throbber
ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1329519
`12/19/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Factory Direct, Inc.
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`12/23/2023
`
`219 S. PORTLAND
`OKLAHOMA CITY, OK 73108
`UNITED STATES
`
`KURT M. RUPERT
`HARTZOG CONGER CASON
`201 ROBERT S. KERR AVE.
`SUITE 1600
`OKLAHOMA CITY, OK 73102
`UNITED STATES
`Primary email: trademarks@hartzoglaw.com
`Secondary email(s): krupert@hartzoglaw.com, delder@hartzoglaw.com,
`mail@marymlee.com
`(405) 235-7000
`
`Docket no.
`
`2012.1604
`
`Applicant information
`
`Application no.
`
`97417654
`
`Opposition filing
`date
`
`Applicant
`
`12/19/2023
`
`Serta, Inc.
`2451 INDUSTRY AVENUE
`DORAVILLE, GA 30360
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`10/24/2023
`
`Opposition period
`ends
`
`12/23/2023
`
`Class 020. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Mattresses; Pillows; Mattress toppers
`
`Class 024. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Bed sheets
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Dilution by blurring
`
`Trademark Act Sections 2 and 43(c)
`
`Mark cited by opposer as basis for opposition
`
`

`

`U.S. registration
`no.
`
`3609893
`
`Register
`
`Principal
`
`Registration date
`
`04/21/2009
`
`Application date
`
`01/24/2008
`
`Foreign priority
`date
`
`NONE
`
`Word mark
`
`Design mark
`
`Description of
`mark
`
`Goods/services
`
`ECO COMFORT
`
`NONE
`
`Class 020. First use: First Use: Mar 1, 2008 First Use In Commerce: Mar 1,
`2008
`Sleep products, namely, mattresses, spring mattresses, box springs and mat-
`tress foundations
`
`Attachments
`
`Notice of Opposition 97417654.pdf(443200 bytes )
`Exhibit 1_red.pdf(5445607 bytes )
`
`Signature
`
`/Kurt M. Rupert/
`
`Name
`
`Date
`
`KURT M. RUPERT
`
`12/19/2023
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Factory Direct, Inc.,
`
`
`Opposer,
`
`
`v.
`
`Serta, Inc.
`
`
`Applicant.
`
`
`
`Opposition No. _____________
`Serial No. 97417654
`Mark: ICOMFORTECO
`Filing Date: May 18, 2022
`Publication Date: October 24, 2023
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`NOTICE OF OPPOSITION
`
`Factory Direct, Inc., an Oklahoma corporation, located and doing business at 3920 W. I-40
`
`Service Rd., Oklahoma City, OK 73108 (“Factory Direct”) provides its Notice of Opposition to
`
`the registration of the Mark shown in Application Serial No. 97417654 in International Class 24
`
`and U.S. Classes 42 and 50 for Bed Sheets, and in International Class 20 and U.S. Classes 2, 13,
`
`22, 25, 32 and 50 for Mattresses; Pillows; and Mattress toppers filed by Serta, Inc. (“Serta”) on
`
`May 18, 2022. In support of its Notice of Opposition, Factory Direct states as follows:
`
`1.
`
`Factory Direct has been engaged in the manufacture, distribution, sale, advertising,
`
`and promotion in interstate commerce of Factory Direct’s ECO COMFORT mattresses and related
`
`sleep products since March 2008.
`
`2.
`
`Since at least March 2008, Factory Direct has used, and is now using, Factory
`
`Direct’s registered ECO COMFORT trademark in connection with the products it manufactures,
`
`distributes, sells, advertises, and promotes in interstate commerce on its mattresses and related
`
`sleep products.
`
`3.
`
`Factory Direct is the owner of, and will rely herein upon, the following Federal
`
`Trademark Registration:
`
`
`
`
`
`1
`
`

