Trademark Trial and Appeal Board Electronic Filing System. 39145
`
`ESTTA Tracking number: ESTTA50554
`
`Filing date3
`
`10/26/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92044937
`Defendant
`Hunter Fan Company
`Hunter Fan Company
`2500 Frisco Avenue
`§ Memphis, TN 38114
`
`i Hunter Fan Company
`Correspondence 2500 Frisco Avenue
`Address
`Memphis, TN 381 14
`
`Submission
`
`Motion to Suspend for Civil Action
`
`Filer's Name
`as-g e—n1ailW
`
`Danny Avvdeh
`d;;v;}aéh@fiakéiaigiiiéi;;§;1.I§2;};l;f;;£;{;§;¥;li§@i§;;[i;;;‘;l;i§;;};;i§};}{§5351
`
`Signature
`
`/Danny Avvdehl
`
`Date
`
`10/26f2005
`
`Attachments
`
`OPUS Motion to Suspend.pdf ( 2 pages )
`§ OPUS Memorandum in Support of Motion to Suspend.pdf ( 6 pages )
`Opus Proposed Order.pdf ( 2 pages )
`EX. A To Opus Motion.pdf( 11 pages)
`EX. B to Opus Motion.pdf( 55 pages )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADIEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No.: 92044937
`
`Reg. No; 2,988,213 — OPUS
`Reg. Date: August 23, 2905
`
`)
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`) )
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`) )
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`)
`)
`)
`)
`)
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`‘WESTINGHOUSE L'IGHTE‘i\’G
`CORPORATEON,
`
`Petitioner,
`
`v.
`
`HUNTER FAN COMPANY,
`
`Respondent.
`
`RESPONDENTS MOTION TO SUSPEND THE ¥’ROC'EED'ING
`
`PURSUANT TO TRADEMARK RULE 2.117(3)
`
`COMES NOW Respondent Hunter Fan Company ("Respondent") and respectfuliy moves
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`the Trademark Trial and Appeai Board ("Boar “) for suspension of this proceeding pursuant to
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`Trademark Rule 2.1 E"/(a), 37 C.F.R. § 2.117(a), including suspension of Respondents obligation
`
`to file a response to Petitioners Petition to Cancel, pending the final determination of a civii
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`action between Respondent and Petitioner Westinghouse Lighting Corporation ("PetiEioner“) that
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`wili have bearing on the issues presently before the Board in this proceeding.
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`In support of this motion, Respondent submits herewith a Memorandum in Support of
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`Respondents Motion to Suspend the Proceedings Pursuant to Trademark Rule 2.11’7'(a) and
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`attached thereto a copy of the Complaint flied by Respondent on August 31, 2005 in the United
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`States "District Court for the Western District of Tennessee, Western Division, and a copy of the
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`Firs; Amended Complaint tiied by Petitioner on September 7, 2005 in the United States District
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`Court for the Eastern District of .Pennsyivania.
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`WH'EREt?ORE PR‘i3E‘¢1I.SES CO?‘\§Si.DtiR.E.D, Respondent respee£’fu§i3; requests that tire
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`Board. grant its 2\.<’iot'iou to Suspend the §’roceedin.g Pursuant {:13 ”I.‘radem.ark. Rifle
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`i. 'l.'?{a).
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`M .-XRM ‘)C}if£37 V3
`27So3{)f}~O{3()392 i();’2(;.’{}5
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`

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`
`
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`Respecrfuliy subniiited,
`
`/‘D anny Awdehf
`Lea H2111 Speed
`Danny
`Awdeh
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWETZ, PC.
`165 Madison Avenue, Suite 2000
`Memphis, Tennessee 38103
`(901) 526~2000
`Attorneys for Respondent,
`Hunter Fan Company
`
`CERT§'FIC'A'l"E OF CONSULTATION
`
`Comes now, Danny Awdeh, counsel for Hunter Fan Company in the above referenced
`matter, and certifies that on October 26,2005, he oonsufled with Joseph D611‘./iaster, counsel for
`Petitioner, regarding this Motion. Mr. Dem/{aster stated Westinghouse Lighting Corporation will
`not oppose this motion.
`
`/Danny Awdehf
`Danny M. Awdeh
`
`CERTEFiCATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing has been served, via first
`crass mail, postage prepaid, upon Joseph R. Deih/Iaster, J12, Esq. ané Jennifer L. Dean, Esq,
`Drinker Biddle & Reath, LLP, Suite, 1100, 1500 K Street, NW, Wash.ing‘ton, DC. 2G{)05~}2{)9,
`this 26th day ofOetober, 2005.
`.
`
`i’Dan;;i_v Awdehz’
`
`Denny M. Awdeh.
