Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1194145
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`Filing date:
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`03/02/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91274561
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`Party
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`Correspondence
`address
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`Submission
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`Filer's name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Tile Tech, Inc.
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`MARK B. MIZRAHI
`FREEMAN FREEMAN AND SMILEY, LLP
`1888 CENTURY PARK EAST
`15TH FLOOR
`LOS ANGELES, CA 90067
`UNITED STATES
`Primary email: patentsandtrademarks@ffslaw.com
`Secondary email(s): mark.mizrahi@ffslaw.com
`310-255-6100
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`Motion to Suspend for Civil Action
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`Mark B. Mizrahi
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`patentsandtrademarks@ffslaw.com, mark.mizrahi@ffslaw.com
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`/mark b mizrahi/
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`03/02/2022
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`Motion for suspension in view of civil proceeding.pdf(22543 bytes )
`Exhibit A to Motion.pdf(3701151 bytes )
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`TRADEMARK
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`Docket No. 27644-202
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`
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`In the matter of Application No. 88778306:
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`
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`Tile Tech, Inc.,
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`
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`v.
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`
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`Opposition No. 91274561
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`Opposer,
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`Opposed Trademark: American flag design
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`Hanover Prest-Paving Company DBA
`Hanover Architectural Products,
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`
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`
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`Applicant.
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`MOTION FOR SUSPENSION IN VIEW OF CIVIL PROCEEDING
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`The parties are engaged in a civil action which will have a bearing on this proceeding.
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`Applicant, Hanover Prest-Paving Company DBA Hanover Architectural Products, a
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`Pennsylvania corporation (“Applicant”), filed the civil action against opposer, Tile Tech, Inc.
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`(“Opposer”). The case is currently pending. Accordingly, Opposer hereby requests suspension
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`of this proceeding pending a final determination of the civil action. Trademark Rule 2.117. In
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`support of this Motion, Applicant submits herewith Exhibit A, which is a copy of the Amended
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`Complaint filed by Applicant. The civil action is pending in United States District Court, Middle
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`District of Pennsylvania (Case 1:21-cv-00806-CCC) for, among other things, infringement of the
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`same trademark that is at issue in Applicant’s application opposed herein.
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`Whenever it comes to the attention of the Board that the parties to a case before it are
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`involved in a civil action which may be dispositive of the Board case, the proceedings before the
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`Board may be suspended upon final determination of the civil action. TBMP § 510.02(a). A
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`civil action need not be dispositive on the issues, however, for the Board to suspend
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`proceedings. Ordinarily, the Board will suspend proceedings in the case before it if the final
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`5259039.1
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`1
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`determination of the other proceedings may have a bearing on the issues before the Board.
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`TBMP § 510.02, citing 37 C.F.R. § 2.117(a); see, e.g., New Orleans Louisiana Saints LLC v.
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`Who Dat? Inc., 99 U.S.P.Q.2d 1550,1552 (TTAB 2011) (civil action need not be dispositive of
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`Board proceeding, but only needs to have bearing on issues before the Board).
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`In the Amended Complaint, Applicant alleges willful, deliberate infringement of its
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`American flag “trademark” by Opposer – the same trademark at issue in the opposed
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`Application. Additionally, in the Complaint, Applicant seeks a determination by the District
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`Court of priority and likelihood of confusion, and Opposer intends to assert defenses to
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`Applicant’s allegations on the same or similar grounds to the grounds for relief set forth in
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`Opposer’s Notice of Opposition in this proceeding.
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`Suspension of Board proceedings is within the discretion of the TTAB, and will generally
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`be granted when a final decision of the court will likely be controlling on the issues to be decided
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`by the TTAB. In Whopper Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807
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`(TTAB1971), the Board suspended proceedings, finding that “There can be no doubt ... that the
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`outcome of the civil action will have a direct bearing on the question of the rights of the parties
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`herein and may in fact completely resolve all the issues.” There can be no doubt that issues
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`involved in the civil action are involved here.
