Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA470841
`ESTTA Tracking number:
`05/04/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91205022
`Plaintiff
`Iknow LLC
`Benjamin G. Taub
`Budd Larner, P.C.
`150 John F. Kennedy Parkway
`Short Hills, NJ 07078
`UNITED STATES
`jtaub@buddlarner.com
`Motion to Suspend for Civil Action
`Benjamin G. Taub
`jtaub@buddlarner.com, bradin@buddlarner.com
`/Benjamin G. Taub/
`05/04/2012
`Iknow v. Mercer - Motion to Suspend (91205022).pdf ( 19 pages )(722268 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
`
`IKNOW LLC,
`
`Opposer,
`
`V.
`
`MERCER (US) INC,
`
`Applicant.
`
`OPPOSITION NO. 91205022
`Serial NO. 85/331,718
`
`S
`:
`;
`
`x
`
`MOTION TO SUSPEND PROCEEDING PENDING
`
`DISPOSITION OF FEDERAL LITIGATION AND MEMORANDUM IN SUPPORT
`
`Opposer Iknow LLC (hereinafter, "Opposer”),
`
`through undersigned counsel, hereby
`
`moves to suspend these proceedings pending disposition of federal litigation pursuant to 37
`
`C.F.R. § 2.117(a).
`
`In support of this motion. Opposer states as follows:
`
`The parties to this proceeding are involved in a civil action, Iknow LLC v. Mercer (US).
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`Inc. and Mercer LLC, Civil Action No. 3:12~cv-01084-JAP-DEA, which is currently pending in
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`the US. District Court for the District of New Jersey, (hereinafter “federal litigation" or "federal
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`court action—) (fie true and correct copy of Applicant's Complaint, attached hereto as Exhibit A).
`
`"To the extent that a civil action in a federal district court involves issues in common
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`with those in a proceeding before the Board, the decision of the federal district court is often
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`binding upon the Board.” See TBMP § 5l0.02(a). "[W]hile a decision by the District Court
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`would be binding upon the [United States Patent and Trademark Office ("USPTO")], a decision
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`by the [Board] would only be advisory in respect to the disposition of the case pending in the
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`District Court." Tokaido v. Honda Assocs. Inc., 179 U.S.P.Q. 861, 862 (T.T.A.B. 1973); see also
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`891587
`
`

`
`Whopper—Burger_ Inc. v. Burger King Corp. 171 U.S.P.Q. 805, 807 (1971) ("The duty of this
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`Court, as of every other judicial tribunal, is to decide actual controversies by a judgment which
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`can be carried into effect, and not to give opinions upon moot questions or abstract propositions,
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`or to declare principles or rules of law which cannot affect the matter in issue in the case before
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`it.") (quotation omitted). “The only question for determination... is whether the outcome of the
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`civil action will have a bearing on the issues involved in the opposition proceeding." Other Tel.
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`Co. v. Conn. Nat’l Tel. Co.
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`Inc, 1.81 U.S.P.Q. 125, 126 (T.T.A.B. 1974), petition denied, 181
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`U.S.P.Q. 779 (Comm’r 1974).
`
`Here, the final determination of the federal court action could have a bearing on the
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`issues before the Board because Opposer, the plaintiff in the federal court action, has sought a
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`judicial declaration on the issue of whether Opposer’s claimed IKNOW trademark has been
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`infringed by Applicant Mercer (US) Inc. (“Applicant”), and whether Applicant’s alleged use of
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`its MERCER [KNOW mark infringes Opposer’s rights to its IKNOW mark. The issues are
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`likewise raised by the above Opposition, and the civil action may therefore be dispositive of this
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`proceeding. For this reason, the Opposition should be suspended pending the outcome of the
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`federal court action.
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`WHEREFORE, Opposer respectfully requests that the Opposition be suspended pending
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`disposition of a pending civil action referenced herein.
`
`Respectfully submitted,
`BUDD LARNER, PC.
`Attorneys for Opposer [know LLC
`
`“lW““’”“'ar
`W
`2%,
`By: mWmW,§ gm’
` a»
`2! W”;
`%,
`Benjamin G. Taub ( jtaub.@,buddlarner.corn)
`Bruce D. Radin (bradin@,buddlarner.corn)
`Tel: (973) 379-4800
`
`Dated: May 4. 2012
`
`891587
`
`

