Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA770806
`09/15/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Entity
`
`Address
`
`Omega Flex, Inc.
`
`Corporation
`
`451 Creamery Way
`Exton, PA 19341
`UNITED STATES
`
`Citizenship
`
`Pennsylvania
`
`Attorney informa-
`tion
`
`Thomas J. Mango
`Cantor Colburn LLP
`20 Church Street 22nd Floor
`Hartford, CT 06103
`UNITED STATES
`tmango@cantorcolburn.com, nwatson@cantorcolburn.com
`Phone:860-286-2929
`
`Applicant Information
`
`Application No
`
`86573239
`
`Publication date
`
`08/16/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`09/15/2016
`
`Opposition Peri-
`od Ends
`
`09/15/2016
`
`DONG-A FLEXIBILE METAL TUBES CO., LTD.
`4F floor Kowon Building, 28,
`Seoul, 137-888
`KOREA, REPUBLIC OF
`
`Goods/Services Affected by Opposition
`
`Class 006. First Use: 2012/03/12 First Use In Commerce: 2012/03/26
`All goods and services in the class are opposed, namely: Flexible metal hose and braided flexible
`metal hose for liquid or gas transmission; corrugated stainless steel tube; corrugated stainless steel
`tube connectors; flexible metal joint for connecting pipes, or pipes to appliances and absorbing vibra-
`tion and position changes of pipes; metal expansion joint for connecting pipes, or pipes to appliances
`and absorbing changes of its length and position; metal supports for corrugated tube; metal plate for
`protecting corrugated tube from impacts; fitting system comprised ofmetal pipe adapter, metal pipe
`socket, metal tee socket, metal elbow, metal reducer, and metal manifold for corrugated tube
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Marks Cited by Opposer as Basis for Opposition
`
`U.S. Registration
`No.
`
`2101072
`
`Registration Date
`
`09/30/1997
`
`Application Date
`
`06/03/1996
`
`Foreign Priority
`Date
`
`NONE
`
`

`

`Word Mark
`
`Design Mark
`
`Description of
`Mark
`
`Goods/Services
`
`OMEGAFLEX
`
`NONE
`
`Class 006. First use: First Use: 1991/09/00 First Use In Commerce: 1991/09/00
`flexible metal hose and braided flexible metal hose for use with flammable and/
`or corrosive fluids
`
`U.S. Registration
`No.
`
`2227971
`
`Registration Date
`
`03/02/1999
`
`Word Mark
`
`Design Mark
`
`OMEGAFLEX
`
`Application Date
`
`12/03/1997
`
`Foreign Priority
`Date
`
`NONE
`
`Description of
`Mark
`
`Goods/Services
`
`NONE
`
`Class 006. First use: First Use: 1991/09/00 First Use In Commerce: 1991/09/00
`flexible metal hose and braided flexible metal hose for use with flammable and/
`or corrosive fluids
`
`Related Proceed-
`ings
`
`3:16-cv-01190
`
`Attachments
`
`75399531#TMSN.png( bytes )
`Notice of Opposition For Filing.PDF(39431 bytes )
`EXHIBIT A - COMPLAINT PART 1 For Filing.PDF(1833597 bytes )
`EXHIBIT A - COMPLAINT PART 2 For Filing.PDF(5512850 bytes )
`EXHIBIT A - COMPLAINT PART 3 For Filing.PDF(3470303 bytes )
`EXHIBIT B For Filing.PDF(252570 bytes )
`EXHIBIT C For Filing.PDF(263705 bytes )
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`
`/Thomas J. Mango/
`
`Name
`
`Date
`
`Thomas J. Mango
`
`09/15/2016
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Trademark Application Serial No.
`Filed:
`Mark:
`Published in the Official Gazette:
`
`
`
`86573239
`March 23, 2015
`ALPHA-FLEX
`August 16, 2016
`
`Omega Flex, Inc.,
`
`
`Opposer,
`
`
`v.
`
`Dong-A Flexible Metal Tubes Co., Ltd.,
`
`Applicant.
`
`
`
`
`
` Opposition No: _____________
`
`
`
`
`
`
`
`
`
`
`
`
`NOTICE OF OPPOSITION1
`
`In the matter of United States Trademark Application Serial No. 86573239
`
`(“Application”), filed March 23, 2015, for registration of the mark ALPHA-FLEX (Stylized)
`
`(“ALPHA-FLEX Mark”), by Dong-A Flexible Metal Tubes Co., Ltd., (“Applicant”), covering
`
`goods and services in International Class 6, published for opposition in the United States Patent
`
`and Trademark Office’s Official Gazette on August 16, 2016, Opposer Omega Flex, Inc.
`
`(“Opposer” or “OmegaFlex”) believes it will be damaged by such registration, and hereby
`
`opposes the registration of the Application.
`
`The grounds for the opposition are as follows:
`
`
`
`
`
`
`1 On July 14, 2016, Omega Flex, Inc. filed a lawsuit against Dong-A Flexible Metal Tubes Co., Ltd. alleging
`trademark infringement and related claims based on the use in commerce of the mark ALPHA-FLEX (Stylized).
`See attached Exhibit A, showing a true and correct copy of a printout from the U.S. District Court’s PACER
`database of the Complaint filed in the U.S. District Court for the District of Connecticut, Case No. 3:16-cv-01190-
`SRU.
`
`

