Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA617445
`ESTTA Tracking number:
`07/24/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216892
`Plaintiff
`IVFMD P.A.
`ERIN B ROTH
`FULBRIGHT & JAWORSKI LLP
`2200 ROSS AVENUE, SUITE 2800
`DALLAS, TX 75201-2784
`UNITED STATES
`chris.andersen@nortonrosefulbright.com, doipdocket@nortonrosefulbright.com
`Reply in Support of Motion
`Chris Andersen
`chris.andersen@nortonrosefulbright.com, doipdocket@nortonrosefulbright.com
`/chris andersen/
`07/24/2014
`91216892 Reply to Applicants Response.pdf(1143269 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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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No.: 85/981,000
`For the mark: IVFMD
`Filed: April 2, 2013
`Published in the Official Gazette on June, 17, 2014
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`IVFMD P.C.,
`
`Opposer,
`
`v.
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`IVFMD-Florida, Inc.,
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`Applicant.
`
`Opposition No. 91216892
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`REPLY TO APPLICANTS RESPONSE IN
`OPPOSITION OF MOTION TO SUSPEND
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`Summary of Background
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`Suspension of this Opposition is appropriate because the parties' civil case and this
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`Opposition involve the same issues of descriptiveness and control/ownership of the mark at
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`issue: the abbreviation "IVFMD" (the "IVFMD Abbreviation"). Applicant-Plaintiffs response
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`to Opposer-Defendant's Motion to Suspend (the "Response") sets forth irrelevant arguments and
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`misstatements of fact, and cannot change the fact that the identity of issues warrants suspension.
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`Applicant-Plaintiffs complaint in the Civil Action Case number 3:13-cv-03527-N ("Civil
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`Action") alleges that it owns the descriptive IVFMD Abbreviation, and that the abbreviation has
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`acquired secondary meaning in connection with its medical services. PL's First Am. Compl. fl
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`8, 15. A copy of Plaintiffs First Amended Complaint is attached as Exhibit A. Based on
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`Opposer-Defendant's use of the abbreviation, Applicant-Plaintiff asserts claims for trademark
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`infringement and false designation under the Lanham Act, among other claims. Id. \ 3.
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`Opposer-Defendant moved for summary judgment on the grounds that the IVFMD
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`abbreviation is highly descriptive of Applicant-Plaintiffs services and has not acquired
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`58016842.2
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`

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`secondary meaning. The brief in support of the motion for summary judgment is attached as
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`Exhibit B.
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`In its response to Defendant’s motion in the Civil Action, attached as Exhibit C,
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`Applicant-Plaintiff denies that
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`IVFMD is descriptive and lacks secondary meaning, and
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`repeatedly cites to the USPTO’s treatment of its IVFMD applications, including the application
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`at issue here, in support of its arguments. See, e.g., Pl.’s Resp. Opp. Def.’s Mot. Sumrn. J. at 3,
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`5-6, 11, 17, 26. Therefore, the same arguments and issues are involved in the Civil Case and
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`this Opposition, and resolution of these issues in the Civil Case will impact this Opposition. See
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`Notice of Opp.
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`1] 9. Accordingly, Opposer-Defendant’s Motion to Suspend due to Civil
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`Proceedings should be granted.
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`Argument
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`According to 37 C.F.R. § 2.1 17(a):
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`Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a
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`party or parties to a pending case are engaged in a civil action or another Board proceeding
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`which may have a bearing on the case, proceedings before the Board may be suspended until
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`termination of the civil action or the other Board proceeding.
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`As evident from the pleadings in the Civil Action and this Opposition, both proceedings
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`involve the same issues. Accordingly, a decision by the federal district court on these issues will
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`impact the Board’s decision, and suspension is warranted. Other Tel. Co. v. Ct. Nat ’l Tel. C0.,
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`181 U.S.P.Q. 125 (T.T.A.B. 1974) (motion to suspend granted in opposition proceeding because
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`final determination of same issues in civil suit affects resolution of Board proceedings), pet.
