Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA93498
`ESTTA Tracking number:
`08/07/2006
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92045258
`Defendant
`KIMBERLY-CLARK WORLDWIDE, INC.
`KIMBERLY-CLARK WORLDWIDE, INC.
`401 NORTH LAKE STREET
`NEENAH, WI 54956
`
`Raymond A. Kurz
`Hogan & Hartson LLP
`555 13th Street, N.W.
`Washington, DC 20004
`UNITED STATES
`DCPTOTrademarkMail@HHLaw.com
`Other Motions/Papers
`Raymond A. Kurz
`DCPTOTrademarkMail@HHLaw.com
`/Raymond A. Kurz/
`08/07/2006
`Reply in Support of Reg.'s Mot to Suspend Further Proceedings.PDF ( 10 pages
`)(76887 bytes )
`AKS Decl (82007-0041) (2).pdf ( 23 pages )(143301 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Innovative Healthcare, Inc.
`
`Petitioner,
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`V.
`
`Kimberly—Clark Worldwide, Inc.
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`Registrant.
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`\§\)\§%/\)\§%/\}\)%/
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`Cancellation No. 92045258
`Mark: MISCELLANEOUS DESIGN
`
`Reg. No. 2,596,539
`
`REPLY IN SUPPORT OF REGISTRANT’S MOTION
`TO SUSPEND FURTHER PROCEEDINGS
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`Registrant Kimberly—Clark Worldwide, Inc. (“Kimberly—Clark”) submits this memorandum of
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`law in reply to Petitioner’s Response to Registrant’s Motion to Suspend Further Proceedings
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`(“Response”) filed by Petitioner Innovative Healthcare, Inc. (“Innovative”).
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`I.
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`INTRODUCTION
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`Innovative’s Response is directly at odds not only with the facts of the pending proceedings, but
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`also with the mountain ofjurisprudence in which the Trademark Trial and Appeal Board (“Board”)
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`routinely stays itself in favor of an action pending in a U.S. district court whenever doing so would “have
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`a bearing on the issues before the Board.” In fact, the present proceeding is precisely the type of situation
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`anticipated by the Board’s policy of granting such motions to suspend pending disposition of a civil
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`action involving the same marks.
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`Despite Innovative’s hollow protestations to the contrary, one need only review the Answer of
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`Innovative Healthcare Corporation to Plaintiffs Complaint for Trademark Infringement, Unfair
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`Competition, Trademark Dilution and Deceptive Trade Practices (“Answer”) filed by Innovative in the
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`district court proceeding to see that the validity of Kimberly—Clark’s federal trademark registration for its
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`-1-
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`

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`COLOR PURPLE design mark, U.S. Reg. No. 2,596,539 (“’539 Registration”), is squarely at issue in that
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`proceeding.
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`Innovative’s Third and Fifth Defenses rest upon the alleged functionality of Kimberly-
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`Clark’s COLOR PURPLE mark and Innovative’s allegations of fraudulent procurement of the ‘539
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`Registration, the identical issues raised in the current Cancellation proceeding.
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`Nor is this a case where Kimberly-Clark is seeking to “escape” a ruling by the Board on
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`Innovative’s Motion for Summary Judgment. Simply put, when Kimberly-Clark filed its Motion to
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`Suspend Further Proceedings (“Motion”), there was no Motion for Summary Judgment to “escape.”
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`Instead, Innovative filed its Motion for Summary Judgment afier Kimberly-Clark’s Motion, in a
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`transparent attempt to avoid having to answer for its infringement of Kimberly-Clark’s COLOR PURPLE
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`marks in district court.
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`Perhaps the most important factor favoring grant of Kimberly-Clark’s Motion, however, is the
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`fact that Kimberly-Clark is currently being harmed by Innovative’s continued offer for sale of purple-
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`colored gloves, and will continue to be harmed if the Board sanctions Innovative’s attempts to stall the
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`district court proceedings. Importantly, the district court has broader jurisdiction to decide issues relating
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`to Kimberly-Clark’s claims for infringement and dilution of its three federally registered trademarks — the
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`COLOR PURPLE mark, covered by the ‘539 Registration; the mark PURPLE NITRILE, covered by U.S.
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`Registration No. 2,533,260; and the mark PURPLE NITRILE-XTRA, covered by U.S. Registration No.
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`2,593,382. Such claims are beyond the jurisdiction of the Board, and cannot be adjudicated in the current
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`proceeding.
