Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA532501
`ESTTA Tracking number:
`04/16/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056955
`Defendant
`Harris Research, Inc.
`
`HARRIS RESEARCH INC
`1530 NORTH 1000 WEST
`LOGAN, UT 84321
`UNITED STATES
`Motion to Suspend for Civil Action
`Brent T. Winder
`bwinder@joneswaldo.com, lfrancis@joneswaldo.com,
`jmahoney@joneswaldo.com
`/Brent T. Winder/
`04/16/2013
`Motion to Suspend.pdf ( 3 pages )(112437 bytes )
`Exhibit A Complaint.pdf ( 14 pages )(764956 bytes )
`Exhibit B Answer Counterclaim.pdf ( 15 pages )(637387 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
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`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE
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`THE TRADEMARK TRIAL AND APPEAL BOARD
`
`IN THE MATTER OF Registration No. 3636605
`Registered on June 9, 2009
`Trademark: NO DUST. NO MESS. NO ODOR.
`Attorney Docket No. 11392.0337
`
`Cancellation
`No. 92056955
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`MR. SANDLESS FRANCHISE, LLC
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`Petitioner
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`v.
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`HARRIS RESEARCH, INC.
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`Registrant.
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`MOTION TO SUSPEND PROCEEDINGS
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`Registrant hereby moves for a suspension of the above-referenced cancellation
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`proceeding pursuant to Trademark Rule of Practice 2.117(a). See 37 C.F.R. § 2.117(a).
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`The parties to this proceeding are involved in a civil action, Harris Research, Inc. v. Mr.
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`Sandless Franchise, LLC, Civil Action No. 1:12-cv-00120-TS, filed June 4, 2012
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`(“Applicable Case”), which is currently pending in the U.S. District Court for the District
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`of Utah, Northern Division. In the Applicable Case, Registrant has alleged, among other
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`things, that Petitioner’s use of certain phrases infringes its trademark rights in “NO
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`DUST. NO MESS. NO ODOR.” including those rights conveyed under U.S. Registration
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`No. 3636605 (“the ‘605 Registration”). A copy of Registrant’s Complaint in the
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`Applicable Case is attached as Exhibit “A.”
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`1078385.1
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`Page 1 of 3
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`

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`On June 28, 2012, Petitioner submitted its Answer, Affirmative Defenses and
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`Counterclaim in which it alleged, among other things, that the ‘605 Registration is invalid
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`and unenforceable based on a) the “NO DUST. NO MESS. NO ODOR.” trademark
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`purportedly being descriptive or generic; b) Petitioner’s use of certain terms that
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`purportedly convey priority to it; and c) Registrant’s purported misrepresentations of its
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`dates of first use during examination of the ‘605 Registration. A copy of Petitioner’s
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`Answer, Affirmative Defenses and Counterclaims is attached as Exhibit “B.”
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`The foregoing issues are likewise raised by the above-referenced cancellation.
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`Accordingly, the outcome of the Applicable Case may be dispositive of this proceeding.
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`Therefore, Registrant respectfully requests the Board suspend further proceedings in the
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`above-referenced cancellation proceeding pending resolution of the Applicable Case.
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`Dated this 16th day of April, 2013.
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`Respectfully submitted,
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`/Brent T. Winder/
`__________________________________
`Brent T. Winder
`Lewis M. Francis
`Jones Waldo Holbrook & McDonough, P.C.
`170 South Main Street, Suite 1500
`Salt Lake City, UT 84101
`(801) 521-3200
`Attorneys for Registrant
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`1078385.1
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`Page 2 of 3
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`

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`CERTIFICATE OF SERVICE
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`I HEREBY CERTIFY that on this 16th day of April, 2013, copies of the foregoing
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`Motion to Suspend Proceedings were mailed via United States Express Mail to:
`
`ROBERT B FAMIGLIO
`FAMIGLIO & ASSOCIATES
`PO BOX 1999
`MEDIA, PA 19063-8999
`UNITED STATES
`
`With a courtesy copy to:
`
`CHAD NYDEGGER
`WORKMAN NYDEGGER
`60 EAST SOUTH TEMPLE, SUITE 1000
`SALT LAKE CITY, UT 84111
`
`/Brent T. Winder/
`
`Brent T. Winder
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`1078385.1
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`Page 3 of 3
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`

