Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA249004
`ESTTA Tracking number:
`11/14/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92049962
`Defendant
`MAG INSTRUMENT, INC.
`Anna E. Raimer
`Jones Day
`555 South Flower Street, 50th FL
`Los Angeles, CA 90071
`UNITED STATES
`aeraimer@jonesday.com
`Motion to Suspend for Civil Action
`Anna Raimer
`aeraimer@jonesday.com
`/Anna Raimer/
`11/14/2008
`Motion to Suspend.pdf ( 69 pages )(3489968 bytes )
`Motion to Suspend Ex C.pdf ( 57 pages )(2357853 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
`
`Cancellation No. 92049962
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`Registration No. 2,765,978
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`} ) ) ) ) ) ) )
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`) )
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`WILMAR CORR,
`
`Petitioner,
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`V.
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`MAG INSTRUMENT, INC,
`
`Registrant.
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`REGISTRANT’S MOTION TO SUSPEND PROCEEDINGS PENDiNG THE FINAL
`RESOLUTION OF AN EARLIER FILED DISTRICT COURT ACTION
`
`1.
`
`INTRODUCTION
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`Registrant Mag Instrument, Inc. (“Mag Instrument”) hereby moves the United States
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`Trademark Trial and Appeal Board (the “Board") for an Order, pursuant to 37 C.F.R. § 2.] I7(a)_,
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`suspending the above—captioned cancellation proceeding brought by Petitioner Wilrnar Corp.
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`("Wilmar”) until final resolution of an earlier filed district court action. Because the district
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`court action involves the exact same trademark, parties and issues, including a counterclaim. by
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`Wilmar for cancellation of Mag Instrurnent"s U.S. Registration No. 2,765,978, Mag Instrument
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`respectfully requests the Board to suspend these proceedings.
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`H.
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`FACTUAL BACKGROUND
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`On April 29, 2008, Mag instrument filed Case No. CV 08-2779 PSG (MANX), styled
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`Magjnstrument. Inc. V. Wilmer Cop” et 3.1., in the United Sta.tes District Court for the Central
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`District ofCalifornia. See Declaration ofC‘Iharles A. Kertell (“Kertell Declf’),
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`2. Exh. A.
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`which is attached hereto. Mag Instrurne-nt’s Complaint alleges that Wilmar has, and continues
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`to, infringe Mag l'nstrurnent’s United States Trademark Registration No. 2,763,978 (the “‘9’£"8
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`registration," which covers the shape, style, and overall appearance ofiviag Instruments
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`l.Ai»3‘~}78€i{}?3V§
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`

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`Solitaire® flashlight) by its manufacture, Ltse. importation, distribution, advertising, marketing,
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`offer for sale, and/’or sate ofthe Wilrnar 1910 flashlight.
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`Ia’.
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`On Aprii 30, 2008, counsel for Mag Instrument wrote Mr. Nevil Hermer, the President of
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`Wllrnar, informing Mr. Herrner of Wilmafs infringement of the ‘978 registration.
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`Ia’. at 3.
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`Mag instrument also enclosed a copy of its Cornpiaint in Case No. CV 0843779 PSG (MANX).
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`Id.
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`In May of2008, counsel for Mag Instrument and counsel for Wilmar exchanged
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`correspondence concerning Case No. CV 08-2779 PSG (l\rlANx). Id. at fl 4. After May of 2008..
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`counsel for Wilrnar refused to respond to any ofcounsel for Mag lnstrurnenfs letters. Id.
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`Mag Instrument served its First Amended Complaint against Wilmar on August 22, 2008.
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`Id. at S, Exh. B. Wilmar‘s Answer was therefore due on September 12, 2008. Id. at 1] 6.
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`However, on September 10, 2008, counsel for Wilmar requested, and Mag Instrument agreed,
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`that Wilmer could have an additional thirty days (30) — until October 14, 2008 — to respond to
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`the First Amended Complaint. Id. Mag "instrument further agreed, after receiving another
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`request from Wilmar, that Wilrnar could have an additional extension to answer the First
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`Amended Complaint. Id.
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`Wilrnar did not file the present cancellattbn proceedings until September 19, 2008 mm more
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`than four months after the filing ofCase No. CV 08-2779 PSG (MANX), more than four months
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`after being provided a copy of the Complaint filed in Case No. CV 08-2779 PSG (MANX),
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`aimost a month after being formally served with the Complaint in Case No. CV 08-2779 PSG
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`(MANXJ, and more than a week after requesting its first 30 day extension of time to respond to
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`Mag lnstrumenfs Complaint.