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`CERTIFICATE OF TRANSMITTAL
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`It is hereby certified that the within Motion to Suspend Proceeding Pending Disposition
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`of Federal Litigation and Memorandum in Support
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`is being filed electronically with the
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`Trademark Trial and Appeal Board, Via the Electronic System for Trademark Trials and Appeals
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`(ESSTA) on May 4, 2012.
`
`Dated: May 4, 2012
`
`r”’”””“‘:””””%§,%:
`*5 mm.
`3 W em-w~w
`<*ee~s»-~—-»—---s—~2«t
`BENJAMIN G. TAUB
`
`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that, on May 4, 2012, I caused a true and correct copy of this
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`Motion To Suspend Proceeding Pending Disposition of Federal Litigation and Memorandum in
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`Support to be sent via First Class Mail, postage prepaid, to Applicant’s Correspondent of Record,
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`Mercer (US) Inc., H66 Avenue of the Americas, 24”‘ Floor, New York, New York 10036, Attn:
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`Vicki Menard, Assistant Secretary.
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`Dated: May 4, 2012
`
`/,,,.,¢a,«.»~«;:z,~;ra..-¢.m,v,..,..,,..I—22.,4,;,.,,%
`/—u._,,_(_v/y'Kg‘~/VUM
`
`am,
`BENJAMIN 8 TAUB
`
`2%
`
`891587
`
`

`
`EXHIBIT A
`
`

`
`Case 3:12—cv-O1D84~JAP—DEA Document 1 Filed 02/23/12 Page 1 of 12 PagelD: 1
`
`Bruce D. Radin (Lbradin@,buddlarner.com)
`Benjamin G. Taub (jtaub@buddlarner.com)
`BUDD LARNER, RC.
`
`lSO John F. Kennedy Parkway
`Short Hills, NJ 07078-2703
`
`Tel:
`
`Fax:
`
`(973) 3794800
`
`(973) 379-7734
`
`Aftarneysvfbr PIczz’ntfij"ikrzow LAC
`
`Document Filed Electronically
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`[KNOW LLC,
`
`Plaintiff.
`
`V.
`
`MERCER (US), INC, and
`MERCER LLC,
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`Defendants.
`
`Civil Action No.
`
`District Judge
`Magistrate Judge
`
`:
`
`X
`
`COMPLAINT AND DEMAND FOR JURY TRIAL
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`Plaintiff lknow LLC, a Delaware limited liability company doing business at
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`lO0
`
`Overlook Center, 2“ Floor, Princeton, New Jersey 08540 (“know”), for its complaint against
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`defendants Mercer (US), lnc., a Delaware corporation, doing business at ll66 Avenue of the
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`Americas, New York, New York M1036 and Mercer LLC, a Delaware limited liability company,
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`doing business at H66 Avenue of the Americas, New York, New York 10036 (collectively,
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`“defendants”), says:
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`NATURE OF THE ACTION
`
`This is an action for trademark infringement and unfair competition under the federal
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`Lanharn Act, 15 U.S.C. Section 105l, er seq, and under the statutory and common law of the
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`00882962
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`

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`Case 3:12-cv-01084—J/i\P—DEA Document 1 Filed 02/23/12 Page 2 of 12 PagelD: 2
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`State of New Jersey, arising out of defendants’ improper use of lknovfs trademark and goodwill,
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`for which lknow seeks injunctive relief. damages and other relief as may be deemed necessary
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`and proper by the Court. Such acts will injure the goodwill and reputation of [know and will
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`damage its business, and unless restrained by the Court, will continue to damage lknow.
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`JURISDICTION AND VENUE
`
`1.
`
`2.
`
`The claims alleged in this Complaint arise in the State and District of New Jersey.
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`This Court has original federal question jurisdiction over this dispute pursuant to
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`15 U.S.C. § 1121. 28 U.S.C. § 1331, and 28 U.S.C. § l338(a), as this action arises under the
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`Lanham Act (15 U.S.C.§ 1051, et seq}.
`'1
`.3
`
`This Court has jurisdiction over ll<now’s claims of unfair competition arising
`
`(,4)
`under state law pursuant to 28 U.S.C. § 13 8(:b), as well as pendent jurisdiction over those and
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`the remaining claims.
`
`4.
`
`This Court has supplemental jurisdiction over ll<now’s state law claims pursuant
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`to 28 U.S.C. § 1367(a).
`
`5.
`
`Venue is proper in this district under 28 U.S.C. § 1391, as defendants do business
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`is this district. and upon information and belief, have sold or offered for sale services in this
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`district that are the subject of this suit.
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`6.
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`Defendants are now, and at all times relevant to this Complaint have been, subject
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`to personal jurisdiction in the State and District of New Jersey.
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`PARTIES
`
`7.
`
`lknow is a Delaware limited liability company with offices at 100 Overlook
`
`Center, 2“ Floor, Princeton, New Jersey 08540.
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`00882962
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`

