Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1040586
`
`Filing date:
`
`03/06/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92071900
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`ORAFOL Americas Inc.
`
`ANUJ DESAI
`ARNALL GOLDEN GREGORY LLP
`171 17TH ST NW, SUITE 2100
`ATLANTA, GA 30363
`UNITED STATES
`trademarks@agg.com, anuj.desai@agg.com
`404-873-8500
`
`Motion to Suspend for Civil Action
`
`Anuj Desai
`
`trademarks@agg.com
`
`/Anuj Desai/
`
`03/06/2020
`
`Motion to Suspend TTAB Proceeding.pdf(89077 bytes )
`Motion to Suspend TTAB Proceeding Exhibit 1.pdf(1307703 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA1040586
`
`Filing date:
`
`03/06/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92071900
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`ORAFOL Americas Inc.
`
`ANUJ DESAI
`ARNALL GOLDEN GREGORY LLP
`171 17TH ST NW, SUITE 2100
`ATLANTA, GA 30363
`UNITED STATES
`trademarks@agg.com, anuj.desai@agg.com
`404-873-8500
`
`Motion to Suspend for Civil Action
`
`Anuj Desai
`
`trademarks@agg.com
`
`/Anuj Desai/
`
`03/06/2020
`
`Motion to Suspend TTAB Proceeding.pdf(89077 bytes )
`Motion to Suspend TTAB Proceeding Exhibit 1.pdf(1307703 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of:
`
`Registration No. 5661245
`For the Mark 651VINYL
`
` ORAFOL Americas Inc.
`
`Petitioner,
`
`v.
`
`
`
`Cancellation No. 92071900
`
`Vinyl Fanatic LLC,
`
`Registrant.
`
`PETITIONER’S MOTION TO SUSPEND PROCEEDINGS
`PENDING DISPOSITION OF CIVIL ACTION
`________________________
`
`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Petitioner ORAFOL
`
`Americas Inc. (“Petitioner”) through its undersigned counsel, hereby moves the Board
`
`to suspend the above-referenced proceeding (the “TTAB Proceeding”) pending final
`
`disposition of federal district court case ORAFOL Americas Inc. et al. v. Vinyl Fanatic LLC
`
`et al., No. 4:20-cv-00043-RSB-CLR, filed March 5, 2020, in federal district court for the
`
`Southern District of Georgia (Savannah Division). True and correct copies of the
`
`Complaint and civil cover sheet from this action are attached hereto as Exhibit 1.
`
`1
`
`
`
`ARGUMENT AND CITATION TO AUTHORITY
`
`The Complaint in the civil action seeks, inter alia, the same substantive relief
`
`sought in this proceeding, namely, a judgment that Registrant’s registration for the
`
`651VINYL mark (Registration No. 5661245) be cancelled under 15 U.S.C. § 1064.
`
`Moreover, the Complaint seeks additional relief under the Lanham Act and other laws
`
`with respect to Registrant’s trademark infringement, false advertising, false designation
`
`of origin, violations of the Anticybersquatting Consumer Protection Act, and related
`
`federal and state law claims based on the 651, ORACAL 651, and 651VINYL marks at
`
`issue in this proceeding, as well as other marks belonging to Petitioner.
`
`Given that the parties are now involved in court proceedings concerning the
`
`same marks and issues involved in this TTAB Proceeding, the “standard procedure” of
`
`the Board is to suspend its administrative proceeding pending outcome of the civil
`
`litigation. New Orleans Louisiana Saints LLC et al. v. Who Dat? Inc., 99 U.S.P.Q.2d 1550,
`
`1552 (T.T.A.B. 2011) (quoting 6 McCarthy on Trademarks and Unfair Competition § 32:47
`
`(5th ed. updated September 2017)).
`
`Generally, a civil action need not even be dispositive of a Board proceeding to
`
`warrant suspension. Rather, it is sufficient that the civil action have bearing on the
`
`issues before the Board to justify a suspension. Id. Here, the civil proceeding would, in
`
`fact, be dispositive of the matter before the Board, and it involves the same parties and
`
`marks subject to this TTAB Proceeding, as well as the same nucleus of operative facts,
`
`as a plain reading of the Complaint demonstrates.
