Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1033063
`
`Filing date:
`
`02/03/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92073255
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`SG Trademark Holding Co.
`
`SG TRADEMARK HOLDING CO
`5421 NEW UTRECHT AVE
`BROOKLYN, NY 11219
`UNITED STATES
`no email provided
`no phone number provided
`
`Motion to Suspend for Civil Action
`
`Mark Berkowitz
`
`ptodocket@arelaw.com
`
`/Mark Berkowitz/
`
`02/03/2020
`
`Motion to Suspend Pending Civil Action.pdf(17312 bytes )
`Ex. A - Registrant's Answer to First Amended Complaint, Affirmative Defenses
`and Counterclaims - Federal Civil Action.pdf(1574733 bytes )
`Ex. B (Part 1 of 6) - Petitioner's Second Amended Complaint - Federal Civil Ac-
`tion.pdf(1379052 bytes )
`Ex. B (Part 2 of 6) - Petitioner's Second Amended Complaint - Federal Civil Ac-
`tion.pdf(697992 bytes )
`Ex. B (Part 3 of 6) - Petitioner's Second Amended Complaint - Federal Civil Ac-
`tion.pdf(1647466 bytes )
`Ex. B (Part 4 of 6) - Petitioner's Second Amended Complaint - Federal Civil Ac-
`tion.pdf(1733775 bytes )
`Ex. B (Part 5 of 6) - Petitioner's Second Amended Complaint - Federal Civil Ac-
`tion.pdf(5008767 bytes )
`Ex. B (Part 6 of 6) - Petitioner's Second Amended Complaint - Federal Civil Ac-
`tion.pdf(5205231 bytes )
`Ex. C - Petitioner's Complaint - California Civil Action.pdf(96017 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`PADO, INC.,
`
`Cancellation No. 92073255
`
`Petitioner,
`
`v.
`
`SG TRADEMARK HOLDING CO.,
`
`Registrant.
`
`Mark: PURWAVE
`Serial No.: 86518535
`Reg. No.: 4925190
`Filed: January 29, 2015
`Registered: March 29, 2016
`
`MOTION TO SUSPEND PROCEEDING PENDING OUTCOME OF CIVIL ACTIONS
`
`Registrant SG Trademark Holding Co. (“Registrant”), by and through its undersigned
`
`counsel, hereby moves to suspend this proceeding pursuant to 37 C.F.R. § 2.117(a) and TBMP
`
`§ 510.02(a).
`
`I.
`
`The Parties Are Involved in Civil Actions Involving the Same Issues as Here
`
`A.
`
`The Present Proceeding
`
`On January 9, 2020, Petitioner Pado, Inc. (“Petitioner”) filed is petition in this
`
`proceeding, seeking to cancel U.S. Registration No. 4,925,190 for the trademark PURWAVE
`
`(“the PURWAVE Registration”). 1 TTABVUE (“Petition”). The PURWAVE Registration was
`
`registered on March 29, 2016 to Sigma Instruments, Inc. (“Sigma Instruments”). On December
`
`30, 2019, Sigma Instruments assigned the PURWAVE Registration to Registrant, who recorded
`
`such assignment with the U.S. Patent and Trademark Office that same day.
`
`In its Petition, Petitioner asserts three grounds for cancellation: (I) “Abandonment by
`
`Failure to Use”; (II) “Abandonment by Failure to Police”; and (III) “Not Rightful Owner and/or
`
`Illegal Transfer.”
`
`4841-0581-5987v.1
`
`

`

`Cancellation No. 92073255
`
`B.
`
`The Federal Civil Action
`
`Months prior to filing its Petition, Petitioner filed a complaint on November 22, 2019
`
`against Registrant (along with other defendants) in the United States District Court for the
`
`Eastern District of New York, alleging, inter alia, false designation of origin and unfair
`
`competition under 15 U.S.C. § 1125(a), trademark infringement and unfair competition under
`
`New York common law, and other related state law claims concerning Registrant’s alleged use
`
`of the term “Pure Wave.” (See Petition ¶ 23.) That case is captioned as follows: Pado, Inc. v.
`
`SG Trademark Holding Co LLC et al., Case No. 1:19-cv-06614-KAM-RER (E.D.N.Y. filed
`
`Nov. 22, 2019) (the “Federal Civil Action”).
