Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA712847
`ESTTA Tracking number:
`12/05/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92062506
`Defendant
`Rafael N Aguila DBA Edge Systems
`RAFAEL N AGUILA
`5338 SW 57th Avenue
`SOUTH MIAMI, FL 33155
`UNITED STATES
`raguila@gmail.com
`Motion to Suspend for Civil Action
`Rafael N. Aguila
`raguila@gmail.com
`/Rafael N. Aguila/
`12/05/2015
`TTAB - MOTION FOR SUSPENSION OF PROCEEDINGS - beta-
`hd.pdf(1065609 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`Edge Systems LLC,
`
`
`Petitioner,
`
`
`v.
`
`Rafael N. Aguila DBA Edge Systems,
`
`
`Respondent.
`
`_____________________________________
`
`
`
`MOTION FOR SUSPENSION OF PROCEEDINGS
`
`Pursuant to 37 CFR §2.117 and Trademark Trial and Appeal Board Manual of Procedure
`
`
`
`(TBMP) Chapter 510.02(a), Respondent respectfully requests that the above-captioned
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`cancellation proceeding be suspended pending final determination in a civil litigation pending in
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`United States District Court for the Southern District of Florida, Civil Action No. 1:14-CV-
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`24517-KMM. Attached hereto is a copy of the Complaint for Trademark Infringement filed on
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`November 26th, 2014 and served on Respondent/Defendant on December 19, 2014. See Exhibit
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`A. The determination of both priority use and fraud between Respondent/Defendant’s mark and
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`Petitioner/Plaintiff’s mark is central to both the cancellation proceeding and the civil litigation.
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`As such, Respondent states that the pending civil litigation will have a direct bearing on the
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`cancellation proceeding. See 37 CFR §2.117(a); General Motors Corp. v. Cadillac Club Fashions
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`Inc., 22 USPQ2d 1933 (TTAB 1992). Moreover, given that the cancellation proceeding is still in
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`the initial phase and that there are no other pending motions before this Board by either party,
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`favorable action on this motion is respectfully requested.
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`
`
`1
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`)
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`Cancellation No. 92062506
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`Registration No. 4768711
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`Mark: BETA-HD
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`) ) ) ) ) ) ) ) )
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`

`

`December 5th, 2015
`
`Respectfully Submitted,
`
`Rafael N. Aguila, pro se
`5338 SW 57th AVENUE
`SOUTH MIAMI, FL 33155
`UNITED STATES
`raguila@gmail.com
`305-508-5053
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`I hereby certify that I served copies of the foregoing MOTION FOR SUSPENSION OF
`PROCEEDINGS upon the Petitioner’s counsel of record by depositing a copy thereof in the
`United States Mail, first-class postage prepaid, on December 5, 2015, addressed as follows:
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`Lauren Keller Katzenellenbogen
`Ali S. Razai
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`UNITED STATES
`
`
`
`
`
`
`Rafael N. Aguila, pro se
`5338 SW 57th AVENUE
`SOUTH MIAMI, FL 33155
`UNITED STATES
`raguila@gmail.com
`305-508-5053
`
`
`
`
`
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`
`2
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`

`

`EXHIBIT A
`EXHIBIT A
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`3
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`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 1 of 21
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`CASE NO. __________________
`
`
`
`EDGE SYSTEMS LLC,
`a California limited liability company,
`and AXIA MEDSCIENCES, LLC,
`a Delaware limited liability company,
`
`
`Plaintiffs,
`
`
`v.
`
`
`
`Rafael Newton Aguila, a/k/a Ralph Aguila,
`an individual, d/b/a Hydradermabrasion Systems,
`
`Defendant.
`
`
`
`_________________________________________/
`
`
`COMPLAINT
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`Plaintiffs Edge Systems LLC (“Edge”) and Axia MedSciences, LLC (“Axia”)
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`(collectively, “Plaintiffs”), for their Complaint against Defendant Rafael Newton Aguila, a/k/a
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`Ralph Aguila, d/b/a Hydradermabrasion Systems (“Aguila”), hereby allege as follows:
`
`THE PARTIES
`
`1.