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`Wilmar finally filed its Answer to Mag Enstruinenfs First Amended Complaint on
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`;\iovernber 3. 2008.
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`Id. at 7, Exh. C.
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`ln its Answer, Wilmar asserts. among others, the
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`foliowing at’f'innative defenses: "fraud and inequitable conduct before the United States Patent
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`and Trademark Office”; failure otilvlag Instrument to “own valid. protectabte interests in the
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`configuration ofthe shape, style and overail appearance of the SOl.I'l“AlRE-‘E2 flashlight"; and
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`invalidity ofthe ‘978 registration “for being functional. descriptive andfor generic." Id.
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`In
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`E.._.,:-‘*-.l-2<Sr".”8€}f':‘<§v§
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`..2_
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`

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`addition, Wilmer asserts a counterclaim for canceliation of the ‘978 registration, which mimics
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`the ailegations of the Petition for Canceliation. Id. Wiiniar also aileges a counterciairn for
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`invalidity ofthe ‘978 registration in its Answer. Id.
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`WiIrnar’s Petition for Canceliation is limited to allegations offtinctionaiity (paragraph 4),
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`iack of distinctivenessisecondary meaning (paragraph 5), and fraud (paragraphs 6~8). Ali three
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`of these issues have been raised by Wiiniar in its Answer, and wilt certainly be addressed and
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`decided by the United States District Court for the Central District ofCalifornia.
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`III.
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`ARGUMENT
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`A.
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`Board Proceedings Are Typically Suspended Based on a Civil Action.
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`“Whenever it shall come to the attention of the Trademark Triai and Appeal Board that a
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`party or parties to a pending case are engaged in a civil action or another Board proceeding
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`which may have a bearing on the case, proceedings before the Board maybe suspended untii
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`termination of the civii action or the other Board proceeding.” 37 C.F.R. § 2.1 17(a). Because
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`the decision ofa Federal district court in a civil action that invoives issues in common with those
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`in a proceeding before the Board is often binding upon the Board, “{o]rdinarily, the Board wili
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`suspend proceedings in the case before it if the fine} determination of the other proceeding wit]
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`have a bearing on the issues before the Board.” TRAQEMARK TRIAL AND APPEAL BOARD
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`MANUAL OF PROCEDURE (“TBMP”) § 5 i0.02(a),' see also Alfred Dunhill Qf_L0r1d0r1, Inc. V.
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`Dzmhii’! Tczflrired Clonires, Inc, 293 F.2d 685, 687, n. 1 (C.C.P.A. E961) (“it appears to be the
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`usual practice to stay registration proceedings pending the outcome of court actions between the
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`same parties involving related issues"); Tokaido 2:. Honda Assac'iaz'es .[nc., l"/'9 U.S.P.Q. 861,
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`86.2 (T.T.A.B. 197’3) (noting “while a decision by the District Court would be binding upon the
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`Patent Offic-e_, a decision by the Tradernaris: Trial and Appeal Board would oniy be advisory in
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`respect to the disposition of the case pending in the District Court“).
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`i..,”1.i—2Vi”;‘E§i'?i}‘}vi
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`-3-
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`

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`B.
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`The Decision of the Federai District Court Will Have a Bearing on the Issues
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`Before the Board in the Cancellation Proceeding.
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`As shown in the pieadirtgs attached as exhibits hereto, the civii action presently before
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`the United States District Court for the Central District of Caiifomia invoives the same parties,
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`the same mark, and the same registration issues as this cancellation proceeding.
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`indeed, given
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`Wilrnar’s counterclaim for cancellation of the ‘978 registration, the decision of the district court
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`will be dispositive of the issues before the Board. “[W]here, as here, the civil action between the
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`patties may be dispositivc or have a direct bearing on the issues in a proceeding before the
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`Board, it is the practice to suspend the proceeding before the Board to await the outcome of the
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`civil action and to determine its effect on the issues in the action in the Patent and Trademark
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`Office.” Miller v. B & H Foods, 1:16., 209 U.S.P.Q. 357, 359 (T.T.A.B. 1931); See also
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`Whopper-Burger, Inc. v. Burger King Corp, 171 U.S.P.Q. 805, 807 (T.T.A.B. 1.971)
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`(suspending canceliation proceeding where outcome of the civil action would have a direct
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`bearing on the question of the parties’ rights “and may in fact cornpietely resolve all the
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`issues”).
