Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA590900
`ESTTA Tracking number:
`03/05/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Sunstar Americas, Inc.
`Corporation
`4635 W. Foster Avenue
`Chicago, IL 60630
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Charles A. Laff and Larry L. Saret
`Michael Best & Friedrich LLP
`180 N. Stetson Avenue, Suite 2000
`Chicago, IL 60601
`UNITED STATES
`chiipdocket@michaelbest.com, calaff@michaelbest.com,
`llsaret@michaelbest.com, prcoble@michaelbest.com,
`geespinoza@michaelbest.com Phone:312-222-0800
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3593027
`DR. FRESH, LLC
`6645 CABALLERO BOULEVARD
`BUENA PARK, CA 90620
`GERMANY
`Goods/Services Subject to Cancellation
`
`Registration date
`
`03/17/2009
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`Class 021. First Use: 2008/01/16 First Use In Commerce: 2008/01/16
`All goods and services in the class are cancelled, namely: toothbrushes
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`Grounds for Cancellation
`
`The mark comprises matter that, as a whole, is
`functional
`Genericness
`Priority and likelihood of confusion
`The mark is merely descriptive
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`Trademark Act section 2(e)(5)
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`Trademark Act section 23
`Trademark Act section 2(d)
`Trademark Act section 2(e)(1)
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`Mark Cited by Petitioner as Basis for Cancellation
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`U.S. Application/
`Registration No.
`Registration Date
`Word Mark
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`NONE
`
`Application Date
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`NONE
`
`NONE
`hard-to-reach areas, for hard-to-reach areas and similar variations of
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`

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`Goods/Services
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`those phrases
`toothbrushes and other oral healthcare products that may be
`particularly suited for cleaning difficult areas in the mouth
`
`Attachments
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`14641247_Petition_For_Cancellation_14641152_1.pdf(18265 bytes )
`14641030_Exhibit_A.pdf(122923 bytes )
`14641026_Exhibit_B.pdf(1914118 bytes )
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`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Certificate of Service
`
`Signature
`Name
`Date
`
`/larry l. saret/
`Larry L. Saret
`03/05/2014
`
`

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`
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`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that this Petition for Cancellation is being
`
`transmitted by the Electronic System for Trademark Trials and
`Appeals to the United States Patent and Trademark Office on
`March 4, 2014.
`
`
`
`
`
`
`
`
`/s/ Dawn S. Ternig_
`Dawn S. Ternig
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the Matter of Registration No. 3593027
`Issued: March 17, 2009
`Mark: HARD TO REACH PLACES
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`SUNSTAR AMERICAS, INC.,
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`Petitioner,
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`v.
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`DR. FRESH, LLC,
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`Respondent.
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`) Cancellation No.
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`)
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`
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`PETITION FOR CANCELLATION
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`This petition relates to the registration of the trademark HARD TO REACH PLACES for
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`
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`
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`toothbrushes, Registration No. 3593027 (“Respondent’s Mark”) issued March 17, 2009, to
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`Johnson & Johnson and later assigned to Dr. Fresh LLC, 6645 Caballero Boulevard, Buena
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`Park, CA 90620 (“Respondent”). Sunstar Americas, Inc., a Delaware corporation with its
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`principal place of business at 4635 West Foster Avenue, Chicago, Illinois 60630 (“Petitioner”),
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`believes it is being damaged and will continue to be damaged by such registration and hereby
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`petitions for the cancellation of the registration of Respondent’s Mark.
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`
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`The grounds for cancellation are as follows:
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`1.
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`Respondent and Petitioner sell oral health care products, such as
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`toothbrushes, to oral health care professionals and consumers.
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`

