Trademark Trial and Appeal Board Electronic Filing System. ggjgg
`
`ESTTA Tracking number: ESTTA50601
`
`Filing date3
`
`10/26/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92044947
`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
`
`Signature
`Date
`
`/Danny Awdehl
`10/26l2005
`
`Attachments
`
`The French Quarter Motion to Suspend.pdf ( 2 pages )
`§ The French Quarter Memorandum In Support of Motion to
`Suspend.pdf( 5 pages )
`The French Quarter Proposed Order.pdf ( 2 pages )
`EX. A To Motion To Suspend.pdf( 11 pages )
`i Ex. B to Motion to Suspend.pdf( 55 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRABEEVIARK OFFICE
`
`BEFORE THE TRADEIVIARK TREAL AND APPEAL BOARD
`
`WESTINGHOUSE L-IGHTiNG
`
`CORPORATION,
`
`Petitioner.
`
`V.
`
`HUNTER FAN COi\/IPA.NY,
`
`Respondent.
`
`"u—¢’\—/‘¢/"—.¢"&/%-/\-/%—I’%/‘-—/
`
`C
`
`ancellation No.: 92044947
`
`Reg. No.2 2,920,111 — THE FRENCH QUARTER
`Reg. Date: January 18, 2005
`-
`
`RESPONDENTS MOTION TO SUSPEND THE PROCEEDING
`
`i’URSL'ANT TO TRADEMARK RULE 2.117(3)
`
`COMES NOW Respondent Hunter Fan Company (“Resp0nder1t") and respectfully moves
`
`the Trademark Trial and Appeat Board ("Board") for suspension of th.is proceeding pursuant to
`
`Trademark Rule 2.1 i7(a)., 37 C.F.R. § 2.1l7(a), including suspension of Respondents obligation
`
`to fite a response to Petitioners Petition to Cancel, pending the final determination of a civil
`
`action between Respondent and Petitioner Westinghouse Lighting Corporation ("'Petitioner") that
`
`wiil have bearing on the issues presently before the Board in this proceeding.
`
`In support of this motion, Respondent submits herewith a Memorandum in Support of
`
`Res'pondent‘s Motion. to Suspend the Proceedings Pursuant to Trademark Rule 2.} i7('a) and
`
`attached thereto, a copy of the Complaint filed by Respondent on August 31, 2005 in the United
`
`States District Court for the Western District of Tennessee, Western Division and a copy of the
`
`First Amended Compiaint filed on September 7, 2005 in the United States District Court for the
`
`Eastern District of Pennsyivania.
`
`WHEREFORE PREMISES CONSIDERED, Respondent respectfuily requests that the
`
`Board grant its Motion to Suspend the Proceeding Pursuant to Trademark Ruie 2.1 171(3):;
`
`M ARM 961234 V4
`27'§§€)3{lO-O{)U2‘}2
`10/26505
`
`

`
`Respeetfuily submitted,
`
`fDamAWdeh;"'
`Lea Hali Speed
`Danny M. Awdeh
`BAKER, DONELSON, BEARMAN,
`
`CALDWELL & BERKOWTTZ, P.C.
`
`1.65 Madison Avenue, Suite 2000
`
`Memphis, TN 3 8103
`(901) 526—2000
`
`Attorneys for Respondent,
`HUNTER FAN COMPANY
`
`C.ERTiFICATE OF CONSULTATION
`
`Comes now, Danny Awdeh, eounseé for Hunter Fan Company in the above referenced
`matter, and certifies that on October 26,2005, he corisuited with Joseph Delivlaster, counsel for
`Petitioner, regarding this Motion. Mr. De-1Mester stated Westinghouse Lighting Corporation will
`not oppose this motion.
`
`/Danny Awdehf
`.Dan.r1y M. Awdeh
`
`_
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing has been deiivered via first
`class mail, postage prepaid,
`to Joseph R. "Dem/faster,
`J11, Esq. and Jeuriifer L. Dean, Esq_.,
`Drinker, Biddle & Reath LLP, Suite 11.00, 1500 "K Street, NW, Wasinington, DC. 20005-3209,
`
`this 26th day of October, 2005.
`
`;"Danny Awdeh/’
`Danny M. Awdeh
`
`M ARM 901234 V4
`278(i30()~l}I)(}292 1():’?_o:’(}5
`
`