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`Further, the issues before the district court, such as infringerucnt. cannot be decided by
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`the Board, and the interest in prompt adjudication and conservation of resources favors
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`suspension of this proceeding untii a decision by the district court. Moreover, this proceeding
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`wiil not be resolved until at least 2010 given the current schedule, which is likely to be continued
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`based on the tiling of discovery motions and,‘-‘or other suspensions of the proceeding. In contrast,
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`Case No. CV O8—2'?79 PSG (l\/IANX) wilt certainly be resoived sooner, as courts irt the Central
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`District of California currently strive to resoive cases within l2~l 8 months of tiiing. This
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`titnetabic is especiaily iikely given that Case
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`CV 082779 PSG {i'\/IANX) irivoives the
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`infringement ofoitiy a singie flashiight. and the number ofinteiiectuai property rights at issue
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`(other than the ‘978 registration) are iirnited.
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`2...»-‘~.l—Z£}?fit3t?i}vt
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`-4-
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`

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`in sum, a suspension of this proceeding wiil prevent the unnecessary duplication of
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`proceedings and will consolidate the registration issues into a singie proceeding in which both
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`the validity and infringement contentions may be adjudicated. The eiiicient resoiution of ali the
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`issues in a single forum wiii also avoid wasting the Board's vaiuabie time and resources,
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`especialiy Where the district court has jurisdiction over ail the issues presented and its decision
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`wili be binding on the registration issues presentiy before the Board.
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`C.
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`Biatant Forum Shopping Should Not Be Encouraged.
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`Wilrnar’s forum shopping activities should not be encouraged. Wiirnar did not file the
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`above-captioned proceeding before Mag Instrument flied its Complaint. Nor did Wilinar iiie the
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`above-captioned proceeding soon after Mag instrument provided Wiirnar with a copy of its
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`Complaint or formally served Wilniar with the Complaint. Instead, Wilrnar asked for, and Mag
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`instrument graciously allowed, Wilmar an extension oftiine to respond to the Complaint. And,
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`only after getting the extension, Wiimar filed the abovecaptioned proceeding in a blatant
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`attempt to avoid the quick decision of the district court, and to instead attempt to force Mag
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`instrument to engage in duplicative proceedings that Wiil certainly not be resolved before trial in
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`the district court. Wiiniar’-s conduct has resulted in a waste of the parties’ — and the Board’s ~
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`time and resources.
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`i..:‘ii~2‘9”?8i}(}¥}vl
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`-5-
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`

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`IV.
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`CONCLUSION
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`For the foregoing reasons, Mag Instrument rcspcctfuiiy requests that the Board suspend
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`this cancciiation proceeding untii resolution ofthe earlierwfiied Case No. CV 08-2779 PSG
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`(MANX), which is pending in the United States District Court for the Central District of
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`California.
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`Respectfuiiy submitted,
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`mm; November}-4, 2008
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`Charles A. Kertell
`
`Bv:
`
`Anna E. Raimer
`
`JONES DAY
`
`555 South. Flower Street
`
`Los Angeles, CA 90071
`(213) 486-3939
`
`Attorneys for Applicant
`
`MAG STRUMENT, INC.
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`i..—-‘1i—I‘;9’,-’E§‘(}f.‘99s»'i
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`-6-
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`

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`BECLARATION OF CHARLES A. KERTELL IN SUPPORT OF REGISTRANTS
`
`MOTION TO SUSPEND PROCEEDINGS PENDING THE FINAL RESOLUTION OF
`AN EARLIER FILED DlSTRICT COURT ACTION
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`l, Charles A. Kertell, hereby declare and state as follows:
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`l.
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`I am an associate with the law firm of Jones Bay, counsel of record for Registrant
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`Mag lnstmrnent, Inc. (“l\/lag instrument”) in the above-captioned cancellation proceeding.
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`Unless otherwise indicated, l have persona} knowledge of the facts stated in this Declaration, and
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`l could and would competently testify to these facts if called upon to do so.
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`2.
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`Attached hereto, as Exhibit A, is a true and correct f1le«stamped copy ofthe
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`Complaint filed by Mag Instrument on April 29, 2008, in the United States District Court for the
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`Central District of California, in the case captioned l\/lag instrument, Inc. V. Wilmar Corp, et ah,
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`Case No. CV 08~2779 PSG (MANX).
