`ESTTA479522
`ESTTA Tracking number:
`06/21/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055393
`Defendant
`Able Planet, Inc.
`CLAYTON C JAMES
`HOGAN LOVELLS US LLP
`1200 17TH STREET, SUITE 1500
`DENVER, CO 80202
`UNITED STATES
`clay.james@hoganlovells.com, lucky.vidmar@hoganlovells.com
`Reply in Support of Motion
`Clayton C. James
`clay.james@hoganlovells.com, lucky.vidmar@hoganlovells.com
`/Clayton C. James/
`06/21/2012
`20120621 Reply in support of the motion to consolidate.pdf ( 65 pages )(903484
`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
`
`BOSE CORPORATION,
`
`Petitioner,
`
`v.
`
`ABLE PLANET, INCORPORATED,
`
`Registrant.
`
`Cancellation No: 92055393
`Registration No: 3655934
`
`ABLE PLANET’S REPLY IN SUPPORT OF ITS MOTION TO SUSPEND
`PROCEEDINGS
`
`Bose candidly admits that the Board typically suspends proceedings where, as here, a
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`civil action is pending which may have a bearing on the case. 37 C.F.R. § 2.117. Lacking any
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`real arguments for why these proceedings should not be suspended pending the outcome of the
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`Colorado Action, Bose invents the specter of delay on the part of Able Planet. Unfortunately for
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`Bose, the facts do not support Bose’s scare tactics.
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`As an initial matter, in the Colorado Action it was Bose, not Able Planet, who sought to
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`delay discovery, proposing a period of over one year from the filing of the action until the
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`dispositive motion deadline, as shown in the original proposed scheduling order (Docket 21 of
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`the Colorado Action, filed on June 1, 2012), attached hereto as Exhibit R-1. Contrary to Bose’s
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`aspersions in its Opposition, Able Planet’s proposed schedule was significantly shorter than that
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`proposed by Bose.
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`In any event, the Magistrate Judge in the Colorado Action refused the
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`proposed scheduling order and ordered the parties to confer again and attempt to agree on a
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`\\DE - 039239/000002 - 530971 v1
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`
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`shorter case schedule. Thereafter, Bose and Able Planet did agree on a case schedule in the
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`Colorado Action that was slightly shorter than Able Planet originally proposed, and five months
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`shorter than the schedule Bose originally requested.
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`(Exhibit R-2 hereto, Docket 25 in the
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`Colorado Action, filed on June 21, 2012). Under the agreed upon schedule, the discovery cutoff
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`in the Colorado Action is November 30, 2012, and dispositive motions are due on December 21,
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`2012. As such, the schedule in the Colorado Action is significantly more aggressive than the
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`schedule governing these cancellation proceedings, where discovery closes on December 24,
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`2012, and the pretrial disclosure periods do not end until July 7, 2013. In fact, Able Planet has
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`already served its initial set of discovery in the Colorado Action on June 19, 2012, (Exhibit R-3
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`hereto), while the discovery period in these cancellation proceedings does not begin until June
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`27, 2012.
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`Thus, Bose’s complaint that Able Planet’s motion to suspend is a “delay tactic” rings
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`hollow.
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`In fact, the cases cited by Bose on this issue illustrate the strained nature of its
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`argument. In Jodi Kristopher Inc. v. International Seaway Trading Corp., 91 U.S.P.Q.2d 1957
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`(T.T.A.B. 2009), it was the petitioner who sought a suspension, and did so on the last day of its
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`own testimony period. In denying the motion, the Board noted that the “petitioner failed to take
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`testimony or submit evidence during its original or second testimony period and has offered no
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`explanation in its motion for its failure to do so.” Id. at 1959. As such, Jodi Kristopher has
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`nothing in common with the facts of the present case, where the civil action and the current
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`proceedings were initiated essentially at the same time, where both cases are in essentially the
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`same procedural posture, and where, as shown above, the district court action is on a schedule
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`that is ahead of the present proceedings, with discovery already under way.
