Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA940649
`
`Filing date:
`
`12/11/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91225695
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Wageworks, Inc.
`
`DEBORAH A WILCOX
`BAKER & HOSTETLER LLP
`1900 EAST 9TH STREET , SUITE 3200
`CLEVELAND, OH 44114
`UNITED STATES
`bhipdocket@bakerlaw.com, dwilcox@bakerlaw.com, cmoser@bakerlaw.com,
`nsamad@bakerlaw.com, cldocketing@bakerlaw.com
`216-861-7864
`
`Motion to Suspend for Civil Action
`
`Christina J. Moser
`
`cmoser@bakerlaw.com, bhipdocket@bakerlaw.com, nsamad@bakerlaw.com,
`cldocketing@bakerlaw.com
`
`/Christina J. Moser/
`
`12/11/2018
`
`Motion to Suspend.pdf(103053 bytes )
`DI 001 - 2018-12-11-WAGEWORKS-Complaint.pdf(3027330 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`WAGEWORKS, INC.
`
`Opposer,
`
`
`
`v.
`
`
`ONTIMEWORKS LLC
`
`Applicant.
`
`
`Opposition No. 91225695
`Mark: EVERYTHING BENEFITS
`Application No. 86/568,216
`
`
`
`
`
`
`
`
`PLAINTIFF’S MOTION TO SUSPEND FOR CIVIL ACTION
`
`Pursuant to Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)
`
`510.02(a) and 37 C.F.R. § 2.117(a), Opposer, WageWorks, Inc., hereby moves to suspend these
`
`proceedings.
`
`A. The Civil Action Will Address More Completely the Issues in Dispute
`
`On December 11, 2018, Opposer WageWorks, Inc. filed a civil action against Applicant
`
`OnTimeWorks LLC in the District of New Jersey to seek redress for trademark infringement and
`
`related unfair competition under the Lanham Act and New Jersey law. A true and correct copy of
`
`the filed Complaint and Exhibits thereto is attached as Exhibit “A.” WageWorks, Inc. is in the
`
`process of serving OnTimeWorks LLC with a summons. It is the policy of the Board to suspend
`
`proceedings when the parties are involved in a civil action, which may be dispositive of or have a
`
`bearing on the Board case. See 37 C.F.R. § 2.117(a).
`
`Even if WageWorks, Inc. succeeds in the present proceeding, the Board will not be able
`
`to afford all the relief WageWorks, Inc. seeks against OnTimeWorks LLC. Because the civil
`
`action will address more completely all of the issues in contention between the parties, including
`
`
`
`1
`
`

`

`the issues underlying this proceeding, WageWorks, Inc. respectfully requests that the Board
`
`suspend this proceeding pending resolution of the district court action pursuant to TBMP
`
`510.02(a) and 37 C.F.R. § 2.117(a).
`
`
`
`
`
`
`
`
`
`
`
`Dated: December 11, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Christina J. Moser/
`Deborah A. Wilcox
`Christina J. Moser
`Baker & Hostetler LLP
`Key Tower
`127 Public Square Suite 2000
`Cleveland, Ohio 44114
`(216) 621-0200
`dwilcox@bakerlaw.com
`cmoser@bakerlaw.com
`
`Attorneys for Opposer
`
`
`
`
`2
`
`

`

`CERTIFICATE OF SERVICE
`
`
`
`I, Christina J. Moser, do hereby certify that a copy of the Plaintiff’s Motion to Suspend
`
`for Civil Action is being served on Darren S. Cahr, Esq. and Mita K. Lakhia, Esq., Attorneys for
`
`Applicant, OnTimeWorks LLC, at Drinker, Biddle & Reath, 191 N. Wacker Dr., Ste. 3700,
`
`Chicago, IL 60606-1698, via email address: Mita.Lakhia@dbr.com and Darren.Cahr@dbr.com,
`
`this 11th day of December, 2018 and via the TTAB’s electronic filing system.