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`3.
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`On April 30, 2008, I wrote Mr. Nevil Herrner, who I understood to be the
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`President of Petitioner Wilmar Corp. (“Wilmar").
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`in my letter, I informed Mr. Hertner that it
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`was Mag lnstruznenfs opinion that Wilmar, by its marketing and sale of certain flashlights,
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`infringed Mag lnstru1nent’s United States Trademark Registration No. 2,765,978.
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`I also
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`enclosed a copy of the Complaint in Case No. CV 08-2779 PSG (MANX).
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`4.
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`I exchanged correspondence with counsel for Wilrnar concerning Case No. CV
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`08-2779 PSG (l\r'iANx) in May of 2008. However, after May of 2008, counsel for Wilmagr failed
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`to respond to any of my correspondence or voice mail messages.
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`5.
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`Attached hereto, as Exhibit B, is a true and correct copy of Mag lnstrurnenfs
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`First Amended Complaint. which was forrnally served on Wilmer on August 22, 2008.
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`6.
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`\?v’ilmar‘s Answer to the First Amended Complaint was initialiy due on September
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`E2, 2008. However, in response to a request by counsel for Wi.imar for an extension, Mag
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`l.Al~Z‘>7§§€}€}€3vl
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`-7-
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`

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`Instrument agreed that Wiimar eouid have an additionai thirty days to respond to the First
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`Amended Compiaint we untii October 14, 2008. Wiimar filed its canceiiation petition against
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`Mag instrument only after it received this extension. Thereafter, Wiimafs counsel requested,
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`and Meg Instrument granted, Wilmer an additional extension of time to respond to the First
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`Arn.en.ded Compiaint — anti} Novernber 3, 2008.
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`7.
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`Attached hereto, as Exhibit C, is a true and correct copy of Wilmafs Answer,
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`Affirrnative Defenses, and Counterciaims in Case No. CV 08-2779 PSG (MANX), which was
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`filed on November 3, 2008.
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`I deciare under penalty of perjury under the laws of the United States that the foregoing is
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`true and correct.
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`Executed this 14”" day ofE\ioVember, 2008 in Los Angeies, Caiifornia.
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`
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`L=’ki—2‘§78(}{)9v1
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`-3,
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`

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`CERTIFICATE OF SERVICE
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`It is hereby certified that a copy ofthe foregoing document, entitied Registranfs Motion
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`:0 Suspend Proceedings Pendfing the Final Resolution ofan Eariier Fiied DistriciCou1'E Aefiion,
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`has been served upon i’etitioner"s counsel, Pam K. Jacobson, Christensen O'Connor Johnson
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`Kindness PLLC, I420 Fifih Avenue, Suite 2800, Seattle, WA 98101~2347, this 14th day of
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`November, 2008, marked first class mail, postage prepaid.
`
`/'\
`
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`Anna E. Raimer
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`,9-
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`

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`EXHIBIT A
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`

`
`‘
`
`Robert C.,Weiss (State Bar No. 39,929)
`rcwelssgjonesda C0111
`Charles
`.KerteI (State Bar No. 181,214)
`. cakerteil ag%rr1esday.com
`m
`SONES
`555 South Fiower Street, 50 Floor
`Los Angeles, CA 90071
`Telephone:
`(213 489-3939
`(213 24?»-2539
`Facsumlez
`Attome s for Piamtiff
`MAG} STRUMENT, INC.
`
`
`
`23% APR 29 gm 53; 36
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`ER}. U
`CEHTRLEE
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`‘
`as'._.._._____......._....
`
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`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
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`MAG INSTRUMENT, INC, a
`Caiifomia corporation,
`.
`Plaintzff,
`
`V.
`
`;
`
`WILMAR CORR, a Washington
`corporation, and DOES 1-I0,
`
`Defendants.