`
`2
`
`
`
`Moreover, the pending civil action involves other parties and matters outside
`
`Board jurisdiction (including related issues of damages and injunctive relief) and
`
`involves the consideration of broader issues beyond right to registration, which is the
`
`only issue involved in this TTAB Proceeding. Therefore, pursuant to TBMP § 510.02(a),
`
`judicial economy is served by the requested suspension. Accord The Other Tel. Co. v.
`
`Connecticut Nat’l Tel. Co., 181 U.S.P.Q. (BNA) ¶ 125 (T.T.A.B. Feb. 11, 1974).
`
`Additionally, the parties are currently engaged in discovery in this TTAB
`
`Proceeding, but minimal written discovery has taken place as the parties were
`
`previously attempting to settle their dispute. No documents have been produced. No
`
`depositions have occurred or been noticed. And fact discovery is set to close on April 8,
`
`2020. Because the civil action involves not only the issues currently before the Board,
`
`but also issues of false advertising, deceptive trade practices, and unfair competition,
`
`discovery in the civil action will involve documents, depositions, and other information
`
`that is not being and has not been gathered or produced in this proceeding. Thus,
`
`suspending the TTAB Proceeding, including as to all outstanding written discovery
`
`requests and deadlines would avoid wasted time and expenses for both parties and the
`
`Board. See, e.g, Softbelly’s Inc v. Ty, Inc., 2002 WL 1844210, *3 (T.T.A.B. Aug. 13, 2002)
`
`(citing The Other Tel., 181 U.S.P.Q. (BNA) ¶ 125) (“It would be a waste of the Board’s
`
`and the parties’ time and resources to proceed to litigate this case at the Board when the
`
`same issues” are pending in court.)
`
`3
`
`
`
`CONCLUSION
`
`For these reasons, Petitioner submits that an order from the Board immediately
`
`suspending the TTAB Proceeding, including all outstanding discovery requests and
`
`deadlines, is warranted. Petitioner respectfully requests that its motion be granted.
`
`Respectfully submitted,
`
`ARNALL GOLDEN GREGORY LLP
`
`
`
`/Anuj Desai/
`Anuj Desai | anuj.desai@agg.com
`
`Counsel for Petitioner
`ORAFOL Americas Inc.
`
`171 17th Street, N.W., Suite 2100
`Atlanta, Georgia 30363
`Phone: (404) 873-8500
`Fax: (404) 873-8501
`trademarks@agg.com
`
`CERTIFICATE OF SERVICE
`_____________
`
`I hereby certify that, on March 6, 2020, a copy of the foregoing motion was sent
`
`via e-mail to Registrant’s counsel of record, as follows:
`
`John W. Scruton
`STITES & HARBISON
`400 West Market Street, Suite 1800
`Louisville, Kentucky 40202-3352
`jscruton@stites.com
`tmlou@stites.com
`
`/Anuj Desai/
`Anuj Desai
`
`4
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 1 of 51
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF GEORGIA
`SAVANNAH DIVISION
`
`ORAFOL AMERICAS INC. and
`ORAFOL EUROPE GMBH,
`
` Plaintiffs,
`
`v.
`
`TROY D. YOUNG, individually, and
`VINYL FANATIC LLC,
`
` Defendants.
`
`Civil Action No. __________________
`
`COMPLAINT
`___________
`
`ORAFOL1, by and through its attorneys and for its Complaint against Defendant
`
`Vinyl Fanatic LLC (“Vinyl Fanatic”) and Defendant Troy D. Young (“Young”), alleges
`
`as follows:
`
`NATURE OF THE CASE
`
`1.
`
`From a state of the art facility in Black Creek, Georgia, ORAFOL manufactures
`
`premium vinyl graphic films, digital media, laminating films, and reflective products
`
`used in the signage, graphics, digital printing, screen printing, and traffic and safety
`
`applications. ORAFOL sells these premium goods through a network of authorized
`
`distributors and resellers under a variety of trademarks, including ORAFOL®,
`
`1 Plaintiff ORAFOL Americas Inc. is a subsidiary of Plaintiff ORAFOL Europe GmbH,
`and, collectively, both Plaintiffs are referred to herein as “ORAFOL”.