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`Case 3:12-cv-01084-JAP-DEA Document 1 Filed 02/23/12 Page 3 of 12 PagelD: 3
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`8.
`
`Jpon information and belief, defendant Mercer
`
`(U S)
`
`Inc.
`
`is a Delaware
`
`corporation, doing business at 1 166 Avenue of the Americas, New York, New York 10036.
`
`9.
`
`Upon information and belief, defendant Mercer LLC is a Delaware limited
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`liability company, doing business at 1l66 Avenue of the Americas, New York, New York
`
`10036.
`
`BACKGROUND
`
`Iknow and its IKNOW® trademark
`
`l0.
`
`lknow is a business that offers and provides business management and technology
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`consulting services in the United States commerce under its IKNOW® trademark.
`
`11.
`
`lknow business management and technology consulting services involve the
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`analysis of the intellectual and knowledge-based assets,
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`including the human capital (i.e.,
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`employees), of its business customers to design business and knowledge processes and deploy
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`data management, content management, and knowledge management software tools, systems,
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`and solutions for these business customers.
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`12.
`
`Iknow offers and provides its business and technology consulting services to
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`business customers in a wide variety of industries.
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`13.
`
`Iknow has used the trademark IKNOW® continuously in the United States
`
`commerce in connection with its business management and technology consulting services since
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`2001.
`
`l4.
`
`Iknow owns the trademark registration for IKNOW® in the Unites States, a copy
`
`of which is attached as Exhibit A:
`
`
`3,206,035
`in Febru 6,20
`2001
`International Class 035:
`Business
`management consulting and advisog
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`00882962
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`

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`Case 3:12-cv—OlO84—JAP-DEA Document 1 Filed 02/23/12 Page 4 of 12 PagelD: 4
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`information ;
`
`to
`relating
`services
`management, knowledge management,
`content
`management,
`document §
`management, t
`
`records
`;management,
`taxonomy and metadata management, f
`search
`and
`search—deriVatiVe ;
`collaboration,
`; applications,
`portals,
`workflow automation, text mining and
`‘ text analysis, data management, datal
`mining, data Visualization, simulation,
`and/or
`artificial
`rule-based systems,
`{ intelligence.
`
`l5.
`
`lknow is the owner of extensive common law trademark rights to the IKNOW
`
`trademark under Federal and New Jersey statutory and common law by virtue of the continuous
`
`use of the mark for over 10 years.
`
`to,
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`ll<now’s lKNOW® trademark is fanciful, inherently distinctive, and entitled to a
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`broad scope of protection.
`
`Defendants and their unauthorized use of IKNOW and MERCER II0lOW
`
`17.
`
`Defendants use the IKNOW and MERCER IKNOW designations in connection
`
`with their business consulting services, relating to the analysis and interpretation of their
`
`business customers‘ knowledge relating to human capital.
`
`18.
`
`Upon information and belief, defendants started to use the IKNOW and MERCER
`
`IKNOW designations in connection with their business consulting services at least ten (10) years
`
`after Iknow started to use its lKNOW® trademark.
`
`l9.
`
`Upon information and belief, defendants started to use the IKNOW and MERCER
`
`IKNOW designations in connection with their business consulting services at least four (4) years
`
`after lknow obtained federal
`
`trademark registration in the United States for its lKNOW®
`
`trademark.
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`00882962
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`Case 3:12—cv~O1084-JAP~DEA Document 1 Filed 02/23/12 Page 5 of 12 PagetD: 5
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`20.
`
`Defendants use the IKNOW designation separate and apart front, and/or in a
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`dominant rnanner to, the MERCER term in connection with its services.
`
`21.
`
`Defendant Mercer (US). Inc. filed a trademark application for the MERCER
`
`IKNOW designation with the United States Patent & Trademark Office in International Class
`
`035 in connection with “[h]un1an capital consulting services, namely producing statistical human
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`capital models, reports and dashboards in the field of human capitai via the Internet,” which was
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`‘filed on May 26, 201 i on an intent-to-use basis and assigned LES. Serial No. 85/331,718.
`
`22.
`
`The {KNOW and MERCER IKNOW designations used by defendants have the
`
`same meaning, connotation and sound as the lKNOW® trademark owned and used by lknow.
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`23.
`
`Defendants offer and provide services under the IKNOW and the MERCER
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`[KNOW designations that are the same or highly similar to, and directly competitive with, the
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`services offered and provided by lknow under its llC\lOW® trademark.
`
`24.
`
`Upon information and beliefi defendants market their services under the lK:\IOW
`
`and MERCER [KNOW designations in the same and/or similar channels of trade that lknow
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`markets its services in under its li<ZNOW® trademark.
`
`25.
`
`Upon information and belief, defendants were aware of the li<L\iOW® trademark
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`and lknovfs rights in and to such trademark, prior to adopting and using the IKNOW and
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`MERCER IKNOW designations.
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`26.
`
`Upon information and belief, defendants chose to use the IKNOW and MERCER
`
`IKNOW designations to confuse and deceive customers that their services were associated with,
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`approved by, and/'or sponsored by lknow.
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`27.
`
`{know has no association or affiliation with, and does not sponsor, authorize or
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`approve, defendants or any services offered by defendants.
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`

