DRINKERBIDDLE&REATHLLP0ONELOGANSQUAREo18TH&CHERRYSTREETSoPHILADELPHIA,PA191030215-988-2700
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`INDUSTRIAL RUBBER & SUPPLY, Inc.,
`
`:
`
`Cancellation No. 92043304
`
`Petitioner,
`
`v.
`
`BEMCO ASSOCIATES, INC.
`
`Registrant.
`
`MOTION TO SUSPEND PROCEEDINGS PURSUANT TO RULE 1171a}
`
`Registrant, Bemco Associates, Inc, moves to suspend further proceedings in the subject
`
`Cancellation No. 92043304 pursuant to Rule ll7(a) because of the pendency in the United States
`
`District Court for New Jersey of a Civil Action filed April 27, 2005. A decision in said Civil
`
`Action would in all probability be controlling as to this Cancellation.
`
`A copy of the Complaint in said Civil Action is annexed hereto as Exhibit A. The
`
`Complaint has not as yet received a Civil Action number.
`
`WHEREFORE, Bemco Associates, Inc. respectfully requests that the Board suspend
`
`further proceedings in this Cancellation.
`
`.iR'Tl F’ L
`"4 M/MLANU
`h
`‘f
`I
`h
`I h
`in correspondence is being
`ere_ y cert: 3- an-. t
`deposited With the ' lvited States Postal Services:
`first class mail
`in an envelope addressed 00:
`Commissioner for Trademarks. P. O. Box MSI.
`A|exandria.VA 22313-I451,
`undue
`.
`on
`flhfil
`
`
`
`Respectfully submitted,
`
`BEMCO ASSOCIATES, INC.
`
`BY: g2,g& I-Lfiii
`
`ARTHUR H. SEIDEL
`
`Reg. No. 15,979
`DRINKER BIDDLE & REATH LLP
`
`One Logan Square
`18”‘ & Cherry Streets
`Philadelphia, PA 19103
`Tel: 215-988-3317
`
`Fax: 215-988-2757
`
`Attorneys for Registrant
`
`05-02-2005
`U.S. Pawn! & TMOfeITM Mail Rep! 0!. 4739
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing paper was served by First Class Mail, postage
`
`prepaid, to the attorney for Petitioner, Lee E. Johnson, Esq., Christensen O’Connor Johnson
`41
`Kindness PLLC, 1420 Fifth Avenue, Suite 2800, Seattle, WA 98101-2347, thisazi day of April
`
`2005.
`
`
`
`
`
`DRINKERBIDDLE&REATHLLP0ONELOGANSQUARE018TH&CHERRYSTREETSoPHILADELPHIA,PA191030215-988-2700
`
`
`
`
`
`

`
`I I1
`
`§IS44
`
`ev. ll/04)
`
`CIVIL COVER SHEET
`
`The JS 4 civil cover sheet and the information contained herein neither re lace nor sursiplcmcnt the filing and service ofpleadings or other apers as re uircd bylaw, except as provided
`by local I_ les ofcourt. This form, approved by the Judicial Conference 0 the United tates in September I974, '
`required for the use oftiic Clerk of ourt for the purpose ofinitiating
`the civil i - ket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
` PLAINTIFFS
`L(m
`INC.
`EMCO ASSOCIATES,
`3 ite 130, 2720 Des Plaines Ave.,
`-
`(b) I 0l§nI)’P()I_E€}lRC%CSC bf
`lllziintiff
`C°0k C0 o 9
`
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`IL
`
`DEFENDANTS
`
`INC.
`INDUSTRIAL RUBBER & SUPPLY,
`2105—51st Ave., East, Suite 200
`F1
`.
`County ofRgledéncyo Firstglfigtieg%efendant
`K1118 C0 o 3 WA
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE.IgE LOCATION OF THE
`Ln
`LAND INVOLVED.
