Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA913350
`08/02/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065633
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Defendant
`Colur World, LLC
`
`TIMOTHY D PECSENYE
`BLANK ROME LLP
`ONE LOGAN SQ, 130 N 18TH ST
`PHILADELPHIA, PA 19103-6998
`UNITED STATES
`Email: pecsenye@blankrome.com, bcraig@blankrome.com
`
`Motion to Suspend for Civil Action
`
`Samar Aryani-Sabet
`
`saryani-sabet@blankrome.com, pecsenye@blankrome.com,
`bcraig@blankrome.com
`
`Signature
`
`Date
`
`/Samar Aryani-Sabet/
`
`08/02/2018
`
`Attachments
`
`Motion to Suspend Cancellation Proceeding.pdf(866602 bytes )
`
`

`

`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`___________________________________
`BENCO DENTAL SUPPLY COMPANY,
`:
`
`
`
`
`
`
`
`:
`
`
`Petitioner,
`
`
`: Registration No.: 3,172,669
`
`
`
`
`
`
`
`:
`
`
`
`v.
`
`
`: Cancellation No.: 92065633
`:
`:
`
`
`
`COLUR WORLD, LLC,
`:
`
`
`
`
`
`
`
`:
`
`
`Registrant.
`___________________________________:
`
`
`Hon. Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`Attn.: Trademark Trial and Appeal Board
`
`
`REGISTRANT’S MOTION TO SUSPEND CANCELLATION PROCEEDING
`
`
`
`Registrant Colur World, LLC (“Colur World”), by and through
`
`its attorneys, Blank Rome LLP, respectfully requests that the
`
`Trademark Trial and Appeal Board (“T.T.A.B.”) suspend the
`
`instant cancellation proceeding pending the resolution and final
`
`determination of Colur World, LLC v. Benco Dental Supply
`
`Company, Civil Case No. 2:18-cv-03265-JS (E.D. Pa. filed Aug. 1,
`
`2018), which is currently pending in the United States District
`
`Court for the Eastern District of Pennsylvania and which may be
`
`dispositive of this matter. T.B.M.P. § 510.02(a); 37 C.F.R.
`
`§ 2.117. The issues raised in the civil action involve claims
`
`
`
`120240.00102/110941795v.1
`
`1
`
`

`

`related to whether Benco Dental Supply Company should be
`
`estopped from pursuing the cancellation proceeding. A
`
`determination in the civil action thus may have bearing on the
`
`instant cancellation proceedings. The referenced Complaint is
`
`attached hereto as Exhibit A.
`
`On March 16, 2017, Petitioner Benco Dental Supply Company
`
`filed Cancellation No. 92065633 with the T.T.A.B., alleging,
`
`inter alia, that Colur World’s trademark represented in
`
`Registration No. 3,172,669 (hereinafter the “COLOR PINK Mark”),
`
`registered on the Supplemental Register for “gloves for medical
`
`and dental use, made of nitrile,” is not a registrable
`
`trademark.
`
`Colur World filed its Complaint in the United States
`
`District Court for the Eastern District of Pennsylvania against
`
`Petitioner on August 1, 2018, docketed as Case No. 2:18-cv-
`
`03265-JS. Among the grounds set forth in its Complaint, Colur
`
`World asserts its trademark rights to the COLOR PINK Mark and
`
`requests declaratory judgment from the court declaring, inter
`
`alia, that Petitioner was not permitted to file the subject
`
`cancellation action and that it is estopped from pursuing the
`
`action. As part of the analysis, the court must necessarily
`
`evaluate the distinctiveness of the COLOR PINK Mark as used by
`
`Colur World in connection with “gloves for medical and dental
`
`
`120240.00102/110941795v.1
`
`2
`
`

`

`use, made of nitrile.” Consequently, because the issue as to
`
`whether the COLOR PINK Mark is distinctive is before the court
`
`in the civil action, and because the same is at issue with
`
`respect to the subject registration, Colur World respectfully
`
`submits that good and sufficient cause has been established to
`
`justify suspension, as the outcome of the civil action filed by
`
`Colur World may have a bearing on this cancellation proceeding.