`1
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 2 of 51
`
`ORACAL®, ORACAL 651(cid:140), and 651(cid:140). Defendant Vinyl Fanatic, directed and
`
`controlled by its owner, Defendant Young, is an unauthorized reseller of materially
`
`different ORAFOL goods that refuses to cease its deceptive trade practices and
`
`infringement of ORAFOL’s intellectual property rights despite repeated demands to do
`
`so.
`
`2.
`
`Not only do Defendants procure, resell and promote ORAFOL goods without
`
`authorization, they have brazenly registered the trademark 651VINYL® with the United
`
`States Patent and Trademark Office (“USPTO”), falsely claiming Vinyl Fanatic to be the
`
`owner of such mark. They operate their business through the similarly named e-
`
`commerce site www.651vinyl.com. Defendants have incorporated ORAFOL’s own
`
`ORACAL 651(cid:140) and 651(cid:140) marks and product names into their 651VINYL® mark and
`
`www.651vinyl.com domain name to sell not only materially different and unauthorized
`
`ORAFOL goods, but also goods of ORAFOL’s competitors. Defendants’ conduct is
`
`more than willful trademark infringement; it is also a deceptive trade practice and
`
`falsely suggests an affiliation or connection between ORAFOL and Defendants that
`
`does not, in fact, exist.
`
`3.
`
`Therefore, and given Defendants’ refusal to cease their misconduct and resolve
`
`the underlying dispute in good faith, ORAFOL has brought this action at law and in
`
`equity for willful and malicious infringement of its federally registered and common
`
`law trademarks, cancellation of the 651VINYL® registration, cancellation of the
`
`2
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 3 of 51
`
`www.651vinyl.com domain name, unfair competition and false designation of origin,
`
`and related claims, under the Lanham Act and Georgia law.
`
`4.
`
`Through this Complaint, ORAFOL seeks monetary damages, including in the
`
`form of an accounting and disgorgement of Defendants’ profits on the basis of, inter alia,
`
`Defendants’ unjust enrichment from their willful and malicious trademark infringement
`
`and acts of unfair competition, false advertising, and false designation of origin.
`
`ORAFOL also seeks an award of its reasonable attorneys’ fees and expenses of
`
`litigation, in addition to preliminary and permanent injunctive relief to stop the
`
`irreparable harm being caused to the goodwill and reputation associated with
`
`ORAFOL, its authorized reseller program, and its trademarks by Defendants’ deliberate
`
`acts of trademark infringement, unfair competition, and false advertising.
`
`THE PARTIES
`
`5.
`
`Plaintiff ORAFOL Americas Inc. is a Delaware corporation with an address and
`
`principal place of business at 1100 Oracal Parkway, Black Creek, Georgia 31308.
`
`6.
`
`Plaintiff ORAFOL Europe GmbH is a German limited company with an address
`
`and principal place of business at Orafolstrasse 2, 16515 Oranienburg, Germany.
`
`7.
`
`On information and belief, Defendant Troy D. Young is a citizen and resident of
`
`3
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 4 of 51
`
`the state of Kentucky and a founding owner of Vinyl Fanatic. Upon information and
`
`belief, he resides at 6619 Sycamore Bend Trace, Louisville, Kentucky 40291-3781, and
`
`may be served with process at the same address by delivery of a copy of the Summons
`
`and this Complaint, or, alternatively, at the below address for Vinyl Fanatic. Young is the
`
`driving force behind Vinyl Fanatic’s infringement of ORAFOL’s intellectual property
`
`rights, and directed, authorized and/or approved the misconduct complained of herein.
`
`Further, upon information and belief, Young individually engaged in the same
`
`infringement and misconduct, in addition to doing so through his company, Vinyl
`
`Fanatic.
`
`8.
`
`Defendant Vinyl Fanatic LLC is a Kentucky limited liability company with an
`
`address of 4508 Shepherdsville Rd, Louisville, Kentucky 40218-3439. Vinyl Fanatic may
`
`be served with process at the same address by delivery of a copy of the Summons and
`
`this Complaint to its registered agent, Michael Lewis White.