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`Case 1:12—c»
`
`Jl20~TS Documentz Filed 06/04/14 Page 1 of7
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`EXHIBIT A
`EXHIBIT A
`
`Lewis M. Francis (Utah State Bar #6545)
`JONES, WALDO, HOLBROOK & MCDONOUGH
`170 South Main Street, Suite 1500
`
`Salt Lake City, Utah 84101
`Telephone:
`(801) 521-3200
`Fax:
`(801) 328-0537
`Ifrancz's@j0neswaId0.c0m
`Attorneys for Plaintiff
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`UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF UTAH
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`COMPLAINT
`
`Case No. l:12—CV—00l20-TS
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`Judge Ted Stewart
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`HARRIS RESEARCH, INC., a Utah
`corporation,
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`VS.
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`Plaintiff,
`
`MR. SANDLESS FRANCHISE, LLC, a
`Pennsylvania limited liability company, and
`JOHN DOES 1-100,
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`Defendants.
`
`Plaintiff Harris Research, Inc. alleges as follows:
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`PARTIES
`
`1.
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`Plaintiff Harris Research, Inc. ("HRI") is a Utah corporation with its principal
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`place of business in Logan, Utah. HRI is the national franchisor of a wood refinishing system
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`known as NHance®, for which HRI owns the registered trademark, along with the related
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`registered trademark of No Dust. No Mess. No Odor. ® See Trademark registrations, attached
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`hereto as Exhibit “A”.
`
`1035999vl
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`

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`Case l:12~c\»
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`J120—TS Documerit2 Fried O6/O4/12 Page2of7
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`2.
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`Defendant Mr. Sandless Franchising, LLC (“Mr. Sandless”) is Pennsylvania
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`limited liability company, with its principal place of business in Aston, Pennsylvania. Mr.
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`Sandless also franchises its Wood refinishing business across the United States.
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`3.
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`The John Doe defendants are Mr. Sandless franchisees who it has authorized to
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`use HRl’s trademark and/or confusingly similiar Variations thereof. Mr. Sandless and the John
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`Doe defendants are collectively referred to herein as “Defendants.”
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`4.
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`This action involves violations of the federal Lanham Act, 15 U.S.C. §§ 1051 e_t
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`se_g., as well as a breach of contract between parties with a diversity of citizenship. Jurisdiction is
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`conferred by 28 U.S.C. §§ 1331,1332, 1367.
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`5.
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`Venue is proper under 28 U.S.C. § 1391, in that a substantial part of the events
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`giving rise to the claims asserted herein occurred in this District .
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`GENERAL ALLEGATION S
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`6.
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`HRI currently has over one hundred NHance® franchises across the United States,
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`which use the N0 Dust. N0 Mess. N0 Odor. ® trademark to advertise and provide their wood
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`refinishing services.
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`7.
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`Mr. Sandless also franchises its competing wood refinishing business across the
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`United States.
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`8.
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`Mr. Sandless and its John Doe franchisees are using HRI’s N0 Dust. N0 Mess. No
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`Odor. ® trademark, or a confusingly similar variation thereof, to advertise and provide their
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`competing wood refinishing services.
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`1035999v1
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`2
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`Case 1:12-c\,
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`,J120—TS Document 2 Filed 06/04/12 Page 3 of 7
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`9.
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`HRI previously asserted infringement claims against Mr. Sandless and its
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`franchisees regarding their use of I-IRI‘s registered trademark N0 Dust. N0 Mess. N0 Od0r.®
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`("the Mark") and/or confusingly similar marks.
`
`10.
`
`HRI and Mr. Sandless entered a Settlement Agreement and Release dated
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`November 10, 2009, a copy of which is attached hereto as Exhibit "B" (the "Agreement").
`
`11.
`
`As stated in the Agreement, Mr. Sandless and its franchisees agreed to
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`immediately and permanently cease any and all use of the Mark, including but not limited to
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`such use in print ads, mailers, websites, television commercials or other forms of advertising. See
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`Agreement § 1.
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`12.
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`Mr. Sandless also agreed not to use any confusingly similar marks or altered
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`Versions of the Mark, including but not limited to using the same word components in a different
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`combination, by changing the punctuation between word components, or by altering the word
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`components of the Mark. See Agreement § 2.
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`13.
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`In addition to the assurances above, Mr. Sandless stated that it intended to use the
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`following new tag line or slogan, QUICK, CLEAN, and CERTIFIED GREENI. SicAgreement
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`§ 4.
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`14.
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`The Agreement also provides that it is to be construed in accordance with, and
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`governed by, the laws of the State of Utah, without giving effect to its conflict of laws
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`provisions. See Agreement § 9.
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`15.
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`The Agreement further provides that if either HRI or Mr. Sandless seeks to
`
`enforce or protect its rights under the Agreement in any action, suit or other proceeding, the
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`1035999vl
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`3
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`

