Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA640636
`ESTTA Tracking number:
`11/21/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211414
`Defendant
`Purepharma ApS
`CARLA C CALCAGNO
`CALCAGNO LAW PLLC
`1250 24TH STREET NW, SUITE 300
`WASHINGTON, DC 20037
`UNITED STATES
`cccalcagno@gmail.com
`Other Motions/Papers
`Carla C. Calcagno
`cccalcagno@gmail.com, trademarks@canopyparalegal.com
`/Carla C. Calcagno/
`11/21/2014
`PurePharma Opposition to Motion to Suspend.pdf(86140 bytes )
`Exhibits A-D to Applicant's Opposition to Motion to Suspend.pdf(1639174 bytes )
`Exhibit E to Applicant's Opposition to Motion to Suspend.pdf(615828 bytes )
`Exhibit F to Applicant's Opposition to Motion to Suspend.pdf(583031 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. 91211414
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`PURAPHARM INTERNATIONAL (H.K.) §
`LIMITED,
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`§
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`§
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`Opposer,
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`§
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`§
`v.
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`§
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`§
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`§
`PUREPHARMA APS,
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`§
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`Applicant.
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`§
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`APPLICANT’S OPPOSITION TO OPPOSER’S MOTION FOR SUSPENSION
`PURSUANT TO TRADEMARK RULE 2.117
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`Applicant PurePharma APS (“PurePharma” or “Applican”) hereby respectfully requests
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`that the Board deny the motion of Opposer for entry of an Order suspending this case. As cause
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`for this opposition, Applicant asserts that Applicant, through its counsel Bill Barber, Esq. of
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`Pirkey Barber PLLC, has served a motion for Rule 11 sanctions against counsel for Opposer,
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`including Melissa S. Rizzo, Alexandra E. Howard, and Adams and Reese, LLP, pursuant to Fed.
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`R. Civ. P. 11(c), for filing a Complaint asserting materially false allegations as to the validity and
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`incontestability of the Opposer’s Registration No. 2,639,990.
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`Opposer’s Complaint and Motion to Suspend represent an improper attempt to avoid
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`Applicant’s Motion to Amend to Assert Counterclaims and Restrictions against that registration
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`and the consequences of Opposer’s false allegations to the USPTO, which are material to
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`Opposer’s claims. Refusing to grant the Motion to Suspend will deter similar misconduct in the
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`future.
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`1
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`Further, as Applicant has challenged Opposer’s right to assert Registration No. 2,639,990
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`in the district court, the landscape of facts and issues will shift materially, thereby rendering any
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`decision on the Motion to Suspend at this point premature. On the other hand, Applicant’s
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`Motion to Amend is fully briefed, and the parties are on the eve of trial and summary disposition
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`at the TTAB. Applicant respectfully requests that the Board exercise its discretion to defer
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`ruling on the Opposer’s Motion to Suspend until after the Rule 11 Motion and the Motion to
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`Amend to Assert Counterclaims and Restrictions are decided and this case is ready for
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`disposition.
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`I.
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`Introduction
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`On November 6, 2014 Melissa S. Rizzo signed and filed with the United States District
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`Court a Complaint on behalf of Opposer seeking a permanent injunction and extensive damages
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`from Applicant based on accusations of willful federal trademark infringement, and false
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`designation of origin and unfair competition. See Ex. A (“Complaint”). In the Complaint,
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`Opposer asserted (among other things) that (1) Opposer’s PURAPHARM mark was first used in
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`United States commerce in 2001 (Complaint at ¶ 9); (2) Opposer’s PURAPHARM registration is
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`valid (Complaint at ¶ 14); and (3) Opposer’s PURAPHARM registration is incontestable
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`(Complaint at ¶ 14).
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`Simultaneously, Ms. Rizzo filed a Motion to Suspend this opposition pending the
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`outcome of the Civil Action.
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`On November 12, 2014, another of Opposer’s counsel, based in Hong Kong, sent letters
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`to some of Applicant’s major U.S. customers, threatening a permanent injunction, costs and
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`damages. This letter was based on, inter alia, Opposer’s invalid registration. See Exhibit F.
