Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA498352
`ESTTA Tracking number:
`10/05/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055925
`Defendant
`Master Cutlery, Inc.
`EVELYN A DONEGAN
`RUBIN KAPLAN & ASSOCIATES
`200 CENTENNIAL AVENUE, SUITE 110
`PISCATAWAY, NJ 08854
`UNITED STATES
`edonegan@rkalaw.com
`Other Motions/Papers
`Evelyn A. Donegan
`kmazzola@rkalaw.com
`/s/Evelyn A. Donegan
`10/05/2012
`Panther Trading-Master Cutlery 10-5-12.pdf ( 48 pages )(1865736 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA498352
`ESTTA Tracking number:
`10/05/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92055925
`Defendant
`Master Cutlery, Inc.
`EVELYN A DONEGAN
`RUBIN KAPLAN & ASSOCIATES
`200 CENTENNIAL AVENUE, SUITE 110
`PISCATAWAY, NJ 08854
`UNITED STATES
`edonegan@rkalaw.com
`Other Motions/Papers
`Evelyn A. Donegan
`kmazzola@rkalaw.com
`/s/Evelyn A. Donegan
`10/05/2012
`Panther Trading-Master Cutlery 10-5-12.pdf ( 48 pages )(1865736 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`RUBIN,KAPLAN&ASSOCIATES
`A PROFESSIONAL CORPORATION
`
`ATTORNEYS AT LAW
`
`200 CENTENNIAL AVENUE
`
`SUITE 110
`
`PISCATAWAY, NJ 08854-3950
`
`(732) 4637511
`FAX: (7323 463-7348
`E-MAIL: a£tys@rka.law.com
`WEBSITE: www.rka1aw.com
`
`October 5, 2012
`
`Cierk, US Patent and Trademark Office
`Trademark Trial and Appeal Board
`
`Re:
`
`Panther Trading Company, Inc. V. Master Cutiery, inc.
`Cancellation No. 92055925
`
`Registration No. 4097292
`
`Dear Sir or Madam:
`
`Enclosed please find a copy of the motion to stay the trademark cancellation
`petition filed On September 24, 2012, in the United States District Court, District of New
`Jersey, in the matter of Master Cutlery, Inc. v. Panther Trading Co., 1110., et a1., Case NO.
`2: 12-CV-04493—(JLL)(MAH).
`
`By:/s/ Evelyn A. Donegan EAD 6720
`RUBIN, KAPLAN & ASSOCIATES
`ATTORNEYS FOR MASTER CUTLERY, INC.
`
`200 Centennial Avenue, Suite 110
`Piscataway, New Jersey 08854
`732—463—75 11
`
`edonegan@rka1aw.co1n (Emaii)
`
`
`
`RUBIN, KAPLAN & ASSOCIATES
`A ?rofessiona1 Corporation
`200 Centennial Avenue, Suite 110
`Piscataway, New Jersey 08854
`(732) 463-751 I
`Attorneys for Plaintiff, Master Cutlery, Inc.
`
`UNITED STATES DISTRICT COURT-
`
`DISTRICT OF NEW JERSEY
`
`MASTER CUTLERY, INC,
`
`Plaintiff,
`
`v
`V
`_
`,
`,
`:
`: Civil Action No.: 2:12—CV—O4'493—(JLL)(B/LAH)
`'
`
`V.
`
`: NOTICE OE‘ MOTEON TO STAY THE
`PANTI-ER TRADING CO.,
`INC, and ABC COMPANIES :
`TRADEMARK ARBITRATION
`1-30 (said companies being
`'
`fictitious sellers, buyers,
`marketers and/or manufacturers:
`
`infringing products obtained
`from Panther,
`
`Defendants.
`
`TO: Alison Robmer Dudick, Esq.
`Ryder, Lu, Mazzeo & Konieczny LLC
`Suite 200, 808 Bethlehem Pike
`Colmar, PA 18915
`
`Mr. Harsimzran Singh, Owner
`Panther Trading Company, Inc.
`2652 W. Patapsco Avenue
`Baltimore, MD 21230
`
`
`
`PLEASE TAKE NOTICE that on October 15, 2012, at 10:00 a.In. in
`
`the forenoon or as soon thereafter as counsel may be heard, the undersigned
`
`will apply to the above named Court, for an order staying the trademark
`
`arbitration because of the ‘litigation. '
`
`PLEASE TAKE FURTHER NOTECE that
`
`in support of this
`
`motion, defendant shall rely upon the Letter Brief dated September 21, 2012
`
`and Certification of Evelyn A. Donegan, Esq., dated September 21, 2012.
`
`A proposed form of order is submitted herewith.
`
`Dated: September 21, 2012
`
`By:/s/ Evelyn A. Donegen EAD 6720
`EVELYN A. DONEGAN, ESQ.