`

`A.
`
`Opposer Omega Flex, Inc.
`
`1.
`
`OmegaFlex is a corporation organized and existing under the laws of the State of
`
`Pennsylvania, with a principal place of business located at 451 Creamery Way, Exton,
`
`Pennsylvania 19341.
`
`2. OmegaFlex is a well-known company within the corrugated stainless steel tubing
`
`(“CSST”) industry. CSST is used, for example, in fuel gas applications and the flexible metal
`
`piping industry. OmegaFlex manufactures, promotes, sells, and/or distributes a variety of
`
`products under its well-known OMEGAFLEX house brand, including systems and components
`
`for both industrial applications and for residential flexible gas piping uses.
`
`3. OmegaFlex is an extremely innovative company, with approximately 281 patents
`
`worldwide covering various aspects of its CSST system.
`
`4. OmegaFlex also possesses a trade secret process for the manufacture of its CSST,
`
`which renders its CSST superior in quality and performance to that of its competitors.
`
`5. Since 1997, OmegaFlex has become the leading manufacturer of flexible metal
`
`hose in the United States, including, but not limited to, as a result of its superior products and
`
`services, with annual sales of OMEGAFLEX-branded products and services exceeding Fifty
`
`Million Dollars ($50,000,000).
`
`6.
`
`Opposer owns both common law and federally-registered rights to its well-known
`
`trademarks OMEGAFLEX and OMEGAFLEX (Stylized) and Design (collectively,
`
`“OMEGAFLEX Marks”) used on and in connection with a variety of goods and services,
`
`including flexible metal hose products, systems, and services (“Opposer’s Goods and Services”).
`
`Opposer began using the OMEGAFLEX Marks in United States commerce since at least as early
`
`as September 1991.
`
`2
`
`
`

`

`7.
`
`Opposer owns United States Trademark Registration No. 2101072 for the mark
`
`OMEGAFLEX, filed on June 3, 1996, and registered on September 30, 1997, covering “flexible
`
`metal hose and braided flexible metal hose for use with flammable and/or corrosive fluids” in
`
`Class 6, with a date of first use in commerce of September 1991. See attached Exhibit B,
`
`showing a true and correct copy of a printout from the USPTO’s Trademark Status and
`
`Document Retrieval (“TSDR”) database.
`
`8. Opposer owns United States Trademark Registration No. 2227971 for the mark
`
`OMEGAFLEX (Stylized) and Design, filed on December 3, 1997, and registered on March 2,
`
`1999, for “flexible metal hose and braided flexible metal hose for use with flammable and/or
`
`corrosive fluids” in Class 6, with a date of first use in commerce of September 1991. See
`
`attached Exhibit C, showing a true and correct copy of a printout from the USPTO’s TSDR
`
`database.
`
`9.
`
`Opposer’s registrations for the OMEGAFLEX marks are now incontestable
`
`pursuant to Section 15 of the Trademark Act.
`
`10. The OMEGAFLEX Marks are prominently featured in Opposer’s advertising,
`
`marketing, and promotional materials for the Opposer’s Goods and Services, and in connection
`
`with the Opposer’s Goods and Services that are offered for purchase throughout the United
`
`States and on Opposer’s website located at http://www.omegaflex.com/index.html.
`
`11. As a result of Opposer’s substantially exclusive and continuous use of the
`
`OMEGAFLEX Marks in connection with Opposer’s Goods and Services, and having expended
`
`considerable effort and expense in promoting Opposer’s Goods and Services associated with the
`
`OMEGAFLEX Marks, the OMEGAFLEX Marks and the goods and services bearing the
`
`OMEGAFLEX Marks have come to be recognized and associated with Opposer and the
`
`3
`
`
`