`E,” C
`
`NOTE:
`
`
`
`
`
`
`
`
`(CI
`
`A ttnmey'.< ‘FirmName. Address, and Telephone NumbemrhomaS J . Barton A"°m¢)’5 (IIKHOWH)
`D lnker, Biddle & Reach LLP, 105 College R
`' e. 300, Princeton, NJ O8542—0627 —
`w—
`
`R)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an “X"I-IILQEC Box for Plaintiff
`(For Diversity Cases Only)
`and One Bdxjfg Defendant)
`PTF
`DEF
`if‘ 3 ."“‘ PTF
`DEF
`Citizen of This State
`U I
`Incorporated or Rrjqeipal Plat?) i’ T1 D 4
`C] 4
`U I
`of Business In This'Sttlte C;
`(fl
`:9
`Incorporated anlkfincipal Place
`°“3"‘i“°‘‘ ’“ "“°"‘°' S““°
`Foreign Nation
`
`Citizen of Another State
`
`U 2
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`U 2
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`Citizen or Subject of a
`Forei n Count
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`CI 3
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`CI
`
`3
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`U 5
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`CI 5
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`CI 6
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`CI 6
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`
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`' IS OF JURISDICTION (Place an “X" in One Box Only)
`)3
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`3 Federal Question
`. . Government
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`(U.S. Government Not I Party)
`' Iairltiff
`
`II. B ‘
`D
`U
`I
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`
`
`
`
`. Govemment
`U 4 Diversity
`(Indicate Citizenship ofParties in Item I11)
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`
`
`U 2
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`U.
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`
`
`CI
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`
`
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`
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`.
`.
`»
`. ..
`4
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`0 870 Taxes (U.S. Plaintiff
`
`or Defendant)
`Cl 871 IR&—Third Party
`26 USC 7609
`
`
`
`
`
`RE OF SUIT Place an "x" in One Box Onl
`IV. N I
`
`TES ’
`-.
`OTHER
`— "
`,
`‘i
`.
`TORT
`V
`0 400 State Reapportionment
`CI 610 Agriculture
`0 422 Appeal 28 USC I58
`PERSONAL INJURY
`PERSONAL INJURY
`0 H0 In -
`
`
`
`
`CI 410 Antitrust
`0 I20 M
`D 310 Airplane
`362 Personal Injury —
`Cl 620 Other Food & Drug
`CI 423 Withdrawal
`
`
`
`CI 430 Banks and Banking
`Med. Malpractice
`D 625 Drug Related Seizure
`28 USC I57
`0 I30 M i
`CI 315 Airplane Product
`
`
`CI 450 Commerce
`CI 140 we tiable Instrument
`Liability
`D 365 Personal Injury —
`of Property 2l USC 881
`U 460 Deportation
`I
`'
`V L
`CI I50 R
`D 320 Assault, Libel &
`Product Liability
`0 630 Liquor Laws
`
`
`CI 470 Racketeer Influenced and
`CI 820 Copyrights
`Slander
`D 368 Asbestos Personal
`D 640 RR. & Truck
`
`Corrupt Organizations
`CI 830 Patent
`D 330 Federal Employers‘
`Injury Product
`CI 650 Airline Regs.
`CI 480 Consumer Credit
`'6 840 Tradelnark
`Liability
`Liability
`0 660 Occupational
`CI 490 CabIeJSat TV
`CI 340 Marine
`PERSONAL PROPERTY
`Safety/Health
`
`U BIO Selective Service
`CI 690 Other
`CI 345 Marine Product
`D 370 Other Fraud
`I "
`-.
`,
`A
`-. HiYj CI 850 Securities/Commodities!
`Liability
`0 371 Truth in Lending
`
`CI 861 H.lA (I395?!)
`CI 350 Motor Vehicle
`CI 380 Other Personal
`CI 710 Fair Labor Standards
`Exchange
`
`Cl 862 Black Lung (923)
`D 355 Motor Vehicle
`Property Damage
`Act
`CI 875 Customer Challenge
`0 I60 St
`Product Liability
`Cl 385 Property Damage
`Cl 720 Labor/Mgmt. Relations 0 863 DIWC/DIWW (405(g))
`12 USC 3410
`0 I90 0
`360 Other Personal
`Product Liability
`[3 730 Labor/Mgmt.Repolting D 864 SSID Title XVI
`U 890 Other Statutory Actions
`CI 195 C
`CI 196 F
`In‘
`& Disclosure Act
`U 891 Agricultural Acts
`\.
`~
`" "
`" ""
`'
`CI 740 Railway Labor Act
`4: D 892 Economic Stabilization Act
`
`
`U 210 2 : Condemnation
`CI SIO Motions to Vacate
`CI 790 Other Labor Litigation
`CI 893 Environmental Matters
`CI 220 F0 -
`D
`Sentence
`U 791 Empl. Ret. Inc.