`RUBIN, KAPLAN 82; ASSOCIATES"
`ATTORNEYS FOR PLAINTIFF
`
`200 Centennial Avenue, Suite 110
`Piscataway, New Jersey 08854
`732-463-3751}
`
`eder1egan@rka1aw.com (limaii)
`
`
`
`CERTHTCATION OF SERVICE
`
`I hereby certify that on September 21, 2012 a copy of the within
`
`Notice of Motion to Stay the Trademark Arbitration; the Letter Brief dated
`
`September 21, 2012; the Certification of Evelyn A. Donegan, Esq., dated
`
`September 21, 2012; and a proposed form oforder, were Serve-ci upon
`
`Alison Rohmer Dudick, Esq.
`Ryder, Lu, Mazzeo 8:: Konieozny LLC
`Suite 200; 808 Bethlehem ?ike
`Coimar, PA 1 8915
`
`Mr. Harsirnran Singh, Owner
`?an1:her Trading Company, Inc.
`2652 W. Patapsco Avenue
`Baltimore, MD 21230
`
`via efiling or Federal Express, within the time period provided by the Rules
`
`of Court of the State of New Jersey.
`
`Dated: September 21, 2012
`
`By:/s/ Evelyn A. Donegan BAD 6720
`EVELYN A. DONEGAN, ESQ.
`RUBIN, KAPLAN & ASSOCIATES
`ATTORNEYS FOR PLAINTIFF
`
`200 Centennial Avenue, Suite 110
`Piscataway, New Jersey 08854
`732463-751 1
`
`edoI1egan@rkaIaW.com (Email)
`
`
`
`RUB".L’N,KAPLAN&iASSOGIA'1‘ES
`A }?12oFmes:oI~IAL CORPORAHEION
`
`ATTORNEYS AT LAW
`
`290 CENTENMAL AVENUE
`
`SUITE 110
`
`PISOATAWAIE’. NJ 08854-3950
`
`(7891 433-7511
`FAX: (732l 463-7648
`E—MA1I;~. atlys@rkaIaw.com
`WEBSITE: Www.rl§alaw.com
`
`September 21, 2012
`
`Via E-filing
`
`Hen. Sose L. Linares
`
`United State District Court
`
`District of New Jersey
`M.L. King, Jr. Federal Bldg. &
`US. Courthouse, Room 5054
`50 Walnut Street
`
`Newark, NJ 07101
`
`Re: Master Cutlegy, Inc. V; Panther Trading Co., Inc. '
`Civil Action No; 2: 12~CV~04493»(JLL)(MAH)
`
`Dear Judge Linares:
`
`Kindly accept this letter brief in lieu of a more fonnal brief in support
`
`of plaintiff, Master Cutlery, Incfs (“Master Cutlery”) motion to stay the
`
`defendant’s recently filed trademark cancellation petition because of the
`
`instant pending suit against Panther Trading Coi, Inc. (“Panther”) for patent
`
`infringement, trademark infringement and copyright infringement.
`
`
`
`PRELI1V.[INARY.STATE1\/iEN'i‘
`
`Panther has filed a motion to transfer instead of an answer, and has
`
`also (y_1‘_{)_ _s_e) filed a petition for cancellation of (at this writing) one of the
`
`trademarks belonging to plaintiff, Master Cutlery. This trademark is one of
`
`those which is the subject of the complaint against Panther. The stay of the
`
`TTAB petition for cancellation ofthe mark is appropriate because the rights
`
`of the plaintiff,
`
`including that of damages and injunction, cannot be
`
`protected in the TTAB forum. The TTAB case should be stayed pending
`
`outcome of the district conrt case as the issue in the TTAB case is subsumed
`
`into the district court case and it can provide relief to both parties.
`
`STATEMENT OF FACTS
`
`1.
`
`On September 11, 2012, Evelyn Donegan received a telephone
`
`call from Mr. Singh, a principal of Panther Trading Co., Inc. (“Panther”).
`
`Mr. Singh advised Evelyn Donegan that he was appearing p;;q st; in regard to
`
`the trademark cancellation petition which he had filed on behalf of his
`
`company, Panther. He further advised Ms. Donegan that he was aware she
`
`
`
`was requesting his consent to stay the action he had filed in the Trademark
`
`Trial anti Appeals board.
`
`2.
`
`He advised Ms. Donegan that he was representing his company
`
`himself, and his attorney on the other action filed in the District Court by
`
`this office was not representing Panther before the
`
`3.
`
`Mr. Singh declined to agree to stay the action in the TTAB.
`
`4.
`
`This plaintiff in the District Court case, Master Cutlery, Inc. has
`
`filed a compiaint consisting of several counts of patent
`
`infiingement,
`
`copyright infringement, trademark infiingement, and New Jersey specific
`
`statutes for Violations of New Jersey iaw regarding unfair competition under
`
`New Eersey law, tortious interference with prospective economic advantage
`
`under New Jersey law and misappropriation of intellectual property under
`
`New Jersey law.
`
`5.
`
`A review of that complaint will reveal that the same issues that
`
`are raised and may be raised in the defense of the case by the defendant’s
`
`
`
`counsel as to the trademark aspect of the District Court case, are the same
`
`issues raised by Mr. Singh in the TTAB matter.
`
`6.