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`Case 1212-C\
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`.J120~TS Documerztz Filed O6/O4/la Page4or’7
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`prevailing party is to be entitled to receive from the other party payment of its costs and
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`expenses, including reasonable attorney's fees incurred.
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`l6.
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`HRI has performed all of its obligations under the Agreement.
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`17.
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`In contravention of the Agreement, Mr. Sandless and its franchisees have
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`continued to use the Mark and/or confusingly similar variations thereof by producing, or causing
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`to be produced, and distributing, or causing to be distributed, advertisements that contain the
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`Mark or confusingly similar variations thereof.
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`18.
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`Contrary to its assertions in the Settlement Agreement, Mr. Sandless has not
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`changed its tagline to “Quick, Clean and Certified Green.”
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`19.
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`Mr. Sandless’s actions constitutes a breach of the Agreement, as well as a
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`continuing violation of the Lanham Act..
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`20.
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`HRI has incurred and/or will incur significant damages from Mr. Sandless's
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`violations of the Lanham Act and breaches of the Agreement.
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`FIRST CLAIM FOR RELIEF
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`(Violation of Federal Lanham Act, 15 U.S.C. §§ 1051 gt yr.)
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`21.
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`Plaintiff incorporates the preceding allegations as though set forth fully herein.
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`22.
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`Mr. Sandless is infringing HRl’s N0 Dust. N0 Mess. No 0a’or.® trademark by
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`using the Mark, or confusingly similar variations thereof,
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`to advertise its competing wood
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`refinishing franchise business, and/or by authorizing its franchisees to use HRI’s trademark, or
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`confusingly similar Variations thereof, to advertise and provide their competing wood
`
`refinishing services.
`
`l035999v1
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`4
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`

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`Case SL:l2—cx ..JfL20—TS Document 2 Filed 06/04/12 Page 5 of 7
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`23.
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`The Mr. Sandless franchisees are infringing HRl’s N0 Dust. N0 Mess. N0 Odo:/.®
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`trademark by using the Mark, or confiisingly similar variations thereof, to advertise and provide
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`their competing wood refinishing services.
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`24.
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`Defendants are using HRI’s Mark, or confusingly similar variations thereof,
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`without its authorization or consent.
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`25.
`
`Defendants’ actions Violate the provisions of 15 U.S.C. §§ 1114 and 1125.
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`26.
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`HRI has incurred damages from Defendants’ trademark infringement and unfair
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`competition, and Defendants have been unjustly enriched from the same, in an amount to be
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`determined at trial.
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`27.
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`HRI has incurred attomey’s fee and costs in bringing this action, and otherwise
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`attempting to stop Defendants’ knowing and intentional infringement of HRl’s trademark, and its
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`unfair competition with HRI.
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`28.
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`HRI is entitled to an injunction requiring Defendants to cease any and all use of its
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`No Dust. No Mess, N0 0d0r.® trademark, or any confusingly similar variations thereof.
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`SECOND CLAIM FOR RELIEF
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`(Breach of Contract)
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`29.
`
`Plaintiff incorporates the preceding allegations as though set forth fully herein.
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`30.
`
`HRI and Mr. Sandless entered into the Agreement on November 10, 2009,
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`whereby Mr. Sandless agreed to cease any and all use of the Mark and/or any confusingly
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`similar variations thereof, including but not limited to such use in any form of advertising.
`
`31.
`
`HRI has performed all of its obligations under the Agreement.
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`1035999v1
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`5
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`

