Proceeding
`Party
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA88126
`ESTTA Tracking number:
`06/30/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92044828
`Defendant
`Active Organics, Inc.
`Active Organics, Inc.
`1097 Yates St.
`Lewisville, TX 75057
`
`Correspondence
`Address
`
`ANTHONY H. HANDAL
`BROWN RUDNICK BERLACK ISRAELS LLP
`7 TIMES SQUARE
`NEW YORK, NY 10036
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Motion to Suspend for Civil Action
`Anthony H. Handal
`ip@brownrudnick.com
`/s/AHH
`06/30/2006
`actiseamotion.pdf ( 5 pages )(97860 bytes )
`actiseadoc.pdf ( 30 pages )(647298 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Trademark Registration No. 2,788,713
`For the mark: ACTISEA
`
`Date Registered December 2, 2003
`
`s;;s1;i;;‘;s5sss;;:‘;;;;::"""""""".
`
`Petitioner,
`
`V.
`
`Cancellation No.: 92044828
`
`ACTIVE ORGANICS, INC.,
`Registrant
`
`...................................................-_x
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`Attn: MAIL STOP TTAB
`*$*$*$$*$*$****$*$*$****$*$*e$$$$$*$***$****#*****$*$*$*$***$$***$$$*$$$$$**$
`
`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that this paper (along with any paper referred to as being attached or enclosed) is being filed
`electronically with the TTAB at www.uspto.gov on:
`
`
`June 30 2006
`Date:
`$5*******-***333*$5*ii‘3|"33|‘$*7**~*33*75¢****$3!‘$*$****3‘********33***$*$***$****************
`
`lsflune Kaps
`
`By:
`
`
`
`MOTION TO STAY AND/OR SUSPEND PROCEEDINGS
`
`
`
`The Registrant, Active Organics, Inc. (“Active Organics”), a corporation duly organized
`
`and existing under the laws of Texas and having its headquarters at 1097 Yates Street,
`
`Lewisville, Texas, hereby moves to stay andfor suspend these proceedings pursuant to
`
`Trademark Rule 2.117 (37 C.F.R. § 2.1 17). The parties hereto are currently parties to a parallel
`
`civil action pending in the United States District Court for the Eastern District of Texas, Sherman
`
`Division (the “District Court”) entitled Active Organics, Inc. V. Natural Thoughts, Inc., Case No.
`
`

`
`4:06cv254 (the “Parallel Action"). It is believed that a final determination of the civil action will
`
`bear on and likely resolve the issues before the Board. A copy of Active Organics’ Complaint in
`
`the Parallel Action is attached hereto as Exhibit A. In support of this motion, Active Organics
`
`states as follows:
`
`1.
`
`The Parallel Action involves claims by Active Organics against the Petitioner in
`
`this proceeding, Natural Thoughts, Inc. (“Natural Thoughts”). Active Organics has asserted
`
`claims of trademark infringement, dilution, false designation of origin a_nd unfair competition
`
`under federal and state law against Natural Thoughts, arising out of Natural Thoughts’ use of
`
`marks that are likely to cause confusion with Active Organics’ registered and common-law
`
`trademarks.
`
`2.
`
`Of particular relevance to this proceeding, Active Organics has sought an order of
`
`judgment from the District Court that the above referenced federal trademark registration owned
`
`by Active Organics is valid at law and infringed by Natural Thoughts and that Natural Thoughts-
`
`be enjoined from making and selling and otherwise infringing upon the trademarks of Active
`
`Organics. E Ex. A, Prayer for Relief fi|1[ (f), page 15. In other words, the registrability of the
`Active Organics’ mark at issue in this proceeding is also at issue in the Parallel Action.
`
`3.
`
`Pursuant to Rule 2.117, “Whenever it shall come to the attention of the
`
`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil
`
`action which may have a bearing on the case, proceedings before the Board may be suspended
`until termination of the civil action[.]” 37 C.F.R. § 2.1 1'?(a). Based on the foregoing, it would
`
`promote the economical and efficient resolution of the current dispute between the parties for the
`
`Board to stay this proceeding pending the conclusion of the Parallel Action. As the
`
`Commissioner of Patents and Trademarks has stated,
`
`Since the Trademark Trial and Appeal Board is an administration tribunal vested
`with authority to hear and decide only those controversies specifically defined in
`
`

