Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA785112
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`Filing date:
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`11/23/2016
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92064526
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`Party
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`Correspondence
`Address
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`Plaintiff
`Wellnext LLC
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`ANTHONY ROBINSON
`1301 SAWGRASS CORPORATE PARKWAY
`SUNRISE, FL 33323
`UNITED STATES
`trademarks@naturesproducts.com, anthonyr@wellnexthealth.com
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`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
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`Opposition/Response to Motion
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`Anthony Robinson
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`anthonyr@wellnexthealth.com
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`/Anthony Robinson/
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`11/23/2016
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`Attachments
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`Response to Motion to Suspend - 11-23-16.pdf(5309779 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`For the marks WELLNX and WELLNX
`LIFE SCIENCES
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`Cancellation No. 92064526
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`Wellnext LLC,
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`Petitioner,
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`vs.
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`Wellnx Life Sciences Inc.
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`Registrant.
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`RESPONSE TO MOTION TO SUSPEND
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`On September 26, 2016, Petitioner filed a petition for cancellation against Registration
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`Nos. 3733444 and 3683450, WELLNX and WELLNX LIFE SCIENCES (the “Marks”), for
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`abandonment. Registrant is warehousing the Marks in violation of well-established regulations
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`and laws. Petitioner did not base its cancellation action on the likelihood of confusion between
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`the Marks and any trademarks or service marks owned by Petitioner, as the Marks have been
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`registered for more than five (5) years and have achieved incontestability. The issue presented in
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`the instant cancellation action is whether Registrant deliberately ceases to use the trademark for
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`three or more years, with no intention of using the trademark again in the future. Issues related to
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`trademark infringement are not relevant to the abandonment inquiry or analysis.
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`On November 1, 2016, Registrant sued Petitioner in federal court for trademark
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`infringement (the “Trademark Infringement Litigation”).1 In the Trademark Infringement
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`Litigation, Registrant asserts the following causes of action:
`•
`Infringement of Registered Trademark.
`• False Designation, Passing Off & Unfair Competition.
`• Tradename Infringement under the Lanham Act and Delaware State Law.
`• Violation of Delaware Consumer Fraud Act.
`•
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` Violation of Delaware Uniform Deceptive Trade Practices Act.
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`1 Wellnx Life Sciences Inc. v. Wellnext LLC, Civil Action No. 1:16-cv-01016-UNA (D. Del. November 1, 2016). A
`copy of the Complaint is attached hereto as Exhibit A.
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`Page 1 of 4
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`On November 10, 2016, Registrant filed the Motion to Suspend on the grounds that “the
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`litigation involves issues and claims in common” with the instant cancellation proceeding. The
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`relevant rule of procedure of the Board, codified in 37 CFR § 2.117, provides that “[w]henever it
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`shall come to the attention of the Trademark Trial and Appeal Board that a party or parties to a
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`pending case are engaged in a civil action or another Board proceeding which may have a
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`bearing on the case, proceedings before the Board may be suspended until termination of the
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`civil action or the other Board proceeding. (Emphasis added.)
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`Given that the causes of action in the Trademark Infringement Litigation do not involve
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`the same legal issues that are before the Board in the instant cancellation proceeding, it follows
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`that the Trademark Infringement Litigation will have no bearing on the instant cancellation
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`proceeding. Even in the event that Registrant succeeds in the Trademark Infringement Litigation,
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`Petitioner will still have a viable claim for cancellation based on abandonment.