`
`The answer on behalf of Master Cutlery, Inc. was filed in the
`
`Trademark Trial and Appeal Board case on September 8, 2012 and
`
`referenced the pending district court case.
`
`7.
`
`In the district court complaint, damages are also sought against
`
`Panther Trading Company, Inc., for its infringing behavior as to plaintiffs
`
`trademarks. (See counts 37 through 41 at pages 9 and 10 of Exhibit 1.) The
`
`trademark sought to be cancelled by Panther before the TTAB is one of the
`
`trademarks aileged by plaintiff herein that Panther infringed.
`
`LEGAL ARGUMENT
`
`The plaintiff is entitled to have a stay of the action filed for
`
`cancellation of any trademark in the Trademark Trial Appeais Board
`
`(TTAB). The TTAB will not be able to provide the plaintiffMaster Cutlery,
`
`Inc. as in the District Court case, with all appropriate relief, as to which is it
`
`is entitled. The Southern District Court of Indiana, in the case Enigma
`
`
`
`Marketing and Travel Solutions, Inc. v. Forethought Financial Services, Inc.
`
`D/B/A Forethonght Financial Group, Inc. did not stay District Court action.
`
`The District Court reasoned as follows:
`
`The TTAB's decision is likely to leave unresolved several
`questions central to this suit’s resolution including whether
`Enigrna"’s use of the mark was sufficient to establish ownership
`rights independent of registration, whether Forethought has
`infringed any vaiid Enigma trademark, and whether the parties’
`remaining claims and counterciaims have merit.
`In addition,
`even the 'I‘TAB's swiftest action would provide no relief to a
`successful petitioner because the TTAB cannet award
`damages or an injunction.
`(See Rhoades V. Avon Products
`_I_r_1g_., 504 F.3d 1151, 1164 (9th Cir. 2007); PHC Inc. V. Pioneer
`
`Healthcare Inc., 75 F.3d 75, 80 (let Cir. 1996). To obtain the
`relief they seek, they parties would stiil need to return to a
`judicial forum.
`
`
`
`Enigma Marketing and Travel Solutions, Inc. v. Forethought Financial
`Services, Inc. D/B/A Forethought Financiai Group, Inc., Case No.
`1:09—cv~0473—-DFH—JMS. (Emphasis added.)
`
`In Alberta Gas Chemicals V. the Celanese Cc;‘p_., 650 F.2d (9th cit.
`
`1981) there was also a discussion of what relief could be awarded.
`
`In that
`
`case, the court pointed out that “the TTAB cannot award damages for
`
`infiingernent or issue an injunction.” This is of significance to the instant
`
`_ matter because it is clear that the trademark cancellation action will sirnpiy
`
`not cover all of the issues involved in the District Court case or award any
`
`relief that plaintiff in this district court case is entitled to and therefore the
`
`
`
`district court case should proceed and the TTAB case/should he stayed
`
`pending the results in the District Court case.
`
`Also in the Enigma case, the court discussed jurisdiction.
`
`Forethought’s motion is based on the
`doctrine of primary jurisdiction.
`Primary
`jurisdiction is “reaily two doctrines.” Arsbegy V.
`Illinois, 244 F.3d 558, 563 (7th Cir. 2001).
`Originally, the doctrine barred judicial resolution
`of a claim “that is within the exclusive original
`jurisdiction of [a] reguiatory agency to resolve.”
`1,d,,_; see also United States V. Western Pacific
`Railroad Co., 352 US. 59, 6364 (1956). Primary
`jurisdiction has also some to justify a stay of
`proceedings, even when a claim is not committed
`exclusively to an expert agency, if the agency is in
`a better position to resolve the claim. Arsbem,
`244 F.3d at 563.
`
`The vaiidity of a trademark registration
`does not
`lie within the exclusive original
`jurisdiction of the PTO.
`Congress clearly
`envisioned that some plaintiffs complaining of
`trademark infringement or fraud on the PTO
`would seek relief directly from the federal
`courts without resorting to the administrative
`appeals process first. See 15 U.S.C. §§ 1120,
`1125.
`
`Nor is trademark validity an issue that
`merits particular deference to the PTO in the
`absence
`of
`exciusive
`agency jurisdiction.
`Although
`the
`TTAB
`has
`experience
`adjudicating registration disputes, the federal
`district courts are also perfectly familiar with
`the issues involved in those disputes. See Qqya
`
`
`
`Foods, Inc. V. Tropicana Products, Inc... 846 F.2d
`848, 853 (2d Cir. 1988) (reversing district court
`decision declining to decide trademark registration
`dispute).
`it would not necessarily save time for
`this court to wait until the TTAB rules on the
`
`FORE
`EXCLUSIVELY
`the
`of
`validity
`THOUGHT mark’s registration. The TTAB’s
`decision in iikeiy to leave unresoived severe}
`questions
`contra} to this
`suit’s
`resolution,
`including Whether Enigma’s use of the mark
`was sufficient
`to establish ownership rights
`independent
`of
`registration, Whether
`Forethoughi: has infringed any valid Enigma
`trademark, and whether the parties’ remaining
`claims and counterciaims have merit.
