Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA934249
`11/12/2018
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding No.
`
`92067273
`
`Filing Party
`
`Other Party
`
`Defendant
`Boston BioPharm, Inc.
`
`Plaintiff
`Dolcas Biotech, LLC
`
`Pending Motion
`
`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
`
`Attachments
`
`2018-08-08 - D.I. 1 - Complaint (COMPRESSED).pdf(4343685 bytes )
`
`Consent Motion for Suspension in View of Civil Proceeding
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Boston
`BioPharm, Inc. hereby requests suspension of this proceeding pending a final determination of the civil ac-
`tion. Trademark Rule 2.117.
`Boston BioPharm, Inc. has secured the express consent of all other parties to this proceeding for the suspen-
`sion requested herein.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this filing has been served upon all parties, at their address of
`record by Email on this date.
`Respectfully submitted,
`/Sean T. Phelan/
`Sean T. Phelan
`stphelan@venable.com, adprice@venable.com, csmitros@venable.com, trademarkdocket@venable.com
`11/12/2018
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 1 of 12 PageID: 1
`
`Andrew P. MacArthur, Esq.
`(SBN: 016512007)
`VENABLE LLP
`1270 Avenue of the Americas
`New York, New York 10020
`Telephone No.: (212) 503-0657
`Facsimile No.: (212) 307-5598
`
`Attorneys for Plaintiff
`
`OF COUNSEL:
`Damon W.D. Wright, Esq. (Pro Hac Vice forthcoming)
`Sean T. Phelan, Esq. (Pro Hac Vice forthcoming)
`VENABLE LLP
`Washington, DC
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`Telephone No.: (202) 344-4000
`Facsimile No.: (202) 344-8300
`DWright@Venable.com
`STPhelan@Venable.com
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`
`BOSTON BIOPHARM, INC., a Delaware
`Corporation,
`
`Plaintiff,
`
`18-cv-12568
`Civil Action No. _______________
`
`v.
`
`JURY TRIAL DEMANDED
`
`DOLCAS BIOTECH, LLC, a New Jersey
`Limited Liability Company,
`
`DOCUMENT FILED
`ELECTRONICALLY
`
`Defendant.
`
`COMPLAINT
`
`Plaintiff Boston BioPharm, Inc. (“Boston BioPharm”), by and through undersigned
`
`counsel, brings this action against defendant Dolcas Biotech, LLC (“Dolcas”) and alleges as
`
`follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for false advertising under the Lanham Act, 15 U.S.C. §
`
`1125(a)(1)(B). Additionally, this action seeks cancellation of U.S. Reg. No. 3,221,204 (BIO-
`
`1
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 2 of 12 PageID: 2
`
`CURCUMIN) for genericness under 15 U.S.C. §§ 1119 and 1064(3) and cancellation of U.S.
`
`Reg. No. 3,278,319 (BIO-CURCUMAX) for deceptiveness under 15 U.S.C. §§ 1119, 1052(a),
`
`and 1064(3).1
`
`THE PARTIES
`
`2.
`
`Boston BioPharm is a Delaware corporation with its principal place of business at
`
`950 E. State Highway 114, Suite 160, Southlake, TX 76092.
`
`3.
`
`Upon information and belief, Dolcas is a New Jersey limited liability company
`
`with a principal place of business at 9 Lenel Rd., Landing, NJ 07850.
`
`JURISDICTION AND VENUE
`
`4.
`
`This Court has subject matter jurisdiction over this matter pursuant to 15 U.S.C. §
`
`1121 and 28 U.S.C. §§ 1331 and 1338.
`
`5.
`
`This Court has personal jurisdiction over Dolcas because it is a resident of this
`
`District, is a limited liability company organized and existing under the laws of the State of New
`
`Jersey, and maintains its principal place of business in this District. Additionally, Dolcas has
`
`transacted substantial business and caused injury to Plaintiff in this District and thus, Dolcas’s
`
`contacts with the State of New Jersey are sufficient for jurisdiction.
`
`6.
`
`Venue is proper in this District under 28 U.S.C. § 1391(b) as Dolcas is a resident
`
`of this District and substantial events giving rise to this action occurred in this District.
`
`1 The parties are engaged in a cancellation proceeding before the Trademark Trial and Appeal
`Board (No. 92067273) where Dolcas filed a petition to cancel Boston BioPharm’s BIOCURC
`registration (U.S. Reg. No. 5,209,646) and Boston BioPharm counterclaimed to cancel Dolcas’s
`BIO-CURCUMIN registration (U.S. Reg. No. 3,221,204).