`

`Mark
`Registration Number
`Issue Date
`Goods
`
`ECO COMFORT
`3,609,893
`April 21, 2009
`Sleep products, namely, mattresses, spring
`mattresses, box springs and mattress foundations
`
`
`(the “ECO COMFORT Registered Mark”).
`
`
`4.
`
`Registration of Factory Direct’s ECO COMFORT Registered Mark is valid,
`
`subsisting, and conclusive evidence of Factory Direct’s exclusive right to use the ECO COMFORT
`
`Registered Mark in commerce on the goods specified in said registration.
`
`5.
`
`In addition to its rights to use the ECO COMFORT Registered Mark, Factory Direct
`
`additionally claims rights under common law to the exclusive use of the ECO COMFORT mark
`
`for various promotional purposes relating to mattresses and related sleep products.
`
`6.
`
`The validity of the ECO COMFORT Registered Mark; the registration of the ECO
`
`COMFORT Registered Mark; Factory Direct’s ownership of the ECO COMFORT Registered
`
`Mark; and Factory Direct’s exclusive right to use the ECO COMFORT Registered Mark in
`
`commerce for the above-mentioned goods are incontestable under 15 U.S.C. § 1065 and 15 U.S.C.
`
`§ 1115(b). Factory Direct has filed the required Affidavit with the Commissioner of Patents and
`
`Trademarks.
`
`7.
`
`Factory Direct has continuously used the ECO COMFORT Registered Mark to
`
`identify its ECO COMFORT line of mattresses since March 2008, and to distinguish them from
`
`those made and sold by others. Factory Direct has identified its ECO COMFORT line of mattresses
`
`by, among other things, prominently displaying the ECO COMFORT Registered Mark on
`
`mattresses that it manufactures, and with respect to all related promotional materials associated
`
`therewith. As a result of sales, advertising, and marketing by Factory Direct, the ECO COMFORT
`
`Registered Mark is inherently distinctivegoodwillrly identifies Factory Direct as the manufacturer
`
`
`
`2
`
`

`

`of the ECO COMFORT line of mattresses, and Factory Direct’s use of the ECO COMFORT
`
`Registered Mark has developed substantial goodwill and great value in the mattress market.
`
`8.
`
`The ECO COMFORT Registered Mark is strong and distinctive. It has long been
`
`used by Factory Direct in connection with the goods on which it appears and has long been the
`
`subject of substantial advertising and promotion by Factory Direct. Factory Direct has used and
`
`advertised the ECO COMFORT Registered Mark throughout the United States, and it is widely
`
`recognized by consumers and those in the trade and is exclusively used by Factory Direct. Factory
`
`Direct has expended and continues to expend significant amounts of time and money to advertise,
`
`offer for sale, and promote its products through its distinctive ECO COMFORT Registered Mark
`
`throughout the United States.
`
`9.
`
`On May 18, 2022, Applicant filed an application for registration of the proposed
`
`stylized ICOMFORTECO trademark for “Bed Sheets” in International Class 24 and U.S. Classes
`
`42 and 50 and for “Mattresses; Pillows; Mattress toppers” in International Class 20 and U.S.
`
`Classes 2, 13, 22, 25, 32 and 50. The Application was assigned Serial Number 97417654 and was
`
`published for Opposition in the Official Gazette of October 24, 2023.
`
`10.
`
`Applicant’s stylized ICOMFORTECO mark so resembles Factory Direct’s ECO
`
`COMFORT Registered Mark that when applied to the goods of Applicant it is likely to cause
`
`confusion, mistake, and to deceive as to the affiliation, connection, or association of Applicant
`
`with Factory Direct, and as to the origin, sponsorship, or approval of Factory Direct, resulting in
`
`damage and detriment to Factory Direct and to its reputation.
`
`11.
`
`Beginning in February 2023 Applicant caused mattresses to enter interstate
`
`commerce with the unregistered designation and representation ICOMFORTECO on a new line of
`
`mattresses using the stylized ICOMFORTECO presentation in which the “I” is barely visible,
`
`
`
`3
`
`

`

`giving the impression that the mark is “COMFORTECO.” An example of the stylized
`
`ICOMFORTECO presentation on a mattress can be found on Serta’s website:
`
`
`
`See, Screenshot from Serta website on December 18, 2023, Serta.com/products/icomfort-mattress.
`
`Factory Direct’s customers, and the general public, are likely to be confused, mistaken or deceived
`
`as to the origin and sponsorship of Applicant’s proposed goods covered by Application Serial
`
`Number 97417654 and that are currently being marketed by Applicant under its proposed stylized
`
`
`
`ICOMFORTECO mark.
`
`
`
`4
`
`