`
`M A}{I\A ‘EH23? V3
`2?8é§3()fJ~{'i()€}292
`l{}.«’?.o/‘()5
`
`E\)
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFF{CE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`
`) }
`
`) )
`
`) Canceltation Nos 92944937
`)
`) Reg. No.: 2,988,233 - OPUS
`) Reg. Date: Aagust 23, 2005
`)
`
`WESTINGHOUSE LIGHTING
`CORPORATION,
`
`Petitioner,
`
`V.
`
`HUNTER FAN COMPANY,
`
`Respondent.
`
`MEMORANDUM IN SUPPORT OF RESPONDENTS MOTION TO SUSPEND
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`THE PROCEEDING PURSUANT TO TRADEMARK RU LE 2.117(3)
`
`
`COMES NOW Respondent Hunter Fan Company {"Respondent”} and tespeetfuily moves
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`the United States Trademark Trial and Appeal Board ("Board") for suspension of this proceeding
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`pursuant
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`to Traden1arl< Rule 2.} ]7(a), 37 C.¥<"..R.
`
`§ 2.117(3),
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`inetuding suspension of
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`Respondent's obligation to fiie a response to Petitioner's Petition to Caneei, pending the final
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`determination of a civil court action between Respondent and Westinghouse Lighting
`
`Corporation ("Petitior1er“) that will have direct bearing on the issues presently before the Board
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`in this Cancellation proceeding.
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`BACKGROUND
`
`On August 25, 2005, Petitioner filed at Complaint against Respondent in the United States
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`District Court
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`for
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`the "Eastern District of Permsytvania,
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`styted Wesnrzghouse Lighting
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`Corporation 1.». Hzmter Fan Compcmy, Case No. 2:05-CV-’~4553, and on September ‘E’, 2005 filed
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`its First Amended Complaint that irteltzded a ctaint for infringement of the OPUS tradeniarlsc as
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`well as a request that the court dectare the rights of the parties in and to the OFUS mark and
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`M ARM ?'}{}l34? V5
`2”r’8(33()€3—!}()(}2‘}2 mxzs-'05
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`
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`

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`cancel Respondent’s OPUS tradernarlc: registration.
`
`(A copy of Petition.er*s First Amended
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`Complaint is attached hereto as Exhibit "A".)
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`On August 3}, 2005, Respondent filed a Complaint against Petitioner in the United States
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`District Court for the Western District of Tennessee, Western Division, styled Hunter Fan
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`Company v. Westinghouse Ligizting Corporation, Case No. 032633, that included claims as to
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`the OPUS trademark for infringement, false designation of origin and unfair competition arising
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`under the Lanham Act,
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`l5 U.S.C. §§ llléi,
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`ll25(a); Violation of the Tennessee Consumer
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`Protection Act under Tennessee Code Ann. 47-18 er sequ; trademark infringement and unfair
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`competition under Tennessee common law.
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`(A copy of Respondentfs Complaint is attached
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`hereto as Exhibit "B".)
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`Accordingly, both. parties now have pending in the federal courts not only requests for a
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`declaration of the parties’ rights in and to the OPUS mark, but also requests for injunctive relief
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`and damages reiating to use of the marks.
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`On September 8, 2005, Petitioner "filed its Petition to Cancel Respondenfs OPUS
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`trademark registration on the grounds that the registration is “likely to cause confusion, mistake
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`or deception by having the public erroneously assume or believe that the goods emanate from
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`Petitioner or that Respondent's goods are in some other way endorsed, licensed, authorized or
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`sponsored by, or in some other way associated or connected with Petitioner, because of
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`Petitioners prior use of OPUS for the same or related goods, all
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`to Petitioners irreparable
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`damage."
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`Respondent woutd show, based upon the ailegations set
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`forth in the federai court
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`Complaints and the remedies sotight,
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`that the findings of the federal court in either of the
`
`ARM ‘)(}i2‘.l4’}‘ V5
`278{)30[§»(}{}("J292 l{Jf2€5!£.)5
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`
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`

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`
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`
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`referenced federal court actions: are likeiy to be dispositive of the issues raised in the instant
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`Canceiiation proceeding, whereas any decision rendered by the Board is likely to be inconclusive
`
`as to the issues raised in the federal court case. For this reason, the present Canceiiation
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`proceeding should be suspended pending the canceliation-determinative decision of the federal
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`courts.
`
`IHSCUSSION
`
`The Board, pursuant to Trademark Ruie 2.1 1"/'(a), may suspend a canceliation proceeding
`
`where a pending civil action may have a bearing on the outcome of that proceeding. Trademark
`
`Ruie 2.i17(a) provides that:
`
`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 or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended untii termination. of the civii action or the other Board
`proceeding.