`
`On December 17, 2019, Petitioner filed an amended complaint in the Federal Civil
`
`Action asserting the same claims as its original complaint.
`
`On January 16, 2020, Registrant filed its answer to the amended complaint and
`
`counterclaims alleging, inter alia, trademark infringement pursuant to 15 U.S.C. § 1114 based on
`
`the PURWAVE Registration at issue in this proceeding. Registrant’s counterclaims also allege
`
`false designation of origin and unfair competition under 15 U.S.C. § 1125(a), and unfair
`
`competition under New York common law, also concerning Registrant’s PURWAVE mark. A
`
`true and correct copy of Registrant’s Answer to the Amended Complaint, Affirmative Defenses,
`
`and Counterclaims filed in the Federal Civil Action is attached hereto as Exhibit A.
`
`On January 21, 2020, the federal court held a conference to discuss various motions filed
`
`by the parties. During that conference, the court directed Petitioner to file a second amended
`
`complaint. On January 24, 2020, Petitioner filed its second amended complaint, asserting the
`
`same trademark infringement and other claims as its original complaint, and adding, inter alia, a
`
`claim seeking cancellation of the PURWAVE Registration—the identical issue to be decided in
`
`4841-0581-5987v.1
`
`-2-
`
`

`

`Cancellation No. 92073255
`
`this proceeding. A true and correct copy of the Second Amended Complaint filed in the Federal
`
`Civil Action is attached hereto as Exhibit B.
`
`To support its cancellation claim, Petitioner makes the same arguments and allegations as
`
`asserted here in its Petition, including allegations that “Sigma Instruments stopped using the
`
`PURWAVE trademark in connection with any goods or services in commerce at least 3 years
`
`ago and never intended to resume using the mark” (Ex. B ¶¶ 194, 108; compare with, e.g.,
`
`Petition ¶¶ 11–12, 36–37); “Sigma Instruments abandoned the PURWAVE mark . . . at least by
`
`failure to police the mark” (Ex. B ¶ 197, 112; compare with, e.g., Petition ¶¶ 13–14, 41); and that
`
`the assignment of the PURWAVE Registration was “an invalid assignment-in-gross” (Ex. B
`
`¶ 113; compare with, e.g., Petition ¶¶ 39, 43–44).1
`
`C.
`
`The California Civil Action
`
`On January 15, 2020, Petitioner filed a complaint in the Superior Court of the State of
`
`California for the County of Los Angeles against Registrant (along with other defendants)
`
`alleging unfair competition and false advertising under California statutes concerning, inter alia,
`
`Registrant’s alleged use of the term “Pure Wave” on its website. That case is captioned as
`
`follows: Pado, Inc. v. SG Trademark Holding Co LLC et al., Case No. 20STCV01970 (Cal.
`
`Super. Ct., L.A. Cty., filed Jan. 15, 2020) (the “California Civil Action”). A true and correct
`
`copy of the Complaint filed in the California Civil Action is attached hereto as Exhibit C.2
`
`1 As Registrant will show in the Federal Civil Action, these allegations are not true. For
`example, a simple Internet search confirms that the PURWAVE mark was in use by Sigma
`Instruments until 2019. See, e.g., https://web.archive.org/web/20190124111507/
`http://purwave.com/ (showing the PURWAVE-branded massager being advertised on
`www.purwave.com at least up until January 24, 2019).
`
`2 Registrant intends to seek to remove the California Civil Action to federal court and
`consolidate with the Federal Civil Action.
`
`4841-0581-5987v.1
`
`-3-
`
`

`

`Cancellation No. 92073255
`
`II.
`
`This Proceeding Should Be Suspended Pending Termination of the Civil Actions
`
`Because both the Federal Civil Action and the California Civil Action are very likely to
`
`have a bearing on the present proceeding, this proceeding should be suspended until final
`
`determination of those civil actions.
`
`The federal Trademark Rules provide that:
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal Board
`that a party or parties to a pending case are engaged in a civil action or another
`Board proceeding which may have a bearing on the case, proceedings before the
`Board may be suspended until termination of the civil action or the other Board
`proceeding.
`
`37 C.F.R. § 2.117(a).