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`2
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`As set forth in Applicant’s Motion to Amend to Assert Counterclaim (TTAB Docket Nos.
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`14 and 15), no genuine issues of fact exist that Opposer’s registration is invalid and is not
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`incontestable. Specifically, in response to Applicant’s Request for Admissions, Opposer’s
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`counsel, Ms. Rizzo admitted1 that Opposer had not used the mark on nine (9) classes of goods set
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`forth in the registration. See, Exhibit E. Further, she thereby also admitted that the Declaration
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`of Incontestablity (as well as the Statement of Use, Section 8 Affidavit, and Renewal Affidavit)
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`which stated that the mark was in use on all the goods listed in the registration were false
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`(emphasis in original). See, Exhibits B-E. Based on this information, Applicant has asserted that
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`Opposer’s and Ms. Rizzo’s assertions in the Complaint of validity of the registration and
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`incontestability were false and have no evidentiary or legal basis. Further, Applicant asserts that
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`Opposer and its counsel filed the Complaint and the Motion to Suspend solely for purposes of
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`delay and to avoid resolution of Applicant’s claims.
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`Because of this, Applicant has served a Rule 11 sanctions motion in the district court
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`matter asking Opposer to either withdraw or amend the Complaint, to deter Opposer from
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`representing material assertions in federal court filings.
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`Applicant asks that the Board defer ruling on the Opposer’s Motion to Suspend until after
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`the Rule 11 Motion and the Motion to Amend to Assert Counterclaims are decided. If Opposer
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`withdraws the Complaint, there will be no further basis for delaying the Board proceeding. If
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`Opposer amends the Complaint to acknowledge the invalidity of the registration and to base the
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`Complaint solely on common law rights, the factual landscape affecting the Board’s decision on
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`the motion to suspend will alter materially.
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`1 Ms. Rizzo signed the Request for Admission responses on behalf of Opposer. See, Exhibit E
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`3
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`II.
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`Factual Background
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`Opposer – a company formed and headquartered in Hong Kong – filed a federal
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`trademark application with the United States Patent and Trademark Office (“USPTO”) for the
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`mark PURAPHARM on an intent-to-use basis on September 21, 1998, Serial No. 75555761.
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`Four years later, on June 14, 2002, Opposer filed a Statement of Use swearing that it was using
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`the mark in commerce on or in connection with all of the goods listed in the application, and that
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`the mark was first used in commerce on July 26, 2001. See Ex. B. This sworn statement was
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`signed by Opposer’s President Abraham Chan. See id. Based on these representations, the
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`registration (Reg. No. 2639990, the “Registration”) issued on October 22, 2002 for the following
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`goods:
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`Health food for medically restricted diets; food supplements,
`namely, herbal extract in the form of capsule tablet, powder and
`granule; food supplements, namely, vitamins, vitamin preparations,
`minerals, enzymes, and enzymes preparations; dietary and
`nutritional supplements; nutritional supplements, namely, drink
`mixes
`in powder form; dietetic food preparations, dietetic
`beverages, dietetic substances, and food preparations all for
`medically restricted diets; digestives for pharmaceutical purposes;
`appetite suppressants; pharmaceutical preparations and substances
`for appetite control and weight management; analgesics; sedatives;
`tranquilizers; sunburn ointments and sunburn preparations for
`medical use; pharmaceutical preparations for skin care; medicated
`mud for skin care, medicated skin care mud for baths; medicated
`mouth washes; medicines for dental purposes; Chinese medicines,
`for use with human biological systems, namely, Chinese medicines
`for the respiratory system, gastrointestinal system, endocrine
`system, cardiovascular system, nervous system, musculoskeletal
`system, urinary system, integumentary system and reproductive
`system; balms for medical purposes for the treatment of muscle
`pain, veterinary nutritional supplements for pets and livestock and
`medicated preparations for pet and livestock.
