Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA985365
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`Filing date:
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`07/03/2019
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`92071536
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Plaintiff
`Luv n' care, Ltd.
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`ROBERT M CHIAVIELLO JR
`NUBYLAW
`3030 AURORA AVE
`MONROE, LA 71201
`UNITED STATES
`bobc@nuby.com, toria@nuby.com
`318-410-4012
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`Other Motions/Papers
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`Robert M. Chiaviello Jr.
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`bobc@nuby.com, toria@nuby.com
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`/Robert M. Chiaviello Jr./
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`07/03/2019
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`MAM - TTAB - Notice of Court Filing.pdf(135278 bytes )
`Exhibit A - Notice of Filing.pdf(329112 bytes )
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Registration No. 5,233,314
`For the Mark: SKIN SOFT
`Registered: 27 June 2017
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`LUV N’ CARE, LTD.
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`Cancellation No. 92071536
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`Petitioner
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`MAM BABYARTIKEL GMBH,
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`Respondent
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`v.
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`NOTICE OF CIVIL ACTION AND MOTION TO WITHHOLD SUSPENSION WITH
`SUPPORTING MEMORANDUM
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`Notice of Civil Action
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`Petitioner hereby serves notice on the Board of a co-pending civil action in the United
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`States District Court for the Western District of Louisiana, Monroe Division, Civil Action No.
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`3:19-cv-00690, styled Luv n’ care, Ltd. v. MAM USA Corporation and MAM Babyartikel, GmbH.
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`A copy of the Complaint is attached hereto as Exhibit A. The complaint in the civil action includes
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`a claim to cancel the registered trademark that is the subject of this cancellation action. One of the
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`defendants in that civil action, MAM Babyartikel, GmbH, is the owner of the trademark
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`registration that is the subject of this cancellation action.
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`(cid:1005) 
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`Motion
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`Petitioner moves the Board to withhold suspending this cancellation or in the alternative
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`defer decision on suspension until such time as the defendant and registrant MAM Babyartikel,
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`GmbH answers the complaint in the civil action. Despite the pendency of the recently filed civil
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`action that includes a claim to cancel the subject registration, Petitioner here, plaintiff in the civil
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`action (hereinafter Petitioner/Plaintiff), requests that the Board exercise its discretion and proceed
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`with the cancellation following the schedule set out in the Notice of Institution, at least until
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`Registrant, defendant in the civil action (hereinafter Registrant/Defendant) appears and answers
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`the complaint in the civil action. Petitioner/Plaintiff files this Motion to Withhold Suspension in
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`anticipation that the Board will consider suspending this cancellation proceeding without a motion
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`from the Registrant/Defendant. If the Board determines that it cannot suspend this cancellation
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`without a motion from Registrant/Defendant, then Petitioner/Plaintiff respectfully withdraws its
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`motion without prejudice to refiling at a later time.
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`Supporting Memorandum
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`The Board enjoys broad discretion in deciding whether to suspend a cancellation action.
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`But the suspension decision must be for good cause. In the past, good cause was established on
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`the basis that the Board’s decision would not be binding on the district court. New Orleans
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`Louisiana Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99 U.S.P.Q.2d 1550, 2011 WL
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`3381380 (TTAB 2011). In view of the U.S. Supreme Court’s decision in B&B Hardware, Inc. v.
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`Hargis Industries, Inc., 135 S.Ct. 1293, 1299 (2015), holding that Board decisions are res judicata
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`in civil actions and binding on the district courts, Petitioner/Plaintiff submits that the prior
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`reasoning for the Board’s general suspension practice is no longer valid. Prior to the B&B
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`Hardware case, the Board’s decisions were not given preclusive effect in the federal courts and so
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`(cid:1006) 
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`in those circumstances it was more efficient to allow the federal civil action to take precedence.
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`Now that Board decisions are given preclusive effect, that basis for suspension no longer applies.