`
`the Trademark Act of 1946 its jurisdiction could not extend to all of the
`controversies in issue in the Federal District Court. Consequently, judicial
`economy warrants a consolidation of issues, including those which may be
`presented for determination by the Board or which may have a bearing on an issue
`before the Board, into one forum vested with the authority to hear all issues
`presented. It is not unreasonable, in such a case, that proceedings he stayed in the
`administrative tribunal pending the final disposition of issues by the other forum.
`
`The Other Telephone Co. V. Conn. Nat’! Tel. Co., Inc., 181 U.S.P.Q. 779, 782 (Comm’r 1974)
`
`(“Other Telephone II”) (afirming Board’s stay of opposition proceeding pending resolution of
`
`civil action).
`
`4.
`
`Accordingly, the Board has previously stayed proceedings where the relief
`
`requested in a parallel action would have a bearing on issues before the Board. S_ee_, _e_.g,, Marie
`
`Claire Album S.A. v. Kruger Gmbfl & Co. KG, 29 U.S.P.Q.2d 1792 (T.T.A.B. 1993)
`
`(suspending opposition proceedings before Board pending determination of validity of
`
`applicant’s trademarks in foreign civil action); General Motors Com. V. Cadillac Club Fashions,
`
`_I_r_1_c_,, 22 U.S.P.Q.2d 1933, 193 6-37 (T.T.A.B. I992) (suspending cancellation proceeding
`
`pending conclusion of federal civil action between parties, where federal action would be
`
`determinative of issues before the Board).
`
`5.
`
`It is not necessary to await an answer in the Parallel Action before staying this
`
`proceeding, as the impact of the Parallel Action on this proceeding is apparent from the face of
`
`Active Organics’ Complaint. E Ex. A; General Motors, 22 U.S.P.Q.2d at 193 6-37 (suspending
`
`cancellation proceeding notwithstanding claim that complaint in civil action was not properly
`
`served); The Other Telephone Co. v. Conn. Nat’1 Tel. Co., Inc., 181 U.S.P.Q. 125, 126 (T.T.A.B.
`
`1974) (“Other Telephone I”) (civil action has begun upon filing of complaint; it is not necessary
`
`that answer be filed before Board may determine effect of civil action upon opposition
`
`proceeding in considering opposer’s motion to stay).
`
`

`
`6.
`
`It is also more efficient to stay this proceeding than to seek a stay of the Parallel
`
`Action, because the issues and relief that are the subject ofthe civil action are broader than the
`
`subject matter of this proceeding and “while a decision of a Federal District Court would be
`
`binding on the Patent Office, a decision by the Trademark Trial and Appeal Board would be
`
`merely advisory with respect to the disposition of issues presented in a Federal District Court.”
`
`Other Telephone II, 181 U.S.P.Q. at 782; see also Goya Foods, Inc. v. Tropicana Products, Inc.,
`
`846 F.2d 848, 853-854 (2d Cir. 198 8) (PTO determinations not binding upon district court; also,
`
`where district court action involves not only issues of registrability but also claims of
`
`infringement or claims for declaration of non—infringement, interest in prompt adjudication of
`
`parties’ rights outweighs deference to pending TTAB proceedings); Maritz, Inc. v. QberGold,
`
`Q, 947 F. Supp. 1328, 1337 (ED. Mo. 1996) (denying stay of court action pending resolution
`
`of Board opposition proceeding, where such a stay would cause delay and Board proceeding
`
`would not resolve issues in litigation).
`
`