`
`JURISDICTION AND VENUE
`
`9.
`
`The Court has subject matter jurisdiction over this action under 15 U.S.C. § 1121
`
`(the “Lanham Act”), and under 28 U.S.C. §§ 1331 and 1338. The Court has
`
`supplemental jurisdiction over the state law claims asserted in this action under 28
`
`U.S.C. §§ 1338 and 1367.
`
`4
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 5 of 51
`
`10.
`
`The amount in controversy, exclusive of interest and costs, exceeds the sum of
`
`$75,000, and there is complete diversity of citizenship between the parties. Therefore,
`
`the Court additionally has diversity jurisdiction over this action under 28 U.S.C. § 1332.
`
`11.
`
`The Court has personal jurisdiction over Defendants because, upon information
`
`and belief, their conduct, individually and/or acting in concert with one another, was
`
`deliberately directed at a party residing in this state (and this judicial district), namely,
`
`ORAFOL Americas Inc. Defendants have also, either in person or through an agent, in
`
`connection with the factual allegations of this lawsuit: (1) transacted business within the
`
`state of Georgia, (2) committed a tortious act or omission in this state or committed a
`
`tortious injury in this state caused by committing an act or omission outside this state,
`
`and (3) engaged in a persistent course of conduct and have derived revenues from
`
`goods used or consumed, or services rendered, in Georgia.
`
`12.
`
`Upon information and belief, Defendants sell and market unauthorized
`
`ORAFOL products and engage in other commercial misconduct described herein by
`
`selling and advertising within this judicial district, including through e-mail, web, and
`
`social media marketing campaigns that are, inter alia, directed to this district.
`
`13.
`
`ORAFOL further anticipates that discovery will reveal additional substantial
`
`contacts and tortious acts or omissions by each Defendant supporting the exercise of
`
`5
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 6 of 51
`
`personal jurisdiction by this Court.
`
`14.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 1391(b).
`
`FACTS COMMON TO ALL COUNTS OF RELIEF
`___________________________
`
`ORAFOL AND ITS PREMIER BRANDED PRODUCTS
`
`15.
`
`ORAFOL is a leading global manufacturer of premium vinyl graphic films,
`
`digital media, laminating films, and reflective products used in the signage, graphics,
`
`digital printing, screen printing, and traffic and safety applications. Additionally,
`
`ORAFOL markets a wide range of other commercial and non-commercial goods.
`
`ORAFOL’s United States-based distribution network spans the United States, Canada,
`
`Latin America and the Caribbean, and it has an extensive global distribution network as
`
`well based out of its European operations.
`
`16.
`
`ORAFOL’s Black Creek, Georgia manufacturing facility is one of the most
`
`modern of its kind, in the Americas, and ensures both high quality product and rapid
`
`turn-over time for delivery. This facility completed an expansion in 2009 that included
`
`approximately 160,000 square-feet of additional storage space for finished goods, and
`
`close to 50,000 square-feet of ground-floor space for packaging and shipping. In
`
`addition to the plant expansion, capital investment in an adhesive coating line and
`
`6
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 7 of 51
`
`automated roll retrieval system brought the total capital investment project to $20
`
`million. ORAFOL employs well over 160 employees at this facility, and over 1,800
`
`employees globally.
`
`17.
`
`Relevant to this dispute, ORAFOL manufactures a full range of cast and
`
`calendered self-adhesive vinyl products for signage, car wrapping, graphic design and
`
`digital printing applications.
`
`18.
`
`For example, ORAFOL sells a permanent self-adhesive vinyl under the ORACAL
`
`651(cid:140) name that has a popular following for decorative use on vehicles, windows,
`
`mugs, and the like, suitable for outdoor use.
`
`19.
`
`ORAFOL also sells a removal self-adhesive vinyl product for indoor use under
`
`the ORACAL 631(cid:140) name. It has a matte finish and is generally used for application to
`
`walls, trade show booths, and for exhibition graphics.
`
`20.