`
`IN THE [TED STATES PATENT AND TRADEMARK OFFECE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`VVESTINGHOUSE LIGHTING
`CORPORATION.
`
`Petitioner,
`
`V.
`
`'~...«\.../\.,w'u../\..,,./
`
`)Ca;:ceiIation 350.: 92044947
`)
`
`HUNTER FAN COMPANY,
`
`Respondeni.
`
`) Reg. No.: 2,929,111 ~ THE FREl.‘<"CI'I QUARTER
`) Reg. Date: Jamzary 18, 2005
`)
`
`i\ri'ENEORA§\‘D'UE\’1 IN SUPPORT OF 'RES'PO§‘\"E)ENT’S MOTiON TO SUSPEND
`
`THE PROC'EED['NG PURSUANT T0 TRADEMARK RULE 2.217(3)
`
`COlV1E.S NOW Respondent Hzmtcr Fan Cempzmy ("R<:s;;--<3nd<3;::i") anti respectf'ully moves
`
`the United Siaées Trademark Trial and Appeal Board ('"Board"'} fer s;L§sp€::.3siel2. ofihis gxocecdiragg
`
`pursuzini
`
`:0 Trademark Rule 2.11'7(a), 37 C.l3.R.
`
`§
`
`2.1§.7('a)_.
`
`including suspension of
`
`Respondent's obligation to file a response to 'Pc%itioner‘s Pctiiion to Cancel, pt-3n.dlng the final
`
`delemlination of a civil court action between "Re-zspondenz and W<:s£%ngl:oa1s<: Lighting
`
`Corporation (”'Pcti:ioner") that will have {HYSC1 bearing on the issues prescmly before the Board
`
`in this C2:.nce11ati011 proceecléng.
`
`BACKGROUNE)
`
`G1: Augazst 25, 2005, Pciitioner filed a Complaint against Respondent in {he Uniicd Siaies
`
`E}is:ric’:
`
`{Tcazrz
`
`for
`
`lie
`
`Blstzfici
`
`GE’
`
`.§’c:r;.:1s§,»€22;.::la*:,
`
`sséylszcl
`
`§3§’2e.s':z'.r:{;;s’raa.;.s:a
`
`;’,:'gi2;'sT:z:g:
`
`{Z"z3;7:;m’;Zz'e*;::
`
`:1 ,%’*;"z;2:r<>s" .-57:52; {E7};-2g_:sar:-z_a; {Easc
`
`Z:€fi35~{7'*v’«—=”é:?S3-H aizai <22: Sat;"s€,»2'?“;?;a:r
`
`2§}{}§ :‘”E§é:a§
`
`1:2‘;
`
`l':§TS§ :%_§“12a::”l€§ci§
`
`{7<31‘:1;-flair}: iléaé lncizzclcci 2: cézsém 50? :7.e3l’;"i:":gcmei":i G‘{%,§':s3 E*‘EP‘<E§.‘\§C§*.§. fi~,..RT.§*3§?:
`
`A
`a.
`ifciiléigiaigég an
`
`._
`
`:’\S
`gas;
`
`am ,,
`1‘
`I4
`as zméazusi 32:1 llg, kiiilzziz
`
`iltilgafa.
`
`—-
`
`.
`
`""0
`..;.,.
`§s._§;;§T%§$
`
`is ,4.
`<31. am,
`
`. zj
`;?:&.m.c2 :3;
`
`SUN 9
`».:;.§:..; W L32;
`
`M 3'{}~/1 ‘$1.33
`37i'€s,._
`€‘;("Ev(l'€}i}2*}2
`
`\4'-3+
`ZEE;’Z€:"(}5
`
`

