ESTTA Tracking number:
`
`ESTTA1326334
`
`Filing date:
`
`12/04/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91287838
`
`Party
`
`Correspondence
`address
`
`Defendant
`Hi-Tech Pharmaceuticals, Inc.
`
`JESSICA H. LEACH
`THE LAW OFFICE OF ARTHUR W. LEACH
`4080 MCGINNIS FERRY RD, SUITE 401
`ALPHARETTA, GA 30005
`UNITED STATES
`Primary email: jessica@arthurwleach.com
`Secondary email(s): trademarks@arthurwleach.com
`678-799-0474
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Jessica H. Leach
`
`Jessica@arthurwleach.com
`
`/Jessica H. Leach/
`
`12/04/2023
`
`Attachments
`
`HT v. JBN - Motion to Suspend.pdf(795439 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`)
`
`
`Nutrition Resource Services Inc.
`)
`
`
`d/b/a JBN - Just Be Natural,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Opposer,
`
`)
`
`
`
`
`
`
`
`)
`
`
`v.
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`
`Hi-Tech Pharmaceuticals, Inc.,
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`Applicant.
`
`__________________________________________)
`
`
`Opposition No. 91287838
`
`
`
`
`
`
`
`MOTION TO SUSPEND PROCEEDINGS
`
`PENDING DISPOSITION OF CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Applicant Hi-Tech
`
`Pharmaceuticals, Inc. (“Hi-Tech”) hereby moves the Board to suspend proceedings in this matter
`
`pending final disposition of related a civil action in the federal district court for the Northern
`
`District of Georgia. The Complaint in that matter, which was filed by Hi-Tech against Opposer,
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`is attached as Exhibit 1 hereto1 and seeks declaratory judgments of non-infringement and
`
`abandonment. Disposition of this civil action will have a bearing on the issues before the Board.
`
`The Board is empowered to suspend an opposition proceeding pending the final
`
`determination of any civil action that “may have a bearing” on the Board case. See TBMP §
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`510.02(a). In fact, “[i]t is the policy of the Board to suspend proceedings when the parties are
`
`involved in a civil action which may be dispositive of or have a bearing on the Board proceeding.”
`
`Monster Energy Company v. Martin, 125 USPQ2d 1774 (TTAB 2018) (citing TBMP § 510.02(a)).
`
`
`1 Case initiating documents for the civil action were filed immediately prior to the filing of this
`Motion. As such, a case number has yet to be assigned and the ECF stamp appearing on the
`Complaint will later be updated to reflect an updated case number.
`
`

`

`Absent “unusual circumstances” the Board grants motions to suspend under these circumstances
`
`because “judicial economy is usually served by suspension.” TBMP § 510.02(a).
`
`The Board routinely grants suspension in cancellation proceedings instituted before the
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`civil action. See Tokaido v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973) (reasoning
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`“notwithstanding the fact that the Patent Office proceeding was the first to be filed, it is deemed
`
`to be the better policy to suspend proceedings herein until the civil suit has been finally
`
`concluded.”); see also Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 806-807
`
`(TTAB 1971).2
`
`No unusual circumstance exists in this matter warranting a shift from the Board’s policy
`
`of suspending proceedings pending disposition of a civil action between the parties. The ongoing
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`litigation in District Court involves the same parties, the same trademark application and
`
`registrations, seeks declaratory judgments concerning the same claims, and involves overlapping
`
`factual and legal issues, and its determination will undoubtedly have a bearing on this case. There
`
`is no reason for the Board or the parties to expend resources in this second forum pending final
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`determination of the civil action, and immediate suspension of the proceedings will promote
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`judicial economy.
`
`For these reasons, Hi-Tech respectfully requests that the Board enter an order suspending
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`this matter pending disposition of the federal litigation in the Northern District of Georgia.
`
`
`
`
`
`
`2 Although the United States Supreme Court has since rejected reasoning set out in Tokaido and
`Whopper-Burger, that TTAB decisions are not binding on district courts, “the Board’s policy to
`suspend in favor of a civil action has not changed.” TBMP § 510.02(a) (citing B & B Hardware,
`Inc. v. Hargis Indus., Inc., 575 U.S. 138, 160 (2015)).
`
`
`
`2
`
`