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`denied, 181 U.S.P.Q. 779 (Comm’r 1974); Whopper-Burger, Inc. v. Burger King Corp., 171
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`U.S.P.Q. 805 (T.T.A.B. 1971) (motion to suspend granted in cancellation proceeding because a
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`decision on the same issue by the district court would be binding upon the Board).
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`53015342.:
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`2
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`

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`In the Civil Action, Applicant-Plaintiff alleges that Opposer-Defendant is infringing
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`Applicant-Plaintiffs rights to the IVFMD Abbreviation under the Lanharn Act. Opposer—
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`Defendant has moved for summary judgment on the grounds that the IVFMD abbreviation is
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`highly descriptive of Applicant-Plaintiffs services and lacks secondary meaning. As grounds
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`for the Opposition, Opposer-Defendant alleges that
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`IVFMD is so highly descriptive of
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`Applicant-Plaintiff’s services that IVFMD carmot be appropriated as a trademark. Thus, the
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`issues of descriptiveness, secondary meaning, and rights/ownership of the mark are the same in
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`the Civil Action and in this Opposition. A determination of these issues in the Civil Action not
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`only should have a bearing on this Opposition, but in fact will be binding upon the Board and
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`affect the outcome of this Opposition.
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`Applicant-Plaintiff has acknowledged the inter-relatedness of these proceedings by
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`relying heavily on the proceedings in its response to Defendant’s motion in the Civil Action.
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`See, e.g., Pl.’s Resp. Opp. Def.’s Mot. Sumrn. J. at 3, 5-6, 11, 17, 26. Yet Applicant-Plaintiff
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`now takes the opposite position before this Board in hopes of winning its Opposition to the
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`Motion to Suspend.
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`In its Response, Applicant-Plaintiff asserts only meritless arguments against suspension.
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`First, it argues that Opposer-Defendant’s Motion to Suspend improperly attempts to shift the
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`burden to Applicant-Plaintiff. But this argument concerns the substance of the Opposition and
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`the burden of proof applicable therein, and is irrelevant to the determination of whether the Civil
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`Action will have a bearing on the Opposition. Second, the Applicant-Plaintiffs claims that the
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`Civil Action will not resolve the same issues that will be decided in the Opposition. This
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`argument is based on an incorrect statement of the analysis for suspension, and, as set forth
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`above, is also factually incorrect.
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`580168422
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`3
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`

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`Lastly, while Applicant-Plaintiff alludes to a hypothetical “loss of evidence” should the
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`Opposition be suspended, because the Civil Case and the Opposition are so inter-related, such
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`evidence would be properly preserved for use in the Civil Case. Applicant-Plaintiff faces no
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`such harm if the Opposition is suspended. Therefore,
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`in accordance with 37 C.F.R. § 2.117,
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`suspension of this Opposition is appropriate until the Civil Action is resolved.
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`Conclusion
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`The Civil Action and the Opposition involve the same issues of descriptiveness,
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`secondary meaning,
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`and Applicant-Plaintifl”s alleged trademark rights
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`to the IVFMD
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`Abbreviation. Because the outcome of the Civil Action will have a bearing on this Opposition,
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`suspension is the appropriate course of action pending disposition of the Civil Action.
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`For the foregoing reasons, Applicant respectfully requests that
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`this Opposition be
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`suspended until final determination of the Civil Action.
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`Date:
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`Q 2 lg
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`I
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`Respectfully submitted,
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`Erin Roth
`
`FULBRIGI-IT & JAWORSKI LLP
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`2200 Ross Avenue; Suite 2800
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`Dallas, Texas 75201
`Telephone: (214) 855-8000
`Facsimile: (214) 855-8200
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`Attorney for Opposer
`I VFMD P./l.
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`580168422
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`4
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`

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`CERTIFIC/I TE OF SER VICE
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`This is to certify that a copy of the foregoing REPLY TO RESPONSE IN OPPOSITION OF
`MOTION TO SUSPEND was served by First Class Mail, postage prepaid and via email as
`noted, on July 24, 2014, upon Applicant and the Applicant’s Attorney at the addresses below:
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`IVFMD—FIOrida, Inc.