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`In contrast, Innovative’s claims regarding the invalidity of the ‘539 Registration are fully
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`within the competence and the jurisdiction of the district court, and have already been placed squarely
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`before the district court as a result of Innovative’s Answer in that proceeding.
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`Further, any decision by the district court regarding the validity of Kimberly-Clark’s trademark
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`registration would be binding on the Board, but not vice versa. Accordingly, all that would be
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`accomplished by a stay of these proceedings would be a delay of the adjudication of Kimberly-Clark’s
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`trademark infringement claims, as well as duplication and a waste of the parties’ resources and those of
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`the Board. Kimberly-Clark therefore urges the Board to grant Kimberly-Clark’s Motion.
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`II.
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`FACTS OF THE CASE
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`On July 22, 2003, Kimberly-Clark’s predecessors-in-interest, Safeskin Corporation (“Safeskin”)
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`and Kimberly-Clark Corporation (“K-C Corp.”) (Safeskin and K-C Corp. are collectively referred to as
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`“K-C”), wrote to Innovative to protest its infringement of K-C’s rights in its COLOR PURPLE
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`trademarks through Innovative’s unauthorized sale and importation of purple-colored protective gloves.
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`See Declaration of Anna Kurian Shaw (“Shaw Decl.”) at 1} 2. While the parties were engaged in
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`settlement correspondence, K-C separately filed a complaint with the International Trade Commission
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`(“ITC”) on October 23, 2003, seeking a general exclusion order barring the importation of protective
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`gloves that infringed its COLOR PURPLE Marks. See Shaw Decl. at 1} 3. Following the institution of a
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`Section 337 investigation by the ITC, K-C was granted a general exclusion order on December 22, 2004.
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`See Shaw Decl. at 1} 4.
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`As part of the parties’ ongoing correspondence, on September 7, 2005, K-C informed Innovative
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`of the ITC’s entry of a general exclusion order, and in the same correspondence reiterate its opposition to
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`Innovative’s continued sale of purple-colored gloves. See Shaw Decl. at 1} 5. Without responding to K-
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`C’s correspondence, on October 11, 2005, Innovative filed the current petition to cancel Kimberly-Clark’s
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`‘539 Registration. See Shaw Decl. at 1] 6.
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`A few months later, after the Board resumed the present proceedings, Kimberly-Clark filed the
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`district court action on June 19, 2006, asserting claims for federal trademark infringement, federal unfair
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`competition, federal trademark dilution, violations of the Georgia Uniform Deceptive Trade Practice Act
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`and the Georgia Antidilution Statute, and Georgia common law trademark infringement and unfair
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`-3-
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`competition based on Innovative’s sale of purple-colored gloves (Innovative calls them “lavender” — a
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`shade of purple), which infringe and dilute three of Kimberly-Clark’s federally registered trademarks.
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`In
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`its Complaint, Kimberly-Clark sought a permanent injunction against further infringement and dilution of
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`its COLOR PURPLE Marks by Innovative, as well as compensatory and treble damages, costs and
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`attorney’s fees. See Shaw Decl. at 1] 8. Despite Innovative’s claims that “Petitioner voluntarily ceased
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`importation of ‘purple’ gloves and pale ‘lavender’ gloves” (Response at p. 4), as of May 15, 2006,
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`Innovative was still offering its purple-colored NitriDerm brand gloves for sale on its web site at
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`www.ihsgloves.com. See Shaw Decl. at 1] 7, Ex. A.
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`In fact, Innovative’s web site is still offering for sale
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`the purple-colored NitriDerm gloves. See Shaw Decl. at 1] 14, Ex. C.
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`At the time Kimberly-Clark filed its Complaint in the district court litigation, Innovative had done
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`absolutely nothing to advance the current proceeding. Nor has it undertaken any action to advance the
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`current proceeding since the filing of Kimberly-Clark’s Complaint.
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`In fact, Innovative has never served a
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`single interrogatory, document request, or any written discovery at all in the current proceeding. Quite
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`simply, Innovative has not taken any affirmative steps to prosecute its cancellation claims before the
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`Board. See Shaw Decl. at 1] 9. Accordingly, on June 26, 2006, Kimberly-Clark filed the present Motion,
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`requesting the Board to stay this proceeding until the district court proceeding concludes. See Shaw Decl.
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`at 1] 10.
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`In a transparent attempt to somehow bolster its opposition to Kimberly-Clark’s Motion by urging
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`that some allegedly substantive motion is before the Board, Innovative filed with its Response a motion
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`for summary judgment. See Shaw Decl. at 1]
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`1 1. This was without the benefit of its having taken any
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`discovery whatsoever regarding the highly factual issues of functionality and fraud raised in the motion
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`for summary judgment. See Shaw Decl. at 1] 12.
