Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1017054
`
`Filing date:
`
`11/20/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067080
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Sinomax USA Inc.
`
`BRIAN M GAYNOR
`PARKER IBRAHIM & BERG LLC
`270 DAVIDSON AVENUE
`SOMERSET, NJ 08873
`UNITED STATES
`trademark@piblaw.com, brian.gaynor@piblaw.com
`908-725-9700
`
`Motion to Suspend for Civil Action
`
`Brian M. Gaynor
`
`brian.gaynor@piblaw.com, trademark@piblaw.com
`
`/brian gaynor/
`
`11/20/2019
`
`Motion to Suspend Pending Outcome of Federal Proceeding
`11-20-19.PDF(95820 bytes )
`Ex A CVBs first complaint.PDF(3338736 bytes )
`Ex B CVBs first amended complaint.PDF(1383079 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
` Petitioner,
`
`
`
`v.
`
`
`
`
`
`
`
`CVB Inc.,
`
`
`
`
`
`Sinomax USA Inc.,
`
`
`
` Registrant.
`
`
`
`
`
`
`
`
`
`
`
`
`Mark: ZGEL
`
`Reg. No.: 4860694
`
`Issued: November 24, 2015
`
`Cancellation No. 92067080
`
`MOTION TO SUSPEND PENDING OUTCOME OF FEDERAL CIVIL PROCEEDING
`
`
`
`
`
`Registrant, Sinomax USA Inc. (“Registrant”), through its attorneys, Parker Ibrahim &
`
`Berg LLP, and owner of the mark ZGEL, Reg. No. 4860694, hereby submits this Motion to
`
`Suspend Pending the Outcome of a Federal Civil Complaint filed by Petitioner, CVB, Inc.
`
`(“CVB”) in The United States District Court, District of Utah, pursuant to TBMP § 510.02(a)
`
`and 37 C.F.R. § 2.117(a).
`
`CVB filed a complaint in the District Court on August 19, 2019, Civil Action No. 1:19-
`
`CV-00094, and a courtesy copy was emailed to the undersigned on August 20, 2019. See Exhibit
`
`A (“CVB’s First Complaint”). CVB then filed a First Amended Complaint on November 6,
`
`2019, Civil Action No. 1:19-CV-00094-EJF, but did not send any courtesy copy or notification
`
`of the Amended Complaint to the undersigned, or to Registrant. See Exhibit B (“CVB’s First
`
`Amended Complaint”). CVB’s First Amended Complaint was served on Registrant’s registered
`
`agent for service of process, CT Trust Company, on November 15, 2019.
`
`Whenever it comes to the attention of the Board that a party or parties to a case pending
`
`before it are involved in a civil action that may have a bearing on the Board case, proceedings
`
`6357826.1
`
`

`

`before the Board may be suspended until final determination of the civil action. TBMP §
`
`510.02(a). See also 37 C.F.R. § 2.117(a). See also General Motors Corp. v. Cadillac Club
`
`Fashions Inc., 22 USPQ2d 1933, 1936-37 (TTAB 1992); Toro Co. v. Hardigg Industries, Inc.,
`
`187 USPQ 689, 692 (TTAB 1975), rev’d on other grounds, 549 F.2d 785, 193 USPQ 149
`
`(CCPA 1977); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125,
`
`126-27 (TTAB 1974); petition denied, 181 USPQ 779 (Comm’r 1974); Tokaido v. Honda
`
`Associates Inc., 179 USPQ 861, 862 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp.,
`
`171 USPQ 805, 806-07 (TTAB 1971).
`
`Unless there are unusual circumstances, the Board will suspend proceedings in the case
`
`before it if the final determination of the other proceeding may have a bearing on the issues
`
`before the Board. TBMP § 510.02(a). See also 37 C.F.R. § 2.117(a). See also, e.g., New Orleans
`
`Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil action need
`
`not be dispositive of Board proceeding, but only needs to have a bearing on issues before the
`
`Board); General Motors Corp v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933, 1936-37
`
`(TTAB 1992) (relief sought in federal district court included an order directing Office to cancel
`
`registration involved in cancellation proceeding); Other Telephone Co. v. Connecticut National
`
`Telephone Co., 181 USPQ 125, 126-27 (TTAB 1974) (decision in civil action for infringement
`
`and unfair competition would have bearing on outcome of Trademark Act § 2(d) claim before
`
`Board), pet. denied, 181 USPQ 779 (Comm’r 1974). See also Tokaido v. Honda Associates Inc.,
`
`179 USPQ 861, 862 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805,
`
`806-07 (TTAB 1971); Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568, 570
`
`(TTAB 1971).
`
`6357826.1
`
`2
`
`