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`Case 3:12—cv—O1084-JAPDEA Document 1 Filed 02/23/12 Page 6 of 12 PagelD: 6
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`28.
`
`Upon information and belief. such confusion and deception was intentional for
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`defendants to trade off of and capitalize on lknows goodwill and reputation,
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`FIRST CLAIM FOR RELIEF
`
`‘
`Infrin ement of Re istered Trademark In Violation of 15 U.S.C.
`
`
`
`29.
`
`Each of the foregoing allegations is incorporated by reference as though fully set
`
`forth at length herein.
`
`30.
`
`Defendants’ use of the IKNOW and MERCER IKNOW designations is likely to
`
`cause confusion, or cause mistake, or to deceive as to origin, sponsorship, or approval of
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`defendants’ goods, services, or commercial activities,
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`in violation of Section 32(1) of the
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`Lanharn Act (l5 U.S.C. §1ll4(l)}.
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`31.
`
`The aforesaid infringement by defendants was committed willfully, knowingly,
`
`maliciously, and in conscious disregard of lknow’s rights.
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`32.
`
`The aforesaid infringement by defendants has caused, and unless restrained by
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`this Court will continue to cause,
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`immediate and irreparable injury and damage to ll<now’s
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`property and business.
`
`33.
`
`Upon information and beliefi defendants’ conduct constitutes willful and
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`malicious infringement of the IKNOWQP9 trademark under l5 U.S.C, § ll 14, thus rendering the
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`present case as an “exceptional” case under 15 U.S.C. § 1 117.
`
`34.
`
`lknow has no adequate remedy at law.
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`SECOND CLAIM FOR RELIEF
`
`Trademark Infrino,ement In Violation of 15 U.S.C. § 1125gag
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`35.
`
`Each of the foregoing allegations is incorporated by reference as though fully set
`
`forth at length herein.
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`00882962
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`

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`Case 3:12—cv-OitO84»JAP—DEA Document 1 Filed 02/23/12 Page 7 of 12 PagelD: 7
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`36.
`
`Defendants’
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`unauthorized use of
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`the
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`IKNOW and MERCER lKNOW
`
`designations is likely’
`
`to cause confusion, or to cause mistake, or to deceive as to origin,
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`sponsorship, or approval or defendants’ goods, services or commercial activities in violation of
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`Section 43(a) ofthe Lanharn Act (l5 U.S.C. § 1125 (a)).
`
`37.
`
`The aforesaid infringement of by defendants wasicornrnitted willfully, knowingly.
`
`maliciously, and in conscious disregard of ll<1iow’s rights.
`
`38.
`
`The aforesaid infringement by defendants has caused, and unless restrained by
`
`this Court will continue to cause,
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`immediate and irreparable injury and damage to lknow’s
`
`property and business.
`
`39.
`
`llmow has no adequate remedy at law.
`
`THIRD CLAIM FOR IUZLIEF
`
`Unfair C om etition In Violation of 15 U.S.C.
`
`
`
`
`
`40.
`
`Each of the foregoing allegations is incorporated by reference as though fully set
`
`forth at length herein.
`
`L
`
`4i.
`
`Defendants’
`
`unauthorized use of
`
`the
`
`IKNOW and MERCER IKNOW
`
`designations constitutes unfair competition, in Violation of Section 43(a) of the Lanharn Act (15
`
`Ll.S.C.§ ll2S (a)).
`
`42.
`
`The aforesaid unlawful actions by defendants were committed willfully,
`
`knowingly, maliciously, and in conscious disregard of lknow’s rights.
`
`43.
`
`The aforesaid unlawful actions by defendants have caused, and unless restrained
`
`by this Court will continue to cause, immediate and irreparable injury and damage to l1~:now’s
`
`property and business.
`
`44.
`
`lknow has no adequate remedy at law.
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`00882962
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`Case 3:12—cv—O1084«-JAPDEA Document 1 Filed 02/23/12 Page 8 of 12 PagelD: 8
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`FOURTH CLAIM FOR RELIEF
`
`Common-Law Unfair Comgetition
`
`45.
`
`Each of the foregoing allegations is incorporated by reference as though fully set
`
`forth at length herein.
`
`46.
`
`The aforementioned acts of defendants constitute unfair competition and unfair
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`business practices contrary to the common laws of the United States and the State of New Jersey.
`
`47.
`
`The aforesaid unlawful actions by defendants were committed willfully,
`
`knowingly, maliciously, and in conscious disregard of ll<now’s rights.
`
`48.
`
`The aforesaid unlawful actions by defendants have caused, and unless restrained
`
`by this Court will continue to cause, immediate and irreparable injury and damage to lknov/‘s
`
`property and business.
`
`49.
`
`lknow has no adequate remedy at law.
`
`FIFTH CLAIM FOR RELIEF
`
`Unfair Com etition Under N.J.S.A.
`
`56:4-1.. et Se .
`
`50.
`
`Each of the foregoing allegations is incorporated by reference as though fully set
`
`forth at length herein.
`
`51.
`
`Defendants’ unauthorized use of the lKZ\lOW
`
`and
`
`MERCER
`
`IKNOW
`
`designations
`
`in advertising constitutes
`
`acts of unfair competition through defendants’
`
`appropriation for their own use of the name, brand, trademark, reputation, and goodwill of Iknow
`
`in Violation ofN.J.S.A. §§ 56:4-1, meg.
`
`S2.
`
`The aforesaid unlawful actions by defendants were committed willfully,
`
`knowingly, maliciously, and in conscious disregard of lknow’s rights.
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`00882962
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`