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`2.
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`Toothbrushes are designed to clean small spaces between and
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`around teeth and gums in the mouth. Many such spaces can be difficult or
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`awkward to access with toothbrushes or other oral healthcare products.
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`Toothbrushes that can better clean difficult to access areas are more effective in
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`promoting oral health.
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`3.
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`Respondent has asserted that Petitioner’s uses of phrases such
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`as “Hard-to-Reach Areas,” “For hard-to-reach areas,” and similar variations of
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`those phrases infringe Respondent’s Mark.
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`4.
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`Petitioner and others use the phrases “Hard-to-Reach Areas,” “For
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`hard-to-reach areas,” and similar variations of those phrases in advertising and
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`on packaging not as a trademark and merely to describe certain toothbrushes
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`and other oral healthcare products that may be particularly suited for cleaning
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`difficult to access areas in the mouth.
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`5.
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`As a result of the above facts, there is no likelihood of confusion
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`between Respondent’s Mark and Petitioner’s use of phrases such as “Hard-to-
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`Reach Areas,” “For hard-to-reach areas,” and similar variations of those phrases.
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`6.
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`The phrase HARD TO REACH PLACES is used by Respondent to
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`merely describe a characteristic or quality of toothbrushes and comprises matter
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`that is functional.
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`7.
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`The phrase “hard to reach places” does not identify Respondent’s
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`toothbrushes or distinguish Respondent’s toothbrushes from the toothbrushes of
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`others.
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`8.
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`HARD TO REACH PLACES has not become distinctive of
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`2
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`Respondent’s toothbrushes.
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`9.
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`HARD TO REACH PLACES is a generic phrase used in
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`connection with toothbrushes, is merely descriptive or misdescriptive of
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`toothbrushes, or is functional.
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`10.
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`Accordingly, Respondent’s Mark is invalid.
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`11.
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`Respondent’s Mark is inconsistent and interferes with Petitioner’s
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`right to use “Hard-to-Reach Areas,” “for hard-to-reach areas,” or variations of
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`those phrases, in connection with the sale of toothbrushes, to fairly describe
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`Petitioner’s toothbrushes and their functions, features and characteristics.
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`12.
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`Registration No. 3593027 identifies January 16, 2008, as the date
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`of first use in commerce of Respondent’s Mark. A printout from TESS setting
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`forth the asserted date of first use of Respondent’s Mark is attached as Exhibit A.
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`13.
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`Petitioner has used the phrases “Hard-to-Reach Areas,” “For hard-
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`to-reach areas,” and slight variations of those phrases in connection with
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`Petitioner’s toothbrushes dating back to at least as early as 1987. Petitioner has
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`continuously used such phrases in connection with the sale of toothbrushes and
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`other oral healthcare products for at least the past 25 years, long before
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`Respondent’s alleged date of first use.
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`14.
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`If Respondent’s Mark is determined not to be generic, merely
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`descriptive, or functional, and it is also determined that there is a likelihood of
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`confusion between Respondent’s Mark and Petitioner’s use of the phrases
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`“Hard-to-Reach Areas,” “For hard-to-reach areas,” and variations of those
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`phrases, Petitioner has priority over Respondent to use those phrases.
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`3
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`

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`15.
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`Petitioner is likely to be damaged by the continuing registration of
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`Registration No. 3593027 because Registrant has wrongfully accused Petitioner
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`of trademark infringement and unless canceled, the registration will remain as a
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`cloud on Petitioner's legal right to use the phrase “hard to reach places” and
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`similar phrases in connection with Petitioner's Goods.
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`16.
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`On February 14, 2014, Petitioner filed a lawsuit in the U.S. District
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`Court for the Northern District of Illinois, Civil Action No. 14-cv-1097, seeking,
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`among other things, declaratory judgments that Petitioner does not infringe
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`Respondent’s Mark and that Registration No. 3593027 is invalid for the same
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`reasons identified in this Petition. A copy of Petitioner’s complaint in that lawsuit
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`is attached as Exhibit B.
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`WHEREFORE, Petitioner prays that Registration No. 3593027 be canceled.
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`Petitioner hereby consents and appoints Charles A. Laff, Larry L. Saret, Gilberto E.
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`Espinoza, and Paul R. Coble, members of the bar of the State of Illinois, whose address is
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`Michael Best & Friedrich LLP, 180 N. Stetson Avenue, Suite 2000, Chicago, IL 60601, as its
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`duly authorized agents and attorneys in the matter of the above-identified proceeding to
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`prosecute said cancellation proceeding, to transact all business in the Patent and Trademark
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`Office and in the United States courts in connection with this proceeding, to sign its name to all
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`papers which may hereafter be filed in connection therewith, and to receive all communications
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`related to the same.
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`
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`4
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`