`

`Registrant therefore respectfully requests that this matter be suspend pending the
`
`outcome of Civil Action No. 1:19-CV-00094-EJF.
`
`
`
`DATED: November 20, 2019
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`/s/ Brian Gaynor
`By: Brian M. Gaynor, Esq.
`PARKER IBRAHIM & BERG LLP
`270 Davidson Avenue
`Somerset, New Jersey 08873
`Phone: (908) 725-9700
`brian.gaynor@piblaw.com
`Attorneys for Registrant,
`Sinomax USA Inc.
`
`6357826.1
`
`3
`
`

`

`
`
`
`I hereby certify that a true and complete copy of the foregoing was forwarded by email
`
`CERTIFICATE OF SERVICE
`
`on this 20th day of November, 2019 to the attorneys for the Petitioner at the following address:
`
`Preston P. Frischknecht
`Project CIP
`preston@projectcip.com
`
`
`
`
`/s/ Brian Gaynor
`Brian M. Gaynor, Esq.
`
`
`
`
`
`
`
`6357826.1
`
`4
`
`

`

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

`

`JS 44 (Rev. 08/18)
`
`Case 1:19-cv-00094-EJF Document 2-1 Filed 08/19/19 Page 1 of 2
` CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace 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 States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`
`CVB Inc.
`
`DEFENDANTS
`Sinomax USA INC
`Dormeo North America
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`Cache, UT
`
`County of Residence of First Listed Defendant
`
`Harris, TX
`
`(IN U.S. PLAINTIFF CASES ONLY)
`
`NOTE:
`
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Preston P. Frischknecht, Project CIP, 408 Sheridan Ridge Ln, Nibley, UT
`84321, (435) 512-4893; Jeffrey D. Steed, CVB Inc., 1525 W 2960 S,
`Logan, UT 84321, (801) 725-7847
`
` Attorneys (If Known)
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`" 1 U.S. Government
`
`" 3 Federal Question
`
`Plaintiff
`
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
` and One Box for Defendant)
` PTF DEF
` PTF
` DEF
`Citizen of This State
`" 1
`" 1
`Incorporated or Principal Place
`" 4
`" 4
` of Business In This State
`
`" 2 U.S. Government
`Defendant
`
`" 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`" 2
`
`" 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`" 5
`
`" 5
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`FORFEITURE/PENALTY
`
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES
`
`Citizen or Subject of a
` Foreign Country
`
`" 3
`
`" 3
`
`Foreign Nation
`
`" 6
`
`" 6
`
`PERSONAL INJURY
`" 365 Personal Injury -
` Product Liability
`" 367 Health Care/
` Pharmaceutical
` Personal Injury
` Product Liability
`" 368 Asbestos Personal
` Injury Product
` Liability
` PERSONAL PROPERTY
`" 370 Other Fraud
`" 371 Truth in Lending
`" 380 Other Personal
` Property Damage
`" 385 Property Damage
` Product Liability
`
`" 110 Insurance
` PERSONAL INJURY
`" 310 Airplane
`" 120 Marine
`" 315 Airplane Product
`" 130 Miller Act
` Liability
`" 140 Negotiable Instrument
`" 150 Recovery of Overpayment " 320 Assault, Libel &
` & Enforcement of Judgment
` Slander
`" 151 Medicare Act
`" 330 Federal Employers’
`" 152 Recovery of Defaulted
` Liability
` Student Loans
`" 340 Marine
` (Excludes Veterans)
`" 345 Marine Product
`" 153 Recovery of Overpayment
` Liability
`LABOR
`" 710 Fair Labor Standards