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`casemcvos-02779 PS3
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`~§§*>;. Eff;
`
`COMPLAINT FOR FEDERAL
`TRADEMARK INFRINGEMENT
`FEDERAL FALSE DESIGNATION
`OF ORIGIN, FEDERAL
`TRADEMARK DILUTION,
`CALIFORNIA UNFAIR
`COMPETITION, CALIFORNIA
`TRADEMARK DILUTION
`COMMON LAW TRADEMARK
`INFRINGEMENT, AND COMMON
`LAW UNFAIR COMPETITION
`
`DENIAND FOR JURY TRIAL
`
`E
`
`[V‘4I129*Ii5 E Srvé
`
`

`
`
`
`Piaintiff, Mag Instrument, Inc. ("Mag Instrument"), fiies this Complaint
`against defendants, Wilrnar Corp. ("Wiimar") and DOES 1- I0, and demanding a
`trial by jury, aiieges as follows:
`
`JUMSDICTION AND VENUE
`
`1.
`
`This Court has original jurisdiction over the subject matter of the
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`FXRST through TPIXRD causes of action pursuant to the provisions of 28 U.S.C.
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`§§133i and 1338(a), as weil as 15 USC. §1 121, because these causes of action are
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`for federal trademark infringement, federai false designation of origin, and federai
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`trademark diiution, respectively, which arise under the Trademark (Lanham) Act of
`1946, as amended, 15 U.S.C. ms 1, et seq.
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`2.
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`This Court aiso has original jurisdiction over the subject matter of the
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`FOURTH through SEVENTH causes of action pursuant to the provisions of 28
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`2 3
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`4
`
`S
`
`6
`
`7
`
`8
`
`9 _
`10
`
`ll
`
`12
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`13 : U.S.C. §§1338(b), because these causes of action are for California unfair
`
`
`
`14
`15
`16
`17 i
`E8
`19
`20
`21
`
`22
`
`23
`
`24
`25
`25
`27
`
`2a
`
`
`
`competition under Caiifomia common law arid Business and Professions Code
`§l7200, California trademark diiution under Business and Professions Code
`§i4247, and Caiifornia trademark infringement in violation of California common
`law, all of which are claims for unfair competition under Caiifornia iaw that are
`joined with a substantial and related claim under the trademark laws ofthe United
`States.
`3.
`
`Further, this Court has supplemental jurisdiction over the FOURTH
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`through SEVENTH causes of action, which assert state law ciaims, pursuant to the
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`provisions of 28 USC. §i36’?(a). These state law claims are so related to the other
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`claims in this case, over which this Court has original jurisdiction, that they form a
`part ofthe same case or controversy under Articie III of the United States
`
`Constitution.
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`4.
`
`Upon information and belief, venue is proper under 28 U.S.C. §§ l 391
`
`(b) &; (c).
`
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`
`THE PARTIES
`
`5.
`Mag Instrument is a corporation incorporated under the laws of the
`State of California and has its principal place of business at 2001 South Hellman
`Avenue, Ontario, California 91761.
`
`6.
`
`Upon information and belief, Wilmar is a corporation incorporated
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`under the laws of the State of Washington and has .its principal place of business at
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`‘ 801 sw 16*“ Street, Suite 115, Renton, Washington 93057
`
`7.
`Upon information and belief, Wilnaar resides in this district under 28
`i U.S.C. §l39l. In particular, Wilrnar does business in this district and a substantial
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`; part of the events giving rise to the claims in this case occurred in this district.
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`8.
`Mag Instrument is not fully informed regarding the involvement of the
`defendants sued herein under the fictitious names DOES I-ll), inclusive (the "Doe
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`Defendants"). Upon information and belief, the Doc Defendants are involved with
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`, Wilmar and/or the activities alleged herein. Mag Instrument has thus sued the Doe
`Defendants by their fictitious names. Mag Instrument will seek leave to amend this
`Complaint to allege the true narnes, capacities, and residences of the Doe
`Defendants when their involvement is ascertained. Wilrnar and the Doe Defendants
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`1 are hereinafter collectively referred to as the "Defendants."
`
`9.
`Mag Instrument is informed and believes, and thereupon alleges, that
`the Doe Defendants, and each of them, are responsible in some manner, by their
`acts and/or omissions, for the matters alleged herein. Mag Instrument is fl.lI"Ei’l€l‘
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`informed and believes, and thereupon alleges, that the Doe Defendants, and each of
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`i
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`there, at all material times herein alleged, were the agents, servants, andfor
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`employees of the other Defendants, or otherwise participated in the improper
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`conduct alleged herein.
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`LA]-29455 i Svi
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`M)
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`

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`FiRST CAUSE OF ACTION
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`(Federal Trademark Infringement - SSOA of the SOLITAIRE” Flashlight)
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`(15 U.S.C. §l051, et seq.)
