Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA898069
`
`Filing date:
`
`05/21/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91241237
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Xcel Energy Inc.
`
`Kristine M. Boylan
`Briggs and Morgan, P.A.
`80 South 8th Street2200 IDS Center
`Minneapolis, MN 55402
`UNITED STATES
`Email: kboylan@briggs.com, ljoyce@briggs.com, ip@briggs.com
`
`Motion to Suspend for Civil Action
`
`Kristine M. Boylan
`
`ip@briggs.com, kboylan@briggs.com, ljoyce@briggs.com
`
`/Kristine M. Boylan/
`
`05/21/2018
`
`XCEL Motion to Suspend for Civil Action.pdf(78800 bytes )
`Exhibit 1 Complaint.pdf(3884268 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 87/586485
`Published in the Official Gazette of February 6, 2018
`Mark: XCEL
`
`
`
`XCEL ENERGY INC.,
`
`
`
`v.
`
`EATON CORPORATION,
`
`
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`
`Opposition No. 91241237
`
`::::::::::
`
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`Opposer Xcel Energy Inc. moves for a suspension of the above opposition proceeding
`
`under Trademark Rule of Practice 2.117(a); 37 C.F.R. § 2.117(a) and TBMP §510.02(a).
`
`A civil action is pending between the parties to this opposition proceeding, Xcel Energy
`
`Inc. v. Eaton Corporation, D.Minnesota Civil Action No. 0:18-cv-01359, filed May 17, 2018.
`
`The civil action involves the issue of whether Applicant’s past, present and intended use of the
`
`“XCEL” designation infringes Opposer’s rights in and to its XCEL ENERGY Marks. (A copy
`
`of the Complaint is attached as Exhibit 1).
`
`These issues are likewise raised by the above Opposition, and the civil action therefore
`
`may be dispositive of this proceeding.
`
`Therefore, Opposer respectfully requests that the Board suspend this Opposition
`
`proceeding pending termination of the civil action.
`
`
`
`
`10790565v2
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`

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`Dated: May 21, 2018
`
`
`
`
`
`
`Respectfully submitted:
`
`By:
`
`/Kristine M .Boylan/
`Kristine M. Boylan (#284634)
`BRIGGS AND MORGAN, P.A.
`2200 IDS Center
`80 South Eighth Street
`Minneapolis, Minnesota 55402-2157
`Telephone: (612) 977-8878
`Facsimile: (612) 977-8650
`kboylan@briggs.com
`
`Attorney for Opposer Xcel Energy Inc.
`
`
`
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`10790565v2
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`2
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`

`

`CERTIFICATE OF ELECTRONIC FILING
`
`The undersigned hereby certifies that this Consented Motion is being electronically filed
`
`with the United States Patent and Trademark Office on this 21st day of May, 2018.
`
`
`
`
`
`
`
`By:
`
`/Kristine M. Boylan/
`Kristine M. Boylan (#284634)
`BRIGGS AND MORGAN, P.A.
`2200 IDS Center
`80 South Eighth Street
`Minneapolis, Minnesota 55402-2157
`Telephone: (612) 977-8878
`Facsimile: (612) 977-8650
`kboylan@briggs.com
`
`Attorney for Opposer Xcel Energy Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`10790565v2
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`3
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`
`
`

`

`CERTIFICATE OF E-MAIL SERVICE
`
`The undersigned hereby certifies that a true and accurate copy of the foregoing was
`served via email to trademarks@eaton.com and danielskalka@eaton.com this 21st day of May,
`2018 upon the following:
`
`
`Daniel S. Kalka
`Eaton Corporation
`1000 Eaton Boulevard
`Cleveland, OH 44122
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`/Kristine M. Boylan/
`Kristine M. Boylan (#284634)
`BRIGGS AND MORGAN, P.A.
`2200 IDS Center
`80 South Eighth Street
`Minneapolis, Minnesota 55402-2157
`Telephone: (612) 977-8878
`Facsimile: (612) 977-8650
`kboylan@briggs.com
`
`Attorney for Opposer Xcel Energy Inc.
`
`
`
`
`10790565v2
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`
`4
`
`
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 1 of 10
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF MINNESOTA
`
`XCEL ENERGY INC.,
`
`Plaintiff,
`
`EATON CORPORATION,
`
`Defendant.
`
`VVVVVVVVVVVVVV
`
`Court File No.