`
`Edge is a California limited liability company organized and existing under the
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`laws of the state of California, having a principal place of business at 2277 Redondo Avenue,
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`Signal Hill, California, 90755, which owns rights in the trademarks, service marks and trade
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`names at issue in this lawsuit (“Edge’s MARKS”).
`2.
`
`Edge manufactures spa and skin treatment products, and hydradermabrasion
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`systems, and sells and distributes them throughout the United States, including in this Judicial
`
`District.
`3.
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`Axia is a Delaware limited liability company having a principal place of business
`
`at 23 Hallmark Circle, Menlo Park, California, 94025.
`4.
`
`Axia is the owner of the patents at issue in this case, and Edge is the exclusive
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`licensee of those patents.
`
`-1-
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`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 2 of 21
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`5.
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`Upon information and belief, Aguila is an individual residing in this Judicial
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`District, having an address of 5338 SW 57th Avenue South Miami, Florida 33155.
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`JURISDICTION AND VENUE
`
`6.
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`Upon information and belief, Defendant conducts business throughout the United
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`States, including in this Judicial District.
`7.
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`This Court has personal jurisdiction over Defendant because Defendant has a
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`continuous, systematic, and substantial presence within this judicial district including by selling
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`and offering for sale infringing products in this Judicial District and selling into the stream of
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`commerce knowing that such products would be sold in this state and Judicial District.
`8.
`
`Venue is proper in this Judicial District pursuant to 28 U.S.C. §§ 1391(b) and (c),
`
`and 1400(b), and by Plaintiffs’ choice of venue.
`9.
`
`This Court has original subject matter jurisdiction over the claims in this action
`
`pursuant to 28 U.S.C. §§ 1331 and 1338 because Plaintiffs’ claims for trademark infringement,
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`false designation of origin, unfair competition and patent infringement pursuant to 15 U.S.C. §§
`
`1114 and 1125(a), and 35 U.S.C. § 271 arise under the laws of the United States. This Court has
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`supplemental jurisdiction over the claims in this Complaint which arise under state statutory and
`
`common law pursuant to 28 U.S.C. § 1367(a) because the state law claims are so related to the
`
`federal claims that they form part of the same case or controversy and derive from a common
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`nucleus of operative facts.
`
`GENERAL ALLEGATIONS
`
`Plaintiff Edge’s Products and Associated Intellectual Property Rights
`
`
`
`10.
`
`Edge designs and sells skin health devices, including spa and skin treatment
`
`products and hydradermabrasion systems.
`11.
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`Edge is at the forefront of the aesthetic industry and has worked continuously to
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`bring new technology and breakthrough processes to the market. Edge has grown to become an
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`iconic brand and is now widely recognized throughout the United States.
`12.
`
`Edge’s premier product is its revolutionary HydraFacial MD® hydradermabrasion
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`system (the “Edge Machine”), an innovative non-ablative facial rejuvenation system. The Edge
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`Machine bears unique and distinctive trade dress which consists of the overall design and
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`configuration of the product, as shown in the photograph below (the “Edge Trade Dress”).
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`
`
`-2-
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`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 3 of 21
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`THE EDGE MACHINE
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`13.
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`As a result of its highly acclaimed, innovative skin health devices and technology,
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`Edge has grown at an impressive pace.
`14.
`
`Edge diligently protects its intellectual property rights in its products and
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`technology by obtaining patents in the U.S. and around the world. Edge also filed and registered
`
`numerous federal trademarks in the United States that are used in connection with its products
`
`and services.
`15.
`
`Edge is the owner of U.S. Trademark Registration No. 2,992,734, which is
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`registered with the United States Patent and Trademark Office (“U.S.P.T.O”) on September 6,
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`2005 on the Principal Register for the mark THE EDGE SYSTEM. Trademark Registration No.