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`On July 21, 2006, Innovative filed its Answer in the district court proceeding. See Shaw Decl. at
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`1] 13, Ex. B.
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`In its Answer, Innovative asserted various affirmative defenses, including the following:
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`-4-
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`THIRD DEFENSE
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`Plaintiffs alleged COLOR PURPLE trademarks are not enforceable as the color purple is
`functional as utilized in the protective glove industry.
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`FIFTH DEFENSE
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`On information and believe, Plaintiff made false representations to the United States Patent and
`Trademark Office (“USPTO”) in obtaining its trademark, including, but not limited to, certifying
`in its application that the color purple was not functional. On information and belief, Plaintiffs
`trademark registration would not have been issued but for the USPTO’s reliance on Plaintiffs
`false representations.
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`Answer at p. 2.
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`III. KIMBERLY-CLARK’S MOTION TO SUSPEND SHOULD BE GRANTED
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`It is well-established that “[o]rdinarily the Board will suspend proceedings in the case before it if
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`the final determination of the other proceeding [i.e., the district court proceeding] will have a bearing on
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`the issues before the Board.” Trademark Trial and Appeal Board Manual of Procedure (“T.B.M.P.”) §
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`510.02(a). The Board has regularly applied such rationale to stay proceedings in deference to pending
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`district court actions. See, e.g., Manganaro Foods, Inc. v. Manganaro ’s Hero Boy, Inc. and/or Hero Boy,
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`Inc., 2001 WL 1 105079 (T.T.A.B. Sept. 17, 2001) (suspending cancellation proceedings in favor of
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`district court litigation); Society ofMexican American Engineers and Scientists, Inc. v. GVR Public
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`Relations Agency, Inc, 2002 WL 31488947 (T.T.A.B. Nov. 6, 2002); Checkpoint Systems, Inc. v. Check
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`Point Software Technologies, Ltd., 2002 WL 1 181046 (T.T.A.B. May 31, 2002); Toro Co. v. Hardigg
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`Industries, Inc., 187 U.S.P.Q. 689 (T.T.A.B. 1975), rev ’d on other grounds, 549 F.2d 785 (C.C.P.A.
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`1977); The Other Tele. Co. v. Connecticut Nat ’l Tele. Co., Inc., 181 U.S.P.Q. 125 (T.T.A.B. 1974);
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`Whopper-Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805 (T.T.A.B. 1971). Nor are there any
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`factors present in the current case that would counsel against applying this principal. The proceeding is
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`currently in its infancy — at the time Kimberly-Clark filed its Motion, the discovery period was not yet
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`_ 5 _
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`closed, no testimony had been taken, and Innovative had not sought any discovery. Nor was there
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`pending at such time any dispositive motion, as Innovative’s Motion for Summary Judgment was filed
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`after Kimberly-Clark’s Motion, in a last ditch effort to stave off a suspension.
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`The outcome of the District Court proceeding will clearly have “a bearing on the issues before the
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`Board.” Indeed, the outcome will be binding on the Board. As noted above, Innovative’s Third and Fifth
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`Defenses directly raise the issue at the heart of the present proceeding — the validity of Kimberly-Clark’s
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`trademark registration. Further, the Board has consistently recognized that, “[t]o the extent that a civil
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`action involves issues in common with those in a proceeding before the Board, the decision of the Federal
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`district court is often binding upon the Board, while the decision of the Board is not binding upon the
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`court.” T.B.M.P. § 510.02(a). Further, any decision of the Board would be subject to district court
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`review. See 15 U.S.C. § 1071; see also CAE, Inc. v. Clean Air Engineering, 267 F.3d 660, 673 (7th Cir.
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`2001). Accordingly, allowing both the present proceeding and the district court proceeding to move
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`forward would raise the specter of inconsistent results, and would merely result in a waste of the Board’s
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`and the parties’ resources.
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`This is especially true because the district court is not likely to stay the pending litigation out of
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`deference to the Board proceeding. Despite Innovative’s assertions to the contrary, it is telling that, out of
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`the four cases cited by Innovative, the most recent is from 1983, and two relate to patent infringement
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`matters, not trademark infringement matters.1 Of the two trademark cases cited by Innovative in its
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`1 While patents and trademarks are both registered by the USPTO, there are fundamental differences
`between the two protection schemes that make the patent analogy particularly inapplicable to the present
`case. Importantly, patents are statutory creations, and a cause of action for patent infringement does not
`exist absent registration by the USPTO. See 35 U.S.C. § 100 et seq.