`
`2
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 3 of 12 PageID: 3
`
`GENERAL ALLEGATIONS
`
`I.
`
`BIO-CURCUMIN is Generic
`
`7.
`
`Turmeric extract possesses many health benefits that make it theoretically
`
`valuable as a nutritional supplement or ingredient therefor. In an unprocessed state, however,
`
`turmeric extract’s poor oral absorption rate leads to a practical problem: decreased ability to
`
`enter the body’s circulation and have an active effect, diminishing its overall usefulness.
`
`8.
`
`When consumed, turmeric extract undergoes extensive metabolism in the
`
`gastrointestinal tract. Much of the turmeric extract is metabolized into curcumin glucuronide and
`
`curcumin sulfate, both of which are inactive in the human body.
`
`9.
`
`Various formulations have been developed with the goal of enhancing turmeric
`
`extract’s oral absorption and ability to enter the body’s circulation in order to have an active
`
`effect.
`
`10.
`
`Dolcas owns a U.S. trademark registration for BIO-CURCUMIN: U.S. Reg. No.
`
`3,221,204, filed September 21, 2006, for “nutritional supplements in tablets, capsules, powder,
`
`soft gel and granule form” in Class 5. Exhibit A (U.S. Reg. No. 3,221,204). However, the
`
`registered term BIO-CURCUMIN is generic.
`
`11.
`
`The relevant purchasing public understands “CURCUMIN” as the common or
`
`class name for turmeric extract. Dolcas acknowledged as much by disclaiming “CURCUMIN”
`
`when it registered ENHANCED BIO AVAILABLE CURCUMIN on the Supplemental Register.
`
`Exhibit B (U.S. Reg. No. 3,697,233). A disclaimer in a registration on the Supplemental
`
`Register means that the disclaimed wording is generic. Therefore, Dolcas’s disclaimer of
`
`“CURCUMIN” in U.S. Reg. No. 3,697,233 acknowledges that the term is generic with respect to
`
`3
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 4 of 12 PageID: 4
`
`the goods in the registration, namely, “[d]ietary supplements in tablet, capsule, powder and
`
`liquid form.” Id.
`
`12.
`
`The relevant purchasing public understands the designation “bioavailable”
`
`primarily as the common or class name for the quality of a substance to enter the body’s
`
`circulation and have an active effect. Exhibit C (showing the definition of “bioavailable”).
`
`Therefore, the term “BIOAVAILABLE” is generic.
`
`13.
`
`Other registrants before the U.S. Patent and Trademark Office have
`
`acknowledged that “BIOAVAILABLE” and “CURCUMIN” lack distinctiveness, separately and
`
`together, by disclaiming both words.
`
`14.
`
`The owner of U.S. Reg. Nos. 3,964,608 and 4,680,405, Indena Spa Corp.,
`
`disclaimed “BIOAVAILABLE CURCUMIN” in both marks depicted below, attached hereto as
`
`Exhibits D and E. 2
`
`(Ex. D - U.S. Reg. No. 3,964,608)
`
`(Ex. E - U.S. Reg. No. 4,680,405)
`
`15.
`
`The term “bioavailable curcumin” has become a generic designation for turmeric
`
`extract that may enter the body’s circulation and have an active effect. Screenshots showing the
`
`term “bioavailable curcumin” appearing on or in connection with four third-party nutritional
`
`supplements are attached as Exhibit F hereto (results of an Amazon search for “bioavailable
`
`curcumin” and then clicking four products).
`
`2 U.S. Reg. No. 3,964,608 was cancelled on December 29, 2017 after Indena Spa Corp. failed to
`file an acceptable declaration under Section 71 of the Trademark Act.
`
`4
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 5 of 12 PageID: 5
`
`16.
`
`BIO is an abbreviation for “bioavailable.” Exhibit G. In the field of nutritional
`
`supplements and ingredients therefor, the term BIO has become unmistakably associated with
`
`the term “bioavailable.”
`
`17.
`
`In the context of nutritional supplements and ingredients therefor, the terms BIO
`
`and CURCUMIN retain their meanings when combined in the compound mark BIO-
`
`CURCUMIN.
`
`18.
`
`The term BIO-CURCUMIN has become associated in the minds of purchasers of
`
`nutritional supplements as a generic designation for bioavailable curcumin. Dolcas is therefore
`
`not entitled to claim exclusive trademark rights in the generic wording BIO-CURCUMIN for the
`
`goods claimed in U.S. Reg. No. 3,221,204.