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`2,992,734 is associated with the following goods: Medical apparatus, namely, systems comprised
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`primarily of a vacuum source and hand piece used for medical body care treatments,
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`microdermabrasion, and massage therapy. A true and correct copy of the certificate of
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`registration of Trademark Registration 2,992,734 is attached hereto as Exhibit 1.
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`-3-
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`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 4 of 21
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`16.
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`Edge is the owner of U.S. Trademark Registration No. 3,500,086, which was
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`registered with the U.S.P.T.O on September 9, 2008 on the Principal Register for the mark
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`HYDROPEEL. Trademark Registration No. 3,500,086 is associated with the following goods:
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`Medical apparatus and instruments for resurfacing and nourishing tissue. A true and correct
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`copy of the certificate of registration of Trademark Registration 3,500,086 is attached hereto as
`
`Exhibit 2.
`17.
`
`Edge is the owner of U.S. Trademark Registration No. 4,114,466, which was
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`registered with the U.S.P.T.O on March 20, 2012 on the Principal Register for the mark
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`VORTEX-FUSION. Trademark Registration No. 4,114,466 is associated with the following
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`goods: Microdermabrasion apparatus. A true and correct copy of the certificate of registration of
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`Trademark Registration 4,114,466 is attached hereto as Exhibit 3. The marks registered in U.S.
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`Trademark Registration Nos. 2,992,734, 3,500,086, and 4,114,466 shall hereinafter be referred to
`
`collectively as the Edge Registered Marks.
`18.
`
`All of the Edge Registered Marks have been continuously used in U.S. commerce
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`and registered on the Principal Register of the U.S.P.T.O. Trademark Registration Nos.
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`2,992,734 and 3,500,086 have been registered on the Principal Register of the U.S.P.T.O. for
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`more than five years from the issuance of the registrations and are the subject of Declaration
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`filings with the U.S.P.T.O. under Section 15 of the Lanham Act, 15 U.S.C. § 1065, and are
`
`therefore deemed to be incontestable.
`19.
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`Since at least as early as 1999, Edge has continuously used variations of its
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`chevron-styled “E” logo formed by three triangles (“Chevron E-Logo”).
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` 1999-2011
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`2011-PRESENT
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`20.
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`Edge has continuously used its Chevron E-Logo in interstate commerce in
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`connection with the advertisement, promotion and sale of the Edge’s spa and skin treatment
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`products, including the Edge Machine.
`21.
`
`Edge is the owner of common law rights in the marks EDGE SYSTEMS, ACTIV-
`
`4, ANTIOX+, ANTIOX-6, BETA-HD, DERMABUILDER, and GLYSAL.
`
`-4-
`
`

`

`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 5 of 21
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`22.
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`Since its founding in 1997, Edge has continuously used the EDGE SYSTEMS
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`mark in interstate commerce to identify itself and in connection with the advertisement,
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`promotion and sale of its spa and skin treatment products, including the Edge Machine.
`23.
`
`Edge has continuously used the marks ACTIV-4, ANTIOX-6, and BETA-HD
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`since at least as early as 2006 in connection with the advertisement, promotion and sale of its spa
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`and skin treatment products.
`24.
`
`Edge has continuously used the marks DERMABUILDER and GLYSAL since at
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`least as early as 2010 in connection with the advertisement, promotion and sale of its spa and
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`skin treatment products.
`25.
`
`Edge has continuously used the mark ANTIOX+ since at least as early as 2013 in
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`connection with the advertisement, promotion and sale of its spa and skin treatment products.
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`The Chevron E-Logo and the marks, EDGE SYSTEMS, ACTIV-4, ANTIOX+, ANTIOX-6,
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`BETA-HD, DERMABUILDER, and GLYSAL marks shall hereinafter be collectively referred to
`as the “EDGETM Marks.”
`26.
`Edge uses its EDGETM Marks on its products, letterhead, envelopes, business
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`cards, company banners, website, email signatures, pens, mugs, t-shirts, collared shirts, and
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`windbreakers.
`27.
