Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA919863
`
`Filing date:
`
`09/04/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92067397
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Julia O. Faigel DMD, P.C.
`
`ROBERT M O'CONNELL JR
`FISH & RICHARDSON PC
`PO BOX 1022
`MINNEAPOLIS, MN 55440-1022
`UNITED STATES
`tmdoctc@fr.com, oconnell@fr.com, hosp@fr.com
`617-542-5070
`
`Motion to Suspend for Civil Action
`
`Robert M. O'Connell, Jr.
`
`tmdoctc@fr.com, oconnell@fr.com, hosp@fr.com
`
`/Robert M. O'Connell, Jr./
`
`09/04/2018
`
`Motion to Suspend - Dr Dental.pdf(207706 bytes )
`Dr Dental USDC DNH Complaint.pdf(2524114 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In The Matters of:
`
`Trademark Registration No. 4,886,106
`Issued 12 January 2016
`
`Trademark Registration No. 4,962, 993
`Issued 24 May 2016
`
`Trademark Registration No. 4,250,602
`Issued 27 November 2012
`
`Trademark Registration No. 3,300,322
`Issued 25 September 2007 (Supp. Reg.)
`
`
`
`JULIA O. FAIGEL DMD, P.C.
`
`Petitioner,
`
`
`
`
`
`
`
`v.
`
`IADMD HOLDINGS, LLC,
`
`
`
`
`
`Registrant.
`
`
`
`
`
` Cancellation No. 92067397
`
`
`
`
`
`MOTION TO SUSPEND PROCEEDINGS IN VIEW OF CIVIL LITIGATION
`
`
`
`Petitioner, Julia O. Faigel DMD, P.C. (“Petitioner”), by and through its attorneys, hereby
`
`respectfully requests that the consolidated proceedings to cancel Registration No. 4,886,106, No.
`
`4,962,993, No. 4,250,602, and No. 3,300,322 be suspended pursuant to 37 C.F.R. § 2.117(a) and
`
`Trademark Board Manual of Procedure (“TBMP”) § 510.02(a) pending the disposition of the
`
`civil litigation concerning these same Registrations.
`
`As grounds therefor, Petitioner states that on August 31, 2018 Petitioner filed a
`
`Complaint against Registrant in the United States District Court for the District of New
`
`Hampshire, (the “Civil Litigation”) seeking, inter alia, cancellation of the same registrations, as
`
`

`

`
`
`
`
`
`
`
`Motion to Suspend
`Faigel v. IADMD Holdings, LLC
`Cancellation No. 92067397
`Page 2
`
`
`
`well as certain declaratory relief. The case is Julia O. Faigel DMD, P.C. v. IADMD Holdings
`
`LLC, Civil Action No. 1:18-cv-00797. A true and correct copy of the Complaint filed in the
`
`Civil Litigation is attached hereto as Exhibit A.
`
`The Civil Litigation involves the same parties, the same marks and the same registrations
`
`as this proceeding. As such, any decision in the Civil Litigation will have a bearing on the issues
`
`raised in this proceeding. TBMP § 510.02(a).
`
`Petitioner attempted to secure the consent of Registrant’s counsel prior to filing this
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`motion but did not receive a response. No other motions are currently pending in this
`
`proceeding.
`
`WHEREFORE, Petitioner respectfully requests that this matter be suspended pending a
`
`final determination of the Civil Litigation.
`
`Respectfully submitted,
`
`JULIA O. FAIGEL DMD, P.C.,
`
`By its Attorneys,
`
`
`
` /Robert M. O’Connell, Jr./
`R. David Hosp
`Robert M. O’Connell, Jr.
`FISH & RICHARDSON P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`
`Courier Mail Address:
`One Marina Park Drive
`Boston, MA 02210
`
`Tel: (617) 542-5070
`E-mail: tmdoctc@fr.com, hosp@fr.com,
`oconnell@fr.com
`
`
`Dated: September 4, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`

`

`
`
`
`
`
`
`
`Motion to Suspend
`Faigel v. IADMD Holdings, LLC
`Cancellation No. 92067397
`Page 3
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that I caused a true copy of the foregoing Motion to Suspend Proceedings
`
`in View of Civil Litigation to be served on September 4, 2018, upon counsel of record for
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`Registrant, Cheryl A. Clarkin, Adler, Pollock & Sheehan PC, One Citizens Plaza, 8th Floor,
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`Providence, Rhode Island 02903 by electronic mail to cclarkin@apsolaw.com.