`
`Indeed, it is the policy of the Board to suspend proceedings when the parties are involved
`
`in a civil action which may be dispositive of or have a bearing on the Board case. TBMP
`
`§ 510.02(a) (“Unless there are unusual circumstances, the Board will suspend proceedings in the
`
`case before it if the final determination of the other proceeding may have a bearing on the issues
`
`before the Board.”); see also New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99
`
`U.S.P.Q.2d 1550, 1552 (TTAB 2011) (“[T]he civil action does not have to be dispositive of the
`
`Board proceeding to warrant suspension, it need only have a bearing on the issues before the
`
`Board.”).
`
`“A civil action may involve other matters outside Board jurisdiction and may consider
`
`broader issues beyond right to registration and, therefore, judicial economy is usually served by
`
`suspension.” TBMP § 510.02(a). Further, “[w]hen a district court, as part of its judgment,
`
`decides an issue that overlaps with part of the TTAB’s analysis, the TTAB gives preclusive
`
`effect to the court’s judgment.” B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138, 152
`
`(2015).
`
`4841-0581-5987v.1
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`-4-
`
`

`

`Cancellation No. 92073255
`
`Accordingly, because the Federal Civil Action and the California Civil Action involve
`
`the same parties, the same PURWAVE Registration, and the same issues regarding use and
`
`assignment of the PURWAVE mark, they both will have a bearing on this proceeding. The
`
`Federal Civil Action even involves the identical issue to be decided in this proceeding—namely,
`
`whether the PURWAVE Registration should be cancelled for alleged abandonment. (Compare
`
`Ex. B ¶¶ 100–119, 191–199, with Petition ¶¶ 11–16, 24–30, 36–44.) This proceeding should be
`
`suspended until final determination of both of those civil actions. See TBMP § 510.02(a).
`
`*
`
`*
`
`*
`
`For the above reasons, Registrant respectfully requests that the Board suspend this
`
`proceeding pending final determinations of the Federal Civil Action and California Civil Action.
`
`Respectfully submitted,
`
`Dated: New York, New York
`February 3, 2020
`
`By:
`
`/ Mark Berkowitz /
`Mark Berkowitz
`
`
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 Park Avenue
`New York, New York 10016
`Phone: (212) 336-8000
`Email: mberkowitz@arelaw.com
`
`Attorneys for Registrant
`
`4841-0581-5987v.1
`
`-5-
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing MOTION TO SUSPEND
`
`PROCEEDING PENDING OUTCOME OF CIVIL ACTIONS, together with supporting
`
`EXHIBITS A–C, has been served on Registrant by forwarding said copy on February 3, 2020,
`
`via email to the following counsel of record for Petitioner:
`
`Joel D. Voelzke
`INTELLECTUAL PROPERTY LAW OFFICES
`OF JOEL VOELZKE, APC
`24772 W. Saddle Peak Road
`Malibu, CA 90265-3042
`E-mail: joel@voelzke.com
`
`/Mark Berkowitz/
` Mark Berkowitz
`
`4841-0581-5987v.1
`
`

`

`Exhibit A
`
`Exhibit A
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 1 of 66 PageID #: 350
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF NEW YORK
`
`PADO, INC.,
`
`v.
`
`Plaintiff,
`
`Civ. Action No. 1:19-cv-06614-KAM-RER
`
`SG TRADEMARK HOLDING CO LLC,
`COY WEST, HERSCHEL FRIEDMAN,
`ABC CORPORATIONS 1-10, and
`JOHN DOES 1-10,
`
`ANSWER TO FIRST AMENDED
`COMPLAINT, AFFIRMATIVE
`DEFENSES, AND COUNTERCLAIMS
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`SG TRADEMARK HOLDING CO LLC
`and WIEDER AND FRIEDMAN
`ENTERPRISES INC,
`
`Counterclaimants,
`
`v.
`
`PADO, INC., STEVEN LEE,
`ABC CORPORATIONS 1–10, and
`JOHN DOES 1–10,
`
`Counterclaim-Defendants.
`
`ANSWER
`
`Defendant SG Trademark Holding Co LLC (“SG Trademark”), by and through its
`
`counsel, answers and responds to the First Amended Complaint (ECF No. 15) filed by Plaintiff
`
`Pado, Inc. (“Plaintiff” or “Pado”) on December 17, 2019 as set forth below. In response to all
`
`paragraphs of the First Amended Complaint, SG Trademark denies each and every allegation
`
`except as expressly admitted herein. SG Trademark responds specifically to Pado’s averments
`
`as follows:
`
`4847-9093-8544v.4
`
`1
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 2 of 66 PageID #: 351
`
`NATURE OF THE ACTION
`
`1.