`
`II.
`
`False Advertising – Lanham Act, 15 U.S.C. § 1125(a)
`
`A.
`
`BIOCURC
`
`19.
`
`Boston BioPharm is a leading manufacturer of ingredients for nutritional
`
`supplements and, through its licensees, a provider of nutritional supplement products. These
`
`products include BIOCURC bio-curcumin.
`
`20.
`
`As a result of Boston BioPharm’s sales, advertising, and promotion, including that
`
`of its licensees, BIOCURC bio-curcumin has attained significant consumer awareness and
`
`approval.
`
`B.
`
`Dolcas’s Bio-curcumin Products
`
`21.
`
`Dolcas, a competitor of Boston BioPharm, is a manufacturer of ingredients for
`
`nutritional supplements under the mark BIO-CURCUMAX (U.S. Reg. No. 3,278,319). BIO-
`
`CURCUMAX bio-curcumin is similar in chemical origin to and competes directly with
`
`BIOCURC bio-curcumin. Dolcas markets its BIO-CURCUMAX bio-curcumin to the same
`
`5
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 6 of 12 PageID: 6
`
`consumers who are actual or potential purchasers of Boston BioPharm’s BIOCURC bio-
`
`curcumin.
`
`22.
`
`Dolcas uses BIO-CURCUMIN and BIO-CURCUMAX together, creating the
`
`commercial impression that BIO-CURCUMAX provides the “MAX” or maximum amount of
`
`bioavailable curcumin. Exhibit H (trademark specimen submitted by Dolcas in its July 20, 2017
`
`Combined Declaration of Use/Application for Renewal of U.S. Reg. No. 3,278,319 (BIO-
`
`CURCUMAX)).
`
`23.
`
`However, Dolcas’s BIO-CURCUMAX bio-curcumin product does not provide
`
`the maximum levels of bio-curcumin as compared to Boston BioPharm’s BIOCURC bio-
`
`curcumin, which contains more bio-curcumin than does BIO-CURCUMAX.
`
`24.
`
`By naming its product BIO-CURCUMAX, Dolcas necessarily and unequivocally
`
`conveys that BIO-CURCUMAX bio-curcumin provides consumers with the maximum amount
`
`of bio-curcumin. Consumers place significant value on the bioavailability of curcumin when
`
`purchasing nutritional supplements. They immediately recognize an advertising claim promising
`
`a supplement’s “MAX” strength as a claim of maximal bioavailability when compared to a bio-
`
`curcumin product whose name does not contain the word “MAX.”
`
`25.
`
`Dolcas’s claim that its BIO-CURCUMAX bio-curcumin provides the maximally
`
`bioavailable amount of curcumin is material in that it is likely to influence consumers’
`
`purchasing decisions.
`
`26.
`
`The ability of Dolcas’s BIO-CURCUMAX bio-curcumin to be available for
`
`absorption into blood plasma better than competing products, including BIOCURC bio-
`
`curcumin, concerns an inherent quality or characteristic of the product that is undoubtedly
`
`important to consumers. Curcumin’s usefulness as a nutritional supplement results from its
`
`6
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 7 of 12 PageID: 7
`
`absorption into the bloodstream, where it exhibits various health benefits via its distribution
`
`throughout the body. A nutritional supplement product’s ability to be absorbed into the
`
`bloodstream more effectively than the competition is something consumers take into account
`
`when deciding whether or not to purchase BIO-CURCUMAX bio-curcumin, BIOCURC bio-
`
`curcumin, or another curcumin nutritional supplement product.
`
`27.
`
`As explained above, because BIO-CURCUMAX bio-curcumin does not provide
`
`the maximally bioavailable amount of curcumin, the necessarily implied claim in the name BIO-
`
`CURCUMAX is per se false.
`
`COUNT ONE
`Cancellation of U.S. Reg. No. 3,221,204 for Genericness
`15 U.S.C. §§ 1119 and 1064(3)
`
`28.
`
`Boston BioPharm hereby incorporates by reference and realleges the foregoing
`
`paragraphs as if fully set forth herein.
`
`29.
`
`As explained above, BIO-CURCUMIN is incapable of source designation and is
`
`thus generic.
`
`30.
`
`Boston BioPharm has been damaged and will continue to be damaged by the
`
`continuation of the registration of Dolcas’s BIO-CURCUMIN mark because, as a generic term,
`
`BIO-CURCUMIN should be freely available for competitors to use. The continued registration
`
`of BIO-CURCUMIN bars Boston BioPharm from describing its products using the commonly
`
`recognized, generic term for bioavailable curcumin: turmeric extract that may enter the body’s
`
`circulation and have an active effect.