`

`Date: December 4, 2023
`
`Respectfully submitted,
`
`/s/ Jessica H. Leach
`Jessica H. Leach
`Georgia Bar No. 742326
`Jessica@ArthurWLeach.com
`The Law Office of Arthur W. Leach
`4080 McGinnis Ferry Rd, Suite 401
`Alpharetta, GA 30005
`Phone: (678) 799-0474
`
`Attorney for Applicant
`Hi-Tech Pharmaceuticals, Inc.
`
`3
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 4, 2023 a true and correct copy of the foregoing has
`
`been served via email upon Opposer's correspondent of record at all email addresses on file in
`
`this proceeding.
`
`/s/ Jessica H. Leach
`Jessica H. Leach, Esq.
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 1:23-mi-99999-UNA Document 3984-1 Filed 12/04/23 Page 1 of 2
`CIVIL COVER SHEET
`JS44 (Rev. 10/2020 NDGA)
`
`The JS44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by
`local rules of court. This form is required for the use of the Clerk of Court for the purpose of initiating the civil docket record. (SEE INSTRUCTIONS ATTACHED)
`
`I. (a) PLAINTIFF(S)
`HI-TECH PHARMACEUTICALS, INC.
`
`DEFENDANT(S)
`NUTRITION RESOURCE SERVICES, INC.
`d/b/a JBN – JUST BE NATURAL
`
`(b) COUNTY OF RESIDENCE OF FIRST LISTED
`GWINNETT
`PLAINTIFF
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`COUNTY OF RESIDENCE OF FIRST LISTED
`DEFENDANT
` (IN U.S. PLAINTIFF CASES ONLY)
`
`(c) ATTORNEYS (FIRM NAME, ADDRESS, TELEPHONE NUMBER, AND
`
`
`E-MAIL ADDRESS)
`
`ATTORNEYS (IF KNOWN)
`
`NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND
`INVOLVED
`
`Arthur W. Leach, The Law Office of Arthur W. Leach
`4080 McGinnis Ferry Road, Suite 401
`Alpharetta, Georgia 30005
`404-786-6443
`art@arthurwleach.com
`
`II. BASIS OF JURISDICTION
`(PLACE AN “X” IN ONE BOX ONLY)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES
`(PLACE AN “X” IN ONE BOX FOR PLAINTIFF AND ONE BOX FOR DEFENDANT)
`
` PLF DEF
`
`PLF DEF
`
`(FOR DIVERSITY CASES ONLY)
`
` 1 U.S. GOVERNMENT
` PLAINTIFF
`
` 2 U.S. GOVERNMENT
` DEFENDANT
`
`3 FEDERAL QUESTION
`(U.S. GOVERNMENT NOT A PARTY)
`
`4 DIVERSITY
`(INDICATE CITIZENSHIP OF PARTIES
`IN ITEM III)
`
`1
`
`2
`
`3
`
`1 CITIZEN OF THIS STATE
`
`4
`
`4 INCORPORATED OR PRINCIPAL
` PLACE OF BUSINESS IN THIS STATE
`
`2 CITIZEN OF ANOTHER STATE 5
`
`5 INCORPORATED AND PRINCIPAL
`PLACE OF BUSINESS IN ANOTHER STATE
`
`3 CITIZEN OR SUBJECT OF A 6
`FOREIGN COUNTRY
`
` 6 FOREIGN NATION
`
`✔✔
`
`IV. ORIGIN (PLACE AN “X “IN ONE BOX ONLY)
`
`TRANSFERRED FROM
`2 REMOVED FROM 3 REMANDED FROM 4 REINSTATED OR 5 ANOTHER DISTRICT
` 1 ORIGINAL
`PROCEEDING STATE COURT
`APPELLATE COURT REOPENED
` (Specify District)
`
`MULTIDISTRICT APPEAL TO DISTRICT JUDGE
`6 LITIGATION - 7 FROM MAGISTRATE JUDGE
`TRANSFER
`JUDGMENT
`
`MULTIDISTRICT
`
` 8 LITIGATION -
`
`DIRECT FILE
`
`V. CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSE - DO NOT CITE
`JURISDICTIONAL STATUTES UNLESS DIVERSITY)
`
`Plaintiff seeks judicial declarations pursuant to 28 U.S.C. §§ 2201 and 2202 that: (1) it has not and does not infringe any
`trademark held by Defendant; and (2) Defendant has abandoned the relevant trademarks and, therefore, lacks any
`protectable interest in them.
`
`(IF COMPLEX, CHECK REASON BELOW)
`
`1. Unusually large number of parties.
`
`6. Problems locating or preserving evidence
`
`2. Unusually large number of claims or defenses.
`
`7. Pending parallel investigations or actions by government.
`
`3. Factual issues are exceptionally complex
`
`8. Multiple use of experts.
`
`4. Greater than normal volume of evidence.
`
`9. Need for discovery outside United States boundaries.
`
`5. Extended discovery period is needed.
`
`10. Existence of highly technical issues and proof.
`
`FOR OFFICE USE ONLY
`
`RECEIPT #
`
`JUDGE
`
`AMOUNT $
`
`MAG. JUDGE
`
`(Referral)
`
`CONTINUED ON REVERSE
`
` APPLYING IFP
`
` MAG. JUDGE (IFP) ______________________
`
`NATURE OF SUIT
`
` CAUSE OF ACTION______________________
`
`✔✔
`