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`Case l:Zt2—cx ,Jl20—TS Document 2 Filed 06/04/12 Page 6 of?
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`32.
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`In Violation of the Agreement, Mr. Sandless and its franchisees have continued to
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`use the Mark and/or confusingly similar Variations thereof, by producing, or causing to be
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`produced, and distributing, or causing to be distributed, advertisements that contain the Mark or
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`confusingly similar Variations thereof.
`
`33.
`
`Such conduct violates the Agreement, and constitutes a material breach of
`
`contract.
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`34.
`
`HRI has incurred and/or will incur damages from Mr. Sandless's conduct, and/or
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`the conduct of its franchisees.
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`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff Harris Research, Inc. (“Plaintiff”) demands entry ofjudgment in
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`its favor and against defendant Mr. Sandless Franchising, LLC and the defendant John Doe
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`franchisees (collectively "Defendants"), as follows:
`
`1.
`
`On its First Cause of Action for Violation of Federal Lanham Act:
`
`A.
`
`For an Injunction requiring Defendants to immediately and permanently
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`cease any and all use of Plaintiff’ s No Dust. N0 Mess. N0 0d0r.®
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`trademark, and]or any confusingly similar Variation thereof;
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`B.
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`For an award of damages incurred by HRI, and the unjust enrichment
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`received by Defendants, in an amount to be determined at trial;
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`C.
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`D.
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`For an award of Plaintiffs attorney’s fees and costs incurred; and
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`For such other or further relief as the Court may deem appropriate.
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`2.
`
`On its Second Cause of Action for Breach of Contract:
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`1035999‘/1
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`5
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`Case 1:12—c=.
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`,O120—TS Document2 Filed 06/04/12 Page 7 of?
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`A.
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`For damages against Defendant in an amount to be determined at trial, in
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`an amount not less than $100,000;
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`B.
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`For Plaintiffs attorney's fees and costs incurred in bringing this action, as
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`provided for by contract;
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`For pre—judgment interest if applicable; and
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`For such other relief as the Court may deem appropriate.
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`C.
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`D.
`
`Dated this 4th day of June, 2012.
`
`JONES, WALDO, HOLBROOK & MCDONOUGH
`
`/s/ Lewis M. Francis
`Lewis M. Francis
`
`Attorneys for Plaintiff
`
`l035999v1
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`7
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`

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`JS 44 (Rev. 11/07)
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`Case 1:12-Cv—_
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`I20-TS Document 2-1 Filed 06/04/12 Page 1 otl
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`DEFENDANTS
`F/I%,S_and1ess Franchiae IELCE) a Pelriiiiadvania limited
`ta 1 ity company, an Jo n oes
`-
`COWW 0f Residelm 0f F1591 Listed Defendant
`(IN U-3~ PLADWFF CASES ONLY)
`
`
`
`Attorneys (If Known).
`
`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the iling and service of pleadings or other papers as required by law, except as provided by local rules of
`court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. (SEE
`INSTRUCTIONS ON THE REVERSE OF THE FORM.)
`L
`(a) PLAINTIFFS
`Harris Research, Inc., a Utah corporation
`(1)) County of Residence of First Listed Plaintiff
`CHCIIC
`(EXCEPT IN U.s. PLAINTIFF CASES)
`Attoi-iiey’s (Firm Name, Address, and '1‘e)ephnneNu:nber)
`(C)
`Francis
`Lewis
`Jones Waldo Holbrook & McDonough, PC
`170 South Main Street, Suite 1500
`Salt Lake City, UT 84101
`1801} 521-3200
`II. BASIS OF JURISDICTION (Place an "X" on One Box Ordy)
`.
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`uestion
`E 1
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`(U.S. Government Not a Party)
`US. Government
`Cl 4 Diversity
`D“f°“d3“‘
`(lndlcflta Citizenship °f Parties in mm 111)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant
`-
`>
`DEF
`4
`
`Incorporated or Principal Place
`°f Busmess 1“ This Sm”
`Incorporated and Principal Place
`of Business In Another State
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`Cl l
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`Citizen of Another State
`
`Cl 2
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`Cl 2
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`
`D 3
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`D 3
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`
`‘I 6
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`6
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`*5 PRORERTYRIGHT .
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`320 Copyrights
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`340 Trademark
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`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
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`400 State Reapportionment
`I: 610 Agriculture
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`PERSONAL INJURY
`_ 110 Insurance
`3 620 Other Food & Drug
`423 Withdrawal
`410 Antitrust
`120 Marine
`310 Airplane
`C 362 Personal injury ~
`El 625 Drug Related Seizure
`23 USC 157
`430 Banks and Banking
`D 130 Miller Act
`315 Airplane Product
`Med. Malpractice
`of Property 21 USC 88)
`450 Commerce
`[3 I40 Negotiable instrument
`Liability
`365 Personal Injury ~
`:3 630 Liquor Laws
`460 Deportation
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`_ 320 Assault, Libel &
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`640 RR. & Truck
`470 Racketeer lnfluencgd
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`Cl 650 Airline Regs,
`and Corrupt Organizations
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`330 Federal Employers’
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`660 Occupational
`_ 430 Consumer credit
`l5l Medicare Act
`Liability
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`_ 490 cable/gar TV
`C 152 Recovery of Defaulted
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`385 Propcrty Damage
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`391 ABTl°“'““l /‘W
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`C 870 Taxes (US. Plaindff
`3 462 Naturalization
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`E 220 Foreclosure
`D 900 A Ea] of},-,5
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`D 443 Housing/
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`463 Habeas Corpus _ Am [J 871 IRS—Third Party ‘
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`* 465 gm?’ ““'“‘g"“‘°“
`E 290 All Other Real Property
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`(Place an ‘‘X‘' in One Box Only)
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`r
`
`V. ORIGIN
`
`Appeal to District
`J c]
`fr
`Cl 7 Magiastraotif
`Judgment
`
`E 1 Original
`Proceeding
`VI. CAUSE or ACTIOV
`
`6 Multidistrict
`Litigation
`
`Transferred from
`Z 5 another district
`El 4 Reinstated or
`El 3 Rcmanded from
`C 2 Removed from
`(specifl)
`RGORQECG
`Appellate Court
`State Court
`I Citf gfitijfi Ciail S ttiecpgdir which you are filing (Do not cite jurisdictional statutes unless diversity):
`-5-
`-
`’ef
`scription of
`e:
`i
`10 ation odililederal Lanham Act
`3 CHECK IF THIS IS A CLASS ACTION
`UNDER F.R.C.P. 23
`
`VII. REQUESTED IN
`COMPLAINT:
`VIII. RELATED CASE(S)
`IF ANY
`oiirreég
`FOR OFFICE USE ONLY .' N OF
`RNEY OFRECORD’ Lewis M. Francis
`
`(See instructions)
`
`JUDGE
`
`plaint
`CHECK YES only if demanded in com '
`E No
`JURY DEMAND: 3 Yes
`DOCKET NUMBER
`
`RECEWF # __.___L AMOUNT ______: APPLYING IFP _______ JUDGE
`
`MAG. JUDGE
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`lO36ll8.l
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`Case 1:12~cv»\ Jl20‘TS Document 2-2 Fiied 06/04/12 Page 2 of 3
`
`Int. Cl.: 37
`
`Prior U.S. Cls.: 100, 103, and 106
`
`United States Patent and Trademark Office
`
`Reg. No. 3,636,605
`Registered June 9, 2009
`
`
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`‘NO DUST, NO
`
`HARRIS RESEARCH,
`TION)
`1530 NORTH 1000 WEST
`LOGAN, UT 84321
`
`INC.
`
`(UTAH CORPORA-
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM To ANY PARTICULAR
`FONT; STYLE, SIZE, on COLOR.
`
`FOR: REFINISHING AND RESURFACING SER»
`VICES FOR WOOD SURFACES, FURNITURE,
`FLOORS, CABINETS, DOORS, TREMS, IN CLASS 37
`(US. CLS. 100, 103 AND 106).
`
`SN 77—514,168, FILED 7-3-2008.
`
`FIRST USE 530-2003; IN COMMERCE 5-30-2003.
`
`SAN1 KHOURI» EXAM1N1NG ATTORNEY
`
`