`
`M
`
`(Jury Trial Demanded)
`
`NATURE OF THE ACTION
`
`This is an action for trademark infringement arising from Eaton Corporation’s
`
`knowing adoption, use and filing of United States Trademark Application Serial No.
`
`87/586,485 for the mark XCEL in the face of Xcel Energy Inc.’s longstanding trademark
`
`rights. Plaintiff seeks an Order of Injunction, along with an Award of its Attorneys’ Fees,
`
`Costs, Money Damages and an Order instructing the United States Patent and Trademark
`
`Office to refuse to allow Defendant’s trademark application for XCEL as a federally
`
`registered mark.
`
`THE PARTIES, JURISDICTION AND VENUE
`
`1.
`
`The Plaintiff, Xcel Energy Inc., is a Minnesota corporation having its
`
`principal place of business at 414 Nicollet Mall, Minneapolis, Minnesota 55041.
`
`2.
`
`The Defendant, Eaton Corporation, is an Ohio corporation having its
`
`principal place of business at 1000 Eaton Boulevard, Cleveland, Ohio 44122.
`
`10758852v8
`
`   
`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 2 of 10
`
`3.
`
`This Court has original jurisdiction over the subject matter of the Lanham
`
`Act claims pursuant to 15 U.S.C. §§ 1121(a), 28 U.S.C. §§ 1331 and 1338(a).
`
`4.
`
`Defendant Eaton Corporation is subject to this Court’s exercise of
`
`jurisdiction because it significantly conducts business in the State of Minnesota, as a
`
`corporation registered to do business in the State of Minnesota, and Eaton operates from
`
`a number of physical locations including but not limited to the address at 14900
`
`Technology Drive, Eden Prairie, Minnesota 55344.
`
`5.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391.
`
`FACTS
`
`6.
`
`More than seventeen years ago, Plaintiff started providing power, energy
`
`and public utility services to millions of residential and commercial customers under the
`
`XCEL ENERGY® name. At all relevant times, Plaintiff has continuously used and
`
`promoted the XCEL ENERGY® name, variations thereof and related marks in
`
`connection with a wide variety of goods and services.
`
`7.
`
`In 2003, United States Trademark Registration No. 273381 1 issued for the
`
`XCEL ENERGY CENTER® mark. Today, United States Trademark Registration No.
`
`2733811 remains in full force and effect, and is incontestable.
`
`8.
`
`In 2004, United States Trademark Registration No. 2869976 issued for the
`
`HOMESMART FROM XCEL ENERGY® design mark:
`
`10758852v8
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`   
`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 3 of 10
`
`HOM ESMART
`from 3:2 XeelEnergy
`
`Today, United States Trademark Registration No. 2869976 remains in full force and
`
`effect, and is incontestable.
`
`9.
`
`In 2005, United States Trademark Registration No. 301 1277 issued for the
`
`XCEL ENERGY® mark. Today, United States Trademark Registration No. 3011277
`
`remains in full force and effect, and is incontestable.
`
`10.
`
`In 2005, United States Trademark Registration No. 2970929 issued for the
`
`XCEL ENERGY® mark. Today, United States Trademark Registration No. 2970929
`
`remains in full force and effect, and is incontestable.
`
`11.
`
`Over the life of this brand, Plaintiff has extensively used, advertised,
`
`promoted and protected the XCEL ENERGY® mark.
`
`12.
`
`At all relevant times, Defendant has been on actual notice of Plaintiff’ 5
`
`rights, based on the contractual and supply relationship between the parties.
`
`13.
`
`Last year, despite the Plaintiff’ s long-standing rights in the XCEL
`
`ENERGY® name, variations thereof and related marks, Defendant filed a US.
`
`Trademark Application for the confiisingly similar designation XCEL.
`
`14.
`
`In February 2018, Plaintiff filed and was granted a Request To Extend The
`
`Time To File an Opposition at the United States Patent and Trademark Office.
`
`10758852v8
`
`   
`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 4 of 10
`
`15.
`
`In February 2018, Defendant was formally served with Plaintiff’s filing
`
`regarding the Opposition through the Electronic System for Trademark Trials and
`
`Appeals.
`
`16.
`
`In April 2018, by way of written correspondence between counsel,
`
`Plaintiff sent a cease-and-desist demand to Defendant regarding Defendant’s application
`
`and use of the XCEL mark.
`
`17.
`
`In subsequent written correspondence, Defendant has explicitly refused to
`
`comply with the cease-and—desist and respect Plaintiff’s trademark interests.