`
`37 C.F.R. § 2.} 17(a). "To the extent that a civil action in a Federal district court involves issues
`
`in common with those in a proceeding before the Board, the decision of the Federal district court
`
`is often binding upon the Board, while the decision of the Board is not binding upon the court."
`
`TBMP § 5i0.02(a)l.; citing Goya Foods, Inc. v. Tropicana Products, Inc, 846 F.2d 848, 6
`
`U.S.P.Q.2d (BNA) 1950 (2d Cir. 1988). As such, where a civil action and a canceliation share
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`common issues, the outcome of the civil court action Wiii have a direct bearing on the Board's
`
`proceeding. Other Tcfcplione Co. v. Connecticut E\:’oriona! Telephone C0,, 181 USPQ i25
`
`('T'i‘A.B 1974), pctirioi-2 zferzicn’, i81 USPQ 779 (Coirinrr l9?4) ("'...the final deterniiiiation of the
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`civii suit nil"! directly affect the resolution of the issue of likelihood of confusion which is
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`1 ‘Pending in each federal court is a request for a change of venue: the Defendant in the Pernisyivania case has
`requested. that the court t2'ansfi":r the proceeding to Teniressec, and the l}efenciant in the Teiincssee
`has i‘eqnc.<:tcd
`that the court transfer the proceeding, to Pcnnsyivaiiia.
`iiegartiless ofthe venue. the tlrderai courts wiil decide at] of
`the
`set forth herein.
`
`M Ai{.‘v"l Qfiiiizl? V5
`2?¥§('i3(}()—{J(}€l2‘)2
`it")/'2i':ft3.‘5
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`

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`
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`involved in the proceeding before the Tradernark Trial and Appeal Board..."). Accordingly, in
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`such circumstances,
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`the Board will ordinarily suspend the proceedings pending a final
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`determination of the civil action.
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`'I‘Bl\/ll’ § S10.02(a).
`
`The suspension of the Board's
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`proceedings saves the parties from engaging in dupiicative and costly litigation and plays in
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`favor of judicial economy.
`
`In this case, the outcome of the civil court proceeding between Petitioner and Respondent
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`will have a direct bearing on the issue of registrability presently before the Board in this
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`proceeding. The federal court action, like this cancellation proceeding, seeks a determination of
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`which party has superior rights in and to the OPUS mark and includes the issue of whether
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`Petitioner's OPUS trademark is likely to be confused with Responc1ent‘s OPUS trademark. The
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`issues of priority and likelihood of confusion will be fully explored by the federal court and will.
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`be taken as conclusiveiy established upon the court‘s ruling. The couri’s conclusive rulings on
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`these issues will become controlling on the same issues in this Cancellation proceeding. As
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`such, the court's ruling wili inevitably have a direct "bearing on this proceeding," within the
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`meaning of Trademark Rule 2.1l7(a), and in fact, dispose of the centrai issue in this proceeding,
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`which is whether, due to a likelihood of confusion,
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`the registration of Respondent's OPUS
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`trademark will interfere with Petitioner's use and enjoyment of its OPUS trademark. On the
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`other hand,
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`the Board’s ruling in this cancellation proceeding wiil not dispose of all of the
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`traden':ark—re1ated issues in the civil court proceeding. Thus, in the interest of judicial economy
`
`and to save the parties the additionai cost of engaging in duplicative litigation, this cancellation
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`proceeding should be suspended pending a final determination in the civil court action.
`
`M ARM 95184? V5
`2?8630{}-(}£')fi292 if)/‘2{3fO5
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`

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`For the foregoing reasons, Respondent respectfully requests that the Board grant
`
`its
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`motion and suspend this proceeding pursuant to Trademark Rule 2.117(3) pending a final
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`determination of the pending civii court proceeding between Petitioner and Respondent.
`
`Respectfuily submitted,
`
`/Danny Awdehf
`Lea Hal} Speed
`Danny M. Awdeh
`BAKER, DONELSON, BEARMAN,
`CALDWELL & BERKOWITZ, PC.
`
`165 Madison Avenue, Suite 2000
`
`Memphis, TN 38103
`(901) 526-2000
`Attorneys for Respondent,
`HUNTER FAN COMPANY
`
`M ARM ‘}0‘:E'§47" VS
`2?’8o3(}0~00{}292 1€}=’Z’.()ft}5
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing has been delivered via first
`class mail, postage prepaid,
`to Joseph R. De1Master, EL, Esq. and Jennifer L. Dean, Esq,
`Drinker, Biddle & Reaih LLP, Suite H00, 1500 K Street, NW, Washington, DC. 20005-1209,
`this 26th day of October, 2005.