`
`31.
`
`This Court should order the registration of Dolcas’s BIO-CURCUMIN mark to be
`
`cancelled pursuant to its powers under 15 U.S.C. § 1119 and 15 U.S.C. § 1064(3).
`
`7
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 8 of 12 PageID: 8
`
`COUNT TWO
`False Advertising
`Lanham Act, 15 U.S.C. § 1125(a)(1)(B)
`(Monetary and Injunctive Relief)
`
`32.
`
`Boston BioPharm hereby incorporates by reference and realleges the foregoing
`
`paragraphs as if fully set forth herein.
`
`33.
`
`Boston BioPharm and Dolcas are direct competitors in the market for the sale of
`
`bio-curcumin supplement products and ingredients therefor.
`
`34.
`
`Dolcas has used and continues to use false and misleading descriptions and
`
`misrepresentations of fact in commercial advertising and promotion regarding the nature, quality,
`
`and performance of its products and those of its competitors. These false and misleading
`
`descriptions and misrepresentations of fact have deceived or have the tendency to deceive a
`
`substantial segment of the buying audience.
`
`35.
`
`Dolcas’s product name necessarily suggests and/or implies that the BIO-
`
`CURCUMAX bio-curcumin provides the maximum amount of bioavailable curcumin – that is,
`
`the maximum amount of curcumin that is able to enter the body’s circulation and have an active
`
`effect. These superiority claims are false and misleading by necessary implication because other
`
`bio-curcumin products, including Boston BioPharm’s BIOCURC bio-curcumin, provide
`
`significantly more bio-curcumin. The false and misleading statements by Dolcas constitute false
`
`advertising in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B).
`
`36.
`
`Dolcas willfully causes, and willfully has caused, its false and misleading
`
`advertising to enter interstate commerce, including by knowingly making false and misleading
`
`claims in its advertising.
`
`8
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 9 of 12 PageID: 9
`
`37.
`
`Dolcas’s false and misleading claims are material in that they are likely to
`
`influence consumers’ purchasing decisions and because they relate to inherent qualities or
`
`characteristics of the product.
`
`38.
`
`As a direct and proximate result of the wrongful acts of Dolcas alleged above,
`
`Boston BioPharm has suffered, and will continue to suffer, substantial damage to its business
`
`reputation, good will, and market share.
`
`39.
`
`Based on the foregoing, Boston BioPharm is entitled to monetary damages
`
`equaling Boston BioPharm’s actual damages and/or Dolcas’s profits resulting from Dolcas’s
`
`false advertising, in an amount to be proven at trial, and the costs of the action, pursuant to 15
`
`U.S.C. § 1117. Boston BioPharm is also entitled to an accounting of Dolcas’s profits resulting
`
`from its Lanham Act violations.
`
`40.
`
`Upon information and belief, Dolcas’s false advertising is willful, knowing,
`
`calculated to deceive, and was undertaken in bad faith. As a result, this Court should determine
`
`that this is an exceptional case and award Boston BioPharm its attorneys’ fees and costs incurred
`
`in prosecuting this action pursuant to 15 U.S.C. § 1117.
`
`COUNT THREE
`Cancellation of U.S. Reg. No. 3,278,319
`15 U.S.C. §§ 1119, 1052(a), and 1064(3)
`
`41.
`
`Boston BioPharm hereby incorporates by reference and realleges the foregoing
`
`paragraphs as if fully set forth herein.
`
`42.
`
`As explained above, Dolcas’s BIO-CURCUMAX mark consists of and comprises
`
`deceptive matter.
`
`9
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 10 of 12 PageID: 10
`
`43.
`
`The mark BIO-CURCUMAX is misdescriptive of the character, quality, and
`
`composition of the goods because it deceptively implies that Dolcas’s bio-curcumin product
`
`contains the maximum amount of bio-curcumin.
`
`44.
`
`Prospective purchasers are likely to believe that BIO-CURCUMAX, and its
`
`attendant deceptive claim regarding the maximal bioavailability of its curcumin, actually
`
`describes Dolcas’s bio-curcumin product.
`
`45.
`
`The deceptive misdescription inherent in the BIO-CURCUMAX mark is material
`
`in that it significantly induces consumers’ decisions to purchase Dolcas’s bio-curcumin product.
`
`46.