`
`18.
`
`Defendant’s use of its XCEL designation is likely to create confilsion as to
`
`source, sponsorship, affiliation and/or endorsement, as illustrated by the fact that
`
`Defendant prominently has named a product series as the “XCEL Series” and describes
`
`its products throughout its technical and sales material as “Xcel-approved” at least as
`
`follows:
`
`Powering Busrness Wura'mwde
`
`
`
`Eato -eries Disc Valve Motors
`
`10758852v8
`
`   
`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 5 of 10
`
`m
`
`
`
`.....,_
`
`***** Be the first to wr'rlea review
`
`Ask a queslion
`by Eaton
`
`Mfr Number: MBX81681SOBTS
`Rexel Part Number: 521555
`
`UPC: 78668546062
`
`What's your trade slang? 0
`
`Product Description/
`
`'3] Cut Sheet
`
`Meter Breaker
`
`* pproved, Lever Bypass. 150A, 8116, Surface
`
`Meter Breaker, 150 Amp. Mam Breaker. with Xcel Approved, Lever Bypass, Overh eadiU ndergrou nd
`Service, Surface Mount
`
`Eff-N
`
`Powering Business Worldwide
`
`House Panel
`HPC40465HLX
`
`UPC :T8668537654?
`
`Dimensions:
`- Height: 8 IN
`. Length: 31.5 IN
`. Width: 31.5 IN
`
`Weight:123 LB
`Notes-approved Load conductors can exit the
`included.
`
`top, bottom? orback. Secondary breakernot
`
`peeaton. com
`
`
`
`10758852v8
`
`   
`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 6 of 10
`
`Product Selection
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`
`19.
`
`Defendant’s activities described herein amount to federal trademark
`
`infringement and federal unfair competition.
`
`20.
`
`Defendant’s use of the XCEL designation creates a substantial likelihood
`
`of confusion, deception, or mistake as to source, sponsorship or affiliation among
`
`Plaintiff’s customers, potential customers, and within the industry.
`
`COUNT 1 — VIOLATION OF THE LANHAM ACT —
`
`TRADEMARK INFRINGEMENT
`
`21.
`
`Plaintiff incorporates the allegations of Paragraphs 1-20 above.
`
`10758852v8
`
`   
`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 7 of 10
`
`22.
`
`Plaintiff owns several incontestable United States Trademark
`
`Registrations for a family of XCEL ENERGY® marks.
`
`23.
`
`Plaintiff uses its XCEL ENERGY® mark extensively in commerce.
`
`24.
`
`Plaintiff’s XCEL ENERGY® mark is distinctive, widely associated with
`
`Plaintiff and exclusively identifies Plaintiff’s services and uses.
`
`25.
`
`Defendant is engaged in unauthorized interstate commerce use of the
`
`XCEL designation.
`
`26.
`
`Defendant has filed a US. Trademark Application (Serial No. 87/586,485)
`
`for the confiisingly similar XCEL name and is engaged in use thereof.
`
`27.
`
`Defendant’s actions described herein constitute trademark infringement
`
`under 15 U.S.C. §1114.
`
`28.
`
`Defendant’s continuing infringement of Plaintiff’ s XCEL ENERGY®
`
`mark has caused, and will continue to cause irreparable harm to Plaintiff, for which there
`
`is no remedy at law.
`
`COUNT 2 — VIOLATION OF THE LANHAM ACT —
`
`FEDERAL UNFAIR COMPETITION
`
`29.
`
`Plaintiff incorporates the allegations of Paragraphs 1-28 above.
`
`30.
`
`Defendant’s use of the XCEL mark is designed to cause confusion,
`
`mistake or deception as to the affiliation, connection, or association of Defendant’s goods
`
`with the services of Plaintiff.
`
`31.
`
`Defendant’s activities are done with willfiil intent to cause confusion,
`
`mistake, or deception.
`
`32.
`
`As a result, Defendant’s activities violate 15 U.S.C. § 1125.
`
`10758852v8
`
`7
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`   
`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv—01359 Document 1 Filed 05/17/18 Page 8 of 10
`
`33.
`
`Defendant’s actions have caused and will continue to cause irreparable
`
`harm and damage to Plaintiff.
`
`COUNT 3 — REFUSAL 0R CANCELLATION OF US. APPLICATION
`
`SERIAL NO. 87/586485
`
`34.
