Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA398051
`ESTTA Tracking number:
`03/15/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053743
`Defendant
`Barry D. Sears Ph.D.
`BARRY D SEARS PH.D
`222 ROSEWOOD DRIVE, SUITE 500
`DANVERS, MA 01923
`UNITED STATES
`Motion to Suspend for Civil Action
`Jeremy Blackowicz
`jblackowicz@haslaw.com, tmdocket@haslaw.com
`/s/ Jeremy Blackowicz/
`03/15/2011
`Motion to Suspend Cancellation Proceedings Based on Filing of Civil
`Action.PDF ( 35 pages )(654668 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`)
`ZONE CULINAIRE, LLC, )
`
`Cancellation No.:
`Marks:
`ZONE CUISINE (Reg. No. 3,631,379) CL.39
`ZONE CUISINE (Reg. No. 2,997,305) CL.29
`ZONE CUISINE (Reg. No. 2,968,210) CL.43
`DR. SEARS ZONE CUISINE
`(Reg. No. 3,157,042) CIs. 29, 39 and 43
`ZONE (Reg. No. 3,171,590) CL.43
`
`) )
`
`Petitioner, )
`
`)
`
`v. )
`
`) )
`
`BARRY D. SEARS, )
`
`) )
`
`Respondent. )
`)
`
`RESPONDENT BARRY D. SEARS' MOTION TO SUSPEND CANCELLATION
`PROCEEDINGS BASED ON FILING OF CIVIL ACTION
`
`Pursuant to 37 CFR §2.117(a), Respondent Barry D. Sears ("Sears") respectfully moves
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`the Trademark Trial and Appeal Board to Suspend these Cancellation Proceedings pending the
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`resolution of a civil action filed by Respondent Barry D. Sears on September 29,2010 against
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`Petitioner in the United States District Court for the Southern District of
`
`New York.
`
`INTRODUCTION
`
`Petitioner noted in Paragraph 1 of its Petition for Cancellation that it is the subject of a
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`civil action filed by Respondent Barry D. Sears. The Federal Court Action, Sears v. Zone
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`Culinaire. LLC. et aI., Civil Action No.1 O-CV -07442 is for trademark infringement and unfair
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`competition arising from Petitioner's use of
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`the mark ZONE to refer to its dietary meal delivery
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`services for dieters follows the protocols of Dr. Sears' well-known ZONE-branded diet. A copy
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`the Complaint in the Federal Court Action is attached hereto as Exhibit A. The outcome of
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`of
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`the Federal Court Action would have a direct bearing on the rights of
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`the parties, as a finding by
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`

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`the Federal Court that Petitioner has no rights to use ZONE, it's standing to sustain this action
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`would be eradicated.
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`ARGUMENT
`
`The Trademark Rules of Practice expressly provide for the suspension of proceedings
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`when the parties to a case pending before the Board are engaged in a civil action which may be
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`dispositive of
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`the case.l 37 CFR § 2.117(a); see also General Motors Corp. v. Cadillac Club
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`Fashions. Inc., 22 u.S.P.Q.2d 1922 (TT AB 1992). Accordingly, the Board frequently suspends
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`proceedings before it when an action filed in Federal District Court involves issues in common
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`with those in a proceeding before the Board. See Trademark Trial and Appeal Board Manual of
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`Procedure ("TBMP") § 51 0.02(a) (and cases cited therein).
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`The resolution of
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`the Federal Court Action may be dispositive of
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`this cancellation
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`proceeding as Dr. Sears' seeks the Federal Court's determination whether there is a likelihood of
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`confusion between his use of ZONE for numerous dietary products and services and Zone
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`Culinaire's uses of
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`the mark ZONE MANHATTAN for dietary meal delivery services. While
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`the marks identified in this cancellation proceeding are not specifically identified in the Federal
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`Court action, Dr. Sears has plead ownership of a family of marks in the Civil Action and owns at
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`least forty-five (45) pending and registered marks containing or comprising the term ZONE, any
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`of which may be the subject of examination in the Federal Court action.
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`It is well settled that "(t)o the extent that a civil action in a Federal District Court involves
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`issues in common with those in a proceeding before the Board, the decision of
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`the Federal
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`District Court is binding upon the Board." TBMP § 51 0.02(a); see also Goya Foods. Inc. v.