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`Conclusion
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`In view of the fact that the pending civil action involves the determination of priority,
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`likelihood of confusion, validity, and enforceability of Applicant’s trademark opposed herein,
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`and those issues will impact the pending trademark application and the opposition to the same,
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`the determination of these issues in the civil action will likely be dispositive of, or will at least
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`have bearing on, this proceeding. Opposer therefore respectfully requests suspension of these
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`proceedings pending determination of the civil action pursuant to Trademark Rule 2.117(a), 37
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`C.F.R. § 2.117(a).
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`Respectfully submitted,
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`FREEMAN, FREEMAN & SMILEY, LLP
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`5259039.1
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` By: /s/ Mark. B. Mizrahi
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` Mark B. Mizrahi
` Attorneys/Agents for Opposer
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`Date: March 2, 2022
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`FREEMAN, FREEMAN & SMILEY, LLP
`MARK B. MIZRAHI (CA BAR NO. 179384)
`mark.mizrahi@ffslaw.com you fact can
`1888 Century Park East, Suite 1500
`Los Angeles, California 90067
`Telephone: (310) 255-6100
`Facsimile: (310) 255-6200
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`5259039.1
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`CERTIFICATE OF SERVICE
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`I certify that I served:
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`MOTION FOR SUSPENSION IN VIEW OF CIVIL PROCEEDING
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`
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`on March 2,2022 by:
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`____ delivering
` X emailing
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` a
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` copy to:
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`Joseph R. Falcon III
`BARLEY SNYDER
`2 GREAT Valley Parkway
`Suite 110
`Malvern, Pennsylvania 19355
`berwynipdocket@barley.com
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` /s/
`Mark Mizrahi
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`5259039.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 1 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 1 of 21
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`FOR THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
`
`HANOVERPREST-PAVINGCO.t/a
`HANOVER ARCHITECTURAL
`PRODUCTS,
`
`Plaintiff
`
`:
`:
`:
`
`VS.
`
`TILE TECH,INC.
`
`Defendant
`
`CIVIL ACTION
`
`NO. 1:21-CV-00806-CCC
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`AMENDED COMPLAINT
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`Plaintiff Hanover Prest-Paving Company, trading as Hanover Architectural
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`Products (“Hanover”) hereby files this Amended Complaint for damages and
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`injunctive relief against Defendant Tile Tech,Inc. (“Tile Tech”), and hereby
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`alleges as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for patent infringement under the Patent Laws of
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`the United States, 35 U.S.C. §§ 1 etseq., and in particular arising under 35
`
`U.S.C. § 271. Tile Tech has infringed and continuesto infringe on United States
`
`Patent Nos. 8,667,747 and 8,381,461 (collectively “Hanover Patents”).
`
`8726745.1
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`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 2 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 2 of 21
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`2.
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`This is also an action for trademark infringement, for false designation
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`of origin and unfair competition in violation of Hanover’s establishedright,title
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`and interest in its trademark arising under commonlaw use and under the Lanham
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`Act, 15 U.S.C. §§ 1051, et seq., and unfair competition in violation of the laws of
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`the states in which Tile Tech conducts business, including the Commonwealth of
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`Pennsylvania, as a result of Tile Tech’s wrongful use of the aforesaid trademark of
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`Hanover.
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`3.
`
`Moreparticularly, Tile Tech has infringed ona distinctive, stylized
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`flag design of Hanover’s (the “HAP Stylized Trademark”) by placing an almost
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`identical logo to the HAP Stylized Trademark on Tile Tech’s products and
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`marketing materials.
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`4.
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`Accordingly, Hanover now bringsthis action against Tile Tech for
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`patent infringement, unfair competition, and trademark infringement under 35
`
`U.S.C. § 271, Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) and common
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`law of the Commonwealth of Pennsylvania.
`
`THE PARTIES
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`5.
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`Hanover is a Pennsylvania Corporation having a principal place of
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`business at 5000 Hanover Road, Hanover, Pennsylvania 17331.
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`8726745.1
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`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 3 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 3 of 21
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`6.
