Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1079077
`
`Filing date:
`
`09/01/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92074712
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Nutrasource Diagnostics Inc.
`
`JOHN A. CLIFFORD
`MERCHANT & GOULD P.C.
`P.O. BOX 2910
`MINNEAPOLIS, MN 55402
`UNITED STATES
`Primary Email: jclifford@merchantgould.com
`Secondary Email(s): aavery@merchantgould.com, dockm-
`pls@merchantgould.com, tsinnott@bereskinparr.com
`612-336-4616
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`John A. Clifford
`
`jclifford@merchantgould.com
`
`/John A. Clifford/
`
`09/01/2020
`
`Attachments
`
`001 Complaint 2020.09.01(6434777.1) (003).pdf(1074294 bytes )
`
`

`

`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 1 of 15 PageID: 1
`
`
`
`Ryan W. O’Donnell
`Volpe and Koenig P.C.
`830 Bear Tavern Road, Suite 303
`Ewing, NJ 08628
`Phone: (609) 924-0109
`Fax: (609) 924-7902
`RODonnell@vklaw.com
`
`Anthony R. Zeuli, MN #274,884
`(pro hac vice to be filed)
`Merchant & Gould P.C.
`150 South Fifth Street, Suite 2200
`Minneapolis, MN 55402-2215
`(612) 332-5300
`tzeuli@merchantgould.com
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`NUTRASOURCE DIAGNOSTICS INC.,
`(A Canadian Corporation),
`
`
`
`v.
`
`NUTRASOURCERD, LLC,
`(A New Jersey Limited Liability
`Company),
`
`
`
`
`
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`Civil Action No.__
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`COMPLAINT
`
`COMES NOW the Plaintiff, Nutrasource Diagnostics Inc., by its attorneys, to assert its
`
`claims against Defendant NutrasourceRD. Plaintiff states and alleges as follows:
`
`
`
`The Parties
`
`1.
`
`Plaintiff, Nutrasource Diagnostics Inc. is a corporation formed under the laws of
`
`Canada, having a principal place of business at 120 Research Lane, Suite 101, Guelph, Ontario,
`
`
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`6433820.1
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`1
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`

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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 2 of 15 PageID: 2
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`
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`Canada N1G 0B4. Plaintiff does business as NUTRASOURCE and is a full service contract
`
`research organization in the fields of foods, pharmaceuticals, dietary supplements and more.
`
`Plaintiff was founded in 2002 and has operated throughout the United States since its founding.
`
`2.
`
`Defendant, NutraSourceRD, LLC is a limited liability company formed under the
`
`laws of New Jersey, having a principal place of business at 101 Crawford’s Corner, Holmdel, NJ
`
`07733. Upon information and belief, Defendant was formed in November of 2010 and claims to
`
`be a company of dietetic professionals offering “The right dietician at the right time” to clients in
`
`the United States.
`
`Jurisdiction and Venue
`
`3.
`
`Subject matter jurisdiction is provided under 28 U.S.C. §§1331 and 1338.
`
`Because the amount in controversy is in excess of $75,000 and is between a Canadian
`
`corporation, a citizen or subject of a foreign state, and a New Jersey citizen, jurisdiction is also
`
`present under 28 U.S.C. § 1332. Supplemental jurisdiction of the related state law and common
`
`law claims is provided by 28 U.S.C. Sec. 1367(a).
`
`4.
`
`Personal jurisdiction over Defendant exists because Defendant is incorporated in
`
`this judicial district and has a principal place of business here.
`
`5.
`
`Venue is proper in this judicial district because the Defendant is a New Jersey
`
`corporation and resides within this district.
`
`Factual Background
`
`Introduction
`
`6.