`7300 SW 62 Place, 4th Flr South
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`Miami, Florida 33143
`
`I-Ieidi Tandy
`1111 Lincoln Rd. Ste. 400
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`Miami Beach, Florida 33139-2439
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`Email: heidi@heidi8.com
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`Chris Andersen
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`580168422
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`5
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`

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`%
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`[A True And Correct Copy Of Plaintifi"s First Amended Complaint]
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`EXHIBIT A
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`580168422
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`6
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 1 of 21 PageID 128
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF TEXAS
`(DALLAS DIVISION)
`
`
`IVFMD FLORIDA, INC.
`
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`C.A. No. 3:13-cv-03527-N
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`Plaintiff,
`
`
`v.
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`IVFMD, P.A., formerly known as
`ADVANCED REPRODUCTIVE CARE
`CENTER, P.A., and SY Q. LE,
`
` Defendants.
`
`
`FIRST AMENDED COMPLAINT AND DEMAND FOR JURY TRIAL
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`
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`Plaintiff IVFMD Florida, Inc. (“IVFMD”), by its undersigned attorneys and for its
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`Complaint, alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`By this action, IVFMD seeks to enforce its trademark rights relating to its IVFMD
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`marks for a wide range of medical and health goods and services. IVFMD has used its IVFMD
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`marks for over fifteen years and has established extensive use of and fame in the marks in
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`Florida, across the United States, and internationally.
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`2.
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`IVFMD seeks relief arising from use by Defendant Advanced Reproductive Care
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`Center, P.A. (“ARCC”), now known as IVFMD, P.A., of an infringing IVFMD mark in various
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`contexts in connection with its medical and health services which are identical to certain of
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`Plaintiff’s medical and health goods and services.
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`3.
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`More particularly, IVFMD seeks injunctive relief against Defendant and damages:
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`for trademark infringement in violation of Section 1114 of the Trademark Act of the United
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`States, 15 U.S.C. § 1114; for unfair competition and false designations of origin in violation of
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 2 of 21 PageID 129
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`Section 1125(a) of the Trademark Act of the United States, 15 U.S.C. § 1125(a); for violations
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`of the Texas Anti-Dilution Statute; and for related acts of unfair competition and trademark
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`infringement actionable under the common law of the State of Texas.
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`JURISDICTION AND VENUE
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`4.
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`This Court has jurisdiction over the subject matter of this action pursuant to 15
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`U.S.C. § 1121 (Lanham Act), 28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1338 (patent,
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`trademark and copyright), and pursuant to 28 U.S.C. § 1367 (supplemental jurisdiction).
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`5.
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`Venue is proper in this district and division pursuant to 28 U.S.C. §§ 1391(b) and
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`(c).
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`THE PARTIES
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`6.
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`Plaintiff IVFMD Florida, Inc. is a corporation organized and existing under the
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`laws of the State of Florida, having its principal place of business at 7300 SW 62 Place, 4th
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`Floor, Miami, Florida, 33143.
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`7.
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`Upon information and belief, Defendant Advanced Reproductive Care Center,
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`P.A., now known as IVFMD, P.A., is a professional association organized and existing under the
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`laws of the State of Texas, having its principal place of business at 7501 Las Colinas Boulevard,
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`Suite 200, Irving, Texas 75603. It may be served with process by serving its registered agent,
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`Morris Williams, 14114 Dallas Parkway, Suite 530, Dallas, Texas 75254.
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`PLAINTIFF’S FAMOUS IVFMD MARK
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`8.
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`IVFMD is the owner of all rights and interests in the service mark IVFMD (the
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`“IVFMD Mark”) for a wide range of medical and health services and goods.
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`9.