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`Dated: March 4, 2014
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`Respectfully submitted,
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`SUNSTAR AMERICAS, INC.
`
`
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`By: /s/ Larry L. Saret
`One of its Attorneys
`
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`
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`Charles A. Laff
`Larry L. Saret
`Gilberto E. Espinoza
`Paul R. Coble
`Michael Best & Friedrich LLP
`180 N. Stetson Avenue
`Suite 2000
`Chicago, IL 60601
`(312) 222-0800
`
`
`
`
`
`5
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`

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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on March 4, 2014, the foregoing Petition for
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`Cancellation was served upon Registrant’s Correspondent by depositing a copy of said
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`document in the U.S. mail in an envelope addressed to:
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`JOHN P. RYNKIEWICZ
`901 Fifteenth Street, N.W.
`Suite 700
`Washington, DC 20005
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`/s/ Larry L. Saret
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`Larry L. Saret, one of Petitioner’s Attorneys
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`

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`EXHIBIT A
`
`

`
`Trademarks > Trademark Electronic Search System (TESS)
`
`TESS was last updated on Wed Mar 5 03:10:42 EST 2014
`
`'55 Ftai~~~ N~+V'U5
`
`STiFEUG`t~lQ ~R~~ ~"c~i~a ~resa~vsstai
`
`SEAItCM UG BoT'au~t
`
`H~LJ'
`
`~ogout ~ Please logout when you are done to release system resources allocated for you.
`
`Record 1 out of 1
`
`return to TE'SS)
`
`(Use the "'Back" button of the lnte~rne# Brawler to
`
`HARD TO REACH PLACES
`Word Mark
`Goods and Services IC 021. US 002 013 023 029 030 033 040 050. G & S: toothbrushes. FIRST USE: 20080116
`FIRST USE IN COMMERCE: 20080116
`
`Standard Characters
`Claimed
`Mark Drawing Code (4) STANDARD CHARACTER MARK
`78632246
`Serial Number
`May 18, 2005
`Filing Date
`1A
`Current Basis
`Original Filing Basis 1 B
`Published for
`Opposition
`Registration Number 3593027
`March 17, 2009
`Registration Date
`(REGISTRANT) Johnson &Johnson CORPORATION NEW JERSEY One Johnson &
`Owner
`Johnson Plaza New Brunswick NEW JERSEY 089337001
`
`February 21, 2006
`
`(LAST LISTED OWNER) DR. FRESH, LLC LIMITED LIABILITY COMPANY DELAWARE
`6645 CABALLERO BOULEVARD BUENA PARK CALIFORNIA 90620
`
`Assignment
`Recorded
`Attorney of Record
`Prior Registrations
`Type of Mark
`Register
`Live/Dead Indicator
`~._...
`
`ASSIGNMENT RECORDED
`
`Jake D. Feldman
`1031482;1882255;2680863;AND OTHERS
`TRADEMARK
`PRINCIPAL
`LIVE
`
`3/5/2014
`
`