`
`The parties to this action are no strangers to each other. They have a history of
`
`interaction, negotiation and resolution of a trademark dispute concerning the names and
`
`trademarks NUTRASOURCE and NUTRASOUCERD. This is an action to enforce that
`
`2
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`
`
`6433820.1
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`

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`
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`Settlement Agreement and contract entered between the parties concerning that matter, and, in
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`the alternative if the court determines there was no such contract, for trademark infringement and
`
`unfair competition under federal, state statutes, and the common law. Specifically, the Lanham
`
`Act, 15 U.S.C. § 1051 et seq., New Jersey Statute Section 56:3-13.16 and 13.20 and the common
`
`law of the State of New Jersey. This also is an action to rectify and settle the United States
`
`Trademark Register as maintained by the United States Patent and Trademark Office concerning
`
`the trademarks NUTRASOURCE and NUTRASOURCERD.
`
`Plaintiff and its NUTRASOURCE trademark.
`
`7.
`
`Nutrasource Diagnostics Inc. (“Plaintiff”) was founded in 2002 and is a full
`
`service contract research organization helping health and food companies discover a strategic
`
`pathway to market so they can reach more consumers and grow their business. Plaintiff works
`
`with clients across the United States, and worldwide, in the fields of foods, pharmaceuticals,
`
`dietary supplements, foods and beverages, biologics, fats and oils and other similar product lines.
`
`Plaintiff employs scientists, sports nutritionists, engineers, medical doctors, nurses, pharmacists,
`
`and researches to assist clients with advice, consulting, testing and analysis of ingredients, foods,
`
`and the like.
`
`8.
`
`Plaintiff adopted the name Nutrasource Diagnostics Inc. as its trade name,
`
`company name and mark at its incorporation in 2002, and quickly adopted NUTRASOURCE as
`
`its principal trademark and moniker. Plaintiff does business as NUTRASOURCE and refers to
`
`its employees and staff as the Nutrasource Team.
`
`9.
`
`Plaintiff obtained the Internet domain name www.nutrasource.ca on July 17,
`
`2001, while preparing to launch its business and has maintained and used that domain name to
`
`host a web page since that time. Plaintiff’s web page provides information about Plaintiff to
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`
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`
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`customers, prospective customers, and the public through the world, and has routinely been
`
`accessed by residents of the United States since first created.
`
`10.
`
`The name and trademark NUTRASOURCE have been widely and heavily used
`
`by Plaintiff, in the U.S. and worldwide, and the brand NUTRASOURCE is well known in the
`
`relevant industry.
`
`11.
`
`Plaintiff owns U.S. Trademark Registration No. 5,367,424, for NUTRASOURCE
`
`on the Principal Register of the United States Patent and Trademark Office, issued January 2,
`
`2018 based on an application filed on July 21, 2016. That application was itself based on a prior-
`
`filed Canadian application that is now Canadian Trademark Registration TMA 978693.
`
`12.
`
`Plaintiff’s Trademark Registration No. 5,367,424 covers the following services in
`
`International Class 42: Testing, analysis and evaluation of natural health products, functional
`
`foods, and nutraceuticals; Medical and scientific research, namely, conducting human clinical
`
`trials in the field of natural health products and supplements; conducting research and providing
`
`consulting services in the field of nutrition and nutraceuticals, and the following services in
`
`International Class 44: Conducting human diagnostic testing of levels of compounds in the
`
`blood, namely, fatty acids, lipids, and carbohydrates; Conducting glycemic index testing, and is
`
`entitled to all of the statutory presumptions accorded it under Section 33 of the Lanham Act 15
`
`U.S.C §:1115. A copy of this Registration is attached hereto as Exhibit A.
`
`13.
`
`Prior to filing the above application, Plaintiff previously owned U.S. Trademark
`
`Registration No. 3,871,901 for the mark NDI NUTRASOURCE DIAGNOSTICS INC. and Oval
`
`Design on the Principal Register of the United States Patent and Trademark Office, issued on
`
`November 9, 2010 based on an application filed on October 20, 2008. “Diagnostics Inc.” was
`
`disclaimed. That application was itself based on a prior-filed Canadian trademark application
`
`
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 5 of 15 PageID: 5
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`
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`that issued in Canada on November 23, 2009. Registration No. 3,871,901 is now canceled as of
`
`June 16, 2017. Prior to cancellation, Registration No. 3,871,901 covered the following services
`
`in International Class 42: Testing, analysis and evaluation of natural health products, functional
`
`foods, and nutraceuticals; Medical and scientific research, namely, conducting human clinical
`
`trials in the field of natural health products and supplements; conducting research and providing
`
`consulting services in the field of nutrition and nutraceuticals and the following services in
`
`International Class 44: Conducting human diagnostic testing of levels of compounds in the
`
`blood, namely, fatty acids, lipids, and carbohydrates; Conducting glycemic index testing. A
`
`copy of this now canceled Registration is attached hereto as Exhibit B.