`
`See T.B.M.P. § 510.02(a).
`
`In view of the foregoing, Registrant requests that
`
`Cancellation No. 92065633 be suspended accordingly, pending
`
`outcome of the civil litigation.
`
`
`
`
`
`
`
`
`Dated: August 2, 2018
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`COLUR WORLD LLC
`
`By: /Timothy D. Pecsenye/
`Timothy D. Pecsenye
`Bradford C. Craig
`Its Attorneys
`
`
`
`BLANK ROME LLP
`One Logan Square
`Philadelphia, PA 19103
`(215) 569-5619 (t)
`(215) 832-5619 (f)
`
`
`
`CERTIFICATE OF ELECTRONIC FILING
`
`I hereby certify that this correspondence is addressed to the Trademark Trial and
`Appeal Board, Hon. Commissioner for Trademarks, P.O. Box 1451, Alexandria, Virginia
`22313-1451, and is being deposited via the Electronic System for Trademark Trials and
`Appeals (ESTTA) on August 2, 2018.
`
` /Samar Aryani-Sabet/
` Samar Aryani-Sabet
`
`
`
`
`
`120240.00102/110941795v.1
`
`3
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I, Samar Aryani-Sabet, hereby certify that I have on this
`
`2nd day of August, 2018, served via electronic mail the
`
`foregoing REGISTRANT’S MOTION TO SUSPEND CANCELLATION PROCEEDING
`
`to the following:
`
`HEIDI R. THOLE
`REINHART BOERNER VAN DEUREN SC
`1000 N WATER ST STE 1700
`MILWAUKEE, WI 53202
`UNITED STATES
`<HThole@reinhartlaw.com>
`<dkattman@reinhartlaw.com>
`<TMAdmin@reinhartlaw.com>
`
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Samar Aryani-Sabet/______
`Samar Aryani-Sabet
`
`
`
`120240.00102/110941795v.1
`
`4
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`

`

`JS 44 (Rev. 06/ 17)
`
`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 1 of 34
`CIVIL COVER SHEET
`The JS 44 civil cover sheet and the in format ion contai ned herein ne ither rep lace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United Stales in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet.
`(SEE INSTRUCTIONS ON NEXT PAGE OF 7HIS FORM.)
`
`'cJIUr ｾｬｩＧｴ｣ｩｾ ｾｲｾｆｆｓ＠
`800 Pri mos Ave
`Folcroft, PA 19032
`(b) County of Residence of First Listed Plaintiff Delaware county
`(EXCEPT IN U.S. PlAIN17FF CASE5J
`
`DE FENDANTS
`Ben co Dental Supply Company
`295 Center Point Blvd
`Pittston , PA 18640
`
`County of Residence of First Listed Defendant
`
`Luzerne coun
`(IN U.S. PlAIN71l·F CASES ONLY)
`
`NOTE:
`
`IN LAND CONDE MNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(c) Attorneys (Firm Name, Addres." and Telephone Number)
`Timothy Pecsenye, Esq ., Blank Rome LLP, One Logan Square
`Philadelphia, PA 19103 (215) 569-5619
`
`Attorneys (I/Known)
`
`II . BASIS O F J URISDICTION (Place an .. X"'inOneBoxOnly)
`
`0
`
`I U.S. Government
`
`Plaintiff
`
`ｾ＠3 Federal Question
`(U.S. Governmenl Nol a Par1y)
`
`Citizen of This State
`