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`2
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`
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`Similarly, Bose’s reliance on Union Carbide Corporation v. W. R. Grace & Co., 213
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`U.S.P.Q. 400 (T.T.A.B. 1982) is curious at best.
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`In Union Carbide, the Board suspended the
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`cancellation proceedings pending the outcome of a civil action pursuant to Trademark Rule
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`2.117. Then, after the end of trial in the civil action, the district court ordered that the
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`proceedings be resumed so that the evidence might be considered by the Board. Therefore,
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`Union Carbide does not help Bose. If anything, it underscores the fact that a suspension of these
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`proceedings is appropriate, even accepting Bose’s unfounded speculations that the court in the
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`Colorado Action may, at some undetermined point in the future, allow these proceedings to
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`resume.
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`As discussed in Able Planet’s Motion to Suspend, all of the reasons underlying the
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`Board’s policy of suspending proceedings pending resolution of related district court actions are
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`present in this case. As Bose’s Opposition makes clear, the parties are engaged in a commercial
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`dispute that dates back to 2007 and is much broader than just the trademark issues involved in
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`these cancellation proceedings. As such, Bose’s preferred approach of running the proceedings
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`simultaneously virtually guarantees piecemeal consideration of the issues, duplicative discovery
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`and motions and practice, and potentially conflicting outcomes.
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`Therefore, the Board should suspend these proceedings pursuant to Trademark Rule
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`2.117.
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`3
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`
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`Respectfully submitted on June 21, 2012.
`
`HOGAN LOVELLS US LLP
`
`s/Clayton C. James/ ________________
`Clayton C. James
`Srecko “Lucky” Vidmar
`One Tabor Center, Suite 1500
`1200 Seventeenth Street
`Denver, CO 80202
`Phone +1 303 899 7300
`Fax +1 303 899 7333
`Email: clay.james@hoganlovells.com
`Email: lucky.vidmar@hoganlovells.com
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`Attorneys for Registrant Able Planet, Incorporated.
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`4
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on June 21, 2012, I electronically filed a true and correct
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`copy of the foregoing ABLE PLANET’S REPLY IN SUPPORT OF ITS MOTION TO
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`SUSPEND PROCEEDNIGS with the U.S. Patent and Trademark Office via the ESTTA
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`system, and also served it by first class mail, postage prepaid, as follows:
`
`Michelle Brownlee
`Trademark Counsel
`Bose Corporation
`The Mountain, MS 40
`Framingham, MA 01701
`
`By:
`
`s/Lucky Vidmar/
`Lucky Vidmar
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`5
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`ABLE PLANET’S REPLY IN SUPPORT OF ITS MOTION TO SUSPEND
`PROCEEDINGS
`
`Exhibit R-1
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`
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 1 of 19
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`Civil Action No. 1:12-cv-00894-CMA-CBS
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`ABLE PLANET, INCORPORATED,
`
`Plaintiff,
`
`v.
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`BOSE CORPORATION,
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`Defendant.
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`[PROPOSED] SCHEDULING ORDER
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`1. DATE OF CONFERENCE
`AND APPEARANCES OF COUNSEL AND PRO SE PARTIES
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`The scheduling conference was held on June 6, 2012 at 10 a.m. Clayton C. James and
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`Srecko “Lucky” Vidmar of Hogan Lovells US LLP appeared on behalf of Plaintiff Able Planet,
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`Incorporated (“Able Planet”). Gayle Strong of Greenberg Traurig appeared in person, and, by
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`permission of the Court, John J. Regan and Karen Stringer of WilmerHale appeared
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`telephonically on behalf of Defendant Bose Corporation (“Bose”).