`
`Edge advertises its products and services at trade shows, seminars, and through
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`trade publications, social media, search engine optimization, emails, and webinars. In the past
`
`five years alone, Edge has spent approximately $4 million advertising its products and services
`in connection with the Edge Registered Mark, the EDGETM Marks and the Edge Trade Dress.
`28.
`
`In addition to Edge’s own advertising, important national media outlets have
`
`featured Edge and its products and reinforced the public’s association between Edge and Edge’s
`Registered Marks, the EDGETM Marks and the Edge Trade Dress. A sample of such media
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`includes: People Magazine, Allure, The Hollywood Reporter, Tampa Bay Times, New Beauty,
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`OK! Magazine, Star Magazine, Elle Beauty Book, Harper’s Bazaar Magazine, Essence, Simply
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`Her, Examiner.com, and In Style.
`29.
`
`Edge’s products have also been shown on Good Day L.A., The Doctors, KLBK
`
`News, Great Day Houston, and Real Housewives of Beverly Hills.
`30.
`
`Edge’s products have received widespread public attention and acclaim, including
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`being awarded the “Best Equipment for the Face” by LNE & Spa in 2011 and 2012.
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`-5-
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`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 6 of 21
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`31.
`Promotional materials and advertisements of Edge’s products that include Edge’s
`Registered Marks and EDGETM Marks and prominently display the Edge Trade Dress have been
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`distributed and are recognized by consumers and are famous throughout the United States. As a
`result of Edge’s substantial efforts, Edge’s Registered Marks, EDGETM Marks and the Edge
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`Trade Dress have become extremely valuable to Edge as an identifier of the company, its
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`products, and the substantial goodwill Edge has earned in the market. Edge’s Registered Marks,
`EDGETM Marks and the Edge Trade Dress have become synonymous in the consumer’s mind
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`with Edge.
`32.
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`Edge sells its products to many consumers, including dermatologists, plastic
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`surgeons, and health spas.
`33.
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`Edge products and services are offered at more than 2,500 locations throughout
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`the United States, including all 50 states.
`34.
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`Edge has continuously operated a website since 1999, displaying Edge’s
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`trademarks in connection with the sales and promotion of its product, and Edge’s website has
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`reached over 56,000 individual users since July 2013.
`35.
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`Edge has a sales force of over 60 employees in the United States covering each of
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`the 50 states. Edge has been selling products in the state of Florida since 2000, and has sold
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`products bearing the Edge Trade Dress in Florida since at least as early as 2010. Over the last
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`five years, Edge has generated over $93 million in revenue, including over $48 million in
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`revenue from sales of the Edge Machine, which bears the Edge Trade Dress.
`36.
`By virtue of the extensive usage, advertising, promotion, and media exposure of
`the Edge Registered Marks, EDGETM Marks and the Edge Trade Dress, these marks and trade
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`dress have become famous and well-known among the trade, the public, and consumers in the
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`United States, have acquired significant goodwill and public recognition, and have become
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`strong source identifiers of Edge’s goods and services and are entitled to a wide scope of
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`protection.
`37.
`Edge has promoted its goods and services under the Edge Registered Marks, the
`EDGETM Marks, and the Edge Trade Dress, and Edge’s innovative technology in its products are
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`also protected by utility patents, including United States Patent Nos. 6,299,620, 6,641,591,
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`7,678,120, 7,789,886, 8,066,716, and 8,337,513 (collectively, the “patents-in-suit”).
`
`-6-
`
`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 7 of 21
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`38.
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`On October 9, 2001, U.S. Patent No. 6,299,620 (“the ’620 Patent”), entitled
`
`“INSTRUMENTS AND TECHNIQUES FOR INDUCING NEOCOLLAGENESIS IN SKIN
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`TREATMENTS,” was duly and legally issued by the United States Patent and Trademark
`
`Office. A copy of the ’620 Patent is attached hereto as Exhibit 6. Edge is the exclusive licensee
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`of the ’620 Patent.
`39.