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`
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`Case 1:12—cv-. A20-TS Document 2-2 Filed 06/04/12 Page 3 of 3
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`Int. Cls.: 2 and 37
`
`Prior U.S. Cls.: 6, 11, 16, 100, 103, and 106
`
`Reg. No. 2,902,117
`Registered Nov. 9, 2004
`United States Patent and Trademark Office
`
`TRADEMARK
`SERVICE MARK
`PRINCIPAL REGISTER
`
`IRS/ance
`
`HARRIS RESEARCH,
`TION)
`1530 NORTH 1000 WEST
`LOGAN, UT 84321
`
`INC.
`
`(UTAH CORPORA-
`
`FOR: WOOD SURFACE FINISHING AND REFIN-
`ISHING COATINGS AND RESURFACING COAT-
`ING, ALL THE AFOREMENTIONED FOR USE ON
`WOOD SURFACES, FURNITURE, FLOORS, CABI-
`NETS, DOORS, AND TRIM, IN CLASS 2 (US. cLs. 6,
`11 AND 15).
`
`FOR: REFINISI-IING AND RESURFACING SER-
`VICES FOR WOOD SURFACES, FURNITURE,
`FLOORS, CABINETS, DOORS, TRIMS, IN CLASS 37
`(U.S.CLS.100,103 AND 106).
`
`FIRST USE 6-23-2003; IN COMMERCE 6-23-2003.
`
`SN 76-524,432, FILED 6-23-2003.
`
`FIRST USE 6-23-2003; IN COIVfl\/[ERCE 6-23-2003.
`
`GIANCARLO CASTRO, EXAMINING ATTORNEY
`
`