`
`i Section 2. i i 7(a) provides, in its entirety, as follows: "Whenever it shall come to the attention of
`
`the Trademark
`Trial and Appeal Board that a part or parties to a pending case are engaged in a civil action or another Board
`proceeding which may have bearing on the case, proceedings before the Board may be suspended until termination
`ofthe civil action or the other Board proceeding." 37 CFR § 2. i i 7(a).
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`#915580
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`Tropicana Products. Inc., 846 F.2d 848, 6 U.S.P.Q. 2d 1950 (2d Cir. 1988); American Bakeries
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`Co. v. Pan-O-Gold Baking Co., 650 F.Supp. 563,2 U.S.P.Q. 2d 1208 (D. Minn. 1986); The Toro
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`Co. v. Hardigg Industries. Inc., 187 U.S.P.Q. 689 (TTAB 1975); Whopper-Burger. Inc. v. Burger
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`King Corp., 171 U.S.P.Q. 805 (TTAB 1971).
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`Moreover, Respondent respectfully submits that the interests of judicial economy require
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`that this cancellation proceeding be suspended pending the resolution of
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`the Federal Court
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`Action. Should Petitioner be found by the Federal Court to not have any rights to use marks
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`containing the term ZONE for dietary meal delivery services, Petitioner will lack standing to
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`bring the present claims for cancellation. Granting this Motion wil relieve the parties from
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`engaging in, and incurring the expense of further or duplicative discovery, motion practice
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`and/or oral argument which would be unnecessary in light of
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`the pending Federal Court Action.
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`More significantly, however, granting this Motion would relieve the Board from expending its
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`precious, limited judicial resources unnecessarily or prematurely. See American Bakeries, 2
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`U.S.P.Q.2d at 1211 (concluding stay is appropriate when adjudication might serve as a final
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`disposition of
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`the matter, making further proceedings unnecessary).
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`CONCLUSION
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`As set forth above, the Federal Court Action will necessarily determine the common
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`issues regarding Petitioner's ability to sustain this action. Accordingly, for the foregoing
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`reasons, and to conserve scarce judicial resources, Respondent respectfully requests that the
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`Board suspend this cancellation proceeding pending the final determination of
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`the Federal Court
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`Action.
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`As the deadline for Respondent's Answer in this matter is March 28,2011, which may
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`arrive prior to the Board's action on this Motion, and allowance of
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`this Motion will obviate the
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`#9 i 5580
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`3
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`need for the filing of an Answer, Respondent respectfully requests that the Board suspend all
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`deadlines in this action pending a decision on this Motion.
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`Respectfully submitted,
`
`BARRY D. SEARS
`
`By its attorneys,
`
`,/'
`
`--
`
`~borah L. enson
`Jeremy Blackowicz
`~ Hinckley, Allen & Snyder LLP
`28 State Street
`Boston, MA 02109
`Tel: (617) 345-9000
`Fax: (617) 345-9020
`
`Dated: March 15,2010
`
`CERTIFICATE OF SERVICE
`
`This is to certify that the undersigned served the foregoing Motion to Suspend on the
`Petitioner, Zone Culinaire, LLC, by first-class mail postage pre-paid, dated March 15, 2011,
`addressed to the Petitioner's attorney:
`
`Jason M. Drangel, Esq.
`Epstein Drangel LLP
`60 East 420d Street, Suite 2140
`New York, NY 10165
`
`#915580
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`4
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`

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`EXHIBIT A
`
`EXHIBIT A
`
`

`
`A
`
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`
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`
`Patrick T. Perkins (PP 1694)
`PERKINS LAW OFFICE, P.C.
`1711 Route 9D
`
`Cold Spring, New York 10516
`Tel: (845) 265-2820
`Fax: (845) 265-2819
`pperkins@ptplaw.corn
`
`Attorneyfor Plainrzfi"
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF NEW Y%31%
` )
`
`BARRY D. SEARS,
`
`Plaintiff,
`
`) )
`
`) )
`
`Case No.
`
`COMPLAINT
`
`) )
`
`)
`
`) )
`
`)
`
`v.
`
`ZONE CULINAIRE, L.L.C., STEVE LINDNER,
`and ALYS SA LINDNER,
`
`Defendants.