`
`FRENCH QUARTER mark and cancel Respondent’s Tfiii. IVRENCH QUARTER ttademarix:
`
`registration.
`
`(A copy of Petttioitefs First Antended Complaint is attached hereto as Exhibit "A*‘.)
`
`On August 3 i t 2005, Respoitdent fited a Cornpiaiiit against Petitioner in the United States
`
`District Court for the Western District of Tennessee, Western Division, styled HI£!'if€f' Fan
`
`C‘0mpan__t2 v. Wesriiigizozwe Ligfzring Ckwpomtion, Case No. U5—2633, that included etaints as to
`
`the FRENCH QUARTER trademark for infringeinent, false designation of otigin and unfair
`
`competition atising meter the Lanham Act,
`
`i5 U'.S.C. §§ Ella,
`
`]125(_a); violation of the
`
`Tennessee Consumer Protection Act Lifldfil” Tennessee Code Ann. 47—§8 et seq; trademark
`
`infringement and uitfair competition under Tennessee comrnon Iaw.
`
`("A Copy of Respondenfs
`
`Complaint is attached i}.Ci‘€fO as Exhibit "B"._)
`
`Accotdingiy, both parties now have pending in the federai courts not only requests for a
`
`declaration of the parties’ rights in and to 'I‘.{"Ei?.'. 1?"REi\EC H QUARTER and IJRENCI--E QIEAI-{TER
`
`marits, but also requests for iniunctive relief and damages reiating to use ofthe marks.
`
`On September 8, 2005, Petitioner flied its Petition.
`
`to Cancel Respondents THE.
`
`FRENCH QUARTER trademark registration on the g§‘OL'm(iS that the registtation is "likely to
`
`Cause confusion, mistake or deception by havttig the public erroneously assume or believe that
`
`the goods emanate from Petitioner or that Respo1i(te:t1t's goods are in some other way endorsed,
`
`iéee-nsed, attthorized or sponsored by‘, or in some other Way associated or connected with
`
`Petitionet, because of Pe'ti.tio:te:t’s prior ttse of FRENCH QUA.RT.E.R for the same or related
`
`ggootts.
`
`to .i}t3iitiGi‘:Ct'§S tt”§TC§}£’t1.‘&i’}ii3 tiaittttgge.”
`
`'t?.es'§3on.ttetit
`
`ttoaiti stiettg ‘easeei
`
`'ttpGt'"t
`
`the aiiegatiotts set
`
`tort}:
`
`in tite tettetai
`
`L‘t“2?,t§"i.
`
`Compiaiitts and the remedies sotigitt,
`
`tiiat
`
`the iinditpggs of” the federai court
`
`in either of the
`
`
`
`{U
`
`

`
`referenced federal court actions} are liiceiy to be di.sposio'.\«’e of the issues raised in the instant
`
`Cancellation 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 Cancellation
`
`proceeding shouid be suspended pending the cancellatioi.i—tieterminative decision of the federal
`
`courts.
`
`DISCUSSION
`
`The Board, pursuant to Trademark Rule 2.§ l7(a), may suspend a cancellation proceeding
`
`where a pending civil action may have a ‘bearing 023 the outcome of that proceeding. Trademark
`
`Rule 2.1 l7(a) provides that:
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal. Board
`that a party or parties to a §}€ET1(ll.§]g 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. until termination of the civil action or the other Board
`proceeding.
`
`37 C.l~‘.R. § 2.i 17(3). "To the extent that a Civil action in a Federal district court involves issues
`
`in commori with those in a proceeding before the Board, the decision of the Federal district court
`
`is often biridiiig upon the Board, wl1.il.e the decision of the Board is mot binding upon the court."
`
`'il‘BI‘»/ll’
`
`3lO.U2(a)l; Cirirrg G()}.,=a Foods, Inc. ‘:2. Tropicrzrza Prodzrcts, 1:20., 846 F.2d 848, 6
`
`U.S..P.Q.2d (_BNA) i950 (2d Cir. 1988). As such, where a civil action and a cancellation share
`
`c.o1nmon issues, the outcome ofthe civil court action wilt have a direct bearing on the Boards
`
`proceeding. Or?-ier Tefeplzorie Co. it C7o1zr2ectic.*ziI £\Fari'0r-2:2! Tale}?/320126 C0,, 181 EJSPQ E25
`
`{’.%f'§I.-3-33 $74 _. p<E':‘§‘f:'5}sr r:‘ei:.:'eré§ ii if E.f'$i‘{} ?”.«-‘<2 {{f‘oimr{:‘ l%l7*l}
`
`tine? deter:.itiizati.:or; ot’t‘;e
`
`A4.
`.3
`c.
`.5,
`cieii sait eels: €.‘%i§‘:’3C‘;.§}=’ ass‘ the resoitztioii oiftlte issue o§"i§.l<;ei.iiz.eod oifcoiztfesion is-*h.ici: is
`
`the
`
`e€\:eiii:e:
`
`the E’
`
`the i.:<;.=::oes set its .22 i”§.<f§<;:z§,
`
`3.1 ;‘xi{'.’$t "}(,li3§3 V-3
`Z7§‘§€>3€}t}~tl€}{"§2‘J2
`l{):‘3e’3;G:"=
`
`