`
`
`
`
`
`
`
`
`
`
`/Christina J. Moser/
`Deborah A. Wilcox
`Christina J. Moser
`
`One of the Attorneys for Opposer
`
`
`
`
`
`
`
`3
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 1 of 14 PageID: 1
`
`
`
`
`
`Tyson Y. Herrold (NJ Bar No. 020892012)
`BAKER & HOSTETLER LLP
`2929 Arch Street, Cira Centre, 12th Floor
`Philadelphia, PA 19104-2891
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`email: therrold@bakerlaw.com
`
`Christina J. Moser (pro hac vice to be filed)
`Ruth E. Hartman (pro hac vice to be filed)
`BAKER & HOSTETLER LLP
`Key Tower
`127 Public Square, Suite 2000
`Cleveland, OH 44114-1214
`Telephone: 216.621.0200
`Facsimile: 216.696.0740
`Email: cmoser@bakerlaw.com
`Email: rhartman@bakerlaw.com
`Attorneys for Plaintiff WageWorks, Inc.
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`WageWorks, Inc., a Delaware corporation,
`
`
`
`
`
`
`CASE NO.: __________
`
`
`
`v.
`
`
`OnTimeWorks LLC
`
`
`
`
`
`Plaintiff,
`
`
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT UNDER THE
`LANHAM ACT AND NEW JERSEY
`STATUTE AND UNFAIR COMPETITION
`UNDER COMMON LAW
`
`Defendant.
`
`NOW COMES Plaintiff WageWorks, Inc. (“WageWorks”), by and for its Complaint against
`
`Defendant OnTimeWorks LLC (“OnTimeWorks”), and hereby states as follows:
`
`Parties
`
`1.
`
`WageWorks is a Delaware corporation with its principal place of business at 1100 Park
`
`Place, 4th Floor, San Mateo, California 94403.
`
`2.
`
`OnTimeWorks is a New Jersey limited liability company with its principal place of business
`
`at 1253 Springfield Avenue, Suite 350, New Providence, NJ 07974.
`
`4847-6741-6193.2
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 2 of 14 PageID: 2
`
`
`
`3.
`
`Founded in 2000, WageWorks administers and operates a broad range of on-demand
`
`Consumer Directed Benefits (CDBs), including health and dependent care flexible spending
`
`accounts (FSAs), health savings account (HSAs), and health reimbursement arrangements (HRAs),
`
`wellness programs, child and elder care, commuting services, education benefits and employee-
`
`sponsored programs such as reimbursement for gym memberships.
`
`4.
`
`Founded in 2015, OnTimeWorks also provides benefits management solutions, including
`
`benefit enrollment and administration, carrier connections, COBRA administration,401(k)
`
`integrations, benefits reconciliation, and billing consolidation for employers, brokers, and benefits
`
`consultants.
`
`5.
`
`OnTimeWorks is a New Jersey limited liability company with its principal place of business
`
`at 1253 Springfield Avenue, Suite 350, New Providence, NJ 07974.
`
`Jurisdiction
`
`6.
`
`Subject matter jurisdiction is appropriate in this District, pursuant to 28 U.S.C. §§1331, 1338
`
`and 1367, because this case involves a federal question and the Court may exercise supplemental
`
`jurisdiction over the state law claims.
`
`7.
`
`This Court has personal jurisdiction over the defendant because OnTimeWorks was formed
`
`under the laws of New Jersey and resides here, and is therefore subject to general jurisdiction in
`
`New Jersey.
`
`8.
`
`Venue is appropriate in this District pursuant to 28 U.S.C. §1391 because OnTimeWorks
`
`resides here and has committed acts of trademark infringement and unfair competition in this
`
`District.
`
`
`
`
`
`
`
`2
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 3 of 14 PageID: 3
`
`
`
`WageWorks’ Longtime Use and Registration of its Marks
`
`9.
`
`As early as February 2008, WageWorks (through its predecessor in interest) has used the
`
`trademark Everyone Benefits in connection with its promotion of commuter tax benefit programs
`
`and related services.
`
`10. On June 16, 2009, the United States Patent and Trademark Office (“USPTO”) granted
`
`Federal Registration No. 3,639,379 (the “379 Registration”) for the mark Everyone Benefits in
`
`standard character form for “Fostering and promoting the public’s use and awareness of public
`
`transportation” in International Class 35; “Administering a commuter tax benefit program for
`
`employers that allows employers to provide their employees with printed transit vouchers and/or
`
`prepaid stored value cards used for the payment of transportation services, ridesharing services and
`
`credit towards ticket by mail accounts” in International Class 36 and “Providing information about
`
`public transportation to employers for their own business use” in International Class 39.