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`On November 4, 2003, U.S. Patent No. 6,641,591 (“the ’591 Patent”), entitled
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`“INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL
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`LAYERS,” was duly and legally issued by the United States Patent and Trademark Office. A
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`copy of the ’591 Patent is attached hereto as Exhibit 7. Edge is the exclusive licensee of the ’591
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`Patent.
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`40.
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`On March 16, 2010, U.S. Patent No. 7,678,120 (“the ’120 Patent”), entitled
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`“INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL
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`LAYERS,” was duly and legally issued by the United States Patent and Trademark Office. A
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`copy of the ’120 Patent is attached hereto as Exhibit 8. Edge is the exclusive licensee of the ’120
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`Patent.
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`41.
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`On September 7, 2010, U.S. Patent No. 7,789,886 (“the ’886 Patent”), entitled
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`“INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL
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`LAYERS,” was duly and legally issued by the United States Patent and Trademark Office. A
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`copy of the ’886 Patent is attached hereto as Exhibit 9. Edge is the exclusive licensee of the ’886
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`Patent.
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`42.
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`On November 29, 2011, U.S. Patent No. 8,066,716 (“the ’716 Patent”), entitled
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`“INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL
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`LAYERS,” was duly and legally issued by the United States Patent and Trademark Office. A
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`copy of the ’716 Patent is attached hereto as Exhibit 10. Edge is the exclusive licensee of the
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`’716 Patent.
`43.
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`On December 25, 2012, U.S. Patent No. 8,337,513 (“the ’513 Patent”), entitled
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`“INSTRUMENTS AND TECHNIQUES FOR CONTROLLED REMOVAL OF EPIDERMAL
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`LAYERS,” was duly and legally issued by the United States Patent and Trademark Office. A
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`copy of the ’513 Patent is attached hereto as Exhibit 11. Edge is the exclusive licensee of the
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`’513 Patent.
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`-7-
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`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 8 of 21
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`44.
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`Edge has provided proper and sufficient notice to the public that its products are
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`patented under each of the patents-in-suit by marking its products pursuant to 35 U.S.C. § 287.
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`Defendant’s Infringing Activities
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`45.
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`In October, 2014, Edge was surprised to learn that one of its main competitors,
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`Lumenis, was offering what appeared to be a copycat version of the Edge Machine on the
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`website www.hydradermabrasion.com (the “Website”). When Edge contacted Lumenis, it
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`learned that Lumenis was just as surprised by the Website. After further evaluation, Edge and
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`Lumenis both learned that the Website was actually registered to the Defendant. Upon
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`information and belief, Defendant was using Lumenis’ trade name and trademarks to advertise
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`its Hydradermabrasion MD machine (the “Accused Product”).
`46.
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`On or about October 27, 2014, Edge sent the Defendant a cease and desist letter
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`and asked that it stop infringing the patents-in-suit.
`47.
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`Upon information and belief, Lumenis separately asked that Defendant stop using
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`its trade name and trademarks.
`48.
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`Soon thereafter, Defendant changed its Website. Defendant now uses the Website
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`to blatantly pass itself off as Edge. The Website adopts Edge’s name and misappropriates the
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`Edge Marks to sell the Accused Product. Defendant has gone to great lengths to assume Edge’s
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`identity, including filing its own trademark applications for the mark EDGE SYSTEMS.
`49.
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`On November 1, 2014, Defendant filed a Trademark/Service Mark Application
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`with the United States Patent & Trademark Office for the mark “Edge Systems (stylized and/or
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`with design).” The application was assigned Serial No. 86442086 (the “’086 Application”). The
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`’086 Application claims a date of First Use in Commerce of March 21, 1996. The ’086
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`Application was filed with a declaration pursuant to 15 U.S.C. § 1051(a) signed by Rafael N.
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`Aguila (Defendant), affirming the truth of all statements made in the application. Upon
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`information and belief, Defendant’s declaration is fraudulent.
`50.
