Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA538779
`ESTTA Tracking number:
`05/20/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210575
`Plaintiff
`PSPC, Inc.
`Wendy K. Marsh
`Nyemaster Goode, P.C.
`700 Walnut StreetSuite 1600
`Des Moines, IA 50309
`UNITED STATES
`wkmarsh@nyemaster.com, ptodm@nyemaster.com
`Motion to Suspend for Civil Action
`Wendy K. Marsh
`ptodm@nyemaster.com, wkmarsh@nyemaster.com
`/wendy k. marsh/
`05/20/2013
`Motion for Suspension.pdf(19063 bytes )
`Motion for Suspension Exhibit 1.pdf(581370 bytes )
`Motion for Suspension Exhibit 2.PDF(1393515 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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`ESTTA538779
`ESTTA Tracking number:
`05/20/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91210575
`Plaintiff
`PSPC, Inc.
`Wendy K. Marsh
`Nyemaster Goode, P.C.
`700 Walnut StreetSuite 1600
`Des Moines, IA 50309
`UNITED STATES
`wkmarsh@nyemaster.com, ptodm@nyemaster.com
`Motion to Suspend for Civil Action
`Wendy K. Marsh
`ptodm@nyemaster.com, wkmarsh@nyemaster.com
`/wendy k. marsh/
`05/20/2013
`Motion for Suspension.pdf(19063 bytes )
`Motion for Suspension Exhibit 1.pdf(581370 bytes )
`Motion for Suspension Exhibit 2.PDF(1393515 bytes )
`
`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. 91210575
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` In the matter of:
` Application No. 85/650,854
` Mark: TRICOX-A
` Published in the Official Gazette on:
` May 14, 2013
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`PSPC, INC.,
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`Opposer,
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`v.
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`SOGEVAL LABORATORIES, INC.
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`Applicant.
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`OPPOSER'S MOTION FOR SUSPENSION
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`Oppose PSPC, Inc. moves for a suspension of the above-referenced opposition
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`proceeding pursuant to Trademark Rule of Practice 2.117(a). See 37 C.F.R. § 2.117(a).
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`The parties to this proceeding are involved in a civil action. PSPC, Inc. v. Sogeval
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`Laboratories, Inc., Civil Action No. 6:13-cv-00249-RBD-TBS, which is currently pending in the
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`U.S. District Court for the Middle District of Florida, Orlando Division, involving the issue of
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`whether Applicant's past, present, and intended use of the designation "TRICOX" designation
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`infringes Opposer's rights in its federally registered trademark PHYCOX® (either with or
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`without Opposer's PHYCOX trade dress). A copy of Opposer's Complaint in the civil action is
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`attached as Exhibit 1 and a copy of Applicant's Affirmative Defenses, Counterclaims, and
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`Answer is attached as Exhibit 2.
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`The issues in dispute in the civil action are likewise raised in the Opposition, and the civil
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`action therefore may be dispositive of this proceeding. In any event, a civil action does not have
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`to be dispositive of the Board proceeding to warrant suspension; it need only have a bearing on
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`the issues before the Board. New Orleans Louisiana Saints LLC and NFL Properties LLC v.
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`Who Dat?, Inc., Opposition No. 91198708 (TTAB 2011), citing Trademark Rule 2.117(a).
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`Accord 6 McCarthy on Trademarks and Unfair Competition §32:47 (4th ed.)("It is standard
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`procedure for the Trademark Board to stay administrative proceedings pending the outcome of
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`court litigation between the same parties involving related issues.").
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`The Complaint in the civil action alleges, among other claims, trademark infringement of
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`Opposer's PHYCOX® trademark and seeks, among other remedies, to enjoin use of the term
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`"TRICOX" by Applicant. As such, the district court action will certainly have a bearing on the
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`issues before the Board, and suspension of the Opposition is therefore appropriate.
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`Opposer therefore respectfully requests that the Board suspend this Opposition
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`proceeding pending termination of the civil action.
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`DATED: May 20, 2013
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`Respectfully submitted,
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`/s/ wendy k. marsh
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`Wendy K. Marsh
`Glenn Johnson
`Nyemaster Goode, P.C.