`In
`
`addition, even the T"£‘AB’s swifiest action would
`provide no relief to a successful petitioner because
`the TTAB cannot award damages _or an
`ingunction. See Rhoades v. Avon Products Inc.
`504 F.3d 1151, 1164 (9th Cir. 2007); PHC Inc. V.
`
`Pioneer Heaithcare Inc. 75 F.3d 75, 80 (1st Cir.
`1996). To obtain the relief they seek, they parties
`would still need to return to a judicial forum.
`
`
`
`Enigma Marketing & Travel Solutions, Inc, V.
`Forethought
`Financial
`Services,
`Inc.
`d/b/a
`Forethought Financiai Group, Inc., Docket No.
`1:09—cV—0473 (U.S. Dist. Ct, Southern Dist. of
`Indiana,
`Indianapolis Division).
`(Emphasis
`added.)
`
`Enigma Marketing and Travei Solutions, Inc. V. Forethought Financial
`Services, Inc. DKB/A Forethought Financiai Groug, Inc., Case No. 1:09—cv—
`0473—~DFH—JMS. (Emphasis added.)
`
`The TTAB action was filed within a matter of days of the compiaint
`
`in the district court being filed.
`
`
`
`CONCLUSION
`
`The TTAB matter should be stayed.
`
`Respectfuily,
`
`RUBIN KAJPLAN & ASSOCIATES
`
`Attorneys for Plaintiff,
`Master Cutiery, Inc.
`
`By:/S/' Evelm A. Donegan E96720
`EVELYN A. DONBGAN
`
`
`
`RUBEN, KAPLAN & ASSOCIATES
`A Professional Corporation
`200 Centennial Avenue, Suite 110
`Piscataway, New Jersey 08854
`(732) 463~75 1 1
`Attorneys for Plaintiff, Master Cutlery, inc.
`
`UNITED STATES DISTRICT CGURT
`
`DISTRICT OF NEW JERSEY
`
`MASTER CUTLERY, INC.,
`
`Plaintiff,
`
`V.
`
`A
`:
`: Civil Action No.: 2:12-CV—04493~
`
`‘
`
`(ILL)(1\/LAH)
`
`PANTI-IER TRADING C0,, INC.,
`and ABC COi\/TPANIES I-30,
`(said companies being fictitious
`sellers, buyers, marketers and/or
`manufacturers infiinging products
`obtained fiom Panther,
`
`CERTIFICATION OF EVELYN A.
`: DONEGAN, ESQ. IN SUPPORT
`: OF THE MOTION TO STAY
`:
`. THE TRADEMARK
`: ARBITRATION
`'
`
`Defendants.
`
`Evelyn A. Donegan, Esq., of full age hereby certifies as follows: _
`
`1.
`
`i am an attorney—at—1aw the state of New Jersey.
`
`I make this
`
`certification from personal knowledge and the file rnaintained in my office.
`
`
`
`2.
`
`My office represents the plaintiff in the above captioned matter.
`
`3.
`
`On September 11, 2012, I received a telephone call from Mr.
`
`Singh, a principal of Panther Trading Co., Inc. (“Panther”). Mr. Singh
`
`advised me that he was appearing pgjg _s§;
`
`in regard to the trademark
`
`cancellation petition which he had tiled on behalf of his company, i’anther.
`
`He further advised me that he was aware I was requesting his consent to stay
`
`the action he had filed in the Trademark Trial and Appeals board.
`
`4.
`
`He advised me that he was representing his company himseif,
`
`and his attorney on the other action filed in the District Court by this office
`
`was not representing Panther before the TTAB.
`
`5.
`
`Mr. Singh declined to agree to stay the action in the TTAB.
`
`6.
`
`This plaintiff in the District Court case, Master Cutlery, Inc. has
`
`flied a complaint consisting of several counts of patent
`
`infringement,
`
`copyright infringement, trademark infringement, and New Jersey specific
`
`statutes for violations of New Jersey law regarding unfair competition under
`
`
`
`New iersey law, tortious interference with prospective. economic advantage
`
`under New Jersey law and misappropriation of intellectual property under
`
`New Jersey law.
`
`(Copy attached hereto for the court's convenience, as
`
`Exhibit 1 a true copy of the complaint filed in the instant case.)
`
`7.
`
`A review of that complaint will reveal that the same issues that
`
`are raised and may be raised in the defense of the case by the defendant’s
`
`counsel as to the trademark aspect of the District Court case, are the same
`
`issues raised by Mr. Singh in the TTAB matter.
`
`8.
`
`A true copy of the trademark cancellation petition received by
`
`this office from Mr. Singh is attached hereto as Exhibit 2.
`
`9.
`
`The answer on behalf of Master Cutlery, Inc. was filed in the
`
`Trademark Trial and Appeal Board case on September 8, 2012 and
`
`referenced the pending district court case.
`
`(See a true copy attached hereto
`
`as Exhibit 3.)
`
`10.