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`IVFMD’s services provided pursuant to its IVFMD Mark include IVF (in-vitro
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`fertilization), ICSI (intracytoplasmic sperm injection), Andrology, Inseminations (intrauterine
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`
`
`2
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 3 of 21 PageID 130
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`insemination or IUI), natural cycle IVF, low cost IVF, tubal reversal, mini-stimulation
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`medication protocols, fertility preservation, egg freezing, sperm freezing, and sperm/egg donor
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`programs, as well as psychological and medical counseling, nutritional and fitness support.
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`10.
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`IVFMD holds an application for a federal trademark registration for its IVFMD
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`Mark, at Serial No. 85/892,637 (the “IVFMD Mark”), which was filed on April 2, 2013, with a
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`stated date of first use in Class 44 of at least as early as January 1, 1998, for: (a) services
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`including, but not limited to, human fertility treatment services; testing services, namely, fitness
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`evaluations and/or consulting services in the field of mental fitness; reproductive medicine
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`services, gynecology services, cancer screening services, cancer diagnosis services, cancer
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`patient support services, cancer survivor support services, obstetric services, nutritional therapy
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`services, nutritional counseling services, nutritional analysis services; human egg fertilization,
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`ovarian health services, human egg donation, fertility, namely reproductive endocrinology and
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`infertility services, tubal ligation services and services involved in the reversal of tubal ligations,
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`tubal health, psychological and psychiatric testing/evaluation/counseling/support services,
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`genetic testing and counseling services, contraceptive services, and physical fitness training
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`services (collectively, “IVFMD Services”) and (b) dietary and nutritional supplements; mixed
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`vitamin preparations; multi-vitamin preparations; nutritional and dietary supplements formed and
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`packaged as bars; nutritional supplements; prenatal vitamins; vitamin and mineral preparations
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`for medical use; vitamin and mineral supplements and vitamins (collectively, “IVFMD Goods”).
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`(IVFMD Goods and IVFMD Services are, collectively, “IVFMD Goods and Services.”)
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`11.
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`IVFMD also holds an application for a federal trademark registration for its
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`IVFMD & Design mark at Serial No. 85/892,645 for the same goods and services, filed on April
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`2, 2013, with a stated date of first use in Class 44 of at least as early as January 1, 2007 (the
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`
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`3
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 4 of 21 PageID 131
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`“IVFMD Design Mark”). (Collectively, the IVFMD Mark and IMFMD Design Mark are the
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`“IVFMD Marks.”)
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`12.
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`IVFMD has consistently used its IVFMD Mark and its IVFMD Design Mark
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`since their respective dates of first use on advertising and promotional material for its various
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`medical offices, in its phone number, email addresses and domain name, and in other ways on
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`marketing materials, uniforms and items provided to patients and prospective patients.
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`13.
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`The IVFMD Mark and IVFMD Design Mark have been and are being used
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`exclusively by IVFMD in connection with its IVFMD Goods and Services. IVFMD’s marks are
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`exclusively associated with IVFMD by patients, consumers, doctors and medical personnel,
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`medical companies, hospitals, and other service providers within the health care industry and
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`particularly within the reproductive health service industry. The IVFMD Goods and Services are
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`extremely well respected worldwide. In the last fifteen years, IVFMD has established good will
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`of inestimable value in and with its IVFMD Marks. Photographs of the IVFMD Marks, as used
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`by Plaintiff, on goods and in connection with its services, are attached as Exhibit A.
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`14.
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`Plaintiff has advertised its medical services in the state of Texas and to residents
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`of the state of Texas. For example, in January and February of 2005, Plaintiff ran ads in various
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`airplane magazines, including American Eagle Latitude magazine, which was distributed to
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`passengers flying to and from Texas. Plaintiff has also sponsored “Baby Races” at Miami Heat
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`basketball games, including games against teams from Texas, which were attended by Texas
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`residents.
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`15.
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`As a result of the respect and popularity afforded to IVFMD’s Goods and
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`Services sold and performed under and pursuant to its IVFMD Marks, IVFMD Marks have
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`4
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 5 of 21 PageID 132
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`achieved secondary meaning in the minds of the public. The IVFMD Marks are immediately
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`identified with IVFMD.
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`DEFENDANT’S INFRINGING CONDUCT
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`16.