`
`
`
`
`
`Respectfully submitted,
`
`
` /Robert M. O’Connell, Jr./
`Robert M. O’Connell, Jr.
`Fish & Richardson, P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`Attorney for Petitioner
`
`
`
`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 1 of 22
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF NEW HAMPSHIRE
`
`
`
`
`
`
`
`JULIA O. FAIGEL DMD, P.C.,
`
`
`
`Plaintiff,
`
`
`
`
`
`v.
`
`IADMD HOLDINGS, LLC,
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`DEMAND FOR JURY TRIAL
`
`Civil Action No.: 1:18-cv-00797
`
`
`
`
`COMPLAINT
`
`1.
`
`This is an action for declaratory judgment of non-infringement and to order the
`
`cancellation of trademark registrations held by IADMD Holdings, LLC: Registration Nos.
`
`4,962,993 for the mark DOCTOR DENTAL (“the ‘993 Registration”), 4,886,106 for the mark
`
`DR DENTAL (“the ‘106 Registration”), 4,250,602 for the mark DR DENTAL (“the ‘602
`
`Registration”), and 3,300,322 for the mark DOCTOR DENTAL MD (“the ‘322 Registration”)
`
`(collectively “the IADMD Registrations”).
`
`2.
`
`This case concerns the ongoing harm and damage to Plaintiff Julia O. Faigel
`
`DMD, P.C. (“Faigel” or Plaintiff”) stemming from baseless threats and demands made by
`
`Defendant IADMD Holdings, LLC (“IADMD” or “Defendant”), purporting to be supported by
`
`Defendant’s registered trademarks—all of which are subject to cancellation.
`
`3.
`
`Since at least 2010, Plaintiff, along with its associated companies, has operated
`
`dentistry practices throughout the northeastern United States under the mark DR. DENTAL.
`
`Faigel currently operates over forty dentistry offices in Connecticut, Massachusetts, New
`
`Hampshire, and New Jersey, all under the mark DR. DENTAL.
`COMPLAINT
`
`
`
`Page 1 of 22
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`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 2 of 22
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`
`
`4.
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`Faigel has been subjected to numerous threats and demands from IADMD,
`
`asserting rights against Faigel based on IADMD’s ownership of these registrations, which threats
`
`and demands Faigel believes are baseless in light of the fact that IADMD’s purported rights
`
`cannot be supported, as explained below. IADMD’s threats and demands have threatened to
`
`inhibit Faigel’s ability to compete fairly in the dental services market and have caused additional
`
`harm to Faigel. As such, Faigel seeks a declaration from this Court that its use of the mark DR.
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`DENTAL is non-infringing.
`
`5.
`
`IADMD is the current owner of record of the IADMD Registrations, which
`
`IADMD has asserted as the basis for its threats to sue Faigel based on Faigel’s use of the DR.
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`DENTAL Mark.
`
`6.
`
`IADMD has no actual rights in the DR. DENTAL Mark, however, and IADMD’s
`
`registrations are subject to cancellation because the prosecution and maintenance histories of
`
`those registrations reveal on their faces that (a) the marks in question many not have actually
`
`been in use at the time the applications were filed, and/or (b) the marks were actually owned
`
`and/or used by someone other than the named Applicant.
`
`7.
`
`Alternatively, even apart from the issued raised by the prosecution histories, each
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`of these registrations is also subject to cancellation because the marks (a) are merely descriptive
`
`of the services claimed and lack secondary meaning; and/or (b) have been abandoned by the
`
`putative owner IADMD.
`
`PARTIES
`
`8.
`
`Faigel is a professional corporation duly organized and existing under the laws of
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`the Commonwealth of Massachusetts with its principal offices at 55 Meridian Street, East
`
`Boston, Massachusetts 02128.
`
`COMPLAINT
`
`
`
`
`Page 2 of 22
`
`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 3 of 22
`
`
`
`9.