`700 Walnut Street, Suite 1600
`Des Moines, IA 50309
`T: (515) 645-5502
`F: (515) 283-8045
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`ATTORNEYS FOR OPPOSER
`PSPC, INC.
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing Opposer's Motion for Suspension was served
`on this 20th day of May 2013, by overnight courier, postage prepaid, addressed to Applicant's
`attorney of record Daniel R. Frijouf, Frijouf, Rust & Pyle, P.A., 201 E. Davis Blvd, Tampa,
`Florida 33606-3728.
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`/s/ Wendy K. Marsh___________________
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 1 of 16 PageID 44
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 1 of 16 Page|D 44
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`l"lL;.‘.'i_J
`
`IN THE UNITED STATES DIsTRIciflt3’<5BRT3 PH 2: 25
`FOR THE MIDDLE DISTRICT OF FLORIDA
`.1: F9: _‘
`ORLANDO DIVISION
`;n;~" Lll‘&;'T.~,",‘
`(‘I|.\IL,a‘I~‘-D'l,‘)”"‘.,‘.! ‘flm ll :x.I',:, ,
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`
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`CASE No.\03 l3'(/V ‘ Z44 - DlQl;l8 ‘W5C.-
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`Jury Trial Demanded
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`
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`PSPC, INC.,
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`Plaintiff,
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`v.
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`SOGEVAL LABORATORIES, INC.
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`
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`Defendant.
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`COMPLAINT FOR TRADEMARK INFRINGEMENT, TRADEMARK DILUTION,
`FALSE DESIGNATION OF ORIGIN, FALSE ADVERTISING, AND UNFAIR
`COMPETITION
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`Plaintiff, PSPC, Inc. ("Plaintiff"), through its undersigned counsel, for its complaint
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`against Defendant, Sogeval Laboratories, Inc. (“Defendant"), alleges as follows:
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`PARTIES
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`I.
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`Plaintiff, PSPC, Inc.. is a corporation duly organized and existing under the
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`laws of the State of Florida, and having a principal place of business in Melbourne, Florida.
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`2.
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`Defendant, Sogeval Laboratories, Inc.. is a corporation organized and existing
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`under the laws of the State of Delaware, and having a principal place of business in Irving,
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`Texas.
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`
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 2 of 16 PageID 45
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 2 of 16 PagelD 45
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`JURISDICTION AND VENUE
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`3.
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`This is a civil action for trademark infringement, trademark dilution, false
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`designation of origin and false advertising, and unfair competition arising under the Federal
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`Lanham Act 15 U.S.C. § 1051, et seq. of the Lanham Act; and for trademark infringement
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`and unfair competition under the common law of the State of Florida.
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`4.
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`Jurisdiction over the parties and subject matter of this action is proper in this
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`Court pursuant to 15 U.S.C. § 1121 (action arising under the Lanham Act), 28 U.S.C. §§
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`1331 (federal question), 28 U.S.C. § 1338(a)(any Act of Congress relating to patents or
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`trademarks), and 28 U.S.C. § 1338(b)(action asserting claim of unfair competition joined
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`with a substantial and related claim under the trademark laws). This Court has supplemental
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`jurisdiction over the claims in this Complaint that arise under state statutory and common law
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`pursuant to 28 U.S.C. § 1367(a).
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`5.
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`This Court has personal jurisdiction over the Defendant because Defendant
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`has committed and continues to commit acts of infringement in violation of 15 U.S.C. §§
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`1 1 I4 and 1125, and has purposefully targeted Florida, and this district, as a location in which
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`it directs its advertising and products using the infringing mark and trade dress, including its
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`prominent displays of its TriCOX branded products at the recently held North American
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`Veterinary Conference in Orlando, Florida; and where the harm of Defendant's infringing
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`activities is visited upon Plaintiff. As a result, Defendant is subject to the specific
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`jurisdiction of this court. Further, Defendant derives substantial revenue from the sale of
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`infringing products and other products within Florida, and its customer service center is
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`
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 3 of 16 PageID 46
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 3 of 16 Page|D 46
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`based in this district, in Oldsmar, Florida. As such, Defendant is subject to the general
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`jurisdiction of this Court.
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`6.
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`Venue is properly founded in thisjudicial district pursuant to 28 U.S.C. §§
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`l391(b) and (c) because Defendant transacts business within this district and offers for sale in
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`this district products that infringe and dilute Plaintiffs trade dress and trademarks.