`III. CITIZENS HIP OF PRINCIPAL PARTI ES (Place an .. X"' inOne BoxforPlain1iff
`(For /Jiversily Cases Only)
`and One Box/or /Jefendani)
`PTF
`PTF
`DEF
`IX I
`0 4
`0 4
`
`DEF
`0
`
`I
`
`Incorporated or Principal Place
`of Business In This State
`
`0 2 U.S. Government
`Defendant
`
`0 4 Diversity
`(lndica/e Cilizenship of Par1ies in //em Ill)
`
`Citizen of Another State
`
`0 2
`
`0
`
`2
`
`Incorporated and Principal Place
`of Business In Another State
`
`0 5
`
`0 5
`
`Citizen or Subject of a
`Forei 1n Count
`
`0 3
`
`0
`
`3 Foreign Nation
`
`0 6
`
`0 6
`
`IV NATU R E OF SUIT
`(Place an "X " in One Box Only)
`I
`TORTS
`C ONTRACT
`
`0 I I 0 Insurance
`0 120 Marine
`0 130 Miller Act
`0 140 Negotiable Instrument
`150 Recovery of Overpayment
`& Enforcement of Judgment
`0 151 Medicare Act
`0 152 Recovery of Defaulted
`Student Loans
`(Excludes Veterans)
`0 153 Recovery of Overpayment
`of Veteran 's Benefits
`160 Stockholders' Suits
`0 190 Other Contract
`0 195 Contract Product Liability
`0 196 Franchise
`
`R EAL PROPERTY
`I
`0 210 Land Condemnation
`0 220 Foreclosure
`0 230 Rent Lease & Ejectment
`0 240 Torts to Land
`245 Tort Product Liability
`290 All Other Real Property
`
`P ERSO NAL INJU RY
`0 365 Personal Injury -
`Product Liability
`0 367 Health Care/
`Phannaceutical
`Personal Injury
`Product Liability
`0 368 Asbestos Personal
`Injury Product
`Liability
`P ERSO NA L P ROP ERTY
`3 70 Other F mud
`371 Truth in Lending
`0 380 Other Personal
`Property Damage
`0 385 Property Damage
`Product Liability
`
`P ERSONAL INJ UR Y
`0 310 Airplane
`0 315 Airplane Product
`Liability
`0 320 Assault, Libel &
`Slander
`0 330 Federal Employers'
`Liability
`0 340 Marine
`0 345 Marine Product
`Liability
`0 350 Motor Vehicle
`0 355 Motor Vehicle
`Product Liability
`0 360 Other Personal
`Inj ury
`0 362 Personal Injury -
`Medical Maloractice
`PRISONER PETITIONS
`CIVIL RIGHTS
`0 440 Other Civil Rights
`Habeas Co rpus:
`0 463 Alien Detainee
`0 441 Voting
`0 510 Motions to Vacate
`0 442 Employment
`0 443 Housing/
`Sentence
`0 530 General
`Accommodations
`0 445 Amer. w/Disabi lities - 0 535 Death Penalty
`Othe r :
`Employment
`0 446 Amer. w/Disabilities - 0 540 Mandamus & Other
`0 550 Civil Rights
`Other
`0 448 Education
`0 555 Prison Condition
`0 560 Civil Detainee -
`Conditions of
`Confinement
`
`FORFEITURE/PE NALTY
`
`0 625 Drug Related Seizure
`of Property 21 USC 881
`0 690 Other
`
`LAHI R
`0 710 Fair Labor Standards
`Act
`0 720 Labor/ Management
`Relations
`0 740 Railway Labor Act
`0 751 Family and Medical
`Leave Act
`0 790 Other Labor Litigation
`0 791 Employee Retirement
`Income Security Act
`
`IMMIGRATION
`0 462 Naturalization Application
`0 465 Other Immigration
`Actions
`
`ere or: Nature o Suit c ode Descriotions .