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`Case 3:12»cv—OlO84—JAP—DEA Document 1 Filed 02/23/12 Page 9 of 12 PageID: 9
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`S3.
`
`The aforesaid unlawful actions by defendants have caused, and unless restrained
`
`by this Court will continue to cause, immediate and irreparable injury and damage to lknows
`
`property and business.
`
`54.
`
`lknow has no adequate remedy at law.
`
`SJXTH CLAIM FOR RELIEF
`
`New Jersey Trademark Infrinoement under N.J.S.A.
`
`
`
`56:?»-13.16
`
`
`
`
`55.
`
`Each of the foregoing allegations is incorporated by reference as though fully set
`
`forth at length herein.
`
`56.
`
`Defendants’ unauthorized use of the IKNOW
`
`and
`
`MERCER
`
`[KNOW
`
`designations constitutes acts of trademark infringement, in violation of:\l.J.S.A. § 56:3-13.16.
`
`57,
`
`The aforesaid infringement by defendants was committed willfully, knowingly,
`
`maliciously, and in conscious disregard of ll<now’s rights.
`
`58.
`
`The aforesaid infringement by defendants has caused, and unless restrained by
`
`this Court will continue to cause,
`
`immediate and irreparable injury and damage to ll<now’s
`
`property and business.
`
`59.
`
`lknow has no adequate remedy at law.
`
`SEVENTH CLAIM FOR RELIEF
`
`Deceptive Acts and Practices in Violation Of
`The Common Law of the State of New Jersey
`
`60.
`
`Each of the foregoing allegations is incorporated by reference as though fully set
`
`forth at length herein.
`
`61.
`
`Defendants’
`
`unauthorized use of
`
`the
`
`IKNOW and MERCER IKNOW
`
`designations in advertising constitutes deceptive trade practice in violation of the common law of
`
`the State of New Jersey.
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`00882962
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`