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`On October 17, 2008, Opposer filed a Combined Declaration of Use and Incontestability
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`Under Sections 8 & 15 for this Registration, swearing that the PURAPHARM mark was
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`currently in use in commerce on all of the goods listed in the Registration, and that it had been
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`continuously used in commerce for five consecutive years after the date of registration and was
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`still in use in commerce on all of the goods listed in the Registration. See Ex. C. This sworn
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`declaration was signed on behalf of Opposer by Haverly A. Rauer of Adams and Reese LLP.
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`See id.
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`On July 27, 2012, Opposer filed a Combined Declaration of Use/Application for Renewal
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`under Sections 8 & 9 for the Registration, again swearing that the PURAPHARM mark was in
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`use in commerce on all goods listed in the Registration. See Ex. D. This sworn declaration was
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`signed by Opposer’s Chairman Abraham Chan. See id.
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`Applicant PurePharma APS is the owner of Application Serial Number 79124353 for the
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`mark
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` covering goods and services in International Classes 5 and 35
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`(“Applicant’s Application”). Opposer filed a Notice of Opposition in the USPTO’s Trademark
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`Trial and Appeal Board (“TTAB”) on July 1, 2013 based on Opposer’s alleged prior use and
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`Registration of the mark PURAPHARM (Opposition No. 91211414, the “Opposition”).
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`During the course of discovery for the Opposition, Applicant served Opposer with
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`Requests for Production and Requests for Admissions that sought information regarding
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`Opposer’s first use and continuing use of the PURAPHARM mark in commerce in the United
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`States for each of the goods covered by Opposer’s Registration.
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`The Responses to the Document Requests and the Responses to the Requests for
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`Admissions were signed by counsel for Opposer, Melissa Rizzo. These responses, and the
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`documents subsequently produced, disclosed that that Opposer’s registration is invalid. Among
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`5
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`other things2, Opposer’s answers revealed it had abandoned it mark as to nine categories of
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`goods listed in registration, and that its Affidavit of Incontestability was false.
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`Specifically, Opposer admitted that it has never used the PURAPHARM mark on many
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`of the goods covered by the Registration. See Ex. E. In its Responses to Applicant’s Admission
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`Requests, Opposer admitted that the PURAPHARM mark is not currently in use and has never
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`been in use in the United States or in commerce with the United States on at least nine separate
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`goods covered by the Registration, including (1) health food for medically restricted diets; (2)
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`nutritional supplements, namely, drink mixes in powder form; (3) dietetic food preparations,
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`dietetic beverages, dietetic substances, and food preparations for all medically restricted diets;
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`(4) sunburn ointments and sunburn preparations for medical use; (5) medicated mud for skin
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`care, medicated skin care mud for baths; (6) medicated mouth washes; (7) medicines for dental
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`purposes; (8) balms for medical purposes for the treatment of muscle pain; and (9) veterinary
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`nutritional supplements for pets and livestock and medicated preparations for pets and livestock.
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`See Ex. E (Response Nos. 9, 13, 14, 21, 23, 24, 25, 27, 28, 30, 34, 35, 42, 44, 45, 46, 48, 49, 51,
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`55, 56, 63, 65, 66, 67, 69, 72, 76, 77, 84, 86, 87, 88, and 90). These admissions were in response
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`to Applicant’s 84 separate requests that Opposer admit or deny that it was not using, and had
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`never used, the PURAPHARM mark on each individual goods listed in the Registration in the
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`United States or in commerce with the United States. See Ex. E.
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`2 Based on Opposer’s responses to Applicant’s Document Production, Applicant has asserted herein several
`additional grounds for invalidating or restricting Opposer’s registration. These include that Opposer committed
`fraud and that Opposer failed to use its mark on any goods whatsoever prior to the filing of the Statement of Use.
`However, for purposes of this response to Opposer’s motion, Applicant is limiting itself to those goods for which
`Opposer has admitted that Opposer never used its mark.
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`6
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`After receiving Opposer’s responses to these discovery requests, Applicant PurePharma
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`APS moved to amend its answer in the Opposition in order to assert fraud, abandonment, and
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`non-use grounds for cancellation of the pleaded registration, which Opposer opposed.