`

`OMEGAFLEX Marks have developed substantial goodwill and a positive reputation among the
`
`industry, the trade, the media, and consumers. The OMEGAFLEX Marks have become one of
`
`Opposer’s most valuable assets.
`
`12. The OMEGAFLEX Marks distinguish Opposer’s Goods and Services from
`
`those of its competitors. As a result, relevant consumers readily recognize, associate, identify,
`
`and distinguish the OMEGAFLEX Marks and Opposer’s Goods and Services from those of
`
`others.
`
`13. Opposer, the OMEGAFLEX Marks, and Opposer’s Good and Services are
`
`recognized throughout the world and in the United States by consumers as a leader in the CSST
`
`and flexible metal piping industries.
`
`14. Opposer, the OMEGAFLEX Marks, and Opposer’s Good and Services have been
`
`the subject of widespread attention from the media and the public, and have been frequently
`
`featured in third-party news articles and in other media.
`
`B.
`
`Applicant Dong-A Flexible Metal Tubes Co., Ltd.
`
`15. On information and belief, Applicant Dong-A Flexible Metal Tubes Co., Ltd. is a
`
`corporation organized and existing under the laws of South Korea, with a principal place of
`
`business located 4F Kowon Building, 28, Baumoe-ro 35 gil, Seocho-gu, Seoul, South Korea,
`
`137-888.
`
`16. Dong-A Flexible Metal Tubes Co., Ltd. has no relationship with Opposer.
`
`17. Upon information and belief, Applicant had actual or constructive knowledge of
`
`Opposer’s prior rights in and registrations of the OMEGAFLEX Marks when it filed the
`
`Application.
`
`4
`
`
`

`

`18. On or about March 23, 2015, Applicant filed the Application (Serial No.
`
`86573239).
`
`19. As currently published, the Application covers “Flexible metal hose and braided
`
`flexible metal hose for liquid or gas transmission; corrugated stainless steel tube; corrugated
`
`stainless steel tube connectors; flexible metal joint for connecting pipes, or pipes to appliances
`
`and absorbing vibration and position changes of pipes; metal expansion joint for connecting
`
`pipes, or pipes to appliances and absorbing changes of its length and position; metal supports for
`
`corrugated tube; metal plate for protecting corrugated tube from impacts; fitting system
`
`comprised of metal pipe adapter, metal pipe socket, metal tee socket, metal elbow, metal reducer,
`
`and metal manifold for corrugated tube” in International Class 6.
`
`20. The Application was filed as a use based application under Section 1(a) of the
`
`Lanham Act, 15 U.S.C. § 1051(a), and claims a first use in commerce date of March 26, 2012.
`
`21. The Application was filed without Opposer’s authorization, consent, or prior
`
`knowledge.
`
`22. The OMEGAFLEX Marks, including Opposer’s common law rights, predate the
`
`Application and any claimed rights in the Application. Opposer therefore has rights that are
`
`senior to any rights that may be claimed by Applicant.
`
`C.
`
`Opposer’s Claims Against the Application
`
`COUNT I
`LIKELIHOOD OF CONFUSION
`
`23. Opposer incorporates paragraphs 1 – 22 by reference and realleges the same as if
`
`originally set forth herein.
`
`24. There is a likelihood of confusion between the OMEGAFLEX Marks and the
`
`Opposer’s Goods and Services offered under the OMEGAFLEX Marks, and Applicant’s
`
`5
`
`
`