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`Tile Tech is a California Corporation with a principal place of
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`business at 4730 East 26" Street, Vernon, California 90058.
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`JURISDICTION AND VENUE
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`7.
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`This Court hasjurisdiction over the subject matter of this action under
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`28 U.S.C. §§ 1331, 1332 and 1338 (a) and Section 39 of the Lanham Act.
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`8.
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`This Court has personal jurisdiction over Tile Tech by virtue of the
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`fact that Tile Tech conducts substantial business in Pennsylvania.
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`9.
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`Tile Tech has specific pages on its website soliciting Pennsylvania-
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`based contractors, through whichit sells its Infringing Product, as defined infra.
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`10.
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`Tile Tech advertises that “[w]hen Philadelphia, PA contractors need
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`unique and innovative outdoor paver systems for their commercial enterprise, they
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`come to Tile Tech Pavers.”
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`11.
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`Separately, Tile Tech advertises that “Pittsburgh [Pennsylvania]
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`contractors know that they can trust Tile Tech Pavers for high-quality and durable
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`products that will elevate any residential or commercial project.”
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`12.
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`Tile Tech purposefully availsitself to the privilege of conducting
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`business in the Commonwealth of Pennsylvania, andit is its advertising and sale of
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`products in Pennsylvaniathat givesrise to this action,in part.
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`8726745.1
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`

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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 4 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 4 of 21
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`13. Moreover, Tile Tech’s unlawful and tortious conduct complained of
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`herein has caused, and continues to cause, injury to Hanover within Pennsylvania
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`andthis District.
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`14.
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`Venuein this Court is proper under 28 U.S.C. § 1391(b)(2) because a
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`substantial part of the events giving rise to the claims occurred in this District.
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`FACTUAL BACKGROUND
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`15.
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`Hanoveris a 50-year-old manufacturer of quality concrete unit paving
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`products.
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`16. Hanover designed and developed a unique bracing arm and assembly
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`for use in the installation of paving stones, which it patented under the Hanover
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`Patents.
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`17. Hanover ownsthe entire righttitle and interest in the HanoverPatents.
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`18. Hanover likewise ownsanduses a proprietary and recognizable HAP
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`Stylized Trademark for its products, which is regularly used for decades and
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`immediately recognizable to its customers.
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`19.
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`Hanoverhasinvested significant time, energy, and moneyadvertising,
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`promoting, and selling products that are patented under the HanoverPatents and
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`8726745.1
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`

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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 5 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 5 of 21
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`HAPStylized Trademark, as well as ensuring the high quality of products it sells
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`under HanoverPatents and trademarks.
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`20.
`
`21.
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`Tile Tech wasincorporated four years ago in 2015.
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`Since Tile Tech beganits operations, it has attempted to replicate the
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`successful business of Hanoveron the west coast of the United States.
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`22.
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`In doingso, it has taken willful actions to capitalize on the time,
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`energy, advertising, and brand recognition developed by Hanoveroverthe past
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`half-century.
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`23.
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`Tile Tech has deliberately infringed on the Hanover Patents and the
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`HAPStylized Trademark in an effort to profit on Hanover’s efforts and success.
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`U.S. Patent No. 8,667,747
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`24.
`
`U.S. Patent No. 8,667,747 (hereinafter referred to as the “’747
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`Patent”) is generally directed to a stabilizing bar usedto restrain relative movement
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`of pedestals of a deck or floor support system. A copy of the ‘747 Patentis
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`attached hereto as Exhibit A.
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`25.
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`Tile Tech recently began to manufacture andsell a bracing arm that
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`infringes on the patent (the “Infringing Product”), as shown in Exhibit B.
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`8726745.1
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`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 6 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 6 of 21
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`26.
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`The bracing arm is a componentof Tile Tech’s pedestal paver system
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`(the “Infringing System”), as shown in Exhibit B.
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`27,
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`Tile Tech has offered to sell and sold the Infringing Product and
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`Infringing System within the United States.
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`28.