`In contrast,
`trademark rights arise at
`common law. See 37 U.S.C. § 1125(a). Accordingly, the USPTO’s decision to grant or deny a trademark
`registration is not determinative in an action for trademark infringement. See E. &J. Gallo Winery v.
`F.&P. S.p.A., 899 F. Supp. 465, 468 (E.D. Ca. 1994). Thus, any ruling by the Board in the present
`proceeding would be unlikely to dispose of all issues before the district court.
`_ 6 _
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`

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`Response, one case, C~Cure Chem. Co. v. Secure Adhesives Corp., 571 F. Supp. 808 (W.D.N.Y. 1983),
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`was subsequently rejected for the cited to proposition by the Circuit Court with jurisdiction over that
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`district. See Goya Foods, Inc. v. Tropicana Prod., Inc., 846 F.2d 848, 851-854 (2d Cir. 1988). The other
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`trademark case cited by Innovative, Driving Force, Inc. v. Manpower, Inc., 498 F. Supp. 21 (E.D. Pa.
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`1980), likewise has been routinely rejected by other courts. See, e. g., id; SpringAir Co. v. Englander
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`Licensing Ltd. Liability Co., 2001 WL 1543510, *2 (N.D. Nov. 29, Ill. 2001).
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`The absence of supporting authority in Innovative’s brief is telling and highlights the fact that the
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`vast weight of precedent flatly rejects Innovative’s position. The two trademark infringement cases upon
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`which Petitioner relies in its Response both base the decision to stay district court proceedings in favor of
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`proceedings in front of the Board on the doctrine of primary jurisdiction. However, numerous courts have
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`rejected the doctrine of primary jurisdiction in trademark cases, and especially in cases involving
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`questions of trademark infringement. See, e. g., PHC, Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75, 80 (1st
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`Cir. 1996); Goya, 846 F.2d at 848.
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`In fact, the overwhelming majority of district courts that have
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`considered similar motions to stay have declined to do so, regardless of which action was filed first and
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`regardless of whether the validity or invalidity of the asserted trademark was at issue in the district court
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`proceeding. See, e.g., PHC., 75 F.3d at 80; Goya, 846 F.2d at 848; CAE, 267 F.3d at 673; Look Magazine
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`Enterprises S.A. v. Look, Inc., 596 F. Supp. 774 (D. Del. 1984); Fightfor Children, Inc. v. Fight Night,
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`Inc., 1997 WL 148643 (D.D.C. Mar. 26, 1997); Krause Int 7, Inc. v. Reed Elsevier, Inc., 866 F. Supp. 585
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`(D.D.C. 1994); Spring Air, 2001 WL 1543510 at *2; MCA, Inc. v. Mid-ContinentAdjustment Co., 1988
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`WL 89074 (N.D. Ill. Aug. 18, 1988); Hanlon Chem. Co., Inc. v. Dymon, Inc., 1991 WL 12869 (D. Kan.
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`Jan. 30, 1991); Nolan, LLC v. EZ Moving & Storage West, Inc., 2005 WL 2063949, *3 (E.D. Mich. Aug.
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`24, 2005); Am. Bakeries Co. v. Pan-0-Gold Baking Co., 650 F. Supp. 563 (D. Minn. 1986); Maritz v.
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`Cybergold, Inc., 947 F. Supp. 1328 (E.D. Mo. Aug. 19, 1996); Forschner Group, Inc. v. B-Line A.G., 943
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`F. Supp. 287, 290-91 (S.D.N.Y. 1996); American Cyanamid Co. v. Campagna Per Le Farmacie in Italia
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`S.P.A., 678 F. Supp. 1049 (S.D.N.Y. 1987); McGuire v. Regents ofthe Univ. 0fMichz'gan, 2000 WL
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`1459435 (S.D. Ohio Sept. 21, 2000); Cash v. Brooks, 906 F. Supp. 450 (E.D. Tenn. 1995); W& G
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`Tennessee Imp., Inc. v. Esselte Pendaflex Corp., 769 F.Supp. 264 (M.D. Tenn. 1991).