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`The Board suspended proceedings pending disposition of the Motion to Amend to Assert
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`Counterclaims.
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`Before the TTAB resolved this motion, and on the eve of trial, Opposer filed the
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`Complaint alleging
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`trademark
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`infringement and unfair competition against Applicants
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`PurePharma APS and PurePharma, Inc.. See Ex. A. Opposer also sent cease and desist letters to
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`Applicant’s customers, threatening infringement based on, inter alia, the invalid registration. See
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`Ex. F
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`In relevant part, the Complaint asserts that “[s]ince at least as early as 2001, PuraPharm
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`has continuously used in United States commerce the mark PURAPHARM in connection with a
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`number of products ….” See Ex. A ¶9. Furthermore, the Complaint asserts that Opposer’s
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`Registration is “valid” and “incontestable.” See Ex. A ¶ 14.
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`While Opposer immediately served and filed a Motion to Suspend the Opposition based
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`on the Complaint, Opposer has yet to formally serve the Complaint on Applicant, thereby
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`delaying for up to 120 days the commencement of actual proceedings. Fed. R. Civ. P. 4.
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`7
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`III. Argument
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`A. The Board Should Defer Ruling on The Motion to Suspend Until The Rule
`11 Motion is Decided As it Will Materially Alter the Landscape of Facts and
`Issues on Which this Motion Will Be Decided
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`Suspension of a Board proceeding is solely within the discretion of the Board. The Other
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`Telephone Company v. Connecticut National Telephone Company, Inc., 181 USPQ 779, 782
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`(Comm'r Pat. 1974). “All motions to suspend, regardless of circumstances, . . . are subject to the
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`‘good cause’ standard.” National Football League v. DNH Management LLC, 85 USPQ2d 1852,
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`1855, n.8 (TTAB 2008) citing Trademark Rule 2.117(c). “[B]oth the permissive language of
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`Trademark Rule 2.117(a) . . . and the explicit provisions of Trademark Rule 2.117(b) make clear
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`that suspension is not the necessary result in all cases.” Boyds Collection Ltd. v. Herrington &
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`Co., 65 USPQ2d 2017, 2018 (TTAB 2003).
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`In this case, the Motion to Suspend Should not be decided until after Opposer responds to
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`the Rule 11 Motion. If Opposer withdraws the Complaint, there will be no further basis for
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`delaying the Board proceeding. If Opposer Amends the Complaint to acknowledge the invalidity
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`of the registration and to base the Complaint solely on common law rights, the factual landscape
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`affecting the Board’s decision on the motion to suspend should alter materially and swiftly.
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`Specifically, as the Board is aware, a complaint based on common law rights poses a
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`substantially differing question than rights based on a registration.
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`B. The Board Should Defer Ruling on the Motion to Suspend Until the After
`The Motion to Amend is Decided as this Case is in an Advanced Stage and
`the Motion to Suspend represents an improper attempt to avoid the
`consequences of Opposer’s false allegations
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`The Board should not delay its ruling on the Motion to Amend until after the Civil Action
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`proceeds through discovery, trial and appellate briefing. The motion to amend is fully briefed,
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`and for the reasons already set forth in this opposition, the civil action was summarily filed to
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`avoid a Board decision on the motion to amend, and to threaten Applicant before a counterclaim
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`is formally interposed in this case. Based on information and belief, that is, Opposer’s counsel’s
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`own Admissions in this case, the Complaint is based on false assertions as to the registration’s
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`validity and incontestability.
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`The Board has declined to order suspension in similar circumstances where a complaint
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`was filed solely to delay consideration of a motion which is well taken. See, Jodi Kristopher Inc.
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`v. International Seaway Trading Corp., 91 USPQ2d 1957 (TTAB 2009). [“the Board can only
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`conclude that the concurrent filing of the motion to suspend and the civil action (on identical
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`claims) … was solely for purposes of delay and not for advancing resolution of its claims”].