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`On or about September 21, 2012, Defendant ARCC filed papers with the Texas
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`Secretary of State to change its name from “Advanced Reproductive Care Center, P.A.” to
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`“IVFMD, P.A.” A copy of that filing is attached hereto as Exhibit B. On or about October 1,
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`2012, Defendant ARCC announced its name change to the public. A copy of its web page as
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`archived on June 6, 2013, by Archive.org is attached hereto as Exhibit C. Defendant stated on its
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`web page that “We hope that the new name, IVFMD, will be easier to say and remember than
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`Advanced Reproductive Care Center.” The emphasis of the IVFMD component is theirs.
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`17.
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`On May 29, 2013, Plaintiff, through counsel, sent a Cease & Desist letter to
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`Defendant ARCC’s webmaster@ivfmd.net email address; a copy of the letter is attached as
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`Exhibit D.
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`18.
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`On July 29, 2013, Plaintiff, through counsel, sent a follow up letter to Defendant
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`ARCC’s webmaster@ivfmd.net email address; a copy of the letter is attached as Exhibit E.
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`19.
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`On August 4, 2013, Dr. Sy Q. Le, the principal of ARCC, emailed to counsel for
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`Plaintiff a letter where the body contained only the following: “We intend to defend our IVFMD
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`corporate name to the fullest extent. You will hear from our legal team.” A printout of this email
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`is attached as Exhibit F.
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`20.
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`On August 15, 2013, counsel for Defendant ARCC sent an email to counsel for
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`Plaintiff. A printout of this email is attached as Exhibit G.
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`21.
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`On August 19, 2013, counsel for Plaintiff sent an email with audio, video and
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`image file attachments wherein plaintiff provided Defendant ARCC with copious examples of its
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`5
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 6 of 21 PageID 133
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`use of its IVFMD mark in the United States and internationally, going back many years. A
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`printout of the email is attached as Exhibit H, as are printouts of the print advertisements that
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`were attached to the email.
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`22.
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`On information and belief, Defendant ARCC has, since at least October 1, 2012,
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`provided medical services under the infringing IVFMD mark, where such medical services are
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`identical to the services provided by Plaintiff.
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`23.
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`On information and belief, Defendant ARCC has, since at least July 12, 2013,
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`used the Twitter account IVFMD_TX to advertise and promote its medical services under an
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`infringing mark, namely, IVFMD_TX. Plaintiff notes that as of August 26, 2013, there are only
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`two accounts following the infringing IVFMD_TX Twitter account. A printout of the Twitter
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`account page located at twitter.com/IVFMD_TX is attached as Exhibit I.
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`24.
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`At least as late as 2011, Defendant ARCC was using the name and mark
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`Advanced Reproductive Care on its Facebook page; a printout of the Facebook status update
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`posted on September 8, 2011, is attached as Exhibit J.
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`25.
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`On information and belief, on October 1, 2012, Defendant ARCC changed its
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`name and mark on Facebook to IVFMD and continues to use said infringing IVFMD mark on its
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`Facebook page to advertise and promote its medical services. A printout of the Facebook page
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`located at https://www.facebook.com/ivfmd.net is attached as Exhibit K.
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`26.
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`On information and belief Defendant ARCC has created a Google+ web page at
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`https://plus.google.com/u/0/106664929643521307084/about where Defendant ARCC uses its
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`infringing IVFMD marks to advertise and promote its medical services. A printout of said
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`Google+ page is attached as Exhibit L.
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`6
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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 7 of 21 PageID 134
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`27.
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`On information and belief, on or about June 10, 2013, Defendant ARCC created a
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`YouTube account at https://www.youtube.com/user/IVFMD1 where Defendant ARCC uses its
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`infringing IVFMD marks to advertise and promote its medical services. A printout of said
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`YouTube page is attached as Exhibit M. As of August 27, 2013, the three videos at said account
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`had been viewed under 150 times.
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`28.