`
`7.
`
`The undersigned certifies that the undersigned has in good faith conferred with
`
`Petitioner’s counsel in an unsuccessful effort to secure the requested stay without filing this
`
`Motion.
`
`8.
`
`WHEREFORE, ACTIVE ORGANICS prays that this proceeding be stayed until
`
`such time as the proceeding in the Parallel Action is concluded.
`
`Dated: June 30, 2006
`
`Respectfully submitted,
`
`ACTIVE ORGANICS, INC.
`
`By:
`
`is/Anthony H. Handalf
`Anthony H. Handal
`Brown Rudnick Berlack Israels LLP
`
`7 Times Square
`New York, New York 10036
`Telephone No.: (212) 408-4800
`Facsimile No.:
`(212) 408-4801
`E-Mail: ip@brownrudnick.com
`
`Attorneysfor Registrant
`
`CERTIFICATE OF SERVICE
`
`It is hereby certified that a copy of the foregoing has been duly served on the
`PETITIONER by forwarding a copy of the same to its attorney of record, Lawrence A.
`Maxham, Maxham Firm, Symphony Towers, 750 B Street, Suite 3100, San Diego, CA
`92101, by first-class mail, postage prepaid, on June 30, 2006.
`
`/s/Anthony H. Handall
`Anthony H. Handal
`
`

`
`W5 44 0*“-3=’99)
`
`CIVIL COVER SHEET
`
`The JS-44 civil cover sheet and the infiormation contained herein neither replace nor mpaplement the filin and service ofpleadings or other apers as required
`by law, except as
`vided by local rules of court. This form, approved b the Iudici Conference of
`e United States in September 19 4, is required for
`the use of the Cler of Court for the purpose of initiating the civil dodret s set.
`(SEE lNSTR.UC'I‘IONS ON THE REVERSE OF THE FORM.)
`
`I. (a) P
`ACITVE ORGANICS, INC.
`
`DEFENDANTS
`NATURAL THOUGHTS. INC.
`
`(b) County of Reaidce ofFiratLia1ed Plaintiff‘ DENTON CQUNTY
`(EXCEPT IN u.s. PLAINTIFF cases)
`
`county of Residence ofFirst Listed Defendant
`(IN u.s. PLAINTIFF cases ONLY)
`IN LAND CONDEMNATIDN CASES. USE THE LOCATION OF THE
`LAND INVOLVED.
`
`NOTE:
`
`(c)
`
`.atttemey's (Firm Name, Address, and Telephone Number)
`
`Attorneys (If Known)
`
`Anthony H. I-Iandal of BROWN RUDNICK BERLACK ISRAELS LLP
`Seven Times Square, New York, NY 10036
`212.209.4942
`
`1]. BASIS OF JURISDICTION (‘Place an -x- in One Bait Only)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES(i>laee an "x" in One Box or i-laietirr
`(For Diversity Cases Only)
`and One Box For Defendant)
`P11?
`DEF
`PTF
`DEF
`
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`
`1 U.S. Government
`Plait-itifi‘
`
`H 3 Federal Question
`(U .5. Government Not a Party)
`
`Citizen of This State
`
`E 1
`
`El 1
`
`Incorporated or Principal Place
`of Bu siness In This State
`
`El 4
`
`C] 4
`
`El 2 11.5. Government
`Defendant
`
`El 4 Diversity
`(Indicate Citizenship ofI’arties
`in Item III)
`
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`
`El 2
`
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`
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`
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`
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`340 Marine
`345 Marine Frothiet
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`El asoittoter Veltiele
`D 355 M otor Vehicle
`sretittet Liability
`350 Other retsettal Injury
`crviL RIGHTS
`CI 44] Voting
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`El
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`El 153 Recovery of Overpayment
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`360 Stockholders‘ Suite
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`
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`IV. NATURE OF SUIT
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`28 USC 15'!
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`Proceeding
`State Court
`Appellate Court
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`Litigation
`‘mdgmem
`(Cite the 11.5. Civil Statute u er w ehyou are filing and write ‘brief statement o cause.
`
`VI‘
`ACTION Do not cite jurisdictional statutes unless diversity.)
`Unfair Competition
`
`OTHER STATUTES
`
`
`
`El 400 State Reapportionment
`El 410 Antitrust
`El 430 Banks and Banking
`I3 450 Connnerccflcc Ratesttetc.
`El 460 Deportation
`'3 470 Racketeer Intittetteeti and
`
`
`
`BANKRUPTCY
`El 422 Appeal 28 USC I58
`
`PROPERTY RIGHTS
`
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`
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`El
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`I:
`191 Enipl. Ret. iae.
`
`
`
`I'E§Ii IN
`V II. REE
`COMPLAINT:
`I
`i
`IFANY
`
`E] CHECK 1}: 11-11313 A c1,,\ss AC1-[on
`UNDER F-R-‘3-1 23
`(See instructions}:
`
`JUDGE
`
`DEMAND 5 ]NJ
`
`CHECK YES only ifdernantled in complaint:
`JURY DEMAND:
`it Yes
`El ‘No
`
`DOCKET NUMBER
`
`
`
`