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`The Board also has declined to order suspension where the discovery period has closed
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`and the parties are in the midst of trial. See, e.g. DuPont v. G.C. Murphy, 199 USPQ 807
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`(TTAB1978); [Board declines to stay TTAB proceeding in light of its advanced stage and
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`decides the opposition expeditiously to assist the court in the controversy before it].
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`In line with this precedent, the Board should deny Opposer’s motion to suspend. The
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`Opposer has served its pretrial disclosures and Applicant’s motion to amend has been fully
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`9
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`briefed and is well-taken. On the other hand, based on information and belief, that is Opposer’s
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`counsel’s own Admissions, the Complaint is based on false allegations of fact, and Opposer has
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`yet to serve Applicant with a copy of the Complaint, despite knowing Applicant’s service
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`address. From all these facts, the Board can only conclude that Opposer’s complaint and the
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`motion to suspend were served solely for purposes of delay and not for advancing the resolution
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`of Opposer’s claims.
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`IV. Conclusion
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`Opposer’s Complaint and Motion to Suspend represent an improper attempt to avoid the
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`consequences of Opposer’s false allegations which are material to Opposer’s claims. Refusing to
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`grant the Motion to Suspend will deter similar misconduct in the future. Further, as the
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`Complaint has been challenged by service of a Motion under Rule 11, the factual and legal
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`landscape of the Complaint will soon shift. The Board should deny Opposer’s motion to
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`Suspend pending the outcome of Applicant’s Rule 11 Motion and Motion to Amend and proceed
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`instead to a summary disposition of the TTAB proceeding.
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`Dated: November 21, 2014
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`By: /Carla C. Calcagno/
`Calcagno Law PLLC
`1250 24th Street, N.W.
`Suite 300
`Washington, D.C. 20037
`Telephone: (202) 466-0544
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`Attorneys for Purepharma APS
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`10
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on November 21, 2014 a true and accurate copy of
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`the foregoing:
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`APPLICANT’S OPPOSITION TO OPPOSER’S MOTION FOR SUSPENSION
`PURSUANT TO TRADEMARK RULE 2.117 and Exhibits A-F
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`was served by agreement of the parties on Opposer by emailing a copy of the same to Melissa S.
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`Rizzo, Attorney for Opposer, at melissa.rizzo@arlaw.com and trademarks@arlaw.com.
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`/Carla Calcagno/
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`11
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`Exhibit A
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`Case 4:14--cv—03:L81 Document 1 Filed in TXSD on 11l06l14 Page 1 of 12
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF TEXAS
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`HOUSTON DIVISION
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`PURAPHARM INTERNATIONAL (H.K.)
`LIMITED,
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`V.
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`Plaintiff,
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`PUREPHARMA, INC. and
`PUREPHARMA APS
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`Defendants.
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`OOG¢4O'3UO'J0O':0(?3=O'.\=03€4)'Af»(7)=0'>G03
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`Civil Action No.
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`COMPLAINT
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`Plaintiff, PuraPharm International (H.K.) Limited (“PuraPharm” or “PIaintiff”), by and
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`through its undersigned counsel, hereby files this complaint against defendants, PurePharma A_pS
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`and PurePharma, Inc. (collectively, “Defendants”) and in support thereof, states as follows:
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`THE PARTIES
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`I.
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`PuraPharm is a Hong Kong limited liability company, with an address of I
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`Connaught Place, Suite 4002, Jardine House, Central, Hong Kong.
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`2.
`Pure-Pharma APS is a Danish private limited company, with an address of
`Lergravsvej 59 3 DK-2300 Kobenhavn S, Denmark.
`I
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`3.
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`PurePharrna, Inc. is a corporation organized and existing under the laws of the
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`state ofDelaware, with an address of 100 Tiburon Blvd., Mill Valley, California 94941.
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`NATURE OF ACTION
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`4.