`

`ALPHA-FLEX Mark and the goods and services Applicant offers under the ALPHA-FLEX
`
`Mark.
`
`25.
`
`In particular, the ALPHA-FLEX Mark is confusingly similar to the
`
`OMEGAFLEX Marks. The elements “ALPHA” and “OMEGA” are both Greek letters and are
`
`frequently used in connection with each other in a variety of contexts, including many
`
`commercial contexts and industries. When combined with the element “FLEX,” the marks are
`
`connotatively similar creating the same commercial impression and meaning.
`
`26.
`
`Further, Applicant is using the ALPHA-FLEX Mark in connection with goods
`
`and services that are identical and/or similar to Opposer’s Goods and Services offered in
`
`connection with the OMEGAFLEX Marks, targeted to the same class of consumers as Opposer’s
`
`Goods and Services, move within the same channels of trade as Opposer’s Goods and Services,
`
`and/or are likely to be associated by consumers with Opposer.
`
`27. As a result, any minor differences between the marks do not avoid a likelihood of
`
`confusion.
`
`28. Given the filing date of the Application, Applicant was clearly exposed to and
`
`aware of the Opposer and the OMEGAFLEX Marks before filing the Application. Applicant’s
`
`selection of a mark that is confusingly similar to the OMEGAFLEX Marks was no coincidence,
`
`and was intended to trade off of the substantial reputation and goodwill of the OMEGAFLEX
`
`Marks.
`
`29. As a result of the similarity between the ALPHA-FLEX Mark and the
`
`OMEGAFLEX Marks and the respective goods and services, registration of the ALPHA-FLEX
`
`Mark would be likely to cause confusion, mistake, and/or deception of purchasers as to the
`
`6
`
`
`

`

`source of the parties’ respective goods and services, and, therefore, registration of the ALPHA-
`
`FLEX Mark should be refused.
`
`30. As a result of the similarity between the ALPHA-FLEX Mark and the
`
`OMEGAFLEX Marks, registration of the ALPHA-FLEX Mark would be likely to cause
`
`confusion, mistake, and/or deception as to (a) the affiliation, connection, or association between
`
`Opposer and Applicant, and/or (b) the origin, sponsorship, or approval of Applicant’s goods and
`
`services by Opposer, and, therefore, registration of the ALPHA-FLEX Mark should be refused.
`
`31. By reason of the foregoing, Opposer is likely to be harmed by registration of
`
`Application Serial No. 86573239 for ALPHA-FLEX.
`
`WHEREFORE, Opposer Omega Flex, Inc. respectfully requests that the Trademark Trial
`
`and Appeal Board sustain this opposition and refuse registration for United States Trademark
`
`Application Serial No. 86573239.
`
`
`
`
`Dated: September 15, 2016
`
`
`
`By:
`
`Respectfully submitted,
`
`Omega Flex, Inc.
`
`
`
`
`/Thomas J. Mango/
`Steven M. Coyle, Esq.
`Thomas J. Mango, Esq.
`
`Cantor Colburn LLP
`20 Church Street, 22nd Floor
`Hartford, CT 06103-3207
`
`Phone: 860-286-2929
`Fax: 860-286-0115
`scoyle@cantorcolburn.com
`tmango@cantorcolburn.com
`
`Attorneys for Opposer Omega Flex, Inc.
`
`
`
`
`
`
`
`
`
`
`7
`
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I, Thomas J. Mango, Esq., counsel to Omega Flex, Inc. in the above-captioned
`proceeding, hereby certify that, on the 15th day of September 2016, I served a copy of the
`foregoing Notice of Opposition, by first class mail, postage prepaid, upon the following
`individual, identified in the Application as the attorney of record and correspondent:
`
`Robert J. Kenney, Esq.
`Birch Stewart Kolasch & Birch, LLP
`P.O. Box 747
`Falls Church, VA 22040
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Thomas J. Mango/
`Thomas J. Mango
`
`
`
`
`
`8
`
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`PART 1
`PART 1
`
`

`

`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 1 of 16
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF CONNECTICUT
`
`
`
`
`Plaintiff,
`
`
`OMEGA FLEX, INC.
`
`
`
`v.
`
`DONG-A FLEXIBLE METAL TUBES
`CO., LTD.,
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`Civil Action No.
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`COMPLAINT
`
`Plaintiff, Omega Flex, Inc. (“OmegaFlex”) does hereby, through its attorneys, allege as
`
`follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff OmegaFlex is a corporation organized and existing under the laws of the
`
`Commonwealth of Pennsylvania, having a principal place of business at 213 Court Street,
`
`Middletown, Connecticut 06457.
`
`2.
`
`Upon information and belief, Defendant Dong-A Flexible Metal Tubes Co., Ltd.,
`
`(“Dong-A-Flex”), is a South Korean company, having a principal place of business at 4F Kowon
`
`Building, 28, Baumoe-ro 35 gil, Seocho-gu, Seoul 137-888.
`
`
`
`JURISDICTION AND VENUE
`
`3.
`
`This is a civil action for trademark infringement and unfair competition under
`
`Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 and 1125, trademark infringement
`
`under Connecticut common law, for unfair and deceptive trade practices in violation of the
`
`Connecticut Unfair Trade Practices Act (Conn. Gen. Stat. §§ 42-110(a) et seq.), and for
`
`
`
`
`