`
`SG Trademark ADMITS that this is a civil action purporting to allege patent
`
`infringement, copyright infringement, unfair competition, deceptive trade practices, trademark
`
`dilution, and other claims under federal and New York State law related to the promotion,
`
`distribution, offer for sale, and sale of a handheld massager product: the MIGHTY BLISS
`
`Cordless Massager (the “MIGHTY BLISS Massager”). SG Trademark DENIES the remaining
`
`allegations of paragraph “1” of the First Amended Complaint.
`
`2.
`
`SG Trademark ADMITS that Pado purports to bring this action under the United
`
`States Patent Act, 35 U.S.C. § 1 et seq., the United States Copyright Act, 17 U.S.C. § 101 et seq.,
`
`United States Trademark Act (Lanham Act of 1946), 15 U.S.C. § 1051 et seq., and New York
`
`State statutory and common law. SG Trademark further ADMITS that Pado purports to seek
`
`permanent and preliminary injunctive relief and the recovery of actual damages, SG Trademark’s
`
`profits, damages, attorney fees, and other relief more fully set forth in the First Amended
`
`Complaint. SG Trademark DENIES the remaining allegations of paragraph “2” of the First
`
`Amended Complaint.
`
`JURISDICTION AND VENUE
`
`3.
`
` SG Trademark DENIES the allegations of paragraph “3” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`4.
`
`SG Trademark ADMITS that it is subject to personal jurisdiction of this Court for
`
`purposes of this action.
`
`5.
`
`SG Trademark ADMITS that venue is proper in this judicial district for purposes
`
`of this action.
`
`4847-9093-8544v.4
`
`2
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 3 of 66 PageID #: 352
`
`PARTIES
`
`6.
`
`SG Trademark DENIES that Pado “is the owner of all trademark rights in the
`
`PUREWAVE handheld massagers.” SG Trademark DENIES the remaining allegations of
`
`paragraph “6” of the First Amended Complaint in that it presently lacks sufficient knowledge or
`
`information upon which to form a belief as to the truth thereof.
`
`7.
`
`SG Trademark ADMITS that it is a New York limited liability company having a
`
`place of business at 5421 New Utrecht Avenue, Brooklyn, New York 11219. SG Trademark
`
`DENIES the remaining allegations of paragraph “7” of the First Amended Complaint.
`
`8.
`
`SG Trademark ADMITS that Moshe Friedman a/k/a Coy West (“West”), is an
`
`individual and owner of SG Trademark, and resident of the State of New York, with an address
`
`of 1651 55th Street, Brooklyn, New York 11204. SG Trademark DENIES the remaining
`
`allegations of paragraph “8” of the First Amended Complaint.
`
`9.
`
`SG Trademark ADMITS that Herschel Friedman (“Friedman”) is an individual
`
`who is listed with the New York Department of State as a certified public accountant with an
`
`address of 5421 New Utrecht Avenue, Brooklyn, NY 11219, to which address DOS will mail
`
`process if accepted on behalf of SG Trademark. SG Trademark DENIES the remaining
`
`allegations of paragraph “9” of the First Amended Complaint.
`
`10.
`
`No response is required to the allegations of paragraph “10” of the First Amended
`
`Complaint.
`
`11.
`
`SG Trademark DENIES the allegations of paragraph “11” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`4847-9093-8544v.4
`
`3
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 4 of 66 PageID #: 353
`
`12.
`
`SG Trademark DENIES the allegations of paragraph “12” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`13.
`
`SG Trademark ADMITS that a copy of U.S. Design Patent No. D855,197 entitled
`
`“RECHARGEABLE DUAL MASSAGE APPARATUS” (“the ’197 Patent”) is attached as
`
`Exhibit 2 to the First Amended Complaint. SG Trademark further ADMITS that the face of the
`
`’197 Patent identifies July 30, 2019 as the issue date, Geon Woo Park as the named inventor, and
`
`HomElec Korea Co., Ltd. (“HomElec”) as the applicant of the ’197 Patent. SG Trademark
`
`DENIES the remaining allegations of paragraph “13” of the First Amended Complaint.