`
`11.
`
`In 2012, through an assignment, WageWorks acquired the rights to the Everyone Benefits
`
`trademark and the 379 Registration. Attached as Exhibit A is a true and accurate copy of the
`
`Trademark Applications and Registrations Retrieval (TARR) report and the Certificate of
`
`Registration for the 379 Registration. The 379 Registration is valid, in use, owned by WageWorks,
`
`and has reached incontestable status.
`
`12.
`
`At least as early as November 15, 2013, WageWorks has used the trademarks Everyone
`
`Benefits and WageWorks Everyone Benefits in connection with the business administration of
`
`employee, retiree and other individuals’ benefits plans, in the nature of health, medical, dependent
`
`care, transit and parking programs; and the financial administration of employee, retiree and other
`
`individuals’ benefit plans, in the nature of health, medical, dependent care, transit and parking
`
`programs.
`
`3
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 4 of 14 PageID: 4
`
`
`
`13. On December 9, 2014, the USPTO granted Federal Registration No. 4,651,482 (the “482
`
`Registration”) for the mark WageWorks Everyone Benefits in standard character form for the
`
`“business administration of employee, retiree and other individuals’ benefits plans, in the nature of
`
`health, medical, dependent care, transit and parking programs” in International Class 35; and the
`
`“financial administration of employee, retiree and other individuals’ benefit plans, in the nature of
`
`health, medical, dependent care, transit and parking programs” in International Class 36. Attached
`
`as Exhibit B is a true and accurate copy of the TARR report and Certificate of Registration for the
`
`482 Registration. The 482 Registration is valid, in use, and owned by WageWorks.
`
`14.
`
`Since at least as early as January 4, 2017, WageWorks has used a distinctive blue and orange
`
`trade dress with its WageWorks and Everyone Benefits trademarks, including on its website,
`
`employee web portal, employee app, on promotional literature, and on healthcare cards and
`
`commuter cards used by employees, as shown in Exhibit C hereto. As shown in Exhibit C,
`
`WageWorks’ marketing material also uses the color green to provide a visual contrast to the blue and
`
`orange trade dress.
`
`OnTimeWorks’ Infringement and Unfair Competition
`
`15. On March 6, 2015, OnTimeWorks first introduced the mark EverythingBenefits in
`
`commerce to promote its benefits management services, including software for the administration
`
`and management of employee health and wellness plans.
`
`16. On March 18, 2015, OnTimeWorks filed an application to register EverythingBenefits as a
`
`service mark with the USPTO for “Platform as a service (PAAS) services featuring software for the
`
`administration and management of health and wellness benefit plans, including for enrollment
`
`services pertaining to such plans; platform as a service (PAAS) services featuring software for
`
`storing, managing, tracking and analyzing and exchanging information in the field of health and
`
`wellness benefit plans; platform as a service (PAAS) services featuring software for users to
`
`4
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 5 of 14 PageID: 5
`
`
`
`communicate and share information with each other in the field of health and wellness benefit
`
`plans” in International Class 42.
`
`17.
`
`Currently, OnTimeWorks uses the EverythingBenefits mark both to identify its benefits
`
`management services and as a d/b/a for the company.
`
`18. OnTimeWorks also predominantly uses on its website and, upon information and belief,
`
`throughout its promotional materials, trade dress that is confusingly similar to that used by
`
`WageWorks, including a primarily blue and orange color scheme accented by green, in which all of
`
`the shades are similar to those used by WageWorks, as shown in Exhibit D hereto.
`
`19. OnTimeWorks carries its use of the blue/orange/green trade dress throughout its website,
`
`to the extent that, for example, the only noticeable color in a staged photograph of a conference
`
`room is the bright orange of the conference room chairs, and the only prominent color in another
`
`staged photograph is the pop of blue added by documents on a conference room table.
`
`20.
`
`Even OnTimeWorks’ use of orange-colored icons to highlight information panels on its
`
`website is similar to WageWorks’ website, as shown below.
`
`WageWorks:
`
`Everything Benefits:
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 6 of 14 PageID: 6
`
`
`
`21. On January 4, 2016, WageWorks sent a letter to OnTimeWorks, objecting to its use of the
`
`trademark EverythingBenefits, particularly in association with its company name, OnTimeWorks.