`

`Case 1:23-mi-99999-UNA Document 3984-1 Filed 12/04/23 Page 2 of 2
`
`VI. NATURE OF SUIT (PLACE AN “X” IN ONE BOX ONLY)
`
`CONTRACT - "0" MONTHS DISCOVERY TRACK
`150 RECOVERY OF OVERPAYMENT &
` ENFORCEMENT OF JUDGMENT
`152 RECOVERY OF DEFAULTED STUDENT
` LOANS (Excl. Veterans)
`153 RECOVERY OF OVERPAYMENT OF
` VETERAN'S BENEFITS
`
`CONTRACT - "4" MONTHS DISCOVERY TRACK
`110 INSURANCE
`120 MARINE
`130 MILLER ACT
`140 NEGOTIABLE INSTRUMENT
`151 MEDICARE ACT
`160 STOCKHOLDERS' SUITS
`190 OTHER CONTRACT
`195 CONTRACT PRODUCT LIABILITY
`196 FRANCHISE
`
`REAL PROPERTY - "4" MONTHS DISCOVERY
`TRACK
`
`210 LAND CONDEMNATION
`220 FORECLOSURE
`230 RENT LEASE & EJECTMENT
`240 TORTS TO LAND
`245 TORT PRODUCT LIABILITY
`290 ALL OTHER REAL PROPERTY
`
`TORTS - PERSONAL INJURY - "4" MONTHS
`DISCOVERY TRACK
`310 AIRPLANE
`315 AIRPLANE PRODUCT LIABILITY
`320 ASSAULT, LIBEL & SLANDER
`330 FEDERAL EMPLOYERS' LIABILITY
`340 MARINE
`345 MARINE PRODUCT LIABILITY
`350 MOTOR VEHICLE
`355 MOTOR VEHICLE PRODUCT LIABILITY
`360 OTHER PERSONAL INJURY
`362 PERSONAL INJURY - MEDICAL
` MALPRACTICE
`365 PERSONAL INJURY - PRODUCT LIABILITY
`367 PERSONAL INJURY - HEALTH CARE/
` PHARMACEUTICAL PRODUCT LIABILITY
`368 ASBESTOS PERSONAL INJURY PRODUCT
` LIABILITY
`
`TORTS - PERSONAL PROPERTY - "4" MONTHS
`DISCOVERY TRACK
`370 OTHER FRAUD
`371 TRUTH IN LENDING
`380 OTHER PERSONAL PROPERTY DAMAGE
`385 PROPERTY DAMAGE PRODUCT LIABILITY
`
`BANKRUPTCY - "0" MONTHS DISCOVERY TRACK
`422 APPEAL 28 USC 158
`423 WITHDRAWAL 28 USC 157
`
`CIVIL RIGHTS - "4" MONTHS DISCOVERY TRACK
`440 OTHER CIVIL RIGHTS
`441 VOTING
`442 EMPLOYMENT
`443 HOUSING/ ACCOMMODATIONS
`445 AMERICANS with DISABILITIES - Employment
`446 AMERICANS with DISABILITIES - Other
`448 EDUCATION
`
`SOCIAL SECURITY - "0" MONTHS DISCOVERY
`TRACK
`
`861 HIA (1395ff)
`862 BLACK LUNG (923)
`863 DIWC (405(g))
`863 DIWW (405(g))
`864 SSID TITLE XVI
`865 RSI (405(g))
`
`IMMIGRATION - "0" MONTHS DISCOVERY TRACK
`462 NATURALIZATION APPLICATION
`465 OTHER IMMIGRATION ACTIONS
`
`FEDERAL TAX SUITS - "4" MONTHS DISCOVERY
`TRACK
`
`870 TAXES (U.S. Plaintiff or Defendant)
`871 IRS - THIRD PARTY 26 USC 7609
`
`PRISONER PETITIONS - "0" MONTHS DISCOVERY
`TRACK
`
`OTHER STATUTES - "4" MONTHS DISCOVERY
`TRACK
`
`463 HABEAS CORPUS- Alien Detainee
`510 MOTIONS TO VACATE SENTENCE
`530 HABEAS CORPUS
`535 HABEAS CORPUS DEATH PENALTY
`540 MANDAMUS & OTHER
`550 CIVIL RIGHTS - Filed Pro se
`555 PRISON CONDITION(S) - Filed Pro se
`560 CIVIL DETAINEE: CONDITIONS OF
` CONFINEMENT
`
`PRISONER PETITIONS - "4" MONTHS DISCOVERY
`TRACK
`
`550 CIVIL RIGHTS - Filed by Counsel
`555 PRISON CONDITION(S) - Filed by Counsel
`
`FORFEITURE/PENALTY - "4" MONTHS DISCOVERY