`CI 894 Energy Allocation Act
`0 230 R
`D 443 Housing]
`Habeas Corpus:
`Security Act
`D 895 Freedom oflnformation
`CI 240 To -
`Accommodations
`D 530 General
`Act
`U 245 To
`U 444 Welfare
`CI 535 Death Penalty
`CI 900Appeal of Fee Detennination
`D 290 Al
`0 445 Amer. w/Disabilities - U 540 Mandamus & Other
`Under Equal Access
`Employment
`CI 550 Civil Rights
`to Justice
`555 Prison Condition
`0 446 Amer. w/Disabilities -
`C] 950 Constitutionality of
`
`Other
`State Statutes
`D 440 Other Civil Rights
`
`V. ORI
`IN
`(Place an “x" in One Box Only)
`‘
`'
`_
`D 5 Transferred from D 6
`.
`mu
`.
`D 2
`D 3
`Multldrstrlct
`another dlstrlct
`Relnstated or
`Remanded from
`I
`; nal
`Removed from
`Liti ation
`s - eci
`Re ened
`A r ellate Court
`P I eedin1
`State Court
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`.
`.
`.
`.
`Brlefdescrlptlon ofcause. Trademark Infringement
`i cl-1EcK1}= Tms is A CLASS Acnon
`DEMAND 3
`UNDER F-R-C-P. 23
`S
`,m€
`_
`( °° "'5
`° '°“‘)'
`
`
`
`
`
`CI ISI M
`D 152
`
`Cl 153 R
`
`
`
`to Land
`' roduct Liability
`I! her Real Property
`
`
`
`
`
`
`VI. CA SE OF ACTION
`
`VII.
`
`' 3 QUESTED IN S
`C 1;!
`'LAINT:
`VHL':LATEDCA$M$
`1 ANY
`
`DATE
`
`D 4
`
`AP 61 to District
`Ju ge from
`Magistrate
`Judment
`'
`
`U 7
`
`'
`
`‘
`
`CHECK YES only if demanded in complaint:
`JURY DEMAND:
`Igves
`D No
`
`JUDGE
`DOCKET NUMBER
`
`SIGNATURE OF ATTORNEY OF RECORD
`
`FOR OFF
`
`). 7
`"
`USE O LY
`
`0 If
`
`4_._.
`
`RECEI '
`
`I
`
`#
`
`AMOUNT
`
`..M._..__j_..—_
`
`APPLYING IFP
`
`:—_j_......j.
`
`JUDGE
`
`j__j._j
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`MAG. JUDGE
`
`——.j...:.._j.—.j_
`
`

`
`IS 44 Revert
`
`(Rev. I 1/04)
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS ' 4 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as required
`by law, -< ept as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use
`of the Cle I of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk ofCourt for each civil complaint
`filed. Tli attorney filing a case should complete the form as follows:
`
`(a Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use only
`I.
`the full nti
`e or standard abbreviations. Ifthe plaintiffor defendant is an official within a government agency, identify first the agency and then the official, giving
`both nani and title.
`
`(la County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiffresides at the time
`of filing..
`ii U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land condemnation cases,
`the coun
`of residence of the “defendant” is the location of the tract of land involved.)
`
`(t; Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, rioting
`in this -- ion “(see attachment)”.
`
`' risdiction. The basis ofjurisdiction is set forth under Rule 8(a), F.R.C.P., which requires that jurisdictions be shown in pleadings. Place an “X” in one
`II.
`of the on A 5. If there is more than one basis ofjurisdiction, precedence is given in the order shown below.
`
`United St tes plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United
`tes defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box.
`
`(3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendment to the
`- estion.
`Federal
`Constitu - n, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes precedence, and box
`lor2 s u
`ldbemarked.
`
`Diversity n f citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the citizenship of the
`different} arties must be checked. (See Section III below; federal question actions take precedence over diversity cases.)
`
`R sidence (citizenship) of Principal Parties. This section ofthe JS 44 is to be completed ifdiversity ofcitizenship was indicated above. Mark this section
`III.
`for each .-
`'ncipal party.
`
`N : ture of Suit. Place an “X” in the appropriate box. Ifthe nature ofsuit cannot be determined, be sure the cause ofaction, in Section VI below, is sufficient
`IV.
`to enable he deputy clerk or the statistical clerks in the Administrative Office to determine the nature of suit. If the cause fits more than one nature of suit, select
`the most! efinitive.
`
`V.
`
`II
`
`igin. Place an “X” in one of the seven boxes.
`
`Originall
`
`oceedings. (1) Cases which originate in the United States district courts.
`
`Remove I from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section l44l. When the petition
`for rem 1 is granted, check this box.
`
`Remande from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing date.
`Reinstatei or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`Transfer‘; d from Another District. (5) For cases transferred under Title 28 U.S.C. Section l404(a). Do not use this for within district transfers or multidistrict
`litigation I
`. sfers.