`
`fDann}g Awdehf
`Danny M. Awdeh
`
`M A§'i2\i’{ 903847 vi
`27863(}()—0(}f)292 §{l=’2{>.»’{fi5
`
`6
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`

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`IN THE UNITED STATES "PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`)
`
`) )
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`) )
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`) Caneeliation Ne.: 92944937
`)
`) Reg. No; 2,988,213 - OPUS
`) Reg. Date: August 23, 2065
`
`WESTINGHOUSE LIGHTING
`
`COR'P0'RATiO‘;\‘,
`
`Petitioner,
`
`v.
`
`HUNTER FAN COMPANY,
`
`Respondent".
`
`}
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`FROPOSEB ORDER GRANTING RESPONDENTS MOTION TO SUSPEND
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`THE MIOCEEDING PURSUANT TO TRADEMARK RULE 2.117(3)
`
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`Upon Motion, Hunter Fan Company ("Respondent“) has requested the Tradernarit Trial
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`and Appeal Board ("Board") suspend this proceeding pursuant to Trademark Ruie 2.117(3), 37
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`C.'F.R. § 2.117(3),
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`including suspension of Respondent's obligation to tile 3 response to
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`Petitioner's Petition to Cancel pending the iinal determination of a civil action between
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`Westinghouse Lighting Corporation ("Petitioner") and Respondent that wili have bearing on the
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`issues presently before the Board in this proceeding. The Board finds that this proceeding should
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`be suspended pursuant to Tredemaric Rule 2.li7(a), 37 C.F.R.
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`§ 2.117(3) pending the final
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`detemniiation of the eivii action between Respondent and Petitioner.
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`IT IS THER.E'FO'RE, ORDERED, ADJUDGED, AND DBCREED that this proceeding
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`be suspended pursuant to Trademark Rule 2.117(a), 37 CFR. § 2.1 i7'(_a), including suspension
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`of Respondents obligation to file a response to Peti.tionei“‘s Petition to Canoe-1, pending the final
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`determination of the civii action between Respondent and PCtifi.OI}.€5i‘.
`
`M ARM 961862 vi
`27863{J(}—O{l0292 l0/25305
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`

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`TRADEMARK TRUXL AND APPEAL M
`BOARD
`
`Date:
`
`M ARM 961862 vl
`27S630{)—GO(?2‘}2 IO/25/()5
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`

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`EXHIBIT "A"
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`

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`IN THE UNITED STATES IHSTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`Civil Action No. 2:O5«04553 BWK
`
`Jury Trial Requested
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`WESTINGHOUSE LIGHTING CORPORAT1ON,
`
`Plaintiff
`
`v.
`
`HUNTER FAN COMPANY,
`
`Defendant
`
`FIRST AMEN DED COMPLAINT
`
`Plaintiff Westinglioase Ligliting Corporation (“WLC”), by and through its counsel,
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`hereby complains against The Hunter Fan Company, Inc. (“Hunter”) as follows:
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`The Parties
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`1.
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`Plaintiff Westinghouse Lighting Corporation is a Pennsylvania corporaiion having
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`its psincipal piece of business at 12401 McNulty Road, Phiiaclelphia, Pennsylvania.
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`2.
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`Defendant Hunter Fan Co. is a corporation having its principal place of business
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`in Memphis, Tennessee.
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`Jurisdiction and Venue
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`3.
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`This case arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 et see; in
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`pasticuiar under § 2201 which creases a civil remedy in a case of actuai cont:*ove:‘sy within. the
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`jurisdiction of any court of {he United Siaies. Direct allegations of infringement of both
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`tradeznari anti pa:-en: by .P.l.on.ter agaiost lhiestinghousefi combineé with a éireci ibreai ihai }E~iun:;<:r
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`I}C‘253 94923 l
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`

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`intends to enforce its rights in this case, as recounted ‘oelow, satisfy the “case or controversy”
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`requirement for declaratory judgment jurisdiction. This action also arises under the patent laws
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`of the United States, 35 U.S.C. § 271 and 282.
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`4.
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`Venue is proper in this district under 28 U.S.C. §§ 139i(b) and (C).
`
`General Statement of Facts
`
`5.
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`Hunter claims to be the owner of unregistered trademark rights in a particular
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`“blade iron” (3. metal support arm that connects a ceiling fan motor to the fan blades) appearance
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`that Hunter terms its “PREFERENCE blade iron.”
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`6.
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`Hunter claims to be the owner of United States Design Patent D399,555 for the
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`appearance of a motor housing for a ceiling fan.
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`7.
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`On or about August 5, 2005, Hunter’s intellectual property counsel sent a letter to
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`the president of WLC, alleging that WLC infringes both the alleged PREFERENCE blade iron
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`trademark and the fiesign Patent.
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`8.
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`In the August 5 letter, Hunter’s counsel stated that “Hunter vigorously enforces its
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`intellectual property rights when infringed upon by others, and intends to do so in this case.”