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`This is an action for trademark infringement, false designation of origin, and
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`unfair competition under the Trademark Act of 1946, as amended (The Lanham Act, 15 U.S.C. §
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`1051 et seq.) based on Defendants’ adoption and use of the mark PUREPHARMA in connection
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`EXHIBIT A
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`Case 4:14—cv—O3181 Document 1 Filed in TXSD on 11106114 Page 2 of12
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`with Defendants’ goods in violation of PuraPharm’s established rights in PURAPHARM for
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`identical and closely related goods.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §
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`1121 (actions arising under the Federal Trademark Act), 28 U.S.C. § 1331 (actions arising under
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`Federal laws), and 28 U.S.C. § 1338(a) (acts of Congress relating to trademarks).
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`6.
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`Defendants have sufficient contacts with Texas for this Court to exercise personal
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`jurisdiction over them within the parameters of due process, because Defendants have purposely
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`availed themselves of the benefits of transacting business in Texas by maintaining an interactive
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`Web site where Texas residents purchase products via a “virtual shopping cart” directly from
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`Defendants by submitting credit card and shipping information. Moreover, customers receive
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`personalized service directly from Defendants’ web site by using the site’s “Send Us an Email”
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`option on its “CONTACT PUREPHARMA” web page to transmit questions or requests to
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`Defendants’ customer service department. Defendants ship directly to the homes of Texas
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`residents the products ordered over the Internet. Defendants also sell their products to Texas
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`residents at Texas CrossFit® facilities through distributors located in Texas, including in this
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`District.
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`7.
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`Venue is proper in this District pursuant to 28 U.S.C. § l39l(b), because a
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`substantial part of the events giving rise to the claims occurred in this District.
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`F_A_C.1’_S.
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`8.
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`Founded in 1998 in Hong Kong, PuraPharm has developed a series of health,
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`nutritional, and pharmaceutical products that have gained significant popularity both in China
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`and abroad.
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`EXH|2B|T A
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`Case 4:14—cv—O3181 Document 1 Filed in TXSD on 11/06/14 Page 3 of 12
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`9.
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`Since at least as early as 2001, PuraPharm has continuously used in United States
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`commerce the mark PURAPHARM in connection with a number of products, including but not
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`limited to: food supplements, dietary and nutritional supplements, pharmaceutical products, and
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`Chinese medicines.
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`10.
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`PuraPharm‘s United States distribution channels and customers include, among
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`others, health food distributors, dietary and food supplement distributors, consumers seeking to
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`improve their overall health, and the holistic and herbal healthcare market. PuraPharm partners
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`with national distributors such as Uncle Bill USA Trading, Inc. and Tronex Herbal Solutions to
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`market and distribute its products throughout the US, including in Texas.
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`11.
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`Since its first use of the mark, PuraPharm has spent significant resources
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`advertising, developing and promoting the PURAPHARM mark. As a result of these efforts, the
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`PURAPHARM mark has become well known throughout the United States as a symbol of
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`PuraPharm’s goods.
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`12.
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`Since at
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`least as early as July 1998, PuraPharm has owned and operated a
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`commercial web site at www.purapharm.com.
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`The web site at www.purapharm.com is
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`Pura.Pharm’s primary web site and, together with the <purapharm.com> domain name, has come
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`to be associated with PuraPharm and its products.
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`l3.
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`Through PuraPharm’s extensive and l.ong use, display, and promotion of its mark,
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`the mark has become known to the public and is associated by the public with PuraPharm and
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`products originating with PuraPharm. PuraPharm acquired trademark rights to the mark long
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`before any use of the mark by Defendants.
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`14.