`
`Plaintiff Barry D. Sears, by his undersigned attorney, for his Complaint against
`
`defendants Zone Culinaire, L.L.C., Steve Lindner, and Alyssa Lindner, alleges as
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`follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action by Plaintiff Barry D. Sears, Ph.D. (‘‘Plaintiff’ or “Dr.
`
`Sears”) against Defendants Zone Culinaire L.L.C. (“Zone Culinaire”), Steve Lindner and
`
`Alyssa Lindner (collectively “Defendants”) for federal trademark infringement pursuant
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`to 15 U.S.C. § 1114, unfair competition pursuant to 15 U.S.C. §1 l25(a), and deceptive
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`trade practices arising out of Defendants’ unlawful use of Plaintiffs we1l—known ZONE
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`trademark in commerce as part of their trademarks and trade names, including ZONE
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`

`
`CULINAIRE and ZONE MANHATTAN, their Internet domain names
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`<zoneculinaire.com>, <zoneamanhattan.com>, <zonewestchester.com>,
`
`<zonelongisland.com>, <zonehamptons.com>, <zonedietwestchester.com> and
`
`<zonedietmanhattan.com> and others, their telephone number 1-866-961-ZONE and
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`other unlawful uses of ZONE for Defendants’ prepared meals and meal delivery services
`
`for dieters following the protocols taught by Dr. Sears and marketed by Dr. Sears under
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`the ZONE brand name and the ZONE Family of Marks. In the instant action, Plaintiff
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`seeks a permanent injunction, compensatory damages and other damages that may be just
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`and reasonable, and attorney’s fees for violation of his rights.
`
`PARTIES
`
`2.
`
`Plaintiff Barry D. Sears is an individual with an address of 21 Tioga Way,
`
`Marblehead, Massachusetts 01945.
`
`3.
`
`Upon information and belief, Zone Culinaire, L.L.C. is a limited liability
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`company duly organized and existing under the laws of the State of New York, having a
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`place of business at 751 Drake St. Hunts Point, New York 10474.
`
`4.
`
`Upon information and belief, Steve Lindner is an individual, residing at 33
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`William St., Apt. #3C, Mt. Vernon, New York 10552.
`
`5.
`
`Upon information and belief, Alyssa Lindner is an individual, residing at
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`33 William St., Apt. #3C, Mt. Vernon, New York 10552.
`
`JURISDICTION AND VENUE
`
`6.
`
`This is an action arising under the Trademark Act of 1946, 15 U.S.C. §
`
`1051, et seq. (the “Lanham Act”), and the laws of the state of New York prohibiting
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`unfair competition, trademark infringement, and deceptive trade practices.
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`
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`2
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`7.
`
`This Court has subject matter jurisdiction over this action pursuant to 28
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`U.S.C. §§ 1331, 1338 and 1376(a) and 15 U.S.C. §§ 1116 and 1121. In addition, the
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`Court has diversity jurisdiction under Section 1332 of the Judicial Code, 28 U.S.C. §
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`1332, because the controversy is between citizens of different states and the matter in
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`controversy exceeds the value of $75,000, exclusive of interest and costs. The Court has
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`supplemental jurisdiction over the state law claims under Section 1367(a) of the Judicial
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`Code, 28 U.S.C. § 1367(a) and under principles of pendent jurisdiction.
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`8.
`
`This Court has personal jurisdiction over Defendants because Defendants
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`have committed tortious acts within this judicial district and because Defendants reside in
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`this judicial district.
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`9.
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`Venue is proper pursuant to 28 U.S.C. § § 1391(b)(2) because Defendants
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`do business in, have substantial contacts with and/or may be found in the Southern
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`District of New York, and a substantial part of the events giving rise to the claims herein
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`occurred in this judicial district.
`
`
`
`FACST COMMON TO ALL CLAIMS FOR RELIEF
`
`A.
`
`Plaintiff’s Use and Registration of the ZONE Trademarks
`
`10.
`
`Plaintiff, Dr. Barry Sears, is the scientist and author who achieved
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`considerable fame in connection with the lifelong hormonal and insulin control program
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`that he first created about fifteen (15) years ago.
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`11.
`
`Dr. Sears’ program uses food as a drug to help people control and balance
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`their hormonal and insulin levels to achieve maximum mental productivity and as a
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`means to improved health.
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`
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`3
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`

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`12.
