 28 U.S.C. § 1367.
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`22.
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`The MSD Defendants are present in the State ofNew Jersey. This Court has personal
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`jurisdiction over Merck because, at a minimum, its corporate headquarters is located in Whitehouse,
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`New Jersey. This Court has personal jurisdiction over MSD Consumer Care because, at a minimum,
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`it sells and offers to sell merchandise to customers in New Jersey.
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`23.
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`Venue is proper in this Judicial District pursuant to 28 U.S.C. § 1391(b) and (c).
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`FACTS
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`A. ProFoot’s Use of the PROFOOT Trademarks in Commerce
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`24.
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`ProFoot was founded in 1987 by visionary entrepreneur Dr. Leonard Feldman, under
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`the name PROFESSIONAL FOOTCARE PRODUCTS.
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`

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`25.
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`Dr. Feldman entered the foot care industry because he saw a unique opportunity to
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`redefine a product category that had long been dominated by a single brand, Dr. Scholl’s.
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`26.
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`Dr. Feldman’ s focus on product innovation and design has made ProFoot a leader of
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`the foot care industry. ProFoot has grown to become the second largest foot care devices brand in
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`mass markets in the United States.
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`27.
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`Since the company’s inception, ProFoot has continuously used the PROFOOT
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`trademarks and/or family of PROFOOT trademarks in commerce.
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`28.
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`As early as 1986, Dr. Feldman used the marks PROFESSIONAL and
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`PROFESSIONAL FOOT CARE PRODUCTS in connection with the sale ofhis foot care products.
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`As a result, customers began to call his brand of foot care products ProFoot for short.
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`29.
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`In or about the early 1990s, ProFoot started using the designation “PRO” in
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`connection with its sale of foot care products. At that time, ProFoot launched an anti-fungal product
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`under the mark PROCLEARZ. Later, in or about 1993, ProFoot launched a heel cushion product
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`called PRO-MAX 3. Further, in or about 1997, ProFoot began to market and sell arch and heel
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`supports under the trademark PRO SUPERSPORT ARCH SUPPORT.
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`30.
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`By approximately 1995, the PROFOOT trademark appeared on many ofPROFOOT’ s
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`foot care products, including insoles, arch supports, and toenail scissors. Since that time, ProFoot
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`has continuously offered PROFOOT brand foot care products in retail, online and other channels of
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`trade in the United States and throughout the world. ProFoot’ s products are now distributed in over
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`twenty countries on six continents.
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`31.
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`Based on ProFoot’ s success and consumer recognition ofits products, the PROFOOT
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`brand name has become synonymous with innovative, high quality foot care products.
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`

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`32.
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`In or about 2005, ProFoot devoted substantial resources to revamping its marketing
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`efforts. For that purpose, ProFoot engaged the renowned design consulting firm Pentagram to create
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`a PROFOOT logo and packaging design to use in connection with ProFoot’s foot care products.
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`33.
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`As a result, with Pentagram’s assistance, ProFoot launched an updated line of
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`PROFOOT products, using a new logo and packaging, which further enhanced ProFoot’s brand
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`name recognition and goodwill in the foot care industry:
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`PRQFOOT
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`V
`per port .
`Arch Support
`a.:.."""‘u.n‘“.‘."..I3u‘..'.°"-u-.a"“'u...”“'
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`an-n-uqngn .
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`B. ProFoot’s Goodwill and Brand Recognition
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`34.
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`ProFoot sells innovative, high-quality products through major charmels of trade,
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`including retail, catalog and online channels. PROFOOT branded products prominently appear in
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`.
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`and are sold through major retail chains such as Walmart, Kmart, Rite Aid, Walgreens, Duane
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`Reade, CVS, Target, Kroger, Safeway, Thrifty White Drug Stores, Shoppers Drug Mart, Pharma
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`

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`Plus, Rexall, Zellers, Giant Food, Stop & Shop, and Kinney Drugs, as well as the largest catalogs in
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`the trade.
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`35.