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`Therefore the Board must base a suspension decision on other reasons. In this cancellation action,
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`there are numerous reasons weighing in favor of continuing with the cancellation and none in favor
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`of suspension. Those reasons in favor of withholding suspension are (1) there is no certainty that
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`the civil action will progress against the Registrant/Defendant who is a foreign corporation with
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`no known place of business in the United States; (2) the Board’s determination of
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`Petitioner/Plaintiff’s right to the mark would be res judicata in the civil action; (3) admissible
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`evidence in the cancellation would be admissible in the civil action so there would be no wasted
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`resources if the Board proceeds with the cancellation; (4) the board has specific expertise in
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`determining the issues raised in the cancellation; and (5) the Board should exercise its discretion
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`by withholding suspension and proceeding with the cancellation action. Alternatively,
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`Petitioner/Plaintiff requests that the Board at least defer decision on the question of suspension
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`until after the Registrant/Defendant appears in the civil action and answers the complaint.
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`Standards for Deciding Whether to Suspend
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`The standards for deciding whether to suspend a cancellation is left to the sound discretion
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`of the Board. Jodi Kristopher Inc. v. International Seaway Trading Corp., 91 U.S.P.Q.2d 1957,
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`2009 WL 3154232 (TTAB 2009) That decision is not automatic and must be decided for good
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`cause. National Football League, NFL Properties LLC v. DNH Management, LLC, 85 U.SP.Q.2d
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`1852, 2008 WL 258323, n. 5 (TTAB 2008) (“All motions to suspend, regardless of the
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`circumstances and even with the party’s consent, are subject to the ‘good cause’ standard.”) As
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`the Board observed in Boyds Collection Ltd. v. Herrington & Company, 65 U.S.P.Q.2d 2017, 2003
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`WL 152427 *2 (TTAB 2003), “both the permissive language of Trademark Rule 2.117(a)
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`(cid:1007) 
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`(‘proceedings … may be suspended…’), and the explicit provisions of Trademark Rule 2.117(b)
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`make clear that suspension is not the necessary result in all cases.” (Emphasis added.) While
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`it appears the Board’s general practice has been to automatically suspend a cancellation when there
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`is a related civil action pending, Petitioner/Plaintiff submits that on the facts of this case, the
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`Board’s past general practice should not be followed, or at least the decision delayed until such
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`time as the Registrant/Defendant appears and answers the complaint in the civil action.
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`No Certainty Registrant/Defendant Will Appear in the Federal Action
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`There is no dispute that the Registrant/Defendant is listed in the records of the United States
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`Patent and Trademark Office (USPTO) as a foreign corporation with its principal place of business
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`in Austria and the Board can take judicial notice of that fact. The complaint filed in the civil action
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`also alleges that Registrant/Defendant is a foreign corporation with no residency in the United
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`States. At this early stage in the civil action, it is not known whether Registrant/Defendant will
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`oppose the federal district court’s personal jurisdiction. In the civil action, Petitioner/Plaintiff has
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`requested Registrant/Defendant, pursuant to Rule 4(d), Federal Rules of Civil Procedure, to waive
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`service of the summons and complaint. The waiver request was made on June 4, 2019. Rule4(d)
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`provides that Registrant/Defendant has 60 days to notify Petitioner/Plaintiff whether it will waive
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`service. If Registrant/Defendant agrees to waive service it will have another 30 days to answer
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`the complaint. By the time Registrant/Defendant is due to answer the complaint in the civil action,
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`this cancellation will already be into the discovery period. And if Registrant/Defendant refuses to
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`waive service, then the delay will be much longer.