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`Counsel concluded his letter with the direct threat that unless WLC ceased its alleged
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`infringement, “Hunter will he forced to aggressively protect its intellectual property rights from
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`continued infringernent.”
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`9.
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`iiuntefs direct threat of eziforcemerit of its elain1edtradentarl<.and patent rights
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`has put WLC in reasonable apprehension of being sued for infringement. Hunter’s stateinent of
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`its intent to enforce its claiined tradenaark. and patent rights demonstrates the existence of an
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`D0535?-i92‘~l
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`« 2 ~
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`

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`actual controversy between the parties within the rneanirrg of “actual centroversy” in the
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`Declaratory Judgment Act.
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`10.
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`WLC markets and sells a ceiling fan under the model narne “BETHANY” that is
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`the target of the accusations by Hunter.
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`ll.
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`Hunter claims to be the owner of two trademark registrations: Reg. No. 2,920,ll I
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`“THE FRENCH QUARTER” for ceiling fans; and Reg. No. 2,988,2E3 “OPUS” for ceiling fans.
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`1.2.
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`Hunter’s application to register “THE FRENCH QUARTER” was filed on
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`September 25, 2003. The application to register “OPUS” was filed on December 29, 2003.
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`13.
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`WLC has used in interstate commerce nationwide and continues to use the marks
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`“OPUS” and “FRENCH QUARTER” on its ceiling fans since long before the applications to
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`register the two Hunter marks, and even longer before the Hunter marks were used in commerce.
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`14.
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`On August 25, 2005 Hunter’s counsel sent a letter demanding that WLC cease
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`and desist using the OPUS and FRENCI-1 QUARTER marks in connection with ceiling fans in
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`view of the two registrations that it allegedly owns. That letter further threatens that if WLC
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`does not compiy, Hunter may “pursue its remedies for monetary and injnnctive relief.”
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`COUNT 1
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`Declaratory Judgment That The Alleged Hunter “blade iron” Trademark is Not Infringed
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`15.
`
`WLC incorporates the atlegations of paragraphs LE4 above in fail as if fuily set
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`forth herein.
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`16.
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`Hunter has no protectabie trademark or trade dress rights for its “PREFERENCE
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`blade iren.”
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`t3c::53s492'i:
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`- 3 -
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`

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`I7. WLC is entitled to a declaratory judgment that the blade iron on the WL-C
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`“BETHANY” ceiling fan does not infringe any traciernark or trade dress rights alleged to be
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`owned by Hunter.
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`E8.
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`Hunter is not entitled to enforcement of its alleged trademark or trade dress rights
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`against the WLC “BETPlANY” ceiling fan or its components.
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`COUNT ll
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`Declaratory J udgrnent That The Patent Is Not infringed
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`19.
`
`WLC incorporates the allegations of paragraphs l—l4 above in full as if fully set
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`forth herein.
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`20.
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`The appearance of the BETHANY ceiling fan motor housing is not so similar to
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`that of the design illustrated in the Design Patent that an ordinary observer would confuse the
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`BETHANY ceiling fan motor housing with that shown in the Design Patent.
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`21. WLC is entitled to a declaratory judgment that W'LC’s BETHANY ceiling fan
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`Inotor housing design does not infringe Hunter’s Design Patent.
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`22.
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`Hunter is not suffering any harm from infringement of its Design Patent by the
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`WLC BETHANY ceiling fan.
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`23.
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`Hunter is not entitled to any remedy for infringement of its Design Patent by the
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`WLC BETHANY ceiling fan.
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`COUNT ill
`
`Declaratery Judgment Of i\€en—infringement
`ef “OPKES” and “THE FRENCH. QUARTER” Marks
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`24.
`
`WLC incorporates the allegations ofparagraphs LE4 ahove in full as if fully set
`
`ferth. herein.
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`D(Z’~.:¥Z=9492"-.§
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`~ 4 -
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`

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`25.
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`Hunter’s cease and desist letter containing the threat that Hunter would pursue its
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`remedies and injunctive relief in connection with the “OPUS” and “THE FRENCH QUARTER”
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`trademarks, together with the previous letter threatening Eegal action in connection with the
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`alleged blade iron trademark and design patent infringement, create a case or controversy
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`between Hunter and WLC that includes the “OPUS” and “THE FRENCH QUARTER”
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`tradentarlcs.
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`26. WLC is not infringing any enforceable Hunter trademark rights in the marks
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`“OPUS” and “THE FRENCH QUARTER” for ceiling fans.
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`27.
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`Hunter is suffering no legally cognizabie harm from WLC’s use of
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`Westinghouse’s “OPUS” and “FRENCH QUARTER” trademarks.