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`Case 3:12acv-O1084—JAP—DEA Document 1 Filed 02/23/12 Page 10 of 12 PagelD: 10
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`62.
`
`The aforesaid unlawful actions by defendants were
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`cornrnitted willfully,
`
`knowingly. maliciously. and in conscious disregard of iknovfs rights.
`
`63.
`
`The aforesaid unlawful actions by defendants have caused, and unless restrained
`
`by this Court will continue to cause, immediate and irreparable injury and damage to lknoW’s
`
`property and business.
`
`64.
`
`lknow has no adequate remedy at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, plaintiff lknovv LLC demands judgment as follows:
`
`A.
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`An injunction enjoining defendants, and their respective officers, agents, servants,
`
`employees, attorneys, and those in active concert or participation with them who receive actual
`
`notice of the order by personal service or otherwise, from:
`
`1.
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`using, reproducing, advertising, or promoting in connection with any
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`product or service the IKNOW name or mark or any name or mark confusingly similar
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`therewith, including without limitation MERCER IKNOW;
`
`2.
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`using, reproducing, advertising or promoting any slogan, mark, or name
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`that may be calculated to represent or that has the effect of representing that the products
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`or services of defendants or any other person are sponsored by, authorized by, or in some
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`Way associated with lknow;
`
`3.
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`injuring the commercial reputation, renown, and goodwill of lknow or the
`
`lKNOW® trademark;
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`4.
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`using or reproducing any word, term, name, symbol, or device, or any
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`combination thereof, on any product or in connection with any service that confuses or
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`falsely represents or Inisleads, is calculated to confuse, falsely represent, or mislead, or
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`00882962
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`1 0
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`Case 3:l2—cv~O1084—JAP~DEA Document 1 Filed 02/23/12 Page 11 of 12 PagelD: 11
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`that has the effect of confusing, falsely representing, or misleading, that the products,
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`services, or activities of defendants or another are in some way connected with lknow, or
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`is sponsored, approved, or licensed by lknovv:
`
`3.
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`6.
`
`unfairly competing with ll-(now in any Way whatsoever; and
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`causing a likelihood of confusion with respect to the lKNOW® trademark
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`or any injury to the business reputation of lknow;
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`B.
`
`An award of damages to lknow under the Lanharn Act, and in particular pursuant
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`to 15 Ll.§3.Ci § lll7(a), of up to three times the damages suffered by lknow and three times the
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`pro tits earned by any and all of the defendants;
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`C.
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`D.
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`E.
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`F.
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`G.
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`An award to lknow of compensatory, consequential, and/or incidental damages;
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`An award to lknow of treble, exemplary, and/or punitive damages;
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`An award to lknovv of its reasonable attorney fees and the costs of this action;
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`Prejudgment and postjudgrnent interest on the above monetary awards; and
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`Such other and further relief as this Court deems equitable and just.
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`DEMAND FOR JURY TRIAL
`
`Plaintiff lknow LLC demands a trial by jury of twelve on all issues so triable.
`
`Respectfully submitted,
`BUDD LARNER, P.C.
`
`Azrorneysfor Plairttzfllknow LLC
`
`s/ Bruce D. Radin
`By:
`Bruce D. Radin (bradin@buddlamer.corn)
`Benjamin G. Taub (jtaub@.bucldlarner.com)
`Tel: (973) 379-4800
`
`Dated:
`
`February 23. 20l2
`
`00882962
`
`ll
`
`

`
`Case 3:12»cv—O1084-JAP-DEA Document 1 Filed 0223/12 Page 12 of 12 PagelD: 12
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`CERTIFICATION PURSUANT TO LOCAL CIVIL RULE 11.2
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`The undersigned hereby certifies, pursuant to Local Civil Rule ll.2, that with respect to the
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`matter in controversy herein, neither plaintiff nor plaintiff s attorney is aware of any other action
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`pending in any court, or of any pending arbitration or administrative proceeding, to which this
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`matter is subject.
`
`Dated: Februarv 23. 20l2
`
`BUDD LARNER, PC.
`
`Azforneysfbr Plainzlgfflknow» LLC
`
`s/ Bruce D. Radin
`By:
`Bruce D. Radin (bradin@buddlarner.c0m)
`Benjamin G. Taub (jtaub@buddlarner.c0tn)
`Tel: (973) 379-4800
`
`008822962
`
`