` of Veteran’s Benefits
`" 350 Motor Vehicle
` Act
`" 160 Stockholders’ Suits
`" 355 Motor Vehicle
`" 720 Labor/Management
`" 190 Other Contract
` Product Liability
` Relations
`" 195 Contract Product Liability " 360 Other Personal
`" 740 Railway Labor Act
`" 196 Franchise
` Injury
`" 751 Family and Medical
`" 362 Personal Injury -
` Leave Act
` Medical Malpractice
` PRISONER PETITIONS " 790 Other Labor Litigation
` CIVIL RIGHTS
`" 791 Employee Retirement
`" 440 Other Civil Rights
`Habeas Corpus:
`" 463 Alien Detainee
` Income Security Act
`" 441 Voting
`" 510 Motions to Vacate
`" 442 Employment
` Sentence
`" 443 Housing/
`" 530 General
` Accommodations
`" 445 Amer. w/Disabilities - " 535 Death Penalty
` Employment
`Other:
`" 446 Amer. w/Disabilities - " 540 Mandamus & Other
` Other
`" 550 Civil Rights
`" 448 Education
`" 555 Prison Condition
`" 560 Civil Detainee -
` Conditions of
` Confinement
`
` REAL PROPERTY
`" 210 Land Condemnation
`" 220 Foreclosure
`" 230 Rent Lease & Ejectment
`" 240 Torts to Land
`" 245 Tort Product Liability
`" 290 All Other Real Property
`
`IMMIGRATION
`" 462 Naturalization Application
`" 465 Other Immigration
` Actions
`
`" 422 Appeal 28 USC 158
`" 625 Drug Related Seizure
` of Property 21 USC 881 " 423 Withdrawal
`" 690 Other
` 28 USC 157
`
`" 375 False Claims Act
`" 376 Qui Tam (31 USC
` 3729(a))
`" 400 State Reapportionment
`" 410 Antitrust
`PROPERTY RIGHTS
`" 430 Banks and Banking
`" 820 Copyrights
`" 450 Commerce
`" 830 Patent
`" 460 Deportation
`" 835 Patent - Abbreviated
`" 470 Racketeer Influenced and
` New Drug Application
` Corrupt Organizations
`" 840 Trademark
`" 480 Consumer Credit
`SOCIAL SECURITY
`" 485 Telephone Consumer
`" 861 HIA (1395ff)
` Protection Act
`" 862 Black Lung (923)
`" 863 DIWC/DIWW (405(g)) " 490 Cable/Sat TV
`" 864 SSID Title XVI
`" 850 Securities/Commodities/
`" 865 RSI (405(g))
` Exchange
`" 890 Other Statutory Actions
`" 891 Agricultural Acts
`" 893 Environmental Matters
`" 895 Freedom of Information
` Act
`" 896 Arbitration
`" 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`" 950 Constitutionality of
` State Statutes
`
`FEDERAL TAX SUITS
`" 870 Taxes (U.S. Plaintiff
` or Defendant)
`" 871 IRS—Third Party
` 26 USC 7609
`
`V. ORIGIN (Place an “X” in One Box Only)
`" 1 Original
`" 2 Removed from
`Proceeding
`State Court
`
`" 3 Remanded from
`Appellate Court
`
`" 4 Reinstated or
`Reopened
`
`" 6 Multidistrict
`Litigation -
`Transfer
`
`" 8 Multidistrict
` Litigation -
` Direct File
`
`" 5 Transferred from
`Another District
`(specify)
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`15 USC 1125(a)
`
`VI. CAUSE OF ACTION
`
`Brief description of cause:
`Lanham Act violations; trademark infringement
`
`VII. REQUESTED IN
` COMPLAINT:
`
`" CHECK IF THIS IS A CLASS ACTION
`UNDER RULE 23, F.R.Cv.P.
`
`DEMAND $
`
`CHECK YES only if demanded in complaint:
`
`JURY DEMAND:
`
`" Yes
`
`" No
`
`VIII. RELATED CASE(S)
` IF ANY
`
`(See instructions):
`
`JUDGE
`
`DATE
`08/19/2019
`
`FOR OFFICE USE ONLY
`
`SIGNATURE OF ATTORNEY OF RECORD
`/s/Preston P. Frischknecht
`
`DOCKET NUMBER
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`