`er kh
`f
`IC
`BANKRUPTCY
`OTH ER ST ATUTES
`o 422 Appeal 28 use 158
`0 423 Withdrawal
`28 USC 157
`
`I
`
`""' PERTY Ru ; HTS
`0 820 Copyrights
`0 830 Patent
`0 835 Patent - Abbreviated
`New Drug Application
`M 840 Trademark
`' " 11 IAL SEC URITY
`0 861 HIA ( 1395fl)
`0 862 Black Lung (923)
`0 863 DIWC/ DIWW (405(g))
`0 864 SSID Tille XVI
`0 865 RSI ( 405(g))
`
`F EDERAL TAX SUITS
`0 870 Taxes (U.S. Plaintiff
`or Defendant)
`0 871 IRS- Third Party
`26 USC 7609
`
`0 375 False Claims Act
`0 376 Qui Tam (31 USC
`3729(a))
`0 400 State Reapportionment
`0 410 Antitrust
`0 430 Banks and Banking
`0 450 Commerce
`0 460 Deportation
`0 470 Racketeer Influenced and
`Corrupt Organizations
`0 480 Consumer Credit
`0 490 Cable/Sat TV
`0 850 Securities/Commodities/
`Exc hange
`0 890 Other Statutory Actions
`0 891 Agricultural Acts
`0 893 Environmental Matters
`0 895 Freedom of Information
`Act
`0 896 Arbitration
`0 899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`0 950 Constitutionality of
`State Statutes
`
`V. ORIGI N (Place an "X " in One Box Only)
`J:i1: I Original
`0 2 Removed from
`State Court
`Proceeding
`
`0 3 Remanded from
`Appellate Court
`
`0 4 Reinstated or
`Reopened
`
`0 5 Transferred from
`Another District
`(.rpec!fy)
`
`0 6 Multidistrict
`Litigation -
`Transfer
`
`0 8 Multidistrict
`Litigation -
`Direct File
`
`Cite the U.S. Civi l Statute under w hich you are fi ling (Do n ot cite jurisdictional statute.< unless diversity):
`VI. CAUSE OF ACTION ＱＭＢｄｾ･ｾ｣ｾｬ｡ｾｲｾ｡ｴＡＺＺｯｾｊｾｵｾ､ＺＺＺ｣ＮＺＮｭＡＡＺ･ＺＡＮＮＡｮｾｴ＠ａｾ｣ｾｴＮＮＮＮＮＬＲＺＺＺＮＡＸＺＺＮＮＮＮＡＺＺＺＮｕＮＺＮＡＺＮｓｾＮｃｾＮ］Ｍ］ｌＮＺＲＺＮＺＺＲｾＰＺＮＮＮＡＱＮＮＮＺＺ｡ｾｮｾ､ＮＮＮＮＺＺＲＺＡＺＺＲｾＰＲＺＺＺＮＮＮＮ｟＠__________________ _
`Brief description of cause:
`
`VII . REQ UESTE D IN
`C OMPLA INT:
`
`0 CHECK lF THIS IS A CLASS ACTIO
`UN DER RULE 23, F.R.Cv.P.
`
`VIII. RELAT ED CASE(S)
`IF AN Y
`
`(See ins1n1c1ions):
`
`JUDGE
`
`DATE
`08/01/2018
`FOR OFFICE USE 0 LY
`
`RECEIPT#
`
`AMOUNT
`
`APPLY ING IFI'
`
`CHECK YES only if demanded in complaint:
`
`J U RY DE M A D:
`
`ｾ ｙ･ｳ＠ ONo
`
`DOCKET NUMBER
`
`' JUDGE
`
`MAG . JUDGE
`
`

`

`JS 44 Reverse (Rev. 06/ 17)
`
`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 2 of 34
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`
`The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
`required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
`required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
`Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
`
`l.(a)
`
`Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
`then the official, giving both name and title.
`(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
`time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
`condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)
`(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
`in this section "(see attachment)".
`
`II.
`
`Ill.
`
`IV.
`
`V.
`
`Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F. R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an "X"
`in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
`United States plainti ff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included here.
`United States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in thi s box.
`Federal question. (3) This refers to suits under 28 U.S.C. 1331 , where jurisdiction arises under the Constitution of the United States, an amendment
`to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code takes
`precedence, and box 1 or 2 should be marked.
`Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, the
`citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
`cases.)
`
`Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Mark this
`section for each principal party.
`
`Nature of Suit. Place an "X" in the appropriate box. If there are multiple nature of suit codes associated with the case, pick the nature of suit code
`that is most applicable. Click here for: Nature of Suit Code Descriptions.
`
`Origin. Place an "X" in one of the seven boxes.
`Original Proceedings. (1) Cases which originate in the United States district courts.
`Removed from State Court. (2) Proceedings initiated in state courts may be removed to the di strict courts under Title 28 U.S.C., Section 1441.
`When the petition for removal is granted, check this box.
`Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
`date.
`Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
`Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers or
`multidistrict litigation transfers.