`
`In 1995, Dr. Sears branded his writing, teaching and consulting on the
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`benefits of an insulin balanced hormonal control diet with the trademark “ZONE.”
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`13.
`
`The term ZONE in Dr. Sears’ ZONE trademark and his composite marks
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`incorporating ZONE, is not used in the word’s ordinary sense to mean “an area” -- e.g.,
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`“play zone” describing a specific area dedicated to playing. Rather, ZONE, as used by
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`Dr. Sears, is arbitrary.
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`14.
`
`Dr. Sears is well known as the source of ZONE branded products and
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`services.
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`15.
`
`Dr. Sears has authored numerous ZONE branded books relating to his
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`program, including The Zone, Mastering the Zone, Zone Food Blocks, The Anti-Aging
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`Zone, A Week in the Zone, The Soy Zone, The Top One Hundred Zone Foods, The
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`OmegaRx Zone and The Anti-Inflammatory Zone.
`
`16.
`
`Several of these books have appeared on The New York Times bestseller
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`list.
`
`17.
`
`Dr. Sears’ The Zone was number one on The New York Times bestseller
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`list in 1996 and remained on that list for approximately twenty (20) weeks.
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`18. More than five million hard cover copies of Dr. Sears’ ZONE branded
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`books have been sold in the United States alone.
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`19.
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`Dr. Sears’ works have been translated into twenty two (22) languages and
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`are sold in at least forty (40) foreign countries.
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`20.
`
`Since at least as early as 1998, Dr. Sears has used the trademarks ZONE
`
`and ZONE DIET in connection with educational and counseling services in the fields of
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`4
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`diet, health and nutrition including, meal planning services, diet and nutrition counseling
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`and providing information in the fields of diet, health and nutrition.
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`21.
`
`Since 2003, Dr. Sears has provided prepared foods in connection with the
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`mark ZONE and other marks containing the ZONE mark. Such ZONE food products are
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`compliant with Dr. Sears’ program.
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`22.
`
`Dr. Sears also provides a wide array of health, and nutrition products as
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`well services related thereto, that are compliant with his program, all under the trademark
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`ZONE and composite trademarks that contain ZONE as the dominant portion thereof,
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`including, but not limited to, ZONE, ZONE DIET, ZONE APPROVED, ZONE FAST,
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`ZONE SHAKE and DR. SEARS ZONE.
`
`23.
`
`Dr. Sears has widely promoted his ZONE branded books, food, health and
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`nutrition products, and services, including through numerous and frequent live and taped
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`personal appearances, including seminars, conferences, radio shows, and network
`
`television interviews, throughout the United States.
`
`24.
`
`In promoting his ZONE branded food, health and nutrition products, and
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`services, Dr. Sears has appeared on nationally-broadcast television shows, including The
`
`Today Show in 1996 and again in January 2005, 20/20 in 1999, Good Morning America
`
`on June 9, 2000, June 15, 2000 and again in May 2002, Dateline in July 2002, CBS
`
`Evening News on May 21, 2003, The Montel Williams Show on April 1, 2004, the 700
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`Club on October 1, 2008, and Live With Regis and Kelly on February 2, 2005. Dr. Sears
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`has also promoted his ZONE food, health and nutrition goods and services on numerous
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`local television news affiliates, cable television programs and radio programs. Dr. Sears
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`is a frequent invited speaker at numerous healthcare events and conferences, and most
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`5
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`recently presented at the American Diabetes Association annual meeting on June 26-28,
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`2010.
`
`25.
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`Additionally, each year since 1998, Dr. Sears has conducted a week long
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`ZONE branded seminar aboard a cruise ship, providing a series of presentations and
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`demonstrations on mastering his program.
`
`26.
`
`Dr. Sears is well and favorably known throughout the United States and
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`has built up valuable goodwill and reputation in the trademark ZONE and composite
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`marks incorporating ZONE for health and nutrition products and services designed to
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`help people control hormone levels and insulin levels.
`
`27.