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`For example, the cancellation proceeding is related to the fact that Registrant does not use
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`the Marks as part of an ongoing program to exploit the products it owns commercially. Rather
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`the house marks SLIMQUICK® and NAUTURE’S SCIENCE® are the marks that are exploited
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`commercially. The use of the Marks has not been “bona fide” and it is apparent from
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`Registrant’s specimens that no customer could plausibly be deemed to depend upon the Marks to
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`identify the source of the products. The Marks could not have contributed significantly to the
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`revenue generated by the sales of Registrant’s products bearing the house marks SLIMQUICK®
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`and NAUTURE’S SCIENCE® (i.e., Lose 3x, Garcinia Cambogia, Green Coffee Bean, Raspberry
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`Ketone) because of the very limited placement on the Marks on the side and bottom panels of
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`packaging where information about manufacturers, distributors, and packagers are customarily
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`provided. While the quantity, scope, or degree of use must necessarily be considered, qualitative
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`factors are the focus of the legal analyses of abandonment. Mere sales of a product featuring a
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`mark are of no avail in an effort to prove continued “use” of a mark in the sense of § 1227 of the
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`Lanham Act absent a bona fide intent to commercially exploit the mark, even if said use is
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`continuous, not sporadic, and amount to hundreds of unit sales annually. Registrant’s specimens
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`evidence a deliberate marketing strategy to generate revenue by commercially exploiting its
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`house marks SLIMQUICK® and NAUTURE’S SCIENCE® not, the Marks. Registrant’s
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`deliberate decision to place the Marks on the side panel in small font where they are entirely
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`dominated by Registrant’s house marks SLIMQUICK® and NAUTURE’S SCIENCE® with
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`respect to prominence and frequency of display is not consistent with a bona fide intent to
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`Page 2 of 4
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`commercially exploit the Marks. Bona fide use is required to avoid abandonment. Rather, it is
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`apparent from the quality of Registrant’s use of the Marks that its primary objective is trademark
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`maintenance and to prevent others from using the Marks.
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` None of these issues of abandonment will be litigated in the Trademark Infringement
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`Litigation. Moreover, even if Registrant prevails on its trademark infringement claims in the
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`Trademark Infringement Litigation, Petitioner will still have standing to petition for
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`abandonment of the Marks. Accordingly, the Trademark Infringement Litigation will have no
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`bearing on the instant cancellation proceeding.
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`For the above-stated reasons, Wellnext LLC respectfully requests that the Board deny
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`Registrant’s Motion to Suspend.
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`Respectfully submitted,
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`/s/ Anthony Robinson
`Anthony Robinson
`General Counsel
`Wellnext LLC
`1301 Sawgrass Corporate Parkway
`Sunrise, Florida 33323
`Telephone (954) 233-3300 x1235
`Email: anthonyr@wellnexthealth.com
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`Page 3 of 4
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`Date: November 23, 2016
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Response to Motion to
`Suspend was served by First Class Mail, with sufficient postage prepaid, on the 23rd day of
`November, 2016, upon Registrant’s attorney,
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`
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`William C. Wrigt
`Epstein Drangel LLP
`60 East 42nd Street, Suite 2520
`New York, NY 10165
`wwright@ipcouselors.com
`Office: 212/292-5390
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`/s/ Anthony Robinson
`Anthony Robinson
`General Counsel
`Wellnext LLC
`1301 Sawgrass Corporate Parkway
`Sunrise, Florida 33323
`Telephone (954) 233-3300 x1235
`Email: anthonyr@wellnexthealth.com
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`Page 4 of 4
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`EXHIBIT A
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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 1 of 19 PageID #: 1
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`UNITED STATES DISTRICT COURT
`DISTRICT OF DELAWARE
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`WELLNX LIFE SCIENCES INC.,
`Plaintiff
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` CIVIL ACTION No.: ________
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`v.
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`WELLNEXT LLC,
`Defendant
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` JURY TRIAL REQUESTED
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`COMPLAINT
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`Plaintiff, Wellnx Life Sciences Inc. (“Wellnx” or “Plaintiff”), a Canadian corporation, by
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`and through its undersigned counsel, alleges as follows:
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`NATURE OF THE ACTION
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`1.
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`This is an action for the infringement of a registered trademark, for unfair
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`competition, for trade name infringement arising under the Lanham Act, 15 U.S.C. §1051 et seq.
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`and various State causes of action (“Action”). Plaintiff seeks injunctive relief, an accounting,
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`compensatory damages and/or statutory damages, treble damages, attorneys’ fees and costs, and
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`such other relief as the Court deems proper.