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`In the event Registrant/Defendant refuses to waive service, Petitioner/Plaintiff will be
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`required to effect service of the summons and complaint by other means that are likely to be much
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`more time consuming and expensive. Even if service on Registrant/Defendant is obtained, there
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`(cid:1008) 
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`is no assurance that Registrant/Defendant will not object to personal jurisdiction of the federal
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`court. If Petitioner/Plaintiff is either unable to obtain service on Registrant/Defendant or
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`Registrant/Defendant is successful in opposing the federal court’s jurisdiction, Petitioner/Plaintiff
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`would be unable to obtain the sought after relief against Registrant/Defendant in the federal court
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`and would then necessarily have to proceed with this cancellation action albeit at a much later date
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`and with undue delay. If the Board were to suspend this cancellation, then Petitioner/Plaintiff
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`would face at least a six month delay and possibly much longer. This cancellation action is the
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`only certain forum for determining Petitioner/Plaintiff’s right to the mark in question. If the Board
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`does not suspend and Registrant/Defendant were to timely appear and not contest jurisdiction in
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`the federal action, the Board could then revisit the suspension issue. The Board’s and the parties’
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`actions prior to that time would not be wasted as any discovery conducted in this cancellation
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`would be applicable to the civil action with no prejudice to the parties. There would be no waste
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`of time or resources as any admissible evidence produced in the cancellation would be admissible
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`in the federal civil action. For this reason alone the Board should at least defer final decision on
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`suspension until such time as Registrant/Defendant has appeared in the federal action and taken
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`its position with respect to personal jurisdiction.
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`The Board’s Decision is Binding on the Federal Court
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`While concededly the complaint in the civil action includes an additional claim for
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`infringement against Registrant/Defendant’s US subsidiary, that claim necessarily depends on first
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`determining Petitioner/Plaintiff’s right to priority – an issue the Board is particularly well suited
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`in determining. See American Bakeries Co. v. Pan-O-Gold Baking Co., 650 F.Supp. 563, 566 (D.
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`Min. 1986). As alleged in the petition and complaint, both Parties use the SKIN SOFT mark in
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`connection with the distribution and sale of baby products and in particular, both Parties use the
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`(cid:1009) 
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`mark on baby bottles and nipples. Petitioner/Plaintiff also uses the mark on teethers while
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`Registrant/Defendant and its co-defendant and US subsidiary also use the mark on pacifiers.
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`Petitioner/Plaintiff alleges in the petition and complaint that it began using the SKIN SOFT mark
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`in 2012 almost three years before the earliest priority date of the Registrant/Defendant. As a matter
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`of law, Petitioner/Plaintiff, as the senior user, is entitled to registration and exclusive use of the
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`mark for baby products. 15 U.S.C. § 1052(d). “One who first uses a distinct mark in commerce
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`thus acquires rights to use that mark.” B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct.
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`1293, 1299 (2015). Therefore, the decision before the Board is a necessary predicate to the
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`infringement issue in the federal civil action so a decision on that issue will in no way impede the
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`federal court.
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`As the Supreme Court made clear in B&B Hardware, Inc. v. Hargis Industries, Inc., 135
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`S.Ct. 1293, 1299 (2015), the Board’s decision in this cancellation proceeding on the question of
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`whether Petitioner/Plaintiff has priority to the SKIN SOFT mark, will be binding on the federal
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`court. In that regard, the Board stands on equal footing with the federal court. Should the Board
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`withhold or defer suspension and proceed with this cancellation proceeding there will be no harm
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`to either party. If the Board were to decide the priority question before issue is joined in the federal
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`court, that would likely bring the civil action to a quick resolution saving both the parties and the
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`federal court time and resources.
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`The Board Is Expert in Trademark Matters
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`The Board unquestionably has great expertise in deciding questions of priority and is as
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`equally capable, if not more capable, of resolving this priority dispute as the federal court. “The
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`Trademark Trial and Appeal Board has undoubtedly had a great deal more experience than has a
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`district court in matters of this kind, and in reaching a decision can draw upon familiarity with the
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`(cid:1010) 
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`vast array of trademark cases which it has deliberated in the past. The question here is one of the
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`right to trademark registration and use, and thus is precisely the sort of issue with which the
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`Trademark Trial and Appeal Board, unlike a district court, deals on a regular basis.” Driving
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`Force, Inc. v. Manpower, Inc., 498 F.Supp. 21, 25 (E.D. Pa. 1980) Given the Board’s expertise
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`and the additional fact that the Board can move this cancellation proceeding along more quickly
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`than the federal court, it weighs heavily in favor of the Board rejecting suspension and continuing
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`with this cancellation proceeding.