`
`Boston BioPharm has been harmed and will continue to be harmed by the
`
`continued registration of Dolcas’s deceptive BIO-CURCUMAX mark as consumers’ purchasing
`
`decisions are significantly affected by the mark’s intrinsic material deceptiveness.
`
`47.
`
`This Court should order the registration of Dolcas’s BIO-CURCUMIN mark to be
`
`cancelled pursuant to its powers under 15 U.S.C. §§ 1119, 1052(a), 1064(3).
`
`WHEREFORE, Boston BioPharm prays:
`
`PRAYER FOR RELIEF
`
`A.
`
`For an Order finding that BIO-CURCUMIN is a generic term widely used as a
`
`designation for turmeric extract that may enter the body’s bloodstream and have an active
`
`effect;
`
`B.
`
`For an Order pursuant to 15 U.S.C. § 1119 to the Director of the Patent and Trademark
`
`Office to cancel U.S. Reg. No. 3,221,204;
`
`C.
`
`For judgment that Dolcas has violated 15 U.S.C. § 1125(a) with respect to its BIO-
`
`CURCUMAX mark;
`
`10
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 11 of 12 PageID: 11
`
`D.
`
`For injunctive relief prohibiting Dolcas, its affiliates, representatives, licensees, and all
`
`those persons in active concert or participation with it from using the BIO-CURCUMAX
`
`mark or anything confusingly similar thereto;
`
`E.
`
`For an Order barring Dolcas from seeking to register BIO-CURCUMAX or anything
`
`confusingly similar thereto;
`
`F.
`
`For an Order requiring Dolcas to issue corrective advertising in a form approved by the
`
`Court to dispel the serious competitive impact and effect of the false and misleading
`
`advertising claims caused by Dolcas;
`
`G.
`
`For an Order pursuant to 15 U.S.C. § 1119 to the Director of the Patent and Trademark
`
`Office to cancel U.S. Reg. No. 3,278,319;
`
`H.
`
`For monetary damages to be determined, including Dolcas’s profits and Boston
`
`BioPharm’s losses;
`
`I.
`
`J.
`
`For attorneys’ fees and expenses incurred in bringing this action; and
`
`For such other, further, or different relief as this Court may deem just and proper.
`
`JURY TRIAL DEMANDED
`
`Plaintiff respectfully demands a trial by jury on all issues so triable.
`
`Dated: August 8, 2018
`New York, New York
`
`Respectfully submitted,
`
`By: /s/ Andrew P. MacArthur
`Andrew P. MacArthur, Esq.
`(SBN: 016512007)
`VENABLE LLP
`1270 Avenue of the Americas
`New York, New York 10020
`Telephone No.: (212) 503-0657
`Facsimile No.: (212) 307-5598
`
`OF COUNSEL:
`
`11
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1 Filed 08/08/18 Page 12 of 12 PageID: 12
`
`Damon W.D. Wright, Esq.
`(Pro Hac Vice forthcoming)
`Sean T. Phelan, Esq.
`(Pro Hac Vice forthcoming)
`VENABLE LLP
`Washington, DC
`600 Massachusetts Avenue, NW
`Washington, DC 20001
`Telephone No.: (202) 344-4000
`Facsimile No.: (202) 344-8300
`DWright@Venable.com
`STPhelan@Venable.com
`
`Attorneys for Plaintiff
`
`12
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1-1 Filed 08/08/18 Page 1 of 2 PageID: 13
`CIVIL COVER SHEET
`CIVIL COVER SHEET
`JS 44 (Rev. 06/17)
`JS 44 (Rev. 06/17)
`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
`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
`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.
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM)
`(SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`I. (a) PLAINTIFFS
`
`Boston BioPharm, Inc.
`Boston BioPharm, Inc.
`
`DEFENDANTS
`DEFENDANTS
`
`Dolcas Biotech, LLC
`Dolcas Biotech, LLC
`
`Ì¿®®¿²¬ô ÌÈ
`(b) County of Residence of First Listed Plaintiff Tarrant, TX
`(b) County of Residence of First Listed Plaintiff
`(EXCEPT IN U.S. PLAINTIFF CASES)
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`Ó±®®·­ô ÒÖ
`County of Residence of First Listed Defendant (cid:9)Morris, NJ
`County of Residence of First Listed Defendant
`(IN U.S. PLAINTIFF CASES 01111,19
`(IN U.S. PLAINTIFF CASES ONLY)
`
`NOTE:
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`THE TRACT OF LAND INVOLVED.