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`In
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`addition, venue is proper because Plaintiff suffered harm in this district. Moreover, a
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`substantial part of the events giving rise to the claim occurred in this district.
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`PLAINTIFF'S TRADEMARKS
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`7.
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`Since at least as early as January of 2007, Plaintiff, individually and through
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`its distributors and retailers, has been advertising and providing pharmaceutical preparations,
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`namely, anti-inflammatories, to veterinarians and pet owners under the trademark
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`PHYCOX® (hereinafter the "mark") throughout the United States.
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`8.
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`The formulations for Plaintiffs PHYCOX® pharmaceutical preparations are
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`protected by patent, namely U.S. Patent No. 7,025,965.
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`9.
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`Plaintiff is the current owner of the trademark PHYCOX® (separate and apart
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`from any particular lettering), U.S. Trademark Registration No. 3,294,575, for
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`pharmaceutical preparations, namely, anti-inflammatories. A copy of Plaintiffs PHYCOX®
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`trademark registration is attached as Exhibit A.
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`10.
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`Affidavits have been filed with respect to U.S. Trademark Registration No.
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`3,294,575 pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C. §§ 1058 and 1065,
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`and this registration is incontestable.
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`1 1.
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`Plaintiff owns all rights, title, and interest in and to the PI-IYCOX trademark.
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 4 of 16 PageID 47
`- Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 4 of 16 Page|D 47
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`12.
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`Also since at least as early as 2007, Plaintiff has been advertising and
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`providing anti-inflammatories to veterinarians and pet owners under its distinctive logo
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`(hereinafter the "PHYCOX logo") as part of its distinctive trade dress (the "PHYCOX trade
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`dress"), as shown below:
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`13.
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`The PH YCOX trade dress includes the Pl-lYCOX® trademark and associated
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`logo in a black, rounded font lettering on a white background with the wording "SOFT
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`CHEWS" in a smaller sized, similar style font beneath.
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`14.
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`The label of the PHYCOX trade dress includes dark green as a complimentary
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`color.
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`15.
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`The container upon which the PHYCOX® product label is placed is a white
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`cylinder.
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`16.
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`The PHYCOX® container lid has evenly spaced vertical ribs, each rib
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`extending the length of the lid.
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 5 of 16 PageID 48
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 5 of 16 PagelD 48
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`17.
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`Each of the elements of the PH YCOX trade dress is distinctive and serves to
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`identify Plaintiffas the source of the PHYCOX products.
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`I8.
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`None ofthe elements of the PHYCOX trade dress is functional, and Plaintiffs
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`competitors have a multitude of alternative options available.
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`19.
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`Plaintiff is the owner ofall right and title to the distinctive PHYCOX trade
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`dress. The PHYCOX trade dress is inherently distinctive and not functional.
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`20.
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`Plaintiffs PHYCOX® mark, PHYCOX logo and PHYCOX trade dress
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`(collectively "Plaintiffs Trademarks" or "the Trademarks") have been regularly used in
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`connection with Plaintiffs anti-inflammatories since at least as early as January 2007.
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`21.
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`In addition, based on extensive and consistent advertising, promotion and
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`sales throughout the United States, the PHYCOX trade dress has acquired distinctiveness and
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`enjoys secondary meaning among consumers, identifying Plaintiff as the source of these
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`products.
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`22.
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`Plaintiffs extensive promotion of the distinctive PHYCOX trade dress has
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`resulted in Plaintiffs acquisition of valuable, legally protected rights in the PHYCOX trade
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`dress as well as considerable customer goodwill.
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`23.
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`Plaintiff sells its PHYCOX® pharmaceutical preparations through numerous
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`distributors and retailers nationwide, including I-800-PetMeds, Amazon.com,
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`EntirelyPets.eom, DrsFosterSmith.com, HealthyPets.com, VetRXDirect.com, JeffersPet.com,
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`and VetDepot.com. Web pages from these retailers showing the PHYCOX® product for sale
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`are attached as Exhibit B.
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 6 of 16 PageID 49
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 6 of 16 Page|D 49
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`24.
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`Plaintiffs PHYCOX® products have been widely advertised throughout the
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`United States since 2007 and Plaintiff has had substantial sales of the products.