`

`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 2 of 16
`
`declaratory relief pursuant to 28 U.S.C. §§ 2201 and 2202 that Trademark Application Serial No.
`
`86573239 for Alpha-FLEX is incapable of registration.. Jurisdiction is conferred upon this Court
`
`pursuant to 15 U.S.C. §§1119, 1121 and 28 U.S.C. §§ 1331, 1332, and 1338.
`
`4.
`
`This Court has personal jurisdiction over Dong-A-Flex because, upon information
`
`and belief, Dong-A-Flex directly, or indirectly through its agents, does business and/or solicits
`
`business in this judicial district and has committed acts within this judicial district giving rise to
`
`this action. Dong-A-Flex is subject to the personal jurisdiction of this Court and is amenable to
`
`service of process pursuant to the Connecticut long-arm statute, Conn. Gen. Stat. § 33-929(f),
`
`and Fed. R. Civ. P. 4(e). Requiring Dong-A-Flex to respond to this action will not violate due
`
`process.
`
`5.
`
`OmegaFlex does business and has a principal place of business in this judicial
`
`district. Upon information and belief, Dong-A-Flex directly, or indirectly through its agents,
`
`does business and/or solicits business in this judicial district and has committed acts within this
`
`district giving rise to this action. Venue is proper in this judicial district pursuant to 28 U.S.C. §§
`
`1391(b) and (c).
`
`FACTUAL BACKGROUND
`
`6.
`
`OmegaFlex is a well-known company within the corrugated stainless steel tubing
`
`(“CSST”) industry. CSST is used, for example, in fuel gas applications and the flexible metal
`
`piping industry. OmegaFlex manufactures, promotes, sells, and/or distributes a variety of
`
`products under its well-known OMEGAFLEX house brand, including systems and components
`
`for both industrial applications and for residential flexible gas piping uses.
`
`7.
`
`OmegaFlex is the owner of U.S. Trademark Registration No. 2227971 for the
`
`stylized mark OMEGAFLEX, registered on March 2, 1999, for “flexible metal hose and braided
`
`2
`
`

`

`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 3 of 16
`
`flexible metal hose for use with flammable and/or corrosive fluids.” See Exhibit A. OmegaFlex
`
`also owns U.S. Trademark Registration No. 2101072 for the word mark OMEGAFLEX,
`
`registered on September 30, 1997, for “flexible metal hose and braided flexible metal hose for
`
`use with flammable and/or corrosive fluids” (hereafter collectively referred to as the “OmegaFlex
`
`Trademarks” or the “Trademarks”). See Exhibit B.
`
`8.
`
`OmegaFlex uses its Trademarks in connection with the manufacture, promotion,
`
`sale, and/or distribution of its CSST and/or flexible metal hose products throughout the United
`
`States and the world.
`
`9.
`
`OmegaFlex has used its Trademarks in connection with industrial metal hose
`
`since 1980. OmegaFlex has used its Trademarks in connection with CSST and flexible gas
`
`piping products, systems, and services since 1997.
`
`10.
`
`OmegaFlex is an extremely innovative company, with approximately 281 patents
`
`worldwide covering various aspects of its CSST system.
`
`11.
`
`OmegaFlex also possesses a trade secret process for the manufacture of its CSST,
`
`which renders its CSST superior in quality and performance to that of its competitors. See
`
`Exhibit C.
`
`12.
`
`Since 1997, OmegaFlex has become the leading manufacturer of flexible metal
`
`hose in the United States, including, but not limited to, as a result of its superior products and
`
`services, with annual sales of OMEGAFLEX-branded products and services exceeding
`
`50,000,00.
`
`13.
`
`By virtue of their substantial use and promotion in the United States, the
`
`OmegaFlex Trademarks have become extremely well known and have acquired great value as
`
`3
`
`