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`JURISDICTION AND VENUE
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`2.
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`This Court has Federal subject matter jurisdiction over the claims asserted in the
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`Action pursuant to 28 U.S.C. §§ 1331 and 1338(a) as an action arising out of violations of the
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`Lanham Act, 15 U.S.C. §§ 1051 et seq.; pursuant to 15 U.S.C. § 1121; and pursuant to 28 U.S.C.
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`§1338(b) as an action arising out of claims for false designation of origin and unfair competition.
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`This Court has supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a).
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`

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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 2 of 19 PageID #: 2
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`3.
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`Venue is proper, inter alia, pursuant to 28 U.S.C. § 1391 because, on upon
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`information and belief, Defendant is organized under the laws of Delaware, and conducts
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`business in this judicial district, and Defendant has caused damage to Plaintiff in this district.
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`4.
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`Personal jurisdiction exists over Defendant because, upon information and belief,
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`Defendant is incorporated in Delaware, conducts business in Delaware, and/or otherwise avails
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`itself of the privileges and protections of the laws of the State of Delaware, such that this Court's
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`assertion of jurisdiction over Defendant does not offend traditional notions of fair play and due
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`process.
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`THE PARTIES
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`5.
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`Wellnx Life Sciences Inc., is a corporation organized and existing under the laws
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`of Canada, having a principal place of business at 63335 Edwards Blvd., Mississauga, Ontario,
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`Canada L5T2W7, and is the owner of the relevant WELLNX Mark (as defined below).
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`6.
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`Upon
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`information and belief, Defendant Wellnext LLC (“Wellnext” or
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`“Defendant”) is a corporation organized and existing under the laws of the State of Delaware,
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`having its principal place of business at 1301 Sawgrass Corporate Parkway, Sunrise, Florida
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`33323.
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`GENERAL ALLEGATIONS
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`Plaintiff and its WELLNX Trademark/Service Mark
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`7.
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`Wellnx (formerly known as NXCare) was founded in 2000 and since that time has
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`become one of the leading developers and marketers of some of the highest quality and most
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`innovative and effective nutritional weight-loss supplements products in the world (“Wellnx
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`Products” and “Wellnx Services”).
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`2
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`

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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 3 of 19 PageID #: 3
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`8.
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`Wellnx has developed a number of strong brands such as SLIMQUICK,
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`NATURE’S SCIENCE, NV, CROSS FUEL, NX LABS and PHYTOGENIX LABS in order to
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`market, promote and sell its Wellnx Products (“Wellnx Sub-Brands”) (Wellnx Products sold
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`under the Wellnx Sub-Brands shall be referred to as “Wellnx Sub-Brands Products”).
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`9.
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`All Wellnx Sub-Brands Products are marketed, promoted and sold under the
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`WELLNX and/or WELLNX LIFE SCIENCES trade name, trademark, service mark, and house
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`mark (“Wellnx Brand”).
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`10. Wellnx Sub-Brand Products bearing both the Wellnx Brand and Wellnx Sub-
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`Brand are distributed through nearly every mass-market major retailer, as well as drug and
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`grocery stores throughout the United States and Canada.
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`11. Wellnx takes the quality of its Wellnx Products extremely seriously by sourcing
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`the highest quality key ingredients with clinical substantiation, employing manufacturing
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`processes of the highest standard, requiring compliance with good manufacturing practices, and
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`carrying out a rigorous analytical testing program on all finished products.
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`12. Wellnx diligently identifies and sources key ingredients for its Wellnx Products
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`that are supported by comprehensive clinical substantiation of their effectiveness with the goal of
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`contributing to the overall health and weight-loss goals of Wellnx consumers.
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`13.