`
`EXHIBIT B
`
`

`
`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 1 of 10 PagelD #:1
`
`IN THE UNITED STATES DISTRICT COURT FOR THE
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`SUNSTAR AMERICAS, INC.,
`
`Plaintiff,v.
`
`DR. FRESH, LLC,
`
`Case No. 14-cv-1097
`
`Jury Trial Demanded
`
`Now comes Plaintiff Sunstar Americas, Inc. ("Sunstar") and for its Complaint against
`
`COMPLAINT
`
`Defendant, Dr. Fresh, LLC ("Dr. Fresh"), states as follows:
`
`Factual Background
`
`1.
`
`Sunstar is a corporation organized under the laws of the State of Delaware and
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`has its principal place of business at 4635 West Foster Avenue, Chicago, Illinois 60630.
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`Sunstar sells oral health care products to oral health care professionals and consumers.
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`Among Sunstar's more successful products are its GUM brand illuminated toothbrushes
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`marketed for children. These toothbrushes include a suction cup at the end opposite the
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`bristles. When a child pushes the suction cup end of the toothbrush against a surface, a light
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`within the toothbrush illuminates for a prescribed time period, indicating to the child how long
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`to brush.
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`2.
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`Upon information and belief, Dr. Fresh is a limited liability corporation
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`organized under the laws of the State of Delaware and has its principal place of business at
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`6645 Caballero Boulevard, Buena Park, California 90620.
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`Defendant.
`

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`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 2 of 10 PagelD #:2
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`3.
`
`U.S. Patent No. 8,079,109 ("the ` 109 Patent") is entitled "Illuminated
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`toothbrush" and was issued by the United States Patent and Trademark Office on December
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`20, 2011. A true and correct copy of the `109 Patent is attached as Exhibit A to this
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`Complaint.
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`4.
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`The ` 109 Patent is directed to an illuminated toothbrush that has timed
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`illumination.
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`5.
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`Sunstar is the assignee and rightful owner of the `109 Patent. A copy of the
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`assignment from the named inventors, Chad Misner and Dennis Eatherton, to Sunstar was
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`recorded in the United States Patent and Trademark Office on October 8, 2008, at ree1021646
`
`frame 0181.
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`6.
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`Dr. Fresh sells and offers for sale in the United States and in this judicial
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`district illuminated toothbrushes having a suction cup at one end under the FireflyOO
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`trademark. According to Dr. Fresh, "Each Firefly toothbrush lights up and flashes for 60
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`seconds, the dentist recommended time for kids to brush each row of teeth."
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`http://www.drfresh.com/products/firefly (last visited Jan. 20, 2014).
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`7.
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`Dr. Fresh markets its FireflyOO toothbrushes at http://fireflytoothbrush.com/.
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`The "Buy Now" link displays a web page that directs customers to online retailers supplied by
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`Dr. Fresh, such as Amazon.com and drugstore.com, and national retailers, such as Walmart,
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`Target, Walgreens, Toys-R-Us, and CVS pharmacy, that have retail stores throughout the
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`Chicagoland area. See http://fireflytoothbrush.com/buy-now/ (last visited Jan. 20, 2014). At
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`least two of these retailers, Target and Walgreens, sell Firefly toothbrushes in this judicial
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`district.
`
`2
`
`

`
`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 3 of 10 PagelD #:3
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`8.
`
`By letter dated September 27, 2013, Sunstar notified Dr. Fresh that its Firefly
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`toothbrushes infringed the ' 109 Patent. In a letter dated October 21, 2013, Dr. Fresh denied
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`infringement and asserted that the ' 109 Patent is invalid and unenforceable, all without
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`reasonable bases.
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`9.
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`During the time period between Sunstar's September 27, 2013, letter and Dr.
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`Fresh's October 21, 2013, response, Dr. Fresh sent a letter dated October 7, 2013, to Sunstar
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`accusing Sunstar of infringing U.S. Trademark Registration No. 3,593,027 for the mark
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`"HARD TO REACH PLACES" ("the `027 Mark"). A true and correct copy of the trademark
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`registration is attached as Exhibit B to this Complaint. Dr. Fresh demanded that Sunstar
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`"immediately remove the phrase `HARD TO REACH AREAS' from all [of Sunstar's]
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`toothbrush packaging and from all [of Sunstar's] advertising materials for these toothbrushes,"
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`and "immediately stop selling all toothbrushes bearing the phrase "HARD TO REACH
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`AREAS."' Dr. Fresh further demanded "an accounting of all products sold by [Sunstar]
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`bearing the phrase "HARD TO REACH AREAS" as well as an accounting of the number of
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`products bearing this phrase remaining in [Sunstar's] inventory." Dr. Fresh demanded a
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`response by October 15, 2013, and warned Sunstar that, if it did not receive a response by that
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`date, Dr. Fresh "will ...have no choice but to immediately pursue all [its] legal remedies."
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`10. On October 25, 2013, Sunstar responded to Dr. Fresh's October 7 letter,
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`denying any infringement of the `027 Mark and providing evidence that Sunstar had been
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`continuously using the accused phrase since considerably prior to Dr. Fresh's trademark
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`application filing date of 2005 or alleged later first use date.
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`11.
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`Dr. Fresh responded by letter of November 11, 2013, maintaining the
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`infringement claim. In a reply letter dated December 18, 2013, Sunstar reasserted that Dr.
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`