`
`Plaintiff incorporates the allegations of Paragraphs 1-33 above.
`
`35.
`
`Pursuant to 15 U.S.C. §§ 1063, 1064 and 1119, a mark that is confusingly
`
`similar to another mark, and causes damage to the prior user, may be refused registration
`
`or cancelled by a court of law at any time.
`
`36.
`
`Defendant is using in commerce the XCEL designation that is identical or
`
`confusingly similar to Plaintiff’s federally-registered XCEL ENERGY mark in
`
`connection with the sale, distribution, or marketing of products, in a manner likely to
`
`cause confiision, to cause mistake, or to deceive as to source or origin, among consumers.
`
`37.
`
`As a longtime competitor and industry participant, Defendant was aware
`
`of Plaintiff and its XCEL ENERGY mark before any sales of XCEL product were made
`
`in the United States. Despite such awareness, Defendant commenced use of the XCEL
`
`mark in the United States.
`
`38.
`
`Plaintiff has been damaged by Defendant’s acts. Plaintiff has suffered,
`
`and, if Defendant’s acts are allowed to continue, will continue to suffer, irreparable injury
`
`for which Plaintiff has no adequate remedy at law.
`
`39.
`
`Registration of the mark that is the subject of Application Serial No.
`
`87/586485 is likely to damage Plaintiff, and therefore should not be permitted to register.
`
`10758852v8
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`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 9 of 10
`
`COUNT 4 — VIOLATION OF lVflNNESOTA’S DECEPTIVE TRADE
`
`PRACTICES ACT UNDER MINNESOTA STATUTE SECTION 325D.44
`
`40.
`
`Plaintiff hereby incorporates the allegations of Paragraphs 1-39 above.
`
`41.
`
`Defendant’s continued use of the XCEL mark in connection with its goods
`
`constitutes a deceptive trade practice under Minnesota Statute Section 325D.44.
`
`42.
`
`Defendant has infringed upon the XCEL ENERGY Mark, as alleged
`
`herein, because such use:
`
`a)
`
`b)
`
`c)
`
`d)
`
`causes likelihood of confusion or of misunderstanding as to the
`source, sponsorship, approval, or certification of goods or services;
`
`causes likelihood of confusion or of misunderstanding as to
`affiliation, connection, or association with, or certification by,
`another;
`
`represents that goods or services have sponsorship, approval,
`characteristics, ingredients, uses, benefits, or quantities that they do
`not have or that a person has a sponsorship, approval, status,
`affiliation, or connection that the person does not have; or
`
`engages in any other conduct which similarly creates a likelihood
`of confilsion or of misunderstanding.
`
`43.
`
`Plaintiff has been seriously and irreparably damaged by Defendant’s
`
`continued use of the XCEL mark.
`
`44.
`
`Plaintiff possesses no adequate remedy at law to address the damage
`
`caused by Defendant’s continued use of the XCEL mark.
`
`JURY TRIAL DEMANDED
`
`45.
`
`Plaintiff hereby requests a trial on all issues so triable.
`
`REQUEST FOR RELIEF
`
`WHEREFORE Plaintiff requests judgment as follows:
`
`9
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`10758852v8
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`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1 Filed 05/17/18 Page 10 of 10
`
`1.
`
`That Defendant be preliminarily and permanently enjoined and restrained
`
`from using the XCEL mark or any other mark or trade name or engaging in any other
`
`conduct that creates a likelihood of confusion and dilution of Plaintiff’s marks or trade
`
`names and the goodwill associated therewith.
`
`2.
`
`That Defendant be required to pay Plaintiff damages for injuries sustained
`
`by Plaintiff.
`
`3.
`
`That Defendant is required to pay Plaintiff all of its litigation expenses,
`
`including costs, disbursements, and reasonable attorneys’ fees due to the deliberate and
`
`knowing nature of Defendant’s actions and the exceptional nature of this case.
`
`4.
`
`That Defendant be required to pay all pre- and post-judgment interest
`
`amounts due.
`
`5.
`
`That the Plaintiff takes such other and finther relief as the Court may
`
`deem just and proper.
`
`Date: May 17, 2018
`
`s/ Kristine M. Boylan
`Kristine M. Boylan, Reg. No. 284634
`BRIGGS AND MORGAN, PA.
`80 South Eighth Street, Suite 2200
`Minneapolis, Minnesota 55402
`Telephone: 612.977.8400
`Facsimile: 612.977.8650
`
`Email: kboylan@briggs.com
`
`Counselfor Xcel Energy Inc.