`
`
`
`

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`Case 1:l2_—c\/--_J12O—TS Document 2-3 Filed 06/04/12 Page 2 of 3
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`SETTLEIVEENT AGREEMENT AND RELEASE ~
`This Settlement Agreement and Release (“Agreemen ”) is made this fliihay ofNovember,
`2009, by and between HARRIS RESEARCH, INC. (“HRI”), and MR. SANDLESS FRANCHISE,
`LLC (“l\4r. Sandless”), both of which are sometimes referred to as the “Parties.”
`RECITALS
`
`I-IRI is the national franchisor of a wood floor refinishing system known as N-
`A.
`Hance®, for which HRI owns the registered trademark, along with the related registered
`trademark of N0 Dust. No Mess. N0 Odor. ®
`
`Mr. Sandless also franchises its wood floor refinishing business across the United
`B.
`States, for which it uses the trademark Mr. ScmdZess®.
`
`C.
`
`HRI and Mr. Sandless are direct competitors in the wood—iloor refinishing business.
`
`HRI has asserted certain claims against Mr. Sandless and its franchisees regarding
`D.
`their use of HRl’s registered trademark N0 Dust. N0 Mess. N0 Odor. ® (“the Mark”) and/or
`corrfiisingly similar marks.
`
`On August 11, 2009, I-IRI filed a Complaint against Mr. Sandless and its
`E.
`franchisees in the United States District Court for the District of Utah, styled as Harris Research,
`Inc. V. l\/lr. Sandless Franchise, LLC and John Does 1-100 Case No. 1:09-CV—1ll, which
`included a claim for Violation of the Federal Lanham Act, 15 USC. §§ 1051' et seg. (the
`
`"Lawsuit");
`
`Without admitting any liability or fault, the Parties desire to settle and compromise
`F.
`any and all claims between them arising from, out of, or related to the Lawsuit (the “Released
`Claims”).
`.
`
`AGREEMENT
`
`NOW, THEREFORE, in consideration of the promises and covenants contained herein, the
`Parties hereby agree to the following:
`
`No Use of the Mark: Mr. Sandless and its franchisees agree to immediately and
`1.
`permanently cease any and all use of the Mark, including but not limited to such use in print ads,
`mailers, websites, television commercials or other forms of advertising.
`
`No Confusingly Similar Marks. Mr. Sandless and its franchisees also agree not to
`2.
`use any confusingly similar marks or altered versions of the Mark, including but not limited to
`using the same word components (“No Dust”, “No Mess” and “No Odor") in a different
`combination (such as “No Mess. No Dust”), by changing the punctuation between the word
`components (such as No Dust—No Mess—No Order), or by altering the word components of The
`Mark (such as “No Dust. No Messes. No Odors”).
`
`Descriptive Use Allowed: While agreeing not to use the Mark or any confusingly
`3.
`similar marks as described in the above paragraph 2, Mr. Sandless and its franchisee are allowed
`
`-1-
`
`

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`Case 1:12—cv—ca120—TS Document 2-3 Filed 06/04/12 Page 3 of 3
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`to use the words contained in The Mark in describing their products and services, to the extent
`they are applicable.
`
`New Tag Line or Slogan: Mr. Sandless and its franchisees intend to use the
`4.
`following new tag line or slogan, QUICK, CLEAN, and CERTIFIED GREENl, which
`HRI agrees is not confiisingly similar to the Mark.
`.
`t
`
`Release. Except for the obligations created by this Agreement, HRI releases Mr.
`5.
`Sandless, its employees, representatives and franchisees from the Released Claims, including any
`damages, costs, and attorneys‘ fees which arise out of the Released Claims.
`
`Representations and Warranties. The Parties represent and warrant that (a) no other
`6.
`person or entity has any interest in the claims, demands, obligations, rights or causes of action
`which are the subject of this Settlement, that (b) they have the sole right and exclusive authority to
`execute this Settlement, that (0) they have not sold, assigned, transferred, conveyed, compromised,
`or otherwise disposed of any of the claims, demands, obligations, rights or causes of action
`referred to in this Settlement; and (d) the Parties have made such investigation of the facts
`pertaining to this Settlement, and of all the matters pertaining to, as they deem necessary. Mr.
`Sandless also warrants that by signing this agreement, it will also bind its franchisees to the
`obligations stated herein.
`
`Authority. Each individual executing this Agreement hereby represents and
`7.
`warrants to each other person so signing (and to each other entity for which another person may be
`signing) that he has been duly authorized to execute and deliver this Agreement in the capacity of
`the person or entity set forth for which he or "she signs.
`
`Attomey’s Fees and Costs. Each party shall bear its own costs, attorneys’ fees and
`8.
`other expenses arising out of or related to the claims and disputes in the Lawsuit, including the
`preparation and execution of this Settlement. However, if any party shall seek to enforce or
`protect its rights under this Agreement in any action, suit or other proceeding, the prevailing party
`shall be entitled to receive from the other party payment of its costs and expenses, including
`reasonable attorneys‘ fees incurred.
`
`Governing Law. This Settlement shall be construed in accordance with, and
`9.
`governed by, the laws of the State of Utah, without giving effect to its conflict of laws provisions.
`
`Dismissal of Lawsuit with Preiudice: Upon execution of this Agreement, HRI
`l0.
`agrees to take the necessary steps to dismiss the Lawsuit with prejudice.
`
`Countegparts. This Agreement may be executed in two or more counterparts,
`ll.
`which, when taken together, shall constitute one original.
`
`l\/ER. SANDLESS, LLC:
`
`HARRIS RESEARCH,
`
`By 9
`
`Its
`
`'
`
`\
`
`By
`
`lts
`
`F
`Qfiw
`, L
`
`KLEQO,
`
`'1"
`
`l
`
`