`

`12.
`
`Factory Direct has sued Applicant in the United States District Court for the
`
`Western District of Oklahoma, Case No. CIV-23-477-JD arising out of its use of the
`
`ICOMFORTECO mark, asserting claims against Applicant for Trademark Infringement and False
`
`Designation of Origin under the Lanham Act, and for Common Law Unfair Competition and
`
`Misappropriation, Unjust Enrichment, and for violations of the Oklahoma Deceptive Trade
`
`Practices Act. A true and correct copy of Factory Direct’s Complaint is attached hereto as Exhibit
`
`1 and is incorporated herein by reference. The stylized presentation of the ICOMFORTECO mark
`
`on Applicant’s new line of mattresses is demonstrated in Exhibit 2 to the Complaint.
`
`13.
`
`Applicant’s use of the stylized ICOMFORTECO mark on its mattresses will
`
`mislead the general public into believing that such goods emanate from, are licensed by, or are in
`
`some way directly or indirectly associated with, approved, or sponsored by Factory Direct, to the
`
`damage and detriment of Factory Direct and its reputation.
`
`14.
`
`Factory Direct will be damaged by Applicant’s registration of the proposed stylized
`
`ICOMFORTECO trademark, as set forth in Applicant’s trademark application Serial Number
`
`97417654, in that the mark is substantially similar to the ECO COMFORT Registered Mark and
`
`will be used in connection with goods that, as described in Applicant’s application, would directly
`
`compete with Factory Direct’s mattresses and sleep related items offered for sale to the public by
`
`Factory Direct.
`
`15.
`
`Factory Direct will additionally be damaged by the registration by Applicant of the
`
`proposed stylized ICOMFORTECO trademark, as set forth in Applicant’s trademark application
`
`Serial Number 97417654, in that the alleged mark will dilute the distinctiveness of the ECO
`
`COMFORT Registered Mark within the meaning of the provisions of the Federal Trademark
`
`Dilution Act of 1995, as amended by the Trademark Revision Act of 2006.
`
`
`
`5
`
`