`
`10758852v8
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`10
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`
`EXHIBIT 1
`
`

`

`CASE 0:18-cv-01359 Document 1-1 Filed 05/17/18 Page 1 of 3
`
`is 44 (Rev. 06/17)
`
`CIVIL COVER SHEET
`
`lace nor supplement the filing and service of pleadings or other papers as required by law, except as
`The JS 44 civil cover sheet and the information contained herein neither r
`provided by local rules ofcourt. This form, approved by the Judicial Con erence of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of mrtranng the crvrl docket sheet.
`(SEE INSTRUCTIONS ONNEXT PAGE OF THIS FORM.)
`
`1. (a) PLAINTIFFS
`Xcel Energy Inc.
`
`DEFENDANTS
`Eaton Corporation
`
`(b) County of Residence of First Listed Plaintiff Henngin
`(EXCEPTIN U.S. PLAINTIFF CASES)
`
`(C) Attorneys (Firm Name, Address, and Telephone Number)
`Kristine M. Boylan
`Briggs and Morgan, PA.
`80 South Eighth Street, Suite 2200
`Minneapolis, MN 55402
`(612) 977-8878
`
`II. BASIS OF JURISDICTION (Place an "X” in One Box Only)
`
`El 1 U.S. Government
`Plaintiff
`
`8 3 Federal Question
`(US. Government Not a Party)
`
`County of Residence of First Listed Defendant Hennflin
`(IN U.S. PLAZNHFF CASES ONLD
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
`Attorneys (IfKnown)
`
`III. CITIZENSHIP 0F PRINCIPAL PARTIES aDlacean "X”in Onel.'3oiicfiirPlaintifir
`(For Diversity Cases Only)
`and One Boxfor Defendant)
`PTF
`PTF
`DEF
`El 1
`El 4
`El 4
`
`DEF
`El
`
`1
`
`Incorporated or Principal Place
`of Business In This State
`
`Citizen of This State
`
`El 2 U.S. Government
`Defendant
`
`El 4 Diversity
`(Indicate Citizenship ofParties in Item [11)
`
`Citizen of Another State
`
`El 2
`
`El 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`El 5
`
`El 5
`
`IV. NATURE OF SUIT (Place an "X” in One Box Only)
`
`Click here for: Nature of Suit Code Descriptions.
`
`Citizen or Subject of a
`Foreign Country
`
`El 3
`
`El 3
`
`Foreign Nation
`
`El 6
`
`El 6
`
`PERSONAL INJURY
`El 110 Insurance
`El 310 Airplane
`El 120 Marine
`El 315 Airplane Product
`El 130 Miller Act
`Liability
`El 140 Negotiable Instrument
`I] 150 Recovery of Overpayment El 320 Assault, Libel &
`& Enforcement of Judgment
`Slander
`El 151 Medicare Act
`El 330 Federal Employers’
`El 152 Recovery of Defaulted
`Liability
`Student Loans
`El 340 Marine
`(Excludes Veterans)
`El 345 Marine Product
`El 153 Recovery of Overpayment
`Liability
`ofVeteran’s Benefits
`El 350 Motor Vehicle
`El 160 Stockholders’ Suits
`El 355 Motor Vehicle
`El 190 Other Contract
`Product Liability
`El 195 Contract Product Liability
`El 196 Franchise
`
`PERSONAL INJURY
`El 365 Personal Injury -
`Product Liability
`El 367 Health Care/
`Pharmaceutical
`Personal Injury
`Product Liability
`El 368 Asbestos Personal
`Injury Product
`Liability
`PERSONAL PROPERTY
`El 370 Other Fraud
`El 371 Truth in Lending
`El 380 Other Personal
`Property Damage
`El 385 Property Damage
`Product Liability
`
`El 210 Land Condemnation
`El 220 Foreclosure
`El 230 Rent Lease & Ejectment
`El 240 Torts to Land
`D 245 Tort Product Liability
`El 290 All Other Real Property
`
`Habeas Corpus:
`El 440 Other Civil Rights
`El 463 Alien Detainee
`El 441 Voting
`El 510 Motions to Vacate
`El 442 Employment
`Sentence
`El 443 Housing]
`D 530 General
`Accommodations
`El 445 Amer. w/Disabilities - El 535 Death Penalty
`Employment
`Other:
`El 446 Amer. w/Disabilities - El 540 Mandamus & Other
`Other
`El 550 Civil Rights
`El 448 Education
`El 555 Prison Condition
`El 560 Civil Detainee -
`Conditions of
`Confinement
`
`
`
`
`El 625 Drug Related Seizure
`ofProperty 21 USC 881
`El 690 Other
`
`El 422 Appeal 28 USC 158
`El 423 Withdrawal
`28 USC 157
`
`El 820 Copyrights
`El 830 Patent
`El 835 Patent - Abbreviated
`New Drug Application
`E 840 Trademark
`
`El 861 HIA (1395ff)
`El 862 Black Lung (923)
`El 863 DIWC/DIWW (405(g))
`El 864 SSH) Title XVI
`El 865 RSI (405(9)
`
`El 870 Taxes (U.S. Plaintiff