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`(C) Attorneys (Firm Name, Address, and Telephone Number)
`
`Attorneys (If Known)
`Attorneys (If Known)
`
`Andrew MacArthur, Venable, LLP, 1270 Avenue of the Americas
`Andrew MacArthur, Venable, LLP, 1270 Avenue of the Americas
`New York, New York 10020, (212) 503-0657
`New York, New York 10020, (212) 503-0657
`
`II. BASIS OF JURISDICTION (Place an "X" in One Box Only)
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`1 U.S. Government
`0 1 U.S. Government
`Plaintiff
`Plaintiff
`
`X 3 Federal Question
`3 Federal Question
`(U.S. Government Not a Party)
`(U.S. Government Not a Party)
`
`HI. CITIZENSHIP OF PRINCIPAL PARTIES (Place an "X" in One Box for Plaintiff
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`(For Diversity Cases Only) (cid:9)
`and One Box for Defendant)
`PTF DEF
`PTF
`DEF
`PTF
`DEF
`PTF
`DEF
`4
`4
`1
`1
`Incorporated or Principal Place
`Citizen of This State
`0 4 0 4
`
`Citizen of This State (cid:9)0 1 0 (cid:9)1 Incorporated or Principal Place
`of Business In This State
`of Business In This State
`
`2 U.S. Government
`0 2 U.S. Government
`Defendant
`Defendant
`
`4 Diversity
`0 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`(Indicate Citizenship of Parties in Item HI)
`
`Citizen of Another State
`2
`2
`Incorporated and Principal Place
`Citizen of Another State (cid:9)0 2 0 2 Incorporated and Principal Place
`of Business In Another State
`of Business In Another State
`
`5
`5
`0 5 0 5
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`IV. NATURE OF SUIT (Place an "X" in One Box Only)
`TORTS
`I (cid:9)CONTRACT
`CONTRACT
`TORTS
`
`0 110 Insurance
`110 Insurance
`120 Marine
`0 120 Marine
`0 130 Miller Act
`130 Miller Act
`140 Negotiable Instrument
`0 140 Negotiable Instrument
`150 Recovery of Overpayment
`0 150 Recovery of Overpayment
`& Enforcement of Judgment
`& Enforcement of Judgment
`151 Medicare Act
`0 151 Medicare Act
`152 Recovery of Defaulted
`0 152 Recovery of Defaulted
`Student Loans
`Student Loans
`(Excludes Veterans)
`(Excludes Veterans)
`153 Recovery of Overpayment
`0 153 Recovery of Overpayment
`of Veteran’s Benefits
`of Veteran's Benefits
`a 160 Stockholders' Suits
`160 Stockholders’ Suits
`190 Other Contract
`0 190 Other Contract
`195 Contract Product Liability
`0 195 Contract Product Liability
`196 Franchise
`0 196 Franchise
`
`I (cid:9)REAL PROPERTY
`REAL PROPERTY
`210 Land Condemnation
`0 210 Land Condemnation
`220 Foreclosure
`0 220 Foreclosure
`230 Rent Lease & Ejectment
`0 230 Rent Lease & Ejectment
`240 Torts to Land
`0 240 Torts to Land
`245 Tort Product Liability
`0 245 Tort Product Liability
`290 All Other Real Property
`0 290 All Other Real Property
`
`PERSONAL INJURY (cid:9)PERSONAL INJURY
`PERSONAL INJURY
`PERSONAL INJURY
`310 Airplane
`365 Personal Injury -
`0 310 Airplane (cid:9) 0 365 Personal Injury -
`0 315 Airplane Product (cid:9) Product Liability
`315 Airplane Product
`Product Liability
`Liability
`367 Health Care/
`Liability (cid:9) 0 367 Health Care/
`320 Assault, Libel &
`Pharmaceutical
`0 320 Assault, Libel & (cid:9) Pharmaceutical
`Slander
`Personal Injury
`Slander (cid:9) Personal Injury
`0 330 Federal Employers' (cid:9)Product Liability
`330 Federal Employers’
`Product Liability
`Liability
`368 Asbestos Personal
`Liability (cid:9) 0 368 Asbestos Personal
`0 340 Marine (cid:9) Injury Product
`340 Marine
`Injury Product
`345 Marine Product
`Liability
`0 345 Marine Product (cid:9) Liability