`TRACK
`
`625 DRUG RELATED SEIZURE OF PROPERTY
` 21 USC 881
`690 OTHER
`
`LABOR - "4" MONTHS DISCOVERY TRACK
`710 FAIR LABOR STANDARDS ACT
`720 LABOR/MGMT. RELATIONS
`740 RAILWAY LABOR ACT
`751 FAMILY and MEDICAL LEAVE ACT
`790 OTHER LABOR LITIGATION
`791 EMPL. RET. INC. SECURITY ACT
`
`PROPERTY RIGHTS - "4" MONTHS DISCOVERY
`TRACK
`
`820 COPYRIGHTS
`840 TRADEMARK
`880 DEFEND TRADE SECRETS ACT OF 2016 (DTSA)
`
`PROPERTY RIGHTS - "8" MONTHS DISCOVERY
`TRACK
`
`830 PATENT
`835 PATENT-ABBREVIATED NEW DRUG
`APPLICATIONS (ANDA) - a/k/a
`Hatch-Waxman cases
`
`375 FALSE CLAIMS ACT
`376 Qui Tam 31 USC 3729(a)
`400 STATE REAPPORTIONMENT
`430 BANKS AND BANKING
`450 COMMERCE/ICC RATES/ETC.
`460 DEPORTATION
`470 RACKETEER INFLUENCED AND CORRUPT
` ORGANIZATIONS
`480 CONSUMER CREDIT
`485 TELEPHONE CONSUMER PROTECTION ACT
`490 CABLE/SATELLITE TV
`890 OTHER STATUTORY ACTIONS
`891 AGRICULTURAL ACTS
`893 ENVIRONMENTAL MATTERS
`895 FREEDOM OF INFORMATION ACT 899
`899 ADMINISTRATIVE PROCEDURES ACT /
` REVIEW OR APPEAL OF AGENCY DECISION
`950 CONSTITUTIONALITY OF STATE STATUTES
`
`OTHER STATUTES - "8" MONTHS DISCOVERY
`TRACK
`
`410 ANTITRUST
`850 SECURITIES / COMMODITIES / EXCHANGE
`
`OTHER STATUTES - “0" MONTHS DISCOVERY
`TRACK
`
`896 ARBITRATION
`(Confirm / Vacate / Order / Modify)
`
`* PLEASE NOTE DISCOVERY
`TRACK FOR EACH CASE
`TYPE. SEE LOCAL RULE 26.3
`
`VII. REQUESTED IN COMPLAINT:
`
` CHECK IF CLASS ACTION UNDER F.R.Civ.P. 23
`DEMAND $_____________________________
`
`JURY DEMAND YES NO (CHECK YES ONLY IF DEMANDED IN COMPLAINT)
`
`VIII. RELATED/REFILED CASE(S) IF ANY
`
`JUDGE_______________________________
`DOCKET NO._______________________
`
`CIVIL CASES ARE DEEMED RELATED IF THE PENDING CASE INVOLVES: (CHECK APPROPRIATE BOX)
`1. PROPERTY INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.
`2. SAME ISSUE OF FACT OR ARISES OUT OF THE SAME EVENT OR TRANSACTION INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.
`3. VALIDITY OR INFRINGEMENT OF THE SAME PATENT, COPYRIGHT OR TRADEMARK INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.
`4. APPEALS ARISING OUT OF THE SAME BANKRUPTCY CASE AND ANY CASE RELATED THERETO WHICH HAVE BEEN DECIDED BY THE SAME
`BANKRUPTCY JUDGE.
`5. REPETITIVE CASES FILED BY PRO SE LITIGANTS.
`6. COMPANION OR RELATED CASE TO CASE(S) BEING SIMULTANEOUSLY FILED (INCLUDE ABBREVIATED STYLE OF OTHER CASE(S)):
`
`7. EITHER SAME OR ALL OF THE PARTIES AND ISSUES IN THIS CASE WERE PREVIOUSLY INVOLVED IN CASE NO.
`DISMISSED. This case IS
` IS NOT (check one box) SUBSTANTIALLY THE SAME CASE.
`
` , WHICH WAS
`
`/s/ Arthur W. Leach
`
` SIGNATURE OF ATTORNEY OF RECORD
`
`December 4, 2023
`
` DATE
`
`✔
`