`
`Upon information and belief, IADMD is a limited liability company duly
`
`organized and existing under the laws of the State of New Hampshire, with its principal offices
`
`at 215 South Broadway, Salem, New Hampshire 03079. Upon information and belief, IADMD’s
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`registered agent is Rosemary DiMaria, 39 Webber Road, East Hampstead, New Hampshire
`
`03826.
`
`JURISDICTION AND VENUE
`
`10.
`
`This is an action for declaratory judgment arising under (i) the Trademark Laws
`
`of the United States, 15 U.S.C. § 1051 et seq. (the “Trademark Act”) and (ii) 28 U.S.C. §§ 2201
`
`and 2202 (the Declaratory Judgment Act). Thus, this Court has original jurisdiction over the
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`subject matter of this action pursuant to 28 U.S.C. §§ 1331 and 1338.
`
`11.
`
`Upon information and belief, venue is proper in this Court pursuant to 28 U.S.C.
`
`§ 1391(b) and (c) because this is the judicial district where (i) Defendant resides and/or has its
`
`principal place of business, and (ii) where Defendant is subject to personal jurisdiction. Upon
`
`information and belief, Defendant maintains offices in the State of New Hampshire, and
`
`advertises and sells its goods in the State of New Hampshire.
`
`FACTUAL BACKGROUND
`
`A. FAIGEL’S USE OF DR. DENTAL
`
`12.
`
`Julia Faigel is the owner and clinical director of “Dr. Dental”, a regional chain of
`
`dental clinics serving clients in New Jersey, New Hampshire, Massachusetts, and Connecticut.
`
`13.
`
`Since its inception in 2004, Faigel’s clinics have built a reputation for flexible
`
`scheduling and reasonable prices. Faigel offers a full range of dental services, from routine
`
`cleaning and oral hygiene to crowns and non-surgical gum treatments.
`
`14.
`
`In 2010, Faigel began using the DR. DENTAL Mark in association with these
`
`COMPLAINT
`
`
`
`
`Page 3 of 22
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`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 4 of 22
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`
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`clinics.
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`15.
`
`Faigel created Dr. Dental with the goal of opening trusted neighborhood family
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`dental offices in locations chosen to provide the most convenience for its customers.
`
`16.
`
`Today, there are twenty-one (21) Dr. Dental offices in Massachusetts, sixteen (16)
`
`in Connecticut, three (3) in New Hampshire, and three (3) in New Jersey.
`
`B. THE IADMD REGISTRATIONS
`
`17.
`
`On information and belief, Rosemary DiMaria (“DiMaria”) is a founder and
`
`principal owner of IADMD.
`
`18.
`
`On or about April 20, 2005, DiMaria, in her own name, filed an application with
`
`the United States Patent and Trademark Office (“USPTO”) (Serial Number 78/612,948) for the
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`standard character mark DOCTOR DENTAL MD, based on an intent to use the mark in
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`connection with “Providing information about dentistry, dental health, oral hygiene, oral disease,
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`dental cures, dental medicine, dental diagnosis, dental treatment, dental counseling, dental advice
`
`and vendors, and patients via the internet,” in Class 44. The application was initially refused
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`based on a finding that the mark was merely descriptive of the services identified. The mark was
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`ultimately registered on the Supplemental Register on September 25, 2007 (Reg. No. 3,300,322)
`
`(the “‘322 Registration”). This ‘322 Registration was later assigned by DiMaria to IADMD in a
`
`nunc-pro-tunc assignment dated July 17, 2015 and recorded on July 21, 2015 (Reel 5880, Frame
`
`0986). The ’322 Registration was renewed last year in a filing dated September 22, 2017.
`
`19.
`
`Registration of the mark DOCTOR DENTAL MD on the Supplemental Register
`
`constituted an admission that the mark was (at least at that time) merely descriptive and lacking
`
`inherent or acquired distinctiveness.
`
`COMPLAINT
`
`
`
`
`Page 4 of 22
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`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 5 of 22
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`
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`20.
`
`On or about December 16, 2010, DiMaria, in her own name, filed another
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`application with the USPTO (Serial Number 85/199,236) for the standard character mark DR
`
`DENTAL. The application claimed a bona fide intent to use the mark on or in connection with
`
`the following services in Class 44: “Dentist services; providing a website featuring information
`
`for dentists on the subject of treatments and procedures related to dentistry; providing a website
`
`featuring information for patients in the field of dental health.” A Statement of Use was
`
`subsequently filed alleging use of the mark in Commerce since February 28, 2004, and
`
`registration on the Principal Register (subject to a disclaimer of DENTAL) was issued on
`
`November 27, 2012 (Reg. No. 4,250,602) (the “‘602 Registration”). This ‘602 Registration was
`
`also assigned by DiMaria to IADMD in the same nunc-pro-tunc assignment dated July 17, 2015.