`Multidistrict Litigation - Transfer. (6) Check this box when a multidistri ct case is transferred into the di strict under authority of Title 28 U.S.C.
`Section 1407.
`Multidistrict Litigation - Direct File. (8) Check this box when a multidistrict case is filed in the same district as the Master MDL docket.
`PLEASE NOTE THAT THERE IS NOT AN ORIGIN CODE 7. Origin Code 7 was used for historical records and is no longer relevant due to
`changes in statue.
`
`VI.
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rul e 23 , F.R.Cv.P.
`Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
`Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
`
`VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket
`numbers and the corresponding judge names for such cases.
`
`Date and Attorney Signature. Date and sign the civil cover sheet.
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 3 of 34
`UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`DESIGNATION FORM
`(to be used by counsel or prose plaintiff to indicate the category of the case/or the purpose of assignment to the appropriate calendar)
`
`Address of Plaintiff: ____ ___ c_o_lu_r_W_ o_rl_d_, _L_L_C_8_0_0_P_ri_m_o_s_A_v_e_,_F_o_l_cr_o_ft_, _P_A_ 1 _90_3_2 _____ _
`
`Benco Dental Supply Company 295 Center Point Blvd, Pittston, PA 18640
`
`RELATED CASE, IF ANY:
`
`Date Terminated:
`
`Civil cases are deemed related when Yes is answered to any of the following questions:
`
`I .
`
`Is this case related to property included in an earlier numbered suit pending or within one year
`previously terminated action in this court?
`
`Yes D
`
`No [ l ]
`
`2. Does this case involve the same issue of fact or grow out of the same transaction as a prior suit
`pending or within one year previously terminated action in this court?
`
`YesD
`
`No[l]
`
`3. Does this case involve the validity or infringement ofa patent already in suit or any earlier
`numbered case pending or within one year previousl y terminated action of this court?
`
`Yes D
`
`No [ l ]
`
`4.
`
`Is this case a second or successive habeas corpus, social security appeal , or pro se civil rights
`case filed by the same individual?
`
`Yes D
`
`No [ l ]
`
`I certify that, to my knowledge, the within case
`this court except as noted above.
`
`DA TE: 08/01/2018
`
`C IVIL: (Place a .,/ in one category only)
`
`case now pending or within one year previously terminated action in
`
`PA 51339
`
`Attorney I. D. # (if applicable)
`
`A.
`
`Federal Question Cases:
`
`B. Diversity Jurisdiction Cases:
`
`D
`I.
`D 2.
`D 3.
`D 4.
`D 5.
`D 6.
`D 1.
`D 8.
`D 9.
`D 10.
`IZJ
`II .
`
`Indemnity Contract, Marine Contract, and All Other Contracts
`FELA
`Jones Act-Personal Injury
`Antitrust
`Patent
`Labor-Management Relations
`Civil Rights
`Habeas Corpus
`Securities Act(s) Cases
`Social Security Review Cases
`All other Federal Q uestion Cases
`(Please specify):
`
`Trademark
`
`D I.
`D 2.
`D 3.
`D 4.
`D 5.
`D 6.
`D 1.
`D 8.
`D 9.
`
`In surance Contract and Other Contracts
`Airplane Personal Injury
`Assault, Defamation
`Marine Personal Injury
`Motor Vehicle Personal Injury
`Other Personal Injury (Please specify): _____ __ _ _
`Products Liability
`Products Liability - Asbestos
`All other Diversity Cases
`(Please specify): - - - - - - - - - - - - - - - - -
`
`1, ____ T_i_m_o_t_h_y_P_e_c_s_e_n_y_e ____ , counsel of record or pro se plaintiff, do hereby certify:
`
`ARBITRATION CERT IFI CATION
`(The effect of this certification is to remove the case from eligibility for arbitration.)
`
`Pursuant to Local Civil Rul e 53.2, § 3(c) (2), that to the best of my knowledge and belief, the damages recoverable in this civil action case
`exceed the sum of$ l 50,000.00 exclusive of interest and costs:
`
`Relief other than monetary damages is sought.
`
`DA TE: 08/01/2018
`
`J
`
`NOTE: A trial de novo will be a trial by jury only if there has been compliance with F.R.C.P. 38.