`

`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 4 of 16
`
`identifiers of OMEGAFLEX products and services. Such marks distinguish OmegaFlex’s
`
`products and services from those of its competitors.
`
`14.
`
`As a result of OmegaFlex’s extensive advertising and sales of flexible metal hose
`
`products and systems in the United States bearing the well-known OmegaFlex Trademarks,
`
`relevant consumers readily recognize, identify and distinguish OmegaFlex’s products, systems,
`
`and services from those of others.
`
`15.
`
`OmegaFlex’s Trademarks for flexible metal hose products, systems, and services
`
`are extremely valuable symbols of OmegaFlex, its quality products and services, and of the
`
`substantial consumer goodwill that OmegaFlex has earned over many years.
`
`DONG-A-FLEX’S ACTIVITIES
`
`16.
`
`Upon information and belief, Dong-A-Flex manufactures and sells CSST for a
`
`variety of uses, including industrial and residential gas plumbing systems, for the retail and
`
`wholesale industries in the United States and throughout the world.
`
`17.
`
`Upon information and belief, Dong-A-Flex is manufacturing, promoting, selling,
`
`and/or distributing a flexible gas piping system under the mark “Alpha-FLEX.” The Alpha-
`
`FLEX flexible gas piping system includes CSST, fittings, and accessories, which are largely the
`
`same and/or are substantially similar in overall appearance and function as the flexible gas piping
`
`systems and components offered by OmegaFlex.
`
`18.
`
`On or about March 23, 2015, Dong-A-Flex filed a used-based application,
`
`Trademark Application Serial No. 86573239, with the United States Patent and Trademark
`
`Office (“PTO”) to register the mark Alpha-FLEX for “Flexible metal hose and braided flexible
`
`metal hose for liquid or gas transmission; corrugated stainless steel tube; corrugated stainless
`
`steel tube connectors; flexible metal joint for connecting pipes, or pipes to appliances and
`
`4
`
`