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`Plaintiff has protected its valuable rights in and to the Wellnx Brand by filing for
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`and obtaining U.S. Trademark Registration No. 3,733,444 for WELLNX for “nutritional and
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`dietary supplements” in Class 5; and U.S. Trademark Registration No. 3,683,450 for WELLNX
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`LIFE SCIENCES for “nutritional and dietary supplements” in Class 5 (the “WELLNX
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`Mark(s)”). A true and correct copy of the registrations for the WELLNX Marks are attached
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`hereto as Exhibit A and incorporated herein by reference. The WELLNX Marks and
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`3
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`

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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 4 of 19 PageID #: 4
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`registrations are valid, subsisting and incontestable. The Wellnx Brand and WELLNX Marks
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`may be used and/or referenced to hereinafter interchangeably.
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`14.
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`The Wellnx Brand was first used in U.S. commerce as a corporate name and trade
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`name on or about January, 2007 and the WELLNX Marks were first used in U.S. commerce on
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`or about February, 2009, and are currently in use in commerce as a trade name, trade mark,
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`service mark and house mark in connection with the Wellnx Products and Wellnx Services.
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`15.
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`Plaintiff owes a substantial amount of the success of the Wellnx Brand and
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`Wellnx Sub-Brands Products to the word-of-mouth buzz that its Wellnx Brand and Wellnx Sub-
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`Brands Products have generated.
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`16. Wellnx markets and promotes its Wellnx Brand and Wellnx Sub-Brands Products
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`through its website located at: wellnx.com (“Wellnx Website”) as well as individual Wellnx Sub-
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`Brand websites such as
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`those
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`located at: myslimquick.com, mynaturescience.com,
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`mypuregoddness.com, and mycrossfuel.com (“Wellnx Sub-Brand Websites”). A photograph of
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`the Wellnx Website home page is attached hereto as Exhibit B.
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`17. Wellnx markets and promotes its Wellnx Brand and Wellnx Sub-Brands Products
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`to the relevant trade at trade shows in the United States, including: Expo East, Expo West,
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`Supply Side West, ECRM, GMDC, and NACDS, among others.
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`18.
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`Plaintiff, the Wellnx Brand, and the Wellnx Sub-Brand Products have received
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`global press and media coverage. News stories, features and posts have appeared in online
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`platforms and publications, such as Chain Drug Review and Grocery Headquarters.
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`19.
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`As a result of Plaintiff’s efforts, including Plaintiff’s marketing and promotional
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`endeavors, as well as the quality of the Wellnx Brand and Wellnx Sub-Brand Products, and the
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`extensive press and media coverage and word of mouth buzz that the Wellnx Brand and Wellnx
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`4
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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 5 of 19 PageID #: 5
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`Sub-Brand Products have garnered, Plaintiff, the Wellnx Brand, and Wellnx Sub-Brand Products
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`have become prominently placed in the minds of the public.
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`20. Members of the public (both trade and consumers) have become familiar with the
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`Wellnx Brand and Wellnx Sub-Brand Products and have come to associate them exclusively
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`with Plaintiff. Plaintiff has acquired a valuable reputation and goodwill among the public as a
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`result of such association.
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`21.
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`Plaintiff has gone to great lengths to protect its interests in and to the Wellnx
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`Brand and Wellnx Sub-Brand Products. No one other than Plaintiff is authorized to advertise,
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`market, promote, offer for sale, sell or otherwise offer any goods/services utilizing the WELLNX
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`Marks, or any confusingly similar marks, without the express written permission of Plaintiff.
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`Defendant's Wrongful and Infringing Conduct
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`22.
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`In early 2016, Defendant Wellnext (formerly known as Nature’s Products Inc.),
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`self-described as “a leading manufacturer, packager and marketer of nutritional products” began
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`to offer its nutritional supplement products (“Wellnext Products” and “Wellnext Services”),
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`under its portfolio of brands including: Rainbow Light Nutritional Systems, Iceland Health,
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`Champion Performance, Blessed Herbs, Vitamin Research Products, Stop Aging Now, Nutri-
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`Health Supplements, Tru Health, Health Resources and Natural Vitality. (“Wellnext Sub-
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`Brands”) (Wellnext Products sold under the Wellnext Sub-Brands shall be referred to as
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`“Wellnext Sub-Brands Products”).