`
`21.
`
`On or about August 6, 2015, IADMD filed a use-based application with the
`
`USPTO (Serial Number 86/716,488) for the standard character mark DR DENTAL claiming use
`
`of the mark in Commerce since February 28, 2004 in connection with an array of dental and
`
`charitable services in Classes 35 and 44. After minor amendments to the services description,
`
`this application matured into Principal Register registration number 4,886,016 (the “‘016
`
`Registration”) on January 12, 2016.
`
`22.
`
`Also on or about August 6, 2015, IADMD filed a use-based application with the
`
`USPTO (Serial Number 86/716,516) for the standard character mark DOCTOR DENTAL,
`
`claiming use of the mark in Commerce since February 28, 2004 in connection with an array of
`
`dental and charitable services in Classed 35 and 44. This application matured into Principal
`
`Registration number 4,962,993 (the “‘993 Registration”) on May 24, 2016.
`
`23.
`
`DiMaria and/or IADMD submitted specimens to the USPTO in connection with
`
`the prosecution and maintenance of the ‘332 Registration, the ‘602 Registration, the ‘016
`
`COMPLAINT
`
`
`
`
`Page 5 of 22
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`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 6 of 22
`
`
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`Registration, and the ‘993 Registration (collectively the “IADMD Registrations”). However,
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`these specimens all raise doubts on their face about (a) whether the mark was actually in use at
`
`the time the application was filed, (b) whether the mark was being used by the entity or
`
`individual named on the application, and (c) who the owner of the mark is.
`
`24.
`
`Because of the significant doubt raised by these specimens, Faigel filed a
`
`consolidated Petition to Cancel the IADMD Registrations with the Trademark Trial and Appeal
`
`Board on November 27, 2017. That proceeding, No. 92067397, is currently pending.
`
`a) THE ‘993 REGISTRATION SPECIMENS
`
`25.
`
`As a prerequisite to obtaining registration of a trademark in the United States, a
`
`domestic applicant much submit proof (known as a “specimen”) that the mark is actually in use
`
`at that time in interstate commerce by the Applicant (or a related entity). Current specimens
`
`showing continued use must also be submitted to the USPTO in order to maintain or renew a
`
`registration.
`
`26.
`
`The specimens submitted in 2015 in support of application serial no. 86/716,516
`
`for the mark DOCTOR DENTAL, which are required to show current use of the mark by the
`
`applicant, consist of printouts of advertising materials reflecting use of the mark by a different
`
`party entirely, John J. Ryan, DMD of East Hampstead, New Hampshire. Each of the items is
`
`dated 2004 (and thus is not evidence of use in 2015), all feature markedly inconsistent branding,
`
`and one of them clearly states that the mark is the “property of Dr. John J. Ryan, DMD.” Partial
`
`images of these specimens are shown below.
`
`COMPLAINT
`
`
`
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`Page 6 of 22
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`

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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 7 of 22
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`COMPLAINT
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`Page 7 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 8 of 22
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`27.
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`Thus all the specimens in support of the ‘993 Registration bear indicia of
`
`fabrication and call into question both IADMD’s ownership of this mark and whether this mark
`
`is, or has ever actually been, in bona fide use in Commerce.
`
`b) THE ‘106 REGISTRATION SPECIMENS
`
`28.
`
`The specimens submitted in 2015 in support of Application Serial No.
`
`86/716,488 for the mark DR DENTAL, which are required to show current use of the mark by
`
`the applicant, consist of printouts of advertising materials reflecting use of the mark by a
`
`COMPLAINT
`
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`
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`Page 8 of 22
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`

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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 9 of 22
`
`
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`different party entirely, John J. Ryan, DMD of East Hampstead, New Hampshire. Each of the
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`items is dated 2004 (and thus is not evidence of use in 2015), and all feature markedly
`
`inconsistent branding. Partial images of these specimens are shown below.