`
`Additionally, ORAFOL sells a range of fluorescent vinyls under the ORACAL
`
`6510(cid:140) name that provide high-impact visibility such as on vehicle and bus advertising,
`
`POP displays, labels, decals and retail applications.
`
`21.
`
`ORAFOL also sells a stencil film for use in stencil applications, especially for
`
`paint and spray techniques under the ORAMASK(cid:140) name.
`
`7
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 8 of 51
`
`22.
`
`ORAFOL sells the above and other quality goods under several trademarks that
`
`it has registered with the USPTO or has pending applications to register, including, as
`
`follows:
`
`TRADEMARK APPLICATION OR
`REGISTRATION NO.
`Reg. No. 2551871
`Issued: March 26, 2002
`
`ORAFOL
`
`ORAFOL
`
`Reg. No. 5515996
`Issued: July 17, 2018
`
`GOODS/SERVICES
`
`Plastic foils for wrapping and packaging,
`labeling
`and decorating
`purposes;
`fluorescent, phosphorescent and self-
`adhesive plastic foils for wrapping and
`packaging,
`labeling
`and decorating
`purposes in Int. Cl. 16
`
`Plastic foils for general industrial use and
`for
`use
`in
`further manufacture;
`fluorescent, phosphorescent and self-
`adhesive plastic
`foils
`for general
`industrial use and for use in further
`manufacture in Int. Cl. 17
`Adhesive bands of metal, namely,
`metallic
`tapes,
`films and sheets
`for
`labeling, screen printing, cutting plotters,
`and for decorative purposes and non-
`luminous and non-mechanical metallic
`signs; foils of metal, namely, metallic foils
`for
`labeling, screen printing, cutting
`plotters, and for decorative purposes and
`non-luminous
`and
`non-mechanical
`metallic
`signs;
`signboards
`and
`pictographs of metal in Int. Cl. 6
`
`Paper and goods made from paper,
`namely,
`laminated paper,
`laminated
`paper for wrapping, labelling, printing,
`plotting, and for decorative purposes,
`laminated papers to be affixed to signs,
`the surface of walls, floors and windows;
`adhesive tapes for stationery and for
`household purposes, namely, adhesive
`
`8
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 9 of 51
`
`tapes for signs, wall graphics, floor
`graphics, window graphics and lettering;
`adhesives for stationery or household
`purposes, namely, adhesive plastic sheets
`and films for signs, wall graphics, floor
`graphics, window graphics and lettering;
`plastic materials for packaging, namely,
`plastic film roll stock for packaging and
`packaging labels, for wrapping, labelling,
`printing, plotting, and for decorative
`purposes; pictographs, namely, images,
`letters and numbers being printed on
`metallic
`film; pictographs, namely,
`images,
`letters and numbers being
`printed on plastic film in Int. Cl. 16
`
`Rubber materials for packaging, namely,
`rubber and synthetic rubber films and
`tape used as a packaging wrap for
`commercial and industrial use; sheets of
`plastic for use in the manufacture of
`packaging, vehicle wrap, labels, displays
`and signs; sheets of plastic for wrapping,
`labeling, printing, plotting and
`for
`decorative purposes; self-adhesive plastic
`sheets for use in the manufacture of
`packaging, vehicle wrap, labels, displays
`and signs; self-adhesive plastic sheets for
`wrapping, labeling, printing, plotting and
`for decorative purposes; viscous and
`reclaimed cellulose being cellulosic film
`for commercial and
`industrial use;
`adhesive tapes, other than for medical,
`stationery and household purposes;
`plastics
`in extruded
`form used
`in
`production and manufacturing; extruded
`plastics in the form of thin films for
`vehicle wrap, displays, signs, wrapping,
`labeling, printing, plotting, and
`for
`decorative purposes in Int. Cl. 17
`Plastic foils for wrapping and packaging,
`labels
`and
`decorative
`purposes;
`fluorescent, phosphorescent and self-
`
`ORACAL
`
`Reg. No. 2442383
`Issued: April 10, 2001
`
`9
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 10 of 51
`
`ORACAL
`
`Reg. No. 5471987
`Issued: May 22, 2018
`
`adhesive plastic foils for wrapping and
`packaging,
`labels
`and
`decorative
`purposes in Int. Cl. 16
`
`Plastic foils for general industrial use and
`for
`use
`in
`further manufacture;
`fluorescent, phosphorescent and self-
`adhesive plastic
`foils
`for general
`industrial use and for use in further
`manufacture in Int. Cl. 17
`Adhesive bands of metal, namely,