`
`- ict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 1407. When this box
`Multidi
`is check i do not check (5) above.
`
`Appeal in District Judge from Magistrate Judgment. (7) Check this box for an appeal from a magistrate judge’s decision.
`
`0: use of Action. Report the civil statute directly related to the cause ofaction and give a briefdescription ofthe cause. Do not cite jurisdictional statutes
`VI.
`unless u’ ersity.
`Example:
`’ U._S. Civil Statute: 47 USC 553
`_
`_
`Brief Description: Unauthorized reception of cable service
`
`VII.
`
`'« ' quested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Rule 23, F.R.Cv.P.
`
`Demand. In this space enter the dollar amount (in thousands of dollars) being demanded or indicate other demand such as a preliminary injunction.
`Jury De nd. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`'— lated Cases. This section of the JS 44 is used to reference related pending cases if any. If there are related pending cases, insert the docket numbers
`VIII.
`and the 4; rresponding judge names for such cases.
`
`Date an Attorney Signature. Date and sign the civil cover sheet.
`
`

`
`
`
`DRINKER BIDDLE & REATH LLP
`Th
`omas J. Barton (TB—475 1)
`105 College Road East, Suite 300
`P.O. Box 627
`Princeton, New Jersey 08542-0627
`Phone: (609) 716-6500
`Fax: (609) 799-7000
`
`I
`
`2
`
`'~>’x‘1"»;*f:_; 1»,
`" .. 7'
`~ 0’).
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`‘V J1
`' 53
`
`4
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`BEMCO ASSOCIATES, INC.,
`
`Plaintiff,
`
`v.
`
`INDUSTRIAL RUBBER & SUPPLY, INC”:-
`
`Defendant.
`
`Civil Action No.
`
`JURY TRIAL DEMANDED
`
`COMPLAINT
`
`Plaintiff, Bemco Associates, Inc. (hereinafter “Bemco” or “plaintiff’) by and through its
`
`undersigned attorneys for its complaint against defendant Industrial Rubber & Supply, Inc.
`
`(hereinafter “Industrial” or “Defendant”) alleges as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is an action for trademark infringement, unfair competition, false designation
`
`of origin, false representation and description, state and common law trademark infringement
`
`and unfair competition, and unjust enrichment.
`
`PI-IIP\4l4507\1
`
`

`
`
`
`THE PARTIES
`
`2.
`
`The plaintiff Bemco, is a corporation organized and existing under the laws of
`
`Delaware, having a place of business at Suite 130, 2720 Des Plaines Avenue, Des Plaines, IL
`
`60018, whose members are mattress manufacturers.
`
`3.
`
`Upon information and belief, defendant
`
`Industrial Rubber & Supply,
`
`Inc.
`
`(“Industrial” or “defendant”) is a corporation organized and existing under the laws of the State
`
`of Washington, having a place of business at 2105-515‘ Avenue East, Suite 200, Fife, WA 98424.
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the Lanham Act, 15 U.S.C. 1051, et seq. and under state
`
`statutory and common law. Original jurisdiction is conferred on this Court through the Lanham
`
`Act, and 15 U.S.C. 1121, pursuant to 28 U.S. C. 1331 and 1338. There is also diversity
`
`jurisdiction because of the existence of the requisite statutory amount pursuant to 28 U.S.C.
`
`1332. This Court has pendant jurisdiction over the claims brought under the state statutory and
`
`common law pursuant to 28 U.S.C. 1338 and 1367(a).
`
`5.
`
`6.
`
`Venue in this Court is based upon 28 U.S.C. 1391.
`
`Upon information and belief the acts of defendant of which Complaint herein is
`
`made have been and continue to be committed by defendant in interstate commerce.
`
`7.
`
`Upon information and belief defendant has done business within New Jersey and
`
`is subject to the jurisdiction of this Court. Furthermore, this Court has jurisdiction because of the
`
`defendant’s Internet domain name “comfor-pedic.com” as detailed hereinafter pursuant to Lima
`
`Manufacturing Company V. Zippo Dot Com, Inc., 952 F.Supp. 1119 (W.D. Pa., 1997).
`
`8.
`
`Upon information and belief, defendant has caused harm or tortious injury in New
`
`Jersey by acts or omissions outside New Jersey.
`
`P1-IIP\4l4507\1
`
`- 2 -
`
`

`
`
`
`Bemco’s “COMFA-PEDIC” Mattresses
`
`FACTS
`
`9.