`
`Q-.A0 440 (Rev. 8101) Summons in a Civil Action
`
`UNITED STATES DISTRICT COURT
`
`Eastern
`
`Disu-ict of
`
`Texas (Sherman Division)
`
`ACTIVE OFIGANICS, INC.
`
`V.
`
`NATURAL THOUGHTS, INC.
`
`SUMIVIONS IN A CIVIL ACTION
`
`CASE NUIVIBER:
`
`TO: (Name and address ofDefendant)
`
`BIOTONE
`4757 Old Cliffs Road
`
`San Diego, CA 92120
`Phone: 619-582-0027
`Fax: 61 9682-0990
`
`YOU ARE HEREBY SUNIMONED and required to serve on PLAINTIFF’S ATTORNEY (name and address}
`
`ANTHONY H. HANDAL
`
`(ATTY BAR ROLL No. 101903)
`BROWN RUDNICK BERLACK ISRAELS LLP
`SEVEN TIMES SQUARE
`NEW YORK, NEW YORK 10036
`212.209.4942 - telephone
`2122094801 - facsimile
`
`days after service
`30
`an answer to the complaint which is served on you with this summons, within
`ofthis summons 011 you, exclusive ofthe day of service. Ifyou fail to do so, judgment by default will be taken against you
`for the relief demanded in the complaint Any answer that you serve on the parties to this action must be filed with the
`Clerk of this Court within a reasonable period of time after service.
`
`CLERK
`
`DATE
`
`(By) DEPUTY CLERK
`
`

`
`§A0 440' (Rev. 8/01) Summons in a Civil Action
`
`RETURN OF SERVICE
`
`
`
`
`
`
`
`
`Check one box below 10 indicate an roriate method 0 service
`
`D Served personally upon the defendant. Place where served:
`
` El Left copies thereof at the defendant's dwelling house or usual place of abode with a person of suitable age and
`
`
`discretion then residing therein.
` Name of person with whom the summons and complaint were left:
`El Returned unexecuted:
`
`El Other (specify):
`
`
`
`
`STATEMENT or SERVICE FEES
`mm “M $0-00
`DECLARATION OF SERVER
`
`
`
`
` I declare under penalty of perjury under the laws of the United States of America that the foregoing information
`
`contained in the Retum of Service and Statement of Service Fees is true and correct.
`
` Executed on
`
` Address ofServer
`
`
`
`(1) As to who may serve a surnmons see Rule 4 of the Federal Rules of Civil Procedure.
`
`

`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`
`SHERMAN DIVISION
`
`_.___.________________..._.._________._....___._x
`
`ACTIVE ORGANICS, ]NC.,
`
`Plaintiff,
`
`V.
`
`Civil Action No.:
`
`NATURAL THOUGHTS, INC .,
`
`Defendant.
`
`.
`
`___.__._.___._.___..._..___.__.___....._.._____.........__-__x
`
`CERTIFICATE OF INTERESTED PERSONS
`
`Plaintiff hereby certifies the following to be a complete list of interested
`persons, including all persons, associations of persons, firms,
`corporations,partnerships, guarantors, insurers, affiliates, parent or
`subsidiary corporations, or other legal entities who are financially
`interested in the outcome of this case:
`
`None
`
`/
`Dated: 6 (J
`
`’ 0 J
`
`Respectfully submitted,
`
`_ ORGANICS, INC.
`AC
`By‘
`Anthony H. Handal
`Brown Rudnick Berlack Israels LLP
`
`Seven Times Square
`New York, New York 10036
`(212) 209.4942
`
`