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`In this
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`regard, since 2007, Plaintiff has sold over $1 1 million worth of Pl-IYCOX® products.
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`25.
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`By virtue of Plaintiffs extensive advertising and sales of its PHYCOX®
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`products throughout the United States, Plaintiffs PHYCOX Trademarks have become widely
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`known and recognized by the public nationwide who, upon seeing the Trademarks, identify
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`the Trademarks exclusively with Plaintiff.
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`DEFENDANT'S INFRINGING ACTIVITIES
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`26.
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`For some time prior to 2009, Plaintiff formulated various soft chew
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`fonnulations for Defendant to distribute and sell. The fonnulations distributed and sold by
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`Defendant did not include Plaintiffs PHYCOX® soft chew product.
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`27.
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`In 2009, Defendant approached Plaintiff specifically about becoming
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`Plaintiffs exclusive distributor for Plaintiffs PHYCOX® products.
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`28.
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`The parties did not reach an agreement for Defendant to distribute Plaintiffs
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`PHYCOX® products in 2009.
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`29.
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`Defendant again approached Defendant in 2010 about becoming Plaintiffs
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`exclusive distributor for Plaintiffs PHYCOX® products.
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`30.
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`The parties also did not reach an agreement for Defendant to distribute
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`Plaintiffs PHYCOX® products in 2010.
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`31.
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`Within a matter of months after the second failed attempt to reach an
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`exclusive distribution agreement, Defendant ended its relationship with Plaintiff.
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 7 of 16 PageID 50
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 7 of 16 Page|D 50
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`32.
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`Plaintiff has only recently leamed that Defendant has begun a promotional
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`campaign for new canine anti-inflammatory products under the name "TriCOX".
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`33.
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`A photograph of a TriCOX branded product, showing its packaging, is shown
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`below:
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`34.
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`True and correct copies of Defendant's web site showing Defendant's
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`infringing logo are attached here as Exhibit C.
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`35.
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`Defendant's TriCOX logo embodies a combination of several elements of
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`Plaintiffs trade dress, namely a product configuration with:
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`-a "COX" product name in black, rounded font lettering;
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`-the black lettering of the product name on a white background;
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`-the wording "SOFT CHEWS" beneath the product name;
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 8 of 16 PageID 51
`' Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 8 of 16 Page|D 51
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`-the "SOFT CHEWS" wording in smaller black lettering in a font similar to that of
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`"TriCOX" brand;
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`-dark green as a complimentary color on the label;
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`-the label placed on a white cylinder-shaped container;
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`-the container lid having evenly spaced vertical ribs, each rib extending the length of
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`the lid.
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`36.
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`The "cox" syllable found in both Plaintiffs registered mark and Defendant's
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`infringing brand is the dominant syllable in each.
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`37.
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`Defendant's TriCOX branded product has misappropriated the Pl-IYCOX
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`trade dress by mimicking a combination of several elements of that trade dress.
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`38.
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`Defendant's "TriCOX" branded product was launched on January I, 2013
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`and is a "supplement designed to support the joint function in dogs with osteoarthritis".
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`(Exh. C).
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`39.
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`Attached as Exhibit D are copies of Defendant's "TriCOX" branded product
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`from various veterinary publications.
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`40.
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`Defendant recently advertised its "TriCOX" branded product and logo
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`throughout the 2013 North American Veterinary Conference (NAVC) held in Orlando,
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`Florida from January 19-23, 2013.
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`41.
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`Copies of Defendant's advertising from NAVC are attached as Exhibit E.
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`42.
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`Defendant has offered for sale and has made sales of its anti-inflammatory
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`P
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`roducts usin v the "TriCOX" brand and trade dress to consumers in this 'udicial district.
`2:
`J
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 9 of 16 PageID 52
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 9 of 16 PagelD 52
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`43.
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`Defendant used the "TriCOX" brand and trade dress in connection with
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`veterinary anti-inflammatory products with full knowledge of Plaintiffs ownership of and
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`senior rights in and to the "PHYCOX" Trademarks.
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`44.
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`Plaintiff recently learned that on June 13, 2012, Defendant filed a federal
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`trademark application to register the name "TRICOX-A" for "caninejoint supplements in the
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`nature of soft chews."