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`2. STATEMENT OF JURISDICTION
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`This Court has original jurisdiction over the federal Lanham Act claims pursuant to
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`15 U.S.C. § 1121(a), 28 U.S.C. § 1338(a), and 28 U.S.C. § 1338(b). This Court has
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`supplemental jurisdiction over the Colorado state law claims under 28 U.S.C. § 1367, because
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`those claims are so related to the claims brought under the Lanham Act that they form a part of
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`the same case or controversy.
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`
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 2 of 19
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`3. STATEMENT OF CLAIMS AND DEFENSES
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`PLAINTIFF:
`a.
`Able Planet’s Claims: This lawsuit is intended to stop Bose’s unlawful infringement of
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`Able Planet’s trademark and to recover damages for that unlawful infringement. Able Planet
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`seeks injunctive and monetary relief for the acts by Bose that constitute trademark infringement
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`and unfair competition under the Lanham Act, and for trademark infringement and unfair
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`competition under the common law of Colorado.
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`Able Planet designs, manufactures, markets, and sells personal electronics, including
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`personal sound amplification systems, audiology products, earphones and headphones. Able
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`Planet uses an innovative technology to filter undesirable sound, enhance sound quality and
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`speech clarity, restrict electromagnetic interference, reduce distortion, and increase perceived
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`loudness without increasing volume. Able Planet owns the HEAR THE DIFFERENCE
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`trademark, which is registered with the United States Patent and Trademark as U.S. Reg. No.
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`3,655,934, issued July 14, 2009. Able Planet’s trademark is valid and in full force and effect.
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`Able Planet also owns all common law rights in and to the mark HEAR THE DIFFERENCE for
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`use in connection with Able Planet’s products.
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`Able Planet first used the HEAR THE DIFFERENCE mark in commerce at least as early
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`as October 10, 2005, and has continued using it through the present. Able Planet has developed
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`substantial goodwill and consumer recognition in the HEAR THE DIFFERENCE mark and the
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`products sold thereunder, including through widespread electronic and print advertising, product
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`packaging, and displays in national retail stores. Since 2005, Able Planet’s widespread use,
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`marketing, and offering of products under the HEAR THE DIFFERENCE mark has resulted in
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`2
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 3 of 19
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`the HEAR THE DIFFERENCE mark becoming a source identifier distinctly associated with
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`Able Planet’s quality business reputation. At all times relevant to this Complaint, Able Planet
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`has extensively promoted the HEAR THE DIFFERENCE mark and has developed significant
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`goodwill and a quality business reputation in the marketplace as a source identifier with the
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`consuming public. As such, the HEAR THE DIFFERENCE mark is among Able Planet’s most
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`valuable assets.
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`As of at least July 11, 2007, Bose had actual knowledge of the HEAR THE
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`DIFFERENCE mark. During the 2011 holiday season, Bose marketed and sold its products
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`under the slogan HEAR THE DIFFERENCE in several of Able Planet’s largest retailers. This
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`damaged Able Planets goodwill, quality business reputation, and profits. Furthermore, Bose’s
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`use of an identical mark to Able Planet’s mark on similar products in Able Planet’s largest retail
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`outlets creates a likelihood of causing consumer confusion. Bose has used and continues to use
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`Able Planet’s trademark to benefit from Able Planet’s reputation and goodwill as a provider of
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`high-performing audio and communication devices sold in large and prominent nationwide
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`retailers, including Costco and Brookstone, among others.
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`Bose’s Counterclaims: Along with its Answer, Bose has asserted counterclaims for (i)
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`cancellation of the HEAR THE DIFFERENCE trademark; (ii) declaratory judgment of non-
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`infringement of the HEAR THE DIFFERENCE trademark; (iii) claim for supposed damages to
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`Bose as a result of the registration of the HEAR THE DIFFERENCE trademark; and (iv) unfair
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`competition claims based on Bose’s supposed earlier use of the phrase “hear the difference.”
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`None of these counterclaims has merit.