`
`14.
`
`Both of Plaintiff’s U.S. Trademark Registrations serve as public notice of the
`
`trademark rights of Plaintiff in and relating to the NUTRASOURCE mark for the services listed
`
`therein as of the respective filing dates of the applications in accordance with law.
`
`15.
`
`Plaintiff has made continuous and unbroken use of the NUTRASOURCE mark in
`
`commerce to and with the United States since first adopting the mark in 2002.
`
`Defendant and its NUTRASOURCERD mark.
`
`16.
`
`According to the Division of Revenue and Enterprise Services of the State of New
`
`Jersey, Defendant, NUTRASOURCE RD, LLC was formed on November 1, 2010 as a limited
`
`liability company.
`
`17.
`
`Defendant owns and maintains a domain name and website at
`
`www.nutrasourcerd.com.
`
`18.
`
`That domain name was created on November 1, 2017.
`
`19.
`
`Based on a review of that web page, Plaintiff asserts on information and belief
`
`formed after reviewing the web site at www.nutrasourcerd.com that Defendant is a company of
`
`
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`6433820.1
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`5
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`

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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 6 of 15 PageID: 6
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`
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`dietetic professionals that provides the right dietician at the right time to clients in the fields of
`
`healthcare, long-term care, nursing homes, and the like. Defendant and its employees and
`
`affiliates manage the clinical nutrition departments of others, and Defendant provides trained
`
`Registered Dieticians from its business operations in a number of operations located mostly
`
`along the Eastern Seaboard of the United States. Defendant states that it makes sure to keep up
`
`on the latest nutritional data to ensure optimal care for clients of Defendant.
`
`20.
`
`Defendant uses the name and trademark NutraSourceRD on its web page while
`
`promoting and advertising its business and its services.
`
`21.
`
`Defendant filed U.S. Trademark Application Serial No. 90050309 on July 13,
`
`2020, with the United States Patent and Trademark Office seeking to register the trademark
`
`NutraSourceRD for the following services in International Class 44: Dietician services;
`
`Providing medical testing of fitness and medical consultations to individuals to help them make
`
`health, wellness and nutritional changes in their daily living to improve health; Medical
`
`evaluation services, namely, assessment services for patients in Long term care facilities,
`
`independent living and assisted living facilities for purposes of guiding treatment; nutritional
`
`assessment services; nutritional physical rehabilitation services; nutritional counseling; provision
`
`of information in the fields of diet, nutrition from food sources and from food systems, health,
`
`health care, lifestyle wellness, health wellness, medicine, nutrition, prevention of diseases, use of
`
`nutritional supplements for medical purposes, health, health well-being and weight management;
`
`dietetic advisory and dietitian services; providing in-person energy, holistic and vibrational
`
`healing and health care services; providing wellness, weight loss and weight management
`
`program services, namely, counseling, personal assessments, personalized routines, maintenance
`
`schedules; providing a web site featuring information about health, wellness and nutrition;
`
`
`
`6433820.1
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`
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`Providing food service consultation; Educational services. A copy of this application is attached
`
`hereto as Exhibit C.
`
`22.
`
`Defendant’s Application Serial No. 90050309 does not assert any first use date by
`
`which Defendant has used the subject mark, but rather asserts that Defendant has merely an
`
`“intention to use” the mark, pursuant to Section 1(b) of the Lanham Act.
`
`23.