`
`Civ. 609 (512018)
`
`PA 51339
`
`Attorney l.D. # (if applicable)
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 4 of 34
`
`IN THE UNITED ST ATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`CASE MANAGEMENT TRACK DESIGNATION FORM
`
`Colur World, LLC
`
`v . Benco Dental Supply
`Company
`
`CIVIL ACTION
`
`NO.
`
`In accordance with the Civil Justice Expense and Delay Reduction Plan of this court, counsel for
`plaintiff shall complete a Case Management Track Designation Form in all civil cases at the time of
`filing the complaint and serve a copy on all defendants. (See§ 1 :03 of the plan set forth on the reverse
`side of this form.) In the event that a defendant does not agree with the plaintiff regarding said
`designation, that defendant shall, with its first appearance, submit to the clerk of court and serve on
`the plaintiff and all other parties, a Case Management Track Designation Form specifying the track
`to which that defendant believes the case should be assigned.
`
`SELECT ONE OF THE FOLLOWING CASE MANAGEMENT TRACKS:
`
`(a) Habeas Corpus - Cases brought under 28 U.S.C. § 2241 through§ 2255.
`
`(b) Social Security - Cases requesting review of a decision of the Secretary of Health
`and Human Services denying plaintiff Social Security Benefits.
`
`( )
`
`( )
`
`(c) Arbitration - Cases required to be designated for arbitration under Local Civil Rule 53.2.
`
`( )
`
`( d) Asbestos - Cases involving claims for personal injury or property damage from
`exposure to asbestos.
`
`(e) Special Management - Cases that do not fall into tracks (a) through (d) that are
`commonly referred to as complex and that need special or intense management by
`the court. (See reverse side of this form for a detailed explanation of special
`management cases.)
`
`(f) Standard Management- Cases that do not fall into any one of the other tracks.
`
`( )
`
`( )
`
`(X)
`
`August l, 2018
`Date
`
`215-569-5619
`
`Colur World, LLC
`
`ｾｴｴｯｲｮ･ｹ＠for
`
`215-832-5619
`
`pecsenye@blankrome.com
`
`Telephone
`
`FAX Number
`
`E-Mail Address
`
`(Civ. 660) 10/02
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 5 of 34
`
`Civil Justice Expense and Delay Reduction Plan
`Section 1 :03 - Assignment to a Management Track
`
`(a)
`
`The clerk of court will assign cases to tracks (a) through (d) based on the initial pleading.
`
`In all cases not appropriate for assignment by the clerk of court to tracks (a) through ( d), the
`(b)
`plaintiff shall submit to the clerk of court and serve with the complaint on all defendants a case management
`track designation form specifying that the plaintiff believes the case requires Standard Management or
`Special Management. In the event that a defendant does not agree with the plaintiff regarding said
`designation, that defendant shall, with its first appearance, submit to the clerk of court and serve on the
`plaintiff and all other parties, a case management track designation form specifying the track to which that
`defendant believes the case should be assigned.
`
`The court may, on its own initiative or upon the request of any party, change the track
`( c)
`assignment of any case at any time.
`
`Nothing in this Plan is intended to abrogate or limit a judicial officer's authority in any case
`( d)
`pending before that judicial officer, to direct pretrial and trial proceedings that are more stringent than those
`of the Plan and that are designed to accomplish cost and delay reduction.
`
`Nothing in this Plan is intended to supersede Local Civil Rules 40.1 and 72.1, or the
`(e)
`procedure for random assignment of Habeas Corpus and Social Security cases referred to magistrate judges
`of the court.