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`3
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 4 of 19
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`First, Bose’s cancellation claim are baseless because, even if everything Bose alleges is
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`true (and Able Planet disputes that it is), the only remedy available to Bose is a limitation on the
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`scope of goods for the HEAR THE DIFFERENCE registration, not its cancellation. Second,
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`Bose cannot show any damages suffered as a result of the registration of the HEAR THE
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`DIFFERENCE mark. Third, Bose’s argument that it cannot infringe the HEAR THE
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`DIFFERENCE mark because it is merely descriptive flies in the face of Bose’s numerous efforts
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`to assert rights in that very mark against Able Planet. For this very reason, Bose’s unfair
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`competition claims are as puzzling as there are baseless. In all of the settlement discussions
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`between the parties, Bose has never presented any evidence of its use of the phrase “hear the
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`difference” in the trademark sense, i.e., use as a source identifier.
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`Related Case/Consolidation: This case should be consolidated with the Civil Action
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`No. 1:11-cv-1435 filed by Bose against Able Planet in this District and alleging, inter alia,
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`infringement of certain Bose patents by Able Patent (“Bose Patent Action”). On May 14, 2012,
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`Able Planet filed a motion in the Bose Patent Action to consolidate the two actions. Bose has
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`indicated that it opposes consolidation. Bose’s deadline to oppose Able Planet’s Motion for
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`Consolidation is June 4, 2012. The agreements and schedules proposed herein are without
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`prejudice to Able Planet’s pending motion.
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`DEFENDANT:
`b.
`Background: Bose is engaged in the manufacture and sale of consumer audio products,
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`such as sound systems for use in homes and automobiles, portable sound systems and
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`headphones. Bose has used the descriptive phrase “Hear the Difference,” which is at issue in this
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`Litigation, in its advertising and marketing materials since at least as early as 1995. Indeed, as
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`4
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 5 of 19
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`early as June 2007, Bose put Able Planet on notice that it appeared that Able Planet was
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`attempting to create consumer confusion by using Bose’s trade dress and slogan Hear the
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`Difference.
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`Nevertheless, Defendant Able Planet Incorporated (“Able Planet”) filed this lawsuit only
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`after settlement discussions broke down in a separate and unrelated case, brought by Bose
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`against Able Planet and alleging, among other things, patent infringement arising under the
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`patent laws (Title 35 of the United States Code), trade dress infringement and dilution under
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`Section 43(a) and (c) of the Lanham Act (15 U.S.C. § 1125(a) and (c)), and unfair competition
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`under Colorado common law. That case, which Bose commenced on or about June 1, 2011, is
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`now pending and well-advanced before Judge Krieger in this District.
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`At the heart of that case are Bose’s allegations that defendant Able Planet has and
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`continues to infringe two of Bose’s design patents and Bose’s Trade Dress (as defined in the
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`Complaint) by making, using, selling and offering for sale certain noise cancelling headphones
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`that use Bose’s patented designs and Trade Dress. Bose also alleges that Able Planet infringed
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`in the past one of its utility patents, which has since expired, by making, importing, using, selling
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`and offering certain noise cancelling headphones that use Bose’s active noise cancellation
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`technology. Bose also alleges that Able Planet has diluted Bose’s Trade Dress and engaged in
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`unfair competition in violation of Colorado common law by, among other things, distributing,
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`offering for sale, and selling certain noise cancelling headphones, which use Bose’s Trade Dress
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`and patented designs in United States commerce.
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`These two cases do not present the same legal or factual issues – indeed, in simple terms,
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`the case pending before Judge Krieger deals with Bose’s intellectual property (utility and design
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`5
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 6 of 19
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`patents and trade dress), and this case deals with Able Planet’s different type of intellectual
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`property (an alleged trademark).
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`It was only when settlement discussions in the patent/trade
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`dress case broke down, that Able Planet threatened to bring suit for alleged infringement of its
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`trademark.