`
`22. On January 6, 2016, WageWorks filed an opposition to OnTimeWorks’ trademark
`
`application with the USPTO on two grounds: (a) the priority of WageWorks’ marks, and (b) the
`
`likelihood of confusion caused by OnTimeWorks’ mark.
`
`23.
`
`Following WageWorks’ letter and its filing of the opposition proceeding, OnTimeWorks has
`
`continued its use of the EverythingBenefits mark despite WageWorks’ objections to the same.
`
`24.
`
`After OnTimeWorks refused during the course of the opposition proceeding to take
`
`reasonable steps to eliminate the likelihood of confusion, WageWorks filed this proceeding.
`
`WageWorks’ Marks Have Priority in the Relevant Market
`
`For over 5 years, since November 2013, WageWorks has used the marks Everyone
`
`25.
`
`Benefits and WageWorks Everyone Benefits to sell its on-demand benefits management services
`
`to its clients and potential clients, including consumers, employers and brokers who work with
`
`employers to select consumer defined benefits administrators.
`
`26.
`
`Upon information and belief, OnTimeWorks uses its EverythingBenefits mark to sell its
`
`benefits management services to the same clients and potential clients as WageWorks.
`
`27. WageWorks relies upon both direct and indirect sales channels to sell its services, so that, for
`
`example, a broker could offer both WageWorks’ and OnTimeWorks’ services simultaneously.
`
`28. OnTimeWorks’ EverythingBenefits mark and confusingly similar trade dress has only been
`
`used in commerce since 2015, at the earliest.
`
`OnTimeWorks’ Use of EverythingBenefits and Similar Trade Dress
`Causes a Likelihood of Confusion
`
`29. OnTimeWorks caters to substantially the same market as WageWorks, using the same sales
`
`channels and targeting the same consumers.
`
`6
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 7 of 14 PageID: 7
`
`
`
`30.
`
`Upon information and belief, OnTimeWorks chose both its company name,
`
`“OnTimeWorks” and its primary trademark, EverythingBenefits, as well as the blue/orange/green
`
`color scheme to capitalize on consumer confusion caused by the similarities in the parties’ names,
`
`primary trademarks, and trade dress.
`
`31.
`
`Upon information and belief, a purchaser seeing OnTimeWorks’ promotion of its services
`
`for the first time will mistakenly assume a connection exists between WageWorks and
`
`OnTimeWorks because of the numerous similarities in the parties’ names, trademarks, and trade
`
`dress. Even if that confusion dissipates over time, OnTimeWorks benefits from its exploitation of
`
`confusingly similar trademarks and trade dress, particularly due to WageWorks’ longstanding and
`
`established reputation in the industry.
`
`32. Moreover, the end users of both parties’ services are the same – employees utilizing the
`
`parties’ online benefit management systems. Users who encounter the parties’ respective trademarks
`
`and trade dress are less familiar with the types of benefits management services available, and
`
`therefore are even more likely to attribute any negative experiences with OnTimeWorks’ services to
`
`WageWorks, negatively impacting WageWorks’ goodwill.
`
`33. OnTimeWorks’ intent to create confusion and capitalize on WageWorks’ existing reputation
`
`in the industry is made even more apparent by its use of the slogan “With EverythingBenefitstm -
`
`Everyone Benefits” when it first launched its services.
`
`34. OnTimeWorks’ use of the EverythingBenefits trademark in conjunction with its
`
`OnTimeWorks trademark and/or a blue/orange/green trade dress compounds the likelihood that
`
`consumers will be confused, mislead, or deceived regarding a connection or affiliation between the
`
`parties and/or their services.
`
`35.
`
`Any such confusion would result in injury to, or have a direct impact on, WageWorks, its
`
`Everyone Benefits and WageWorks Everyone Benefits marks, and its blue/orange/green trade
`
`7
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 8 of 14 PageID: 8
`
`
`
`dress including, but not limited to, injury to the reputation WageWorks has established for the
`
`services it provides under its marks.
`
`COUNT ONE
`Federal Unfair Competition
`15 U.S.C. § 1125(a)
`
`36. WageWorks reasserts and realleges all allegations contained in the foregoing paragraphs as if
`
`they were fully rewritten herein.