`Liability (cid:9) PERSONAL PROPERTY
`Liability
`PERSONAL PROPERTY
`350 Motor Vehicle
`370 Other Fraud
`0 350 Motor Vehicle (cid:9)0 370 Other Fraud
`a 355 Motor Vehicle (cid:9)a 371 Truth in Lending
`355 Motor Vehicle
`371 Truth in Lending
`Product Liability
`380 Other Personal
`Product Liability (cid:9)0 380 Other Personal
`360 Other Personal
`Property Damage
`0 360 Other Personal (cid:9) Property Damage
`Injury (cid:9) 0 385 Property Damage
`Injury
`385 Property Damage
`362 Personal Injury -
`Product Liability
`0 362 Personal Injury - (cid:9) Product Liability
`Medical Malpractice
`Medical Malpractice
`CIVIL RIGHTS
`CIVIL RIGHTS
`440 Other Civil Rights
`0 440 Other Civil Rights
`441 Voting
`0 441 Voting
`0 442 Employment
`442 Employment
`443 Housing/
`0 443 Housing/
`Accommodations
`Accommodations
`445 Amer. w/Disabilities -
`0 445 Amer. w/Disabilities -
`Employment
`Employment
`446 Amer. w/Disabilities -
`0 446 Amer. w/Disabilities -
`Other
`Other
`448 Education
`0 448 Education
`
`PRISONER PETITIONS
`PRISONER PETITIONS
`Habeas Corpus:
`Habeas Corpus:
`463 Alien Detainee
`0 463 Alien Detainee
`510 Motions to Vacate
`0 510 Motions to Vacate
`Sentence
`Sentence
`530 General
`0 530 General
`535 Death Penalty
`0 535 Death Penalty
`Other:
`Other:
`540 Mandamus & Other
`0 540 Mandamus & Other
`550 Civil Rights
`0 550 Civil Rights
`555 Prison Condition
`0 555 Prison Condition
`560 Civil Detainee -
`0 560 Civil Detainee -
`Conditions of
`Conditions of
`Confinement
`Confinement
`
`3
`3
`Foreign Nation
`Citizen or Subject of a
`Citizen or Subject of a (cid:9)0 3 0 3 Foreign Nation
`Foreign Country
`Foreign Country
`
`6
`6
`0 6 0 6
`
`FORFEITURE/PENALTY
`FORFEITURE/PENALTY
`
`Click here for: Nature of Suit Code Descriptions.
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES (cid:9)I
`BANKRUPTCY
`OTHER STATUTES
`
`0 625 Drug Related Seizure
`625 Drug Related Seizure
`of Property 21 USC 881
`of Property 21 USC 881
`690 Other
`0 690 Other
`
`422 Appeal 28 USC 158
`0 422 Appeal 28 USC 158
`423 Withdrawal
`0 423 Withdrawal
`28 USC 157
`28 USC 157
`
`PROPERTY RIGHTS
`PROPERTY RIGHTS
`820 Copyrights
`0 820 Copyrights
`830 Patent
`0 830 Patent
`835 Patent - Abbreviated
`0 835 Patent - Abbreviated
`New Drug Application
`New Drug Application
`840 Trademark
`14 840 Trademark
`SOCIAL SECURITY
`SOCIAL SECURITY
`861 HIA (1395ff)
`0 861 FHA (1395ff)
`a 862 Black Lung (923)
`862 Black Lung (923)
`863 DIWC/DIWW (405(g))
`0 863 DIWC/DIWW (405(g))
`864 SSID Title XVI
`0 864 SSID Title XVI
`865 RSI (405(g))
`0 865 RSI (405(g))
`
`FEDERAL TAX SUITS
`FEDERAL TAX SUITS
`870 Taxes (U.S. Plaintiff
`0 870 Taxes (U.S. Plaintiff
`or Defendant)
`or Defendant)
`0 871 IRS—Third Party
`871 IRS—Third Party
`26 USC 7609
`26 USC 7609
`
`LABOR
`LABOR
`710 Fair Labor Standards
`0 710 Fair Labor Standards
`Act
`Act
`720 Labor/Management
`0 720 Labor/Management
`Relations
`Relations
`740 Railway Labor Act
`0 740 Railway Labor Act
`751 Family and Medical
`0 751 Family and Medical
`Leave Act
`Leave Act
`790 Other Labor Litigation
`0 790 Other Labor Litigation
`0 791 Employee Retirement
`791 Employee Retirement
`Income Security Act
`Income Security Act
`
`IMMIGRATION
`IMMIGRATION
`462 Naturalization Application
`0 462 Naturalization Application
`465 Other Immigration
`0 465 Other Immigration
`Actions
`Actions
`
`375 False Claims Act
`0 375 False Claims Act
`376 Qui Tam (31 USC
`0 376 Qui Tam (31 USC
`3729(a))
`3729(a))