`
`On information and belief, Plaintiff is the first party to use the NUTRASOURCE
`
`mark, and Defendant made no use of the mark NUTRASOURCERD prior to either the first use
`
`of the NUTRASOURCE mark by Plaintiff, or the time that Plaintiff filed its first application to
`
`register the NUTRASOURCE mark in the United States.
`
`The Trademark Dispute between the parties, and the Settlement of that matter.
`
`24.
`
`Plaintiff became aware of the existence of Defendant and its use of the
`
`NutraSourceRd mark in early 2020.
`
`25.
`
`Plaintiff instructed its U.S. based trademark counsel to contact Defendant and ask
`
`that Defendant change its name and trademark to one not confusingly similar to
`
`NUTRASOURCE. That was done immediately after Plaintiff became aware of the existence of
`
`Defendant.
`
`26.
`
`A suitable letter was sent by Plaintiff’s counsel, and negotiations commenced
`
`between Plaintiff’s U.S. based counsel, and legal counsel retained for that purpose by Defendant.
`
`27.
`
`Through an exchange of e-mails and telephone calls, between February of 2020
`
`and May of 2020, legal counsel for the parties exchanged information, negotiated terms,
`
`exchanged drafts of proposed written agreements and redlined comments thereto, and ultimately
`
`settled the matter. All material terms and conditions were agreed between legal counsel on
`
`
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 8 of 15 PageID: 8
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`
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`behalf of the parties via telephone although no written agreement has been signed by the officers
`
`of the parties.
`
`28.
`
`In May of 2020, a binding and enforceable agreement was reached between the
`
`parties.
`
`29.
`
`That settlement was memorialized in a document entitled “Settlement Agreement
`
`and Release.” One of the terms of that agreement is that the parties would maintain the
`
`confidentiality of the terms of the agreement and to prevent knowledge of the specific terms
`
`hereof from reaching third persons or parties. For that reason, Plaintiff has not attached a copy
`
`of that agreement.
`
`30.
`
`In broad outline form, that agreement requires Defendant to change its name.
`
`Other general and customary terms found in agreements of this type are also included.
`
`31.
`
`The conversations and exchange of communications between counsel also show
`
`that Defendant had actual knowledge of Plaintiff, and of the existence of Plaintiff’s current U.S.
`
`Trademark Registration No. 5,367,424 as of February of 2020.
`
`32.
`
`On or about June 2, 2020, Defendant engaged new legal counsel to seek a “do
`
`over” of the negotiations. In a letter dated June 2, 2020, new counsel attempted to repudiate the
`
`settlement. Plaintiff’s counsel refused to renegotiate the finalized settlement agreement with
`
`Defendant’s new legal counsel.
`
`33.
`
`On July 13, 2020, Defendant filed its U.S. Trademark application Serial No.
`
`90050309 described above.
`
`34.
`
`On July 14, 2020, Defendant filed a Trademark Cancellation Proceeding with the
`
`Trademark Trial and Appeal Board of the United States Patent and Trademark Office seeking to
`
`
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 9 of 15 PageID: 9
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`
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`cancel Plaintiff’s U.S. Trademark Registration No. 5,367,424. That Proceeding has been
`
`assigned Cancellation No. 92074712 and is now pending in that administrative tribunal.
`
`35.
`
`In that Petition, Defendant admitted that the marks of the parties are confusingly
`
`similar. Defendant also admitted that the services of the parties are closely related and that
`
`simultaneous use and registration of the marks NUTRASOURCE by Plaintiff and
`
`NUTRASOURCERD by Defendant will cause damage due to the “identical, otherwise related
`
`and/or complementary” services of the parties. Plaintiff agrees with these allegations. A
`
`complete copy of Defendant’s Petition for Cancellation is attached hereto as Exhibit D. Damage
`
`to Plaintiff and its mark can be presumed by the allegations in Defendant’s Petition for
`
`Cancellation.
`
`36.