`
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`COMPLAINT
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`Page 9 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 10 of 22
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`COMPLAINT
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`Page 10 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 11 of 22
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`COMPLAINT
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`Page 11 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 12 of 22
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`29.
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`Thus all the specimens in support of the ‘106 Registration bear indicia of
`
`fabrication and call into question both IADMD’s ownership of this mark and whether this mark is,
`
`or has ever actually been in bona fide use in Commerce.
`
`c) THE ‘602 REGISTRATION SPECIMENS
`
`30.
`
`The specimen submitted in 2012 in support of the Statement of Use for Application
`
`Serial No. 85/199,236 (which matured to the ‘602 Registration) consists a one-page advertisement
`
`from 2004 identical to one of the specimens submitted in 2015 for application serial no. 86/716,488.
`
`The specimen consists of an invitation to a talk purportedly given in September 2004, and shows no
`
`contemporary use of the mark in connection with the Class 44 services claimed in the application:
`
`
`
`COMPLAINT
`
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`Page 12 of 22
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`

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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 13 of 22
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`31.
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`Thus all the specimens in support of the ‘602 Registration bear indicia of
`
`fabrication and call into question both IADMD’s ownership of this mark and whether this mark is,
`
`or has ever actually been in bona fide use in Commerce, whether for the claimed services or
`
`anything else.
`
`d) THE ‘322 REGISTRATION SPECIMENS
`
`32.
`
`The specimen submitted in 2017 in support of the renewal of the ‘322 Registration
`
`for the mark DOCTOR DENTAL MD, which is supposed to show current use of the mark, consists
`
`of four pages of advertising materials bearing dates of 2003, feature markedly inconsistent
`
`branding, display a phone number different from the other specimens, and on one page mention
`
`IADMD Holdings, an entity that was not organized in New Hampshire until 2005. Images of these
`
`specimens are shown below.
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`COMPLAINT
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`Page 13 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 14 of 22
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`COMPLAINT
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`Page 14 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 15 of 22
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`
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`33.
`
`Thus all the specimens in support of the ‘322 Registration bear indicia of
`
`fabrication and call into question both IADMD’s ownership of this mark and whether this mark is,
`
`or has ever actually been in bona fide use in Commerce.
`
`COMPLAINT
`
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`Page 15 of 22
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`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 16 of 22
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`
`
`C. IADMD’S VEXATIOUS DEMANDS
`
`34.
`
`On August 28, 2017, Faigel received several cease and desist letters sent on
`
`behalf of IADMD. The letters were sent to multiple Faigel offices on the same day in a
`
`coordinated campaign. A true and correct copy of one of these letters is attached hereto as
`
`Exhibit A.
`
`35.
`
`Each of these letters referenced the IADMD Registrations and demanded the
`
`immediate cessation of Faigel’s use of the DR. DENTAL Mark in association with the provision
`
`of dental services, including without limitation on any website, signage, advertising, and
`
`promotional materials relating to the services Faigel provides.
`
`36.
`
`These letters further threaten legal action and insinuated that Faigel’s use of the
`
`DR. DENTAL Mark had serious, far –reaching, and potentially expensive ramifications.
`
`37.
`
`These letters also demanded a written confirmation that Faigel would immediately
`
`cease and not recommence the “unauthorized” use of any of IADMD’s purported trademarks or
`
`marks that may be confusingly similar to such marks.
`
`38.
`
`These letters further demanded an accounting of all sales associated with Faigel’s
`
`use of the DR. DENTAL Mark since 2010, as well as a list of all current, former, and potential
`
`customers of Faigel.
`
`COUNT I: DECLARATORY JUDGMENT
`(Non-Infringement of Trademarks)
`
`Plaintiff repeats and re-alleges the allegations contained in paragraphs 1 through
`
`39.
`
`38 above as if fully set forth herein.
`
`40.
`
`As an actual justiciable controversy exists by way of IADMD’s threatened legal
`
`action and demand that Faigel immediately cease use of the DR. DENTAL Mark, Plaintiff seeks
`
`relief from this Court.
`
`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 17 of 22
`
`
`
`41.
`
`As set forth above, IADMD does not hold enforceable trademark rights in any of
`
`the marks shown in the IADMD registrations.