`400 State Reapportionment
`0 400 State Reapportionment
`0 410 Antitrust
`410 Antitrust
`430 Banks and Banking
`0 430 Banks and Banking
`450 Commerce
`0 450 Commerce
`460 Deportation
`0 460 Deportation
`470 Racketeer Influenced and
`0 470 Racketeer Influenced and
`Corrupt Organizations
`Corrupt Organizations
`0 480 Consumer Credit
`480 Consumer Credit
`490 Cable/Sat TV
`0 490 Cable/Sat TV
`a 850 Securities/Commodities/
`850 Securities/Commodities/
`Exchange
`Exchange
`890 Other Statutory Actions
`0 890 Other Statutory Actions
`891 Agricultural Acts
`0 891 Agricultural Acts
`893 Environmental Matters
`0 893 Environmental Matters
`895 Freedom of Information
`0 895 Freedom of Information
`Act
`Act
`896 Arbitration
`0 896 Arbitration
`899 Administrative Procedure
`0 899 Administrative Procedure
`Act/Review or Appeal of
`Act/Review or Appeal of
`Agency Decision
`Agency Decision
`950 Constitutionality of
`0 950 Constitutionality of
`State Statutes
`State Statutes
`
`V. ORIGIN (Place an "X" in One Box Only)
`V. ORIGIN (Place an “X” in One Box Only)
`1 Original (cid:9)0 2 Removed from (cid:9)0 3 Remanded from
`1 Original
`2 Removed from
`3 Remanded from
`Proceeding
`State Court
`Appellate Court
`Proceeding (cid:9)State Court (cid:9) Appellate Court
`
`VI. CAUSE OF ACTION
`VI. CAUSE OF ACTION
`
`❑ 6 Multidistrict (cid:9)0 8 Multidistrict
`0 4 Reinstated or 0 5 Transferred from
`6 Multidistrict
`4 Reinstated or
`5 Transferred from
`8 Multidistrict
`Litigation -
`Reopened
`Litigation -
`Reopened (cid:9)Another District (cid:9)Litigation - (cid:9) Litigation -
`Another District
`Transfer
`Direct File
`(specify) (cid:9) Transfer (cid:9) Direct File
`(specify)
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`15 U.S.C. §§ 1119, 1125, 1052, 1064
`15 U.S.C. §§ 1119, 1125, 1052, 1064
`Brief description of cause:
`Brief description of cause:
`Trademark cancellation for genericness and deceptiveness, false advertising
`Trademark cancellation for genericness and deceptiveness, false advertising
`VII. REQUESTED IN (cid:9)❑ CHECK IF THIS IS A CLASS ACTION (cid:9)DEMAND $ (cid:9) CHECK YES only if demanded in complaint:
`VII. REQUESTED IN
`CHECK YES only if demanded in complaint:
`DEMAND $
`CHECK IF THIS IS A CLASS ACTION
`JURY DEMAND: (cid:9)X Yes CINo
`UNDER RULE 23, F.R.Cv.P.
`COMPLAINT: (cid:9)UNDER RULE 23, F.R.Cv.P. (cid:9)
`COMPLAINT:
`Yes
`No
`JURY DEMAND:
`VIII. RELATED CASE(S)
`VIII. RELATED CASE(S)
`(See instructions):
`(See instructions):
`IF ANY (cid:9) JUDGE
`IF ANY
`JUDGE
`(cid:9)
`DATE
`DATE
`08/08/2018 (cid:9)
`08/08/2018
`FOR OFFICE USE ONLY
`FOR OFFICE USE ONLY
`
`SIGNATURE OF ATTORNEY OF RECORD
`SIGNATURE OF ATTORNEY OF RECORD
`/s/ Andrew P. MacArthur
`/s/ Andrew P. MacArthur
`
`DOCKET NUMBER
`DOCKET NUMBER
`
`RECEIPT #
`RECEIPT #
`
`AMOUNT
`APPLYING IFP
`JUDGE
`MAG. JUDGE
`AMOUNT (cid:9) APPLYING IFP (cid:9) JUDGE (cid:9) MAG. JUDGE
`
`

`

`Case 2:18-cv-12568-MCA-SCM Document 1-1 Filed 08/08/18 Page 2 of 2 PageID: 14
`JS 44 Reverse (Rev. 06/17)
`JS 44 Reverse (Rev. 06/17)
`
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44
`
`Authority For Civil Cover Sheet
`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
`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 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
`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:
`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
`Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
`I.(a)
`only the