`
`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 4 of 10 PagelD #:4
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`Fresh's trademark claim is frivolous, pointed out that Sunstar has sold hundreds of millions of
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`units of its products in packaging bearing the accused phrase, and furnished additional
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`evidence showing Sunstar's usage of the accused phrase dating back to 1987, long before Dr.
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`Fresh's registration filing date or alleged first use. Dr. Fresh has failed to respond to Sunstar's
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`last letter.
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`Jurisdiction and Venue
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`12.
`
`This action arises under the patent laws of the United States 35 U.S.C. § 1 et
`
`seq. and the Declaratory Judgment Act, 28 U.S.C. § 2201(a). This Court has subject matter
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`jurisdiction over this action under 28 U.S.C. § 1331, §1338(a), and § 2201(a).
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`13.
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`This Court has personal jurisdiction over Dr. Fresh because Dr. Fresh has
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`transacted business and committed tortious acts within Illinois by the acts complained of
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`herein.
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`14.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) and § 1400(b)
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`because Dr. Fresh resides within the Northern District of Illinois as residence is defined in 28
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`U.S.C. § 1391(c).
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`15. A justiciable controversy exists between Sunstar and Dr. Fresh as to whether
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`Sunstar is infringing or has infringed the `027 Mark.
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`Claims
`
`Count Y —Patent Infringement
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`16.
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`Sunstar restates and incorporates by reference the allegations in paragraphs 1
`
`through 15 of this Complaint as if fully set forth herein.
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`17.
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`Defendant Dr. Fresh, by itself, and through its subsidiaries, affiliates, and/or
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`agents has been, and is, infringing the `109 Patent by offering to sell and selling in the United
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`States and in this district illuminated toothbrushes under the trademark Firefly. Dr. Fresh's
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`4
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`

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`Case: 1.:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 5 of 10 PagelD #:5
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`infringing products include the illuminated toothbrushes shown in the attached Exhibit C, both
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`of which are on sale in the Chicago, IL area. These products infringe at least claim 1 of the
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`' 109 Patent. Unless enjoined by the Court, Dr. Fresh will continue to infringe the `109 Patent.
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`18.
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`Dr. Fresh's infringement of the `109 Patent has injured Sunstar, and Sunstar is
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`entitled to recover damages adequate to compensate for such infringement pursuant to 35
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`U.S.C. § 284.
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`19.
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`The continued infringement by Dr. Fresh has been willful and will irreparably
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`harm Sunstar unless the Court enters an injunction prohibiting further infringement of the `109
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`Patent.
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`Count 2 —Declaratory Judgment Action of No Infringement of Trademark
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`20.
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`Sunstar restates and incorporates by reference the allegations in paragraphs 1
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`through 15 of this Complaint as if fully set forth herein.
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`21.
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`Sunstar uses the phrase "Hard-to-Reach-Areas" on its webpage
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`(http://www.gumbrand.com/best-toothbrushes-for-cleaning-teeth/) and the phrase "For hard-
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`to-reach areas" on its toothbrush packaging. A true and correct copy of the webpage at
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`http://www.gumbrand.com/best-toothbrushes-for-cleaning-teeth/ (as visited on Jan. 20, 2014)
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`is attached as Exhibit D to this Complaint. Additional usages appear in Sunstar's catalogs and
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`on packaging for its products.
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`22.
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`One example of Sunstar's use of the phrase "Hard-to-Reach Areas" appears
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`below, taken from Sunstar's webpage:
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`5
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`