`
`MS 44 (RN wgpaseogiz12-cv—O1O84—JAP-DE6I@pEu@]6i‘t.fifi Simian;/23/12 Page 1 of 1 PageID: 13
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service ofpleadings or other papers as required by law, except as provided
`by local rules ofcoun. This form, approved by the Judicial Conference ofthe United States in September 1974, is required for the use ofthe Clerk ofCourt for the purpose of initiating
`the civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`
`I. (3) PLAINTIFFS
`
`IKNOW LLC
`
`DEFENDANTS
`
`MERCER (US), lNC., MERCER LLC
`
`
`(b) County of Residence of First Listed Plaintiff MBFCBF
`County of Residence of First Ljgted Dgfendam
`New YOl'l(, New YOl'l(
`
`(c) Attorney‘s(Firm Name, Address Telephone Number and Email Address)
`
`NOTE:
`
`IN LAND CONDEMNATION CASES. USE THE LOCATION OF THE
`LAND IN VOL VED.
`
`Attorneys (lfKnown)
`
`H.
`
`(Place an
`
`in One Box Only)
`
`In.
`
`U 1 US. Government
`Plaintilf
`
`X 3 Federal Question
`( U .S. Govemment Not a Party)
`
`(For Diversity Cases Only)
`PTF
`Cl
`1
`
`Citizen ot‘This State
`
`DEF
`El
`
`1
`
`in One Box for Plaintiff
`PARTIES(_Place an
`and One Box for Defendant)
`PTF
`DEF
`D 4
`fl 4
`
`Incorporated or Principal Place
`ofBusiness In This State
`
`3 2 US. Government
`Defendant
`
`3 4 Diversity
`(Indicate Citizenship of Parties in Item Ill)
`
`Citizen of/Xnother State
`
`CI 2
`
`3 2
`
`Incorporated andPrincipal Place
`of Business In Another State
`
`Cl
`
`5
`
`fl
`
`5
`
`Citizen or Subject ofa
`Forei ; C ountrv
`
`II 3
`
`3 3
`
`Foreign Nation
`
`U 6
`
`3 6
`
`in One Box Only)
`TORTS
`
`'1
`
`7}
`
`.'l
`
`
`
`"I
`..
`
`
`
`'7
`fl
`
`IV.
`
`
`
`Cl
`
`(Place an
`'
`'
`I CONTRACT
`'
`PERSONAL INZILFRY
`PERSONAL INJIZRY
`3 lIO Insurance
`362 Personal Injury -
`310 Airplane
`Cl 120 Marine
`
`Med. Malpractice
`315 Airplane Product
`3 130 Miller Act
`365 Personal Injury ~
`Liability
`3 I40 Negotiable Instrument
`
`Product Liability
`3 I50 Recovery of Overpayment 3 320 Assault. Libel &
`368 Asbestos Personal
`& Euforccrnentofludgrnent
`Slander
`Injury Product
`'3 I51 Medicare Act
`3 330 Federal Employers’
`Liability
`3 I52 Recovery ofDefaulted
`Liability
`PERSONAL PROPERTY
`Student Loans
`3 340 i\«larine
`7}
`370 Other Fraud
`(Exel. Veterans)
`Cl
`345 Marine Product
`fl
`371 Truth in Lending
`I53 Recovery of Overpayment
`Liability
`',l
`380 Other Personal
`ofVeteran’s Benefits
`350 Motor Vehicle
`Property Damage
`3 I60 Stockholders’ Suits
`355 .\zlotor Vehicle
`'1 385 Property Damage
`3 I90 Other Contract
`Product Liability
`3 195 Contract Product Liability 3 360 Other Personal
`Product Liability
`
`3 I96 Franchise
`lnurv
`441 Voting
`510 Motions to Vacate
`442 Employment
`Sentence
`443 Housing"
`Habeas Corpus:
`Accommodations
`3 530 General
`4441 Welfare
`3 535 Death Penalty
`Cl
`3 445 Amer, w/Disabilities -
`540 Mandamus & Other
`Employment
`550 Civil Rights
`3 446 Amer. W/Disabilities -
`555 Prison Condition
`Other
`440 Other Civil Rights
`
`
`
`3 210 Land Condemnation
`:1 220 Foreclosure
`3 230 Rent Lease & Ejectrnent
`3 240 Torts to Land
`3 245 Tort Product Liability
`3 290 All Other Real Property
`
`7!
`1')
`i7
`
`C]
`
`
`
`
`
`
`
`
`
`
`
`OTHER STATUT ES
`CI 400 State Reapportionment
`D 410 Antitrust
`CI 430 Banks and Banking
`450 Commerce
`Cl 460 Deportation
`Cl 470 Racketeer Influenced and
`Corrupt Organizations
`D 830 Patent
`
`
`Cl 480 Consumer Credit
`X 840 Trademark
`
`Cl 490 Cable/Sat TV
`Cl
`810 Selective Service
`D 850 Securities/Cornmodities/
`Exchange
`U 875 Customer Challenge
`12 USC 3410
`890 Other Statutory Actions
`891 Agricultural Acts
`892 Economic Stabilization Act
`893 Environmental Matters
`894 Energy Allocation Act
`895 Freedom of Information
`Act
`Fl 900AppeaI of Fee Determination
`Under Equal Access
`to Justice
`Cl 950 Constitutionality of
`State Statutes
`
`3 861 HIA (l395ff)
`CI 862 Black Lung (923)
`3 863 DIWC/DIWW (405(g))
`Cl 864 SSID Title XVI
`
`Cl 865 RSI (405(:z))
`FEDERAL TAX SUITS
`
`3 S70 Taxes (US. Plaintiff
`or Defendant)
`3 871 I_RS—Third Party
`26 USC 7609
`
`
`
`
`
`
`
`’
`
`Cl
`I7
`Cl
`Cl
`CI
`Cl
`
`Tl 710 Fair Labor Standards
`Act
`F1 720 l-aborr”.:\/lgint. Relations
`C] 730 Laborfi/lgmt.Reporting
`& Disclosure Act
`U 740 Railway Labor Act
`F1 790 Other Labor Litigation
`Fl 79] Empl. Ret. Inc.
`Security Act
`
`' 462 Naturalization Application
`0 463 Habeas Corpus -
`Alien Detainee
`Cl 465 Other Imrnigration
`Actions
`
`' BANKRUPTCY
`r
`Cl 422 Appeal 28 USC 158
`
`U 423 Withdrawal
`
`28 USC 157
`
`
`
`
`' FORFEITURE/PENALTY V
`F7 610 Agriculture
`620 Other Food & Drug
`625 Drug Related Seizure
`ofPr0perty 21 USC 88}
`:1 630 Liquor Laws
`:7 640 RR. & Truck
`3 650 Airline Regs.
`Cl 660 Occupational
`Safety/Health
`Tl 690 Other
`
`
`
`V.
`S 1 Original
`Proceeding
`
`in One Box Only)
`(Place an
`2 Removed from
`="I 3 Remanded from
`State Court
`Appellate Court
`
`7|
`
`['1 4 Reinstated or 7 5 Trafiferggd from CI 6 Multidistrict
`Reopened
`am .er
`‘smct
`Litigation
`secifv
`
`'1 7
`
`Appeal to Dlsmct
`£l'dg.e {Him
`agls I3 e
`Judment
`
`ugdeéévldiich you are filing (Do not cite jurisdictional statutes unless diversity):
`Ciltgtsj lg.SCCi§il
`VI‘ CAUSE OF ACTION Brief description of cause: TRADEMARK INFRINGEMENT
`VII. REQUESTED IN
`II CHECK IF THIS IS A CLASS ACTION
`DEMAND $
`COMPLAINT:
`UNDER F «RC?» 23
`
`CHECK YES only if demanded in complaint:
`Jmw DEMAND:
`Q Yes
`Cl No
`
`
`
`VIII. RELATED CASE(S)
`
`ls“ l“s““°“°“5’:
`
`JUDGE
`
`DOCKET NUMBER
`
`Explanation :
`
`
`DATE
`SIGNATURE OF ATTORNEY OF RECORD
`
`
`
`O2/23/2012 /s Bruce D. Radin
`
`