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`Conclusion
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`In order to suspend this cancellation action, the Board must have good cause and no longer
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`can good cause be established merely by the fact that there is an ongoing civil action in a federal
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`court. Here, where there is a serious question of whether the Registrant/Defendant will appear in
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`the federal court to protect its registration it is incumbent upon the Board to withhold suspension.
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`This is even more compelling where the Board’s decision in this cancellation action would likely
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`be determinative of the other issues in the federal action. The Board’s procedures provide for an
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`expeditious and efficient process for deciding a question that falls especially within the Board’s
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`area of expertise. A decision to continue with this cancellation action, even if the Board were to
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`later suspend, will not prejudice the parties as the record developed here would be equally
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`applicable to the civil action. Therefore, Petitioner/Plaintiff requests that the Board exercise its
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`discretion and withhold suspend of this cancellation action and proceed in accordance with the
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`Notice of Institution dated June 18, 2019.
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`(cid:1011) 
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`Respectfully submitted this 3rd day of July 2019,
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`/s/ Robert M. Chiaviello, Jr.
`Robert M. Chiaviello, Jr
`NubyLaw
`New York Bar No. 2148687
`Texas Bar No. 04190720
`Louisiana Bar No. 37370
`3030 Aurora Avenue
`Monroe, LA 71201
`(318) 410-4012
`bobc@nuby.com
`Attorney for Petitioner Luv n’ care, Ltd.
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`(cid:1012) 
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`CERTIFICATE OF SERVICE
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`I, the undersigned counsel for Petitioner Luv n’ care, Ltd., hereby certifies that a true and
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`complete copy of the foregoing Notice of Civil Action and Motion to Withhold Suspension with
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`Supporting Memorandum has been served on counsel for Respondent, Lawrence E. Abelman, by
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`forwarding a copy on this 3rd day of July 2019, via U.S Mail, return receipt requested, to: Lawrence
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`E. Abelman, Abelman, Frayne & Schwab, 666 Third Avenue, 10th Floor, New York, New York
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`10017.
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`/s/ Robert M. Chiaviello, Jr.
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`Robert M. Chiaviello, Jr
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`(cid:1013) 
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 1 of 11 PageID #: 1
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`Civil Action No.: 3:19-CV-690
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`JURY TRIAL DEMANDED
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF LOUISIANA
`MONROE DIVISION
`__________________________________
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`LUV N’ CARE, LTD.
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`Plaintiff,
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`v.
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`MAM USA CORPORATION and
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`MAM BABYARTIKEL, GMBH,
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`Defendant.
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`__________________________________ )
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`COMPLAINT FOR TRADEMARK INFRINGEMENT,
`UNFAIR COMPETITION AND TRADEMARK CANCELLATION
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`Plaintiff Luv n’ care, Ltd. (LNC) files this complaint for trademark infringement, unfair
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`competition and the cancellation of Defendants’ registered trademark. LNC has for many decades
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`been a leading designer and seller of innovative, high quality and attractive baby products. Based
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`on its innovative, high quality and attractive designs, LNC is known as one of the leading baby
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`products companies in the world. LNC has continuously and for many years designed, promoted,
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`distributed and sold baby products in the United States. LNC offers its products using a variety of
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`trademarks. The mark SKIN SOFT is one of the trademarks used by LNC to promote, distribute
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`and sell bottles, nipples and teethers. LNC first began using its SKIN SOFT trademark on bottles,
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`nipples and pacifiers in 2012. Defendant MAM Babyartikel, GmbH (MAM-AT) is an Austrian
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`company that copied LNC’s SKIN SOFT mark then unlawfully registered that mark in the United
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`States and worldwide in 2015. MAM-AT is supplying infringing goods, including bottles, nipples
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`and pacifiers, to MAM USA Corporation (MAM-US) who is using the SKIN SOFT mark on those
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 2 of 11 PageID #: 2
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`infringing goods that it then promotes, distributes and sells in the United States unfairly competing
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`with LNC.