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`Upon information and belief, since at least October 1, 2012, Defendant ARCC has
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`used various marks incorporating the “IVFMD” component to advertise and promote its medical
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`services, which are identical to certain of Plaintiff’s medical services.
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`29.
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`On June 17, 2013, Sy Le filed, as an individual, an application with United States
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`Patent and Trademark Office to register the mark IVFMD WHERE MIRACLES BEGIN &
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`Design in Class 44 for human fertility treatment services; medical services; medical evaluation,
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`treatment and diagnosis of infertility at Serial No. 85/961,142 (the “Infringing Application”).
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`The stated date of first use in the Infringing Application was given by its applicant (Dr. Le) as
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`October 1, 2012. On September 25, 2013, Dr. Le abandoned those applications, and Defendant
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`ARCC filed replacement applications in its name.
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`30.
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`On information and belief, Defendant has used at least the following marks in
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`connection with its medical services: (a) IVFMD, (b) IVFMD WHERE MIRACLES BEGIN, (c)
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`IVFMD WHERE MIRACLES BEGIN & Design (d) IVFMD_TX (collectively, the “Infringing
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`Uses”).
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`31.
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`The Infringing Applications and Infringing Uses are, collectively, referred to
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`herein as the Infringing Marks.
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`32.
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`The IVFMD mark used by Defendant is identical to Plaintiff’s famous IVFMD
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`component and mark.
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`
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`7
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 8 of 21 PageID 135
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`33.
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`On or about October 1, 2012, Defendant commenced offering the Infringing
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`Services, under the Infringing Marks, to the trade and the general public.
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`34.
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`Defendant’s services so closely resemble the services and goods provided under
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`IVFMD’s IVFMD Mark as to create a commercial impression that Plaintiff has authorized,
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`licensed, sponsored, or approved of Defendant’s marketing, advertising, offering for sale, selling
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`and offering of the Infringing Services.
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`35.
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`The Infringing Services are identical in concept, purpose and theme to IVFMD’s
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`medical services offered under Plaintiff’s famous IVFMD Mark, which the public exclusively
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`associates with IVFMD, as to cause confusion or cause consumers to believe that Plaintiff has
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`authorized or endorsed the quality of the Infringing Services.
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`36.
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`Upon information and belief, the Infringing Services are advertised and marketed
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`online via Defendant’s own websites and pages, as well as on consolidating and/or consortium
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`websites including but not limited to WinFertility.com at winfertility.com/pages/find-a-fertility-
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`specialist/Texas. The Infringing Services also appear, in connection with the Infringing Mark, on
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`the first page of Google search results, just below links to Plaintiff’s IVFMD services on
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`Plaintiff’s own website and Facebook page.
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`37.
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`Upon information and belief, Defendant has offered and continues to offer the
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`Infringing Services with knowledge of IVFMD’s widely known IVFMD Mark and with the
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`intent to trade on IVFMD’s good name as well as the reputation of IVFMD’s IVFMD Mark.
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`38.
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`Defendant’s infringing conduct is likely to create confusion and deceive
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`consumers into believing that Defendant’s Infringing Services originate with or are in some way
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`sponsored, endorsed, licensed, associated or otherwise authorized or connected with IVFMD.
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`Such confusion would irreparably harm and damage IVFMD because it has no control over the
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`
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`8
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`

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`Case 3:13-cv-03527-N Document 11 Filed 10/02/13 Page 9 of 21 PageID 136
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`nature or quality of the services provided or produced by Defendant, and because individuals and
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`those in the trade will believe that Defendant’s services are connected with, licensed by or
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`otherwise authorized by Plaintiff.
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`39.
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`Defendant’s infringing conduct is likely to lead to dilution of the distinctive and
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`famous IVFMD mark.
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`40.
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`In vitro fertilization can be an expensive, physically taxing, long-term service for
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`some patients, and the safety of all the parties to the procedures required to effect fertilization is
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`paramount to Plaintiff. Plaintiff has no control over the degree of safety, concern, quality or
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`effectiveness offered by Defendant. Further, those who see Defendant ARCC’s advertisement
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`for their medical services are likely to think it is a IVFMD-owned, -licensed or -franchised
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`medical office and/or service provider. They may be disappointed if their expectations are not
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`met or if the procedures they undergo with Defendant are painful, traumatizing or difficult. They
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`may form an unfavorable opinion of IVFMD’s medical services based solely on Defendant’s
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`medical services.