`
`COUNT IV
`
`Cancellation of Hunter “OPUS” and “THE FRENCH QUARTER” Registrations
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`28. WLC incorporates the allegations of paragraphs 1—27 above in full as if fully set
`
`forth herein.
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`29. WLC’s use in nationwide interstate commerce of the marks “OPUS” and
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`“FRENCH QUARTER” on ceiling fans tong before Hun.ter’s use and applications to register
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`“OPUS” and “THE FRENCH QUARTER” for ceiling fans gives WLC superior rights to the
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`marks.
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`30.
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`Hunter is not entitied to own US. trade1na.rl< registrations 2,920,Il1 and
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`2,988,2l3.
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`3].
`
`WLC is entitled to cancel Huntefis US. tradernark registrations 2,920,I 1 I and
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`2,988,233 for “OPUS” and “THE FRENCH QUARTER” respeetivety.
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`BCK539492‘-.1
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`Jurisdiction and Venue for Count V
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`32.
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`This court has jurisdiction over the subject matter of Count V below under 28
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`U.S.C. § I332(a)(1) because the parties are citizens of different states and the amount in damages
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`is in excess of $75,000. The court atso has supplemental jurisdiction over the subject rnatter of
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`Count V under 28 U.S.C. § 1367(a) because the acts giving rise to Count V form part of the same
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`case or controversy under Article 111 of the US. Constitution as the acts giving rise to Counts I-
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`IV.
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`33.
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`Venue is proper in this district under 28 U.S.C. §§ l39l(b) and (c).
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`COUNT V
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`Tortious Interference With Business Relations
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`34.
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`WLC incorporates the allegations of paragraphs l»33 above in fiiil as if fnily set
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`forth herein.
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`35.
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`36.
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`This Count arises under the common law of Pennsyivania.
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`On information and belief, Hunter has approached WI..C’s Chinese manufacturer
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`of the BETi~iAN'Y ceiling fan and informed that manufacturer that the WLC ceiling fan violates
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`I-Iunter’s inteltectuat property.
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`37.
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`On information and belief, Hunter has demanded that WLC’s manufacturer stop
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`making and seiling the BETHANY ceiiing fan for Westinghouse.
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`38.
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`On irtforznation and beléefl WisC’s tnanufaetttrer, acting upon the demanci from
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`Hunter, has stopped inaidng the BE"l”HAE\iY ceiling 't‘a.ri tor Westingitouse.
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`oc:539492:t
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`39.
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`WLC and its manufacturer, until the interference by Hunter, had enjoyed a long
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`business relationship with each other.
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`40.
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`Hunter’s interference in the relations between WLC and its manufacturer has
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`caused a disruption in the relationship, an interruption. in the supply of BETHANY ceiling fans
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`made for and delivered to WLC, and resuiting harm in iost sales.
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`41.
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`Hunter’s interference in the relations between WLC and its manufacturer is
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`deliberate and is intended to produce the result of which WLC complains.
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`Jurisdiction and Venue for Count VI
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`42.
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`This court has jurisdiction over the subject matter of Count VI under 28 U.S.C. §
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`1331. Count Vi arises under 15 U.S.C. § 1E25(a).
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`43.
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`Venue is proper in this court under 28 U.S.C. §§ 139l(b) and (c).
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`COUNT VI
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`Trademark Infringement
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`44.
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`WLC repeats the allegations containeoi in paragraphs 1-43 in their entirety as if
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`futly set forth herein.
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`45.
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`WLC has been using the marks “OPUS” and “FRENCH QUARTER” openly and
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`notoriously in interstate commerce throughout the United States on two modeis of WLC ceiling
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`fans since long before the applications to register “OPUS” and “THE FRENCH QUARTER”
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`were filed by Hunter.
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`46. WLC’s nationwide use of the marks “OPUS” and “FRENCH QUARTER”
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`precedes the date of first use in commerce ctaimed in H'uriter’s trademark registrations 2,920,11t
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`and 2,988,213.
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`47.
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`As a result, WLC has superior rights in and is the owner of the marks “OPUS”
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`and “FRENCH QUARTER” for ceiling fans.
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`48.
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`Hunter is using the marks “OPUS” and “THE FRENCH QUARTER” on ceiling
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`fans.
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`49.
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`Hunter’s use of the marks “OPUS” and “THE FRENCH QUARTER” on ceiling
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`fans is likety to cause confusion, mistake, and to deceive the public as to the affiliation,
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`connection or association of Hunter with WLC as to the origin of the Hunter eeiiing fans marked
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`“OPUS” and “THE FRENCH QUARTER."
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`50.
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`Hunter’s use of the marks “OPUS” and “THE FRENCH QUARTER” on ceiling
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`fans is an infringement of WLC’s trademarks “OPUS” and “FRENCH QUARTER” for ceiling
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`fans.