`
`Plaintiff is in the business of controlling the manufacturing and selling of
`
`mattresses and related goods mattresses manufactured by its members including: White Cross
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`Sleep Products, Inc. of 901 East Lycoming Street, Philadelphia, PA 19124; Bemco Mattress,
`
`Inc., 4952 Industrial Drive, Springfield, IL 62703; and Meridian Mattress Factory, Inc., 200
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`Rubush Avenue, P.O. Box 5127, Meridian, Mississippi.
`
`10.
`
`Since September 1, 1964 Bemco has sold in interstate commerce mattresses
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`under its mark “COMFA-PEDIC”.
`
`11.
`
`Its mark “COMFA-PEDIC” has been registered as Registration No. 841,640 on
`
`the Principal Register since January 2, 1968 (renewed January 2, 1988) for mattresses. A copy
`
`of Registration 841,640 is armexed as Exhibit 1. Registration 841,640 is incontestable pursuant
`
`to Section 15 ofthe Lanham Act, 15 U.S.C. 1065.
`
`12.
`
`By dint of its long exclusive usage of its mark “COMFA—PEDIC”, Bemco now
`
`owns a valuable goodwill symbolized by, and embodied in, its federally registered incontestable
`
`trademark “COMFA-PEDIC”.
`
`Defendant’s Infringing “COMFOR-PEDIC”
`Mark, Trade Name and Domain Name
`
`13.
`
`Defendant is a direct competitor of Bemco. Defendant sells its mattresses in
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`direct competition with Bemco in Bemco’s trading areas.
`
`14.
`
`Defendant uses “COMFOR-PEDIC” as a trademark for its mattresses.
`
`It also
`
`does business under the trade name or corporate name “COMFOR-PEDIC”.
`
`In addition, it uses
`
`the domain name “comfor-pedic.com” for its Internet web site. There is annexed as Exhibit 2 a
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`promotional piece issued by defendant which uses “COMFOR—PEDIC” as a trademark for sleep
`
`PHIP\4l4507\l
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`- 3 -
`
`

`
`products including mattresses, as a corporate name, and also on the business card of its President
`
`Jack Squires uses “comfort-pedic.com” as its name for its domain web site.
`
`15.
`
`There is armexed as Exhibit 3 a portion of defendant’s website including its
`
`dealers. Such dealers operate in areas overlapping Bemco’s markets. For example, defendant’s
`
`dealer in Howell, New Jersey is within 60 miles of Bemco’s White Cross Sleep Products, Inc.’s
`
`factory in Philadelphia and overlaps the trading area of such factory.
`
`16.
`
`On information and belief, defendant adopted its trademark “COMFOR—PEDIC”
`
`for mattresses without checking the Federal Register to determine if such mark were available.
`
`17.
`
`On information and belief, defendant adopted its trade name of “COMFOR-
`
`PEDIC” without checking for any conflicts.
`
`18.
`
`Defendant filed an intent—to-use trademark application Serial No. 78/293,787 on
`
`August 28, 2003 for “COMFOR—PEDIC”. After the application was rejected by the Patent and
`
`Trademark Office (“PTO”) because of the likelihood of confusion with plaintiffs Registration
`
`841,640 the defendant instituted Cancellation No. 43,304 to cancel plaintiffs Registration
`
`841,640. There is annexed as Exhibit 4 the contents of the file wrapper of plaintiffs application
`
`Serial No. 78/293,787.
`
`19.
`
`The defendant has had actual knowledge of plaintiffs Registration 841,640 since
`
`at least March 2004 when defendant received the Office Action in its application Serial No.
`
`'78/293,787 from the PTO sent March 19, 2004. Defendant continued its infringement
`
`notwithstanding this actual knowledge and the statement _in Exhibit 4 from the PTO in the Office
`
`Action that defendant’s mark “COMFOR—PEDIC” so resembles plaintiffs registered mark “that
`
`it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive
`
`the potential customer as to the source of the goods and/or services”. As to the trademark law’s
`
`PHIP\414507\l
`
`- 4 —
`
`

`
`“likelihood of confusion test, the PTO also stated “Here, the likelihood of confusion test is
`
`satisfied because the marks have highly similar commercial impressions and identical goods.”
`
`20.
`
`Defendant has admitted that there is a likelihood of confusion between its mark
`
`“COMFOR-PEDIC” by filing its Petition for Cancellation in Cancellation No. 43,304, which
`
`with Bemco’s Answer is annexed Exhibit 5, wherein defendant stated through its counsel that
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`plaintiffs Registration 841,640 was in “derogation of and causes damage of petitioner’s right to
`
`use the mark “COMFOR—PEDIC” on or in conjunction with mattresses”.