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`After reviewing Able Planet’s alleged “Hear the Difference” mark and its prosecution
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`history, Bose filed a petition to cancel the alleged mark on March 23, 2012, and amended the
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`petition on May 22, 2012. The grounds for cancellation in Amended Petition to Cancel include:
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`(1) the Application and Resulting Registration is Void; (2) Fraud on the United States Patent and
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`Trademark Office (“USPTO”); (3) the phrase “Hear the Difference” is merely descriptive; and
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`(4) the phrase “Hear the Difference” is confusingly similar to the phrase “Hear the Difference”
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`used by Bose since at least 1995.
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`Able Planet then followed through with its threat and commenced this action on April 5,
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`2012.
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`Able Planet’s Allegations and Bose’s Counterclaims: Able Planet has failed to state a
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`claim against Bose.
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`It has no valid or enforceable trademark rights in the merely descriptive
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`phrase “Hear the Difference,” since its registration is void and was fraudulently procured.
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`Accordingly, Bose seeks a declaratory judgment of non-infringement, and seeks to cancel Able
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`Planet’s alleged mark.
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`In its counterclaims, Bose alleges that Able Planet’s mark is void ab
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`initio because of a substantive error in the trademark application, and because neither the original
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`applicant, who was an officer of Able Planet at the time, nor Able Planet itself, had a bona fide
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`intent to use the alleged mark in commerce on some or all of the goods identified in the
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`application.
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`6
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 7 of 19
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`Indeed, as set forth in Bose’s counterclaims, Able Planet filed a Statement of Use
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`representing that it had used the alleged mark “Hear the Difference” on, and in connection with,
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`a vast number and variety of products. Based upon Bose’s reasonable investigation, and on
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`information likely to be discovered during discovery, Able Planet was not selling, let alone
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`using, the words “Hear the Difference” as a trademark in connection with each of the many
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`different goods included in its Statement of Use. Such goods include, but are not limited to:
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`interactive computer games software, security systems, karaoke machines, global positioning
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`system (GPS), portable wireless communication apparatus, and cameras. Bose seeks to cancel
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`Able Planet’s alleged mark for these reasons.
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`Alternatively, should this Court determine that the phrase “Hear the Difference” is
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`inherently distinctive, and that any trademark significance is attached to this phrase, Bose has
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`prior rights in the phrase because Bose has been using this phrase in commerce before Able
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`Planet existed and ever used “Hear
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`the Difference.” Accordingly, Bose has asserted
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`counterclaims under the Lanham Act for False Designation of Origin, False Advertising and
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`Unfair Competition, as well as a claim under Colorado law for common law unfair competition.
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`Motion to Consolidate: Able Planet could have attempted to file a counterclaim for
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`trademark infringement in the matter pending before Judge Krieger, but it chose not to. Instead,
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`almost a year later, Able Planet now seeks to consolidate these distinct cases. The cases involve
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`quite different intellectual property, each of which confers different substantive rights, has a
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`different history, and gives rise to different damages claims. Bose plans to file an opposition to
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`Able Planet’s motion to consolidate.
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`7
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 8 of 19
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`4. UNDISPUTED FACTS
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`The following facts are undisputed:
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`a.
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`Able Planet registered a trademark HEAR THE DIFFERENCE®, which was
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`issued on July 14, 2009 as U.S. Reg. No. 3,655,934.
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`b.
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`Bose has been aware since on or about July 11, 2007 that Able Planet claimed
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`ownership of Application Serial No. 78/699,988 for the HEAR THE DIFFERENCE mark.
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`c.
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`Bose has provided merchandising displays to Costco to be used in Costco stores
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`during the 2011 holiday season that included the words “Hear the Difference Bose® Headphones
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`make.”
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`d.
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`On or about August 24, 2005, Anne Foster (“Foster”) applied for a registration of
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`the mark “Hear the Difference,” which was assigned serial number 78/699,980 (the ‘980
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`Application”) by the USPTO.
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`e.
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`Foster assigned the ‘980 Application, approximately nine months later, to a
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`corporate entity, Able Planet, Incorporated.
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`f.