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`PuraPharm is
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`the
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`owner of
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`federal Registration Number
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`2,639,990,
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`PURAPHARM, issued by the United States Patent and Trademark Office on October 22, 2002,
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`EXH|l3|T A
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`Case 4:14—cv—O3181 Document 1 Filed in TXSD on 11106/14 Page 4 of 12
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`for the following products: health food for medically restricted diets; food supplements, namely,
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`herbal extract in the form of capsule tablet, powder and granule; food supplements, namely,
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`Vitamins, vitamin preparations, minerals, enzymes, and enzymes preparations; dietary and
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`nutritional supplements; nutritional supplements, namely, drink mixes in powder form; dietetic
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`food preparations, dietetic beverages, dietetic substances, and food preparations all for medically
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`restricted diets; digestives for pharmaceutical purposes; appetite suppressants; pharmaceutical
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`preparations and substances for appetite control and weight management; analgesics; sedatives;
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`tranquilizers; sunburn ointments and sunburn preparations for medical use; pharmaceutical
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`preparations for skin care; medicated mud for skin care, medicated skin care mud for baths;
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`medicated mouth washes; medicines for dental purposes; Chinese medicines, for use with human
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`biological systems, namely, Chinese medicines for the respiratory system, gastrointestinal
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`system, endocrine system, cardiovascular system, nervous system, musculoskeletal system,
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`urinary system, integumentary system and reproductive system; balms for medical purposes for
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`the treatment of muscle pain, Veterinary nutritional supplements for pets and livestock and
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`medicated preparations for pet and livestock. A copy of this record of registration taken from the
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`TSDR electronic database of the Patent and Trademark Office and showing the current status and
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`title of the registration is attached hereto as Exhibit A. The registration is Valid, subsisting, and
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`incontestable.
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`PuraPharm’s products rendered under the PURAPHARM mark and brand name
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`are marketed. and sold. nationwide, including in the State of Texas.
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`15.
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`On information and belief PurePharma ApS was founded in 2009 and began
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`marketing, distributing, and selling products under the mark PUREPHARMA in 2009.
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`16.
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`On information and belief, PurePharma, Inc. was founded in 2011 and began
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`marketing, distributing, and selling products under the mark PUREPHARMA in 2011.
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`EXHl4B|T A
`
`

`
`Case 4:14—cv—03181 Document 1 Filed in TXSD on 11/06/14 Page 5 of 12
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`17.
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`On information and belief, Defendants use the PUREPHARMA mark in United
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`States commerce on and in connection with at
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`least
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`the following products: dietary and
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`nutritional supplements, food supplements, and pharmaceutical products.
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`18.
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`On October 30, 2012, Defendant PurePharma ApS filed Application Serial No.
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`79/124353 to register the mark P U E O P H A R M on the Principal
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`Register (“U.S. Application”). As a result of the examination process, PurePharma ApS seeks
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`to register the mark for goods identified as “Food supplements for medical purposes; food
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`supplements not for medical purposes, made from plants and weed extracts,
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`for human
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`consumption, for the purpose of nutritionally supplementing a normal diet; dietetic substances
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`not for medical purposes, made from plants and weed extracts, for physiological purposes,
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`namely, nutritional supplements; biopathic products and dietary supplements for medical
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`purposes, including those based on active components and extracts of marine animals, plants,
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`marine plants, herbs, fruits and vegetables, namely, nutritional supplements; foodstuffs and
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`health supplements not
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`for medical purposes, mainly consisting of extracts and active
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`components from fiuits, vegetables, marine plants, marine animals, fish, shellfish and dried '
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`herbs, namely, nutritional supplements” and “Sports drinks and beverages.”
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`19.
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`On information and belief, Defendants’ distribution channels and target customers
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`include health. food distributors, dietary and food supplement distributors, consumers seeking to
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`improve their overall health, professional and non~professional athletes, athletic facilities,
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`athletic sponsors, and health food stores, to name a few.
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`20.
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`PuraPha1"m first became aware of Defendants’ use of the PUREPHARMA mark
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`when International Registration No. 1145576 for PURE PHAR1\/IA was published for opposition.
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`EXH|l3|T A
`
`

`
`Case 4:14—cv—03181 Document 1 Filed in TXSD on 11/06/14 Page 6 of 12
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`21.
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`After the publication of the U8. Application on June 4, 2013, PuraPharm filed a
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`Notice of Opposition (Opposition No. 91211414) (the “Opposition Proceeding”) opposing the
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`registration of the mark shown in the U.S. Application.
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`In the Notice of Opposition, PuraPharm
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`states that
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`the mark shown in the U.S. Application so resembles 0pposer’s registered
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`PURAPHARM mark and the PURAPHARM mark previously used by Pu;raPharm and not
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`abandoned, as to be likely, when used on or in connection with the products identified in the U.S.