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`45.
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`A true and correct copy of Defendant's "TRlCOX-A" trademark application
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`from the U.S. Patent and Trademark Office website is attached as Exhibit F. To date, no
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`registration has been granted.
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`46.
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`Further, Plaintiff recently learned that on September I9, 2012, Defendant filed
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`a federal trademark application to register the name "TRI-COX" for "canine joint
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`supplements in the nature of soft chews."
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`47.
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`A true and correct copy of Defendant's "TRI-COX" trademark application
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`from the U.S. Patent and Trademark Office website is attached as Exhibit G. To date, no
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`registration has been granted.
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`COUNT I
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`False Designation of Origin, False Advertising, and Unfair Competition
`15 U.S.C. § ll25(a)
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`48.
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`Plaintiff incorporates and realleges paragraphs 1 through 47 of the Complaint.
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`49.
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`Defendant's manufacture and distribution of the TriCOX branded products
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`with packaging, product design, logo, and name that mimic a combination of elements of the
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`PHYCOX trade dress is likely to cause confusion, or to cause mistake, or to deceive
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`' Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 10 of 16 Page|D 53
`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 10 of 16 PageID 53
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`consumers as to the affiliation, connection or association of Defendant with Plaintiff, or as to
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`the origin, sponsorship, or approval by Plaintiff of Defendant's goods.
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`50.
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`Defendant's manufacture and distribution of the TriCOX branded products
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`with packaging, product design, logo, and name that mimic a combination of several
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`elements of the PHYCOX trade dress enables Defendant to benefit unfairly from Plaintiffs
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`reputation and success, thereby giving Defendant's infringing products sales and commercial
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`value they would not have otherwise.
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`5].
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`Defendant's actions constitute unfair competition and false designation of
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`origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § lI25(a).
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`52.
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`Defendant was fully knowledgeable of Plaintiffs PHYCOX trade dress when
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`it designed its TriCOX branded product. Therefore, Defendant's infringement has been and
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`continues to be intentional, willful and without regard to Plaintiffs PHYCOX trade dress.
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`53.
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`Plaintiff has been and will continue to be irreparably harmed and damaged by
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`Defendant's conduct, and Plaintiff lacks an adequate remedy at law to compensate for this
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`harm and damage.
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`54.
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`Defendant has gained profits by virtue of its infringement of the PHYCOX
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`trade dress.
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`55.
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`Plaintiff has sustained damages as a direct and proximate result of Defendant's
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`infringement of the PHYCOX trade dress.
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`56.
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`Because Defendant's actions have been willful, Plaintiff is entitled to treble its
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`actual damages or Defendant's profits, whichever is greater, and to an award of costs, and,
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`this being an exceptional case, reasonable attomeys' fees pursuant to 15 U.S.C. § 1 I l7(a).
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`I0
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`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 11 of 16 PageID 54
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 11 of 16 Page|D 54
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`COUNT ll
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`Federal Trademark Infringement
`I5 U.S.C. § 1114
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`57.
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`58.
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`Plaintiff incorporates and realleges paragraphs I through 47 of the Complaint.
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`Plaintiff owns a federal trademark registration for the PI-IYCOX trademark.
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`Said federal trademark registration is incontestable.
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`59.
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`Defendant, without authorization from Plaintiff, has used and is continuing to
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`use designations that are confusingly similar to, Plaintiffs trademark.
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`60.
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`The foregoing acts of Defendant are intended to cause, have caused, and are
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`likely to continue to cause confusion, mistake, and deception among consumers, the public,
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`and the trade as to whether Defendant's caninejoint supplements originate from, or are
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`affiliated with, sponsored by, or endorsed by Plaintiff.
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`61.
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`Prior to Defendant's first use of the infringing TriCOX brand, Defendant was
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`aware of Plaintiffs business and had either actual notice and knowledge, or constructive
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`notice of, Plaintiffs PHYCOX trademark.
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`62.
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`Defendant's unauthorized use of the infringing TriCOX brand is intended to
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`cause. has caused. and is likely to continue to cause deception, confusion or mistake among
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`consumers as to the origin, sponsorship or approval of the TriCOX branded product and/or to
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`cause confusion or mistake as to any affiliation. connection or association between Plaintiff
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`and Defendant, in violation of IS U.S.C. § 1 l l4(a).