`
`However, Defendant also claims essentially that it has prior, and therefore
`
`superior, rights over the trademarks of the parties herein, and that Plaintiff’s mark creates a
`
`likelihood of confusion Plaintiff disagrees with this allegation. Plaintiff is the first, senior user of
`
`the subject marks by a margin of at least eight years, having adopted its mark in 2002 while
`
`Defendant did not even exist until approximately late 2010.
`
`37.
`
`There is a strong public policy in favor of parties resolving disputes among
`
`themselves as was done here. Trademark disputes are very often resolved by the parties involved
`
`without resort to litigation in court.
`
`38.
`
`Courts have long recognized that settlements are to be favored, and will be
`
`enforced if necessary by a court of law. It has long been the practice of parties to engage legal
`
`counsel for the purpose of negotiating and agreeing to settlements of disputes and other
`
`contracts. Legal counsel with apparent authority to bind their client have long been authorized to
`
`
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`
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`do so. Settlements made by legal counsel are every bit as enforceable as agreements made by the
`
`parties themselves.
`
`39.
`
`Efforts to renegotiate or repudiate validly made contracts and settlements, if
`
`allowed, are a breach of the agreement, will damage the public confidence in contracts, the
`
`public confidence in the binding nature of settlements, and will cause parties to litigate every
`
`dispute in court placing an undue burden on the courts, and increasing the cost of resolution of
`
`conflicts.
`
`40.
`
`Should this Court find that the settlement reached by the legal counsel of the
`
`parties is not enforceable, which it should not, then Plaintiff asserts that ongoing use of the
`
`NUTRASOURCERD mark by the Defendant will and does create a likelihood of confusion in
`
`the marketplace, a damage to reputation, and a confusion as to a source of the services of the
`
`Defendant, and a false or mistaken perception of an improper affiliation, endorsement,
`
`sponsorship or license between the Plaintiff and the Defendant when there is no such
`
`relationship. There is a risk to damage to the reputation of the Plaintiff through uncontrolled use
`
`of the mark NUTRASOURCERD by the Defendant.
`
`41.
`
`The existence of Defendant’s Trademark Application Serial No. 90050309 creates
`
`a cloud on the rights of Plaintiff to its NUTRASOURCE mark causing damage to Plaintiff.
`
`42.
`
`The existence of Petition for Cancellation proceeding No. 92074712 causes
`
`damage to Plaintiff and creates a cloud on the rights of Plaintiff to its mark and its lawful
`
`registration of the mark.
`
`COUNT I
`
`Breach of Contract
`
`43.
`
`Paragraphs 1-42 above are incorporated as if repeated.
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`
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`
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`44. Defendant has breached the Settlement Agreement and Release reached between
`
`the parties.
`
`45. Plaintiff seeks specific performance of the terms of the Settlement Agreement and
`
`Release.
`
`46. Plaintiff also seeks damages in an amount not yet determined, but believed to be
`
`in excess of $100,000.
`
`If, and only if, the Court determines there is no contract between the parties concerning
`
`the renaming of the Defendant, or that Defendant has not breached that agreement, the Plaintiff
`
`asserts its second, third, fourth, fifth and sixth claims in the alternative as follows.
`
`COUNT II
`
`Federal Trademark Infringement
`
`47.
`
`Paragraphs 1-42 above are incorporated as if repeated.
`
`48.
`
`The acts of Defendant complained of herein are likely to cause confusion,
`
`mistake, or deception as to origin, sponsorship, or approval and therefore constitute federal
`
`trademark infringement in violation of 15 U.S.C. § 1114(1).
`
`49.
`
`By reason of Defendant's bad faith and willful infringement, Plaintiff is entitled to
`
`recover actual damages, treble damages, an accounting for Defendant's profits, attorney fees, and
`
`the costs of this litigation pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to 15
`
`U.S.C. § 1116.
`
`COUNT III
`
`Federal Unfair Competition
`
`50.
`
`Paragraphs 1-42 above are incorporated as if repeated.
`
`
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`
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`51.
`
`The acts of Defendant complained of herein constitute unfair competition in
`
`violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`52.
`
`Plaintiff is entitled to recover actual and treble damages, attorney fees, and the
`
`costs of this litigation pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to 15 U.S.C. §
`
`1116.