`

`WHEREFORE, Opposer, Factory Direct, Inc., is being and will continue to be damaged
`
`by registration of the proposed stylized ICOMFORTECO trademark as stated herein, and prays
`
`that Application Serial Number 97417654 be rejected in its entirety in accordance with the
`
`provisions of the Trademark Act, that no registration be issued thereon to Applicant, that this
`
`Opposition be sustained in favor of Factory Direct, and for such other and further relief to which
`
`Factory Direct is lawfully entitled under the circumstances.
`
`Date: December 19, 2023
`
`
`
`
`By:
`
`Respectfully submitted,
`
`
`
`
`
`
`s/Kurt M. Rupert
`David A. Elder, OBA #20687
`Kurt M. Rupert, OBA #11982
`HARTZOG CONGER CASON, LLP
`201 Robert S. Kerr, Suite 1600
`Oklahoma City, Oklahoma 73102
`(405) 235-7000 (Telephone)
`(405) 996-3403 (Facsimile)
`delder@hartzoglaw.com
`krupert@hartzoglaw.com
`ATTORNEYS FOR OPPOSER,
`FACTORY DIRECT, INC.
`
`
`
`6
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 1 of 10
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF OKLAHOMA
`
`FACTORY DIRECT, INC., an
`Oklahoma Corporation,
`
`Plaintiff,
`
`vs.
`
`SERTA, INC., a Delaware
`Corporation,
`
`Defendant.
`
`)
`)
`)
`)
`)
`) Case No.
`)
`)
`)
`)
`)
`
`COMPLAINT
`
`CIV-23-477-JD
`
`Plaintiff, Factory Direct, Inc. ("Factory Direct"), an Oklahoma Corporation, for its
`
`Complaint against the Defendant, Serta, Inc. (“Serta”), alleges and states as follows:
`
`PARTIES
`
`1.
`
`Factory Direct is an Oklahoma Corporation with its principal place of
`
`business in Oklahoma City, Oklahoma.
`
`2.
`
`Serta is a Delaware Corporation with its principal place of business at 2451
`
`Industry Avenue, Doraville, Georgia 30360.
`
`JURISDICTION AND VENUE
`
`3.
`
`Serta is a foreign corporation and domiciled with its principal place of
`
`business in a state other than Oklahoma. Factory Direct is an Oklahoma Corporation
`
`headquartered in Oklahoma City, Oklahoma. This action is therefore one between citizens
`
`of different states. The amount in controversy exclusive of interest and costs exceeds
`
`exhibitsticker.com
`
`EXHIBIT
`
`1
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 2 of 10
`
`Seventy-Five Thousand Dollars ($75,000). Therefore, pursuant to 28 U.S.C. §1331 and
`
`1332, this Court has subject matter jurisdiction.
`
`4.
`
`This Court also has subject matter jurisdiction under 15 U.S.C. § 1121 and
`
`28 U.S.C. § 1338(a) in that this case arises under the Trademark Laws of the United States,
`
`15 U.S.C. §§ 1051, and subject matter jurisdiction over Factory Direct's Oklahoma state
`
`law claims pursuant to 28 U.S.C. § 1338(b).
`
`5.
`
`Serta is doing business in Oklahoma and is subject to personal jurisdiction of
`
`this Court by virtue of its numerous and substantial contacts with the State of Oklahoma.
`
`6.
`
`Venue is proper in this Court pursuant to 28 U.S.C. §1391 because a
`
`substantial part of the events giving rise to the asserted claims occurred in this district.
`
`STATEMENT OF FACTS
`
`7.
`
`Factory Direct adopted the mark Eco Comfort (the "Mark") and uses it in
`
`interstate commerce for Factory Direct's Eco Comfort line of mattresses. On January 24,
`
`2008, Factory Direct filed an application for registration of the Mark in the United States
`
`Patent and Trademark Office. On April 21, 2009, the Mark was registered in the United
`
`States Patent and Trademark Office on the Principal Register covering the use of the Mark
`
`on "sleep products, namely, mattresses, spring mattresses, box springs and mattress
`
`foundations." A copy of the Factory Direct's U.S. Trademark Registration for the Mark is
`
`attached hereto as Exhibit 1.
`
`8.
`
`The validity of the registered Mark and the registration of the Mark,
`
`registrant's ownership of the Mark, and Factory Direct's exclusive right to use the registered
`
`Mark in commerce for the above mentioned goods are incontestable under 15 U.S.C. §
`
`
`
`2
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 3 of 10
`
`1065 and 15 U.S.C. § 1115(b), as Factory Direct has filed the required affidavit with the
`
`Commissioner of Patents and Trademarks.
`
`9.
`
`Continuously since on or about March 1, 2008, Factory Direct has used its
`
`Mark to identify its Eco Comfort line of mattresses and to distinguish them from those
`
`made and sold by others, by, among other things, prominently displaying the Mark on the
`
`respective mattresses, their containers and all other promotional materials associated
`
`therewith. Said goods, containers and promotional materials have been distributed in the
`
`trade area where Serta is doing business. As a result of said sales and advertising by
`
`Factory Direct, the Mark is inherently distinctive and that clearly identifies Factory Direct
`
`as the manufacturer of the Eco Comfort line of mattresses, and Factory Direct’s use of the
`
`Mark has developed substantial good will and great value in the mattress market. Factory
`
`Direct maintains a strong commitment to offering the highest quality products, and closely
`
`controls the development, sourcing and production of all mattresses bearing the Mark.
`
`10.
`
`Factory Direct offers for sale its Eco Comfort mattress line in all fifty (50)