`
`SPECIAL MANAGEMENT CASE ASSIGNMENTS
`(See §1.02 (e) Management Track Definitions of the
`Civil Justice Expense and Delay Reduction Plan)
`
`Special Management cases will usually include that class of cases commonly referred to as "complex
`litigation" as that term has been used in the Manuals for Complex Litigation. The first manual was prepared
`in 1969 and the Manual for Complex Litigation Second, MCL 2d was prepared in 1985. This term is
`intended to include cases that present unusual problems and require extraordinary treatment. See §0.1 of the
`first manual. Cases may require special or intense management by the court due to one or more of the
`following factors : (1) large number of parties; (2) large number of claims or defenses; (3) complex factual
`issues; (4) large volume of evidence; (5) problems locating or preserving evidence; (6) extensive discovery;
`(7) exceptionally long time needed to prepare for disposition; (8) decision needed within an exceptionally
`short time; and (9) need to decide preliminary issues before final disposition. It may include two or more
`related cases. Complex litigation typically includes such cases as antitrust cases; cases involving a large
`number of parties or an unincorporated association of large membership; cases involving requests for
`injunctive relief affecting the operation of large business entities; patent cases; copyright and trademark
`cases; common disaster cases such as those arising from aircraft crashes or marine disasters; actions brought
`by individual stockholders; stockholder's derivative and stockholder's representative actions; class actions or
`potential class actions; and other civil (and criminal) cases involving unusual multiplicity or complexity of
`factual issues. See §0.22 of the first Manual for Complex Litigation and Manual for Complex Litigation
`Second, Chapter 33 .
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 6 of 34
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF PENNSYLVANIA
`
`Civil Action No.: ｾｾｾｾｾｾｾｾｾ＠
`
`JURY TRIAL DEMANDED
`
`COLUR WORLD, LLC,
`800 Primos A venue
`Folcroft, PA 19032
`
`Plaintiff,
`
`vs.
`
`BENCO DENTAL SUPPLY COMPANY,
`295 Center Point Boulevard
`Pittston, Pennsylvania 18640
`
`Defendant.
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiff Colur World, LLC ("Plaintiff' or "Colur World"), by and through its
`
`undersigned counsel, Blank Rome LLP, hereby files this Complaint against Defendant Benco
`
`Dental Supply Company ("Defendant"), and avers the following:
`
`THE PARTIES
`'
`Plaintiff is a Delaware limited liability company located at 800 Primos A venue,
`
`1.
`
`Folcroft, Pennsylvania 19032.
`
`2.
`
`Upon information and belief, Defendant is a Pennsylvania corporation located at
`
`295 Center Point Boulevard, Pittston, Pennsylvania 18640.
`
`JURISDICTION AND VENUE
`
`3.
`
`This is a complaint for a declaratory judgment that Defendant is prohibited from
`
`challenging Colur World's federal U.S. Trademark Registration No. 3,172,669. This action is
`
`based on !aches, licensee estoppel, and detrimental reliance.
`
`I
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 7 of 34
`
`4.
`
`This Court has original jurisdiction over this action under 28 U.S.C. §§ 1331 and
`
`1338 and the Federal Declaratory Judgment Act, 28 U.S .C. §§ 2201 and 2202.
`
`5.
`
`This Court has personal jurisdiction over Defendant because Defendant, inter
`
`alia, is incorporated in the Commonwealth of Pennsylvania, transacts business in the
`
`Commonwealth of Pennsylvania, engages in a persistent course of conduct in the
`
`Commonwealth of Pennsylvania, and expects, or should reasonably expect, its acts to have legal
`
`consequences in the Commonwealth of Pennsylvania.
`
`6.
`
`Venue is proper in the Eastern District of Pennsylvania pursuant to 28 U.S.C.
`
`§ 1391 because a substantial part of the events giving rise to the claim occurred in the Eastern
`
`District of Pennsylvania, and Defendant expects, or should reasonably expect, its acts to have
`
`legal consequences in the District.
`
`FACTUAL BACKGROUND
`
`Plaintiff's Business and Trademarks
`
`7.
`
`Colur World is the exclusive owner of all right, title, and interest in and to a
`
`trademark consisting of the color pink (the "COLOR PINK Mark"), as well as the word mark
`
`PINK NITRILE (collectively, the "Colur World Marks"), for use with "gloves for medical and
`
`dental use, made of nitrile" (the "Goods").
`
`8.
`
`Plaintiff is the owner of the following United States trademark registrations:
`
`• U.S. Trademark Registration No. 3,172,669 for the color pink (
`
`);
`
`• U.S. Trademark Registration No . 4,527,774 for the PINK NITRILE mark; and
`
`• U.S. Trademark Registration No. 3,170,261 for the PINK NITRILE mark.