`
`10. Mag instrument repeats, realieges, and incorporates by reference, as
`though fully set forth herein, the allegations contained in paragraphs 1—~9, above.
`
`1 i.
`For many years, and prior to the acts of Defendants complained of
`herein, Mag Instrument has continuously manufactured, advertised, assembled,
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`marketed, sold, and distributed, in interstate and international commerce, high—
`quality machined, anodized aluminum, high—intensity, adjustable beam flashlights,
`including, but not limited to, flashlights under the distinctive trademark
`
`E
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`SOLITAIRE‘: These flashlights are also characterized by their distinctive shape,
`styie, and overall appearance ("SSOA"), which is a trademark of Mag instrument.
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`These flashlights are further characterized by their outstanding quality,
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`extraordinary design, materiais of construction, workmanship, performance,
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`4;
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`reliability, durability, and outstanding optical features.
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`12.
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`The SSOA of the SOLITAIRE‘ flashlight is inherently distinctive,
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`§ non-functional, and has acquired secondary meaning in that it has come to be
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`associated by the trade and consuming public exclusively with Mag Instrument and,
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`as a result, has come to signify Mag Instrument as the source of fiashiights bearing
`the same or similar characteristics.
`
`:
`
`13. Mag Instrument has obtained, and is the owner of, a federai
`registration on the SSOA of the SOLETAIRE‘ flashlight. A copy of this federal
`registration, United States Trademark Registration Number 2,765,978, is attached
`hereto as Exhibit 1. This registration remains in filll force and effect. At all
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`reievant times, Mag Instrument has consistently and continuousiy displayed the
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`5
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`registration symbol "®" or its equivalent since the mark has become registered.
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`14. Mag Instrument has manufactured, advertised, marketed, and
`; promoted its flashlights and related products so that the public associates them with
`
`LA!-2945518vI
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`4
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`

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`,......n
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`the idea of outstanding quality, extraordinary design, materials, workmanship,
`performance, reliability, durability, and outstanding optical features. In furtherance
`
`of that goal, Mag instrument usaaliy displays its products and the associated
`
`_
`
`trademarks in its advertising and promotional presentations. To date, Mag
`instrument has spent several millions of dollars advertising and promoting its
`
`SOLITAIRE’ flashlights and other flashlights and related products, and has had
`
`over a billion dollars in sales of its flashlights and related products.
`
`15. Mag instrument's flashiights are manufactured exciusiveiy in the
`United States of America. Moreover, Mag Instrurnenfs flashiights are sold with a
`
`3 warranty, backed up by a fulhservice staff of ful1~tirne employees at the Ontario,
`
`California facility. Mag Instrurnent also employs several people in its customer
`
`p service department located at Mag Instruments headquarters.
`
`16. Defendants have manufactured, advertised, distributed, marketed,
`imported, promoted, offered for sale, and/or sold commercially in interstate
`
`:
`
`_ commerce certain flashlights, at least one of which is shown in Exhibit 2 (the
`
`i "Wi91O flashlight"). The W1.91O flashiight bears a shape, style, and overali
`
`appearance that is the same as, or confusingly similar to, the SSOA of Mag
`
`Instruments SOLITAIRE” flashlight.
`
`17.
`
`Defendants’ manufacture, advertising, distribution, marketing,
`
`.1
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`importation, promotion, offer for sale, andfor sale of the W19i{} flashiight, having a
`
`'~ shape, style, and overall appearance that is the same as or confilsingly similar to
`that of Mag instruxnenfs SOLITAiRE® flashlight, is likely to cause confusion and,
`
`upon information and belief, has caused confusion that the WI 910 flashlight is
`
`made by, sponsored by, or affziiated with Mag Instrument,
`
`18.
`
`Defendants’ use of the shape, style, and overall appearance of the
`
`; Wl9l0 flashlight is without the permission of Mag instrument. This use is with the
`
`knowledge that the shape, style, and overall appearance of the Wl9lG flashlight is
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`g confusingly similar to Mag Instrurnenfls SSOA trademark, which has previousiy
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`if been and is being used by Mag Instrument.
`
`19. Upon information and beiief, Defendants had knowledge of Mag
`Instrurnenfs SOLITAIRE‘ fiashiight and the considerable commercial success it
`has achieved. Mag Instrurnent is informed and believes, and thereon alleges, that
`Defendants willfuily and with conscious disregard for Mag Instruments product
`configuration trademark in the SOLITAIRE” flashlight manufactured, advertised,
`distributed, marketed, irnported, promoted, offered for sale, and/or sold the W19iO
`
`flashlight that is a colorabie imitation of Mag Instrurnenfs product configuration
`trademark.