`
`14.
`
`SG Trademark DENIES the allegations of paragraph “14” of the First Amended
`
`Complaint. The ’197 Patent claims “the ornamental design for a rechargeable dual massage
`
`apparatus, as shown and described.”
`
`15.
`
`SG Trademark ADMITS that Exhibit 3 to the First Amended Complaint purports
`
`to be an assignment of the ’197 Patent from Mr. Geon Woo Park to HomElec. SG Trademark
`
`DENIES the remaining allegations of paragraph “15” of the First Amended Complaint in that it
`
`presently lacks sufficient knowledge or information upon which to form a belief as to the truth
`
`thereof.
`
`16.
`
`SG Trademark ADMITS that Exhibit 4 to the First Amended Complaint is a
`
`document entitled “Exclusive Patent License” that purports to grant certain rights concerning,
`
`inter alia, the ’197 Patent from HomElec to Pado. SG Trademark further ADMITS that the
`
`document attached as Exhibit 4 to the First Amended Complaint was recorded with the United
`
`States Patent and Trademark Office (“PTO”) on October 29, 2019 at Reel 050859, Frame 0706.
`
`4847-9093-8544v.4
`
`4
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 5 of 66 PageID #: 354
`
`SG Trademark DENIES the remaining allegations of paragraph “16” of the First Amended
`
`Complaint.
`
`17.
`
`SG Trademark ADMITS that Pado has been offering handheld massage products
`
`under the mark PUREWAVE. SG Trademark DENIES the remaining allegations of paragraph
`
`“17” of the First Amended Complaint in that it presently lacks sufficient knowledge or
`
`information upon which to form a belief as to the truth thereof.
`
`18.
`
`SG Trademark DENIES the allegations of paragraph “18” of the First Amended
`
`Complaint.
`
`19.
`
`SG Trademark DENIES the allegations of paragraph “19” of the First Amended
`
`Complaint.
`
`20.
`
`SG Trademark ADMITS that Pado advertises, promotes, markets, and offers for
`
`sale products under the mark PUREWAVE through the online marketplace Amazon.com and
`
`Pado’s website at www.padousa.com. SG Trademark DENIES the remaining allegations of
`
`paragraph “20” of the First Amended Complaint in that it presently lacks sufficient knowledge or
`
`information upon which to form a belief as to the truth thereof.
`
`21.
`
`SG Trademark DENIES the allegations of paragraph “21” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`22.
`
`SG Trademark DENIES the allegations of paragraph “22” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`4847-9093-8544v.4
`
`5
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 6 of 66 PageID #: 355
`
`23.
`
`SG Trademark DENIES the allegations of paragraph “23” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`24.
`
`SG Trademark DENIES the allegations of paragraph “24” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`25.
`
`SG Trademark DENIES the allegations of paragraph “25” of the First Amended
`
`Complaint.
`
`26.
`
`SG Trademark ADMITS that Exhibit 7 to the First Amended Complaint includes
`
`a document entitled “Cordless Massager CM-07 USER MANUAL,” which includes text, two-
`
`dimensional figures, and photographs. SG Trademark DENIES the remaining allegations of
`
`paragraph “26” of the First Amended Complaint in that it presently lacks sufficient knowledge or
`
`information upon which to form a belief as to the truth thereof.
`
`27.
`
`SG Trademark ADMITS that Exhibit 8 to the First Amended Complaint includes
`
`a document entitled “Cordless Massager CM-07 USER MANUAL,” which includes text and
`
`two-dimensional figures. SG Trademark DENIES the remaining allegations of paragraph “27”
`
`of the First Amended Complaint in that it presently lacks sufficient knowledge or information
`
`upon which to form a belief as to the truth thereof.
`
`28.
`
`SG Trademark ADMITS that At Battery Company, Inc. is the listed claimant for
`
`U.S. Copyright Registration Nos. TX-8-796-486 and TX-8-796-570, which were both registered
`
`on or about November 5, 2019 and entitled “Cordless Massager CM-07 User Manual.” SG
`
`Trademark DENIES the remaining allegations of paragraph “28” of the First Amended
`
`4847-9093-8544v.4
`
`6
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 7 of 66 PageID #: 356
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`29.