`
`2
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 8 of 34
`
`True and correct copies of the Registration Certificates for each of the above-referenced marks
`
`from the United States Patent and Trademark Office's Trademark Status and Document Retrieval
`
`system are attached hereto as Exhibit A. The Colur World Marks are valid and subsisting.
`
`9.
`
`Colur World, on its own and through its numerous licensees and related
`
`companies, has made continuous and exclusive use of its distinctive Colur World Marks in the
`
`marketing and sale of the Goods ("PINK NITRILE Gloves") throughout the United States since
`
`at least as early as 2005 .
`
`10.
`
`Since 2007, Colur World has licensed the use of the COLOR PINK Mark to the
`
`world ' s largest and most prominent manufacturers and distributors of gloves used in the medical
`
`and dental fields. Colur World' s licensees jointly own approximately 60% of the market share in
`
`the medical and dental gloves industry. Colur World' s licenses, which date back to 2007,
`
`substantiate that the relevant trade industry recognizes Colur World as the source of goods under
`
`the Colur World Marks.
`
`11.
`
`Colur World generates millions of dollars annually in connection with the Colur
`
`World Marks.
`
`12.
`
`Colur World and its licensees have expended a substantial amount of time,
`
`energy, and resources marketing, promoting, advertising, and selling products under the Colur
`
`World Marks, including but not limited to :
`
`•
`
`advertising expenditures of one licensee alone exceeded $14 million since 2005 ,
`
`including more than $1.7 million in 2017;
`
`• operation of websites, such as <www.topgualitygloves.com>, that receive
`
`millions of page views annually and many thousands of unique visitors;
`
`•
`
`advertising in the leading medical and dental journals;
`
`3
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 9 of 34
`
`• distributing over 8 million pieces of literature to medical and dental users
`
`promoting the PINK NITRILE Gloves since at least as early as 2005 ;
`
`• promoting the Colur World Marks at annual trade shows and conventions
`
`attended by thousands of medical and dental professionals, and purchasing
`
`executives;
`
`• prominently displaying the Colur World Marks on the top surfaces of every 100-
`
`piece box and on each sample pack of PINK NITRILE brand gloves, as well as on
`
`the reverse-sides of the boxes and sample packaging for each of Colur World ' s
`
`other brands of nitrile gloves; and
`
`•
`
`selling over 2 billion PINK NITRILE Gloves since 2005.
`
`13.
`
`As a result of this longstanding, exclusive, and continuous marketing, promotion,
`
`advertisement, and sale of products under the Colur World Marks, and adherence to high
`
`standards of quality control, the Colur World Marks have met with extraordinary public and
`
`trade acceptance and have acquired substantial goodwill and trademark distinctiveness in the
`
`minds of the relevant trade and public as an indicator of a single source for the PINK NITRILE
`
`Gloves.
`
`14.
`
`As a result of this longstanding, exclusive, and continuous marketing, promotion,
`
`advertisement, and sale of products under the Colur World Marks, the relevant trade and the
`
`public have come to immediately associate the Colur World Marks with Plaintiff and to expect
`
`goods bearing the Colur World Marks to have a connection or association with Plaintiff.
`
`15.
`
`Colur World has vigilantly policed and enforced its exclusive rights so as to
`
`prevent unauthorized use of the Colur World Marks by competitors. For instance, Colur World
`
`has filed two separate infringement actions in Federal Court, each of which ended favorably for
`
`4
`
`

`

`Case 2:18-cv-03265-JS Document 1 Filed 08/01/18 Page 10 of 34
`
`,
`
`Colur World and the defendants taking licenses to the COLOR PINK Mark. Colur World has
`
`also enforced its rights by sending cease and desist letters to all known infringers of the Colur
`
`World Marks.
`
`Defendant's Business Relationship with Color World
`
`16.
`
`For over thirteen years, Defendant has purchased over 12,990,000 PINK
`
`NITRILE Gloves from Colur World ' s authorized licensees. From one such licensee alone, Top
`
`Quality Management, Inc.