`
`37.
`
`This claim arises under the Lanham Act, particularly under 15 U.S.C. §1125(a).
`
`38. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits are federally
`
`registered trademarks.
`
`39. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits are inherently
`
`distinctive trademarks, and are suggestive of WageWorks as a leader in on-demand benefits
`
`management services.
`
`40. WageWorks’ continuous and prominent use of its distinctive blue/orange/green trade dress
`
`has caused consumers to associate that trade dress with WageWorks and its services prior to
`
`OnTimeWorks’ first adoption of its confusingly similar trade dress.
`
`41. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits trademarks and its
`
`blue/orange/green trade dress have received significant recognition in the United States among
`
`consumers, including employers and brokers who work with employers to select benefits
`
`management services.
`
`42.
`
`Relevant consumers associate and identify Everyone Benefits and WageWorks Everyone
`
`Benefits, as well as the blue/orange/green WageWorks trade dress with WageWorks.
`
`43. WageWorks’ use of Everyone Benefits and WageWorks Everyone Benefits throughout
`
`the United States in connection with its benefits management services has been continuous and
`
`substantially exclusive since at least November 2013.
`
`8
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 9 of 14 PageID: 9
`
`
`
`44. WageWorks’ use of its blue/orange/green trade dress throughout the United States in
`
`connection with its benefits management services has been continuous and substantially exclusive
`
`since at least as early as January 4, 2007.
`
`45. OnTimeWorks’ continued use of the mark EverythingBenefits along with its use of the
`
`OnTimeWorks name and/or blue/orange/green trade dress falsely represents that there is an
`
`association or affiliation between WageWorks and OnTimeWorks that does not exist and constitutes
`
`trademark infringement and trade dress infringement and is the type of unfair competition
`
`prohibited by the Lanham Act, 15 U.S.C. §1125.
`
`46. OnTimeWorks’ conduct is likely to confuse, mislead and deceive consumers, purchasers and
`
`members of the public as to OnTimeWorks’ association or affiliation with WageWorks and/or that
`
`OnTimeWorks’ services have been sponsored, approved, authorized or licensed by WageWorks, all
`
`in violation of 15 U.S.C. §1125(a).
`
`47. OnTimeWorks, if not enjoined by the Court, will continue its acts of infringement and
`
`unfair competition, thereby deceiving the public and causing WageWorks immediate and irreparable
`
`harm, damages and injury.
`
`48.
`
`Upon information and belief, OnTimeWorks’ conduct has been willful, with knowledge of
`
`WageWorks’ rights in its Everyone Benefits and WageWorks Everyone Benefits marks and
`
`blue/orange/green trade dress and with the express intent to cause confusion and to mislead and
`
`deceive the purchasing public.
`
`COUNT TWO
`Trademark Infringement under N.J.S.A. § 56:3-13.16
`
`49. WageWorks reasserts and realleges all allegations contained in the foregoing paragraphs as if
`
`they were fully rewritten herein.
`
`50.
`
`This claim arises under N.J.S.A. § 56:3-13.16.
`
`9
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 10 of 14 PageID: 10
`
`
`
`51. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits are federally
`
`registered trademarks.
`
`52. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits trademarks are
`
`inherently distinctive and are suggestive of WageWorks as a leader in on-demand benefits
`
`management services.
`
`53. WageWorks’ continuous and prominent use of its distinctive blue/orange/green trade dress
`
`has caused consumers to associate that trade dress with WageWorks and its services prior to
`
`OnTimeWorks’ first adoption of its confusingly similar trade dress.
`
`54. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits trademarks and its
`
`blue/orange/green trade dress have received significant recognition in the United States among
`
`consumers, including employers and brokers who work with employers to select benefits
`
`management services.
`
`55.
`
`Relevant consumers associate and identify Everyone Benefits and WageWorks Everyone
`
`Benefits, as well as the blue/orange/green WageWorks trade dress with WageWorks.
`
`56. WageWorks’ use of Everyone Benefits and WageWorks Everyone Benefits throughout
`
`the United States in connection with its benefits management services has been continuous and
`
`substantially exclusive since at least November 2013.