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`1.
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`THE PARTIES
`Plaintiff LNC is a corporation organized and existing under the laws of the State of
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`Louisiana having a principal place of business at 3030 Aurora Avenue, Monroe, Louisiana 71201.
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`2.
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`Defendant MAM-US is a corporation organized under the laws of the State of
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`Delaware with a principal place of business at 2700 Westchester Avenue, Suite 315, Purchase,
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`New York 10577.
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`3.
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`Defendant MAM-AT is a corporation organized under the laws of Austria with an
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`address at Lorenz-Mandl-Gasse 50 1160 Wien Austria.
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`4.
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`Defendant MAM-US is, upon information and belief, a wholly owned subsidiary
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`of MAM-AT and MAM-US operates under the direction and with the knowledge of MAM-AT.
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`NATURE OF THE ACTION, JURISDICTION AND VENUE
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`This is a civil action seeking damages and injunctive relief for trademark
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`5.
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`infringement and unfair competition under 15 U.S.C. § 1125(a), and cancellation of MAM’s
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`unlawfully registered trademark under 15 U.S.C. § 1119.
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`6.
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`This Court has jurisdiction over the subject matter of this action pursuant to 28
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`U.S.C. §§ 1331 and 1338(a) because this action raises a federal question arising under the
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`Trademark Laws of the United States.
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`7.
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`The Court has personal jurisdiction over the Defendants because (i) Plaintiff’s
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`claims arise in whole or in part out of Defendants’ conduct in Louisiana and (ii) Defendants are
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`subject to personal jurisdiction under the provisions of the Louisiana Long Arm Statute, La. R.S.
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`§ 13:3201, by virtue of the fact that, upon information and belief, Defendants have availed
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`themselves of the privilege of conducting and soliciting business within the State of Louisiana,
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`2 
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 3 of 11 PageID #: 3
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`including engaging in at least a portion of the infringing acts alleged herein through the sale, offer
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`for sale and marketing of infringing products in this State. The allegations and claims set forth in
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`this action arise out of Defendants’ infringing activities in this State, as well as by others acting as
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`Defendants’ agents or representatives, such that it would be reasonable for this Court to exercise
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`personal jurisdiction over these Defendants consistent with the principles underlying the United
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`States Constitution and would not offend traditional notions of fair play and substantial justice.
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`8.
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`Upon information and belief, Defendants have also established minimum contacts
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`within this District and regularly transacts and do business within this District, including
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`advertising, promoting and selling products over the internet that infringe Plaintiff’s trademark
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`rights and otherwise unfairly compete with Plaintiff. Upon further information and belief,
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`Defendants have purposefully directed activities at citizens of this State and located within this
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`District.
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`9.
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`Venue in the Western District of Louisiana is proper pursuant to 28 U.S.C. §§
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`1391(b)(2) and 1391(c)(3) because a substantial part of the events giving rise to the claims in this
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`action occurred in this District and MAM-AT is an alien corporation not resident in the United
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`States.
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`FACTS
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`10.
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`LNC has, for many decades, been a designer and seller of innovative, high quality
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`and attractive products for use by babies, young children and their care givers. Many of LNC’s
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`innovative products are promoted, distributed and sold under various trademarks and trade dress.
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`Based on its innovative, high quality and attractive designs, LNC is now known as one of the
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`leading baby product companies.
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`3 
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 4 of 11 PageID #: 4
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`11.