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`Another factor strongly cautioning against prolonging the current proceeding, rather than
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`allowing the district court to determine the issues that have been raised in the civil action, is the increased
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`delay before final resolution of Kimberly-Clark’s trademark infringement claims. As noted above,
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`despite representations to the contrary, Innovative is continuing to offer for sale its purple-colored
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`protective gloves, which infringe and dilute Kimberly-Clark’s rights in its COLOR PURPLE Marks. See
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`Shaw Decl. at 1[ 14, Ex. C. As the First Circuit has noted, “at least where an infringement claim is
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`involved - whether directly asserted by an ‘owner’ or challenged in a declaratory action - there is often
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`some urgency.” PHC, 75 F.3d at 80. The court went on to note that “[o]ngoing business conduct is likely
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`to be involved and harm, possibly irreparable, may be accruing.” Id. Because the Board cannot grant
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`relief on an infringement claim, either injunctive or by way of damages, “awaiting the Board’s action is
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`less attractive; and this is doubly so because (as already noted) its administrative findings can so easily be
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`relitigated in court.” Id, see also Spring Air, 2001 WL 1543510 at * 3. Accordingly, the Second Circuit
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`has noted that, when a case involves a claim of trademark infringement, “the interest in prompt
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`adjudication far outweighs the value of having the views of the [Board].” Goya, 646 F.2d at 853-54.
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`Further, continuing with the present proceeding would not promote the interests ofjudicial
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`efficiency. As noted supra, any decision by the Board is not binding on the district court and, indeed,
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`would be subject to review in a new proceeding in front of the district court. See 15 U.S.C. § 1071. The
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`issues between the parties should be litigated only once and the only forum where that is possible is the
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`district court. Once the district court case is concluded, the present proceedings before the Board will be
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`completely moot.
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`In addition, although the claims before the Board are completely encompassed in the
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`case pending before the district court, the opposite is not the case, and the additional claims in the district
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`court litigation make any decision issued by the Board unlikely to be dispositive or to materially aid the
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`district court in its determination of Kimberly-Clark’s infringement claims. This is because, in the district
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`court litigation (among other things), Kimberly-Clark has asserted claims for infringement of three federal
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`trademark registrations ~ the ‘539 Registration, U.S. Registration No. 2,533,260 for the mark PURPLE
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`NITRILE; and U.S. Registration No. 2,593,382 for the mark PURPLE NITRILE-XTRA. The current
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`proceeding, however, addresses only the validity of the ‘539 Registration.
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`IV. CONCLUSION
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`For the foregoing reasons, the Board should reject Innovative’s attempts to prolong this matter
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`and to avoid having to answer for its infringement of Kimberly-Clark’s COLOR PURPLE Marks, and
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`should grant Kimberly-Clark’s Motion to Suspend.
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`Dated this 7th day of August, 2006.
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`Respectfully submitted,
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` By:
`
`I
`.
`_,5‘“Raymond A. Kurz
`0' Celine Jimenez Cr
`Anna Kurian Shaw
`
`Hogan & Hartson L.L.P.
`555 13th Street, N.W.
`Washington, D.C. 20004
`Telephone: (202) 63 7-5600
`
`Attorneys for Plaintiff,
`Kimberly-Clark Worldwide, Inc.
`
`

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`CERTIFICATE OF SERVICE
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`I certify that on the 7th day of August, 2006, I served this REPLY IN SUPPORT OF
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`REGISTRANT’S MOTION TO SUSPEND FURTHER PROCEEDINGS upon counsel listed below by
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`placing a true and correct copy of same in the United States mail, first-class postage prepaid, properly
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`addressed as follows:
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`Frank J. Catalano
`
`Tyson Schwerdtfeger
`Gable & Gotwals
`100 W. 5”‘ Street, 10”‘ Floor
`
`Tulsa, OK 74103
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Innovative Healthcare, Inc.
`
`Petitioner,
`
`V.
`
`Cancellation No. 92045258
`Mark: MISCELLANEOUS DESIGN
`
`Reg. No. 2,596,539
`
`\y\y\y\y\y\y\y\y\y\y
`
`Kimberly-Clark Worldwide, Inc.
`
`Registrant.
`
`1, Anna Kurian Shaw, declare as follows:
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`1.
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`I am an associate of the law firm of Hogan & Hartson, L.L.P. and am one of the attorneys
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`representing Plaintiff Kimberly-Clark Worldwide, Inc. (“Kimberly-Clark”).
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`I make this Declaration in
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`support of Kimberly-Clark’s reply to Petitioner’s Response to Registrant’s Motion to Suspend Further
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`Proceedings (“Response”) filed by Petitioner Innovative Healthcare, Inc. (“Innovative”).
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`2.