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`23. All Wellnext Sub-Brands Products are marketed, promoted and sold under the
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`WELLNEXT trade name, trademark, service mark and house mark (“Wellnext Brand”).
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`24. Defendant has applied to register with the United States Patent and Trademark
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`Office its alleged marks: WELLNEXT, Ser. No. 86/850,202, for “direct marketing services in
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`5
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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 6 of 19 PageID #: 6
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`the fields of lifestyle, wellness, health, and nutrition featuring vitamins and supplements for
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`human consumption; retail store services in the fields of lifestyle, wellness, health, and nutrition
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`featuring vitamins and supplements for human consumption; distributorship services in the fields
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`of lifestyle, wellness, health, and nutrition featuring vitamins and supplements for human
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`consumption, direct marketing services in the fields of lifestyle, wellness, health, and nutrition
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`featuring vitamins and supplements for human consumption; retail store services in the fields of
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`lifestyle, wellness, health, and nutrition featuring vitamins and supplements for human
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`consumption; distributorship services in the fields of lifestyle, wellness, health, and nutrition
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`featuring vitamins and supplements for human consumption” in Class 35 (pending), claiming a
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`date of first use in commerce of January 1, 2016; WELLNEXT DIRECT, Ser. No. 87/064,054;
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`and WELLNEXT BUSINESS, Ser. No. 87/064,058, also for related services in Class 35, both
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`applications filed based on intent to use in commerce (collectively, “WELLNEXT Mark(s)”). A
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`true and correct copy of the applications for the WELLNEXT Marks are attached hereto as
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`Exhibit C and incorporated herein by reference. The Wellnext Brand and WELLNEXT Mark
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`may be used and/or referenced to hereinafter interchangeably.
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`25. Upon information and belief, Wellnext Products are distributed through mass-
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`market major retailers and drug and grocery stores throughout the United States and Canada.
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`26. Wellnext markets and promotes its Wellnext Brand and Wellnext Sub-Brands
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`Products through its website located at: wellnexthealth.com (“Wellnext Website”) as well as
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`individual Wellnext Sub-Brand websites such as
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`those
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`located at: blessedherbs.com,
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`naturalvitality.com, and rainbowlight.com, among others (“Wellnext Sub-Brand Websites”). A
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`photograph of the Wellnext Website home page is attached hereto as Exhibit D.
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`27. Upon information and belief, Wellnext markets and promotes its Wellnext Brand
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`6
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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 7 of 19 PageID #: 7
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`and Wellnx Sub-Brands Products to the relevant trade at trade shows in the United States,
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`including, Expo East, Expo West, Supply Side West and ECRM, among others.
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`28. The similarities between the WELLNX Marks and WELLNEXT Marks and the
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`respective Wellnx Products and Wellnx Services and Wellnext Products and Wellnext Services,
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`means of promoting and marketing the respective Wellnx Products and Wellnx Services and
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`Wellnext Products and Wellnext Services, and consumers for the respective Wellnx Products and
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`Wellnx Services and Wellnext Products and Wellnext Services, are nearly identical.
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`29.
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`In fact, Plaintiff has been made aware of actual instances of confusion between
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`the Wellnx Brand on the one hand and Wellnext Brand on the other, for the nearly identical
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`Wellnx Products and Wellnx Services and Wellnext Products and Wellnext Services.
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`30. On September 19, 2016, counsel for Plaintiff sent Defendant a letter in which
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`Plaintiff notified Defendant of its infringing actions and asked, among other things, that
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`Defendant discontinue any and all use of the WELLNEXT Marks and/or anything confusingly
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`similar to the WELLNEXT Marks.
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`31. To date, Defendant has failed to provide Plaintiff with adequate assurance that
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`Defendant will cease and desist from infringing the WELLNX Marks.