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`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 6 of 10 PagelD #:6
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`s
`
`+~
`
`r
`
`~~
`
`t 1►
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`+~ r '~°*
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`x
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`23.
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`The lack of prominence, the location of the phrase, and the descriptive context
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`demonstrate that Sunstar is using "Hard-to-Reach Areas" on its webpage in anon-trademark
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`and descriptive sense.
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`24. On Sunstar's toothbrush packaging, the phrase "For hard-to-reach areas"
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`appears in letters smaller and less prominently than Sunstar's trademarks G•U•M and
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`SUNSTAR, as shown in the figure below. Sunstar's use of the phrase "For hard-to-reach
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`areas" merely describes a function and purpose of Sunstar's toothbrushes and, therefore, is a
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`descriptive, not a trademark, use.
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`6
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`

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`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 7 of 10 PagelD #:7
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`25.
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`Sunstar has been using continuously the accused phrase for many years before
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`Dr. Fresh's alleged first use of its trademark, and continuously thereafter, in connection with
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`millions of toothbrushes sold throughout the United States.
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`26.
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`Sunstar's phrases differ from Dr. Fresh's mark, HARD TO REACH PLACES,
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`among other reasons, by omitting the word PLACES and adding the words "areas," "For," and
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`hyphens. Sunstar's phrase differs from Dr. Fresh's mark in appearance, sound, meaning and
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`commercial impression and is not likely to cause confusion.
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`7
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`

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`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 8 of 10 PagelD #:8
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`27.
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`Sunstar's usages of the phrases "Hard-to-Reach-Areas" and "For hard-to-reach
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`areas" are non-infringing because they constitute fair use of a descriptive phrase, i.e., the "use
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`of the name, term or device charged to be an infringement is a use, otherwise than as a mark,
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`...which is descriptive of and used fairly and in good faith only to describe the goods ...."
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`15 U.S.C. § 1115(b)(4).
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`28.
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`Dr. Fresh has unreasonably delayed asserting its claim of trademark
`
`infringement since at least 2005. This delay was not excusable. Both before and since that
`
`time, Sunstar has made substantial use of the accused phrase and investment in packaging and
`
`advertising for products bearing this or like phrases, all without notice of Dr. Fresh's alleged
`
`claim and for the purpose of describing an important function of Sunstar's products. Any
`
`interference with Sunstar's continued use of this phrase, therefore, would cause Sunstar undue
`
`prejudice. Dr. Fresh's claim is barred by laches, estoppel, or the applicable statute of
`
`limitations.
`
`Count 3 —Declaratory Judgment Action of Invalidity of Trademark
`
`29.
`
`Sunstar restates and incorporates by reference the allegations in paragraphs 1
`
`through 15 and 21 through 28 of this Complaint as if fully set forth herein.
`
`30.
`
`Sunstar's usage of the phrases "Hard-to-Reach Areas," "For hard-to-reach
`
`areas," and slight variations of those phrases pre-dates the 2005 filing date of Dr. Fresh's U.S.
`
`Trademark Registration No. 3,593,027, which alleges a subsequent date of first use of January
`
`16, 2008, and Sunstar has continued such usage for at least 25 years.
`
`31. On information and belief, others have used, and continue to use, the phrase
`
`"Hard-to-Reach Areas" and slight variations or colorable imitations of that phrase for similar
`
`