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`On July 22, 2003, Kimberly-Clark’s predecessors-in-interest, Kimberly-Clark Corporation
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`(“K-C Corp.”) and Safeskin Corporation (“Safeskin”) (K-C Corp. and Safeskin are collectively referred to as
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`“K-C”), wrote to Innovative regarding its infringement of K-C’s rights in its COLOR PURPLE trademarks
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`through Innovative’s unauthorized importation and sale of purple-colored protective gloves.
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`3.
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`On October 23, 2003, K-C filed a Complaint with the International Trade Commission
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`(“ITC”) seeking a general exclusion order barring the importation of protective gloves that infringed K-C’s
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`COLOR PURPLE Marks.
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`4.
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`On December 22, 2004, after the completion of a Section 337 investigation, the ITC granted
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`K-C a general exclusion order.
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`5.
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`On September 7, 2005, as part of ongoing correspondence between K-C and Innovative
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`relating to Innovative’s sales of purple-colored gloves, K-C informed Innovative of the ITC’s entry of a
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`general exclusion order. In the same correspondence, K-C reiterated its objection to Innovative’s continued
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`sale of purple-colored gloves.
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`

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`6.
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`On October 1 1, 2005, without having responded to K-C’s letter, Innovative filed the present
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`petition with the Board to cancel Kimberly-Clark’s federal trademark registration, U.S. Reg. No. 2,596,539
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`(“’539 Registration”), for its COLOR PURPLE design mark (“Cancellation Petition”).
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`7.
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`On May 15, 2006, Kimberly-Clark’s counsel reviewed Innovative’s web site, located at
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`<www.ihsgloves.com>. As of such date, the Innovative web site displayed a picture of the purple-colored
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`gloves complained of in the district court Complaint, which was located under the “Products” menu, in a
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`section entitled “Synthetic PF.” A true and correct copy of a printout of the Innovative web site is attached
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`hereto as Exhibit A.
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`8.
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`On June 19, 2006, Kimberly-Clark filed the district court litigation, asserting various claims
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`for trademark infringement, trademark dilution, and unfair competition relating to Innovative’s sales of
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`purple-colored gloves that infringe three of Kimberly-Clark’s federally-registered trademarks — the COLOR
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`PURPLE mark, covered by the ‘539 Registration; the mark PURPLE NITRILE, covered by U.S. Registration
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`No. 2,533,260; and the mark PURPLE NITRILE-XTRA, covered by U.S. Registration No. 2,593,382. The
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`Complaint sought a permanent injunction against further infringement and dilution of Kimberly-Clark’s
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`COLOR PURPLE Marks, as well as compensatory and treble damages, costs and attomey’s fees.
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`9.
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`As of June 19, 2006, Innovative had not served any interrogatories, document requests, or
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`any other written discovery in the Cancellation Proceeding.
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`10.
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`On June 26, 2006, Kimberly-Clark filed the present motion to suspend the Cancellation
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`Proceeding ir1 favor of the district court litigation.
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`11.
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`On July 17, 2006, Innovative contemporaneously filed an opposition to Kimberly-Clark’s
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`present motion to suspend the Cancellation Proceeding and a motion for summary judgment in the
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`Cancellation Proceeding.
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`12.
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`As ofJuly 17, 2006, Innovative still had not served any written discovery in the Cancellation
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`Proceeding, nor had it noticed or taken a single deposition.
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`13.
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`On July 21, 2006, Innovative filed its Answer in the district court proceeding. A true and
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`correct copy of Innovative’s answer is attached hereto as Exhibit B.
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`14.
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`On August 2, 2006, Kimberly-Clark’s counsel reviewed Innovative’s web site, located at
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`<www.ihsgloves.com>. As of such date, the Irmovative web site continued to display a picture ofthe purple-
`
`colored gloves complained of in the district court Complaint, which was located under the “Products” menu,
`
`in a section entitled “Synthetic PF.” A true and correct copy of a printout of the Irmovative web site is
`
`attached hereto as Exhibit C.
`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`foregoing is true and correct.
`
`Dated: August 7, 2006
`
`Ann
`
`urian Shaw
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that on the 7th day of August, 2006, I served this DECLARATION OF ANNA
`
`KURIAN SHAW IN SUPPORT OF REGISTRANT’S REPLY IN SUPPORT OF ITS MOTION
`
`TO SUSPEND FURTHER PROCEEDINGS upon counsel listed below by placing a true and correct
`
`copy of same in the United States mail, first—class postage prepaid, properly addressed as follows:
`
`Frank J. Catalano
`
`Tyson Schwerdtfeger
`Gable & Gotwals
`100 w. 5”‘ Street, 10"‘ Floor
`Tulsa, OK 74103
`
`
`
`

`
`Exhibit A
`
`

`
`
`
`EXAM GLOVES
`
`SURGICAL GLOVES
`
`WIPES
`
`MASKS
`
`NON—WOVENS
`
`BAGS
`
`.