`

`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 1 of 9
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`)
`HI-TECH PHARMACEUTICALS, INC.,
`)
`
`
`
`
`
`
`
`)
`
`Plaintiff,
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`v.
`
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`NUTRITION RESOURCE SERVICES,
`)
`INC. d/b/a JBN – JUST BE NATURAL,
`)
`
`
`
`
`
`
`
`)
`
`Defendant.
`
`
`
`____________________________________)
`
`
`
`Case No.
`
`PLAINTIFF HI-TECH PHARMACEUTICALS, INC.’S
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`
`
`COMES NOW, Plaintiff, HI-TECH PHARMACEUTICALS, INC. (“Hi-
`
`Tech” or “Plaintiff”), by and through the undersigned counsel, and for its Complaint
`
`for Declaratory Judgment against Defendant NUTRITION RESOURCE
`
`SERVICES, INC. d/b/a JBN – JUST BE NATURAL (“JBN” or “Defendant”) states
`
`as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Hi-Tech is a Georgia corporation with its principal place of
`
`business in Georgia.
`
`

`

`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 2 of 9
`
`2.
`
`Upon information and belief, Opposer JBN is a Pennsylvania
`
`corporation with a principal place of business at 3864 Courtney Street, Suite 140,
`
`Bethlehem, PA 18017.
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction over this declaratory
`
`judgment action pursuant to the Declaratory Judgment Act, 28 U.S.C §§ 2201 and
`
`2202 and the Lanham Act 15 U.S.C § 1125, et. seq.
`
`4.
`
`JBN has demanded that Hi-Tech, a resident of Georgia, cease and desist
`
`use of the trademark KRANK3D. This Court has personal jurisdiction over JBN
`
`because JBN has minimum contacts with the State of Georgia sufficient to subject it
`
`to personal jurisdiction consistent with due process under the Fourteenth
`
`Amendment to the United States Constitution. JBN has purposefully availed itself
`
`of the benefits and protections of Georgia by establishing minimum contacts with
`
`Georgia, and the Court’s exercise of jurisdiction over JBN does not offend
`
`traditional notions of fair play and substantial justice.
`
`5.
`
`Venue is proper in the Atlanta Division of the Northern District of
`
`Georgia under 28 U.S.C. § 1391(b)(2) because all or a part of the events giving rise
`
`to the causes of action asserted herein took place in the Atlanta Division of the
`
`
`
`2
`
`