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`Upon information and belief, Defendant has also started using the website
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`www.edge-systems.com (the “Website II”)—which incorporates Edge’s trade name in the
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`domain name—to advertise the same infringing material. Shown below is a screen shot of
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`Defendant’s new homepage, which appears on both the Website and the Website II.
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`-8-
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`

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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 9 of 21
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`DEFENDANT’S WEBSITE
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`51.
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`Upon information and belief, at least one of Defendant’s “Regional Sales
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`Managers” passes himself off as being affiliated with Edge and even includes “Edge Systems” in
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`the signature lines of his emails.
`52.
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`Upon information and belief, Defendant’s receptionist greets callers as having
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`called “Edge Systems.”
`53.
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`Defendant’s actions have had a profound and confusing effect on the market. A
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`customer that purchased one of Defendant’s knock-off machines even approached Edge seeking
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`training for what she believed was an authentic Edge product.
`54.
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`Defendant has even confused some of Edge’s seasoned employees as to its
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`affiliation with Edge.
`55.
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`Defendant’s Accused Product, as advertised on the Website and Website II,
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`copies every aspect of the Edge Machine, including the Edge Trade Dress.
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`-9-
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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 10 of 21
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` THE EDGE MACHINE
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` ACCUSED PRODUCT
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`56.
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`Defendant is providing Defendant’s products and services under trademarks, trade
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`names, and/or service marks, including the mark, which is confusingly similar to Edge’s
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`Chevron E-Logo.
`57.
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`Defendant is providing Defendant’s products and services under trademarks, trade
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`names, and/or services marks, including the mark EDGE SYSTEMS.
`58.
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`Defendant’s EDGE SYSTEMS mark copies Edge’s trade name and is virtually
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`identical to Edge’s federally registered mark THE EDGE SYSTEM.
`59.
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`Defendant is providing Defendant’s products and services under trademarks, trade
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`names, and/or services marks, including the mark HYDRAPEEL.
`60.
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`Defendant’s HYDRAPEEL mark is virtually identical to Edge’s federally
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`registered mark HYDROPEEL.
`61.
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`Defendant is providing Defendant’s products and services under trademarks, trade
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`names, and/or services marks, including the mark CYCLONIC-FUSION.
`62.
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`Defendant’s CYCLONIC-FUSION mark is confusingly similar to Edge’s
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`federally registered VORTEX-FUSION mark.
`63.
`64.
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`Defendant’s ACTIV-4 mark is identical to Edge’s common law mark ACTIV-4.
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`Defendant’s ANTIOX-PLUS mark is virtually identical to Edge’s common law
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`mark ANTIOX+.
`65.
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`Defendant’s ANTIOX-6 mark is identical to Edge’s common law mark ANTIOX-
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`6.
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`HD.
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`66.
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`Defendant’s BETA-HD mark is identical to Edge’s common law mark BETA-
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`-10-
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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 11 of 21
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`67.
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`Defendant’s DERMABUILDER mark is identical to Edge’s common law mark
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`DERMABUILDER.
`68.
`69.
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`Defendant’s GLYSAL mark is identical to Edge’s common law mark GLYSAL.
`Defendant infringes the Edge Registered Marks, EDGETM Marks and Edge Trade
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`Dress in an attempt to falsely associate its products and services with Edge or to otherwise trade
`upon Edge’s valuable reputation and customer goodwill in Edge’s Registered Marks, EDGETM
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`Marks and Edge Trade Dress and high quality products sold in connection with these trademarks.
`70.
`Edge did not consent to Defendant’s use of the Edge Registered Marks, EDGETM
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`Marks and Edge Trade Dress, or any other feature of Edge’s products or services that help
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`identify it to consumers.
`71.
`Defendant’s use of the Edge Registered Marks, EDGETM Marks, and Edge Trade
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`Dress is designed and intended to cause confusion, mistake or deception as to the source of
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`Defendant’s products and services, and has caused actual confusion and mistake, which has
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`deceived consumers into believing that Defendant’s products and services are Edge’s products
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`and services.
`72.