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`32. Defendant is infringing Plaintiff’s WELLNX Marks by advertising, marketing,
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`promoting, offering for sale, selling, and/or otherwise offering its Wellnext Products and
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`Wellnext Services under the WELLNEXT Marks.
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`33. Defendant is not, nor has it ever been, authorized to use or register the WELLNX
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`Marks. Neither Plaintiff nor any of Plaintiff’s authorized agents have consented to Defendant’s
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`use or registration of the WELLNX Marks, nor have they consented to Defendant’s use or
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`registration of any identical or confusingly similar marks for any goods/services.
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`7
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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 8 of 19 PageID #: 8
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`34. Defendant’s use of the WELLNEXT Marks as a trade name, corporate name,
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`trademark, service mark and house mark in connection with its Wellnext Products and Wellnext
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`Services, as alleged herein, has violated Plaintiff’s exclusive rights in and to the WELLNX
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`Marks.
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`35.
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` Defendant has used and is using marks, images and/or designs that are
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`confusingly similar with, and identical to, and constitute infringement of Plaintiff’s WELLNX
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`Marks, in an effort to confuse consumers and members of the relevant trade. Defendant’s
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`conduct and use began long after Plaintiff’s adoption and use of the WELLNX Marks.
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`36. Prior to and contemporaneous with its unlawful actions alleged herein, Defendant
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`had knowledge of Plaintiff’s ownership of its WELLNX Marks and of the extraordinary strength
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`of Plaintiff’s WELLNX Marks and the incalculable goodwill associated therewith, and in bad
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`faith adopted the WELLNEXT Marks. Defendant’s infringing conduct is clearly willful, given
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`that it was placed on notice of Plaintiff’s prior rights on several occasions, but has continued to
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`utilize the infringing WELLNEXT Marks.
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`37. Defendant’s infringing actions, as alleged herein, will cause confusion, mistake
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`and deceive consumers, the public, and the trade with respect to the source or origin of
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`Defendant’s products and services, and cause consumers to erroneously believe that the Wellnext
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`Products and Wellnext Services are licensed by, or otherwise associated with Plaintiff, thereby
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`irreparably damaging Plaintiff.
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`38.
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`In committing these acts, Defendant has, among other things, willfully and in bad
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`faith committed the following unlawful acts, all of which have caused, and will continue to
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`cause, irreparable harm to Plaintiff: infringed Plaintiff’s WELLNX Marks; committed unfair
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`competition; and unfairly and unjustly profited from such activities at Plaintiff’s expense.
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`8
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`Case 1:16-cv-01016-UNA Document 1 Filed 11/01/16 Page 9 of 19 PageID #: 9
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`39. Unless enjoined, Defendant will continue to cause irreparable harm to Plaintiff.
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`CAUSES OF ACTION
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`FIRST CAUSE OF ACTION
`(Infringement of a Registered Trademark)
`[15 U.S.C. § 1114/Lanham Act § 32(a)]
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`40. Plaintiff repleads and incorporates by reference each and every allegation set forth
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`in the preceding paragraphs.
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`41. Plaintiff has continuously used the WELLNX Marks in interstate commerce since
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`at least as early as 2009.
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`42. Plaintiff, as the owner of all right, title and interest in and to the WELLNX Marks,
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`has standing to maintain an action for trademark infringement under the Federal Trademark
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`Statute, Lanham Act § 32(a), 15 U.S.C. § 1114.
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`43. Defendant is now, and was at the time it engaged in its actions as alleged herein,
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`actually aware that Plaintiff is the owner of the federal trademark registrations for the WELLNX
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`Marks.
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`44. Defendant did not attempt and failed to obtain consent or authorization from
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`Plaintiff, as the trademark owner of the WELLNX Marks, to advertise, market, promote, offer
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`for sale, and/or otherwise offer Wellnx Products and Wellnx Services under Plaintiff’s
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`WELLNX Marks, or anything confusingly similar thereto, in the stream of interstate commerce.