`

`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 3 of 9
`
`Northern District of Georgia, and because Plaintiff has its principal place of business
`
`in this District.
`
`FACTUAL BACKGROUND
`
`6.
`
`Hi-Tech manufactures, markets, and sells dietary and nutritional
`
`supplements.
`
`7.
`
`On January 4, 2023, Hi-Tech filed an application with the United States
`
`Patent and Trademark Office (“USPTO”) to register the standard character mark
`
`“KRANK3D” for use in connection with the following goods in International Class
`
`005: “Dietary and nutritional supplements.”
`
`8.
`
`Hi-Tech’s application was assigned Serial No. 97741147.
`
`9.
`
`The USPTO later approved Hi-Tech’s application for publication,
`
`thereby signifying that the USPTO examined the application and determined that it
`
`met all legal requirements for registration on the Principal Register and there were
`
`
`
`3
`
`

`

`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 4 of 9
`
`no substantive issues precluding registration, such as conflicting trademarks in the
`
`USPTO’s trademark database.
`
`10. On September 26, 2023, Hi-Tech’s application was published for
`
`opposition.
`
`11. Hi-Tech has begun use of the mark KRANK3D in connection with the
`
`goods described in its application.
`
`12. On August 8, 2023, JBN sent Hi-Tech a letter alleging ownership of the
`
`registered trademark KRANK’D (U.S. Reg. No. 5267288) for use in connection with
`
`the following goods in International Class 032:
`
`Energy drinks, namely, energy enhancing beverages containing a blend
`of proteins, carbohydrates and other nutrients and/or vitamins and
`flavorings, and concentrates, syrups and powders used in preparation
`of such beverages.
`
`
`
`13.
`
`JBN’s letter further asserted that Hi-Tech’s use of applied-for
`
`trademark KRANK3D created a likelihood of consumer confusion in violation of
`
`the Lanham Act and demanded that Hi-Tech stop use of the mark and expressly
`
`abandon its application.
`
`14. On August 29, 2023, Hi-Tech replied to JBN’s letter, expressing that
`
`confusion was unlikely because the marks are used in connection with different
`
`classes and types of goods. Further, Hi-Tech explained that trademarks on the
`
`USPTO’s database reflect that JBN is not entitled to exclusive use of the word
`
`
`
`4
`
`

`

`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 5 of 9
`
`“KRANK” or any phonetic equivalent in connection with goods in classes 005 and
`
`032, citing the three registered trademarks identified in the table below:
`
`Mark
`
`CRANK
`SPORTS
`
`Reg. No. International Class – Goods
`030 – Ready-to-eat sports energy gels
`
`032 – Non-alcoholic sports drinks and liquid
`concentrate for making the same.
`
`2780697
`
`CRANK UP 5701783 005 – Dietary and nutritional supplements
`
`CRANKT
`
`6375566
`
`005 – Dietetic supplement drinks for muscle building
`and weight loss; nutrition supplements in the nature of
`protein drinks; nutritional and dietetic supplements for
`muscle building and weight loss, muscle conditioning
`and recovery including health food supplements and
`those health food supplements added to drinks;
`nutritional and vitamin supplements for use in fruit
`and vegetable juices and dairy based beverages and
`products; dietary supplemental drinks
`
`029 – Protein products, namely, protein milk; products
`for enhancing sporting performance, muscle gain,
`endurance, conditioning and recovery, namely, high-
`protein dairy based beverages; dairy based products,
`namely, milk, milk products and beverages with or
`without fruit additives, namely, dairy based beverages;
`flavoured dairy products, namely, dairy based
`beverages; fortified beverages, namely, milk based
`energy drinks
`
`030 – Protein products, namely, high-protein cereal
`bars
`
`032 – Fortified beverages, namely, energy drinks,
`protein enriched sports drinks, and drinking water with
`vitamin supplements; isotonic beverages and sport
`drinks; health drinks, namely, fruit and vegetable
`
`
`
`5
`
`

`

`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 6 of 9
`
`juices and energy drinks containing nutritional
`supplements not for medical purposes; beverages,
`namely, fruit and vegetable juices; fruit, vegetable
`based nutritional drinks, namely, fruit juices and
`vegetable juices not for medical purposes; fruit juice
`concentrates and fruit nectars for making fruit drink
`beverages; preparations for making protein drink
`beverages for quenching thirst in liquid, powder or
`concentrate form; blended mixture of fresh fruit or
`vegetables, fruit juice or dairy powders; bottled water
`excluding all alcoholic beverages; products for
`enhancing sporting performance, conditioning and
`recovery, namely, sports performance drinks and
`energy drinks
`
`
`
`15. Nevertheless, on October 24, 2023, JBN initiated an opposition
`
`proceeding before the Trademark Trial and Appeal Board (“TTAB”) alleging
`
`likelihood of confusion, citing its previously-asserted mark KRANK’D, in addition
`
`to another registered trademark “GET KRANK’D” (U.S. Reg. No. 3161419) for use
`
`in connection with the same goods in International Class 032.
`
`16. Hi-Tech maintains that JBN does not possess proprietary rights to the
`
`exclusive use of marks containing or comprising “KRANK” for use in connection
`
`with goods in Classes 005 and 032.
`
`17. Hi-Tech maintains that confusion is unlikely and, therefore, has not and
`
`does not intend to cease and desist use of its KRANK3D trademark or expressly
`
`
`
`6
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`