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`41.
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`Plaintiff has advertised its IVFMD medical services in the United States,
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`including to residents of the state of Texas, as well as internationally, since at least 1998; a copy
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`of an advertisement that ran in airline magazines that were distributed in 2005 is attached as
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`Exhibit N.
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`42.
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`On information and belief, Defendant’s medical services are marketed directly to
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`customers located in the United States as well as other geographic locations.
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`43.
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`Therefore, on information and belief, Defendant and Plaintiff are operating in and
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`competing for customers in the same market area.
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`44.
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`Upon information and belief, Defendant’s infringing conduct is knowing, willful,
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`and intentional and was undertaken in bad faith with the intention to unfairly trade on the
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`goodwill of Plaintiff’s IVFMD Mark.
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`45.
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`Defendant’s infringing conduct has deceived, and will continue to deceive the
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`public. Defendant’s conduct constitutes an ongoing threat to Plaintiff and the public. Defendant
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`has shown by its conduct that it is willing to continue use of its infringing mark even after being
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`advised of such infringement and confirming its receipt of said notification. Defendant has
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`undertaken its actions although their infringing uses of its IVFMD marks infringe on Plaintiff’s
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`rights in and to its famous IVFMD marks. Unless Defendant is restrained and enjoined from
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`engaging in the infringing actions described herein, Plaintiff will suffer irreparable injury.
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`46.
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`As a consequence of substantial sales, advertising and promotion by Plaintiff on
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`radio and television, on the Internet on web pages, social media networks and via newsletters, in
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`newspapers and magazines, and in sponsorship of major sporting and community events, the
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`unique and distinctive IVFMD Mark has become famous and is publicly recognized as being
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`associated with Plaintiff’s medical services.
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`COUNT I
`False Designation of Origin (15 U.S.C. § 1125(a))
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`
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`47.
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`IVFMD hereby incorporates by reference and realleges each and every allegation
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`contained in each of the foregoing paragraphs.
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`48.
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`Defendant’s use of the Infringing Marks is without the permission, consent or
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`authorization of IVFMD.
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`49.
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`Defendant’s unauthorized use of the Infringing Marks is likely to cause confusion
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`as to the source, origin, sponsorship or affiliation of Defendant’s business.
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`50.
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`Defendant’s unauthorized use of the Plaintiff’s famous IVFMD mark falsely
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`designates the origin of its services, and falsely and misleadingly describes and represents facts
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`with respect to Defendant and its services.
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`51.
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`Defendant’s unauthorized use of the Plaintiff’s famous IVFMD mark removes
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`from Plaintiff the ability to control the nature and quality of products and services provided
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`under its IVFMD Marks, and places the valuable reputation and goodwill of IVFMD in the hands
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`of Defendant, over whom IVFMD has no control and who has already shown its willingness to
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`continue to infringe on Plaintiff’s mark.
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`52.
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`Defendant’s unauthorized use of the Infringing Marks is likely to cause confusion
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`with Plaintiff’s IVFMD Mark, in violation of Section 43(a) of the Lanham Act (15 U.S.C. §
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`1125(a)) and constitutes the sale of goods or services bearing a false designation of origin.
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`53.
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`Upon information and belief, Defendant ARCC was aware of IVFMD’s
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`ownership and prior use of the IVFMD Mark in advance of their adoption of its Infringing Marks
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`for use in connection with the Infringing Services and, in fact, continued to expand its use of
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`their Infringing Marks subsequent to being informed by Plaintiff of its infringement. As such,
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`Defendant’s use of the Infringing Marks constitutes willful infringement.
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`54.