`
`SG Trademark ADMITS that Exhibit 9 to the First Amended Complaint includes
`
`a document entitled “Confirmatory Nunc Pro Tunc Assignment of Copyrights” that purports to
`
`assign certain rights concerning, inter alia, United States Copyright Registration Nos. TX-8796-
`
`570 and TX-8-796-486 from AT Battery, Inc. to Pado. SG Trademark DENIES the remaining
`
`allegations of paragraph “29” of the First Amended Complaint.
`
`30.
`
`SG Trademark DENIES the allegations of paragraph “30” of the First Amended
`
`Complaint.
`
`31.
`
`SG Trademark ADMITS that Exhibit 10 and paragraph “31” of the First
`
`Amended Complaint appear to show images of the MIGHTY BLISS Massager. SG Trademark
`
`DENIES the remaining allegations of paragraph “31” of the First Amended Complaint.
`
`32.
`
`SG Trademark ADMITS that paragraph “32” of the First Amended Complaint
`
`appears to show images of the MIGHTY BLISS Massager and low-quality reproductions of
`
`certain figures of the ’197 Patent. SG Trademark DENIES the remaining allegations of
`
`paragraph “32” of the First Amended Complaint.
`
`33.
`
`SG Trademark DENIES the allegations of paragraph “33” of the First Amended
`
`Complaint in that it presently lacks sufficient knowledge or information upon which to form a
`
`belief as to the truth thereof.
`
`34.
`
`SG Trademark ADMITS that the summons and original complaint in this action,
`
`which alleged infringement of the ’197 Patent, were served on SG Trademark on November 26,
`
`2019. SG Trademark DENIES the remaining allegations of paragraph “34” of the First
`
`Amended Complaint.
`
`4847-9093-8544v.4
`
`7
`
`

`

`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 8 of 66 PageID #: 357
`
`35.
`
`SG Trademark ADMITS that, on or around November 26, 2019, the website at
`
`www.mightybliss.com included a link to a page on the online marketplace Amazon.com where
`
`the MIGHTY BLISS Massager could be purchased. SG Trademark DENIES the remaining
`
`allegations of paragraph “35” of the First Amended Complaint.
`
`36.
`
`SG Trademark ADMITS that, on December 6, 2019, Wieder and Friedman
`
`Enterprises Inc received an e-mail from Amazon.com stating that Amazon.com received a
`
`complaint (i.e., Complaint ID 6636170191) alleging that the MIGHTY BLISS Massager
`
`infringes the ’197 Patent and listing Pado’s counsel, Joel Voelzke, as the contact for the
`
`purported “rights owner” who submitted the complaint. SG Trademark DENIES the remaining
`
`allegations of paragraph “36” of the First Amended Complaint in that it presently lacks sufficient
`
`knowledge or information upon which to form a belief as to the truth thereof.
`
`37.
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`SG Trademark ADMITS that, on or about December 6, 2019, Amazon.com took
`
`down the listing for the MIGHTY BLISS Massager after receiving Complaint ID 6636170191.
`
`SG Trademark DENIES the remaining allegations of paragraph “37” of the First Amended
`
`Complaint.
`
`38.
`
`SG Trademark ADMITS that consumers may purchase the MIGHTY BLISS
`
`Massager directly through the website www.mightybliss.com. SG Trademark DENIES the
`
`remaining allegations of paragraph “38” of the First Amended Complaint.
`
`39.
`
`SG Trademark DENIES the allegations of paragraph “39” of the First Amended
`
`Complaint.
`
`40.
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`SG Trademark ADMITS that Exhibit 11 of the First Amended Complaint appears
`
`to include a copy of a user manual for the MIGHTY BLISS Massager. SG Trademark DENIES
`
`the remaining allegations of paragraph “40” of the First Amended Complaint.
`
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`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 9 of 66 PageID #: 358
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`41.
`
`SG Trademark DENIES the allegations of paragraph “41” of the First Amended
`
`Complaint.
`
`42.
`
`SG Trademark DENIES the allegations of paragraph “42” of the First Amended
`
`Complaint.
`
`43.
`
`SG Trademark DENIES the allegations of paragraph “43” of the First Amended
`
`Complaint.
`
`44.
`
`SG Trademark DENIES the allegations of paragraph “44” of the First Amended
`
`Complaint.