`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`
`SHERMAN DIVISION
`
`_....__...........-...._._.....-...__......-...___..-x
`
`ACTIVE ORGANICS, INC.,
`
`Plaintiff,
`
`V.
`
`NATURAL THOUGHTS, ]NC.,
`
`Defendant.
`
`'
`
`:
`
`._____-__....__.___.___._...__.______.__.............__--_.-..)(
`
`' Civil Action No.:
`
`DEMAND FOR |URY TRIAL
`
`Pursuant to Federal Rule of Civil Procedure 38, Plaintiff hereby demands a
`
`jury trial of any issues in this action so triable.
`
`Respectfully submitted,
`
`Dated:
`
`S /((1 Ofi
`
`AC
`
`ORGANICS, INC.
`
`
`By‘
`Anthony H. Handal
`Brown Rudnic1< Berlack Israels LLP
`
`Seven Times Square
`New York, New York 10036
`(212) 209.4942
`
`

`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF TEXAS
`
`SHERMAN DIVISION
`
`_.__........_._____.__....__._.____..._._..___._....__.____x
`
`ACTIVE ORGANICS, INC.,
`
`Plaintiff,
`
`v.
`
`NATURAL THOUGHTS, lNC.,
`
`-
`
`:
`
`:
`
`Civil Action No.
`
`COMPLAINT FOR
`TRADEMARK
`
`INFRINGEMENT
`
`Defendant.
`
`__.__........--_......____..__________-_..____,............x
`
`Plaintiff, Active Organics,
`
`Inc., brings this action against
`
`the named
`
`Defendant for injunctive relief and damages under the laws of the United States
`
`and the State of Texas and alleges as its Complaint:
`
`1.
`
`This is an action for false designation of origin and unfair competition
`
`i_n violation of Section 43(a) of the Trademark Act of 1946 ("Lanham Act”), 15 USC.
`
`§ 1125(a) and the Texas Deceptive Trade Practices Act, Tex. Bus. «S: Com. Code Ann.
`
`§ 17.41, et seq.; federal trademark infringement in violation of 15 U.S.C. § 1051 et
`
`seq.; dilution in Violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c) and
`
`the Texas Anti—Dilution Statute, Tex. Bus. 8: Com. Code Ann. § 16.29. Plaintiff
`
`seeks equitable relief and damages.
`
`

`
`IURISDICTION AND VENUE
`
`2.
`
`This Court has jurisdiction over this action by virtue of:
`
`(a) Jurisdiction founded on the existence of a federal question arising
`
`under the Lanham Trademark Act. The Court has jurisdiction under Sections 43(a)
`
`of the Federal Trademark Act of 1946, 15 U.S.C. 1121 and 1125(a), and the Iudicial
`
`Code, 28 U.S.C. 1331(a), 1332 and 1338(a) in that this case arises under the
`
`trademark laws of the United States, 15 U.S.C. 1051 et seq., as hereinafter more fully
`
`appears.
`
`(b) Jurisdiction is further conferred on this Court for each claim on the
`
`basis of diversity of citizenship pursuant to 28 U.S.C. §1332 as, upon information
`
`and belief, Plaintiff is not a citizen of the State of which Defendant is a citizen, and
`
`the matter in controversy, exclusive of interests and costs, exceeds in value the sum
`
`of seventy—five thousand dollars ($75,000);
`
`(c) Jurisdiction over related claims arising under the common law and
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`statutes of the State of Texas. The Court has jurisdiction over claims herein arising
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`under the statutes of the State of Texas under the provisions of 28 U.S.C. 133803) in
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`that said claims are joined with a substantial and related claim under the trademark
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`laws of the United States, 15 U.S.C. 1051 et seq.
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`(d) Venue is proper under 28 U.S.C. 1391.
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`