`
`21.
`
`In addition to defendant’s actual knowledge of plaintiffs Registration 841,640,
`
`defendant had constructive notice of plaintiffs mark. Thus, plaintiff has used ® adjacent to its
`
`mark on labeling since long prior to defendant’s first usage of its infringing mark “COMFOR-
`
`PEDIC”.
`
`22.
`
`Upon information and belief, defendant’s use of its infringing trademark was
`
`Willfill and deliberate, and was done with full knowledge of plaintiffs federally registered
`
`trademark.
`
`23.
`
`Defendant’s use of its infringing trademark has had the effect of wrongfully
`
`usurping the goodwill represented by plaintiffs registered trademark and has the effect of
`
`allowing defendant to obtain an unfair advantage for competing products.
`
`24.
`
`Upon information and belief, defendant’s use of its infringing trademark is unfair,
`
`dishonest, deceptive, fraudulent and discriminatory, and was done with the intent, and has the
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`effect of destroying fair and honest competition between the plaintiff and defendant.
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`PHIP\414507\l
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`COUNT I
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`STATUTORY TRADEMARK INFRINGEMENT
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`25.
`
`The allegation of paragraphs 1
`
`through 24 above are incorporated herein by
`
`reference as though fiilly set forth herein.
`
`26.
`
`This cause of action for trademark infringement arises under the trademark laws
`
`ofthe United States, 15 U.S.C. 1051 et seq.
`
`27.
`
`Plaintiff’ s Registration 841,640 is valid, subsisting, unconcealed and unrevoked,
`
`and is incontestable.
`
`28.
`
`Plaintiff has continuously used its “COMFA-PEDIC” mark on mattresses sold in
`
`interstate commerce since September 1, 1964, and has continued such sales since long prior to
`
`the acts of the defendant complained of herein.
`
`29.
`
`Plaintiff’ s trademark was unique to plaintiff until
`
`the infringing acts of the
`
`defendant complained of herein.
`
`30.
`
`Defendant has infringed upon plaintiffs rights in its registered trademark by
`
`among other things, having made, and/or selling, offering for sale and/or advertising, mattresses
`
`and related sleep products bearing the mark “COMFOR-PEDIC”.
`
`31.
`
`Upon information and belief, the acts of the defendant were intended and are
`
`likely to cause confusion, mistake or deception as to the source of origin, sponsorship or
`
`approval of the goods marketed by defendant bearing defendant’s infringing trademark
`
`“COMFOR-PEDIC” . Customers or others are likely to mistakenly believe that defendant’s
`
`“COMFOR-PEDIC” goods were made and sold by plaintiff or under sponsorship of, or an
`
`affiliation with, plaintiff.
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`PHlP\414507\1
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`
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`32.
`
`Upon information and belief, the defendant’s infringing activities have continued
`
`despite defendant’s actual knowledge of plaintiffs rights in its incontestable federally registered
`
`trademark “COMFA-PEDIC”.
`
`33.
`
`Plaintiff has no control over defendant’s goods with the result that defendant’s
`
`valuable goodwill in respect to mattresses is irreparably damaged by the acts of the defendant
`
`complained of herein.
`
`34.
`
`Upon information and belief defendant will continue to infringe the rights secured
`
`to plaintiff by its incontestable registration unless restrained by this Court.
`
`35.
`
`As a result of said trademark infringement by defendant, plaintiff has suffered and
`
`continues to suffer irreparable injury, for which it has no adequate remedy at law.
`
`COUNT II
`
`FEDERAL UNFAIR COMPETITION
`
`36.
`
`The allegations of paragraphs 1 through 35 are incorporated herein by reference
`
`as though fully set forth herein.
`
`37.
`
`This cause of action for unfair competition arises under Section 43(a) of the
`
`Lanham Act, 15 U.S.C. l125(a).
`
`38.
`
`Persons,
`
`including potential customers,
`
`familiar with plaintiff’ s
`
`‘COMFA-
`
`PEDIC” mattresses on encountering defendant’s goods would be likely to believe and would be
`
`justified in so believing, that defendant’s goods were introduced by or under the sponsorship of
`
`or in affiliation with plaintiff.
`
`l
`
`39.
`
`Defendant’s promotion and/or sale of its “COMFOR-PEDIC” goods represents to
`
`the trade and purchasing public that such goods are sold by or under sponsorship of, or in
`
`affiliation with, or with the approval of plaintiff.