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`Largely as a result ofProFoot’ s goodwill and brand name recognition, during the past
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`twenty-five years ProFoot’s sales have grown consistently. Every year ProFoot ships over ten
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`million foot care products such as insoles, arch supports, toe and heel pads, corn, bunion and callous
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`pads, and foot relief/care creams and ointments, to customers and retailers around the world,
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`prominently featuring the PROFOOT trademarks. ProFoot generates tens of millions of dollars of
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`annual revenue from its sale of PROFOOT branded products.
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`36.
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`As a result ofdesigning and distributing innovative, high quality products and through
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`its extensive advertising efforts, ProFoot has garnered the trust and respect of major retailers and
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`their retail customers. In recognition of ProFoot’s products and sales track record, in 2004, Walmart
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`awarded ProFoot its prestigious “Vendor of the 4th Quarter” award.
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`37.
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`ProFoot also heavily advertises its products under the PROFOOT trademarks,
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`including through network radio, consumer print, and trade advertising.
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`38.
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`In 2008, for example, ProFoot launched a radio advertising campaign for its
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`PROFOOT Synovium gel. In its radio advertisements, ProFoot staked the PROFOOT name to its
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`product reputation, including by guaranteeing its PROFOOT products and directing customers to the
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`profootcare.com website to learn more about ProFoot’s “guarantee.”
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`39.
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`In 2011, ProFoot entered into an engagement for a year-long national radio
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`advertising campaign -- with a projected advertising spend ofapproximately $1 million -- to promote
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`its PROFOOT branded products. As a result, the PROFOOT name has reached and is reaching the
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`ears of millions of customers and potential customers.
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`

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`40.
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`ProFoot also promotes its PROFOOT branded products through consumer print
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`advertisements such as free standing inserts in publications such as newspapers. Through such print
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`advertising, the PROFOOT brand name has reached and is reaching millions of customers and
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`potential customers
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`41.
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`PROFOOT branded products also appear in tens of millions of mail order catalog
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`advertisements every year. ProFoot has found that by increasing the prominence ofits display ofthe
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`PROFOOT brand in catalogs, ProFoot can generate substantial increases in catalog sales.
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`42.
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`PROFOOT branded products also appear in trade advertisements, including circular
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`advertisements and in-store displays for retailers such as Walmart, and in promotional materials for
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`trade shows. Through such trade advertisements, the PROFOOT brand name has reached and is
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`reaching millions of customers and potential customers.
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`43.
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`ProFoot has also received national and regional media recognition for its PROFOOT
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`brand. On October 27, 2008, for example, Crain’s New York Business published an article entitled,
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`“Putting a Pampered Foot Forward: Brooklyn’ s ProFoot challenges Dr. Scholl’s,” which recognized
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`PROFOOT’s growth from a start-up company to the second largest brand of foot care devices in
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`mass markets in the United States. Similarly, a March 30, 2009 article in the Daily News profiled
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`ProFoot and highlighted the company’s “innovation” in the foot care products industry.
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`44.
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`By virtue of its long, exclusive and continuous use of the PROFOOT trademarks,
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`ProFoot has acquired and possesses significant goodwill in its company and product brands,
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`including in connection with a wide variety offoot care products. ProFoot has developed substantial
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`consumer recognition as the source of the high quality PROFOOT foot care products. In addition,
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`the PROFOOT trademarks have become famous within the United States and well known to actual
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`

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`and potential customers of foot care products.
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`45.
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`Based on this long and continuous use and recognition of PROFOOT products,
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`ProFoot is the sole and exclusive owner of common law trademark rights in and to the PROFOOT
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`trademarks for use in connection with foot care devices.
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`C. ProFoot’s Registered Trademarks
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`46.
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`PROFOOT protects its intellectual property in its products and marks, including
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`through patents and trademark registrations.
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`47.