`
`In fact, Dr. Sears was consulted in connection the treatment of Randal
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`McCloy, the sole survivor of the widely reported Sago Mine explosion disaster in West
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`Virginia, who was suffering from multiple organ failure and brain damage. According to
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`an article in Newsday on April 11, 2006, “McCloy’s neurosurgeon at the West Virginia
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`University School of Medicine and head trauma center was up to speed on the latest
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`benefits of the “miracle molecule” Omega-3 fatty acids when he phoned Barry Sears of
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`Zone Diet fame to ask about a recommended dose for the very ill miner.” The article
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`continues “I’ve read everything Sears has written … and he convinced me that DHA
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`could play a role in Mr. McCloy’s recovery.” “He sent me his product, which was the
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`main source in his [McCloy’s] treatments.”
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`28.
`
`Plaintiff has an active presence on the Internet. Dr. Sears maintains
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`ZONE and ZONE DIET branded websites located at various Internet addresses, including
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`<zonediet.com>, which was registered in April 1998 and has been publically accessible
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`since at least as early as March 2000. Dr. Sears offers and continually offered since
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`6
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`March 2000 a wide variety of goods and services though such websites. For example,
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`Dr. Sears sells his ZONE branded bakery products, pasta, breads, cookies, granola,
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`nutrition bars and shakes, vitamins, supplements, breakfast cereal, skin care products, fish
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`oil, and printed publications through ZONE branded websites located at the Internet
`
`address <zonediet.com> and others.
`
`29.
`
`Plaintiff’s ZONE branded websites operate 24 hours a day and permit
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`consumers to order and learn about Dr. Sears’ various ZONE branded products and
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`services, obtain diet, health and nutrition information, subscribe to and receive on-line
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`diet, health and nutrition counseling services and e-mail newsletters, participate in
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`message boards and chat rooms. Dr. Sears also uses his websites to communicate special
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`events and promotions to his customers and provide customer service information.
`
`30.
`
`The Internet has become an extremely important communication and
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`marketing tool and revenue source for Plaintiff.
`
`31.
`
`Plaintiff owns the following United States Trademark Registrations:
`
`
`
`ZONE
`
`Mark
`
`Reg. No.
`
`2,689,749
`
`3,059,308
`
`
`
`Goods/Services
`
`Publications, namely a series of books
`in the field of diet and nutrition
`
`Providing on-line magazines,
`newsletters, bulletins, in the fields of
`diet, health and nutrition; providing
`online newsletters in the fields of diet,
`health and nutrition by e-mail
`
`Computer services, namely, providing
`counseling services, information, and
`educational information in the fields
`of health and nutrition via the
`Internet; counseling services in the
`
`
`
`7
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`

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`Mark
`
`Reg. No.
`
`ZONE FAST
`
`3,128,070
`
`DR. SEARS ZONE
`
`3,171,421
`
`Goods/Services
`
`field of diet, health and nutrition;
`providing information in the fields of
`diet, health, and nutrition via e-mail
`Educational services, namely,
`conducting workshops, seminars and
`classes in the field of diet, health and
`nutrition and distributing course
`materials in connection therewith;
`providing educational information in
`the fields of health and nutrition
`Breakfast cereals
`
`3,171,422
`
`Breakfast cereals
`
`ZONE LABS
`
`
`
`DR. SEARS ZONEDIET.COM
`
`DR. SEARS ZONE
`
`DR. SEARS ZONE LABS
`
`
`
`3,066,468
`
`3,074,328
`
`3,254,087
`
`3,176,214
`
`Non-medicated skin care preparations
`and cosmetics
`
`Providing online magazines and
`newsletters in the fields of diet,
`health, and nutrition; providing online
`newsletters in the fields of diet, health
`and nutrition by e-mail
`Retail store, catalog and mail order
`services featuring vitamins and
`nutritional supplements, nutritional
`food bars, health foods, and
`publications in the fields of diet,
`health and nutrition
`On-line retail store and mail order
`services featuring vitamins and
`nutritional supplements, nutritional
`food bars, health foods, edible oils
`and fats, non-medicated skin care
`preparations and cosmetics, and
`printed publications in the fields of
`diet, health and nutrition
`3,161,339 Retail store, catalog ordering and mail
`order services featuring vitamins and
`nutritional supplements, nutritional
`food bars, health foods, computer
`software and publications in the fields
`of diet, health and nutrition
`
`
`
`8
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`Mark
`
`ZONE LABS
`
`Reg. No.
`
`3,080,411
`
`er
`
`Goods/Services
`
`On-line retail store, and mail ord
`services featuring vitamins and
`nutritional supplements, nutritional
`food bars, health foods, edible oils
`
`and fats, non-medicated skin care
`
`preparations and cosmetics, and
`printed publications in the
` fields of
`diet, health and nutrition.