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`On or about February 19, 2008, the USPTO issued a Notice of Allowance, and on
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`or about November 21, 2008, Able Planet filed a Statement of Use.
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`g.
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`Able Planet made the following statement with respect to the Class of Goods in its
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`application: “The applicant, or the applicant's related company or licensee, is using the mark in
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`commerce on or in connection with all goods and/or services listed in the application or Notice
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`of Allowance or as subsequently modified. The mark was first used by the applicant, or the
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`applicant's related company, licensee, or predecessor in interest at least as early as 10/07/2005,
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`and first used in commerce at least as early as 10/07/2005, and is now in use in such commerce.”
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`8
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 9 of 19
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`h.
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`The Statement of Use included the following declaration: “Applicant is the owner
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`of the mark sought to be registered, and is using the mark in commerce on or in connection with
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`the goods/services identified above, as evidenced by the attached specimen(s) showing the mark
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`as used in commerce.”
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`i.
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`The Declaration further stated as follows: “The undersigned being hereby warned
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`that willful false statements and the like are punishable by fine or imprisonment, or both, under
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`18 U.S.C. Section 1001, and that such willful false statements and the like may jeopardize the
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`validity of this document, declares that he/she is properly authorized to execute this document on
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`behalf of the Owner; and all statements made of his/her own knowledge are true and that all
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`statements made on information and belief are believed to be true.”
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`5. COMPUTATION OF DAMAGES
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`Plaintiff’s Statement:
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`Able Planet seeks injunctive relief and damages for Bose’s unlawful actions, which
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`constitute trademark infringement in violation of Lanham Act § 32, unfair competition in
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`violation of the Lanham Act § 43, common law trademark infringement, and common law unfair
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`competition. Bose’s use of the slogan HEAR THE DIFFERENCE constitutes willful and
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`intentional infringement of Able Planet’s HEAR THE DIFFERENCE® mark and Able Planet’s
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`Common Law Mark because Bose chose to market and sell its products under the slogan HEAR
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`THE DIFFERENCE during the 2011 holiday season even though it had actual knowledge of the
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`HEAR THE DIFFERENCE mark by no later than July of 2007. As such, Able Planet seeks an
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`award of compensatory and treble damages, pre- and post-judgment interest, costs, and
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`attorneys’ fees against Bose as a result of the conduct complaint of in the Complaint.
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`9
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 10 of 19
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`Specifically, Able Planet seeks all of Bose’s profits earned under the HEAR THE DIFFERENCE
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`designation, all of Able Planet’s lost profits, and treble actual damages. Able Planet asks the
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`Court to require that an accounting be had and enter judgment against Bose for all profits, gains,
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`and advantages received or realized by Bose since commencement of its use of HEAR THE
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`DIFFERENCE and for all damages sustained by Able Planet resulting from Bose’s infringing
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`and unlawful activities. Able Planet also seeks interest on the damages, as well as its costs and
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`reasonable attorneys’ fees. The precise amounts of these damages are not determinable until the
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`completion of discovery in this action.
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`Additionally, Able Planet seeks a preliminary and/or permanent injunction restraining
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`and enjoining Bose from using, displaying, or advertising with the slogan HEAR THE
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`DIFFERENCE or designation similar to the HEAR THE DIFFERENCE mark. Able Planet
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`seeks such further injunctive and corrective action as set forth in the Complaint.
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`Defendant’s Statement:
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`Bose requests full relief for Able Planet’s willful attempt to mislead the USPTO by the
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`material, false and fraudulent misrepresentations that Able Planet made during the registration of
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`its alleged mark “Hear the Difference.” In addition to an award for damages, Bose seeks
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`attorneys’ fees, experts’ fees, costs and expenses pursuant to: (1) 15 U.S.C. § 1120, as a result of
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`Able Planet’s false and fraudulently procured Trademark Registration; (2) 15 U.S.C. § 1117, due
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`to the exceptional nature of this case; and (3) as a result of having to defend this action in light of
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`Able Planet’s fraudulent conduct in procuring U.S. Trademark Reg. No. 3,655,934.