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`ProFoot is the sole and exclusive owner ofthe following U.S. federal registrations as
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`issued by the United States Patent and Trademark Office (“PTO”) and placed by the PTO on its
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`Principal Register:
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`a. U.S. Trademark Registration No. 3974509 for the mark PROFOOT, issued on June
`7, 2011, in IC 5 for Antifungal preparations; Corn and callus creams; Moleskin for
`medical purposes:
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`PROFOOT
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`b. U.S. Trademark Registration No. 3662260 for the mark PROFOOT (with design),
`issued on August 4, 2009, in IC 10 for Insoles; Arch Supports; Toe Relief Pads,
`Elastic Loops for Toes To Relieve Pain of Overlapping Toes; Corn, Bunion and
`Callous Pads; Toe Inserts For Relieving Bunion Discomfort; Moleskins; and Heel
`Insert Pads, All for Orthopedic Use; and in IC 25 for Heel Pads, Insoles and Inserts
`for Footwear for Primarily Non-orthopedic Purposes, Namely, Cushioning and
`Supporting the Feet;
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`c. U.S. Trademark Registration No. 3337766 for the mark PROFOOT (with design),
`issued on November 20, 2007, in IC 10 for Insoles; Arch Supports; Toe Relief Pads,
`Elastic Loops for Toes To Relieve Pain of Overlapping Toes; Corn, Bunion and
`Callous Pads; Toe Inserts For Relieving Bunion Discomfort; Moleskinsg and Heel
`Insert Pads, All for Orthopedic Use; and in IC 25 for Heel Pads, Insoles and Inserts
`for Footwear for Primarily Non-orthopedic Purposes, Namely Cushioning and
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`10
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`

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`Supporting the Feet:
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`PRQFOOT A
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`d. US Trademark Registration No. 2494422 for the mark PROFOOT FOOTCARE
`PRODUCTS, issued on October 2, 2001, in IC 8 for Toe Nail Scissors; and in IC 10
`for Insoles; Arch Supports; Toe Relief Pads, Elastic Loops for Toes (To Relieve Pain
`of Overlapping Toes); Corn, Bunion and Callous Pads; Toe Inserts For Relieving
`Bunion Discomfort; Moleskins; and Heel Insert Pads, All for Orthopedic Use;
`
`e. U.S. Trademark Registration No. 2490838 for the mark PROFOOT (with design),
`issued on September 18, 2001, in IC 8 for Toe Nail Scissors; and in IC 10 for Insoles;
`Arch Supports; Toe Relief Pads, Elastic Loops for Toes (To Relieve Pain of
`Overlapping Toes); Corn, Bunion and Callous Pads; Toe Inserts For Relieving
`Bunion Discomfort; Moleskins; and Heel Insert Pads, All for Orthopedic Use:
`
`pnproor
`
`f. U.S. Trademark Registration No. 215403 1 for the mark PRO SUPERSPORT ARCH
`SUPPORT, issued on April 28, 1998, in IC 10 for arch supports and orthopedic heel
`
`supports:
`
`
`
`g. U.S. Trademark Registration No. 1895913 for the mark PROFESSIONAL FOOT
`CARE PRODUCTS, issued on May 30, 1995, in IC 8 for Toe Nail Scissors; and in
`IC 10 for Insoles; Arch Supports; Toe Relief Pads, Elastic Loops for Toes (To
`Relieve Pain of Overlapping Toes); Corn, Bunion and Callous Pads; Toe Inserts For
`
`11
`
`

`
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`Relieving Bunion Discomfort; Moleskins; and Heel Insert Pads, All for Orthopedic
`Use:
`
`FESSIONAL
`FCOICAQEPRODUCIS
`
`h. U.S. Trademark Registration No. 1885777 for the mark PROFESSIONAL (with
`design), issued on March 28, 1995, in IC 8 for Toe Nail Scissors; and in IC 10 for
`Insoles; Arch Supports; Toe Relief Pads, Elastic Loops for Toes (To Relieve Pain of
`Overlapping Toes); Corn, Bunion and Callous Pads; Toe Inserts For Relieving
`Bunion Discomfort; Moleskins; and Heel Insert Pads, All for Orthopedic Use:
`
`i. U.S. Trademark Registration No. 1856230 for the mark PRO-MAX 3, issued on
`September 27, 1994, in IC 10 for molded heel cushion with shock absorbing center
`for orthopedic use.
`
`48.
`
`Copies of the trademark registrations for the aforementioned marks are attached as
`
`Exhibits A through I.
`
`49.
`
`ProFoot’s continuous and uncontested use of the PROFOOT trademarks in
`
`connection with the sale of its foot care products for the past twenty-five years plainly establishes
`
`ProFoot’s rights in the PROFOOT trademarks for foot care devices.
`
`D. MSD’s Intentional Infringing Use of the “P.R.0.” Designation
`
`50.