`
`states via its retail locations, authorized sales representatives and the internet. Factory
`
`Direct's Mark is strong and distinctive, has long been used in connection with the goods on
`
`which it appears, has long been the subject of substantial advertising and promotion, has
`
`been used and advertised throughout the United States, is widely recognized by consumers
`
`and those in the trade, is in substantially exclusive use by Factory Direct and is federal
`
`registered, as alleged above. Factory Direct's Mark is recognized by the general consuming
`
`public of the United States as a designation of source for the goods and commercial
`
`activities of Factory Direct and is therefore a famous mark. The acts of Serta alleged herein
`
`
`
`3
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 4 of 10
`
`commenced in or after February 2023, a time well after Factory Direct's Mark became
`
`famous.
`
`11.
`
`Factory Direct has expended and continues to expend significant amounts of
`
`time and money to advertise, offer for sale, and promote its products through its distinctive
`
`Mark in Oklahoma and in other states.
`
`12. Beginning in February 2023, Serta caused mattresses to enter into interstate
`
`commerce with the unregistered designation and representation ICOMFORTECO (the
`
`"Infringing Mark") connected therewith. Serta has intentionally infringed Factory Direct's
`
`Mark in interstate commerce by using the mark ICOMFORTECO on a new line of
`
`mattresses in a stylized presentation in which the “I” is barely visible, and which gives the
`
`impression that the mark is “COMFORTECO.” An example of the Infringing Mark is
`
`attached hereto as Exhibit 2.
`
`13.
`
`Said use by Serta is a false designation of origin which is likely to cause
`
`confusion, to cause mistake and to deceive as to the affiliation, connection, or association
`
`of Serta with Factory Direct and as to the origin, sponsorship, or approval of Factory
`
`Direct's Eco Comfort line of mattresses. Said use by Serta is without permission or
`
`authority of Factory Direct.
`
`14.
`
`Since on or about April 21, 2009, Factory Direct has given notice that its
`
`Mark is registered in the U.S. Patent and Trademark Office by displaying with the Mark as
`
`used the letter R enclosed within a circle. Factory Direct has made demand on Serta to
`
`cease and desist from its acts of trademark infringement and has given Serta actual notice
`
`of Factory Direct's registration, but Serta has refused to cease such acts. See Letter from
`
`
`
`4
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 5 of 10
`
`David Elder to Laura Brewick, the President of Serta, dated May 22, 2023, attached hereto
`
`as Exhibit 3.
`
`15.
`
`Serta’s acts of trademark infringement and unfair competition alleged herein
`
`have been committed with the intent to cause confusion, mistake and to deceive. The
`
`likelihood of confusion as a result of Serta’s actions is evident from the fact that the Patent
`
`and Trademark Office rejected Serta’s attempt to register the Infringing Mark, finding in
`
`March 2023 that the Infringing Mark could not be registered due to likelihood of confusion
`
`caused by the similarity of the Infringing Mark to Factory Direct’s Mark, particularly given
`
`the relatedness of the products bearing the marks. See PTO response to Serta registration
`
`request attached hereto as Exhibit 4
`
`16.
`
`Serta’s intent to cause confusion, mistake and to deceive is further
`
`demonstrated by a recent conversation between a representative of Factory Direct and of
`
`Serta in which the Serta representative discussed the marketing of “ECO” mattresses in
`
`Oklahoma. When the Factory Direct representative asked the Serta representative to clarify
`
`what mattresses he was talking about, the Serta representative stated “my ECO’s, not
`
`yours.”
`
`COUNT I
`VIOLATION OF LANHAM ACT-TRADEMARK INFRINGMENT
`
`Factory Direct incorporates by reference and restates all material allegations
`
`17.
`
`of paragraphs 1 through 16.
`
`18.
`
`The acts of Serta alleged herein are in violation 15 U.S.C. § 1114(1) in that
`
`Serta's use of the Infringing Mark in commerce in connection with the sale, offering for
`
`
`
`5
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 6 of 10
`
`sale, distribution or advertising of Serta's mattresses is likely to cause confusion, or to cause
`
`mistake, or to deceive as to the affiliation, connection, or association of Serta with Factory
`
`Direct and as to the origin, sponsorship, and approval of Serta's goods, services and
`
`commercial activities by Factory Direct.
`
`19.
`
`Serta's acts of infringement in violation of 15 U.S.C. § 1114(1) were
`
`committed with the intent to cause confusion, mistake and to deceive.
`
`20. As a result, Factory Direct is entitled to the remedies provided in 15 U.S.C.
`
`§§ 1116, 1117 & 1118.
`
`COUNT II
`VIOLATION OF LANHAM ACT-FALSE DESIGNATION OF ORIGIN
`
`21.
`
`Factory Direct incorporates by reference and restates all material allegations
`
`of paragraphs 1 through 20.
`
`22.
`
`The acts of Serta alleged herein are in violation 15 U.S.C. § 1125(a) in that
`