`
`in the district court complaint, damages are also sought against
`
`Panther Trading Company, Inc., for its infringing behavior as to plaintiff’ s
`
`
`
`trademarks. (See counts 37 through 41 at pages 9 and 10 of Exhibit 1.) The
`
`traclemark sought to be cancelled by Panther before the TTAB is one of the
`
`trademarks alleged by plaintiff herein that ?antl1e:' infringed.
`
`I certify that the foregoing statements by me are true.
`
`I understand
`
`_ that if any of the foregoing statements are willfully false, I am subject to
`
`punishment.
`
`Date: September 21, 2012
`
`Byzlsl Evelyg A. Donegan BAD 6720
`EVELYN A. DONEGAN, ESQ.
`RUBIN, KAFLAN & ASSOCIATES
`ATTORNEYS FOR PLAINTIFF
`
`200 Centennial Avenue, Suite 110
`Piscataway, New Jersey 08854
`73 2~463 -751 I
`
`edonegan@._1;kalaw.com (Email)
`
`
`
`
`
`RUBIN, KAPLAN &: ASSCKEIATES
`A Ihofessional Corporation
`200 Centennial Avenue, Suite 1 20
`Piscataway, New Jersey 08854
`(732) 463-7511
`Attorneys for Plaintiff, Master Cutiery, Inc.
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`
`MASTER CUTLBRY, INC,
`
`Plaintifiln
`
`V.
`
`PANTHER TRADING CO., INC,
`and ABC COMPANIES I-30,
`(said companies being fictitious
`sellers, buyers, marketers and/or
`manufacturers infringing products
`obtained from Panther,
`
`Defendants.
`
`Civii Action No;
`
`
`COIVELAINT AND DEMAND FOR
`JURY TRIAL
`
`COMPLAINT AND DEMAND FOR JURY TRIAL
`
`Ptaintiff Master Cutlery, Inc. (hereinafler “Master Cutlery”), by and through its
`
`counsel, Richard Kaplan, Esq., of Rubin, Kaplan & Associates, complain against Panther
`
`Trading Co., Inc. (hexeinafter °‘Panther”} and ABC Companies (130), said coropanieci
`
`being fictitious sellers andfcr buyers and/or marketers andfor manufacturers, of infringing
`
`products obtained fiorn Panther, and afleges upon lmowledge as to itself and otherwise
`
`upon information and bciief as foliowst
`
`
`
`NATURE. or 'I'EtE ACTION
`
`1.
`
`This is an action for (2) Patent Infiingement under 35 U.S.C. § 271(3), (2)
`
`Induced Parent Infiringement under 35 U.S.C. § 2’7i(b}, (3) Willful
`
`Copyright Inmngemen: under 17 U.S.C. § 101, g; §§g_., (4) Willful
`
`Trademark InfriI1gement under the Lanham Act, (5) Unfair Competition
`
`under 15 U.S.C. § 1125 (a), (6) Unfair Competition under New Jersey
`
`Common Law,
`
`(7) Tortious Interference with }’rospeot'1ve Economic
`
`Advantage under New Jersey Common Law, and (8) misappropriation of
`
`intellectual property under New Jersey Common Law.
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has subject matter jurisdiction over all causes of actions set
`
`forth herein based upon 15 U.S.C. § 1121, 28 U.S.C. §§ 133}, }.338(a) and
`
`1338(b), and pursuant to the supplemental jurisdiction of this Court for all
`
`nonwfederal causes of action under 28 U.S.C. § 1367.
`
`This Courthas personal jurisdiction over-Defendants by virtue of, inter
`
`alia, (a) Defendant Panther Trading Co., Incfs having numerous business
`
`relations within the Stafe of New Jersey and conducting regular and
`
`continuous business
`
`transactions
`
`therewith, giving it
`
`the requisite
`
`minimum contacts with the state required to be subject to jurisdiction
`
`therein;
`
`(b) Defendant Panther Trading Co.,
`
`Inc. having a place of
`
`business as 2552 West Patapsoo Avenue, Maryiand 21230; (c) commission
`
`
`
`of tortious acts by all Defendants Within the State of New Jersey and
`
`within this Judiciai District; and (:1) regular ant} continuous transaction of
`
`business, including the tortious acts complained of heroin, within the State
`ofNew Jersey and within this Iudioia.1Dist:tiet.
`.
`
`4.
`
`Venue is proper in this judicial district and division pursuant to 28 U.S.C.
`
`§ 1391(b) and (so).
`
`THE PARTIES TO THE CQMI’LAINT
`
`5.
`
`Plaintiff Master Cutlery,
`
`Inc.
`
`(“Master Cutiery”)
`
`is a New Jersey
`
`Corporation with its principal piece of business at 700 Penhom Avenue,
`
`Seoancus, New Jersey 07094.
`
`6.
`
`Defendant Panther Trading Co., Inc. (“Panther”) is believed to be a
`
`Maryland Corporation, having as: principal place of busittoss at 2652 West
`
`Paiapsco Avenue, Baltimore, Marylami 21230.
`
`7.
`
`Defendants ABC Companies are fictitious persons or entities whose
`
`present identity and address is unknown, who have aiso violated Plaintiffs
`
`rights as set forth herein, or who assisted, conspired, or otherwise
`
`cooperated with the other Defendants in the acts complained of heroin.