`
`Dr. Scholl’ s has long been aware ofProFoot and its PROFOOT products. For twenty-
`
`five years the two companies have been direct competitors in the foot care products industry, selling
`
`12
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`foot care products to the same consumers through the same channels of trade. In fact, Dr. Scholl’s
`
`and ProFoot are respectively the first and second largest brands of foot care devices in mass markets
`
`in the United States.
`
`5 1 .
`
`The competition between Dr. Scholl’ s and ProFoot has been widely recognized in the
`
`trade. According to statistics published by Information Resources Inc. (“IRI”), ProFoot experienced
`
`a nearly 40% increase in dollars sales for the 52-week period ending on August 1 1, 2002, largely at
`
`the expense of Schering-Plough’s Dr. Scholl’s brand:
`
`FOOT CARE DEVICES--TOP 10 VENDORS
`
`Dollar
`sales
`
`% change vs. Dollar Unit
`year ago
`share
`sales
`
`Schering—P1ough
`ProFoot Care
`Private label
`Implus Footcare LLC
`PediFix Footcare Prods.
`Novartis
`Combe Inc.
`Johnson & Johnson
`Homedics
`W.E. Bassett Co.
`
`$172.7
`18.0
`16.9
`7.1
`6.8
`8.6
`6.4
`6.3
`5.4
`3.3
`
`-5.3%
`39.1
`6.3
`1.1
`8.6
`160.9
`-7.5
`-28.4
`189.8
`15.9
`
`64.6%
`6.7
`6.3
`2.7
`2.5
`2.4
`2.4
`2.4
`2.0
`1.2
`
`32.4
`3.2
`8.3
`1.2
`1.3
`0.6
`1.5
`1.3
`0.2
`1.1
`
`Information Resources Inc. Food, drug and mass sales for
`Source:
`52-week period ended August 11, 2002. Sales are in millions.
`
`52.
`
`By 2002, at least one grocery trade publication, “Grocery Headquarters,” recognized
`
`that ProFoot was making significant inroads into Dr. Scholl’s market share for foot care devices in
`
`mass markets in the United States and described the “well documented” “battle” between Dr.
`
`Scholl’s and ProFoot:
`
`In foot care devices, this battle is well documented. Schering-Plough, the
`maker of the ubiquitous Dr. Scholl's brand, has long held a stranglehold on
`the device field. .
`.
`. according to Chicago-based Information Resources Inc.
`(IRI), its sales have staggered in recent years compared to many competitors.
`For example, Brooklyn, N.Y-based ProFoot Care realized a nearly 40%jump
`in dollar volume during IRI’s 12-month tracked period ended August ll,
`
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`thanks in large part to the introduction of Triad last year. Now, industry
`sources say that Dr. Scholl’s is set to introduce its own version of the
`waterproof, windproof and breathable insole.
`
`53.
`
`Thus, when ProFoot launched its extremely successfill PROFOOT triad orthotic in
`
`2001, the dominant industry player -- Dr. Scholl’s -- specifically targeted the market upstart --
`
`ProFoot -- and its triad foot care device.
`
`54.
`
`By 2003, Dr. Scholl’s had introduced a copy of ProFoot’s triad orthotic, which it
`
`conspicuously branded as the tri-comfort orthotic.
`
`
`
`55.
`
`By launching the tri-comfort orthotic, Dr. Scholl’s blatantly sought to trade on the
`
`goodwill generated by ProFoot’ s successful triad orthotic. Not only was the tri-comfort basically the
`
`same product, sold to the same customers, in the same channel of trade, but the tri-comfort brand
`
`was a copy of the familiar “tri” branding used by ProFoot, including the distinctive use of a
`
`lowercase “t”.
`
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`56.
`
`This type of conduct was apparently part of Dr. Scholl’s marketing strategy for
`
`maintaining its market dominance. At least one other foot care devices competitor, Implus Corp.,
`
`filed a suit against Schering-Plough alleging similar unfair trade practices designed to maintain Dr.
`
`Scholl’ s dominance in the foot care devices market, Implus Corporation v. Schering-Plough, 95-cv-
`
`00146 (JAB) (M.D.N.C.).
`
`57.