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`63.
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`Plaintiff is informed and believes, and on that basis alleges, that Defendant's
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`infringement of Plaintiffs registered PHYCOX trademark as described herein has been and
`
`continues to be intentional, willful and without regard to Plaintiffs rights.
`
`ll
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 12 of 16 PageID 55
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 12 of 16 Page|D 55
`
`64.
`
`Plaintiff is informed and believes, and on that basis alleges, that Defendant
`
`has gained profits by virtue of its infringement of Plaintiffs registered PHYCOX trademark.
`
`65.
`
`Plaintiff will suffer and is suffering irreparable harm from Defendant's
`
`infringement of the registered PHYCOX trademark insofar as Plaintiffs invaluable good will
`
`is being eroded by Defendant's continuing infringement.
`
`66.
`
`Plaintiff has no adequate remedy at law to compensate it for the loss of
`
`business reputation, customers, market position, confusion of potential customers and good
`
`will flowing from Defendant's infringing activities.
`
`67.
`
`Pursuant to 15 U.S.C. § 11 16, Plaintiff is entitled to an injunction against
`
`Defendant's continuing infringement of Plaintiffs registered PHYCOX trademark. Unless
`
`enjoined, Defendant will continue its infringing conduct.
`
`68.
`
`Because Defendant's actions have been committed with intent to damage
`
`Plaintifl‘ and to confuse and deceive the public, Plaintiff is entitled to treble its actual
`
`damages or Defendant's profits, whichever is greater, and to an award of costs and, this being
`
`an exceptional case, reasonable attorney's fees pursuant to I5 U.S.C. §§ 1 117(a) and 1117(b).
`
`COUNT Ill
`
`Federal Trademark Dilution
`
`15 U.S.C. § ll25(c)
`
`69.
`
`Plaintiff incorporates and realleges paragraphs 1 through 47 of the Complaint.
`
`70.
`
`As a result of the duration and extent of use of use of the PHYCOX
`
`trademark, the duration and extent of the advertising and publicity of the PHYCOX
`
`trademark, the geographical extent of the distribution of the same, the superior quality of
`
`Plaintiffs PHYCOX product, the fact that it is the only patented veterinary product on the
`
`1..
`I’)
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 13 of 16 PageID 56
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 13 of 16 PagelD 56
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`market for inflammation, and the degree of recognition of the PHYCOX trademark, the
`
`PI-IYCOX trademark has achieved an extensive degree of distinctiveness and is a famous
`
`trademark.
`
`7|.
`
`As a result of Defendant's use of the TriCOX brand for its product, Defendant
`
`is diluting the distinctive quality of the PHYCOX trademark.
`
`72.
`
`Plaintiff will suffer irreparable harm should Defendant's illegal acts be
`
`allowed to continue to the great detriment of its reputation and goodwill. Defendant's acts
`
`will continue unless enjoined.
`
`COUNT IV
`
`Common Law Trademark Infringement and Unfair Competition
`
`73.
`
`Plaintiff repeats and realleges the allegations set forth in paragraphs 1-47.
`
`74.
`
`Defendant's use of designations that are identical to, or confusingly similar to,
`
`Plaintiffs Trademark, Logo, and Trade Dress constitutes use in commerce of a symbol or
`
`device, or a false designation of origin, or a false or misleading description or representation
`
`with respect to Defendant's goods, which is likely to cause confusion, to cause mistake, or to
`
`deceive as to the affiliation, connection, or association of Defendant with Plaintiff, or as to
`
`the origin, sponsorship, or approval of Defendant's goods and services, and Plaintiff has been
`
`and is likely to be damaged by Defendant's use of such symbols or device, or false
`
`designation oforigin, or false or misleading description or representation all in violation of
`
`the common law of the State of Florida.
`
`75.
`
`Defendant's conduct complained of herein has caused substantial and
`
`irreparable damage to Plaintiff and will continue to cause further irreparable damage to
`
`13
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 14 of 16 PageID 57
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 14 of 16 Page|D 57
`
`Plaintiff if Defendant is not preliminarily and permanently enjoined by this Court from
`
`further violation of Plaintiffs rights and Plaintiff has no adequate remedy at law.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully requests that this Court enterjudgment against
`
`Defendant as follows:
`
`A.