`
`BACKGROUND
`
`8.
`
`On December 2, 2003, Victor Lee, President of Master Cutlery, Ina, filed
`
`a patent applicaiion with the United State Patent and Trademark Office
`
`(‘‘USPTO’‘),
`
`entitled “Knife,” which was
`
`granted United States
`
`
`
`Application Seriai No. 29/18’?f429 (the “429 application”). The claim was
`
`successfully prosecuted, and on September 27, 2005 in United States
`
`Patent No. US D 51s, 0093 (the “Paten1”) was issued.
`
`Master Cutlery is the exciusive owner of the Patent and has the right to
`
`sue and recover damages for infringement thereof.
`
`10.
`
`In or about early 2003, through its market brand, Master Cutlery, began
`
`selling commercial embodiments of the claimed inventions in the Patent
`
`while such patents were pending, under
`
`the product brand name,
`
`“Cyclone.” Master Cutlery properly marks all
`
`its cutlery products in
`
`accordance with 35 U.S.C. § 287.
`
`11.
`
`Defendant Fanther is a, manufacturer and!or distributor of cutlery products.
`
`Master Cutlery learned in 2011 that Panther had been offering for sale and
`
`soiling such a nearly identical product to Master CutIo1'y’s three (3) blade
`
`foiding knife under the name “Skull Pirate 3 Blade Folding Knife,” which
`
`it has introduced to the maxket.
`
`FIRS1‘ CAUSE OF gCT1ON
`
`D}
`
`CT
`
`LFULL l’A’I‘EN’I‘
`
`N
`
`UND R 35 11.3.6. 271 a
`
`13.
`
`Paragraphs
`
`1
`
`through 12 are realleged and incorporated herein by
`
`reference.
`
`14.
`
`The claims of the Patent are presumed valid pursuant to 35 U.S.C. § 282,
`
`and are valid.
`
`
`
`15.
`
`Panther, in violation of 35 U.S.C. § 271 (21), has infringed and is currently
`
`infiioging, contributcriiy infringing and./or inducing a third party to
`
`infiinge, at least one or more of the claims of the Patent, either literally or
`
`antler the Doctrine of Equivalents, by causing to be made, using, offering
`
`to sell, selling ancifor importing into the Uniteni States, without license or
`
`authority, within this Judicial District and elsewhere,
`
`the Infringing
`
`Product, which is covered by the Patent, and/or contributing towards
`
`ancifor inducing athird party to do the same.
`
`I6.
`
`In particular, each of the Infringing Yrcducts embodies a. three blade
`
`folciing knife circular in design wherein each of the three blades operate
`
`independently with any or all ofthe blades in an open or closed position as
`
`recited by the Patent.
`
`17.
`
`The Infringing Products further embody each of the remaining elements
`
`recited by claims ofthe Patent.
`
`18.
`
`19.
`
`Panther Trading purchased products from Master Cutlery until 2005.
`
`Panther Trading had purchased the patented Cyclone (item #VL~03) on
`
`numerous occasions, and knew it was a patented product
`
`so its
`
`infringement was willful.
`
`20.
`
`Panther intentionally caused to be made, used, offered to sell, sold anti/or
`
`imporlzed into the United States the infiingiiig Products, with actual
`
`knowledge, and/or lmowledge imputed to it, that such products embody at
`
`least one of the claims of the Patent.
`
`
`
`Panther has infringed, and upon information and beiiefi, wiil confirpze to
`
`infringe, the claims of the Patent by the use, manufacture, ofier for sale,
`
`sale, andfor importation of the
`
`Products.
`
`22.
`
`As a resxilt of Panther’s actions, Master Cutlery has suffered injury,
`
`including irreparable injury,
`
`and damages,
`
`including lost profits,
`
`reasonable royalties, and ether damages as set forth herein.
`
`SECOND CAfl§E Q1? ACEION
`
`DEIEQI éNI} WILLFUL COPYRIGHT INFRINGEIXHINT UNDER 17 U.S.C. §
`19;, et sgg.
`
`23.
`
`Paragraph 1
`
`through 22 are realleged and incorperated herein by
`
`reference.
`
`Plaintifi‘ holds several copyrights, among them VA 1~8I8~540, VA 1-257»
`
`089, VA 1-237~748, for the following:
`
`2:.
`
`"D.
`
`c.
`
`(1.
`
`Spider Foiding Knife
`
`Scorpion Raiding Knife
`
`Blecirio Flash Knife Item #V‘i.-15
`
`Spider Attack Knife
`
`25.
`
`Master Cutlery has
`
`expended significant
`
`resources promoting its
`
`ownership of iits copyrights.
`
`In View of the associated niche market, most
`
`persons and businesses in the cuiiery/specialty knives industry are aware
`
`of Master Cut1e1y°s technology and its rights under the copyrights.
`
`
`
`26.
`
`Defendant Panther has wflifuily infringed the copyrights of Master Cutlery
`
`by copying copyrighted designs belonging to Master Cutlery, specifically:
`
`3.