`JS 44 Reverse (Rev. 08/18)
`
`Case 1:19-cv-00094-EJF Document 2-1 Filed 08/19/19 Page 2 of 2
`
`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:
`
`I.(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)".
`
`##"
`
`###"
`
`#$"
`
`$"
`
`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 plaintiff. (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 this 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 district courts under Title 28 U.S.C., Section 1441.
`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 multidistrict case is transferred into the district 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.
`
`$#"
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`$##" Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 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.
`
`$###" 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.
`
`

`

`JS 44 (Rev. 08/18)
`
`Case 1:19-cv-00094-EJF Document 2-1 Filed 08/19/19 Page 1 of 2
` CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace 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 States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`
`CVB Inc.
`
`DEFENDANTS
`Sinomax USA INC
`Dormeo North America
`
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`Cache, UT
`
`County of Residence of First Listed Defendant
`
`Harris, TX
`
`(IN U.S. PLAINTIFF CASES ONLY)
`
`NOTE:
`
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Preston P. Frischknecht, Project CIP, 408 Sheridan Ridge Ln, Nibley, UT
`84321, (435) 512-4893; Jeffrey D. Steed, CVB Inc., 1525 W 2960 S,
`Logan, UT 84321, (801) 725-7847
`
` Attorneys (If Known)
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`" 1 U.S. Government
`
`" 3 Federal Question
`
`Plaintiff
`
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
` and One Box for Defendant)
` PTF DEF
` PTF
` DEF
`Citizen of This State
`" 1
`" 1
`Incorporated or Principal Place
`" 4
`" 4
` of Business In This State
`
`" 2 U.S. Government
`Defendant
`
`" 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`" 2
`
`" 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`" 5
`
`" 5
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`FORFEITURE/PENALTY
`
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES
`
`Citizen or Subject of a
` Foreign Country
`
`" 3
`
`" 3
`
`Foreign Nation
`
`" 6
`
`" 6
`
`PERSONAL INJURY
`" 365 Personal Injury -
` Product Liability
`" 367 Health Care/
` Pharmaceutical
` Personal Injury
` Product Liability
`" 368 Asbestos Personal
` Injury Product
` Liability
` PERSONAL PROPERTY
`" 370 Other Fraud
`" 371 Truth in Lending
`" 380 Other Personal
` Property Damage
`" 385 Property Damage
` Product Liability
`
`" 110 Insurance
` PERSONAL INJURY
`" 310 Airplane
`" 120 Marine
`" 315 Airplane Product
`" 130 Miller Act
` Liability
`" 140 Negotiable Instrument
`" 150 Recovery of Overpayment " 320 Assault, Libel &
` & Enforcement of Judgment
` Slander
`" 151 Medicare Act
`" 330 Federal Employers’
`" 152 Recovery of Defaulted
` Liability
` Student Loans
`" 340 Marine
` (Excludes Veterans)
`" 345 Marine Product
`" 153 Recovery of Overpayment
` Liability
`LABOR
`" 710 Fair Labor Standards
` of Veteran’s Benefits
`" 350 Motor Vehicle
` Act
`" 160 Stockholders’ Suits
`" 355 Motor Vehicle
`" 720 Labor/Management
`" 190 Other Contract
` Product Liability
` Relations
`" 195 Contract Product Liability " 360 Other Personal
`" 740 Railway Labor Act
`" 196 Franchise
` Injury
`" 751 Family and Medical
`" 362 Personal Injury -
` Leave Act
` Medical Malpractice
` PRISONER PETITIONS " 790 Other Labor Litigation
` CIVIL RIGHTS
`" 791 Employee Retirement
`" 440 Other Civil Rights
`Habeas Corpus:
`" 463 Alien Detainee
` Income Security Act
`" 441 Voting
`" 510 Motions to Vacate
`" 442 Employment
` Sentence
`" 443 Housing/
`" 530 General
` Accommodations
`" 445 Amer. w/Disabilities - " 535 Death Penalty
` Employment
`Other:
`" 446 Amer. w/Disabilities - " 540 Mandamus & Other
` Other
`" 550 Civil Rights
`" 448 Education
`" 555 Prison Condition
`" 560 Civil Detainee -
` Conditions of
` Confinement
`
` REAL PROPERTY
`" 210 Land Condemnation
`" 220 Foreclosure
`" 230 Rent Lease & Ejectment
`" 240 Torts to Land
`" 245 Tort Product Liability
`" 290 All Other Real Property
`
`IMMIGRATION
`" 462 Naturalization Application
`" 465 Other Immigration
` Actions
`
`" 422 Appeal 28 USC 158
`" 625 Drug Related Seizure
` of Property 21 USC 881 " 423 Withdrawal
`" 690 Other
` 28 USC 157
`
`" 375 False Claims Act
`" 376 Qui Tam (31 USC
` 3729(a))
`" 400 State Reapportionment
`" 410 Antitrust
`PROPERTY RIGHTS
`" 430 Banks and Banking
`" 820 Copyrights
`" 450 Commerce
`" 830 Patent
`" 460 Deportation
`" 835 Patent - Abbreviated
`" 470 Racketeer Influenced and
` New Drug Application
` Corrupt Organizations
`" 840 Trademark
`" 480 Consumer Credit
`SOCIAL SECURITY
`" 485 Telephone Consumer
`" 861 HIA (1395ff)
` Protection Act
`" 862 Black Lung (923)
`" 863 DIWC/DIWW (405(g)) " 490 Cable/Sat TV
`" 864 SSID Title XVI
`" 850 Securities/Commodities/
`" 865 RSI (405(g))
` Exchange
`" 890 Other Statutory Actions
`" 891 Agricultural Acts
`" 893 Environmental Matters
`" 895 Freedom of Information
` Act
`" 896 Arbitration
`" 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`" 950 Constitutionality of
` State Statutes
`
`FEDERAL TAX SUITS
`" 870 Taxes (U.S. Plaintiff
` or Defendant)
`" 871 IRS—Third Party
` 26 USC 7609
`
`V. ORIGIN (Place an “X” in One Box Only)
`" 1 Original
`" 2 Removed from
`Proceeding
`State Court
`
`" 3 Remanded from
`Appellate Court
`
`" 4 Reinstated or
`Reopened
`
`" 6 Multidistrict
`Litigation -
`Transfer
`
`" 8 Multidistrict
` Litigation -
` Direct File
`
`" 5 Transferred from
`Another District
`(specify)
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`15 USC 1125(a)
`
`VI. CAUSE OF ACTION
`
`Brief description of cause:
`Lanham Act violations; trademark infringement
`
`VII. REQUESTED IN
` COMPLAINT:
`
`" CHECK IF THIS IS A CLASS ACTION
`UNDER RULE 23, F.R.Cv.P.
`
`DEMAND $
`
`CHECK YES only if demanded in complaint:
`
`JURY DEMAND:
`
`" Yes
`
`" No
`
`VIII. RELATED CASE(S)
` IF ANY
`
`(See instructions):
`
`JUDGE
`
`DATE
`08/19/2019
`
`FOR OFFICE USE ONLY
`
`SIGNATURE OF ATTORNEY OF RECORD
`/s/Preston P. Frischknecht
`
`DOCKET NUMBER
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`