`
`Claim 1 of the ‘747 patent recites:
`
`A stabilizing bar for connecting adjacent pedestals comprising:
`a first part;
`a secondpart sized to receivethefirst part therein such that the
`first part and the second part form an expandable shaft
`having:
`(1) a body having opposing ends,
`(2) a pair of projecting end portions positioned near the
`opposing endsofthe body, each ofthe pair of projecting
`end portions extending substantially perpendicular from a
`bottom surface of the body and engageable with a
`supporting surface of each of the connecting adjacent
`pedestals, and
`(3) a profiled portion having a raised portion in a substantial
`mid-section of the body and positioned between the pair
`of projecting end portions;
`a fastener for connecting the first part with the second part;
`a first securing opening extending through a bottom surface of
`one projecting end portion of the pair of projecting end
`portions and having a correspondinginnerprofile for
`frictionally engaging a projection integrally formed on
`one of the connecting adjacent pedestals,the first
`securing opening positioned and extending perpendicular
`to a longitudinal axis of the opposing ends,the first
`securing opening located near an end face ofeither part
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`8726745.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 7 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 7 of 21
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`and opposite a juncture betweenthe first and second
`parts; and
`a second securing opening extending from a bottom surface of
`another projecting end portion ofthe pair of projecting
`end portions located opposite the first securing opening.
`
`29.
`
`Independent claim 29 of the ‘747 patent recites:
`
`A stabilizing bar for connecting adjacent pedestals comprising:
`an elongated body having:
`a first securing opening extending from a bottom surface
`and located near an endface of the elongated body and a second
`securing opening extending from the bottom surface and located
`opposite the first securing opening at another end face;
`a profiled portion having a raised portion in a substantial
`mid-section of the elongated body; and
`a pair of projecting end portions positioned near opposing
`end faces of the elongated body and engageable with the
`connecting adjacent pedestals and havingsteps located at
`opposite endsof the raised portion wherebythe raised portion is
`open along opposite lateral sides of the elongated body;
`wherein the first and second securing openingsare
`positioned perpendicular to a longitudinal axis of the end faces.
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`30.
`
`Independent claim 45 of the ‘747 patent recites:
`
`A stabilizing bar for connecting adjacent pedestals comprising:
`an elongated body; and
`a pair of projecting end portions positioned at opposing end faces of
`the elongated body and extending substantially perpendicular with
`respect to a longitudinal axis of the elongated body to provide a
`profiled portion with a raised portion having a bottom surface
`positioned above the bottom surface ofthe pair of projecting end
`portions and having elongated openings disposed alonglateral sides
`thereof and extending between the pair of projecting end portions,
`each ofthe pair of projecting end portions having:
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`8726745.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 8 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 8 of 21
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`a stepped like part extending from the raised portion which
`engages a flange surface extending from a postof one ofthe
`connecting adjacent pedestals;
`a contoured end face positioned substantially perpendicular to
`the stepped like part and curved to correspond toa profile of the post;
`and
`
`a pair of securing openings extending from a bottom surface of
`the elongated body and engageable with protuberances disposed on
`the flange and extending substantially parallel to the post.
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`31.
`
`The Infringing Product meets each and every elementofat least
`
`Claims 1, 29, and 45 of the ‘747 Patent.
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`32.
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`Tile Tech has been aware of the ‘747 Patent andits infringement
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`thereof since at least December 2019, when undersigned counsel sent Tile Tech
`
`correspondence whichspecifically identified the ‘747 Patent and the Infringing
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`Product.
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`U.S. Patent No. 8,381,461
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`33. U.S. Patent No. 8,381,461 (hereinafter referred to as the “‘461
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`Patent”) is generally directed to a pedestal and stabilizing system, which includes
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`the bar discussed above with respect to the ‘747 Patent. A copy of the ‘461 Patent
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`is attached hereto as Exhibit C.
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`34.
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`The Infringing System infringesat least claim 1 of the ‘461 Patent.
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`35.