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`5 l.
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`Hunter’s infringement of the “OPUS” and “FRENCH QUAR'l‘ER” marks is
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`willfui and deliberate.
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`S2. WLC is being harmed by the infringement of its trademarks by Hunter.
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`PRAYER FOR RELIEF
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`WI-I.EREF()RE, Piaintiff Westinghouse Lighting Corporation prays that this honorabte
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`court grant reliefas follows:
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`A.
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`That this court grant judgment for WLC and against Hunter deciaring that the
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`WLC BETHANY ceiling fan blade iron does not infringe any alieged trademark or trade dress
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`rights ciairned by Hunter;
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`B.
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`That this court grant judgment for WLC and against Hunter declaring that the
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`WLC BETHANY ceiling fan does not infringe the Hunter Design Patent D399,555;
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`C.
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`That this court grant judgment for WLC and against Hunter declaring that WLC
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`does not infringe the trademarks “OPUS” and “THE FRENCH QUARTER”;
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`D.
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`That this court declare that WLC has superior rights in the marks ‘‘()?US’’ and
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`“FRENCH QUARTER” for ceiling fans and order the Commissioner of the U8. Patent and
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`Trademark Office to cancel Henter’s U.S. trademark registrations 2,9203 1 1 and 2,988,213.
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`E.
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`That this court enter judgment for WLC and against Hunter on the claim for
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`tortious interference with business relations and award such money damages as are shown;
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`F.
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`That this court enter a permanent injunction against Hunter that will bar Hunter
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`from further interference with W}.-C’s business relations.
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`G.
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`That this court enter judgment for WLC and against Hunter for trademark
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`infringement by Hunter’s use of the DPUS and FRENCH QUARTER marks.
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`H.
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`This this court order Hunter to pay damages for its infringement of WLC’s
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`trademarks under E5 U.S.C. § 11i7(a) and that such damages be enhanced up to three times.
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`J.
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`That this court permanently enjoin Hunter from continued use of the “OPUS” and
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`“THE FRENCH QUARTER” trademarks in connection with ceiiing fans.
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`K.
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`That this eeuit grant such other reiief as it deems equitahie and just.
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`t)ct‘=53<;4s)2:.i
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`JURY DEMAND
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`Piaintiff Westinghouse Lighting Corporation requests a jury triai on the issues of
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`trademark (or trade dress) infringement by WLC, patent infringement by WLC, tortioes
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`interference wiih business relations by Hunter, and trademark infringement by Hunter.
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`Respectfully submitted,
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`WESTINGHOUSE LIGHTIN" O“ ORATiON
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`
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`DRINKER BIDDLE & REATI-I LLP
`E500 K Street NW Suite 1100
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`Washington, DC. 20005
`202-842-8879
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`Artomeysfor Piainzyff
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`EXHIBIT "B"
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`

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`L, I,
`,._,,,,, ,, ,_,, 3,
`IN THE UNITED sures DISTRICT cooar
`FOR THE WESTERN DISTRICT OF TENNESSEE ‘W ‘ ‘ W ‘t’
`*
`WESTERN DIVISION
`
`
`HUNTER FAN COMPANY,
`)
`‘
`)
`es ~—- 2 as 3 M
`)
`No. Civil Action No.
`)
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`Plaintiff,
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`:2
`‘
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`"'
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`JURY TRIAL DEMAN})ED
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`) )
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`)
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`) )
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`V.
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`WESTINGHOUSE LIGHTEVG
`CORPORATION,
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`Defendant.
`)
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`
`COMPLAINT
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`
`COMES NOW Plaintiffi Hunter Fan Company, anti for its Complaint against Defendant,
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`Westinghouse Lighting Corporation, states the following:
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`I.
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`THE PARTIES
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`1. Plaintiff Hunter Fan Company ("Plaintiff"), is a corporation organized and existing
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`under the laws of the State of Delaware having a principal place of business located at 2500
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`Frisco Avenue, Memphis, Tennessee 38114.
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`2. Upon information and belief, Defendant Westinghouse Lighting Corporation
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`("Defen<iant"), is a Pennsylvania corporation having a principal place of business located at
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`E2401 Mcbiuity Road, Philadeipliia, Pennsyivania. Deferidanfs authorized agent for service of
`
`process is Ray-"mono Angelo, Vv’estin_ghouse Lighting Corporation, 1240? Mcbitzlty Road,
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`Phiiadeiphia, Pennsyivania, 19 E 54.
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`s"v‘z LS 399”.-’6‘é 2-'2
`I.'3«t‘2 G8;3i.:’f?5
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`
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`II.