`
`&\““\‘
`
`Gloves
`
`DermAssistTM
`Pow der—Free Synthetic Exam
`Gloves
`
`- Smooth Finish
`- Powder—Free
`- Non—Latex
`Polymer Coated
`
`specs and info
`
`DermAssistTM Stretch Vinyl
`Powder—Free Synthetic Exam
`
`- Smooth Finish
`- Powder—Free
`- Non—Latex
`
`»\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\
`
`specs and info
`
`NitriDerm® Ultra
`Powder—Free Nitrile Exam Gloves
`
`specs and info - Textured Finish
`
`- Textured Finish
`- Powder—Free
`- Non—Latex
`
`NitriDerm® Ultra White
`Powder—Free Nitrile Exam Gloves
`
`- Powder—Free
`- Non—Latex
`
`specs and info
`
`5% NitriDerm® Blue
`Powder—Free Nitrile Exam Gloves
`
` - Textured Finish
`
`- Powder—Free
`- Non—Latex
`
`
`
`specs and info
`
`NitriDerm® Lavender
`Powder—Free Nitrile Exam Gloves
`
`- Textured Finish
`- Powder—Free
`- Non—Latex
`
`specs and info
`
`http://Wwwihsgloves.com/products/PFsynthetic.htm1
`
`

`
`
`
`NitriDerm® Lavender — Powder-Free Nitrile Exam Gloves
`
`
`
`158100, NPF100-P
`158200, NPF200-P
`158300, NPF300-P
`158350, NPF350-P
`
`Length
`Finger Thickness (mm)
`Tensile Strength Before Aging
`Tensile Strenth After Aging
`Elongation Before Aging (%)
`Elongation After Aging (%)
`
`Characteristics:
`Medium modulus nitrile synthetic glove has a "firm“ feel. Dons well and provides excellent tactile sensitivity.
`Slightly tacky exterior finish provides excellent gripping properties. Lavender color.
`close window
`
`http://Wwwihsgloves.com/products/npfp.htm1
`
`

`
`Exhibit B
`
`

`
`Case ‘i:O5~cv—€314E34—‘vVSD
`
`Document 14
`
`Fiied ()7./'21./’2006
`
`Page 1 <:>f13
`
`IN THE UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF GEORGIA
`
`ATLANTA DIVISION
`
`KIMBERLY—CLARK WORLDWIDE,
`
`INC.,
`
`V.
`
`Plaintiff,
`
`Civil Action No. l:06—CV—l464—WSD
`
`INNOVATIVE HEALTHCARE
`
`CORPORATION,
`
`Defendant.
`
`ANSWER OF INNOVATIVE HEALTHCARE CORPORATION TO
`
`PLAINTIFF’S COMPLAINT FOR TRADEMARK INFRINGEMENT,
`
`UNFAIR COMPETITION TRADEMARK DILUTION AND DECEPTIVE
`
`TRADE PRACTICES
`
`Defendant
`
`Innovative Healthcare Corporation (“Innovative”)
`
`files
`
`this
`
`Answer to Plaintiff Kimberly—Clark Worldwide, Inc.’s Complaint for Trademark
`
`Infringement, Unfair Competition, Trademark Dilution and Deceptive Trade
`
`Practices, and alleges and states as follows:
`
`FIRST DEFENSE
`
`The Complaint fails to state a claim upon which relief can be granted against
`
`Innovative.
`
`{589688;}
`AO 15143221
`
`

`
`Case ‘i:O5~cv—€314E34—‘vVSD
`
`Document 14
`
`Filed ()7./'21./’2006
`
`Page 2 of 13
`
`SECOND DEFENSE
`
`Plaintiff’s claims are barred by the doctrines of estoppel, waiver, and
`
`unclean hands.
`
`THIRD DEFENSE
`
`Plaintiff’s alleged COLOR PURPLE trademarks are not enforceable as the
`
`color purple is functional as utilized in the protective glove industry.
`
`FOURTH DEFENSE
`
`Innovative’s use of the color “lavender” is not within the permissible scope
`
`of Plaintiff’ s alleged COLOR PURPLE trademark.