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`Edge is informed and believes, and thereon alleges, that it is Defendant’s purpose
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`to cause consumers and potential customers to believe that Defendant’s products and services are
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`associated with Edge when in truth and fact they are not.
`73.
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`As a direct and proximate result of Defendant’s actions, Defendant has created a
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`likelihood of injury to Edge’s business reputation and goodwill, caused a likelihood of consumer
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`confusion, mistake and deception as to the source of origin or relationship of Edge’s and
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`Defendant’s goods and services, and has otherwise competed unfairly with Edge by unlawfully
`trading on and using Edge’s Registered Marks, EDGETM Marks and Edge Trade Dress without
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`Edge’s permission or consent.
`74.
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`Edge is informed and believes, and thereon alleges, that Defendant’s wrongful
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`acts alleged in this Complaint are willful and deliberate.
`75.
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`Edge’s wrongful acts alleged in this Complaint have caused damage to Edge in an
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`amount to be determined at trial, and such damages will continue to increase unless Edge is
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`enjoined from its wrongful actions and infringement.
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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 12 of 21
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`76.
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`Edge’s wrongful acts alleged in this Complaint have caused Edge to suffer
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`irreparable injury to its business. Edge will suffer substantial loss of goodwill and reputation
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`unless and until Defendant is enjoined from its wrongful actions complained of herein.
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`FIRST CLAIM FOR RELIEF
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`INFRINGEMENT OF THE PATENTS-IN-SUIT
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`(35 U.S.C. § 271)
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`77.
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`Plaintiffs incorporate by reference and reallege each of the allegations set forth in
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`Paragraphs 1-76 above.
`78.
`79.
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`This is a claim for patent infringement under 35 U.S.C. § 271.
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`Defendant, through its agents, employees, and servants, has and continues to
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`knowingly, intentionally, and willfully infringe the ’620 Patent by making, using, selling,
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`offering for sale, and/or importing into the United States products that are covered by at least
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`claim 1 of the ’620 Patent, including, for example, the Accused Product.
`80.
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`Defendant, through its agents, employees, and servants, has and continues to
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`knowingly, intentionally, and willfully infringe the ’591 Patent by making, using, selling,
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`offering for sale, and/or importing into the United States products that are covered by at least
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`claim 1 of the ’591 Patent, including, for example, the Accused Product.
`81.
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`Defendant, through its agents, employees, and servants, has and continues to
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`knowingly, intentionally, and willfully infringe the ’120 Patent by making, using, selling,
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`offering for sale, and/or importing into the United States products that are covered by at least
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`claim 1 of the ’120 Patent, including, for example, the Accused Product.
`82.
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`Defendant, through its agents, employees, and servants, has and continues to
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`knowingly, intentionally, and willfully infringe the ’886 Patent by making, using, selling,
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`offering for sale, and/or importing into the United States products that are covered by at least
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`claim 1 of the ’886 Patent, including, for example, the Accused Product.
`83.
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`Defendant, through its agents, employees, and servants, has and continues to
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`knowingly, intentionally, and willfully infringe the ’716 Patent by making, using, selling,
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`offering for sale, and/or importing into the United States products that are covered by at least
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`claim 1 of the ’716 Patent, including, for example, the Accused Product.
`84.
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`Defendant, through its agents, employees, and servants, has and continues to
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`knowingly, intentionally, and willfully infringe the ’513 Patent by making, using, selling,
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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 13 of 21
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`offering for sale, and/or importing into the United States products that are covered by at least
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`claim 1 of the ’513 Patent, including, for example, the Accused Product.
`85.
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`Defendant had actual knowledge of the patents-in-suit through correspondence
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`with Edge, including, for example, the October 27, 2014 cease and desist letter.
`86.
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`Defendants’ customers also infringe each of the patents-in-suit by using, selling,
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`offering for sale, and/or importing into the United States the Accused Product.
`87.
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`Upon information and believe, Defendant knew that its customers would infringe
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`each of the patents-in-suit by using, selling, offering to sell, and/or importing into the United
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`States infringing products, including, for example, the Accused Product.