`
`ir.ivoE.ved in the proceeding ‘oefore the Trademar§< Trial and Appeal Board. .
`
`. "). Accordingly, in
`
`such eireuinstances, the Board will ordinarily suspend the proceedings pending a final.
`
`deierrnination ofihe civil aeiion. TBMP § 5 l{}.02{a). The suspension of the Board's
`
`proceedings saves the pariies from engaging in diiplicséive and costly litigation and plays in
`
`favor ofiudicisl economy.
`
`In this case, the outcome of {he civil court piroeeeding hetween Petitioner and Respondent
`
`will have a direct bearing on the issoe of registrabiliiy presently before the Board in this
`
`proceeding. The federal Cour’: action, like this earzcellaiion p1‘oceeding, seeks a determination of
`
`which party has superior riglits in. and to THE FR'EZ\ECTl~l QUARTER mark and includes the issue
`
`of whether Petitioner's FREN'Cl*i QUARTER trademarii
`
`is
`
`likely to be confused with
`
`"Respondents THE "FRENCH QUARTER mark.
`
`The issues of priority and likelihood of
`
`eonfusion will be fully explored by the federal Cour’: and will be taken as conclusively
`
`established upon the court's ruling. The court's conclusive rulings on these issues wiil become
`
`conirolling on. the same issues in this Cancellation proceeding. As such, ihe court's ruiing will
`
`irrevitabiy hax-*e 21 direct "bearing on this pioeeeding," within the meaning of Tradeniark Rule
`
`2.117(3), and in fact, dispose of the central issue in {his proceeding, which is whether, due to a
`
`likelihood of confusion, {lie registration of Respoizdenes Tl-{E FRENCI-l Qi}AR’§‘ER ‘iradernark
`
`will interfere with PeLitioner’s use and enjoyment of its .F.RE2\fCl?l' QUARTER tmdeniark. On. the
`
`other hand,
`
`the Boards ruling in this eancellaiion proceeding will not dispose of oil of {he
`
`‘:z;ideni.ari<—re§s.ied issues is die
`
`eoert ;3'roeeedin§__»:__ Tiiiis. in die ink:-resi o'§7§isdi.eio§ eeo::.o:n§'
`
`;-and io
`
`‘die psriie-s the aideiiiiorsei zoos: oi eiigstiiiiie iié Lill§_'}i§C;i§§K"C i%:igii‘ii.o:i. {iris i3;i%”§C€iii2i'€i{}?E
`
`oroeeeding should
`
`suspended pemiing 21 iirzei deienninaiion in ihe civil {soon action.
`
`.~‘xR?vE ‘fiiil 313 \:'-'-3
`32‘:
`37-’§'€{i3if.'€}~l}{"J£'}Z‘$*2
`§(}.-"'2!:.-"G5-
`
`