`
`1:.
`
`c.
`
`(3.
`
`Spider Folding Knife
`
`Scorpion Folding Knife
`
`Electric Flash Knife Item #VL~15
`
`Spider Attack Knife
`
`27.
`
`Panfiaer intentionally caused to be made, used, offered to sell, soid andfor
`
`imported into the United States the infringing Products, with aetuai
`
`knowledge, andfor knowiedge imputed to it, that such products embody at
`
`least one ofthe claims of the copyright
`
`28.
`
`Defendant 1’anther Trading had purchased these items fiom plaintiff and
`
`knew they were copyrighted products and so Panthefs infringement was
`
`willfui.
`
`29.
`
`As a result of Pant11er’s actions, Master Cutlery has suffered injury,
`
`including irreparable
`
`injury,
`
`and damages,
`
`including lost profits,
`
`reasonabie royalties, and other damages as set forth. herein.
`
`*1‘m_g_1; CAUSE OF ACTIGN
`
`ENFAER COMPETIT;0fi EEQER I5 U.S.C. § 1125{a1
`
`30.
`
`Paragraphs
`
`1
`
`through 29 are realleged and incorporated herein by
`
`referenee.
`
`3}.
`
`Master Cutlery has
`
`expended significant
`
`resources promoting its
`
`ownership of the Patent, and the exclusive rights to the teohnoiogy
`
`
`
`covered by the ctaims therein.
`
`In view of the associated niche market,
`
`most (persons and businesses in the cuflezyfspecialty knives industry are
`
`aware of Master Cnt1ery’s technology and its rights under the patent.
`
`32.
`
`The Defendants collective actions regarding the Infringing Products, as
`
`described herein, are likely to have misied, and Wilt continue to mislead
`
`many persons purchasing specialty knives to believe the Defendants have
`
`received permission, license, or other consent fiom Master Cutiery to
`
`make,_ use, sell, ofier for sale, or impoft into the United States,
`
`the
`
`lnfiinging Products.
`
`33.
`
`The Defendanfs use of the Infringing Products, through sale, offering for
`
`sale, and the like,
`
`is likely to deceive relevant consumers as to the
`
`Defendant's aifiliation with Master Cutlery or as to a sponsorship or an
`
`approval ofthe Infringing Products by Master Cutlery.
`
`34.
`
`The Defendants wiii, if not prelinfinarfly and permanently enjoined by the
`
`Court, continue its acts of unfair competition as set forth in the Lanham
`
`Act, thereby deceiving the public, trading on the exclusive rights granted
`
`to Master Cutlery in the form of the patent, and causing Master Cutlery
`
`immediate and irreparable harm, damage and in_imy.
`
`35.
`
`As a result of the Defendants’ collective actions, Master Cutiery has
`
`sufifered injury, including irreparable injury, and darnages, including lost
`
`profits, reasonable royalties, and other damages as set forth herein.
`
`
`
`EOURTH CAUSE OF ACEION
`
`DIRECT AND WELFUL TRADEMARK VIOLATIONS
`
`36.
`
`37.
`
`Paragraphs 1 through 35 are realleged an incorporafeti herein by reference.
`
`Plaintiff Master Cutlery is the hoider of the “Sherifl” trademark which
`
`was flied on February 8, 201}. and registered on February 7, 2012, serial
`
`number 85236751, and Panther has infringed this irademazk with the
`
`following:
`
`1.
`
`2.
`
`K405 5” Black Sheriff Two~Toned "Faetical Action Assisted Knife
`
`K-242 8” Sherifi’ Tactical Rescue Bleak Folding Knife-Scimitar
`
`Blade
`
`31-253 6” Sheriff Handcuffs Action Assisted Knife
`
`K-254 6” Sheriff Handcuffs Action Assisted Knife « Gray
`
`191-80 9” She::iffTac1:iea.I Rescue Folding Knife (1/2 Lb. of Power)
`
`KX~1 00 Karambit Rescue Action Assisted Knife — Sheriff Black
`
`P-52'?——B-SH 8.5” Tactical Rescue “Boid” Action Assisted Knife —
`
`Biaek Sheriff
`
`P-52”/'—GY-SH-8.5” Tactical Rescue “Bo1d" Action Assisted Knife
`
`~ Gmy Sheriff
`
`I’-S28-SH~BK 7.5” Action Assisted Rescue Knives — Sheriff
`
`P~528-SH—GY 7.5” Action Assisted Rescue Knives - Sheriff
`
`(Grey)
`
`11.
`
`P—529—SH-BK 9" Bias}: Sherifl" Taeticai Action Assisted Folding
`
`Knife
`
`
`
`12.
`
`P—529~SH~GY 9” Grey sham Tactical Action Assisted Folding
`
`Knife
`
`E3.
`
`F-530-SI-I-BK 7” Black Sheriff Tactical Action Assisted Folding
`
`Knife “New”
`
`E4.
`
`P-530-SH-GY 7”_ Grey Sheriff Tactical Action Assisted Folding
`
`Knife ‘NeW”
`
`15.