`Serta has used in connection with goods and services a false designation of origin, a false
`
`or misleading description and representation of fact which is likely to cause confusion, and
`
`to cause mistake, and to deceive as to the affiliation, connection, or association of Serta
`
`with Factory Direct and as to the origin, sponsorship, and approval of Serta's goods,
`
`services and commercial activities by Factory Direct.
`
`23. As a result, Factory Direct is entitled to the remedies provided in 15 U.S.C.
`
`§§ 1116, 1117 & 1118.
`
`
`
`6
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 7 of 10
`
`COUNT IV
`COMMON LAW, UNFAIR COMPETITION, AND MISAPPROPRIATION
`
`24.
`
`Factory Direct incorporates by reference and restates all material allegations
`
`of paragraphs 1 through 23 above.
`
`25.
`
`The acts of Serta alleged herein constitute unfair competition and an
`
`infringement of Factory Direct's common-law rights in its Mark.
`
`26.
`
`Serta has infringed Factory Direct's Mark as alleged herein with the intent to
`
`deceive the public into believing that goods sold by Serta are made by, approved by,
`
`sponsored by or affiliated with, Factory Direct. Serta's acts as alleged herein were
`
`committed with the intent to pass off and palm off Serta's goods as the goods of Factory
`
`Direct, and with the intent to deceive and defraud the public.
`
`27. As a result, Factory Direct is entitled to recover all remedies available at
`
`common law including, but not limited to, punitive and exemplary damages by reason of
`
`Serta's intentional palming off and fraud.
`
`COUNT V
`COMMON LAW UNJUST ENRICHMENT
`
`28.
`
`Factory Direct incorporates by reference and restates all material allegations
`
`of paragraphs 1 through 27 above.
`
`29.
`
`Through the acts alleged herein, Serta has unjustly enriched itself and
`
`continued to do so and Factory Direct's entitled to just compensation under the common
`
`law of the State of Oklahoma.
`
`
`
`
`
`7
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 8 of 10
`
`COUNT VI
`VIOLATION OF THE OKLAHOMA DECEPTIVE
`TRADE PRACTICES ACT
`
`Factory Direct incorporates by reference and restates all material allegations
`
`30.
`
`of paragraphs 1 through 29 above.
`
`31.
`
`The acts of Serta alleged herein constitute deceptive trade practices under the
`
`Oklahoma Deceptive Trade Practices Act, which is codified at 78 Okla. Stat. §§ 51-56.
`
`32.
`
`Serta willfully engaged in the deceptive trade practices alleged herein.
`
`33. As a result, Factory Direct is entitled to the remedies provided in 78 Okla.
`
`Stat. § 54.
`
`ALLEGATION OF DAMAGE
`
`34. By reason of Serta's acts of trademark infringement, acts of unfair
`
`competition and deceptive trade practices alleged herein, Factory Direct has and will suffer
`
`damage to its business, reputation and good will and the loss of sales and profits Factory
`
`Direct would have made but for Serta's acts.
`
`35.
`
`Serta threatens to continue to do the acts complained of herein, and unless
`
`restrained and enjoined, will continue to do so, all to Factory Direct's irreparable damage.
`
`It would be difficult to ascertain the amount of compensation which could afford Factory
`
`Direct adequate relief for such continuing acts, and a multiplicity of judicial proceedings
`
`would be required. Factory Direct's remedy at law is not adequate to compensate it for
`
`injuries threatened.
`
`
`
`
`
`8
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 9 of 10
`
`PRAYER FOR RELIEF
`
`WHEREFORE, premises considered, Plaintiff, Factory Direct prays:
`
`(a)
`
`That this Court grant an injunction pursuant to the powers granted it under
`
`15 U.S.C. § 1116, enjoining and restraining Serta and its agents, servants and employees
`
`from directly or indirectly using the Infringing Mark or any other mark, word, or name
`
`similar to Factory Direct's Mark which is likely to cause confusion, mistake or to deceive.
`
`(b)
`
`That this Court, pursuant to the power granted it under 15 U.S.C. § 1118,
`
`order that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in
`
`the possession of Serta bearing the Infringing Mark and all plates, molds, matrices, and
`
`other means of making the same, shall be delivered up and destroyed.
`
`(c)
`
`That this Court grant an injunction enjoining and restraining Serta and its
`
`agents, servants and employees from (1) directly or indirectly using the Infringing Mark or
`
`any other mark, word or name similar to Factory Direct's Mark which is likely to cause
`
`confusion and (2) continuing any and all acts of unfair competition alleged herein.
`
`(d)
`
`That Serta be required to account to Factory Direct for any and all profits
`
`derived by Serta from the sale of its goods and for all damages sustained by Factory Direct
`
`by reason of Serta's infringement, unfair competition and deceptive trade practices
`
`complained of herein.
`
`(e)
`
`That this Court award Factory Direct treble the amount of damages suffered
`
`by Factory Direct pursuant to 15 U.S.C. § 1117.
`
`(f)
`
`That this Court award punitive and exemplary damages against Serta and in
`
`favor of Factory Direct by reason of Serta's fraud and palming off.
`
`
`
`9
`
`