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`Application,
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`to cause confusion,
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`to cause mistake, or to deceive, and the mark is thus
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`unregistrable under §§ 2(d) and 13 of the United States Trademark Act, 15 U.S.C. §§ 1052(d)
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`and 1063.
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`22.
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`Further in the Notice of Opposition, PuraPharm states that it will be damaged by
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`registration of the PUREPHARMA mark, because registration will give PurePharma ApS prima
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`facie evidence of its ownership of, and its exclusive right to use in commerce, a mark which is
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`confusingly similar to PuraPharm’s mark, which is and will be in derogation of Pu.raPharm’s
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`right to continue to use its mark. The Opposition Proceeding is currently suspended, While the
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`Trademark Trial and Appeal Board considers PurePharma ApS’s motion for leave to assert a
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`counterclaim against PuraPharma.
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`23.
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`In addition to opposing the US. Application, PuraPharm has requested that
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`Defendants stop using the PUREPHARMA mark based on likelihood of confusion with
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`PuraPharm’s registered PURAPHARM mark and the PURAPHARM mark used by PuraPharm,
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`but Defendants have refused.
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`24.
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`PuraPharm files this action to stop the deceptive and confusing use of the
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`PUREPHARMA mark by Defendants, relief not available in the Opposition Proceeding.
`
`EXHISBIT A
`
`

`
`Case 4:14—cv—03181 Document 1 Fifed in TXSD on 11/06/14 Page 7 of 12
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`25.
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`Defendants’ primary commercial web site is located at www.purepharma.com
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`The only difference between Defendants’ primary domain name, <purepharma.com>, and
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`PuraPharm’s primary domain name is the addition of an “e” instead of the first “a” in
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`“PuraPharm” and the subtraction of the “a” at the end of “PurePharma.” On information and
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`belief, Defendants registered this domain name and launched the web site at least seven (7) years
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`after PuraPharm’s launch of its web site.
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`26.
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`Defendants’ PUREPHARMA mark so resembles PurePharma’s
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`registered
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`PURAPHARM mark as to be likely, when used on or in connection with the products identified
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`above, to cause confusion, or to cause mistake, or to deceive.
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`27.
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`Defendants’ goods rendered under the PUREPHARMA mark are identical,
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`overlapping, and/or closely related to PuraPharm’s goods rendered under its PURAPHARM
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`mark.
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`28.
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`On information and belief, Defendants’ distribution channels and customer base
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`encroach on and overlap with PuraPharm’s distribution channels and customer base.
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`29.
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`Defendants’ use of a nearly identical mark for identical and closely related goods
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`is Without authority or license from PuraPharm and creates a likelihood of confusion, deception
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`and mistake. PuraPharm’s customers, Defendants’ customers, and the general public are likely
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`to be misled into believing that Defendants’ goods under the PUREPPLARMA mark are
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`provided, sponsored, or approved by PuraPharm.
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`30.
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`Defendants have infringed PuraPharm’s mark by various acts, including, without
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`limitation, the selling, offering for sale, promotion, and advertising of Defendants’ products
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`under the name “PUREPHARMA,” and the operation of an Internet Web site, prominently
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`displaying, advertising, and promoting Defendants’ goods under the mark PUREPHARMA.
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`EXHIBIT A
`
`

`
`Case 4:14—cv—03181 Document 1 Filed in TXSD on 11106114 Page 8 of 12
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`31.
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`Defendants’ use of PUREPHARMA in connection with Defendants’ goods has
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`been made notwithstanding PuraPharrn’s well-known and prior established rights in the mark
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`PURAPHARM and with both actual and constructive notice of PuraPharm’s federal registration
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`rights under 15 U.S.C. § 1072.
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`32.
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`Defendants’ continued use of the PUREPHARMA mark constitutes malicious,
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`willful, fraudulent and deliberate infringement.
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`33.
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`Upon information and belief, Defendants’ infringing activities have caused and,