`metallic
`tapes,
`films and sheets
`for
`labeling, screen printing, cutting plotters
`and for decorative purposes and non-
`luminous and non-mechanical metallic
`signs; foils of metal, namely, metallic foils
`for
`labeling, screen printing, cutting
`plotters and for decorative purposes and
`non-luminous
`and
`non-mechanical
`metallic signs in Int. Cl. 6
`
`Paper and goods made from paper,
`namely,
`laminated paper,
`laminated
`paper for wrapping, labeling, printing,
`plotting and for decorative purposes,
`laminated papers to be affixed to signs,
`the surface of walls, floors and windows;
`adhesive tapes for stationery and for
`household purposes, namely, adhesive
`tapes for signs, wall graphics, floor
`graphics, window graphics and lettering;
`adhesives for stationery or household
`purposes, namely, adhesive plastic sheets
`and films for signs, wall graphics, floor
`graphics, window graphics and lettering;
`plastic materials for packaging, namely,
`plastic film roll stock for packaging and
`packaging labels, for wrapping, labeling,
`printing, plotting and
`for decorative
`purposes; pictographs, namely, images,
`letters and numbers being printed on
`metallic
`film; pictographs, namely,
`images,
`letters and numbers being
`
`10
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 11 of 51
`
`printed on plastic film in Int. Cl. 16
`
`Rubber materials for packaging, namely,
`rubber and synthetic rubber films and
`tape used as a packaging wrap for
`commercial and industrial use; sheets of
`plastic for use in the manufacture of
`packaging, vehicle wrap, labels, displays
`and signs; sheets of plastic for wrapping,
`labeling, printing, plotting and
`for
`decorative purposes; self-adhesive plastic
`sheets for use in the manufacture of
`packaging, vehicle wrap, labels, displays
`and signs; self-adhesive plastic sheets for
`wrapping, labeling, printing, plotting and
`for decorative purposes; viscous and
`reclaimed cellulose being cellulosic film
`for commercial and
`industrial use;
`adhesive tapes other than for medical,
`stationery, and household purposes;
`plastics
`in extruded
`form used
`in
`production and manufacturing; extruded
`plastics in the form of thin films for
`vehicle wrap, displays, signs, wrapping,
`labeling, printing, plotting and
`for
`decorative purposes in Int. Cl. 17
`
`Signboards of plastics in Int. Cl. 20
`Adhesive-backed PVC film in Int. Cl. 16
`
`Adhesive-backed PVC film in Int. Cl. 16
`
`ORACAL 651
`
`651
`
`Ser. No. 88559730
`Filed: August 1, 2019
`Ser. No. 88559716
`Filed: August 1, 2019
`
`True and correct copies of each registration above may be found at Exhibit A.
`
`23.
`
`All of these trademarks are valid and subsisting. Registration No. 2551871 for
`
`ORAFOL and Registration No. 2442383 for ORACAL are incontestable under federal
`
`law.
`
`11
`
`
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 12 of 51
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`24.
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`Not only has ORAFOL protected its trademarks by registering them or seeking
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`to register them, but it has also taken reasonable efforts to monitor and protect the
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`trademarks against improper use.
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`25.
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`ORAFOL has invested a significant amount of time, money, and other resources
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`in nurturing and adding to the goodwill associated with its above trademarks.
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`ORAFOL’s trademarks designate a single source of origin.
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`26.
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`ORAFOL has continuously and extensively used its trademarks in connection
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`with its above-specified goods for many decades, and well prior to Defendants’ use of
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`such marks and of the 651VINYL® mark.
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`THE ORAFOL AUTHORIZED RESELLER PROGRAM
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`27.