`
`
`32.
`
`The above-listed Registrations (collectively the “ZONE Registered
`
`Marks”) remain active, valid, and in full force and effect.
`
`33.
`
`Registration No. 2,689,749 has become incontestable under Section 15 of
`
`the Lanham Act, 15 U.S.C. § 1065.
`
`34.
`
`In accordance with Sections 7(b), 22 and 33(a) of the Lanham Trademark
`
`Act, the above-referenced registrations constitute prima facie evidence of the validity of
`
`the ZONE Registered Marks and of the registrations themselves, Plaintiff’s ownership of
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`the ZONE Registered Marks, and Plaintiff’s exclusive right to use the marks in
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`commerce in connection with the goods and services named therein, without condition or
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`limitation.
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`35.
`
`Said registrations constitute notice to Defendants of Plaintiff’s claim of
`
`ownership of the marks shown within such registrations.
`
`36.
`
`In addition, Dr. Sears owns the following unregistered trademarks (the
`
`“ZONE Unregistered Marks”):
`
`Mark
`
`ZONE
`
`Date of First
`Use
`
`1998
`
`ZONE DIET
`
`1998
`
`
`
`oods/Services
`
`G
`
`
`Education and counseling services in
`nd nutrition,
`the fields of diet, health a
`meal planning services.
`Education and counseling services in
`
`
`
`9
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`ZONE CRUISE
`
`1998
`
`ZONE
`
`11/2003
`
`ZONE
`
`ZONE
`
`1995
`
`5/21/2004
`
`ZONE LABS
`
`11/2003
`
`the fields of diet, health and nutrition,
`meal planning services.
`Education and counseling services in
`nd nutrition,
`the fields of diet, health a
`meal planning services.
`
`, Vitamins, nutritional supplements
`
` nutritional food bars for use as a
`nutritional supplement or meal
`replacement; prepared entrees
`consisting primarily of meat, fish,
`poultry or vegetables, edible oils an
`d
`fats, nutritional food bars, namely
`protein
` based nutrient dense meal snack
`bars.
`Printed materials namely, a series of
`e field of diet, health and
`books in th
`nutrition.
`Educational services, namely
`conducting workshops, seminars and
`classes in the fields of diet, health and
`,
`nutrition, providing on-line magazines
`newsletters, bulletins, in the fields of
`diet health and nutrition and providing
` of diet,
`on-line newsletters in the fields
`health and nutrition by e-mail;
`
`providing information in the fields of
`diet, health and nutrition via e-mail.
`Non-medicated skin care preparation
`and cosmetics; vitamins, nutritional
`supplements and nutritional food bars.
`
`s
`
`
`
`37.
`
`Dr. Sears’ ZONE Registered Marks and ZONE Unregistered Marks
`
`(collectively the “ZONE Marks”) have been extensively advertised and promoted
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`together in connection with Dr. Sears’ goods and services in such a manner as to establish
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`the ZONE Marks as a family of marks, with “ZONE” being the family surname (the
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`“ZONE Family of Marks”).
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`38.
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`Through his efforts over the past fifteen (15) plus years, Dr. Sears has
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`established a strong customer base and is known throughout his trading area as a provider
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`of quality goods and services in the fields of diet, health and nutrition. By virtue of the
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`quality of his products and services, and as a result of his expenditure of considerable
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`sums of money on advertising and promotional activity, Dr. Sears has built up valuable
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`goodwill in the ZONE Marks and the ZONE Family of Marks. Such marks are of
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`immeasurable value to Dr. Sears.
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`B.
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`Defendants’ Infringing Use of ZONE
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`39.
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`Upon information and belief, in or around January 2005, a date well after
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`Plaintiff acquired rights in his ZONE Marks, Defendants began using the names and
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`marks ZONE CULINAIRE and ZONE MANHATTAN, the Internet domain names
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`<zonemanhattan.com>, <zonelongisland.com>, <zonewestchester.com>,
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`<zonehamptons.com>, <zonedietwestchester.com> and <zonedietmanhattan.com>, the
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`telephone number 1-866-961-ZONE, and other uses of ZONE (hereinafter collectively
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`“Defendants’ Infringing ZONE Names and Marks”) in connection with Defendants’
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`prepared meals and meal delivery services for dieters following the protocols taught by
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`Dr. Sears which are marketed by Dr. Sears under the ZONE Marks.