`
`57. WageWorks’ use of its blue/orange/green trade dress throughout the United States in
`
`connection with its benefits management services has been continuous and substantially exclusive
`
`since at least as early as January 4, 2007.
`
`58. OnTimeWorks’ continued use of the mark EverythingBenefits along with its use of the
`
`OnTimeWorks name and/or blue/orange/green trade dress is likely to confuse, mislead and deceive
`
`consumers, purchasers and members of the public as to OnTimeWorks’ association or affiliation
`
`10
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 11 of 14 PageID: 11
`
`
`
`with WageWorks and/or that OnTimeWorks’ services has been sponsored, approved, authorized or
`
`licensed by WageWorks, all in violation of N.J.S.A. § 56:3-13.16.
`
`59. OnTimeWorks, if not enjoined by the Court, will continue its acts of infringement as defined
`
`by N.J.S.A. § 56:3-13.16, thereby deceiving the public and causing WageWorks immediate and
`
`irreparable harm, damages and injury.
`
`60.
`
`Upon information and belief, OnTimeWorks’ conduct has been willful, with knowledge of
`
`WageWorks’ rights in its Everyone Benefits and WageWorks Everyone Benefits trademarks and
`
`blue/orange/green trade dress and with the express intent to cause confusion and to mislead and
`
`deceive the purchasing public.
`
`COUNT THREE
`Unfair Competition under New Jersey Common Law
`
`61. WageWorks reasserts and realleges all of the allegations contained in paragraphs 1-43 as
`
`though they were fully rewritten herein.
`
`62.
`
`This claim arises under New Jersey common law.
`
`63. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits are federally
`
`registered trademarks.
`
`64. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits trademarks are
`
`inherently distinctive and are suggestive of WageWorks as a leader in on-demand benefits
`
`management services.
`
`65. WageWorks’ continuous and prominent use of its distinctive blue/orange/green trade dress
`
`has caused consumers to associate that trade dress with WageWorks and its services prior to
`
`OnTimeWorks’ first adoption of its confusingly similar trade dress.
`
`66. WageWorks’ Everyone Benefits and WageWorks Everyone Benefits trademarks and its
`
`blue/orange/green trade dress have received significant recognition in the United States among
`
`11
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 12 of 14 PageID: 12
`
`
`
`consumers, including employers and brokers who work with employers to select benefits
`
`management services.
`
`67.
`
`Relevant consumers associate and identify Everyone Benefits and WageWorks Everyone
`
`Benefits, as well as the blue/orange/green WageWorks trade dress with WageWorks.
`
`68. WageWorks’ use of Everyone Benefits and WageWorks Everyone Benefits throughout
`
`the United States in connection with its benefits management services has been continuous and
`
`substantially exclusive since at least November 2013.
`
`69. WageWorks’ use of its blue/orange/green trade dress throughout the United States in
`
`connection with its benefits management services has been continuous and substantially exclusive
`
`since at least as early as January 4, 2007.
`
`70. OnTimeWorks’ continued use of the mark EverythingBenefits in conjunction with the
`
`name “OnTimeWorks” and/or the blue/orange/green trade dress falsely represents that there is an
`
`association or affiliation between WageWorks and OnTimeWorks that does not exist and constitutes
`
`infringement of WageWorks’ rights.
`
`71. OnTimeWorks’ conduct constitutes unfair competition and unfair business practices
`
`contrary to the common laws of New Jersey in that it is likely to confuse, mislead and deceive
`
`OnTimeWorks’ customers, purchasers, and members of the public as to the origin of
`
`OnTimeWorks’ services or cause said persons to believe that those services and/or OnTimeWorks
`
`have been sponsored, approved, authorized, or licensed by WageWorks or are in some way affiliated
`
`or connected with WageWorks.
`
`72.
`
`Upon information and belief, OnTimeWorks’ conduct has been willful, with knowledge of
`
`WageWorks’ rights in its Everyone Benefits and WageWorks Everyone Benefits trademarks its
`
`blue/orange/green trade dress and with the express intent to cause confusion and to mislead and
`
`deceive the purchasing public.
`
`12
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 13 of 14 PageID: 13
`
`
`
`73. OnTimeWorks will, if not enjoined by the Court, continue its acts of unfair competition as
`
`defined by the common laws of New Jersey, thereby deceiving the public and causing WageWorks
`
`immediate and irreparable harm, damage, and injury.