`

`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 5 of 16
`
`absorbing vibration and position changes of pipes; metal expansion joint for connecting pipes, or
`
`pipes to appliances and absorbing changes of its length and position; metal supports for
`
`corrugated tube; metal plate for protecting corrugated tube from impacts; fitting system
`
`comprised of pipe adapter, pipe socket, tee socket, elbow, reducer, and manifold for corrugated
`
`tube” (“the Alpha-FLEX Application”) See Exhibit D.
`
`19.
`
`In its Alpha-FLEX Application, Dong-A-Flex has claimed a first use of the
`
`Alpha-Flex mark in commerce of March 26, 2012. See id.
`
`20.
`
`Upon information and belief, Dong-A-Flex is currently soliciting and marketing to
`
`distributors in this judicial district and elsewhere the United States to sell its Alpha-FLEX CSST
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`products, and has been marketing and/or promoting Dong-A-Flex’s Alpha-FLEX CSST product
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`to U.S. plumbing distributors, including to some who are OmegaFlex’s customers. See Exhibit
`
`E.
`
`21.
`
`Upon information and belief, the Alpha-FLEX flexible gas piping system of
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`Dong-A-Flex is sold in the same channels of trade as the OmegaFlex flexible gas piping products,
`
`systems and services.
`
`22.
`
`Dong-A-Flex’s use of the Alpha-FLEX mark in connection with flexible metal
`
`hose products is likely to create confusion and mistake and to deceive consumers into the
`
`incorrect belief that Alpha-FLEX products are genuine products sold, sponsored by, affiliated with
`
`and/or approved by OmegaFlex.
`
`23.
`
`Upon information and belief, Dong-A-Flex chose to use the Alpha-FLEX mark in
`
`connection with its CSST products with the intent to cause the aforementioned consumer
`
`confusion and/or to otherwise capitalize on OmegaFlex’ reputation and goodwill in the
`
`OmegaFlex Trademarks.
`
`5
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`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 6 of 16
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`24.
`
`The terms “Alpha” and “Omega” are both Greek letters, are both being used with
`
`the element “FLEX,” are connotatively similar, and are frequently used in connection with each
`
`other in a variety of contexts, including many commercial contexts and industries.
`
`25.
`
`Dong-A-Flex’s decision to apply to register Alpha-FLEX and to utilize Alpha-
`
`FLEX in connection with products, systems, and services that are essentially identical to those
`
`offered by OmegaFlex was made with the intent to create a mistaken association in the mind of
`
`consumers between the Alpha-FLEX and OmegaFlex flexible gas piping products, systems, and
`
`services and to trade off of the substantial goodwill that OmegaFlex has built in its Trademarks
`
`over many years of promotion and use.
`
`26.
`
`Dong-A-Flex’s application to register Alpha-FLEX and its use of the Alpha-
`
`FLEX mark in this context is a knowing and willful attempt to trade on the goodwill established
`
`in OmegaFlex quality products and well known Trademarks.
`
`27.
`
`The flexible gas piping products, systems, and services as sold by Dong-A-Flex
`
`under the Alpha-FLEX mark, while substantially similar to those of OmegaFlex in general
`
`appearance and function, are of inferior quality to the innovative, exceptional, and highly rated
`
`goods and services offered under the OmegaFlex Trademarks.
`
`28.
`
`Dong-A-Flex, by the acts complained of herein, has infringed and continues to
`
`infringe the OmegaFlex Trademarks, has unfairly competed and continues to unfairly compete
`
`with OmegaFlex in the marketplace, and otherwise has improperly used and continues to
`
`improperly use the reputation and goodwill of OmegaFlex to promote its own good and services,
`
`which are not connected with and/or approved by OmegaFlex.
`
`29.
`
`As a result of Dong-A-Flex’s acts set forth herein, the relevant consuming public
`
`and trade will likely be confused as to the source and origin of the goods sold in connection with
`
`6
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`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 7 of 16
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`the Alpha-FLEX mark, mistakenly associating those goods, systems, and services with those of
`
`OmegaFlex.
`
`THE VALENCIA LAWSUIT
`
`30.
`
`On information and belief, Dong-A-Flex had actual or constructive knowledge of
`
`OmegaFlex’s prior rights in and registrations of the OmegaFlex Trademarks before Dong-A-Flex
`
`adopted the Alpha-FLEX mark, and/or before Dong-A-Flex solicited U.S. distributors to sell
`
`Alpha-FLEX branded CSST, and/or before Dong-A-Flex applied to register the Alpha-FLEX
`
`mark.
`
`31.
`
`In or around 2012, OmegaFlex learned that Valencia Pipe Company of California
`
`(Valencia) was marketing and selling and/or planned to market and sell CSST products and
`
`services under the Alpha-FLEX mark.
`
`32.
`
`The CSST that Valencia sold and/or planned to sell under the Alpha-FLEX mark
`
`was manufactured for it by Dong-A-Flex.
`
`33.
`
`In or around 2012, OmegaFlex also learned that on October 26, 2011, Valencia
`
`filed U.S. Trademark Application Serial No. 85456176 for the mark ALPHAFLEX covering
`
`“Flexible metal hose and braided flexible metal hose for gas transmission and for use with
`
`flammable and/or corrosive fluids.” The application was filed on an intent-to-use basis and was
`