`
`42.
`
`Plaintiff is entitled declaratory judgment that it is not infringing, has not infringed,
`
`and is not liable for infringing any allegedly enforceable rights owned by IADMD by its use of
`
`the mark DR. DENTAL in connection with is dentistry business.
`
`COUNT II: DECLARATORY JUDGMENT
`(Trademarks Subject to Cancellation)
`
`Plaintiff repeats and re-alleges the allegations contained in paragraphs 1 through
`
`43.
`
`42 above as if fully set forth herein.
`
`44.
`
`As set forth in Counts III-VI, each of the IADMD Registrations is subject to
`
`cancellation. Plantiff respectfully requests a declaration from this Court that:
`
`a. The IADMD Registrations are void ab initio based on a lack of bona fide use in
`
`Commerce and are subject to cancellation pursuant to 15 U.S.C. § 1064.
`
`b. The IADMD Registrations have been abandoned as a result of naked licensing
`
`and are subject to cancellation pursuant to 15 U.S.C. § 1064(3).
`
`c. The IADMD Registrations are void ab initio, pursuant to 37 C.F.R. § 2.71(d),
`
`based on the fact that the respective marks were not owned by IADMD or
`
`DiMaria at the time the applications were filed and are subject to cancellation
`
`pursuant to 15 U.S.C. § 1064.
`
`d. The marks associated with the ‘993, ‘106, and ‘602 Registrations are merely
`
`descriptive of the services in the classes claims in those registrations, have not
`
`acquired distinctiveness, and are subject to cancellation pursuant to 15 U.S.C. §
`
`1064.
`
`COMPLAINT
`
`
`
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`Page 17 of 22
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`

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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 18 of 22
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`
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`e. The ‘602 and ‘322 Registrations are not currently in bona fide use by IADMD and
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`such non-use has persistent for a period exceeding three (3) years, and are subject
`
`to cancellation pursuant to 15 U.S.C. § 1064(3).
`
`COUNT III: CANCELLATION OF THE IADMD REGISTRATIONS
`(No Bona Fide Use)
`
`Plaintiff repeats and re-alleges the allegations contained in paragraphs 1 through
`
`45.
`
`44 above as if fully set forth herein.
`
`46.
`
`As discussed above, all of the specimens submitted in connection with the
`
`application and maintenance of the IADMD Registrations bear indica of fabrication and call into
`
`question both IADMD’s ownership of the marks and whether the marks are, or have ever
`
`actually been in bona fide used in Commerce.
`
`47.
`
`On information and belief, at the time that IADMD filed the application for the
`
`‘993 Registration, the mark DOCTOR DENTAL was not in fact in bona fide use in Commerce
`
`for the claimed services. The ‘993 Registration is therefore void ab initio and should be
`
`cancelled pursuant to Section 14 of the Trademark Act (15 U.S.C. § 1064).
`
`48.
`
`On information and belief, at the time that IADMD filed the application for the
`
`‘106 Registration, the mark DR DENTAL was not in fact in bona fide use in Commerce for the
`
`claimed services. The ‘106 Registration is therefore void ab initio and should be cancelled
`
`pursuant to Section 14 of the Trademark Act (15 U.S.C. § 1064).
`
`49.
`
`On information and belief, at the time that DiMaria signed and filed the Statement
`
`of Use in connection with the application for the ‘602 Registration, the mark DR DENTAL was
`
`not in fact in use in Commerce for the claimed services. The ‘602 Registration is therefore void
`
`ab initio and should be cancelled pursuant to Section 14 of the Trademark Act (15 U.S.C. §
`
`1064).
`
`COMPLAINT
`
`
`
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`Page 18 of 22
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`

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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 19 of 22
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`
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`50.
`
`On information and belief, at the time that DiMaria signed and filed the Amended
`
`to Allege Use in connection with the application for the ‘322 Registration, the mark DOCTOR
`
`DENTAL MD was not in fact in use in Commerce for the claimed services. The ‘322
`
`Registration is therefore void ab initio and should be cancelled pursuant to Section 24 of the
`
`Trademark Act (15 U.S.C. § 1092).
`
`51.