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`PHIP\414507\1
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`
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`40.
`
`Defendant’s usage of its trade name of ‘COMFOR-PEDIC” represents to the trade
`
`and purchasing public that its goods are sold by or under the sponsorship of, or in affiliation
`
`with, or with the approval of, plaintiff,
`
`41.
`
`Defendant’s usage of “comfor-pedic.com” for the domain name of its web site is
`
`likely to cause the trade or the purchasing public to believe that defendant’s goods are sold by or
`
`under the sponsorship of, or in affiliation with, or with the approval of, plaintiff.
`
`42.
`
`Defendant’s aforesaid acts in connection with the promotion and/or sale of its
`
`goods are likely to cause confusion, mistake or deception among the trade and public.
`
`43.
`
`Defendant’s aforesaid actions constitute unfair competition in violation of 15
`
`U.S.C. ll25(a). As a result of said unfair competition by defendant, plaintiff has suffered and
`
`continues to suffer irreparable injury for which it has no adequate remedy at law.
`
`44.
`
`Upon information and belief, defendant will continue to engage in the unfair
`
`competition complained of herein unless restrained by this Court.
`
`COUNT III
`
`FALSE DESIGNATION OF ORIGIN
`
`45.
`
`The allegations of paragraphs 1 through 44 are incorporated herein by reference
`
`as though fully set forth herein.
`
`46.
`
`This cause of action for false designation of origin arises under Section 43(a) of
`
`the Lanham Act, 15 U.S.C. ll25(a).
`
`47.
`
`The sale of “COlV[FOR—PEDIC” mattresses and other sleep products constitutes a
`
`false designation of origin for such goods in violation of Section 43(a) of the Lanham Act 15
`
`U.S.C. ll25(a).
`
`PHIP\414507\l
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`48.
`
`Plaintiff has no control over the defendant’s goods bearing the “COMFOR-
`
`PEDIC” mark, with the result that plaintiff’s valuable goodwill with respect to its goods is
`
`irreparably damaged. As a result of defendant’s false designation of origin complained of herein,
`
`plaintiff has suffered and continues to suffer irreparable injury for which it has no adequate
`
`remedy at law.
`
`49.
`
`Upon information and belief, defendant will continue to make its
`
`false
`
`designations of origin in commerce unless restrained by this Court.
`
`COUNT IV
`
`STATE TRADEMARK AND UNFAIR COMPETITION CLAIMS
`
`50.
`
`The allegations of paragraphs 1 through 49 are incorporated herein by reference
`
`as though fully set forth herein.
`
`51.
`
`This cause of action arises under state statutory and common law.
`
`52.
`
`By the acts and activities complained of herein, the defendant is in a position to
`
`pass off its goods as goods produced by, or under license from, or with the approval of plaintiff.
`
`53.
`
`Plaintiff has no control over the infringing goods sold by the defendant, with the
`
`result that plaintiffs valuable goodwill is irreparably injured by the acts complained of herein.
`
`54.
`
`The acts and conduct of the defendant complained of herein constitutes trademark
`
`infringement and unfair competition under state statutory and common law.
`
`55.
`
`Defendant’s conduct herein complained of has damaged plaintiff, and will, unless
`
`restrained, further impair, if not destroy the value of plaintiff’ s mark and the goodwill associated
`
`therewith. As a result of defendant’s infringing and unfair conduct complained of herein,
`
`plaintiff has suffered and continues to suffer irreparable injury for which it has no adequate
`
`remedy at law.
`
`PHIP\4l4507\1
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`

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`56.
`
`Upon information and belief, defendant will continue to engage in such infringing
`
`and unfair conduct unless restrained by this Court.
`
`COUNT V
`
`COMMON LAW TRADEMARK INFRINGEMENT
`
`57.
`
`The allegations of paragraph 1 through 56 are incorporated herein by reference as
`
`though fully set forth herein.
`
`5 8.
`
`This cause of action arises under the common law for common law infringement
`
`of plaintiff s mark “COMFA-PEDIC” by the acts and activities complained of herein.
`
`59.
`
`The defendant’s acts herein complained of constitute a violation of plaintiff’ s
`
`common law rights in its trademark “COMFA-PEDIC” and its appurtenant goodwill.
`
`60.
`
`Defendant’s conduct herein complained of has damaged plaintiff, and will, unless
`
`restrained, further impair, if not destroy the value of plaintiff’ mark and the goodwill associated
`
`therewith. As a result of defendant’s common law trademark infringement, plaintiff has suffered
`
`and continues to suffer irreparable injury for which it has no adequate remedy at law.