`published for opposition on April 3, 2012. On August 1, 2012, OmegaFlex filed a Notice of
`
`Opposition with the U.S. Patent and Trademark Office asserting that it would be damaged by
`
`Valencia’s registration of the ALPHAFLEX mark.
`
`34.
`
`OmegaFlex sent a cease and desist letter to Valencia, asserting that Valencia’s use
`
`of the Alpha-FLEX mark infringed and/or would infringe the OmegaFlex Trademarks and
`
`demanded that Valencia abandon its U.S. Trademark Application for the mark ALPHAFLEX.
`
`7
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`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 8 of 16
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`35.
`
`Valencia thereafter filed a lawsuit in the United States District Court for the
`
`Central District of California seeking a declaratory judgment that its use of Alpha-FLEX would
`
`not infringe upon the OmegaFlex Trademarks. See Valencia Pipe Company v OmegaFlex, Inc.,
`
`United States District Court for the Central District of CA, Civil Action No. 2:12-cv-02240-
`
`DMG-AGR (“the Valencia Lawsuit”). See Exhibit F.
`
`36.
`
`OmegaFlex answered and counterclaimed. OmegaFlex alleged that Valencia’s
`
`use of Alpha-FLEX in connection with CSST manufactured by Dong-A-Flex would infringe
`
`OmegaFlex Trademarks, would dilute the OmegaFlex Trademarks, and constituted unfair
`
`competition under applicable federal and state law. See Exhibit G.
`
`37.
`
`38.
`
`The Valencia Lawsuit subsequently settled under confidential terms.
`
`It is a matter of public record that no later than six months after the settlement,
`
`Valencia stopped selling CSST or related products bearing the Alpha-FLEX mark.
`
`39.
`
`It is further a matter of public record that following the settlement, Valencia
`
`abandoned its U.S. Trademark Application Serial No. 85456176 for ALPHAFLEX with prejudice.
`
`See Exhibit H.
`
`40.
`
`Upon information and belief, by virtue of its role as the manufacturer of
`
`Valencia’s Alpha-FLEX CSST, Dong-A-Flex was aware of the settlement of the Valencia
`
`Lawsuit, including the terms thereof.
`
`41.
`
`Upon information and belief, Dong-A-Flex knowingly acted in contravention of
`
`Valencia’s agreement with OmegaFlex by filing the Alpha-FLEX application with the PTO and
`
`using the Alpha-FLEX Mark.
`
`8
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`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 9 of 16
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`42.
`
`Dong-A-Flex’s unlawful and improper acts discussed above have caused
`
`OmegaFlex to sustain monetary damage, loss, and injury in an amount to be determined at trial, as
`
`well as damage and injury to its reputation and goodwill.
`
`43.
`
`The aforesaid acts of Dong-A-Flex have caused and, unless restrained and
`
`enjoined by this Court will continue to cause, irreparable damage, loss, and injury to OmegaFlex
`
`for which OmegaFlex has no adequate remedy at law.
`
`COUNT I
`TRADEMARK INFRINGEMENT
`UNDER § 32 OF THE LANHAM ACT, 15 U.S.C § 1114(1)
`
`OmegaFlex repeats and realleges paragraphs 1 - 43, above, as though fully set forth
`
`44.
`
`herein.
`
`45.
`
`OmegaFlex owns federal registrations for the OmegaFlex Trademarks for
`
`“flexible metal house and braided flexible metal hose for use with flammable and/or corrosive
`
`fluids.”
`
`46.
`
`Upon information and belief, at the time of committing certain acts alleged herein,
`
`including filing its federal application for ALPHAFLEX and using the Alpha-FLEX marks in
`
`commerce, Dong-A-Flex had actual or constructive knowledge of OmegaFlex’s ownership, prior
`
`use and registration of the OmegaFlex Trademarks for flexible gas piping products, systems, and
`
`services.
`
`47.
`
` Dong-A-Flex’s unlawful, improper and unauthorized actions, as set forth above,
`
`are likely to cause confusion, mistake or deception as to the source, origin or sponsorship of
`
`Dong-A-Flex’s products, systems, and/or services and to falsely mislead consumers into
`
`believing that Dong-A-Flex’s products, systems and/or services originate from, are affiliated or
`
`connected with, and/or are approved by OmegaFlex.
`
`9
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`Case 3:16-cv-01190 Document 1 Filed 07/14/16 Page 10 of 16
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`48.
`
`Accordingly, Dong-A-Flex’s activities constitute an infringement of the
`
`OmegaFlex Trademarks in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114(1).
`
`49.
`
`Dong-A-Flex’s acts of infringement have caused OmegaFlex to sustain monetary
`
`damage, loss, and injury in an amount to be determined at trial, as well as damage and injury to
`
`its reputation and goodwill.
`
`50.
`
`Dong-A-Flex has wrongfully obtained and/or will wrongfully obtain profits as a
`
`result of its use of the Alpha-FLEX mark, which should be restored to OmegaFlex.
`
`51.
`
`Dong-A-Flex has engaged and continues to engage in these alleged activities
`
`willfully, so as to justify the assessment of treble damages under 15 U.S.C. § 1117.
`
`52.
`
`Dong-A-Flex’s acts of infringement, unless enjoined by this Court, will continue
`
`to cause OmegaFlex to sustain irreparable damage, loss, and injury for which OmegaFlex has no
`
`adequate remedy at law.
`
`COUNT II
`FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
`UNDER § 43(a)(1)(A) OF THE LANHAM ACT, 15 U.S.C. § 1125(a)(1)(A)
`
`OmegaFlex repeats and realleges paragraphs 1 - 52, above, as though fully set forth
`
`53.
`
`herein.
`
`54.
`
`OmegaFlex has used it Trademarks in commerce since 1997 for CS