`
`In the alternative, at the time that IADMD filed the Section 8 & 9 renewal
`
`declaration for the ‘322 Registration the mark DOCTOR DENTAL MD was not in fact in use in
`
`Commerce for the claimed services. The ‘322 Registration therefore should be cancelled
`
`pursuant to Section 24 of the Trademark Act (15 U.S.C. § 1092).
`
`COUNT IV: CANCELLATION OF THE IADMD REGISTRATIONS
`(Abandonment)
`
`Plaintiff repeats and re-alleges the allegations contained in paragraphs 1 through
`
`52.
`
`51 above as if fully set forth herein.
`
`53.
`
`In the alternative, even if the DR DENTAL mark (‘602 Registration) was ever in
`
`use by IADMD, on information and belief the mark is not currently in bona fide use by IADMD
`
`or by any related company of IADMD, and such non-use has persisted for a period exceeding
`
`three (3) years.
`
`54.
`
`Additionally, even if the DOCTOR DENTAL MD mark (‘322 Registration) was
`
`ever in use by IADMD, on information and belief the mark is not currently in bona fide use by
`
`IADMD or by any related company of IADMD, and such non-use has persisted for a period
`
`exceeding three (3) years.
`
`55.
`
`Failure to make use of a mark in Commerce for more than three (3) years creates
`
`a rebuttable presumption of an intent not to resume use. As a result, the IADMD Registrations
`
`COMPLAINT
`
`
`
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`Page 19 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 20 of 22
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`
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`should be cancelled on grounds of abandonment pursuant to Section 14(3) of the Trademark Act
`
`(15 U.S.C. § 1064(3)).
`
`COUNT V: CANCELLATION OF THE IADMD REGISTRATIONS
`(Lack of Ownership)
`
`Plaintiff repeats and re-alleges the allegations contained in paragraphs 1 through
`
`56.
`
`55 above as if fully set forth herein.
`
`57.
`
`On information and belief, at the time that Application Serial Nos. 86/716,516
`
`and 86/716,488 were filed by IADMD, IADMD was not in fact the owner of these marks. As a
`
`result, the ‘993 Registration and the ‘106 Registration are void ab initio pursuant to 37 C.F.R. §
`
`2.71(d) and should be cancelled pursuant to Section 14 of the Trademark Act (15 U.S.C. § 1064).
`
`58.
`
`On information and belief, at the time that Application Serial No. 85/199,236 was
`
`filed by DiMaria, DiMaria was not in fact the owner of the mark. Further, on information and
`
`belief, at the time that the Statement of Use in support of this application was filed by DiMaria,
`
`DiMaria was not in fact the owner of the mark. As a result, the ‘602 Registration is void ab
`
`initio pursuant to 37 C.F.R. § 2.71(d) and should be cancelled pursuant to Section 14 of the
`
`Trademark Act (15 U.S.C. § 1064).
`
`59.
`
`On information and belief, at the time that Application Serial No. 78/612,948 was
`
`filed by DiMaria, DiMaria was not in fact the owner of the mark. Further, on information and
`
`belief, at the time that the Amendment to Allege Use in support of Application Serial No.
`
`78/612,948 was filed by DiMaria, DiMaria was not in fact the owner of the mark. As a result,
`
`the ‘322 Registration is void ab initio pursuant to 37 C.F.R. § 2.71(d) and should be cancelled
`
`pursuant to Section 24 of the Trademark Act (15 U.S.C. § 1092).
`
`COMPLAINT
`
`
`
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`Page 20 of 22
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`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 21 of 22
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`
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`COUNT VI: CANCELLATION OF THE ‘993, ‘106, and ‘602 REGISTRATIONS
`(Descriptiveness)
`
`Plaintiff repeats and re-alleges the allegations contained in paragraphs 1 through
`
`60.
`
`59 above as if fully set forth herein.
`
`61.
`
`In the alternative, the marks DOCTOR DENTAL (‘993 Registration) and DR
`
`DENTAL (‘106 Registration) are merely descriptive of all of the services in classes 35 and 44
`
`claimed in these registrations, including “the procurement and distribution of dental health
`
`services from dentists to needy people” and “dentist services”, and the marks have not acquired
`
`distinctiveness. The ‘993 Registration and the ‘106 Registration, which include no disclaimer or
`
`Section 2(f) claim, are therefore subject to cancellation pursuant to Section 14 of the Trademark
`
`Act (15 U.S.C. § 1064).