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`JURISDICTION AND VENUE
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`3. This is an action against Defendant for patent infringement arising under the Patent
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`Laws of the United States, specifically 35 U.S.C. §§27E, 281; an action for
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`trademark
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`infringement, false designation of origin and unfair corneetition arising under the Lanhazn Act,
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`15 13.3.0 §§lIl4, 1125(a); an action for vioiation of the Tennessee Consumer Protection Act
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`under Tennessee Code Ann. 47~18 et seq.; and trademark infringement and unfair competition
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`under Tennessee common law.
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`4. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §
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`1331 as it involves a federal question; United States Patent Laws, 28 U.S.C. §l338(a) as it
`
`involves federal patent law; 15 UUSICK § 1121 as it involves trademark law under the Lanham
`
`Act; 28 U.S.Ct § I338(a) as it involves federal trademark law; 28 U.S.C. § 1338(1)) as it invoives
`
`unfair Competition related to a claim under trademark law; and 28 U.S.C. § 1332 as the action is
`
`between citizens of different States, and the amount in controversy in this action, exclusive of
`
`interest and costs, exceeds the sum of $75,000.00. This Court has pendent jurisdiction over the
`
`claims that arise tinder Tennessee iaw pursuant to 28 U.S.C. § 1367(a) because they are
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`substantialiy related to the claims that arise under the patent laws and the trademark laws of the
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`United States. Furthermore, this Court has pendent jurisdiction because both the state and
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`federal claims are derived from a common nucieus of operative facts and considerations of
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`judiciai economy dictate the state and federai issues be consolidated for a single trial.
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`5. This Court has personal
`
`jurisdiction over Qefendant based upon Defendants
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`transaction of business in the state of Tennessee and sufficient minimum contacts with the state
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`of Eennessee.
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`6. Venue is proper in this District under 28 U.S.C. § 1391(1)) and 28 U.S.C. § l39l(c).
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`III.
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`THE CONTROVERSY
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`PLAINTIFFS PATENTED ANE) TRADE DRESS PRODUCT DESIGNS
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`7. Since 1886, Plaintiff andfor its predecessors in interest have been and continue to be
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`engaged in the business of having ceiling fans produced and selling those ceiling fans in the
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`United States.
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`8. Defendant also seils ceiling fans in the United States.
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`9. For many years, Plaintiff has sold certain ceiiing fans which incorporate a ceiling fan
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`blade iron configuration having a unique trademark appearance (hereinafter Plaintiffs
`
`"Trademark Blade Iron") and certain ceiling fans which incorporate a motor housing
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`configuration having a unique trademark appearance (hereinafter Plaintiffs "Trademark Motor
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`Housing"). Attached hereto as Exhibit A is a depiction of Plaintifts Trademark Blade Iron and
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`as Exhibit B is a depiction of Plaintiffs Trademark Motor Housing.
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`10. Plaintiffs Trademark Blade Iron is
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`incorporated into Plaintiffs ULTEMA and
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`PREFERENCE brand ceiling fans, as well as in other of Plaintiffs ceiling fans, and has been
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`widely advertised or promoted and extensively offered for sale with its unique iook as a
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`component of the ULTLVEA and PREFERENCE brand ceiling fans sold by Piaintiff throughout
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`the United States and within the State of Tennessee.
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`11. Plaintiffs Trademark Motor Housing is also incorporated into Piaintiffs ULTELN-'lA
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`and ?REFEREl\’CE brand ceiling fans, as well as in others of Flaintiffs ceiiing fans, and has
`
`seen widei}: advertised or promoted and extensiveij; offered for saie axitli its anionic idea as a
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`component of the ULTIMA and PREFERENCE brand ceiling fans sold by Plaintiff throughout
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`the United States and within the State of Tennessee.
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`12. As a result of the long and exclusive use by Plaintiff of its Trademark Blade Iron and
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`Trademark Motor Housing, the large sales under the Trademark Blade Iron and Trademark
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`Motor Housing, and the large amount of money spent or foregone for advertising and promotion
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`of the products sold under the Trademark Blade iron and Trademark Motor Housing, the
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`Trademark Blade Iron and Trademark Motor Housing have become, through widespread and
`favorable public acceptance and recognition, exclusive assets of substantial value as symbols of
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`Plaintiff, its quality products and its good will.
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`33. On October 13, 1998,
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`the United States Patent and Trademark Office duly and
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`lawfully issued US. Patent No. Des.399,555 (“the ‘S55 patent”) to inventors Jack W. Gee, II and
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`Masao Tsuji for the invention entitled "LOWER HOUSFNG FOR A CEILING FAN”.
`
`(§e_e
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`Exhibit C, Plaintiffs U.S. Patent, Reg. No. Des.399,555).
`
`14. Jack W. Gee, II and Masao Tsuji assigned all rights in the ‘555 patent to Pla