`
`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 9 of 10 PagelD #:9
`
`or related products since prior to Dr. Fresh's trademark application filing date and its date of
`
`first use.
`
`32.
`
`The phrase "hard to reach places" is used by Dr. Fresh, Sunstar and others to
`
`describe a function of the toothbrush products in connection with which they are used. As
`
`such, this phrase is merely descriptive, generic and/or functional within the meaning of 15
`
`U.S.C. 1052(e), and does not identify Dr. Fresh's goods or distinguish them from the goods of
`
`others.
`
`33.
`
`For the foregoing reasons, Dr. Fresh's alleged trademark HARD TO REACH
`
`PLACES and U.S. Trademark Registration No. 3,593,027 therefore are invalid.
`
`Prayer for Relief
`
`WHEREFORE, Sunstar prays for judgment and relief as follows:
`
`a. Judgment that the ` 109 Patent is infringed by Defendant Dr. Fresh;
`
`b. Judgment that Dr. Fresh's acts of patent infringement are willful;
`
`c. A permanent injunction enjoining Dr. Fresh, its officers, agents, servants,
`
`employees, subsidiaries and affiliated companies, and those persons acting in
`
`active concert or participation therewith, from engaging in the aforesaid unlawful
`
`acts of patent infringement;
`
`d. An award of damages arising out of Dr. Fresh's acts of patent infringement,
`
`together with pre judgment and post judgment interest;
`
`e. A finding that this an exceptional case under 35 U.S.C. § 285;
`
`f. Judgment that the damages so adjudged against Dr. Fresh be trebled pursuant to
`
`35 U.S.C. § 284;
`
`g. A declaration that U.S. Trademark Registration No. 3,593,027 and the mark
`
`HARD TO REACH PLACES are invalid and cancelling the registration;
`
`E
`
`

`
`Case: 1:14-cv-01097 Document #: 1 Filed: 02/14/14 Page 10 of 10 PagelD #:10
`
`h. A declaration that Sunstar has not infringed, and is not infringing, U.S. Trademark
`
`Registration No. 3,593,027 or the mark HARD TO REACH PLACES;
`
`i. A declaration that Sunstar's use of the phrases "Hard-to-Reach Areas" and "For
`
`hard-to-reach areas," and any similar phrases, constitute descriptive and fair use;
`
`j. A declaration that there is no likelihood of confusion between Dr. Fresh's mark,
`
`HARD TO REACH PLACES, and Sunstar's use of the phrases "Hard-to-Reach
`
`Areas," "For hard-to-reach areas," and any similar phrases;
`
`k. An award of Sunstar's reasonable attorneys' fees, costs and expenses incurred in
`
`connection with this action; and
`
`1. Such further and additional relief as the Court deems just and proper.
`
`Sunstar demands a jury trial on all issues and claims so triable.
`
`Jury Demand
`
`Dated: February 14, 2014
`
`Respectfully submitted,
`
`/s/ Charles A. Laff
`Charles A. Laff
`calaff@michaelbest.com
`Larry L. Saret
`l lsaret@michaelbest.com
`Gilberto E. Espinoza
`geespinoza@michaelbest.com
`Paul Coble
`pcoble@michaelbest.com
`MICHAEL BEST & FRIEDRICH LLP
`Two Prudential Plaza
`180 N. Stetson Avenue, Suite 2000
`Chicago, Illinois 60601-6710
`Telephone: 312.222.0800
`Facsimile: 312.222.0818
`
`10
`
`