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`PARTIES
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`3.
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`Plaintiff Active Organics,
`
`Inc.
`
`(”Active Organics”)
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`is a Texas
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`corporation with its principal place of business located in Lewisville, Texas. Active
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`Organics is in the business of manufacturing and selling professional skin care and
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`body care products, and ingredients for body care products.
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`4.
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`Upon information and belief, Defendant Natural Thoughts, Inc. (hereinafter
`
`"NATURAL THOUGHTS”) is a California corporation located at 4757 Old Cliffs Rd. San
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`Diego, California 92120, and solicits and does business, and, upon information and belief,
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`has committed acts of infringement within Texas.
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`FACTS APPLICABLE TO ALL COUNTS
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`5.
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`Plaintiff sells a diverse line of ingredients for
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`incorporation by
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`manufacturers into toiletries and other body care products. These products have
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`been continuously sold in the United States for well over a dozen years. One of
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`ACTIVE's most successful products has been and continues to be its ACTISEA
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`brand vegetable extract. Exhibit A. plaintiff has used the ACTISEA trademark since
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`1993. This product is a concentrated extract made from selected marine algae and
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`the inner gel of the aloe Vera plant. The purified and stabilized active ingredients
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`consist of bioactive sugars, as well as vitamins and enzymes, which are found in
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`both the algae and aloe Vera from which it is made. Sugar oligosaccharides found
`
`in this extract have been postulated to be responsible for the healing effects of aloe
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`-3-
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`

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`vera and some of the observed beneficial effects of algae.
`
`6.
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`Plaintiff has, in the past, sold and continues to sell consumer products
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`in consumer packages under the same trademarks as some of its ingredient
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`products. The trademark ACTISEA (the "Trademark'‘) has been applied to a variety
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`of body care products as part of a continuing effort by Plaintiff to develop and
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`market consumer products. Exhibit B.
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`7.
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`Plaintiff also uses the "ACTI" formative in different trademarks which
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`are applied to ingredients for incorporation by manufacturers into consumer body
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`care products manufactured and sold by others. For example, plaintiff sells a skin
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`texturiser under the trademark ACTFIRM (Exhibit C).
`
`8.
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`Plaintiff also uses the "ACTI" formative in different trademarks which
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`are applied to a range of consumer body care products in consumer packages. For
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`example, Plaintiff sells consumer products in consumer packages under the
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`ACTFIRM trademark, much like its use of the ACTISEA Trademark on consumer
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`products and on ingredients for incorporation by manufacturers into consumer
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`products sold by others.
`
`9.
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`Over the years, Plaintiff has devoted substantial effort and investment
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`in ongoing efforts to build its line of consumer products sold under its various
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`trademarks, including the Trademark ACTISEA. Examples of such efforts relating
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`-4-
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`

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`to the Trademark include, more recently, manufacturing the product in the late
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`1990's and publicizing and promoting ACTISEA consumer products, such as
`
`shampoos and conditioners, at a trade show known as the Face 81: Body Show in
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`San Francisco on November 19-20, 2005.
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`10. Defendant has begun using and continues to use the alleged trademark
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`ACTI-SEA in connection with body care products, namely a body mud made from
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`a mixture of seaweeds. Exhibit D. Defendant has alleged that such a use began in
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`2003. Exhibit E. The alleged trademark ACTI—SEA is confusingly sirnilar and
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`substantially identical to Plaintiffs trademark ACTISEA. Defendant is adyertising,
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`marketing, selling and offering for body care products bearing marks confusingly
`
`similar to and closely resembling Plaintiff's Trademark. Such use is likely to
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`confuse and/ or to deceive the public.
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`MISREPRESENTATION OF ORIGIN
`
`COUNT I
`
`11.
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`As a cause of action and ground for relief, Plaintiff alleges and
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`incorporates by reference paragraphs 1 through 10 of this Complaint as a part of
`
`this Count.
`
`12.
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`Plaintiff, long prior to the acts complained of herein, has been and is
`
`now engaged in interstate commerce by virtue of the ongoing sales of a Wide and
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`diverse line of body care products and ingredients for body care products bearing
`
`