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`45. Defendant knowingly and intentionally reproduced, copied, and/or colorably
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`imitated Plaintiff’s WELLNX Marks and applied such reproductions, copies, and/or colorable
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`imitations to websites, promotional materials, and/or advertisements, used in commerce, in
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`connection with the Wellnext Products and Wellnext Services.
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`46. Defendant’s egregious and intentional use of the WELLNEXT Marks in
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`commerce and Defendant’s offering of Wellnext Products and Wellnext Services, utilizing the
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`WELLNEXT Marks and/or colorable imitations of Plaintiff’s WELLNX Marks, has caused
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`actual confusion, and is likely to continue to cause further confusion, to cause mistake, and to
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`deceive the general purchasing public as to the origin of the Wellnext Products and Wellnext
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`Services, and is likely to deceive the public into believing that Defendant’s Wellnext Products
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`and Wellnext Services are connected to Plaintiff’s Wellnx Products and Wellnx Services, or
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`otherwise associated with, or authorized or endorsed by Plaintiff.
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`47. Defendant’s actions have been deliberate and committed with knowledge of
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`Plaintiff’s exclusive rights and goodwill in the WELLNX Marks, as well as with bad faith and
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`with the intent to cause confusion, mistake and deception.
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`48. Defendant’s continued, knowing and intentional use of the WELLNEXT Marks,
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`which is confusingly similar to Plaintiff’s WELLNX Marks, without Plaintiff’s consent or
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`authorization constitutes intentional infringement of Plaintiff’s federally registered WELLNX
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`Marks in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114.
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`49. As a direct and proximate result of Defendant’s unlawful and infringing actions as
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`alleged herein, Plaintiff has suffered substantial and irreparable injury, loss and damage to its
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`business and its rights in and to the WELLNX Marks and the goodwill associated therewith, for
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`which it has no adequate remedy at law, and unless immediately enjoined, Defendant will
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`continue to cause substantial and irreparable injury, loss and damage to Plaintiff and its rights in
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`and to the WELLNX Marks and the goodwill associated therewith.
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`50. Based on such conduct, Plaintiff is entitled to injunctive relief, damages that
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`Plaintiff has sustained and will sustain as a result of Defendant’s unlawful and infringing actions
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`as alleged herein, and all gains, profits and advantages obtained by Defendant as a result thereof,
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`enhanced discretionary damages, as well as other remedies provided by 15 U.S.C. §§ 1116,
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`1117, and 1118, and reasonable attorneys’ fees and costs.
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`SECOND CAUSE OF ACTION
`(False Designation of Origin, Passing Off & Unfair Competition)
`[15 U.S.C. § 1125(a)/Lanham Act § 43(a)]
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`51.
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`Plaintiff repleads and incorporates by reference each and every allegation set forth
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`in the preceding paragraphs.
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`52.
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`Plaintiff, as the owner of all common law right, title, and interest in and to the
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`WELLNX Marks, Wellnx Brand and Wellnx trade name, has standing to maintain an action for
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`false designation of origin and unfair competition under the Federal Trademark Statute, Lanham
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`Act § 43(a), 15 U.S.C. § 1125.
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`53.
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`Plaintiff’s WELLNX Marks are inherently distinctive and/or have acquired
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`distinctiveness.
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`54.
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`Defendant knowingly and willfully used in commerce marks that are identical or
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`confusingly similar to and constitute reproductions of Plaintiff’s WELLNX Marks, and/or used
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`false designations of origin and/or false and misleading descriptions and representations in
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`connection with the advertising, marketing, promoting, offering for sale, sale and/or otherwise
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`offering of Defendant’s Wellnext Products and Wellnext Services with the intent to cause
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`confusion, to cause mistake and to deceive the purchasing public into believing, in error, that
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`Defendant’s Wellnext Products and Wellnext Services are authorized, sponsored, approved,
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`endorsed or licensed by Plaintiff, and/or that Defendant is affiliated, connected or associated
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`with Plaintiff, thereby creating a likelihood of confusion by consumers as to the source of the
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`Wellnext Products and Wellnext Services, and allowing Defendant to capitalize on the goodwill
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`associated with, and the consumer recognition of, Plaintiff’s WELLNX Marks and the Wellnx
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`Products and Wellnx Services, to Defendant’s substantial profit in blatant disregard of
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`Plaintiff’s rights.