`

`Case 5:23-cv-00477-JD Document 1 Filed 05/30/23 Page 10 of 10
`
`(g)
`
`That costs of this action be awarded to Factory Direct.
`
`(h)
`
`That attorney's fees be awarded to Factory Direct pursuant to 15 U.S.C. §
`
`1117(a).
`
`(i)
`
`That reasonable attorney's fees be awarded to Factory Direct pursuant to 78
`
`Okla. Stat. § 54(c).
`
`(j)
`
`That this Court grant such other and further relief as it shall deem just.
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`s/ Kurt M. Rupert
`David A. Elder, OBA #20687
`Kurt M. Rupert, OBA #11982
`HARTZOG CONGER CASON LLP
`201 Robert S. Kerr Ave.
`Suite 1600
`Oklahoma City, OK 73102
`Telephone:
`(405) 235-7000
`Facsimile:
`(405) 996-3403
`delder@hartzoglaw.com
`krupert@hartzoglaw.com
`
`
`ATTORNEYS FOR PLAINTIFF
`FACTORY DIRECT, INC.
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`10
`
`

`

`Case 5:23-cv-00477-JD Document 1-1 Filed 05/30/23 Page 1of1
`Case 5:23-cv-00477-JD Document 1-1 Filed 05/30/23 Page 1 of 1
`
`Int. Cl: 20
`
`Prior U.S. Cls.: 2, 13, 22, 25, 32, and 50
`
`United States Patent and Trademark Office
`
`6201-019
`
`a
`
`Reg. No. 3,609,893
`Registered Apr. 21, 2009
`
`TRADEMARK
`PRINCIPAL REGISTER
`
`ECO COMFORT
`
`FACTORY DIRECT,
`PORATION)
`219 S. PORTLAND
`OKLAHOMACITY, OK 73108
`
`INC.
`
`(QKLAHOMA COR-
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`FOR: SLEEP PRODUCTS, NAMELY, MATTRES-
`SES, SPRING MATTRESSES, BOX SPRINGS AND
`MATTRESS FOUNDATIONS,IN CLASS20 (U.S. CLS.
`2, 13, 22, 25, 32 AND 50).
`
`SN 77-379,492, FILED 1-24-2008.
`
`FIRST USE 3-1-2008; IN COMMERCE3-1-2008.
`
`JAY FLOWERS, EXAMINING ATTORNEY
`
`1
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`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 1 of 18
`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 1 of 18
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`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 2 of 18
`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 2 of 18
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`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 3 of 18
`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 3 of 18
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`

`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 4 of 18
`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 4 of 18
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`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 5 of 18
`Case 5:23-cv-00477-JD Document 1-2 Filed 05/30/23 Page 5 of 18
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`6

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