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`40.
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`Upon information and belief, many of the ZONE Marks have been used
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`by Plaintiff since a date prior to any date upon which Defendants may rely.
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`41.
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`Defendants’ first use of their Infringing ZONE Names and Marks was
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`long after Plaintiff’s date of first use of many of his ZONE Marks, including, but not
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`limited to, his first use of ZONE in 1995.
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`42.
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`Defendants’ Infringing ZONE Names and Marks are virtually identical in
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`sound and appearance to and create the same commercial impression as Plaintiff’s ZONE
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`Marks and his ZONE Family of Marks.
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`43.
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`ZONE is the dominant feature of Plaintiff’s ZONE Marks and of his
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`ZONE Family of Marks as well as of Defendants’ Infringing ZONE Names and Marks.
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`44.
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`Defendants’ use of the term “ZONE” in their Infringing ZONE Names and
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`Marks is intended to have the same arbitrary meaning as in Plaintiff’s ZONE Marks and
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`in his ZONE Family of Marks, namely, as a reference to Dr. Sears’ criteria for an insulin
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`and hormonal balanced diet.
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`45.
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`Defendants’ prepared meals and meal delivery services are directed to
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`individuals concerned about health, diet and nutrition and purport to be compliant with
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`Dr. Sears’ principals. (Attached as Exhibit 1 are true copies of printouts from
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`Defendants’ website.)
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`46.
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`Defendants’ <zonemanhattan.com> website further reinforces the
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`connection between Defendants’ meal service and Plaintiff’s goods and services by
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`referring to Plaintiff’s plan, stating: “Your local choice for zone friendly meals” and “Not
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`only do we set the culinary standard's for zone friendly meals, we set the standard's for
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`culinary excellence” and “We offer you 3 market fresh meals and 2 zone friendly
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`oriented snacks a day… .” (Exhibit 1.)
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`47.
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`Defendants provide several dietary tips on the <zonemanhattan.com>
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`website which are modeled after tips that Dr. Sears offers in his own ZONE branded
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`publications.
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`48.
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`Defendants’ ZONE branded meal delivery services reference “the
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`Glycemic Index” in connection with differentiating good and bad carbohydrates, which
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`represents a further attempt by Defendants to associate their goods and services with Dr.
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`Sears. (Exhibit 1). Dr. Sears’ ZONE branded products and services pay special attention
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`to the glycemic index of foods which is a way to measure how quickly a food becomes
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`sugar in the blood, which affects insulin levels and weight loss. Dr Sears’ ZONE
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`branded goods and services focus on strictly limiting high glycemic foods, and replacing
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`them with more nutrient-rich and lower glycemic choices. (Attached as Exhibit 2 are true
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`copies of printouts from Plaintiff’s website.)
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`49.
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`Defendants’ prepared meals are advertised as containing “a balance of,
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`40% Carbohydrates, 30% Protein and 30% favorable fats” (Exhibit 1), which is the
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`nutritional ratio advocated by Dr. Sears.
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`50.
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`The Defendants’ prepared meals and meal delivery services and Plaintiff’s
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`ZONE branded health and nutrition goods and services, including Dr. Sears ZONE
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`branded prepared foods and meal replacement bars and shakes, are highly related, if not
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`identical.
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`51.
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`The Defendants’ ZONE MANHATTAN branded services and the
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`Plaintiff’s ZONE branded goods and services, including goods and services branded with
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`the ZONE Family of Marks, or branded with the ZONE Marks are directed to the same
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`customers.
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`52.
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`Consumers are likely to believe that Defendants’ prepared meals and meal
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`delivery services, come from or are sponsored or endorsed by the Plaintiff.
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`53.
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`Consumers are likely to expect that Defendants’ prepared meals and meal
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`delivery services are of the same quality as Plaintiff’s ZONE branded goods and services.
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`54.
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`Upon information and belief, Defendants adopted and are using their
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`Infringing ZONE Names and Marks with actual knowledge of Plaintiff’s prior rights in
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`and to the ZONE Marks for goods and services highly related to those of Defendants.
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`55.