`
`P-569~SH»BK 9" Black Sheriff Tactical Action Assisted Folding
`
`Knife
`
`16.
`
`P-569‘-SH~GY 9” Grey Sherifl‘ Tactical Actien Assisted Folding
`
`Knife
`
`V
`
`38.
`
`Master Cutlery has
`
`expended significant
`
`resources promoting its
`
`ownership of the trademarks. In View ofthe associateé niche market, most
`
`persons and businesses in the cutleryfspecialty knives industry are aware
`
`of Master Cutlery’s technology and its rights under the trademarlc.
`Panther intentionally} causecl to be made, used, ofiered to sell, sold andfor
`
`39.
`
`imported into the United States the Infringing Products, with actual
`
`knowledge, andfor knowledge imputed to it, That "such products embody at
`
`least one ofthe claims ofthe trademark.
`
`40.
`
`Such infiinging use of the plaintiff’s trademarks was willful.
`
`As a result of Panthefs actions, Master Cutlery has suffered injuzy,
`
`including inoperable
`
`injury,
`
`and damages, moiudmg lost profits,
`
`reasonable royalties, and other damages as set forth herein.
`
`
`
`FIFTH CAUSE OF’ A-.C'I‘ION
`
`UNFAIR COMPETITION UNI)
`
`EW JE ELY C‘
`
`0 LAW
`
`42.
`
`Paragraphs
`
`1
`
`through 41 are reafleged and incorporated herein by V
`
`reference.
`
`43.
`
`The aforementioned ootleotive acts of the Defendants constitute unfair
`
`competition and unfair business practices contrary to the common law of
`
`New Jersey.
`
`44.
`
`The Defendants will, if not preliminarily and permanently enjoined by the
`
`Court, continue its acts of unfair competition as defined by the common
`
`law of New Jersey, thereby deceiving the public, trading on the exclusive
`
`rights granted to Master Cutlery in the form of the patent, and causing
`
`Master Cutlery immediate and irreparable harm, damage end in} my.
`
`45.
`
`As a result of the Defendants’ collective actions, Master Cutiery has
`
`suffered injury, including irreparable injury, and damages, inciuding lost
`
`profits, reasonable royaities, and other damages as set forth herein.
`
`SI
`
`CAU E
`
`CTION
`
`TORTIOUS INTERFERENCE ‘WITH PRO§_PECTIVE ECONOMIC
`
`ADVANTAGE
`
`46.
`
`Paragraphs
`
`1
`
`through 45 are realieged and incorporated herein by
`
`reference.
`
`47.
`
`The patent grants Master Cutlery the tight to exclude others fiom making,
`
`using,
`
`selling, offering for
`
`sale, or selling the claimed invention
`
`
`
`throughout the United States or importing the claimed invention into the
`
`United States pursuant to 35 U.S.C. § 154.
`
`48.
`
`Master Cutlery enjoys a proteefable right in the form of a United States
`
`patent, copjlrights and trademarks and the claimed invention recited by the
`
`claims of the patent, copyrights and trademarks which provides Master
`
`Cutiery reasonable expectation of an economic advantage to the enfircty of
`
`a marketplace covered by such claims.
`
`49.
`
`Any prospective consumers seeking to purchase a product or device
`
`embodying the claims of the patent wouid need permission, consent or
`
`iicensc from Master Cutlery to acquire such a product; and accordingly,
`
`Master Ctrflery has a reasonable expectation of economic advantage from
`
`any person seeking to acquire a product embodying the claims of the
`
`patent.
`
`50.
`
`The Defendants, as a result of their collective actions set forth herein, have
`
`interfered with Master Cut1ery’s protectable right in the claimed invention
`
`and more specifically, they have disrupted Master Cut1ery’s enjoyment of
`
`its-exclusive rights under the patent.
`
`51.
`
`The Defendants’
`
`coflecfive
`
`actions were comrnitted with rneiice,
`
`willfiziness and the intent to interfere with Master Cut1ery’s exclusive
`
`rights under the parent, without reasonable and lawful justification or
`
`excuse.
`
`52.
`
`But for the Defendants’ coliective actions, Master Cutiery had more than a
`
`reasonable cxpectefion, in View of its monopolistic rights under the patent,
`
`12
`
`
`
`that even! prospective consumer who showed intemt
`
`in acquiring
`
`Infringing Hoducts fiom the Defendants would have acquired Master
`
`CutIery’s patented producfis) instead.
`
`53.
`
`The Defendants’ coliective actions constitute a statutory violation under
`
`35 U.S.C. § 271, the Lanham Act and 17 U.S.C. § 101, §_f;_s__eg,_. and as such,
`
`transgress generally accepted standards of common morality and iaw.
`
`54.
`
`The Defendants wili, if not prelirzfimrily and permanently enjoined by the
`
`Court, continue to tortiously interfere with Master Cut1ery’s prospective
`
`economic advantage as gramed by the patent, copyrights and trademarks
`
`and causing Master Cutlery immediate and irreparable harm, damage and
`
`injury.
`
`55.
`
`Defendants have engaged in a pattern of infringement of other
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