`
`Independent claim 1 of the ‘461 Patent reads:
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`8726745.1
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`

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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 9 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 9 of 21
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`A stabilizing system for a deck system comprising a plurality of
`pedestals, each of the pedestals supporting corner portions of adjacent
`blocks, pavers or panels a spaced distance above an underlying structure
`extending generally parallel to the blocks, pavers or panels, and each
`pedestal having a support having a plate with defined separate quadrants
`to support the corner portions and a substantially cylindrical post
`extending from a lowersurface ofthe plate, a base positioned at a lower
`end thereof and having a base plate and a base post extending from the
`baseplate, a coupler that adjustably interconnects the support and the
`base, the coupler having a connection portion to engage with the base
`post, a flange extending substantially orthogonal from the connection
`portion, and a plurality of projections extending from a surface of the
`flange, and a stabilizing membersecured to and extending betweenat
`least two ofthe plurality of pedestals, the stabilizing member having end
`faces and a projection receiving memberdisposed at each end face to
`frictionally fit with one of the plurality of projections.
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`36.
`
`The Infringing System meets each and every elementofat least Claim
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`1 of the ‘461 Patent.
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`37.
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`Tile Tech has been awareof the ‘461 Patent andits infringement
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`thereof since at least December 2019, when undersigned counsel sent Tile Tech
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`correspondence whichspecifically identified the ‘461 Patent and the Infringing
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`System.
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`38.
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`In an apparent recognition ofthe infringing nature ofits stabilizing
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`bar and pedestal system, Tile Tech has continued to attemptto alter its designs.
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`8726745.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 10 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 10 of 21
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`39.
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`In addition to the Infringing Product and Infringing System, Tile Tech
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`maysell other products whose components infringe on the ‘747 and/or ‘461
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`Patents in the same or different ways.
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`HAPStylized Trademark
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`40. Onor about September 12, 2002, Hanover created the HAP Stylized
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`Trademarkto be placed on its products to indicate that the products were
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`“American Made.”
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`41.
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`This distinctive, stylized flag design of the HAP Stylized Trademark
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`has been used for nearly twenty years, and customers have grown accustomedto
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`the mark.
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`42.
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`The HAP Stylized Trademarkappears onits products as follows in
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`
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`Figure |:
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`8726745.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 11 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 11 of 21
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`43.
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`The HAPStylized Trademark as shownin Figure | is inherently
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`distinctive with a secondary meaning andis a valid and legally protectable
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`commonlaw trademark owned by Hanover.
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`44. Atall relevant times after September 2002, Hanoverhas continued the
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`use of the HAP Stylized Trademark on its products and marketing materials.
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`45.
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`Tile Tech has copied the HAP Stylized Trademark,placing it on Tile
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`Tech’s products, and causing substantial marketplace confusion.
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`46.
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`Tile Tech’s replication of the HAP Stylized Trademark(the “Tile
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`Tech Replication”) appears on Tile Tech’s products as followsin Figure 2:
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`
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`FIG, 2.
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`47.
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`The Tile Tech Replication is a blatant reproduction of the HAP
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`Stylized Trademark.
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`48.
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`The Tile Tech Replication was not approved for sale or production by
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`Hanover.
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`8726745.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 12 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 12 of 21
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`Tile Tech’s Repeated Infringement on the Hanover Patents and Trademark
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`49.
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` Atthe time Tile Tech chose to produce, manufacture, advertise, and
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`sell the Infringing Product and Infringing System, it was well-aware of Hanover’s
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`rights andits infringement.
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`50.
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`Beginning in October 2019, Hanoversent Tile Tech multiple
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`correspondencesnotifying it of its patent infringement and demandingthatit
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`immediately remove the products infringing on the HanoverPatents from the
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`marketplace.
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`51.
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`Tile Tech has nevertheless willfully refused to take any action to abate
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`its continuing infringements and violations of Hanover’s rights.
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`52.
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`Tile Tech continues to produceits Infringing Product and Infringing
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`System and continues to mark its products and advertising materials with the HAP
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`Stylized Trademark.
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`53. Despite Tile Tech committing to cease use of the HAP Stylized
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`Trademark, Tile Tech continues to use this trademark.
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`54.