`
`45.
`
`SG Trademark DENIES the allegations of paragraph “45” of the First Amended
`
`Complaint.
`
`46.
`
`SG Trademark DENIES the allegations of paragraph “46” of the First Amended
`
`Complaint.
`
`47.
`
`SG Trademark DENIES the allegations of paragraph “47” of the First Amended
`
`Complaint.
`
`48.
`
`SG Trademark DENIES the allegations of paragraph “48” of the First Amended
`
`Complaint.
`
`49.
`
`SG Trademark DENIES the allegations of paragraph “49” of the First Amended
`
`Complaint.
`
`50.
`
`SG Trademark DENIES the allegations of paragraph “50” of the First Amended
`
`Complaint.
`
`51.
`
`SG Trademark DENIES the allegations of paragraph “51” of the First Amended
`
`Complaint.
`
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`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 10 of 66 PageID #: 359
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`52.
`
`SG Trademark DENIES the allegations of paragraph “52” of the First Amended
`
`Complaint.
`
`53.
`
`SG Trademark DENIES the allegations of paragraph “53” of the First Amended
`
`Complaint.
`
`54.
`
`SG Trademark DENIES the allegations of paragraph “54” of the First Amended
`
`Complaint.
`
`55.
`
`SG Trademark DENIES the allegations of paragraph “55” of the First Amended
`
`Complaint.
`
`56.
`
`SG Trademark DENIES the allegations of paragraph “56” of the First Amended
`
`Complaint.
`
`57.
`
`SG Trademark DENIES the allegations of paragraph “57” of the First Amended
`
`Complaint.
`
`58.
`
`SG Trademark DENIES the allegations of paragraph “58” of the First Amended
`
`Complaint.
`
`COUNT I
`
`59.
`
`SG Trademark repeats and reiterates each of every one of the foregoing answers
`
`in response to the allegations made in paragraph “59” of the First Amended Complaint herein
`
`with the same force and effect as though set forth at length.
`
`60.
`
`SG Trademark DENIES the allegations of paragraph “60” of the First Amended
`
`Complaint.
`
`61.
`
`SG Trademark DENIES the allegations of paragraph “61” of the First Amended
`
`Complaint.
`
`62.
`
`SG Trademark DENIES the allegations of paragraph “62” of the First Amended
`
`Complaint.
`
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`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 11 of 66 PageID #: 360
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`63.
`
`SG Trademark DENIES the allegations of paragraph “63” of the First Amended
`
`Complaint.
`
`64.
`
`SG Trademark DENIES the allegations of paragraph “64” of the First Amended
`
`Complaint.
`
`COUNT II
`
`65.
`
`SG Trademark repeats and reiterates each of every one of the foregoing answers
`
`in response to the allegations made in paragraph “65” of the First Amended Complaint herein
`
`with the same force and effect as though set forth at length.
`
`66.
`
`SG Trademark DENIES the allegations of paragraph “66” of the First Amended
`
`Complaint.
`
`67.
`
`SG Trademark DENIES the allegations of paragraph “67” of the First Amended
`
`Complaint.
`
`68.
`
`SG Trademark DENIES the allegations of paragraph “68” of the First Amended
`
`Complaint.
`
`69.
`
`SG Trademark DENIES the allegations of paragraph “69” of the First Amended
`
`Complaint.
`
`70.
`
`SG Trademark DENIES the allegations of paragraph “70” of the First Amended
`
`Complaint.
`
`COUNT III
`
`71.
`
`SG Trademark repeats and reiterates each of every one of the foregoing answers
`
`in response to the allegations made in paragraph “71” of the First Amended Complaint herein
`
`with the same force and effect as though set forth at length.
`
`72.
`
`SG Trademark DENIES the allegations of paragraph “72” of the First Amended
`
`Complaint.
`
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`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 12 of 66 PageID #: 361
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`73.
`
`SG Trademark DENIES the allegations of paragraph “73” of the First Amended
`
`Complaint.
`
`74.
`
`SG Trademark DENIES the allegations of paragraph “74” of the First Amended
`
`Complaint.
`
`75.
`
`SG Trademark DENIES the allegations of paragraph “75” of the First Amended
`
`Complaint.
`
`76.
`
`SG Trademark DENIES the allegations of paragraph “76” of the First Amended
`
`Complaint.