`
`PRAYER FOR RELIEF
`
`Wherefore, Plaintiff WageWorks, Inc. respectfully requests that this Court grant the following
`
`relief:
`
`A. A declaration that WageWorks is the owner of rights in and to the Everyone Benefits
`
`and WageWorks Everyone Benefits trademarks and blue/orange/orange trade dress
`
`used in connection with the benefits management industry;
`
`B. A declaration that WageWorks’ Everyone Benefits and WageWorks Everyone
`
`Benefits trademarks and blue/orange/green trade dress used in connection with the
`
`benefits management industry are inherently distinctive and/or acquired secondary
`
`meaning prior to OnTimeWorks’ first use of the infringing EverythingBenefits
`
`trademark and blue/orange/green trade dress;
`
`C. A declaration that OnTimeWorks is violating WageWorks’ rights in and to its Everyone
`
`Benefits and WageWorks Everyone Benefits trademark and blue/orange/green trade
`
`dress and competing unfairly with WageWorks under the Lanham Act, New Jersey
`
`Statutes, and New Jersey common law;
`
`D. A permanent injunction prohibiting OnTimeWorks and all those acting in concert with it
`
`from using the mark EverythingBenefits, and any other mark confusingly similar to
`
`WageWorks’ Everyone Benefits and WageWorks Everyone Benefits trademarks and
`
`a blue/orange/green trade dress, and any other trade dress confusingly similar to
`
`WageWorks’ blue/orange/green trade dress, in connection with the sale, offering for
`
`sale, or distribution of services related to the benefits industry;
`
`13
`
`

`

`Case 2:18-cv-17093 Document 1 Filed 12/11/18 Page 14 of 14 PageID: 14
`
`E. An award of three times WageWorks’ damages, disgorgement of OnTimeWorks’ profits
`
`attributable to its infringement, and costs of this action in accordance with the
`
`provisions of 15 U.S.C. §1117;
`
`F. That the Court declare this an exceptional case and that OnTimeWorks be required to
`
`pay WageWorks’ reasonable attorneys’ fees incurred in this action, in accordance with
`
`the provisions of 15 U.S.C. §1117;
`
`G. That OnTimeWorks be required to pay WageWorks’ costs and disbursements of this
`
`action; and
`
`H. Grant WageWorks any such relief as this Court deems just and equitable.
`
`WageWorks hereby demands a jury trial on all issues so triable.
`
`JURY DEMAND
`
`Date: December 11, 2018
`
`/s/ Tyson Y. Herrold_
`Tyson Y. Herrold (N.J. Bar No. 020892012)
`therrold@bakerlaw.com
`Baker Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`lgrossberg@bakerlaw.com
`Telephone: 215.568.3100
`Facsimile: 215.568.3439
`
`Christina J. Moser (pro hac vice to be filed)
`Ruth E. Hartman (pro hac vice to be filed)
`Baker Hostetler LLP
`Key Tower
`127 Public Square
`Suite 2000
`Cleveland, OH 44144
`cmoser@bakerlaw.com
`Email: rhartman@bakerlaw.com
`Telephone: (216) 861-7818
`Facsimile: (216) 696-0740
`
`Counsel for Plaintiff WageWorks, Inc.
`
`14
`
`

`

`Case 2:18-cv-17093 Document 1-1 Filed 12/11/18 Page 1 of 1 PageID: 15
`Case 2:18—cv-17093 Document 1-1 Filed 12/11/18 Page 1 of 1 PagelD: 15
`
`.13 44 (Rev. 03/13)
`
`CIVIL COVER SHEET
`
`The IS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet.
`(SEE INSTRUCHONS omvm PAGE OF THIS FORM.)