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`Case l:12—cv-
`
`l20—TS Document6 Filed O6/28/1.- Page 1of15
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`EXHIBIT B
`EXHIBIT B
`
`Chad E. Nydegger (Utah State Bar No. 8810; E-Mail: cndegger@wnlaw.corn)
`WORKMAN NYDEGGER
`
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`Telephone: (801)533-9800
`Facsimile: (801) 328-1707
`
`Attorneys for Defendant
`Mr. Sandless Franchise, LLC
`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF UTAH, NORTHERN DIVISION
`
`HARRIS RESEARCH, lNC., a Utah
`corporation,
`
`Plaintiff,
`
`V.
`
`MR. SANDLESS FRANCHISE, LLC, a
`Pennsylvania limited liability company, and
`JOHN DOES 1-100
`
`Defendants.
`
`\/xyg/y/\/\/g/g/\/\/\_/\/g/D
`
`Civil Action No. 1 : 12-cV—00120-TS
`
`DEFENDANT MR. SANDLESS
`FRANCHISE, LLC’S ANSWER TO
`COMPLAINT, AFFIRMATIVE
`DEFENSES AND COUNTERCLAIMS
`
`Honorable Judge Ted Stewart
`
`Defendant, Mr. Sandless Franchise, LLC (herein after “Mr. Sandless”) by and through
`
`their attorneys, in response to the Plaintiffs Complaint bring the following response to Plaintiff
`
`Harris Research, Inc.’s (“HRI”) Complaint filed in the District Court for The District of Utah,
`
`and in support thereof aver as follows wherein the numbered paragraphs below respond to the
`
`Plaintiffs like—numbered paragraph within its Complaint:
`
`

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`Case 1:l2—cv-
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`120-TS Document 6 Filed O6/28/1- Page 2 of 15
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`PARTIES
`
`1.
`
`The facts stated in HRI’s like-numbered paragraph are admitted with the
`
`exception that answering Defendant Mr. Sandless claims that HRI’s trademark for N0 Dust. N0
`
`Mess. N0 Od0r® is invalid as a trademark to the extent that it is descriptive or generic. Mr.
`
`Sandless admits that the registration so attached as Exhibit “A” to Plaintiffs Complaint indicates
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`that the Plaintiff has registered the said Mark.
`
`2.
`
`3.
`
`Mr. Sandless admits to the statements in HRI’s like—nurnbered paragraph.
`
`Denied as stated. To the contrary, Mr. Sandless does not authorize any of its
`
`franchisees to use HRl’s claimed trademark or any confusingly similar variations thereof. By
`
`way of further answer, Mr. Sandless does not use HRI’s claimed trademark or anything
`
`confusingly similar and to the best of its information and belief after reasonable investigation, no
`
`franchisee of Mr. Sandless uses HRI’s claimed trademark or anything confusingly similar.
`
`4.
`
`HRI’s like—numbered paragraph is a conclusion of law to which no response is
`
`required.
`
`5.
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`HRl’s allegations in its lik.e—numbered paragraph are conclusions of law. Further,
`
`to the extent said paragraph contains allegations of fact, after reasonable investigation, there are
`
`no events giving rise to the claim asserted which occurred in the District of Utah and therefore
`
`denies the same. Moreover, Mr. Sandless does not use any trademarks nor has it engaged in
`
`other events which would give rise to venue being proper in Utah. To the contrary, HRl’s
`
`present claim is more properly a counterclaim to an earlier—f1led and pending Lanham Act action
`
`between the same Parties styled Mr. Sandless .Franchz'se, LLC v. Harris Research, Inc. in the
`
`