`
`For the foregoing reasons, Respondent respectfufiy yequestg that the Board grant
`
`its
`
`motion and suspend this proceeding purstlant
`
`to Traéelnark Rule 2.117(3) pending a fioa}
`
`detetminaééotl ofthe pending cit-‘ii court proceeding iaetweezt Petitioner and Respondent.
`
`Respeetfuliy stsbmitteti,
`
`/"Da.1mv Awdehi’
`
`Lea "Hall Speeé
`Danny
`Awdeh
`BAKER, DONELSON, BEA.R.:\dA.N,
`CALDWELL & BERKOWITZ, P.C.
`
`165 Madison Avenue, Suite 2000
`
`Memphis, TN 38103
`(901) 526-2000
`
`Attomeys for Respondeni.,
`HUNTER FAN COMPANY
`
`CER”I‘E'FICATE OF SERVICE
`
`E hereby certify that a true and correct copy of the foregoing has been delivered via férst
`Class mail, postage prepaid,
`to Joseph R. De1M.aster, Jr., Esq. and .Fcnm'fer L. Dean, Esq._,
`Drinker, Biddie 8.: Reath LLP, Suite ‘$100, 1500 K Street, NW’, W’ashirsgio:3, DC. 2(3{)()5—E209,
`this 26131 day of October, 2005.
`
`:"D2mnv Awdehf
`
`Danny M. Awtieh
`
`.»'-‘».R?‘«’% iJ€.'J§3i3 WE
`:3":
`2';‘%§f'i3€'}i}m(}t'}{3Z9Z
`‘£{)€2é4"i'L‘-:'2
`
`U":
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`"BEFORE THE TRA.DEMA.RK TREAL AND APPEAL BOARD
`
`)
`
`) )
`
`) )
`
`) Canceilation }\’o.: 92044947
`)
`
`WESTINGHOUSE .i.,[G}?I’I‘lNG
`
`CORPORATION,
`
`Petitioner,
`
`V.
`
`i—lU:’\”l‘i~ZR FAN CO:’\rIPANY_.,
`
`Respondent.
`
`) Reg. No.: 2,920,111 ~ THE FRENCH QCARTER
`) Reg. Date: January 18, 2905
`)
`
`PROPOSED ORDER G.RA%.\’TlNG RESPONBENTS MOTION TO SUSPEND
`
`THE ?ROCFIFlDING PURSUANT TO TRADEMARK RULE 2.117(a)
`
`Upon zviotion, Respondcni £~inni'er Fen Company {“Respoedent“) has requested the
`
`Tradeiiiazrk Trial and Appeal Board {"Boerd"') suspend this proceeding §)'LE.fSU'zEI1§ to Trademark
`
`Ruie 2.1I.7(a). 37 C.I*’.R. § 2.} §7{a) including s'ospensi.on of Respiiiidenfs obligation to file 2:
`
`{espouse to Petitioner's Petition to Caiieei pending {he Fina} deterininaiion of a civii aciion
`
`between Petitioner Wesiiiighouse Lighting Corporation ("Petitioner") and Respondent that wiil
`
`have bearing on the issues presently before the Board in. this proceeding. The Board finds dial
`
`this proceeding should be suspended. pLi'.¥‘SE5i:11’H 10 T2‘adenaar§< Rule 2.1 17(3.). 37 CER. § 2317(3)
`
`pending the final determination of the civil action between Respondent and PeLiiioiie—r.
`
`IT IS THEREFORE, ORDERED, ADJUDGED, AND DECREE-D the? {his proceeding
`
`suspendesf; p%.n's:i2m.§ zo ‘E'i‘azde2iiari; Rifle 2.E E'}"2;:‘;=ji, 3»? {.‘..E"*‘.§{.
`
`2.’: E7"{2:.}, érzeizidizig szzsponsioe
`
`o5 i%es§;so:'i<Ee:ii*s ooiig.-;e:£.%<;ii“: zo fie :2 response in ?e:iiioner‘s Eezéiion ‘fie {T2-ineeé, peiiaéisig 232.2 i.i:ia'i§
`
`deierniinaiion oféhe. eiz-iii acnon ii-eiweei: Respondenz and ?e:§iioner.
`
`:’\-'€ ARM ‘§f.}E€-.3? V2
`Z7E§('33(}{3~Ej(E€é2‘}2
`ii}.-"25:.-'E}_“?
`
`

`
`TRADEMARK TRIAL, AND AE’PéAL ”
`BOARD
`
`:4-2
`3:? .-\RM 9e"3i<a3:.",:‘
`2?¥:53iJ{2-()i}s()292 i{ix2:>/65
`
`ix)
`
`

`
`EXHIBIT "A"
`
`
`
`

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

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

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

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

`
`25.
`
`Hunter’s cease and desist letter containing the threat that Hunter would pursue its
`
`remedies and injunctive relief in connection with the “OPUS” and “THE FRENCH QUARTER”
`
`trademarks, together with the previous letter threatening Eegal action in connection with the
`
`alleged blade iron trademark and design patent infringement, create a case or controversy
`
`between Hunter and WLC that includes the “OPUS” and “THE FRENCH QUARTER”
`
`tradentarlcs.
`
`26. WLC is not infringing any enforceable Hunter trademark rights in the marks
`
`“OPUS” and “THE FRENCH QUARTER” for ceiling fans.
`
`27.
`
`Hunter is suffering no legally cognizabie harm from WLC’s use of
`
`Westinghouse’s “OPUS” and “FRENCH QUARTER” trademarks.
`
`COUNT IV
`
`Cancellation of Hunter “OPUS” and “THE FRENCH QUARTER” Registrations
`
`28. WLC incorporates the allegations of paragraphs 1—27 above in full as if fully set
`
`forth herein.
`
`29. WLC’s use in nationwide interstate commerce of the marks “OPUS” and
`
`“FRENCH QUARTER” on ceiling fans tong before Hun.ter’s use and applications to register
`
`“OPUS” and “THE FRENCH QUARTER” for ceiling fans gives WLC superior rights to the
`
`marks.
`
`30.
`
`Hunter is not entitied to own US. trade1na.rl< registrations 2,920,Il1 and
`
`2,988,2l3.
`
`3].
`
`WLC is entitled to cancel Huntefis US. tradernark registrations 2,920,I 1 I and
`
`2,988,233 for “OPUS” and “THE FRENCH QUARTER” respeetivety.
`
`BCK539492‘-.1
`
`- 5 —
`
`
`
`