`JS 44 Reverse (Rev. 08/18)
`
`Case 1:19-cv-00094-EJF Document 2-1 Filed 08/19/19 Page 2 of 2
`
`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:
`
`I.(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)".
`
`##"
`
`###"
`
`#$"
`
`$"
`
`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 plaintiff. (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 this 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 district courts under Title 28 U.S.C., Section 1441.
`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 multidistrict case is transferred into the district 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.
`
`$#"
`
`Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
`statutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service
`
`$##" Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 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.
`
`$###" 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 1:19-cv-00094-EJF Document 2 Filed 08/19/19 Page 1 of 11
`
`Preston P. Frischknecht (USB#11286)
`PROJECT CIP
`408 Sheridan Ridge Lane
`Nibley, UT 84321
`Telephone: (435) 512-4893
`Facsimile: (888) 505-1509
`Email: preston@projectcip.com
`
`Jeffrey D. Steed (USB#11774)
`CVB INC.
`1525 W 2960 S
`Logan, UT 84321
`Telephone: (801) 725-7847
`Facsimile: (435) 514-0620
`Email: jeffsteed@maloufsleep.com
`
`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF UTAH
`
`CVB Inc., a Utah corporation,
`
`
`
` Plaintiff,
`
`vs.
`
`SINOMAX USA INC, a Delaware
`corporation, and DORMEO NORTH
`AMERICA, a Delaware limited
`liability company,
`
` Defendants.
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`COMPLAINT
`
`Case No. 1:19-CV-00094
`
`Judge:
`
`Magistrate Judge Evelyn J. Furse
`
`Plaintiff CVB Inc., by and through its undersigned counsel of record, hereby complains
`
`and alleges as follows:
`
`