`
`Case: 1:14-cv-01097 Document #: 1-~I~~~II~~~l~~q~~ ~il~l~~~~pl~.u~~lll
`III
`~I
`uSoo8~o~9io~B2
`
`~~~~ United States Patent
`Misner et al.
`
`~io~ Patent No.:
`(ash Date of Patent:
`
`us s,o~~,lo~ s2
`Dec. 20, 2011
`
`(54) ILLUMINATED TOOTHBRUSH
`
`(75) Inventors: Chad Mlsner, Arlington Heights, IL
`(US); Dennis Eatherton, Barrington, IL
`(US)
`
`(73) Assignee: Sunstar Americas, Inc., Chicago, IL
`~S~
`
`*
`( ) Notice:
`
`Subject to any disclaimer, the term of this
`patent is extended or adjusted under 35
`U.S.C. 154(b) by 623 days.
`
`(21) Appl. No.: 12/202,937
`
`22( ) Filed:
`
`Se 2 2008
`p• s
`
`(65)
`
`Prior Publication Data
`
`US 2010/0050357 Al
`
`MaY. 4, 2010
`
`(51~
`
`Int. Cl.
`(2006.01)
`A46B 15/00
`2006.01
`A46B S/00
`(52) U.S. CI . ......................... 15/105; 15/167.1; 15/143.1
`(58) Field of Classification Search .................... 15/105,
`15/143, 167.1, 143.1; 248/110, 205.5, 108,
`248!109, 205.8, 205.9, 206.2, 683; A46B 5/00,
`A46B 1 S/00
`See application file for complete search history.
`
`(56)
`
`Rcfcrences C[ted
`
`U.S. PATENT DOCUMENTS
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`5,339,479 A * 8/1994 Lyman ............................ 15/105
`
`5,369,835 A " 12/1994 Clazke ......................... 15/167.1
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`5,372,501 A * 12/1994 Shalvi ............................. 433/32
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`6,029,304 A
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`6,106,294 A
`(Continued)
`
`Primary Examiner —Monica Carter
`Assistant Examiner —Michael Jennings
`(~4) Attorney, Agent, or Firm —Michael Best &Friedrich
`LLP
`
`ABSTRACT
`(57)
`The invention provides a toothbrush having a handle portion
`defining a longitudinal axis, a head portion coupled to the
`handle portion having a plurality of bristles extending there-
`from, a light source disposed within at least one of the handle
`portion and the head portion, and a base portion including a
`suction cup configured to removably adhere to a support
`surface wherein the suction cu includes an actuator confi
`p
`S'
`ured to actuate the light source.
`
`16 Claims, 2 Drawing Sheets
`
`Sunstar v, Dr. Fresh
`Complaint
`Ex. A
`
`

`
`Case: 1:14-cv-01097 Document #: 1-1 Filed: 02/14/14 Page 2 of 6 PagelD #:12
`
`US 8,079,109 B2
`Page 2
`
`U.S. PATENT DOCUMENTS
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`6,202,242 B1 * 3/2001 Salmon et al .................. 15/22.1
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`6,338,176 B1 *
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`6,341,400 B1 "'
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`6,895,625 B2
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`
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`2008/0028553 Al
`
`* cited by examiner
`
`

`
`Case: 1:14-cv-01097 Document #: 1-1 Filed: 02/14/14 Page 3 of 6 PagelD #:13
`
`U.S. Patent
`
`Dec. 20, 2011.
`
`Sheet 1 of 2
`
`US 8,079,109 B2
`
`Or
`
`1-
`
`

`
`Case: 1:14-cv-01097 Document #: 1-1 Filed: 02/14/14 Page 4 of 6 PagelD #:14
`
`U.S. Patent
`
`Dec. 20, 2011
`
`Sheet 2 of 2
`
`US 8,079,109 B2
`
`N l
`
`l.
`
`0
`
`c
`
`

`
`Case: 1:14-cv-01097 Document #: 1-1 Filed: 02/14/14 Page 5 of 6 PagelD #:15
`
`US 8,079,109 B2
`
`ILLUMINATGll TOOTHBRUSH
`
`BACKGROUND
`
`The present invention relates to a dental cleaning device,
`such as a toothbrush. More specifically, the present invention
`relates to an illuminated toothbrush having timed illumina-
`tion.
`Known illuminated toothbrushes typically employ a button
`or switch on the grip portion of the handle. Actuation of the
`button or switch begins a timed period of illumination that
`generally corresponds to adentist-recommended brushing
`time period for adequate cleaning of a user's teeth.
`
`SUMMARY
`
`In one embodiment, the invention provides a toothbrush
`having a handle portion defining a l