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`Tile Tech’s conduct is willful and represents a conscious disregard for
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`Hanover’s rights and a calculated decision to misappropriate Hanover’s goodwill.
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`8726745.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 13 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 13 of 21
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`55.
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`Indeed, Tile Tech previously has intentionally stolen a photograph
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`from Hanover’s website and had usedit to advertise a different product for sale on
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`Tile Tech’s website.
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`56. After communication from Hanover, Tile Tech removed the
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`photograph.
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`57. Nonetheless, this demonstrates a pattern of willful infringement of
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`Hanover’s intellectual property with no regard for Hanover’s rights therein and an
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`attempt to simply copy Hanover’s successful business instead of fairly competing
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`in its own right.
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`58.
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`Tile Tech’s conductis likely to cause and, upon information and
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`belief, has caused customers to believe mistakenly that the Infringing Product and
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`Infringing System are either affiliated with, endorsed or authorized by, or
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`somehow connected to Hanover.
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`COUNT ONE:
`PATENT INFRINGEMENT
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`59.
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`Hanoverrepeats and realleges all foregoing paragraphsasiffully set
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`forth herein.
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`8726745.1
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`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 14 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 14 of 21
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`60.
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`Tile Tech has directly infringed, and continuesto directly infringe at
`
`least claims 1, 29, and 45 of the ‘747 Patent by its manufacture, sale, and
`
`advertisementof the Infringing Product.
`
`61.
`
`Tile Tech has directly infringed, and continuesto directly infringe at
`
`least claim 1 of the ‘461 Patent by its manufacture, sale, and advertisement of the
`
`Infringing System.
`
`62.
`
`Tile Tech’s infringement of the Hanover Patents has been and
`
`continuesto be willful under 35 U.S.C. § 284 because Tile Tech has acted with
`
`knowledge of the Hanover Patents and knowledgethat their actions constitute
`
`infringement of the Hanover Patents, or have at least acted with knowledge of an
`
`objectively high likelihood that their actions constitute infringementof the
`
`Hanover Patents.
`
`63.
`
`Tile Tech’s actions render this an exceptional case under 35 U.S.C.§
`
`285.
`
`64. Hanover has complied with the statutory requirement of giving notice
`
`of the HanoverPatents to Tile Tech by sending correspondence beginning in
`
`December 2019 to Tile Tech, in which Hanoveridentified and provided a copy of
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 15 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 15 of 21
`
`the HanoverPatents and alleged that the Infringing Product and Infringing System
`
`infringed on the HanoverPatents.
`
`COUNT TWO:
`UNFAIR COMPETITION UNDER THE LANHAM ACT
`
`65.
`
`Hanoverrepeats andreallegesall foregoing paragraphsas iffully set
`
`forth herein.
`
`66.
`
`Tile Tech’s use of the HAP Stylized Trademark to promote, market,
`
`or sell its products or services in direct competition with Hanoverconstitutes unfair
`
`competition pursuant to 15 U.S.C. § 1125(a). Tile Tech uses Hanover’s HAP
`
`Stylized Trademark in interstate commerce.
`
`67.
`
`Tile Tech’s use of Hanover’s HAPStylized Trademark on its products
`
`goodsorservices, or any container for goods, used in commerceislikely to cause
`
`confusion, mistake, and deception among consumers.
`
`68.
`
`Tile Tech’s unfair competition has caused and will continue to cause
`
`damage to Hanoverfor which there is no adequate remedyat law.
`
`69.
`
`Tile Tech’s statements and intentional and unlawful use of Hanover’s
`
`HAPStylized Trademark constitutes a false designation oforigin, false
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 16 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 16 of 21
`
`description, and false representation that Tile Tech and its products are sponsored
`
`by, authorized, or affiliated with Hanover.
`
`70.
`
`Tile Tech’s willful actions are calculated to cause confusion and are
`
`likely to cause confusion or mistakeas to the true origin, source, sponsorship, or
`
`affiliation of Tile Tech’s products with Hanover.
`
`71.