`
`Jurisdiction and Venue for Count V
`
`32.
`
`This court has jurisdiction over the subject matter of Count V below under 28
`
`U.S.C. § I332(a)(1) because the parties are citizens of different states and the amount in damages
`
`is in excess of $75,000. The court atso has supplemental jurisdiction over the subject rnatter of
`
`Count V under 28 U.S.C. § 1367(a) because the acts giving rise to Count V form part of the same
`
`case or controversy under Article 111 of the US. Constitution as the acts giving rise to Counts I-
`
`IV.
`
`33.
`
`Venue is proper in this district under 28 U.S.C. §§ l39l(b) and (c).
`
`COUNT V
`
`Tortious Interference With Business Relations
`
`34.
`
`WLC incorporates the allegations of paragraphs l»33 above in fiiil as if fnily set
`
`forth herein.
`
`35.
`
`36.
`
`This Count arises under the common law of Pennsyivania.
`
`On information and belief, Hunter has approached WI..C’s Chinese manufacturer
`
`of the BETi~iAN'Y ceiling fan and informed that manufacturer that the WLC ceiling fan violates
`
`I-Iunter’s inteltectuat property.
`
`37.
`
`On information and belief, Hunter has demanded that WLC’s manufacturer stop
`
`making and seiling the BETHANY ceiiing fan for Westinghouse.
`
`38.
`
`On irtforznation and beléefl WisC’s tnanufaetttrer, acting upon the demanci from
`
`Hunter, has stopped inaidng the BE"l”HAE\iY ceiling 't‘a.ri tor Westingitouse.
`
`oc:539492:t
`
`~ 6 ~
`
`
`
`
`
`

`
`39.
`
`WLC and its manufacturer, until the interference by Hunter, had enjoyed a long
`
`business relationship with each other.
`
`40.
`
`Hunter’s interference in the relations between WLC and its manufacturer has
`
`caused a disruption in the relationship, an interruption. in the supply of BETHANY ceiling fans
`
`made for and delivered to WLC, and resuiting harm in iost sales.
`
`41.
`
`Hunter’s interference in the relations between WLC and its manufacturer is
`
`deliberate and is intended to produce the result of which WLC complains.
`
`Jurisdiction and Venue for Count VI
`
`42.
`
`This court has jurisdiction over the subject matter of Count VI under 28 U.S.C. §
`
`1331. Count Vi arises under 15 U.S.C. § 1E25(a).
`
`43.
`
`Venue is proper in this court under 28 U.S.C. §§ 139l(b) and (c).
`
`COUNT VI
`
`Trademark Infringement
`
`44.
`
`WLC repeats the allegations containeoi in paragraphs 1-43 in their entirety as if
`
`futly set forth herein.
`
`45.
`
`WLC has been using the marks “OPUS” and “FRENCH QUARTER” openly and
`
`notoriously in interstate commerce throughout the United States on two modeis of WLC ceiling
`
`fans since long before the applications to register “OPUS” and “THE FRENCH QUARTER”
`
`were filed by Hunter.
`
`¥}C‘=539492\.l
`
`» “E -
`
`