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`One aspect of ORAFOL’s United States and Canadian businesses is to give
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`consumers access to high quality vinyl and related products, like ORACAL 651(cid:140) vinyl,
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`through ORAFOL’s authorized distributors and resellers. Typically, ORAFOL sells its
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`goods to a small network of authorized distributors, and these distributors then sell to a
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`larger network of authorized resellers, who then resell directly to the general public.
`
`28.
`
`There are approximately only 177 such distributors and resellers currently across
`
`12
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`
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 13 of 51
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`the country. Each distributor and reseller undergoes rigorous scrutiny and must adhere
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`to a number of contractually binding requirements to become and remain authorized as
`
`a distributor or reseller. Only authorized distributors and resellers are permitted to
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`source and sell ORAFOL products and to use and display ORAFOL trademarks.
`
`29.
`
`At the heart of this program is ORAFOL’s Quality Control and Reselling Policy
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`(“Quality Policy”). This policy is followed by authorized distributors and incorporated
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`into an agreement that each authorized reseller must sign to become an authorized
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`ORAFOL reseller (the “Reseller Agreement”). Together, the Reseller Agreement and
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`Quality Policy ensure that consumers receive world class ORAFOL products,
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`accompanied by a robust warranty, and that the quality of ORAFOL goods and
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`warranty service is maintained throughout the supply chain.
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`30.
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`In vetting a potential authorized reseller, ORAFOL looks at a number of factors,
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`including where they might store products, which authorized distributors they intend
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`to buy from, whether any third party fulfillment services will be used to fill orders,
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`whether an applicant or its principal(s) have ever declared bankruptcy, whether there is
`
`any past or pending litigation against the applicant or its principal(s), and so on.
`
`ORAFOL undertakes this type of careful analysis to ensure that only the very best
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`qualified companies and persons are permitted to carry its goods and display its
`
`trademarks in the marketplace, thereby upholding ORAFOL’s high quality standards.
`
`13
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 14 of 51
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`31.
`
`Authorized resellers are permitted to proudly display the below logo, which
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`vouches for the trust ORAFOL places in them and reassures customers that they are
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`purchasing products from an authorized source:
`
`32.
`
`The Reseller Agreement and Quality Policy are critical to maintaining the quality
`
`of ORAFOL’s products in the marketplace and to assure the high reputation and
`
`goodwill associated with its trademarks.
`
`33.
`
`Authorized resellers may only purchase ORAFOL goods from authorized
`
`distributors approved by ORAFOL in writing. And authorized distributors and
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`resellers must track lot numbers from their purchases and sales to enable traceability
`
`and validate warranty claims. ORAFOL generally does not warrant goods that cannot
`
`be tracked to ORAFOL’s lot number or are sold through unauthorized channels and
`
`outlets.
`
`34.
`
`The Quality Policy requires authorized distributors and partners to provide
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`customers with full legal and regulatory disclosures applicable to the advertised
`
`14
`
`
`
`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 15 of 51
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`ORAFOL products, as well as product data sheets and warranty notices, so that
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`consumers may make an informed purchasing decision and know their rights as to
`
`potential warranty claims.
`
`35.
`
` Authorized resellers agree that they may only use ORAFOL’s trademarks and
`
`intellectual property under license during the term of the Reseller Agreement and have
`
`no right, title, or interest in such intellectual property beyond such license.
`
`36.
`
`The Quality Policy requires authorized distributors and resellers to store
`
`products in specific temperature and humidity conditions, and in a manner that
`
`prevents stored ORAFOL product inventory from becoming crushed or damaged.
`
`37.
`
`To ensure that ORAFOL can maintain control over the reputation of its
`
`trademarks and the quality of its goods throughout the supply chain, the Reseller
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`Agreement provides ORAFOL with broad rights to audit authorized resellers, prohibits
`
`anonymous sales, disallows third party fulfillment without authorization, prohibits
`
`commingled inventory, and bans the resale of defective goods.
`
`38.
`
`Likewise, because ORAFOL manufactures premium goods, it prohibits sales of
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`its products by authorized resellers through marketplaces like eBay and Etsy without
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`express prior written consent.
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`15
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 16 of 51
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`39.