`
`20.
`The above-recited acts by Defendants constitute trademark
`iniiingernent of Mag Instruments federally registered trademark in violation of the
`
`Lanharn Act, 15 U.S.C. §10S 1, et seq., to the substantial and irreparable injury of
`the public and of Mag Instrunaentfs business reputation and goodwili.
`
`As resuit of their acts, Defendants have been, and will continue to be,
`21.
`unjustly enriched by profits that Defendants have made in connection with the
`
`l manufacture, advertising, distribution, marketing, importation, promotion, offer for
`sale, and/or sale of the W1910 flashlight having a shape, style, and overall
`
`, appearance that is confusingly similar to the SSOA of the SOLETAIRE” flashlight.
`
`22.
`Defendants’ continuing infringement has inflicted and, uniess
`restrained by this Court, will continue to inflict great and irreparabie harm upon
`Mag Instrument. Mag Instrument has no adequate remedy at law. Mag instrurnent
`is entitled to preliminary and permanent injunctions enjoirnng Defendants from
`
`engaging in further acts of infringement.
`
`As a direct and proximate resuit of the foregoing acts of Defendants,
`23.
`Mag instrument has suffered, and is entitied to, monetary damages in an amount
`
`f not yet determined. Mag Instrument is also entitled to its attorneys‘ fees and costs
`
`of suit herein.
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`24. Upon information and belief, Defendants’ acts were in conscious and
`
`, willful disregard for Mag instrurnenfs rights to the SSOA trademark, and the
`
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`resuiting damage to Mag lnstrurnent is such as to warrant the trebiing of damages in
`
`order to provide just compensation.
`
`SECOND CAUSE OF ACTION
`
`(Federal Faise Designation of Origin — SSOA of the SOLITAJRIF Flashlight)
`
`(15 U.S.C. §1125(a))
`
`25. Mag Instrument repeats, realleges, and incorporates by reference, as
`
`though fizily set out herein, the allegations contained in paragraphs l—9 and li—2-4,
`
`above.
`
`26. Mag Instrument owns and enjoys common law trademark rights in the
`
`SSOA of the SOLITAIRE‘ flashlight, which rights are superior to any rights that
`
`Defendants may claim in the product configuration with respect to the W19I0
`flashlight. The SSOA for the SOLITAIRE‘ flashlight is inherently distinctive, non-
`
`functional, and has acquired secondary meaning with the trade and consuming
`
`: public andfor has become distinctive in the minds of purchasers in that this SSOA
`
`for flashlights is associated with Mag Instrurnent, as evidenced in part by the grant
`
`, of United States Trademark Registration No. 2,765,978 therefor.
`
`27. Upon information and belief, Defendants have used and are using the
`
`I
`
`shape, style, and overall appearance of the V»/1910 tlashiight to sell, market, and
`
`promote their flashlight with the intent of passing off and confusing the public into
`
`believing that the Wl9i0 flashlight is the same as, originates with, and/or is
`
`sponsored by Mag lnstrurnent.
`
`28.
`
`By manufacturing, advertising, distributing, marketing, importing,
`
`promoting, offering for sale, andfor seliing the Wi9i0 flashlight, having a shape,
`styie, and overail appearance that is confilsingiy similar to that of Mag Instrurnenfs
`
`SOLITAIRW flashlight, Defendants have infringed on Mag Instrurnenfls federal
`and common law trademark rights in the SSOA of the SOLITAIRB‘ flashlight in
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`vioiation of Section 43(a) ofthe Lanham Act, 15 U.S.C. §112S(a). Defendants‘
`
`above~recited acts further constitute false designation of origin, false description,
`false representation, and unfair competition in vioiation of Section 43(a) of the
`Lanham Act, i5 U.S.C. § li25(a), as such acts are Iikeiy to deceive customers and
`
`prospective customers into beiieving that the W'i9iG flashlight is from or sponsored
`by Mag Instrument and, as a consequence, are likely to divert and have diverted
`
`customers away from Mag Instrument.
`
`29.