`
`
`
`46. WLC’s nationwide use of the marks “OPUS” and “FRENCH QUARTER”
`
`precedes the date of first use in commerce ctaimed in H'uriter’s trademark registrations 2,920,11t
`
`and 2,988,213.
`
`47.
`
`As a result, WLC has superior rights in and is the owner of the marks “OPUS”
`
`and “FRENCH QUARTER” for ceiling fans.
`
`48.
`
`Hunter is using the marks “OPUS” and “THE FRENCH QUARTER” on ceiling
`
`fans.
`
`49.
`
`Hunter’s use of the marks “OPUS” and “THE FRENCH QUARTER” on ceiling
`
`fans is likety to cause confusion, mistake, and to deceive the public as to the affiliation,
`
`connection or association of Hunter with WLC as to the origin of the Hunter eeiiing fans marked
`
`“OPUS” and “THE FRENCH QUARTER."
`
`50.
`
`Hunter’s use of the marks “OPUS” and “THE FRENCH QUARTER” on ceiling
`
`fans is an infringement of WLC’s trademarks “OPUS” and “FRENCH QUARTER” for ceiling
`
`fans.
`
`5 l.
`
`Hunter’s infringement of the “OPUS” and “FRENCH QUAR'l‘ER” marks is
`
`willfui and deliberate.
`
`S2. WLC is being harmed by the infringement of its trademarks by Hunter.
`
`PRAYER FOR RELIEF
`
`WI-I.EREF()RE, Piaintiff Westinghouse Lighting Corporation prays that this honorabte
`
`court grant reliefas follows:
`
`r3c=.5394<;2‘.i
`
`» 8 -
`
`

`
`A.
`
`That this court grant judgment for WLC and against Hunter deciaring that the
`
`WLC BETHANY ceiling fan blade iron does not infringe any alieged trademark or trade dress
`
`rights ciairned by Hunter;
`
`B.
`
`That this court grant judgment for WLC and against Hunter declaring that the
`
`WLC BETHANY ceiling fan does not infringe the Hunter Design Patent D399,555;
`
`C.
`
`That this court grant judgment for WLC and against Hunter declaring that WLC
`
`does not infringe the trademarks “OPUS” and “THE FRENCH QUARTER”;
`
`D.
`
`That this court declare that WLC has superior rights in the marks ‘‘()?US’’ and
`
`“FRENCH QUARTER” for ceiling fans and order the Commissioner of the U8. Patent and
`
`Trademark Office to cancel Henter’s U.S. trademark registrations 2,9203 1 1 and 2,988,213.
`
`E.
`
`That this court enter judgment for WLC and against Hunter on the claim for
`
`tortious interference with business relations and award such money damages as are shown;
`
`F.
`
`That this court enter a permanent injunction against Hunter that will bar Hunter
`
`from further interference with W}.-C’s business relations.
`
`G.
`
`That this court enter judgment for WLC and against Hunter for trademark
`
`infringement by Hunter’s use of the DPUS and FRENCH QUARTER marks.
`
`H.
`
`This this court order Hunter to pay damages for its infringement of WLC’s
`
`trademarks under E5 U.S.C. § 11i7(a) and that such damages be enhanced up to three times.
`
`J.
`
`That this court permanently enjoin Hunter from continued use of the “OPUS” and
`
`“THE FRENCH QUARTER” trademarks in connection with ceiiing fans.
`
`K.
`
`That this eeuit grant such other reiief as it deems equitahie and just.
`
`t)ct‘=53<;4s)2:.i
`
`— 9 -
`
`

`
`JURY DEMAND
`
`Piaintiff Westinghouse Lighting Corporation requests a jury triai on the issues of
`
`trademark (or trade dress) infringement by WLC, patent infringement by WLC, tortioes
`
`interference wiih business relations by Hunter, and trademark infringement by Hunter.
`
`Respectfully submitted,
`
`WESTINGHOUSE LIGHTIN" O“ ORATiON
`
`
`
`DRINKER BIDDLE & REATI-I LLP
`E500 K Street NW Suite 1100
`
`Washington, DC. 20005
`202-842-8879
`
`Artomeysfor Piainzyff
`
`§C‘53‘}492‘=.E
`
`~ 10 ~
`
`