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`Bose also seeks a declaration that its use of the descriptive phrase “Hear the Difference”
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`does not violate Sections 32 and 42 of the Lanham Act or common law.
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`10
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 11 of 19
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`Alternatively, if the phrase “Hear the Difference” is found to be inherently distinctive,
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`and if any trademark significance is attached to this phrase, Bose seeks damages, including,
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`without limitation, damages to be doubled or tripled for willful infringement, lost profits and an
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`order enjoining Able Planet its officers, directors, employees, agents, licensees, successors, and
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`assigns, and all persons in concert with them, from using, including without limitation on
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`displays and in marketing and advertising materials, the phrase “Hear the Difference” or any
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`designation in commerce similar to the phrase Hear the Difference. Bose also seeks such further
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`injunctive and corrective action as set forth in its Counterclaims.
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`Neither the amount of attorneys’, experts’ or other fees and costs, nor the amount of any
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`other relief that may be deemed appropriate, is ascertainable at this time. Bose reserves the right
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`to supplement, modify, or add to this statement as the case proceeds and other discovery is
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`obtained.
`
`a.
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`b.
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`6. REPORT OF PRECONFERENCE DISCOVERY AND
`MEETING UNDER FED. R. CIV. P. 26(f)
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`The initial Rule 26(f) meeting was held on May 24, 2012.
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`Clayton C. James of Hogan Lovells US LLP participated on behalf of Able
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`Planet, and Karen Stringer participated on behalf of Bose.
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`c.
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`The parties exchanged their initial disclosures under Fed. R. Civ. P. Rule 26(a)(1)
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`on June 1, 2012.
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`d.
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`The parties do not propose any changes in the timing or requirements of
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`disclosures under Fed. R. Civ. P. 26(a)(1).
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 12 of 19
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`e.
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`No agreements related to the conduct of informal discovery have been reached at
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`this time, though the parties will continue to discuss opportunities for such discovery.
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`f.
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`The parties agree to meet and confer to pursue opportunities to reduce discovery
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`or other litigation costs (including the use of a unified exhibit numbering system) and limits on
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`electronic discovery, including but not limited to electronic email.
`
`g.
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`While the parties agree that there will be some discovery of materials maintained
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`in electronic format, they do not believe the case will involve large amounts of such discovery.
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`Such materials shall be produced in electronic format, either as .pdf or .tif images on CDs with
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`OCR data, when possible. However, the parties may seek documents in their native application
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`as necessary on an individual basis, after meeting and conferring on the necessity to do so. Each
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`image will have a unique file name based on the associated production number, and all parent-
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`child relationships (attachment ranges) will be preserved. The parties shall, whenever practical,
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`produce electronic copies of documents rather than paper copies. The parties will not be
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`required to preserve or search information in data sources that are not reasonably accessible,
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`including back-up tapes, disaster recovery systems, and other data sources that are not
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`reasonably accessible, based on expense and burden associated with searching and producing
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`information from such sources.
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`In the event of any inadvertent disclosure of any privileged or trial preparation materials,
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`such materials shall immediately be destroyed or returned to the disclosing party, without any
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`further use of any kind, after notice has been given by the disclosing party, and without such
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`inadvertent disclosure constituting a waiver of any privilege. Communications between parties
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`and their counsel occurring after the date of the filing of this lawsuit will all be deemed
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`privileged, will not be subject to discovery, and will not be subject to privilege logging.
`
`h.
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`The parties have engaged in ongoing settlement discussions related to their
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`dispute in connection with the Bose Patent Action, including two settlement conferences with
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`U.S. Magistrate Judge Watanabe.
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`7. CONSENT
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`The parties do not consent at this time to the exercise of jurisdiction of a Magistrate
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`Judge.
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`8. DISCOVERY LIMITATIONS
`
`a.