`or Defendant)
`El 871 IRS—Third Party
`26 USC 7609
`
`El 710 Fair Labor Standards
`Act
`El 720 Labor/Management
`Relations
`El 740 Railway Labor Act
`El 751 Family and Medical
`Leave Act
`D790 Other Labor Litigation
`El 791 Employee Retirement
`Income Security Act
`
`IMMIGRATION
`El 462 Naturalization Application
`El 465 Other Immigration
`Actions
`
`El 375 False Claims Act
`El 376 Qui Tam (31 USC
`3729(a))
`El 400 State Reapportionment
`El 410 Antitrust
`El 430 Banks and Banking
`El 450 Commerce
`El 460 Deportation
`El 470 Racketeer Influenced and
`Corrupt Organizations
`El 480 Consumer Credit
`El 490 Cable/Sat TV
`El 850 Securities/Commodities/
`Exchange
`El 890 Other Statutory Actions
`El 891 Agricultural Acts
`El 893 Environmental Matters
`El 895 Freedom of Information
`Act
`El 896 Arbitration
`El 899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`B 950 Constitutionality of
`State Statutes
`
`V. ORIGIN (Place an "X" in One Box Only)
`131 Original
`1:12 Removed fi'om
`Proceeding
`State Court
`
`El 3 Remanded from
`Appellate Court
`
`El 4 Reinstated or
`Reopened
`
`El 6 Multidistrict
`Litigation -
`Transfer
`
`El 8 Multidistrict
`Litigation -
`Direct File
`
`Cl 5 Transferred from
`Another District
`(specify)
`Cite the U.S. Civil Statute under which you are filing (Do not citejurisdictional statutes unless diversity):
`15 U.S.C. § 1114
`Brief description of cause:
`Action regarding trademark infi'ingement of longstanding trademark rights under the federal Lanharn Act.
`I:| CHECK IF THIS IS A CLASS ACTION
`DEMAND $
`CHECK YES only if demanded in cornplaint:
`UNDER RULE 23, F-R-CV-P-
`JURY DEMAND:
`IX Yes
`[No
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`
`VIII. RELATED CASE(S!
`
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`

`CASE 0:18-cv-01359 Document 1-1 Filed 05/17/18 Page 2 of 3
`
`IF ANY
`
`DATE
`
`05/17/2018
`FOR OFFICE USE ONLY
`
`(see Instructions).
`
`
`
`JUDGE
`SIGNATURE OF ATTORNEY OF RECORD
`
`DOCKET NUMBER
`
`5/ Kristine M. Boylan
`
`RECEIPT#
`
`
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`JS 44 Reverse (Rev. 06/17)
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`10759495v1
`
`   
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`EXHIBIT 1
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`

`CASE 0:18-cv-01359 Document 1-1 Filed 05/17/18 Page 3 of 3
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading 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. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`I.(a)
`(b)
`(C)
`
`[L
`
`[[I.
`
`VII.
`
`VIII.
`
`Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section "(see attachment)".
`
`Jurisdiction. The basis ofjurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`United States plaintiff (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
`citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
`cases.)
`
`Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
`section for each principal party.
`
`Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
`that is most applicable. Click here for: Nature of Suit Code Descriptions.
`
`Origin. Place an "X“ in one of the seven boxes.
`Original Proceedings. (1) Cases which originate in the United States district courts.
`Removed fiom State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.
`Remanded fiom Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`Transferred fi'om Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
`multidistrict litigation transfers.
`Multidistrict Litigation — Transfer. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C.
`Multidistrict Litigation — Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket.
`PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to
`changes in statue.
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`10759495v1
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`EXHIBIT 1
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