`
`EXHIBIT "B"
`
`

`
`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.
`)
`
`Plaintiff,
`
`:2
`‘
`
`"'
`
`JURY TRIAL DEMAN})ED
`
`) )
`
`)
`
`) )
`
`V.
`
`WESTINGHOUSE LIGHTEVG
`CORPORATION,
`
`Defendant.
`)
`
`
`COMPLAINT
`
`
`COMES NOW Plaintiffi Hunter Fan Company, anti for its Complaint against Defendant,
`
`Westinghouse Lighting Corporation, states the following:
`
`I.
`
`THE PARTIES
`
`1. Plaintiff Hunter Fan Company ("Plaintiff"), is a corporation organized and existing
`
`under the laws of the State of Delaware having a principal place of business located at 2500
`
`Frisco Avenue, Memphis, Tennessee 38114.
`
`2. Upon information and belief, Defendant Westinghouse Lighting Corporation
`
`("Defen<iant"), is a Pennsylvania corporation having a principal place of business located at
`
`E2401 Mcbiuity Road, Philadeipliia, Pennsyivania. Deferidanfs authorized agent for service of
`
`process is Ray-"mono Angelo, Vv’estin_ghouse Lighting Corporation, 1240? Mcbitzlty Road,
`
`Phiiadeiphia, Pennsyivania, 19 E 54.
`
`s"v‘z LS 399”.-’6‘é 2-'2
`I.'3«t‘2 G8;3i.:’f?5
`
`
`
`

`
`
`
`
`
`II.
`
`JURISDICTION AND VENUE
`
`3. This is an action against Defendant for patent infringement arising under the Patent
`
`Laws of the United States, specifically 35 U.S.C. §§27E, 281; an action for
`
`trademark
`
`infringement, false designation of origin and unfair corneetition arising under the Lanhazn Act,
`
`15 13.3.0 §§lIl4, 1125(a); an action for vioiation of the Tennessee Consumer Protection Act
`
`under Tennessee Code Ann. 47~18 et seq.; and trademark infringement and unfair competition
`
`under Tennessee common law.
`
`4. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C. §
`
`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
`
`substantialiy related to the claims that arise under the patent laws and the trademark laws of the
`
`United States. Furthermore, this Court has pendent jurisdiction because both the state and
`
`federal claims are derived from a common nucieus of operative facts and considerations of
`
`judiciai economy dictate the state and federai issues be consolidated for a single trial.
`
`5. This Court has personal
`
`jurisdiction over Qefendant based upon Defendants
`
`transaction of business in the state of Tennessee and sufficient minimum contacts with the state
`
`of Eennessee.
`
`M LS 89976? V2
`3-Ci Q8;‘3E.-"05
`
`

`
`6. Venue is proper in this District under 28 U.S.C. § 1391(1)) and 28 U.S.C. § l39l(c).
`
`III.
`
`THE CONTROVERSY
`
`PLAINTIFFS PATENTED ANE) TRADE DRESS PRODUCT DESIGNS
`
`7. Since 1886, Plaintiff andfor its predecessors in interest have been and continue to be
`
`engaged in the business of having ceiling fans produced and selling those ceiling fans in the
`
`United States.
`
`8. Defendant also seils ceiling fans in the United States.
`
`9. For many years, Plaintiff has sold certain ceiiing fans which incorporate a ceiling fan
`
`blade iron configuration having a unique trademark appearance (hereinafter Plaintiffs
`
`"Trademark Blade Iron") and certain ceiling fans which incorporate a motor housing
`
`configuration having a unique trademark appearance (hereinafter Plaintiffs "Trademark Motor
`
`Housing"). Attached hereto as Exhibit A is a depiction of Plaintifts Trademark Blade Iron and
`
`as Exhibit B is a depiction of Plaintiffs Trademark Motor Housing.
`
`10. Plaintiffs Trademark Blade Iron is
`
`incorporated into Plaintiffs ULTEMA and
`
`PREFERENCE brand ceiling fans, as well as in other of Plaintiffs ceiling fans, and has been
`
`widely advertised or promoted and extensively offered for sale with its unique iook as a
`
`component of the ULTLVEA and PREFERENCE brand ceiling fans sold by Piaintiff throughout
`
`the United States and within the State of Tennessee.
`
`11. Plaintiffs Trademark Motor Housing is also incorporated into Piaintiffs ULTELN-'lA
`
`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
`
`5:‘; LS i§*3’§‘,‘£’3l V2
`3-?) 0%-"3i:"i35
`
`

`
`component of the ULTIMA and PREFERENCE brand ceiling fans sold by Plaintiff throughout
`
`the United States and within the State of Tennessee.
`
`12. As a result of the long and exclusive use by Plaintiff of its Trademark Blade Iron and
`
`Trademark Motor Housing, the large sales under the Trademark Blade Iron and Trademark
`
`Motor Housing, and the large amount of money spent or foregone for advertising and promotion
`
`of the products sold under the Trademark Blade iron and Trademark Motor Housing, the
`
`Trademark Blade Iron and Trademark Motor Housing have become, through widespr