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`IVFMD has been damaged by Defendant’s acts complained of in an amount to be
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`determined at trial, and if Defendant’s conduct is allowed to continue, IVFMD and its goodwill
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`and reputation will continue to suffer immediate, substantial and irreparable injury that may not
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`be adequately calculated and compensated in monetary damages.
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`55.
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`Because Defendant’s actions have been committed willfully, maliciously and
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`intentionally, this is an exceptional case and Plaintiff is entitled to recover Defendant’s profits
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`together with Plaintiff’s damages, trebled, costs of the action and reasonable attorneys' fees
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`pursuant to Section 35(a) of the Lanham Act, 15 U.S.C. Sec. 1117(a).
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`56.
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`Plaintiff is entitled to monetary damages and injunctive relief prohibiting
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`Defendant from using infringing IVFMD marks and its IVFMD corporate name, and any other
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`trade name, trademark, service mark, user name or domain name that is likely to be confused
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`with Plaintiff's mark or otherwise unfairly competing with Plaintiff. Without preliminary and
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`permanent injunctive relief, Plaintiff has no means by which to control the continuing injury to
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`the reputation and goodwill associated with its IVFMD mark. Money damages may not
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`adequately compensate Plaintiff from damage to its reputation and associated goodwill through
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`the false and unauthorized use by Defendant of marks containing the "IVFMD" formative.
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`
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`57.
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` COUNT II
`Trademark Dilution Under 15 U.S.C. § 1125(c)
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`IVFMD hereby incorporates by reference and realleges each and every allegation
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`contained in each of the foregoing paragraphs.
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`58.
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`Based on IVFMD’s use, publishing, advertising, marketing and general popularity
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`of the IVFMD Mark, the IVFMD Mark has acquired fame such that that the public associates the
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`IVFMD Mark with IVFMD’s medical services.
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`59.
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`Plaintiff’s mark is famous and distinctive within the meaning of Section 43(c) of
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`the Lanham Act, 15 U.S.C. § 1125(c).
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`60.
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`Plaintiff’s IVFMD mark was famous years before Defendant misappropriated said
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`IVFMD mark for use in commerce in connection with its Infringing Services.
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`61.
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`Plaintiff has not authorized or licensed Defendant’s use of the any mark similar to
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`IVFMD.
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`62.
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`Upon information and belief, Defendant’s adoption and commercial use of its
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`infringing IVFMD Mark was undertaken knowingly and willfully.
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`63.
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`By reason of the foregoing, Defendant has engaged in and are continuing to
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`engage in acts which dilute and are likely to dilute the distinctive quality of Plaintiff’s IVFMD
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`Mark in violation of Section 43(c) of the Lanham Act (15 U.S.C. § 1125(c)).
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`64.
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`IVFMD has been damaged by Defendant’s acts complained of in an amount to be
`
`determined at trial, and if Defendant’s conduct is allowed to continue, Plaintiff’s famous IVFMD
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`mark, as well as its goodwill and reputation will continue to suffer immediate, substantial and
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`irreparable injury that cannot be adequately calculated and compensated in monetary damages.
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`65.
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`Plaintiff is entitled to monetary damages and injunctive relief prohibiting
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`Defendant from using any infringing IVFMD marks and corporate name, and any other trade
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`name, trademark, service mark, user name or domain name that is likely to be confused with
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`Plaintiff's mark or otherwise unfairly competing with Plaintiff. Without preliminary and
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`permanent injunctive relief, Plaintiff has no means by which to control the continuing injury to
`
`the reputation and goodwill associated with its IVFMD mark. Money damages may not
`
`adequately compensate Plaintiff if it suffers damage to its reputation and associated goodwill
`
`through the false and unauthorized use by Defendant of its marks containing the "IVFMD"
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`formative.
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`COUNT III
`Dilution Under Texas Business and Commerce Code §16.103
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`IVFMD hereby incorporates by reference and realleges each and every allegation
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`66.
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`contained in each of the foregoing paragraphs.
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`67.
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`IVFMD is the exclusive owner of the distinctive and famous IVFMD Mark.
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`Case 3:13-cv-03527-N Docu