`
`That Defendant, its officers, directors, agents, attomeys, servants, employees,
`
`successors, and assigns, and all other persons in active concert or participation with them,
`
`and all those acting under the authority of or in privity with Defendant. be preliminarily and
`
`pennanently enjoined from using in any manner whatsoever Plaintiffs Trademark, Logo,
`
`Trade Dress or any confusingly similar configuration as a trademark to advertise, promote, or
`
`identify the source of its goods;
`
`B.
`
`That Defendant be ordered to remove all advertisements, promotions.
`
`displays, signage, packaging, price lists, catalogs, publications, and articles, or any other
`
`materials in its possession or in control of any of their agents, which bear or represent in any
`
`way a copy, simulation, colorable imitation, reproduction, photograph, copy, or similar
`
`device that is confusingly similar to Plaintiffs Trademark, Logo, and/or Trade Dress and
`
`rights alleged above;
`
`C.
`
`That Defendant be ordered to account for and pay over to Plaintiff all
`
`earnings. profits, receipts and advantages derived by Defendants through the marketing of
`
`goods and services in association with the unlawful acts alleged herein;
`
`14
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 15 of 16 PageID 58
`Case 6:13—cv—OO249—RBD—TBS Document 1-3 Filed 02/13/13 Page 15 of 16 Page|D 58
`
`D.
`
`That Defendant be ordered to compensate Plaintiff for the advertising or other
`
`expenses necessary to dispel, cure, or counteract any public confusion caused by Defendant's
`
`unlawful acts;
`
`E.
`
`That Defendant be required to file with this Court and serve on Plaintiff
`
`within thirty (30) days after entry of the injunction a report in writing under oath setting forth
`
`in detail the manner and form in which Defendant have complied with the injunction;
`
`F.
`
`That Defendant be ordered to pay Plaintiffs attomeys' fees and compensatory
`
`damages in a sum equal to three (3) times the amount of Plaintiffs actual damages;
`
`G.
`
`That Plaintiff be awarded its costs and expenses for bringing and prosecuting
`
`this action;
`
`H.
`
`That Plaintiff be awarded pre-judgment interest on any monetary award made
`
`party of the judgment against Defendant; and
`
`I.
`
`That Plaintiff be awarded such other and further relief as this Court may deem
`
`just and proper.
`
`JURY DEMAND
`
`Plaintiff demands ajury trial on all issues triable by jury.
`
`DATED this 13th day of February, 2013.
`
`
`
`iel E. Traver (Trial Counsel)
`Florida Bar No.: 0585262
`
`dtraver@gray-robinson.com
`Sarah P. L. Reiner
`
`Florida Bar No.: 520195
`
`sreiner@gray-robinson.com
`GRAYROBINSON, P.A.
`
`15
`
`
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 16 of 16 PageID 59
`Case 6:13-cv-00249-RBD-TBS Document 1-3 Filed 02/13/13 Page 16 of 16 Page|D 59
`
`301 East Pine Street, Suite 1400
`Post Office Box 3068
`
`Orlando, Florida 32802-3068
`(407) 843-8880 Telephone
`(407) 244-5690 Facsimile
`Local Counsel for Plaintiff, PSPC, Inc.
`
`AND
`
`Glenn Johnson (pro hac vice pending)‘
`gjohnson@nyemaster.com
`Wendy K. Marsh (pro hac vice pending)
`wkmarsh@nyemaster.com
`NYEMASTER GOODE, P.C.
`
`700 Walnut Street, Suite 1600
`
`Des Moines, Iowa 50309
`Telephone: (515) 645-5502
`Facsimile: (515) 283-8045
`Lead/Co-counsel for Plaintiff, PSPC, Inc.
`
`' Motions for Permission to Appear Pro I-lac Vice pursuant to Local Rule 2.02, of the Middle
`District’s rules governing the special admission to practice of attorneys are being filed on behalf of
`Mr. Johnson and Ms. Marsh concurrently herewith.
`
`16
`
`
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 17 Filed 04/25/13 Page 1 of 23 PageID 135
`
`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`_________________________________________________
`)
`
`
`
`)
`
`
`
`)
`PSPC, Inc.