`
`Each party shall take no more than ten (10) non-expert depositions and three (3)
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`expert depositions.
`
`b.
`
`c.
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`Each party shall propound no more than twenty-five (25) interrogatories.
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`No deposition will exceed the seven-hour duration limitation under Fed. R. Civ.
`
`P. 30(d)(1), excluding breaks and legal argument.
`
`d.
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`Each party shall propound no more than forty (40) requests for production of
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`documents.
`
`e.
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`Each party shall propound no more than thirty-five (35 requests for admission
`
`except that either party may propound unlimited number of requests for admission solely
`
`regarding authentication of documents).
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`9. CASE PLAN AND SCHEDULE
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`Counsel for the parties have met and conferred regarding a proposed schedule but have
`
`been unable to come to a mutually acceptable recommended schedule. Therefore, the parties’
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`respective proposals are as follows:
`
`a.
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`Deadline for Joinder of Parties and Amendment of Pleadings:
`
`(i) Plaintiff’s proposal:
`
`July 6, 2012
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`(ii) Defendant’s proposal:
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`September 7, 2012
`
`b.
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`Fact discovery cut-off:
`
`(i) Plaintiff’s proposal:
`
`October 15, 2012
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`(ii) Defendants’ proposal:
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`December 14, 2012
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`c.
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`Dispositive Motion Deadline:
`
`(i) Plaintiff’s proposal:
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`February 15, 2013
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`(ii) Defendant’s proposal: May 15, 2013
`
`d.
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`Expert Witness Disclosure:
`
`1.
`
`While the parties have not made their final determination as to the need
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`and anticipated fields for expert testimony, and each reserves the right to supplement their
`
`respective lists, each party currently anticipates relying on expert testimony in the areas of
`
`trademark infringement, trademark validity, unfair competition and damages.
`
`2.
`
`3.
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`Each party may designate up to three (3) expert witnesses.
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`The parties shall designate all experts and provide opposing counsel with
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`all information specified in Fed. R. Civ. P. 26(a)(2) on or before: .
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`(i) Plaintiff’s proposal: November 15, 2012
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`(ii) Defendant’s proposal: March 1, 2013
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`4.
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`The parties shall designate all rebuttal experts and provide opposing
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`counsel with all information specified in Fed. R. Civ. P. 26(a)(2) on or before:
`
`(i) Plaintiff’s proposal:
`
`December 15, 2013
`
`(ii) Defendant’s proposal:
`
`April 5, 2013
`
`e.
`
`Plaintiff anticipates deposing the following persons:
`
`1.
`
`One or more Bose personnel responsible for the use of the HEAR THE
`
`DIFFERENCE mark by Bose;
`
`2.
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`One or more Bose personnel to testify regarding sales and other financial
`
`data associated with products marketed by Bose in connection with the HEAR THE
`
`DIFFERENCE mark;
`
`3.
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`One or more representatives of Costco, and any other retailer, through
`
`which Bose marketed any products using the HEAR THE DIFFERENCE mark;
`
`4.
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`Any experts identified by Bose.
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`f.
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`Defendant anticipates deposing the following persons:
`
`1.
`
`One or more Able Planet personnel responsible for the use of the alleged
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`Hear the Difference mark by Able Planet.
`
`2.
`
`Anne Foster, the applicant for the registration of the alleged mark Hear the
`
`Difference, which was assigned serial number 78/699,980.
`
`3.
`
`4.
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`One or more individuals with knowledge regarding the ‘980 Application.
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`Kevin Semcken, President and CEO of Able Planet.
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`Case 1:12-cv-00894-CMA-CBS Document 21 Filed 06/01/12 USDC Colorado Page 16 of 19
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`5.
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`One or more individuals with knowledge regarding Able Planet’s
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`marketing, advertising, comparisons, and sales of products (historically and in the present) using
`
`the alleged mark Hear the Difference.
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`6.
`
`One or more Able Plane