`
`77.
`
`SG Trademark DENIES the allegations of paragraph “77” of the First Amended
`
`Complaint.
`
`COUNT IV
`
`78.
`
`SG Trademark repeats and reiterates each of every one of the foregoing answers
`
`in response to the allegations made in paragraph “78” of the First Amended Complaint herein
`
`with the same force and effect as though set forth at length.
`
`79.
`
`SG Trademark DENIES the allegations of paragraph “79” of the First Amended
`
`Complaint.
`
`80.
`
`SG Trademark DENIES the allegations of paragraph “80” of the First Amended
`
`Complaint.
`
`81.
`
`SG Trademark DENIES the allegations of paragraph “81” of the First Amended
`
`Complaint.
`
`82.
`
`SG Trademark DENIES the allegations of paragraph “82” of the First Amended
`
`Complaint.
`
`83.
`
`SG Trademark DENIES the allegations of paragraph “83” of the First Amended
`
`Complaint.
`
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`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 13 of 66 PageID #: 362
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`84.
`
`SG Trademark DENIES the allegations of paragraph “84” of the First Amended
`
`Complaint.
`
`COUNT V
`
`85.
`
`SG Trademark repeats and reiterates each of every one of the foregoing answers
`
`in response to the allegations made in paragraph “85” of the First Amended Complaint herein
`
`with the same force and effect as though set forth at length.
`
`86.
`
`SG Trademark DENIES the allegations of paragraph “86” of the First Amended
`
`Complaint.
`
`87.
`
`SG Trademark DENIES the allegations of paragraph “87” of the First Amended
`
`Complaint.
`
`88.
`
`SG Trademark DENIES the allegations of paragraph “88” of the First Amended
`
`Complaint.
`
`89.
`
`SG Trademark DENIES the allegations of paragraph “89” of the First Amended
`
`Complaint.
`
`COUNT VI
`
`90.
`
`SG Trademark repeats and reiterates each of every one of the foregoing answers
`
`in response to the allegations made in paragraph “90” of the First Amended Complaint herein
`
`with the same force and effect as though set forth at length.
`
`91.
`
`SG Trademark DENIES the allegations of paragraph “91” of the First Amended
`
`Complaint.
`
`92.
`
`SG Trademark DENIES the allegations of paragraph “92” of the First Amended
`
`Complaint.
`
`93.
`
`SG Trademark DENIES the allegations of paragraph “93” of the First Amended
`
`Complaint.
`
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`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 14 of 66 PageID #: 363
`
`94.
`
`SG Trademark DENIES the allegations of paragraph “94” of the First Amended
`
`Complaint.
`
`COUNT VII
`
`95.
`
`SG Trademark repeats and reiterates each of every one of the foregoing answers
`
`in response to the allegations made in paragraph “95” of the First Amended Complaint herein
`
`with the same force and effect as though set forth at length.
`
`96.
`
`SG Trademark DENIES the allegations of paragraph “96” of the First Amended
`
`Complaint.
`
`97.
`
`SG Trademark DENIES the allegations of paragraph “97” of the First Amended
`
`Complaint.
`
`98.
`
`SG Trademark DENIES the allegations of paragraph “98” of the First Amended
`
`Complaint.
`
`PRAYER FOR RELIEF
`
`SG Trademark denies that Pado is entitled to the relief requested. To the extent that any
`
`statement in the prayer for relief is deemed factual, it is denied.
`
`* * *
`
`AFFIRMATIVE DEFENSES
`
`SG Trademark incorporates by reference the foregoing paragraphs in their entirety and
`
`asserts the following affirmative defenses to the claims set forth in the First Amended
`
`Complaint. SG Trademark reserves the right to allege additional Affirmative Defenses as they
`
`become known, and accordingly to amend this Answer.
`
`FIRST AFFIRMATIVE DEFENSE
`
`The First Amended Complaint fails to state a claim upon which relief may be granted.
`
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`Case 1:19-cv-06614-KAM-RER Document 22 Filed 01/16/20 Page 15 of 66 PageID #: 364
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`SECOND AFFIRMATIVE DEFENSE
`
`SG Trademark has not infringed, nor is it infringing, the ’197 Patent directly, indirectly,
`
`literally or under the doctrine of equivalents. A more detai