`
`the Trademark ACTISEA.
`
`13.
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`Plaintiff’s body care products and ingredients for body care products,
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`including said products sold under the Trademark ACTISEA and trademarks with
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`the "'ACTI”' formative have been sold in great numbers and continue to be
`
`extensively sold.
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`14.
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`Plaintiff derives substantial benefits from selling body care products
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`and ingredients for body care products incorporating Plaintiff’s Trademark.
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`15.
`
`Plaintiff has used and continues to use its Trademark. Plaintiff has
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`obtained a reputation of the highest quality in connection with its sales of products
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`under the Trademark.
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`Such reputation has given Plaintiff and its body care
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`products and ingredients for body care products a distinguished position in the
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`marketplace.
`
`16.
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`Plaintiff has incurred great expense and has devoted substantial
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`resources to make the ACTISEA products and its trademarks incorporating the
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`ACTI formative readily recognizable to consumers. Plaintiff's investments and
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`efforts have been successful as the Trademark has become highly distinctive in the
`
`marketplace and denotes to purchasers a line of goods which originate with
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`Plaintiff.
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`17. Upon information and belief, long after Plaintiff's adoption and use of
`
`the Trademark in 1993, and without any authorization, Defendant adopted,
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`

`
`allegedly in 2003, and used a mark confusingly similar to Plaintiff's distinctive
`
`mark on Defendant's own body care products. Upon information and belief,
`
`Defendant has distributed, and continues to distribute in interstate commerce to the
`
`public, body care products bearing Defendant's infringing derivative version of
`
`Plaintiff’s Trademark for Defendant's own commercial advantage.
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`18. Defendant has used and continues to use the derivative, and / or
`
`colorable imitation of Plaintiff’s Trademark in direct competition with Plaintiff.
`
`Defendant has used and continues to use the derivative and/ or colorable imitation
`
`of Plaintiff's Trademark in connection with sales, offering for sale or distribution,
`
`advertising and promotion of goods, in a manner that is likely to cause confusion or
`
`mistake or to deceive purchasers as to the source of origin of such goods.
`
`19. Defendant has deliberately misled and will continue to mislead
`
`purchasers, and prospective purchasers, as well as the public at large, to believe,
`
`contrary to fact, that Defendant’s goods are manufactured, marketed, sponsored or
`
`endorsed by, or affiliated with Plaintiff. Defendant is unfairly competing with
`
`Plaintiff by trading on and disparaging Plaintiffs goodwill symbolized by the
`
`Trademark of Plaintiff.
`
`20.
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`Defendant’s acts are a false description and representation that the
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`complained of goods sold under the alleged trademark ACTI-SEA are made by,
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`sponsored by and / or affiliated with Plaintiff. Said acts are in violation of 15 U.S.C.
`
`

`
`1125(a)
`
`in that Defendant has used,
`
`in connection with said goods, a false
`
`designation of origin and a false description and representation, including words,
`
`reproductions and other symbols tending to falsely describe or represent the same
`
`and have caused such goods to enter into interstate commerce.
`
`21.
`
`As a direct and proximate result of these acts of unfair competition,
`
`trademark infringement and false designation of origin, Plaintiff has sustained and
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`will continue to sustain irreparable damage and injury to its business, goodwill,
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`reputation and profits, in an amount not presently known. Plaintiff is entitled to
`
`judgment for Defendant’s profits and any damages sustained by Plaintiff in
`
`consequence of the deliberate nature of the infringement by Defendant in an
`
`amount equaling three times said damages.
`
`2.
`
`By reason of the acts of Defendant herein alleged, Plaintiff has been
`
`damaged and, unless restrained, Defendant has and will continue to deceive the
`
`public, impair the value of Plaintiff's products and otherwise will cause Plaintiff
`
`immediate and irreparable harm.
`
`COUNT II
`
`FEDERAL UNFAIR COMPETITION
`
`23.
`
`As a cause of action and ground for relief, Plaintiff alleges and
`
`incorporates by reference paragraphs 1 through 29 of this Complaint as a part of
`
`this Count.
`
`24. Without Plaintiff's consent, Defendant willfully misappropriated
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`-3-
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`