`DEFENDANTS
`
`1. (a) PLAINTIFFS
`
`WageWorks, Inc.. a Delaware corporation
`
`OnTimeWorks LLC
`
`(b) County of Residence ofFirst Listed Plaintiff
`(EXCEPTIN on PLAIWIFF cases;
`
`Ufllon COUHIY
`County of Residence of First Listed Defendant
`(IN US. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
`(c) Attorneys Firm Name, Address, and Telephone Numbed
`Tyson Y. Herro d
`Baker 8: Hostetler, 2929 Arch St, 12th Fl., Philadelphia, PA 19104
`215-564—3286
`
`Attomeys (UKHDWH)
`
`II. BASIS OF JURISDICTION (Place an "X” in One Box Only)
`US. Government
`Plaintiff
`
`2‘ 3
`
`Federal Question
`(US. Government No: a Parry)
`
`[I]
`
`1
`
`III. CITIZENSHIP 0F PRINCIPAL PARTIES (Place on "X" in One Boxfor Piaimrjf
`(For Diversinr Cases Only)
`and One Boxfor Defendant)
`PTF
`DEF
`PTF
`DEF
`U 1
`El
`El 4
`El 4
`
`1
`
`Incorporated or Principal Place
`ofBuséness In This State
`
`Citizen ofThis State
`
`F3 2 U.S. Government
`Defendant
`
`E] 4 Diversity
`(Indicate Citizenship ofParties in Item 111)
`
`Citizen of Another State
`
`U 2
`
`Citizen or Subject of a
`Forci _n Conn
`
`13 3
`
`Cl
`
`Cl
`
`2
`
`3
`
`incorporated and Principal Place
`of Business In Another State
`
`E] 5
`
`Cl 5
`
`Foreign Nation
`
`Cl 6
`
`D 6
`
`El 245 Tort Product Liability
`B 290 All Other Real Property
`
`
`
` T (Place on “X” in One B
`
`
`
`ax Only)
`IV. NATURE OF SUI
`Click here for: Nature of Suit _ode__eschi tion.
`
`.'
`- emu-STATUTES -': -.
`
`'
`BANKRUP’I‘ -Y-
`-
`‘
`"CONTRACT-'-='I'E'.- “33'
`
`
`
`
`
`
`
`E] 422 Appeal 28 USC l58
`Cl 375 False Claims Act
`PERSONAL INJURY
`PERSONAL INJURY
`U 625 Drug Related Seizure
`D 110 Insurance
`
`
`
`
`oi‘i’roperty 21 USC 88]
`Cl 423 Withdrawal
`fl 3111 Airplane
`D 365 Personal Injury -
`CI 3'76 Qui Tam (31 USC
`El 120 Marine
`
`
`
`
`D 690 Other
`28 USC 157
`0 335 Airplane Product
`Product Liability
`3729(a)}
`El 130 Miller Act
`
`
`
`Liability
`El 367 Health Care;'
`Cl 400 State Relpportionmeut
`CI 140 Negotiable Instrument
`
`mm C! 410 Antitrust
`Cl 320 Assault, Libel &
`Pharmaceutical
`El 150 Recovery ofOverpayment
`
`
`
`[3 820 Copyrights
`Slander
`Personal Injury
`El 430 Banks and Banking
`& Enforcement of Judgment
`
`
`D 830 Patent
`D 330 Federal Employers‘
`Product Liability
`D 450 Commerce
`El 151 Medicare Act
`
`
`
`[3 835 Patent — Abbreviated
`Liability
`El 368 Asbestos Personal
`E] 460 Deportation
`D 152 Recovery of Defaulted
`
`
`New Drug Application
`CI 340 Marine
`injury Product
`D 470 Racketeer Influenced and
`Student Loans
`
`
`
`
`fi 8
`El 345 Marine Product
`Liabifiry
`Corrupt Organizations
`(Excludes Veterans)
`
`
`5
`.:'
`.I .5 LABOR "
`-
`-
`Liability
`PERSONAL PROPERTY
`'
`CI 430 Consumer Credit
`Cl 153 Recovery ovaeIPaS’Incnt
`
`
`
`
`
`
`
`E] 710 Fair Labor Standards
`395fi}
`D 350 Motor Vehicle
`U 371} Other Fraud
`Cl 8
`U 485 Telephone Consumer
`ofVeteran’s Benefits
`
`
`Cl 862. Black Lung (923)
`D 355 Motor Vehicle
`Cl 371 Truth in Lending
`Act
`Protection Act
`D 160 Stockholders’ Suits
`
`
`
`0 720 LaborfManagemem
`Product Liabitity
`D 380 Other Personal
`CI 863 DIWCfDIWW (405(g))
`Cl 490 Cab