`88.
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`Upon information and believe, Defendant had the specific intent to induce its
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`customers to infringe the patents-in-suit by using, selling, offering to sell, and/or importing into
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`the United States infringing products, including, for example, the Accused Product.
`89.
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`Upon information and believe, Defendant induced infringement of the patents-in-
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`suit.
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`90.
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`Defendant’s actions constitute infringement of the patents-in-suit in violation of
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`35 U.S.C. § 271(a) and (b).
`91.
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`Each of Defendant’s infringing activities is without the consent of, authority of, or
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`license from Edge or Axia.
`92.
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`Upon information and belief, Defendant’s infringement of each of the patents-in-
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`suit was and is willful and deliberate. Defendant infringed the patents-in-suit with reckless
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`disregard of Plaintiffs’ patent rights. Defendant knew, or it was so obvious that Defendant
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`should have known, that its actions constituted infringement of each of the patents-in-suit.
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`Defendant’s acts of infringement of the patents-in-suit were not consistent with the standards for
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`the industry.
`93.
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`Defendant’s acts of infringement have caused damage to Plaintiffs in an amount
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`to be determined at trial. Pursuant to 35 U.S.C. § 284, Plaintiffs are entitled to damages for
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`Defendant’s infringing acts. Pursuant to 35 U.S.C. § 285, Plaintiffs are entitled to reasonable
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`attorneys’ fees for the necessity of bringing its claims of patent infringement.
`94.
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`Defendant’s infringement of the patents-in-suit is causing irreparable harm to
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`Plaintiffs, for which there is no adequate remedy at law. Defendant’s infringement will continue,
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`Case 1:14-cv-24517-KMM Document 1 Entered on FLSD Docket 11/26/2014 Page 14 of 21
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`and will continue to cause irreparable harm to Edge, unless Defendant’s infringement is enjoined
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`by this Court.
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`SECOND CLAIM FOR RELIEF
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`TRADEMARK INFRINGEMENT
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`(15 U.S.C. § 1114)
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`95.
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`Plaintiffs incorporate by reference and reallege each of the allegations set forth in
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`Paragraphs 1-76 above.
`96.
`This is a claim for trademark infringement under 15 U.S.C. § 1114.
`97. Without Edge’s permission, Defendant has used in commerce reproductions,
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`copies or colorable imitations of the Edge Registered Marks in connection with the sale, offering
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`for sale, distribution, advertising, and/or promotion of Defendant’s products and services.
`98. Without Edge’s permission, Defendant is reproducing, copying, or colorably
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`imitating the Edge Marks and applying such reproductions, copies, or colorable imitations to
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`labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in
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`commerce upon or in connection with the sale, offering for sale, distribution, advertising, and/or
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`promotion of Defendant’s products and services.
`99.
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`Defendant’s use of these copies or colorable imitations of the Edge Registered
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`Marks is likely to cause confusion, or to cause mistake, or to deceive.
`100. Defendant’s wrongful acts as alleged in its Complaint constitute willful and
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`intentional infringement of the Edge Registered Marks. Defendant engaged in such activities
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`with the intent to unfairly compete against Edge, to trade upon Edge’s reputation and goodwill
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`by causing confusion and mistake among customers and the public, and to deceive the public
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`into believing that Defendant’s products and services are associated with, sponsored by,
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`originated from, or are approved by Edge, when in truth and fact they are not.
`101. Edge is informed and believes, and thereon alleges, that Defendant had actual
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`knowledge of Edge’s ownership and prior use of the Edge Registered Marks and willfully and
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`maliciously violated Edge’s trademark rights under 15 U.S.C. § 1114 without Edge’s consent.
`102. Edge is informed and believes, and thereon alleges, that Defendant’s infringement
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`has been willful and deliberate, which renders this an exceptional case within the meaning of 15
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`U.S.C. § 1117.
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`Case 1:14-cv-24517-KMM Document 1