`

`Case 1:19-cv-00094-EJF Document 2 Filed 08/19/19 Page 2 of 11
`
`PARTIES, JURISDICTION AND VENUE
`
`1.
`
`Plaintiff CVB Inc. (“CVB”), is a Utah corporation with its principal place of
`
`business at 1525 West 2960 South, Logan, UT 84321. CVB is a national and global retailer—
`
`both online and in brick & mortar establishments—of bedding and bedding accessories.
`
`2.
`
`Defendant Sinomax USA Inc (“Sinomax”), is a wholly owned subsidiary of Hong
`
`Kong-based Sinomax Group, and a Delaware corporation with its principal place of business at
`
`2901 Wilcrest Dr. Ste. 100, Houston, Texas 77042-3359.
`
`3.
`
`Defendant Dormeo North America (“Dormeo”) is a Delaware corporation with its
`
`principal place of business at 3151 Briarpark Drive Suite 120, Houston, Texas 77042.
`
`4.
`
`Sinomax owns a majority and controlling share of Dormeo and exercises control
`
`over Dormeo—including for the acts alleged herein—in part, through shared executives, officers,
`
`and/or board members like Sinomax President/CEO Frank Chen and CFO Kelvin Lam.
`
`5.
`
`For all practical intents and purposes, Sinomax and Dormeo are the same entity:
`
`(a) Dormeo phone numbers (e.g. 18008962802) are answered as and by Sinomax, (b) Sinomax
`
`considers and promotes Dormeo as one of its brands, and (c) Sinomax controls Dormeo in
`
`permanent trade show spaces.
`
`6.
`
`This is a suit for trademark infringement that arises under the laws of the United
`
`States, namely, Title 15 of the United States Code and, more particularly, 15 U.S.C.A. §§ 1114,
`
`1116-1118, inclusive. This Court has jurisdiction under the provisions of 28 U.S.C.A. § 1332(a)
`
`and 28 U.S.C.A. § 1338(a). Defendants are subject to personal jurisdiction because they have:
`
`(a) purposefully directed the marketing and sale of infringing products to Utah buyers,
`
`businesses, and residents; (b) placed infringing products and marketing in the stream of
`
`commerce with the specific intent that infringing products and marketing be consumed
`
`2
`
`

`

`Case 1:19-cv-00094-EJF Document 2 Filed 08/19/19 Page 3 of 11
`
`nationwide, including in Utah; and (c) minimum contacts through websites and/or online sales of
`
`infringing products and marketing material to Utah residents. Venue is proper in this district
`
`under 28 U.S.C.A. § 1391(b)(2) and/or (b)(3).
`
`GENERAL ALLEGATIONS
`
`CVB and the Z mark
`
`7.
`
`In the course of CVB’s fifteen (15) years of business as a distributor and retailer
`
`of bedding and bedding accessories—including pillows and mattresses—it has adopted a stylized
`
`Z mark (“the Z mark”), for pillows and pillow components:
`
`8.
`
`CVB has developed a reputation as a top tiered, and award-winning company that
`
`offers fair prices and quality products. CVB is known throughout its market area by its Z pillows
`
`and the Z mark.
`
`9.
`
`Over the years, CVB has spent considerable amounts of money in establishing the
`
`Z mark in the minds of its customers as a source of high-quality products at a fair price.
`
`10.
`
`Today, the Z mark is sold nationwide and beyond, and has become associated in
`
`the minds of purchasers with CVB—a company where a mattress, pillow, or other type of
`
`bedding can be purchased at a fair price and a quality product received.
`
`11.
`
`Exemplary CVB use