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`LNC enjoys a good reputation with consumers in the United States for innovative,
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`high quality and attractive products.
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`12.
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`LNC’s products are among the most popular and well known products in the baby
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`products industry and those products are famous throughout the United States.
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`13.
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`Among the products designed, promoted, distributed and sold by LNC are a variety
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`of bottles and teethers. The bottle products include nipples. One category of bottle, nipple and
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`teether product designed, promoted, distributed and sold by LNC are promoted, distributed and
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`sold using the SKIN SOFT trademark.
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`14.
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`LNC created the SKIN SOFT trademark in 2011 and first began using that mark in
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`2012. Beginning in 2012, LNC has continuously used the SKIN SOFT trademark on baby
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`products including bottle, nipple and teether products.
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`15.
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`On October 28, 2015, Defendant MAM-AT caused to be filed in the United States
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`Patent and Trademark Office an application to register the mark SKIN SOFT for bottles, nipples
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`and pacifiers among other products. In its US trademark application, MAM-AT claimed priority
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`to an Austrian trademark application filed on June 11, 2015.
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`16.
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`Beginning in 2012 and long prior to MAM-AT’s US filing and priority dates, LNC
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`had been selling bottle, nipple and teether products to Walmart and other big box retailers
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`throughout the United States using the SKIN SOFT mark. At the time, upon information and
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`belief, Defendants were selling baby products in the same channels as LNC and knew or should
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`have known that LNC was using the SKIN SOFT mark. Upon information and belief, MAM-AT
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`filed its US trademark application knowing full well that LNC was using the SKIN SOFT
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`trademark on identical goods described in MAM-AT’s trademark application.
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`4 
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 5 of 11 PageID #: 5
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`17.
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`LNC’s SKIN SOFT mark has priority over MAM-AT’s mark because LNC’s first-
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`use date of the SKIN SOFT mark predates the filing and priority dates of MAM-AT’s application
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`that resulted in U.S. Trademark Registration No. 5,233,314. LNC’s SKIN SOFT mark has priority
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`over MAM-AT’s mark because LNC’s first-use date of the SKIN SOFT mark predates any date
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`on which the MAM-AT’s may rely for purposes of priority.
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`18.
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`19.
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`LNC’s mark is identical to MAM-AT’s registered SKIN SOFT mark.
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`The goods covered by MAM-AT’s Trademark Registration No. 5,233,314 are
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`identical to the baby bottles and nipples LNC offers under its SKIN SOFT mark.
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`20. MAM-AT’s Trademark Registration No. 5,233,314 is unrestricted as to consumers
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`or trade channels. As such, it is presumed that MAM-AT’s goods identified in the challenged
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`registration are sold to ordinary consumers of bottles, nipples and teethers, including consumers
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`of LNC’s bottles, nipples and teethers, and travel in all ordinary trade channels through which
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`LNC sells its bottles, nipples and teethers under its SKIN SOFT mark.
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`21.
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`Upon information and belief, MAM-AT intentionally induced MAM-US to
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`purchase bottles, nipples and pacifiers that included LNC’s SKIN SOFT trademark and sell those
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`bottles, nipples and pacifiers with LNC’s SKIN SOFT trademark in the United States all without
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`authorization or approval of LNC.
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`22.
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`Upon information and belief, MAM-AT intentionally supplied MAM-US with
`
`bottles, nipples and pacifiers that included LNC’s SKIN SOFT trademark with the knowledge that
`
`MAM-US would sell those bottles, nipples and pacifiers with LNC’s SKIN SOFT trademark in
`
`the United States all without authorization or approval of LNC.
`
` 
`
`5 
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`

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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 6 of 11 PageID #: 6
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`23.
`
`LNC’s bottle, nipple and teether products using the SKIN SOFT mark were sold in
`
`the same channels of trade, to the same retail outlets and ultimately to the same consumers as
`
`MAM-AT’s and MAM-US’ products using the SKIN SOFT trademark.