`
`62.
`
`Additionally, the mark DR DENTAL (‘602 Registration) is merely descriptive of
`
`all the services in class 44 claimed in the registration, including by way of illustration “dentist
`
`services”, and the mark has not acquired distinctiveness. The ‘602 Registration, which includes
`
`a disclaimer of DENTAL and no Section 2(f) claim, is therefore subject to cancellation pursuant
`
`to Section 14 of the Trademark Act (15 U.S.C. § 1064).
`
`PRAYERS FOR RELIEF
`
`
`
`WHEREFORE, Plaintiff respectfully requests the following relief:
`
`A. That this Court enter an Order declaring that Faigel’s use of the DR. DENTAL mark does
`
`not infringe, and has not infringed, any valid, distinctive and enforceable trademark rights
`
`owned by IADMD.
`
`B. That this Court enter an Order pursuant to 15 U.S.C. § 1119 directing the cancellation of
`
`the ‘993 Registration;
`
`COMPLAINT
`
`
`
`
`Page 21 of 22
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`

`

`Case 1:18-cv-00797 Document 1 Filed 08/31/18 Page 22 of 22
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`
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`C. That this Court enter an Order pursuant to 15 U.S.C. § 1119 directing the cancellation of
`
`the ‘106 Registration;
`
`D. That this Court enter an Order pursuant to 15 U.S.C. § 1119 directing the cancellation of
`
`the ‘602 Registration;
`
`E. That this Court enter an Order pursuant to 15 U.S.C. § 1119 directing the cancellation of
`
`the ‘322 Registration;
`
`F. That this Court enter an Order awarding attorneys’ fees, costs, and expenses incurred in
`
`connection with this action to Faigel; and
`
`G. That this Court aware Faigel such other and further relief that this Court deems just and
`
`proper.
`
`DEMAND FOR JURY TRIAL
`
`Pursuant to Federal Rule of Civil Procedure 38 and Local Rule 38.1, Plaintiff demands a
`
`trial by jury on all issues so triable.
`
`
`
`Respectfully submitted,
`
`Date: August 31, 2018
`
`/s/Brian M. Gaff
`
`
`
`
`
`
`
`
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`
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`
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`
`
`COMPLAINT
`
`
`Brian M. Gaff (NH Bar No. 17106)
`R. David Hosp*
`Robert M. O’Connell*
`Laura B. Najemy*
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210-1878
`(617) 542-5070
`(617) 542-8906 (fax)
`gaff@fr.com
`hosp@fr.com
`oconnell@fr.com
`najemy@fr.com
`
`Attorneys for Julia O. Faigel DMD, P.C.
`*Motion for pro hac vice admission to be filed
`
`
`
`Page 22 of 22
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`Case 1:18-cv-00797 Document 1-1 Filed 08/31/18 Page 1 of 11
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`
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`
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`Exhibit A
`
`

`

`Case 1:18-cv-00797 Document 1-1 Filed 08/31/18 Page 2 of 11
`Case 1:18-cv-OO797 Document 1-1 Filed 08/31/18 Page 2 of 11
`
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`August 28, 201 7
`
`VIA CERTIFIED MAIL
`
`DR. DENTAL OF LOWELL, PC.
`1235 BRIDGE ST.
`
`LOWELL, MA 01850
`
`Re:
`
`Cease and Desist —1nfringement of DR. DENTAL
`
`To When] It May Concern:
`
`Our law firm represents IADMD Holdings, LLC (“IADMD”). IADMD is the owner of
`the following United States Federal Trademark Registrations:
`
`Registration No. 4962933 for the mark DOCTOR DENTAL for Charitable services,
`namely, coordination of the procurement and distribution of dental health services from dentists
`to needy people; Charitable services, namely, promoting dental services for others; Charitable
`services, namely, organizing and developing projects that aim to improve the lives of
`underprivileged and impoverished people; Dentist services; Providing a website featuring
`information for dentists on the subject of treatn'rents and procedures related to dentistry;
`Providing a website featuring information for patients in the field of dental health; providing
`news and information in the field ofdentistry; Charitable outreach services, namely, providing
`counseling services in the licld of dental health; Providing information about dentistry, dental
`health, oral hygiene, oral disease, dental cur