`
`Per the Quality Policy, an authorized distributor or reseller is not permitted to
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`create, register, or use any domain name or any mobile application that contains any
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`ORAFOL product name or any trademark owned by or licensed to ORAFOL, nor a
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`misspelling or confusingly similar variation of any ORAFOL product name or any
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`trademark owned by or licensed to ORAFOL.
`
`40.
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`ORAFOL’s Reseller Agreement also prohibits authorized resellers from
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`substituting orders for ORAFOL genuine products for those from a competing
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`manufacturer. This ensures that customers do not order ORAFOL goods, only to
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`receive inferior products from another manufacturer, thereby tarnishing the customer
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`experience with the ORAFOL brand and the brand’s reputation. An authorized reseller
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`who is found to be selling counterfeit products or substituting non-ORAFOL products
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`or a different product from the advertised ORAFOL product may be immediately
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`terminated and no longer authorized.
`
`41.
`
`Authorized distributors and partners are required to learn about the features and
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`distinct characteristics of all ORAFOL products and must obtain sufficient product
`
`knowledge to advise customers on the selection, optimal and safe use of the products,
`
`as well as any applicable warranty, guarantee, or return policy.
`
`42.
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`Authorized distributors and partners must use their best efforts to provide
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`16
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 17 of 51
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`prompt after-sales support and technical assistance to customers, and notify ORAFOL
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`of any customer complaints and/or regulatory complaints.
`
`43.
`
`The Quality Policy gives ORAFOL broad rights to review an authorized
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`distributor or reseller’s sales and customer service practices to ensure that the quality of
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`ORAFOL’s products and reputation are being upheld to ORAFOL’s satisfaction.
`
`44.
`
`An ORAFOL product end user does not have to be completely familiar with
`
`every aspect of ORAFOL’s quality control measures, but instead can reasonably rely
`
`upon the ORAFOL trademarks’ acquired reputation for high quality, reliability, and
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`support provided through these measures to make their purchasing decision.
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`DEFENDANTS’ MISCONDUCT AND TRADEMARK INFRINGEMENT
`
`45.
`
`Through its web site, www.651vinyl.com, Vinyl Fanatic advertises and sells a
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`number of ORAFOL goods, including ORACAL 651(cid:140) vinyl, ORACAL 631(cid:140) vinyl, and
`
`ORACAL 6510(cid:140) vinyl, as shown in the below screenshot from their web site:
`
`17
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`
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 18 of 51
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`46.
`
`Defendants are aware that they are not authorized resellers of ORAFOL goods
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`and know why it is important for such high quality goods to be sold only by an
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`authorized reseller. Indeed, they promote on www.651vinyl.com their authorized
`
`18
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 19 of 51
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`reseller status with another manufacturer (Siser) and the benefits to the customer of the
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`same, as shown in the screenshot below from the web site:
`
`47.
`
`Neither Defendant is authorized to source or sell ORAFOL products under
`
`ORAFOL’s authorized reseller program. And despite understanding the importance of
`
`only selling ORAFOL goods if one is an authorized reseller, Defendants’ actions
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`deliberately flaunt and interfere with ORAFOL’s Quality Policy and agreements in
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`place with its authorized distributors and resellers.
`
`48.
`
`Defendants operate in direct competition with ORAFOL’s authorized resellers.
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`Defendants actively seek and solicit the same customers that would do business with
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`ORAFOL’s authorized resellers.
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`19
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`Case 4:20-cv-00043-RSB-CLR Document 1 Filed 03/05/20 Page 20 of 51
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`49.
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`For example, despite being put on notice to not purchase or resell ORAFOL
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`goods without express written consent from ORAFOL, Defendants continue to source
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`and resell ORAFOL goods from unknown sources. Defendants’ misconduct in this
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`regard deliberately interferes with ORAFOL’s agreements in place with authorized
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`distributors and resellers which prohibit them from selling to unauthorized resellers
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`like Vinyl Fanatic.
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`50.
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`Upon information and belief, Defendants are also using fictitious names and
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`companies to source ORAFOL products from authorized distributors and/or resellers
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`to prevent ORAFOL from learning of their identity and misconduct.
`
`51.
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`Only ORAFOL products sold through authorized resellers that adhere to
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