`
`If not enjoined by the Court, Defendants wili continue to sell the
`
`W1910 flashlight in commerce, which flashlight will be attributed to having
`emanated from Mag Instrument. Mag Instrument, however, has no control over the
`nature and quality of the W191i) flashiight so rendered, and any fauit or objection
`
`I with said flashlight will adverseiy affect future sates by Mag Instrument of its
`flashlights under the SSOA trademark.
`
`30. As a result of their acts, Defendants have been, and wiil continue to be,
`
`I unjustly enriched by profits that Defendants have made in connection with their
`
`manufacture, advertising, distribution, marketing, importation, promotion, offer for
`sale, and/or sale of the W1910 flashlight, that bears a shape, style, and overaii
`appearance that is confusingly similar to the SSOA trademark.
`
`3 E.
`Defendants’ continuing infrirlgernent has inflicted and, unless
`restrained by this Court, will continue to inflict great and irreparable harm upon
`Mag Instrument. Mag Instrument has no adequate remedy at law. Mag instrument
`is entitied to preliminary and permanent injunctions enjoining Defendants from
`engaging in further acts of infringernent.
`
`32.
`As a direct and proximate resuit of the foregoing acts of Defendants,
`Mag Instrument has suffered, and is entitled to, monetary damages in an amount
`
`not yet determined. Mag Instrument is also entitled to its attorneys’ fees and costs
`
`of suit herein.
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`Upon information and belief, Defendants‘ acts were in conscious and
`33.
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`2 willful disregard for Mag instrument's rights to the SSOA trademark, and the
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`resulting damage to Mag Instrument is such as to warrant the trebling of damages in
`order to provide just compensation.
`THIRD CAUSE or ACTION
`
`6
`7
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`9
`
`("Federal Trademark Bilution -— SSOA Trademark)
`(15 U.s.C. § 1I25(c))
`34. Mag Instrument repeats, reaiieges, and incorporates by reference, as
`though fully set out herein, the allegations contained in paragraphs 1-9, 11-24, and
`
`10 ; 26-33, above.
`
`11 ,
`
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`
`35.
`
`The SSOA trademark is a distinctive and famous mark.
`
`In connection with the W19 10 flashiight, Defendants began using a
`36.
`shape, style, and overaii appearance confusingly similar to the SSOA trademark
`
`subsequent to the SSOA trademark becoming famous.
`
`37.
`
`Defendants’ manufacture, advertising, distribution, marketing,
`importation, promotion, offer for sale, and/or sale of the WI 91 0 flashlight, that has
`a shape, style, and overail appearance that is the same or confiisingly similar to that
`of Mag Instrument's SSOA trademark, causes dilution by lessening the capacity of
`the famous SSOA ofMag Instrunienfs SOLITAIRE‘ flashlight to identify and
`
`20 i distinguish flashiights.
`
`38.
`
`By reason of their acts complained of herein, Defendants have caused
`the diiution of the distinctive quality of the SSOA trademark, and lessened the
`
`capacity of the famous SSOA trademark to identify and distinguish fiashiights in
`
`violation of 15 U.S.C. §il25(c).
`
`39.
`
`As a result of their acts, Defendants have been, and will continue to be,
`
`unjustly enriched by profits that Defendants have made in connection with their
`26
`27 manufacture, advertising, distribution, marketing, importation, promotion, offer for
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`sale, and/or sale of the W191i} flashiight bearing a shape, style, and overall
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`appearance that is confilsingty similar to the SSOA trademark.
`
`40.
`
`As a direct and proxirnate result of the foregoing acts of Defendants,
`
`Mag Instrument has suffered, and is entitied to, nionetary damages in an amount
`
`not yet dete-rrnined. Mag Instrument is aiso entitied to its attorneys’ fees and costs
`
`of suit herein.
`
`4}. Upon information and belief, Defendants‘ acts were in conscious and
`
`wiiifui disregard for Mag Instruments rights to the SSOA trademark, and the
`
`resetting damage to Mag Instrument is such as to warrant the trebling of damages in
`
`order to provide just compensation.
`
`42. Upon information and belief, Defendants wilifiilly intended to trade on
`
`Mag Instrumentfs reputation and/or to cause dilution of Mag Instrumenfs famous
`
`SSOA. trademark. Defendants’ acts and the resulting damage to Mag Instrument are
`
`such as to warrant the trebiing of damages in order to provide just compensation.
`
`Unless Defendants are restrained and enjoined by this Court, Defendants’ actions
`
`will continue