`
`61.
`
`Upon information and belief, defendant will continue to engage in its common
`
`law trademark infringement unless restrained by this Court.
`
`COUNT VI
`
`UNJUST ENRICHMENT
`
`62.
`
`The allegations of paragraphs 1 through 61 are incorporated herein by reference
`
`as though fully set forth herein.
`
`63.
`
`This cause of action arises under the common law.
`
`64.
`
`By the acts and activities complained of herein, the defendant has been unjustly
`
`enriched.
`
`PHLP\414507\l
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`

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`JURY TRIAL DEMAND
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`A trial by jury of all issues so—triable is demanded.
`
`PRAYERS FOR RELIEF
`
`WHEREFORE, plaintiff prays for relief against defendant as" follows:
`
`A.
`
`For a preliminary and a permanent injunction restraining defendant, including its
`
`divisions, officers, agents, servants, employees, and all persons in active concert or participation
`
`with them who receive actual notice of the injunction by personal service or otherwise, from
`
`doing, abiding, causing or abetting any of the following:
`
`1.
`
`Directly or indirectly infringing plaintiff’ s trademark “COMFA-PEDIC”
`
`and its Registration 841,640;
`
`2.
`
`Engaging in any acts or activities directly or indirectly calculated to trade
`
`upon the trademark and/or reputation or goodwill of the plaintiff;
`
`3.
`
`Directly or indirectly using any false description or representation in
`
`connection with the sale of its products;
`
`4.
`
`Filling and/or taking any orders for “COMFOR-PEDIC” sleep products
`
`including mattresses, pillows, mattress covers, mattress toppers and related products;
`
`5.
`
`Using, offering for
`
`sale, promoting, advertising, marketing and/or
`
`distributing any goods under a corporate name or trade name which includes “COMFOR-
`
`PEDIC” or a designation confusingly similar to plaintiff’ s mark “COMFA-PEDIC”.
`
`6.
`
`Using, offering for
`
`sale, promoting, advertising, marketing and/or
`
`distributing any goods under the domain name “comfor—pedic.com”;
`
`goods; and
`
`7.
`
`8.
`
`Doing any acts which will give rise to a false designation of origin for its
`
`Competing unfairly with plaintiff in any manner whatsoever.
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`PI-lIP\4l4507\1
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`B.
`
`That defendant be required to send a written notice acceptable to plaintiff and to
`
`he Court to each of its customers from whom they have ever received an order for “COMFOR-
`
`PEDIC” goods, notifying each such customer that all outstanding orders for such goods have
`
`been cancelled and that no further orders can be accepted.
`
`C.
`
`That defendant be required to send a written notice acceptable to plaintiff and to
`
`the Court to each of the customers to whom defendant has shipped “COMFOR-PEDIC” goods
`
`notifying each customer that such goods are recalled and requesting each such customer to return
`
`all such goods in its possession, custody or control to defendant at defendant’s expense.
`
`D.
`
`That defendant take all necessary and appropriate steps to recall all goods and
`
`promotional materials including Internet websites, stationery, promotional pieces, advertising
`
`and signs bearing any reference to “COMFOR-PEDIC” from defendant’s distributors, jobbers,
`
`wholesalers, retailers and other customers, which goods have not been resold by those customers.
`
`E.
`
`That defendant be forbidden from filling pending orders for its “COMFOR-
`
`PEDIC” goods;
`
`F.
`
`That defendant be required to account for and pay over to plaintiff all of the
`
`profits obtained from their unlawful acts as complained of herein
`
`G.
`
`That defendant be directed to account and pay over to plaintiff all damages
`
`suffered by plaintiff as a result of defendant’s violation of the Lanham Act, or of state statutory
`
`or common law, as complained of herein, and that such damages be trebled because of
`
`defendant’s willful actions.
`
`H.
`
`That the Court enter an order placing reasonable but effective restrictions on the
`
`future transactions and activities of defendant so as to prevent fraud on the Court and so as to
`
`PHIP\4l4507\l
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`nsure the capacity of the defendant to pay, and the prompt payment of any judgment entered
`
`gainst defendant
`
`1.
`
`J.
`
`That plaintiff be awarded compensatory damages.
`
`That plaintiff be awarded punitive damages for the willful and wanton acts of
`
`unfair competition and other unlawful injurious acts of defendant complained of hereon.
`
`K.
`
`L.
`
`That plaintiff be awarded its reasonable attorneys’ fees in the cost of this action.
`
`That plaintiff be awarded such other