`
`FIFTH DEFENSE
`
`On information and belief, Plaintiff made false representations to the United
`
`States Patent and Trademark Office (“USPTO”)
`
`in obtaining its trademark,
`
`including, but not limited to, certifying in its application that the color purple was
`
`not functional. On information and belief, Plaintiff’s trademark registration would
`
`not have been issued but
`
`for
`
`the USPTO’s
`
`reliance on Plaintiff’s
`
`false
`
`representations.
`
`SIXTH DEFENSE
`
`Innovative’s use of the color “lavender” on its non—lateX protective gloves is
`
`a fair use in good faith to demonstrate to the consuming public that such protective
`
`gloves are non—latex.
`
`{589688;}
`A0 15143221
`
`2
`
`

`
`Case 1 :O5~cv—€3"i4ES4—\NSD
`
`Document 14
`
`Filed ()7./'21./’20{)6
`
`Page 3 of 13
`
`SEVENTH DEFENSE
`
`Innovative reserves the right to amend this Answer and add additional
`
`defenses as determined during the course of discovery.
`
`In response to the numbered paragraphs of the Complaint,
`
`Innovative
`
`responds as follows:
`
`Parties
`
`1. Innovative has insufficient knowledge to either admit or deny the
`
`allegations of Paragraph 1 and therefore denies same.
`
`2. Innovative admits the allegations of Paragraph 2.
`
`Jurisdiction and Venue
`
`3. Innovative has insufficient knowledge to either admit or deny the
`
`allegations of Paragraph 3 and therefore denies same.
`
`Kimberly-Clark’s COLOR PURPLE Protective Gloves
`
`4. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 4 and therefore denies same.
`
`5. Innovative admits the allegations in Paragraph 5.
`
`6. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 6 and therefore denies same.
`
`{589688;}
`A0 15143221
`
`3
`
`

`
`Case ‘i:O5~cv—€314E34—‘vVSD
`
`Document 14
`
`Filed ()7./'21./’2006
`
`Page 4 of 13
`
`7. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 7 and therefore denies same.
`
`The COLOR PURPLE Marks
`
`8. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 8 and therefore denies same.
`
`9. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 9 and therefore denies same.
`
`10. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 10 and therefore denies same.
`
`11. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 11 and therefore denies same.
`
`12. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 12 and therefore denies same.
`
`13. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 13 and therefore denies same.
`
`14. Innovative has insufficient knowledge to either admit or deny the
`
`allegations in Paragraph 14 and therefore denies same.
`
`15. Innovative admits that Kimberly—Clark filed a complaint with the
`
`International Trade Commission against various third parties alleging violations of
`
`{589688;}
`A0 15143221
`
`4
`
`

`
`Case 1 :O5~cv—€3"i4ES4—\NSD
`
`Document 14
`
`Filed ()7./'21./’20{)6
`
`Page 5 of 13
`
`section 337 of the Tariff Act of 1930.
`
`Innovative admits that on December 22,
`
`2004,
`
`the International Trade Commission issued a general exclusion order
`
`prohibiting the importation of all protective gloves
`
`that
`
`infringe the U.S.
`
`Registered Trademarks Nos. 2,596,539, 2,533,260, or 2,593,382.
`
`Innovative
`
`denies that the International Trade Commission acknowledged the validity of the
`
`COLOR PURPLE Registered Marks. With respect to the remaining allegations of
`
`Paragraph 15, Innovative has insufficient knowledge to either admit or deny, and
`
`therefore denies the remaining allegations.
`
`16. Innovative denies the allegations of Paragraph 16.
`
`Defendant’s Wrongful and Infringing Conduct
`
`17. Innovative admits the allegations of Paragraph 17.
`
`18. Innovative admits that it has a website located at the domain name
`
`www.ihsgloves.com and that it sells protective gloves under the NITRODERM®
`
`LAVENDER trademark.
`
`Innovative denies that
`
`it currently sells any purple
`
`protective gloves. As to all other allegations in this paragraph, Innovative has
`
`insufficient knowledge to either admit or deny and therefore denies same.
`
`19. Innovative denies the allegations of Paragraph 19.
`
`{589688;}
`A0 15143221
`
`5
`
`

`
`Case 1 :O5~cv—€3"i4ES4—\NSD
`
`Document 14
`
`Filed ()7./'21./’20{)6
`
`Page § of 13
`
`20. Innovative denies that it currently sells any purple protective gloves. As
`
`to all other allegations in this paragraph, Innovative has insuffici