`
`Thus, it was surely not a coincidence when, in or about 2006, shortly after ProFoot
`
`launched its new ProFoot marketing materials, Dr. Scholl’s launched new marketing materials,
`
`including by adding the designation “Pain Relief Orthotics” to its packaging for its foot care devices.
`
`58.
`
`After Dr. Scholl’s creation of the “Pain Relief Orthotics” designation, it created the
`
`“P.R.O.” designation at issue in this case. On April 25, 2011, MSD submitted an application to the
`
`PTO seeking the registration for the designation “P.R.O.” in IC 10 for “Orthotics for footwear,”
`
`Serial Number 78/098,848. That application was published for opposition on September 13, 2011
`
`and depicts the following “P.R.O.” designation:
`
`59.
`
`MSD created the “P.R.O.” designation for its foot care devices with full knowledge
`
`that the PROFOOT trademarks begin with “PRO”. Given the unmistakable similarity between the
`
`marks and the close competition between Dr. Scholl’s and ProFoot, it is clear that MSD’s purpose in
`
`adopting this mark is to confiise customers about the source, sponsorship, and/or affiliation of its
`
`products
`
`60.
`
`MSD’s use of the “P.R.O.” designation is without authority from ProFoot, and is in
`
`15
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`contravention of ProFoot’s sole and exclusive rights in the use of and to the PROFOOT trademarks
`
`in connection with foot care devices, including insoles, arch supports and other orthotics for
`
`footwear. Further, as MSD is aware, ProFoot has filed notice with the Trademark Trial and Appeal
`
`Board reflecting its intent to object to MSD’s registration.
`
`61.
`
`Nevertheless, in or about October 2011, MSD began to display the “P.R.O.”
`
`designation on packaging and advertising for Dr. Scholl’s foot care devices that directly compete
`
`with PROFOOT foot care devices. MSD receives orders and monetary payments from customers
`
`located throughout the United States, including New Jersey, for products using this confusingly
`
`similar “P.R.O.” designation. MSD ships these products throughout the United States, including
`
`New Jersey.
`
`62.
`
`MSD is using the “P.R.O.” mark in association with foot care devices that directly
`
`compete with ProFoot’s foot care devices, with knowledge of ProFoot’s superior rights in the
`
`PROFOOT trademarks. Not only is ProFoot the second largest foot care devices brand in mass
`
`markets in the United States, but there has been substantial media attention paid to ProFoot’s
`
`competition with Dr. Scholl’s.
`
`63.
`
`For example, the October 27, 2008 Crain’s article, entitled “Putting a Pampered Foot
`
`Forward: Brooklyn’s ProFoot challenges Dr. Scholl’s,” reported that ProFoot has built “a
`
`tremendous reputation” competing against Dr. Scholl’s:
`
`Feldman follows his instincts in competing with the category king, Dr.
`Scholl’s. .
`. .That brand had a 90% market share when ProFoot was founded
`in 1987. Today, Dr. Scholl’s has 68% and Brooklyn based Profoot claims
`10-12%.
`
`64.
`
`MSD has carefully orchestrated this infringement for the purpose of seizing control of
`
`the PROFOOT trademarks from ProFoot. In this way, MSD is willfully trading upon the substantial
`
`16
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`goodwill, reputation and fame that ProFoot has developed and acquired among consumers in
`
`connection with the PROFOOT trademarks and/or is seeking to wrongfully maintain its dominant
`
`market position by eliminating ProFoot from the foot care devices marketplace.
`
`E. MSD’s Use of the “P.R.O.” Designation is Likely to Cause Confusion and the Dilution
`of the PROFOOT Trademarks
`
`65.
`
`MSD’s use ofthe “P.R.O.” designation is likely to cause confilsion about the source,
`
`sponsorship, or affiliation of MSD products.
`
`66.
`
`Consumers are likely to be confiised by the similarity ofthe “P.R.O.” designation and
`
`the PROFOOT trademarks. “PRO” is the dominant aspect of the PROFOOT trademarks and the
`
`PROFOOT family of marks. ProFoot places emphasis on “PRO” in its PROFOOT family ofmarks,
`
`including its PROFOOT marks (with the stylized PRO), PROFESSIONAL and PROFESSIONAL
`
`FOOT CARE P