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`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 7 of 9
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`abandon its application to register the mark. Thus, a substantial controversy exists
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`between the parties who have adverse legal interests.
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`18.
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`In addition, upon information and belief, JBN has intentionally stopped
`
`using the trademarks KRANK’D and GET KRANK’D in commerce for a period of
`
`three or more years without intent to resume use.
`
`COUNT I
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`
`19. Hi-Tech repeats and realleges the allegations contained in Paragraphs
`
`1 though 18 as if fully set forth herein.
`
`20. There is a substantial and continuing controversy between Hi-Tech and
`
`JBN, and a declaration of rights is both necessary and appropriate to establish that
`
`Hi-Tech is not infringing any trademark rights of JBN. Thus, Hi-Tech seeks a
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`judicial declaration pursuant to 28 U.S.C §§ 2201 and 2202 that it has not infringed,
`
`and does not infringe, any of JBN’s asserted trademarks, and that Hi-Tech’s prior
`
`and continued sale of dietary supplements under the mark KRANK3D does not
`
`violate JBN’s rights under the Lanham Act or any companion state or federal statute.
`
`COUNT II
`DECLARATORY JUDGMENT OF ABANDONMENT
`
`
`
`7
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`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 8 of 9
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`
`
`21. Hi-Tech repeats and realleges the allegations contained in Paragraphs
`
`1 though 18 as if fully set forth herein.
`
`22. Upon information and belief, JBN intentionally ceased use of the
`
`trademarks KRANK’D and GET KRANK’D and has not since resumed used of the
`
`trademark in commerce.
`
`23. Upon information and belief, JBN’s abandonment of the trademarks
`
`was intentional and JBN has no intention to resume use of the mark.
`
`24. As a result of JBN’s discontinuation of use in commerce, any goodwill
`
`that may have been associated with the trademarks has been destroyed due to
`
`intentional abandonment.
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`PRAYER FOR RELIEF
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`WHEREFORE, Hi-Tech requests that the Court:
`
`a.
`
`Enter a declaratory judgment that Hi-Tech’s use of its trademark
`
`
`
`
`
`“KRANK3D” has not infringed upon any intellection property rights of JBN,
`
`including any rights in the registered trademarks “KRANK’D” or “GET
`
`KRANK’D” under the Lanham Act or any companion state statute;
`
`
`
`
`
`8
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`

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`Case 1:23-mi-99999-UNA Document 3984 Filed 12/04/23 Page 9 of 9
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`
`
`b.
`
`Enter a declaratory judgment that JBN has abandoned the trademarks
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`“KRANK’D” and “GET KRANK’D” and, therefore, no longer holds a protectable
`
`interest in the marks;
`
`
`
`c.
`
`Award Hi-Tech reasonable attorney fees and taxable court costs as
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`permitted by O.C.G.A. § 13-6-11 should the Court find that JBN has been stubbornly
`
`litigious and caused Hi-Tech unnecessary trouble and expense; and
`
`
`
`
`
`
`
`
`
`d.
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`Award such other relief as the Court deems just and proper.
`
`Date: December 4, 2023
`
` Respectfully submitted,
`
`
`
`
`
`/s/ Jessica H. Leach, Esq.
`Jessica H. Leach
`Georgia Bar No. 742326
`Jessica@ArthurWLeach.com
`The Law Office of Arthur W. Leach
`4080 McGinnis Ferry Rd, Suite 401
`Alpharetta, GA 30005
`Phone: (404) 786-6443
`
`Counsel for Plaintiff Hi-Tech
`Pharmaceuticals, Inc.
`
`9
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`