`
`24.
`
`Upon information and belief, MAM-AT was aware of LNC’s prior use of the SKIN
`
`SOFT trademark at the time MAM-AT filed its US trademark application but despite such
`
`knowledge, MAM-AT failed to so inform the US Patent and Trademark Office of LNC’s prior use
`
`of the SKIN SOFT trademark. By virtue of LNC’s prior use of the identical mark for the same
`
`goods, LNC is the rightful and exclusive owner of the SKIN SOFT mark and MAM-AT’s
`
`registration of the identical mark is causing LNC injury.
`
`25. MAM-AT’s registration should be cancelled because it consists of a mark which is
`
`identical to LNC’s previously used SKIN SOFT mark as to be likely, when used in connection
`
`with MAM-AT’s goods, to cause confusion, mistake, or deception, and to cause damage to LNC
`
`thereby.
`
`26. MAM-US is currently promoting, distributing and selling in the United States baby
`
`products including bottles, nipples and pacifiers that use the identical SKIN SOFT trademark. The
`
`MAM-US products are sold in the same channels of trade, to the same retail outlets and ultimately
`
`to the same consumers as LNC’s products using the SKIN SOFT trademark. Upon information
`
`and belief, the infringing MAM-US products are supplied to MAM-US by MAM-AT with the
`
`knowledge and intent that MAM-US will sell those products in the United States.
`
`27. MAM-AT directs the actions of MAM-US and induces and has induced MAM-US
`
`to purchase baby products that include the LNC SKIN SOFT trademark for the purposes of resale
`
`in the United States. At MAM-AT’s direction, MAM-US promotes, distributes and sell in the
`
` 
`
`6 
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 7 of 11 PageID #: 7
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`United States baby products including bottles, nipples and pacifiers that use LNC’s SKIN SOFT
`
`trademark. MAM-AT’s actions cause damage to LNC.
`
`28. MAM-AT’s supply of baby products to MAM-US that include the LNC SKIN
`
`SOFT trademark, and MAM-US’ promotion, distribution and sale of those baby products using
`
`the SKIN SOFT mark in the United States is likely to cause confusion, mistake, or deception, and
`
`to cause damage to LNC thereby.
`
`FIRST CLAIM FOR RELIEF – TRADEMARK INFRINGEMENT AND
` UNFAIR COMPETITION
`(15 U.S.C. § 1125(a))
`
`
`
`29.
`
`LNC incorporates by reference, as if fully rewritten herein, the facts and allegations
`
`set forth in the foregoing and subsequent paragraphs.
`
`30.
`
`LNC is the owner of the SKIN SOFT trademark, which is inherently distinctive and
`
`has acquired secondary meaning identifying LNC as the source of baby products including bottles,
`
`nipples and teethers.
`
`31.
`
`Defendants’ promotion, distribution and sale of baby products including bottles,
`
`nipples and pacifiers using the SKIN SOFT mark is without the authorization or consent of LNC.
`
`32.
`
`Defendants’ promotion, distribution and sale of baby products including bottles,
`
`nipples and pacifiers using the SKIN SOFT mark is likely to cause confusion, mistake or
`
`deception, and to deceive consumers as to the affiliation, connection or association of Defendants
`
`with LNC, and to deceive consumers as to the origin, sponsorship or approval of Defendants’
`
`goods, business and products by LNC.
`
`33.
`
`Defendants’ unauthorized use of the SKIN SOFT mark constitutes trademark
`
`infringement within the meaning of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
` 
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`7 
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 8 of 11 PageID #: 8
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`34. MAM-AT’s acts directing MAM-US to promote, distribute and sell baby products
`
`in the United States bearing the LNC SKIN SOFT trademark constitutes unlawful inducement
`
`infringement.