`
`COUNT IV
`
`Unfair Competition Under New Jersey Statute 56:3-13.16 et seq.
`
`53.
`
`Paragraphs 1-42 above are incorporated as if repeated.
`
`54.
`
`Defendant has violated and infringed Plaintiff’s trademark rights in the
`
`NUTRASOURCE mark, and has used, without the consent of the owner, a mark that is a
`
`reproduction, counterfeit, copy, or colorable imitation of a mark owned by Plaintiff in connection
`
`with the sale of goods and services in New Jersey in a manner likely to cause confusion,
`
`deception, or mistake as to the source of the goods and services and has used the same on labels,
`
`signs, and in advertising in violation of the law of New Jersey.
`
`55.
`
`Plaintiff is entitled to the remedies provided therein.
`
`COUNT V
`
`Common law Unfair Competition
`
`56.
`
`Paragraphs 1-42 above are incorporated as if repeated.
`
`57.
`
`By engaging in the foregoing acts, Defendant has knowingly engaged in unlawful
`
`passing off and competed unfairly with Plaintiff in violation of the common law of unfair
`
`competition in the State of New Jersey.
`
`58.
`
`Plaintiff is entitled to recover actual and punitive damages for Defendant’s unfair
`
`competition.
`
`
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`
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`COUNT VI
`
`Rectification of the U.S Trademark Register, 15 U.S. Code § 1119
`
`59.
`
`Paragraphs 1-42 above are incorporated as if repeated.
`
`60.
`
`Plaintiff asks that the Court use its power to rectify the U.S. Trademark Register,
`
`and specifically dismiss Defendant’s Cancellation Action No. 92074712 with prejudice.
`
`61.
`
`Defendant’s Trademark Application Serial No. 90050309 is unregistrable as
`
`confusingly similar to Plaintiff’s mark and Plaintiff’s U.S. Registration No. 5367424.
`
`Registration of the mark shown in Application Serial No. 90050309 would damage Plaintiff,
`
`create a cloud on Plaintiff’s right and title to the NUTRASOURCE mark and would weaken the
`
`mark owned by Plaintiff, and the reputation of the brand causing further damage and injury to
`
`Plaintiff.
`
`WHEREFORE, Plaintiff prays for the following relief:
`
`Prayer for Relief
`
`A.
`
`The Court determine that a valid and enforceable contract exists between the
`
`parties requiring Defendant to change its name and trademark;
`
`B.
`
`The Court order specific performance by Defendant with the terms of the
`
`settlement agreement contract;
`
`C.
`
`The Court award Plaintiff damages for breach of the settlement agreement
`
`contract;
`
`D.
`
`If the court rules against Plaintiff on its contract claims, then Defendant, its
`
`officers, agents, servants, employees, attorneys, and all those persons in active concert or
`
`participation with any of them, be permanently enjoined from using the NUTRASOURCERD
`
`mark, and any other mark that is confusingly similar to the NUTRASOURCE mark;
`
`
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`E.
`
`Defendant be ordered to transfer ownership of the domain name
`
`www.nutrasourcerd.com, as well as any other domain name that incorporates the
`
`NUTRASOURCE mark or any other mark that is confusingly similar to the NUTRASOURCE
`
`mark, to Plaintiff;
`
`F.
`
`Defendant, its officers, agents, servants, employees, attorneys, and all those
`
`persons in active concert or participation with any of them, be required to modify all websites,
`
`advertising, business materials, invoices, contracts, bank records, employment forms, packaging
`
`and promotional material to eliminate the NUTRASOURCERD mark, and any other mark that is
`
`confusingly similar to the NUTRASOURCE mark;
`
`G.
`
`Defendant, its officers, agents, servants, employees, attorneys, and all those
`
`persons in active concert or participation with any of them, be required to deliver to the Court for
`
`destruction, or show proof of destruction of, any and all business materials of any and all kinds
`
`in Defendant's possession or control that use the NUTRASOURCERD mark, and any other mark
`
`that is confusingly similar to the NUTRASOURCE mark;
`
`H.