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`55.
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`By advertising, marketing, promoting, offering for sale, selling and/or otherwise
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`offering its Wellnext Products and Wellnext Services under the WELLNEXT Marks, which is
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`confusingly similar to or which constitutes a colorable imitation of Plaintiff’s WELLNX Marks,
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`Defendant has traded off the extensive goodwill of Plaintiff and its WELLNX Marks to induce
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`and did induce, and intends to and will continue to induce customers to purchase Wellnext
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`Products and Wellnext Services, thereby directly and unfairly competing with Plaintiff. Such
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`conduct has permitted and will continue to permit Defendant to make substantial profits based
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`on the goodwill and reputation of Plaintiff, which Plaintiff has amassed through nationwide
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`marketing, advertising and consumer recognition.
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`56.
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`Defendant knew, or by the exercise of reasonable care should have known, that its
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`adoption and commencement of and continuing use in commerce of the WELLNEXT Marks
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`and/or mark(s) that are confusingly similar to and constitute a reproduction of Plaintiff’s
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`WELLNX Marks, would cause confusion, mistake, or deception among users, participants and
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`the public.
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`57.
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`Upon information and belief, Defendant’s aforementioned wrongful actions have
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`been knowing, deliberate, willful, intended to cause confusion, to cause mistake and to deceive
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`the relevant public and were done with the intent to trade on the goodwill and reputation of
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`Plaintiff, its Wellnx Products and Wellnx Services and the WELLNX Marks, or alternatively, to
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`create the erroneous impression that Plaintiff is trading upon Defendant’s reputation.
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`58.
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`As a direct and proximate result of Defendant’s aforementioned actions,
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`Defendant has caused irreparable injury to Plaintiff by depriving Plaintiff of the value of its
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`WELLNX Marks as a commercial asset, for which it has no adequate remedy at law, and unless
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`immediately restrained, Defendant will continue to cause substantial and irreparable injury to
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`Plaintiff and the goodwill and reputation associated with the value of Plaintiff’s WELLNX
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`Marks in an amount as yet unknown, but to be determined at trial.
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`59.
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`Based on Defendant’s wrongful conduct, Plaintiff is entitled to injunctive relief as
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`well as monetary damages and other remedies as provided by the Lanham Act, including
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`damages that Plaintiff has sustained and will sustain as a result of Defendant’s unlawful and
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`infringing actions as alleged herein, and all gains, profits and advantages obtained by Defendant
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`as a result thereof, enhanced discretionary damages and reasonable attorneys' fees and costs.
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`THIRD CAUSE OF ACTION
`(Trade Name Infringement)
`[15 U.S.C. § 1125(a)/Lanham Act § 43(a)]
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`60.
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`Plaintiff repleads and incorporates by reference each and every allegation set forth
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`in the preceding paragraphs.
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`61.
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`Defendant’s marketing and sale of Wellnext Products and Wellnext Services in
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`conjunction with a trade name that consists of or includes the registered trademark “WELLNX”
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`or a confusingly similar imitation thereof, constitutes trade name infringement under 15 U.S.C.
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`§1125(a).
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`FOURTH CAUSE OF ACTION
`(Common Law Trade Name Infringement)
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`62.
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`Plaintiff repleads and incorporates by reference each and every allegation set forth
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`in the preceding paragraphs.
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`63.
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`Defendant’s marketing and sale of Wellnext Products and Wellnext Services in
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`conjunction with a trade name that consists of or includes the registered trademark “WELLNX”
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`or a confusingly similar imitation thereof, constitutes trade name infringement under the
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`common law of the State of Delaware.
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`FIFTH CAUSE OF ACTION
`(Violation of Delaware Consumer Fraud Act, 6 Del. C. §