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`Case 1:12—cv-
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`120—TS Document 6 Filed O6/28/1.- Page 3 of 15
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`United States District Court for Eastern Pennsylvania case number 2: l2—CV~O2240—PBT, filed
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`April 25, 2012, more than five weeks prior to HRI’s action.
`
`GENERAL ALLEGATION S
`
`6.
`
`While Mr. Sandless believes and therefore admits that HRI has some franchises it
`
`sells under the “NHance” trademark which may use the slogan so referenced in HRl’s like-
`
`numbered paragraph, Mr. Sandless does not have information as to the number of franchises
`
`owned, operated or otherwise serviced by HRI and therefore denies the same. Further, HRI is
`
`predominantly a cabinet refinisher, not a Wood floor refinisher and therefore is not a direct
`
`competitor.
`
`7.
`
`, Admitted to the extent only that Mr. Sandless franchises its wood floor refinishing
`
`business throughout the United States. The remainder of the allegation is denied. HRI is mainly
`
`cabinet refinishing but does do some Wood floor refinishing.
`
`8.
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`Denied. To the contrary, neither Mr. Sandless nor, after reasonable investigation,
`
`any of its franchises, uses any of HRI’s trademarks, specifically but not limited to, N0 Dust. No
`
`Mess. N0 Oa’0r®.
`
`9.
`
`Admitted as stated.
`
`10.
`
`Admitted as stated.
`
`11.
`
`Admitted only that the Agreement attached as Exhibit “B” to HRl’s Complaint
`
`appears to be a correct copy of an agreement entered between the Parties. Any characterization
`
`of the Agreement is denied since the Agreement is in Writing and therefore speaks for itself.
`
`

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`Case l:12—cv«
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`120-TS Document6 Filed O6/28/L Page4of 15
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`12.
`
`Mr. Sandless admits only that the Agreement attached appears to be an accurate
`
`copy of the Agreement reached between the Parties. The Agreement speaks for itself and any
`
`characterization by HRI regarding the terms of the Agreement is denied.
`
`13.
`
`Mr. Sandless admits only that the Agreement attached appears to be an accurate
`
`copy of the Agreement reached between the Parties. The Agreement speaks for itself and any
`
`characterization by HR1 regarding the terms of the Agreement is denied.
`
`14.
`
`Mr. Sandless admits only that the Agreement attached appears to be an accurate
`
`copy of the Agreement reached between the Parties. The Agreement speaks for itself and any
`
`characterization by HRI regarding the terms of the Agreement is denied.
`
`15.
`
`Mr. Sandless admits only that the Agreement attached appears to be an accurate
`
`copy of the Agreement reached between the Parties. The Agreement speaks for itself and any
`
`characterization by HRI regarding the terms of the Agreement is denied.
`
`16.
`
`Denied. After reasonable investigation, Mr. Sandless is unable to verify the
`
`allegations in HRI’s like—numbered paragraph and therefore denies the same.
`
`17.
`
`Denied. To the contrary, Mr. Sandless has not used, and has not authorized the
`
`use of any mark that contain the Mark or confusingly similar Variations thereof. Mr. Sandless
`
`also has not distributed, and has not authorized the distribution any advertisements that contain
`
`the Mark or confusingly similar variations thereof.
`
`18.
`
`Denied. To the contrary, Mr. Sandless has invested heavily in other trademarks
`
`including, but not limited to, its tag line “Quick, Clean & Certified Green.”
`
`19.
`
`HRl’s assertions in its lik.e—numbered paragraph are conclusions of law to which
`
`no response is required. By way of further answer, Mr. Sandless has not breached any
`
`

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`Case 1:12—cv-
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`l20—TS Document 6 Filed O6/28/1.. Page 5 of 15
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`agreement or contract or violated any of HRI’s rights under the Lanham Act or otherwise and
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`therefore denies the allegations.
`
`20.
`
`Denied. To the contrary, Mr. Sandless has incurred significant damages from
`
`HRl’s conduct as set forth more particularly in the co—pending action between the Parties styled
`
`Mr. Sandless Franchise, LLC v. Harris Research, Inc. in the United States District Court for
`
`Eastern Pennsylvania case number