`
`By reason of Tile Tech’s bad faith and willful infringement, Hanover
`
`is entitled to recover actual damages,treble damages, an accountingforprofits,
`
`attorneys’ fees and costs ofthis litigation pursuant to 15 U.S.C. § 1117.
`
`COUNT THREE:
`COMMON LAW UNFAIR COMPETITION
`
`72.
`
`Hanoverrepeats andreallegesall foregoing paragraphsasif fully set
`
`forth herein.
`
`73.
`
`Throughits conduct, Tile Tech’s patent and trademark infringement
`
`constitutes an unfair competition practice.
`
`74.
`
`Tile Tech’s blatant infringement on Hanover’s patented product
`
`designs and HAPStylized Trademark constitute a false or misleading
`
`representation whichis likely to deceive consumersasto the origin ofits goods.
`
`75.
`
`Tile Tech is attemptingto passoff its goods as those of Hanover.
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 17 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 17 of 21
`
`76.
`
`Tile Tech’s willful actions are calculated to cause confusion and are
`
`likely to cause confusion or mistakeasto the true origin, source, sponsorship, or
`
`affiliation of Tile Tech’s products with Hanover.
`
`77. As Tile Tech entered a field already occupied bya rival of established
`
`reputation, it was underan obligation to “do nothing which will unnecessarily
`
`create or increase confusion between[its] goods or business and the goodsor
`
`business of[its] rival.” Pennsylvania Cent. Brewing Co. v. Anthracite Beer Co.,
`
`101 A. 925,926 (Pa. 1917).
`
`78.
`
`Instead of complying with its obligations, Tile Tech has instead
`
`attempted to capitalize on the labor, creativity, and hard-fought reputation of
`
`Hanoverby infringing on its patents and trademark.
`
`79.
`
`This conduct constitutes unfair competition and entitles Hanoverto
`
`injunctive relief and damages.
`
`COUNT FOUR:
`COMMON LAW TRADEMARK INFRINGEMENT
`
`80.
`
`Hanoverrepeats and realleges all foregoing paragraphsasif fully set
`
`forth herein.
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 18 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 18 of 21
`
`81. Hanover’s HAP Stylized Trademark has become recognized by the
`
`general public as identifying the goods, services and/or goodwill of Hanover.
`
`82.
`
`83.
`
`The markis valid andlegally protectable.
`
`Tile Tech has used Hanover’s HAP Stylized Trademark without
`
`Hanover’s consentor authorization.
`
`84.
`
`Tile Tech’s use of this trademarkis likely to cause confusion and
`
`mistake in the mindofthe public, leading the public to believe that Tile Tech’s
`
`products are the sameas those of Hanoveror that Hanoverhas sponsoredor
`
`otherwise associated itself with Tile Tech.
`
`85.
`
`Tile Tech’s use of the HAP Stylized Trademark constitutes an
`
`infringement of Hanover’s commonlaw rights in this mark.
`
`86.
`
`Tile Tech’s use of the mark “American Made”constitutes intentional
`
`and willful conduct.
`
`87. Asaresult of Tile Tech’s conduct, Hanover has suffered actual
`
`damages.
`
`CLAIM FOR RELIEF
`
`HanoverArchitectural Products respectfully requests that this Court award
`
`the followingrelief:
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 19 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 19 of 21
`
`A.—Enter a permanentinjunction enjoining and restraining Tile Tech,Inc.
`
`from:
`
`a.
`
`Manufacturing, producing, advertising,or selling the Infringing
`
`Product and the Infringing System;
`
`b.
`
`Using the Tile Tech Replication of the Hanover HAPStylized
`
`Trademark;
`
`B.
`
`Anaccounting and judgmentagainst Tile Tech forall profits or other
`
`incomereceived from or in connection with the Infringing Product and the
`
`Infringing System;
`
`C.|Damages sustained by Hanover on account of Tile Tech’s trademark
`
`infringement, unfair competition, false designation of origin includingtreble
`
`damages, punitive damages, interest, and attorneys’ fees, costs, and expenses;
`
`D.