`
`35. MAM-AT’s acts in supplying MAM-US with baby products bearing the LNC
`
`SKIN SOFT trademark with the knowledge and intent that those infringing products be resold in
`
`the United States constitutes unlawful contributory infringement.
`
`36.
`
`As a direct consequence of Defendants’ unlawful acts and practices, LNC has
`
`suffered, will continue to suffer, and is likely to suffer lost sales and profits and injury to its
`
`business reputation and goodwill, for which LNC is entitled to recover damages including
`
`enhanced damages.
`
`37.
`
`Defendants’ actions demonstrate and are consistent with an intentional, willful,
`
`malicious, and bad faith intent to trade on the goodwill associated with LNC’s SKIN SOFT
`
`trademark to the significant detriment and damage to LNC.
`
`38.
`
`Unless enjoined, LNC will continue to suffer and is likely to continue to suffer
`
`damages including injury to its business reputation and goodwill which damage is irreparable and
`
`cannot be adequately compensated by money damages entitling LNC to entry of preliminary and
`
`permanent injunctive relief.
`
`39.
`
`LNC is entitled to its costs, including reasonable attorneys’ fees, pursuant to 15
`
`U.S.C. § 1117.
`
`SECOND CLAIM FOR RELIEF – TRADEMARK CANCELLATION
`(15 U.S.C. § 1119)
`
`LNC incorporates by reference, as if fully rewritten herein, the facts and allegations
`
`40.
`
`set forth in the foregoing and subsequent paragraphs.
`
` 
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`8 
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`

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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 9 of 11 PageID #: 9
`
`41. MAM-AT is the record owner of United States Trademark Registration No. No.
`
`5,233,314 for the mark SKIN SOFT for use in connection with various baby products including
`
`bottles, nipples and pacifiers. That trademark registration, based on an application filed on October
`
`28, 2015 claiming a priority date of June 11, 2015, was issued on June 27, 2017, and bears a first
`
`use date of March 12, 2015.
`
`42.
`
`LNC is the owner of the application to register the mark SKIN SOFT for bottles,
`
`nipples and teethers in International Class 10 bearing Serial No. 88/449,315.
`
`43.
`
`LNC has used the SKIN SOFT mark in interstate commerce in the United States
`
`continuously since 2012 in connection with the sale and distribution of bottles, nipples and
`
`teethers.
`
`44.
`
`As a result of its widespread, continuous, and exclusive use of the SKIN SOFT
`
`mark, consumers have come to identify LNC as the source of its bottles, nipples and teethers. As
`
`a result, LNC owns valid and subsisting federal statutory and common law rights to the SKIN
`
`SOFT mark.
`
`45.
`
`LNC’s SKIN SOFT mark is distinctive to both the consuming public and LNC’s
`
`trade.
`
`46.
`
`LNC has expended substantial time, money and resources marketing and promoting
`
`bottles, nipples and teethers sold under the SKIN SOFT mark throughout the United States
`
`including the use of point of purchase materials, displays and social media.
`
`47.
`
`The bottles, nipples and teethers LNC offers under the SKIN SOFT mark are of
`
`high quality encompassing attractive and unique product designs and are constructed of high
`
`quality materials using state of the art manufacturing.
`
`48. MAM-AT’s mark is identical to LNC’s SKIN SOFT mark.
`
` 
`
`9 
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`Case 3:19-cv-00690-TAD-KLH Document 1 Filed 05/30/19 Page 10 of 11 PageID #: 10
`
`49.
`
`The goods covered by MAM-AT’s Trademark Registration No. 5,233,314 are
`
`identical to the bottles and nipples LNC offers under its SKIN SOFT mark.
`
`50. MAM-AT’s Trademark Registration No. 5,233,314 is unrestricted as to consumers
`
`or trade channels. As such, it is presumed that MAM-AT’s goods identified in the challenged
`
`registration are sold to ordinary consumers of bottles, nipples and teethers, including consumers
`
`of LNC’s bottles, nipples and teethers,