`
`Plaintiff's Trademark and has displayed and continues to display and otherwise
`
`use said Trademark to procure orders for Defendant’s products. Such use of
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`Defendant's infringing trademark includes use over the Internet with the objective
`
`of diverting to Defendant Internet traffic meant for Plaintiff.
`
`25. Defendant has filled and continues to fill orders for its various
`
`products placed by customers as a result of Defendant’s acts.
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`In so doing,
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`Defendant is deceiving the public and deliberately capitalizing on the goodwill and
`
`reputation of Plaintiff.
`
`26.
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`The aforesaid acts of Defendant constitute unfair competition and
`
`passing off, and are likely to cause the trade and the public to erroneously believe
`
`that Defendant's various products are manufactured and/or guaranteed by
`Plaintiff, contain. ‘ingredients supplied by Plaintiff, or otherwise associated with
`
`Plaintiff. Said acts are in violation of 15 U.S.C. 1125(a) in that Defendant has used,
`
`in connection with goods, a false designation of origin and a false description and
`
`representation, including words, reproductions and other symbols tending falsely
`
`to describe or represent the same and have caused such goods to enter into
`
`interstate commerce.
`
`27.
`
`Such acts have injured and continue to injure Plaintiff's business
`
`reputation and dilute or otherwise injure or destroy the distinctive character of
`
`Plaintiff's Trademark and the quality of Plaintiff's reputation associated with its
`
`

`
`Trademark, all to Plaintiff's substantial and irreparable harm. As a result, Plaintiff
`
`is entitled to relief from this court under 15 U.S.C. 1126(h) and (i).
`
`28.
`
`As a result of Defendant’s willful, fraudulent and malicious acts,
`
`Plaintiff has suffered damage and Defendant has been unjustly enriched in an
`
`amount which is uncertain at present.
`
`Plaintiff is entitled to judgment for
`
`Defendant's profits and any damages sustained by Plaintiff in consequence of the
`
`infringement by Defendant in an amount equaling three times said damages.
`
`29.
`
`By reason of the acts of Defendant alleged herein, Plaintiff has been
`
`damaged and, unless restrained, Defendant has and will continue to confuse and
`
`deceive the public, impair the value of Plaintiff's Trademark and otherwise cause
`
`Plaintiff immediate and irreparable harm.
`
`COUNT III
`TRADEMARK INFRINGEMENT 15 U.S.C. §1051, et seq.
`
`30.
`
`As a cause of action and ground for relief, Plaintiff alleges and
`
`incorporates by reference paragraphs 1 through 29 of this Complaint as a part of
`
`this Count.
`
`31.
`
`Plaintiff owns United States trademark registration for the trademark
`
`ACTISEA, Registration No. 2,788,713. See Exhibit F.
`
`32. Defendant has maliciously, willfully, intentionally, and with conscious
`
`disregard for the consequences, engaged in advertising, marketing and sales of
`
`-10-
`
`

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`body care products featuring or incorporating the name ACTI—SEA which is
`
`confusingly similar to Plaintiff's Trademark ACTISEA.
`
`33. Upon information and belief, Defendant's infringing activities have
`
`occurred in the State of Texas and in interstate commerce. Defendant solicits
`
`business through its Biotone and Biotone Spa websites both through interactive
`
`Internet commerce and through an advertised toll-free telephone number and
`
`facsimile number.
`
`34.
`
`The advertising, marketing and sales of body care products under the
`
`infringing ACTI-SEA trademark ("Inffinging Products") is likely to cause confusion
`
`and to cause the trade and the public to believe that the Infringing Products
`
`originate from or are licensed, or otherwise approved by Plaintiff.
`
`35.
`
`Plaintiff's ACTISEA trademark is inherently distinctive and has
`
`acquired secondary meaning designating Plaintiff as the source of the goods
`
`bearing the Trademark. Defendant's use of ACTI-SEA is likely to cause confusion,
`
`mistake or deception as to the source, origin, affiliation, or sponsorship in violation
`
`of Section 43(a) of the Lanham Act.
`
`36. Defendant's use of its infringing mark on body care products is
`
`substantially similar to the Trademark used by Plaintiff on Plaintiffs body care
`
`products and ingredients for body care products and infringes Plaintiff's exclusive
`
`-11-
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`

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`rights in the Trademark under Section 32(1) of the Federal Trademark Act, 15
`
`U.S.C. §1114(1).
`
`37. Defendant's complained of acts will continue unless enjoined by this
`
`Court.
`
`38.
`
`As a result of the activities of Defendant specified above, Plaintiff has
`
`suffered substantial damages and Defendant has acquired substantial profits, at
`
`Plaintiff's expense.
`
`39.
`
`Defendant has acted intentionally, willfully, maliciously and with con