`
`Statutory damages;
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 20 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 20 of 21
`
`E.
`
`Such other and furtherrelief as the equities of the case may require
`
`and as this Court may deem just and proper underthe circumstances.
`
`BARLEY SNYDER
`
`By: /s/ Justin A. Tomevi
`Justin Tomevi, Esquire (313661)
`jtomevi@barley.com
`Lindsey M. Cook, Esquire (323326)
`lcook@barley.com
`100 East Market Street
`York, PA 17401
`717-846-8888
`Fax: 717-843-8492
`Attorneys for Plaintiff
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 21 of 21
`Case 1:21-cv-00806-CCC Document 27 Filed 08/03/21 Page 21 of 21
`
`CERTIFICATE OF SERVICE
`
`The foregoing documenthasalso been filed electronically and is available for viewing
`
`and downloading on the ECF System.
`
`James F. Lynn, Esquire
`Kevin E. Monastra, Esquire
`Kiernan Trebach, LLP
`Ten Penn Center Plaza, Suite 770
`1801 Market Street
`Philadelphia, PA 19103
`
`BARLEY SNYDER
`
`By: /s/Justin A. Tomevi
`Justin Tomevi, Esquire (313661)
`jtomevi@barley.com
`Lindsey M. Cook, Esquire (323326)
`lcook@barley.com
`100 East Market Street
`York, PA 17401
`717-846-8888
`Fax: 717-843-8492
`Attommeys for Plaintiff
`
`8726745.1
`
`

`

`Case 1:21-cv-00806-CCC Document 27-1 Filed 08/03/21 Page 1 of 13
`Case 1:21-cv-00806-CCC Document 27-1 Filed 08/03/21 Page 1 of 13
`
`EXHIBIT A
`
`

`

`Case 1:21-cv-00806-CCC Document 27-1 Filed 08/03/21 Page 2 of 13
`Case 1:21-cv-00806-CCC Document 27-1 Filed 08/03/21 Page 2 of 13
`
`A67
`
`(12)
`
`United States Patent
`Repasky
`
`(10) Patent No.:
`(45) Date of Patent:
`
`US 8,667,747 B2
`*Mar. 11, 2014
`
`(54)
`
`STABILIZING SYSTEM FOR DECK
`PEDESTALS
`
`(76)
`
`laventor:
`
`John Repasky, Hanover, PA (US)
`
`(*)
`
`Notice:
`
`Subject to any disclaimer, the term ofthis
`patent is extended or adjusted under 35
`U.S.C. 154(b) by 0 days.
`
`This patent is subject to a terminal dis-
`claimer.
`
`(21)
`
`Appl. No.: 13/032,995
`
`(22)
`
`Filed:
`
`Feb. 23, 2011
`
`(65)
`
`(63)
`
`(51)
`
`(52)
`
`(58)
`
`(56)
`
`Prior Publication Data
`
`US 201 1/0138723 Al
`
`Jun. 16, 2011
`
`Related U.S. Application Data
`Continvation of application No. 12/417,942, filed on
`Apr. 3, 2009, now Pat. No. 8,381,461.
`
`(2006.01)
`(2606.01)
`
`Int. Cl.
`EO4B 9/00
`EGdC 3/00
`US. Cl.
`USPC wicccsrscssstcsesesseesenenes §2/126.S: 52/836; 52/845
`Field of Classification Search
`USPC .......0 52/835, 836, 838, 844, 845, 848, 854,
`52/855, 638, 641, 645, 651.1, 695, 693,
`52/126.1, 126.5, 126.6
`See applicationfile for complete search history.
`
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`
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`
`(Continued)
`OTHER PUBLICATIONS
`
`Bison, “Bison Deck Supports ScrewJack B Series Specifications”,
`pp. 1-4, Oct. 6, 2005.
`Bison, “Bison ScrewJack B Series Pedestals”, pp. 1-2, Sep. 30, 2005.
`Elmich, “VersiJack”, 9 pages, Oct. 9, 2006.
`Wausau Tile, “Pedestal/Roof Deck System Co