`
`Case 3:12~cv~01084—JAP«DEA Document 1~2 Fiied 0223/12 Page 1 of 2 PageiD: 14
`
`EXHIBIT A
`
`

`
`Case 3:12—cv—O1084-JARDEA Document 1-2 Filed 02/23/12 Page 2 of 2 PagelD:
`
`15
`
`Int. CL: 35
`
`Prior U.S. Cls.: 100, 101 and 102
`
`Reg. No. 3,206,035
`Registered Feb. 6, 2000
`United States Patent and Trademark Office
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`IKNOW
`
`IKNOW LLC {DELAWARE LTD LEAB CO}
`PD. BOX 3678
`PRINCETON. NJ 085438678
`
`FOR: BUSINESS MANAGEMEENT CONSULTING
`ANJD ADVISORY SERVICES RELATING TO INFOR-
`MATEON MANAGE}/IENT. KNOWLEDGE MAN-
`AGEMENT, CONTENT MANAGEMENT.
`DOCUMENT MANAGEMENT, RECORDS MAN-
`AGEMENT, TAXONOMY AND METADATA MAN-
`AGEMENT, SEARCH AND SEARCH-DERXVATIVE
`APPLICATIONS. COLLABORATION, PORTALS.
`WORKFLOW AUKJMATION. TEXT MINING Ah?)
`TEXT AZ\'A}..YSIS, DATA MANAGEMENT, DATA
`
`E\aiINI1’*~IG, DATA VISUALIZATION. SEMULATION.
`RULBBASED SYSTEMS, AND;-’OR ARTIFICIAL IN-
`TELLIGENCE.
`CLASS 35 (US. CLS. 100, 101 %D
`102}.
`
`FIRST USE 4-30-2001; IN COMMERCE 4<j0~2001.
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`SER. NO. 78-855.106, FELED 4-5-2006.
`
`RICHARD A. STRASER, EXAIVHNKNG ATTORNEY