`
`)
`
`
`
`)
`
`Plaintiff,
`)
`
`
`
`) No.: 6:13-cv- 249
`
`v.
`
`)
`
`
`
`)
`Sogeval Laboratories, Inc.
`)
`
`
`
`)
`
`Defendant.
`_________________________________________________ )
`
`ANSWER, AFFIRMATIVE DEFENSES AND COUNTERCLAIMS OF
`SOGEVAL LABORATORIES, INC.
`
`Defendant, Sogeval Laboratories, Inc. (“Sogeval”), by and through its attorneys,
`
`
`
`
`
`answers and asserts affirmative defenses and counterclaims to the complaint by Plaintiff,
`
`PSPC, Inc. (“PSPC”), as follows:
`
`In responding to the complaint, Sogeval denies all allegations contained therein
`
`unless specifically admitted below.
`
`PARTIES
`
`
`
`1.
`
`Sogeval is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations and therefore denies the same.
`
`
`
`
`
`2.
`
`Admitted.
`
`JURISDICTION AND VENUE
`
`3.
`
`Sogeval admits that the complaint purports to allege causes of action of
`
`under the Lanham Act and the common law of the State of Florida. Sogeval denies it is
`
`liable to Plaintiff for any such causes of action or has harmed Plaintiff in any way.
`
`
`124971.00100/12296832v.2
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 17 Filed 04/25/13 Page 2 of 23 PageID 136
`
`
`
`4.
`
`Sogeval admits that this Court has jurisdiction over the parties and the
`
`subject matter of the complaint. Sogeval denies that Sogeval has committed any
`
`wrongful acts.
`
`
`
`5.
`
`Sogeval admits that this Court has personal jurisdiction over Sogeval.
`
`Sogeval admits that Sogeval had displays at the North American Veterinary Conference
`
`in Orlando, Florida. Sogeval admits that Sogeval has a customer service center in
`
`Oldsmar, Florida. Sogeval denies the remaining allegations in paragraph 5. Sogeval
`
`specifically denies that it has engaged in any conduct that infringes or has infringed
`
`plaintiff’s trademarks or trade dress, or otherwise caused any harm to plaintiff.
`
`
`
`6.
`
`Sogeval admits that venue is proper in this Court and that Sogeval
`
`transacts business in this district. Sogeval denies the remaining allegations in paragraph
`
`6. Sogeval specifically denies that it has engaged in any conduct that infringes or has
`
`infringed plaintiff’s trademarks or trade dress, or otherwise caused any harm to plaintiff.
`
`PLAINTIFF’S TRADEMARKS
`
`
`
`7.
`
`Sogeval is without knowledge or information sufficient to form a belief as
`
`to the truth of the allegations and therefore denies the same.
`
`
`
`8.
`
`Sogeval admits PSPC alleges ownership of U.S. Patent No. 7025965.
`
`Sogeval is without knowledge or information sufficient to form a belief as to the validity
`
`or enforceability of U.S. Patent No. 7025965 and therefore denies the same.
`
`
`
`9.
`
`Sogeval admits that the U.S. Trademark Office database reflects that
`
`PSPC is the listed owner of U.S. Registration No. 3,294,575. Sogeval denies that PSPC
`
`has any rights in and to the PHYCOX name. Sogeval denies that U.S. Registration No.
`
`3,294,575 is valid and enforceable.
`
`
`124971.00100/12296832v.2
`
`
`
`Case 6:13-cv-00249-RBD-TBS Document 17 Filed 04/25/13 Page 3 of 23 PageID 137
`
`10.
`
`Sogeval admits that the U.S. Trademark Office database reflects that the
`
`U.S. Trademark Office acknowledged PSPC’s combined Affidavit under Sections 8 & 15
`
`of the Trademark Act. Sogeval denies that U.S. Registration No. 3,294,575 is valid,
`
`enforceable and/or incontestable.
`
`
`
`11.
`
`Denied as a conclusion of law to which no response is required. To the
`
`extent a response is required, Sogeval denies the allegations of this paragraph.
`
`
`
`
`
`12.
`
`Sogeval denies the allegations of this paragraph.
`
`13.
`
`Denied as a conclusion of law to which no response is required. To the
`
`extent a response is required, Sogeval denies that PSPC has any rights in an
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