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`Upon information and belief, Defendants willfully copied Dr. Sears’
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`ZONE Marks and his ZONE Family of Marks in a deliberate attempt to associate their
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`goods and services with Plaintiff, Plaintiff’s goods and services, and to benefit from the
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`tremendous goodwill in Plaintiff’s ZONE Marks and his ZONE Family of Marks.
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`C.
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`The Effect of Defendants’ Unauthorized Use Of Plaintiff’s Mark
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`56.
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`Defendants’ use of their Infringing ZONE Names and Marks is likely to
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`cause confusion, mistake or deception of purchasers as to the source of the goods and
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`services offered in connection with such names and marks.
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`57.
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`Upon seeing Defendants’ Infringing ZONE Names and Marks, consumers
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`are likely to believe that Defendants’ <zonemanhattan.com>, <zonewestchester.com>,
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`<zonelongisland.com>, <zonehamptons.com>, <zonedietwestchester.com> and
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`<zonedietmanhattan.com> websites and Defendants’ ZONE branded prepared meals and
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`meal delivery services, are related to, affiliated with, or licensed by Plaintiff.
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`58.
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`Dr. Sears is suffering irreparable damage to his goodwill and reputation
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`where, as here, Defendants distribute products held out to be compliant with Dr. Sears’
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`ZONE branded nutrition program over which Dr. Sears exercises no control. Dr. Sears’
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`ZONE branded food products go through vigorous testing to ensure compliance with his
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`nutrition principals.
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`59.
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`Dr. Sears does not control the quality of Defendants’ prepared meals or
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`meal delivery services to ensure that such products comply with his principles nor the
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`goodwill associated with the ZONE brand and the ZONE Family of Marks. Additionally,
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`Dr. Sears does not control the preparation of Defendants’ foods products to ensure that
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`such products are prepared, stored and distributed in a sanitary and safe manner.
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`60.
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`Plaintiff has sustained and will continue to sustain damage as a result of
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`Defendants’ wrongful conduct and Defendants’ unauthorized use of the Infringing ZONE
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`Names and Marks.
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`61.
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`As a direct and proximate result of the acts of Defendants alleged above,
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`Plaintiff has already suffered irreparable damage and has sustained lost profits. Plaintiff
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`has no adequate remedy at law to address all of the injuries that Defendants have caused
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`and intends to cause by their conduct. Plaintiff will continue to suffer irreparable damage
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`and sustain lost profits unless Defendants’ actions alleged above are enjoined by this
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`Court.
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`FIRST CLAIM FOR RELIEF
`FEDERAL TRADEMARK INFRINGEMENT
`15 U.S.C. § 1114(1)
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`62.
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`Plaintiff restates and incorporates by reference the allegations contained in
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`paragraphs 1 through 61 as if fully stated herein.
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`63.
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`Plaintiff is the owner of the ZONE Registered Marks, which he uses in
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`connection with goods and services related to food, nutrition, and health, including but
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`not limited to, with the sale of prepared foods.
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`64.
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`By virtue of Plaintiff’s extensive advertising, promotion, and sales of his
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`goods and services, the ZONE Registered Marks are strong and well known.
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`65.
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`Defendants’ Infringing ZONE Names and Marks are virtually identical in
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`appearance and sound, and create the same commercial impression as Plaintiff’s ZONE
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`Registered Marks.
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`66.
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`Defendants use their Infringing ZONE Names and Marks in interstate
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`commerce in connection with prepared meals and meal delivery services, goods and
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`services that are closely related to the goods and services with which Plaintiff uses his
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`ZONE Registered Marks.
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`67.
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`Defendants advertise their goods and services to the same consumers and
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`sell their goods and services through the same channels of trade as Plaintiff.
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`68.
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`Plaintiff’s rights in most of the ZONE Registered Marks pre-dates
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`Defendants’ first use of any of their Infringing ZONE Names and Marks.
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`69. When confronted with Defendants’ services offered under Defendants’
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`Infringing ZONE Names and Marks, consumers are likely to mistakenly believe that
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`Defendants’ prepared foods and meal delivery services are related to, affiliated with,
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`licensed by, or sponsored by Plaintiff.
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`70.
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`Plaintiff has no control over the quality of the goods or services that
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`Defendants provide under Defendants’ Infringing ZONE Names and Marks. As a
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`consequence, the favorable goodwill that Plai