`
`Defendant, its officers, agents, servants, employees, attorneys, and all those
`
`persons in active concert or participation with any of them, be required to take all reasonably
`
`available steps to remove the NUTRASOURCERD mark, and any other mark that is confusingly
`
`similar to the NUTRASOURCE mark, as a designator of Defendant's services from any listing in
`
`any business directory, yellow pages, internet directory, and any other listing service;
`
`I.
`
`Defendant be ordered to file with this Court and to serve upon Plaintiff within 30
`
`days after the entry and service on Defendant of an injunction, a report in writing and under oath
`
`setting forth in detail the manner and form in which Defendant has complied with the injunction;
`
`
`
`6433820.1
`
`14
`
`

`

`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 15 of 15 PageID: 15
`
`
`
`J.
`
`The Court order that the U.S. Patent and Trademark Office dismiss Defendant’s
`
`cancellation action with prejudice;
`
`K.
`
`The Court order that the U.S. Patent and Trademark Office abandon Defendant’s
`
`application to register NUTRASOURCERD;
`
`L.
`
`Plaintiff recover all damages it sustains as a result of Defendant's infringement
`
`and unfair competition, and that said damages be trebled; and
`
`M.
`
`Such other and further relief as the court finds just and equitable.
`
`Plaintiff hereby demands a jury trial on all issues so triable.
`
`Demand for Jury Trial
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`NUTRASOURCE DIAGNOSTICS, INC.
`
`
`
`
`
`/s/ Ryan W. O’Donnell
`Ryan W. O’Donnell
`Volpe and Koenig P.C.
`830 Bear Tavern Road, Suite 303
`Ewing, NJ 08628
`Phone: (609) 924-0109
`Fax: (609) 924-7902
`RODonnell@vklaw.com
`
`Anthony R. Zeuli, MN #274,884
`(pro hac vice to be filed)
`Merchant & Gould P.C.
`150 South Fifth Street, Suite 2200
`Minneapolis, MN 55402-2215
`(612) 332-5300
`tzeuli@merchantgould.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: September 1, 2020
`
`
`
`6433820.1
`
`15
`
`

`

`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 1 of 20 PageID: 16
`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 1 of 20 PageID: 16
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 2 of 20 PageID: 17
`
`Reg. No. 5,367,424
`
`Registered Jan. 02, 2018
`
`Nutrasource Diagnostics Inc. (CANADA CORPORATION)
`Suite 203
`120 Research Lane
`Guelph, Ontario, CANADA N1G0B4
`
`Int. Cl.: 42, 44
`
`Service Mark
`
`Principal Register
`
`CLASS 42: Testing, analysis and evaluation of natural health products, functional foods, and
`nutraceuticals; Medical and scientific research, namely, conducting human clinical trials in
`the field of natural health products and supplements; conducting research and providing
`consulting services in the field of nutrition and nutraceuticals
`
`CLASS 44: Conducting human diagnostic testing of levels of compounds in the blood,
`namely, fatty acids, lipids, and carbohydrates; Conducting glycemic index testing
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
`PARTICULAR FONT STYLE, SIZE OR COLOR
`
`PRIORITY CLAIMED UNDER SEC. 44(D) ON CANADA APPLICATION NO. 1791544,
`FILED 07-15-2016, REG. NO. TMA978693, DATED 08-16-2017, EXPIRES 08-16-2032
`
`OWNER OF U.S. REG. NO. 3871901
`
`SER. NO. 87-111,609, FILED 07-21-2016
`
`

`

`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 3 of 20 PageID: 18
`
`REQUIREMENTS TO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLED IF YOU DO NOT FILE THE
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`Requirements in the First Ten  Years*
`What and When to File:
`
`First Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`
`years after the registration date.
`
` See 15 U.S.C. §§1058, 1141k.
`
` If the declaration is accepted, the
`
`registration will continue in force for the remainder of the ten-year period, calculated from the registration
`
`date, unless cancelled by an order of the Commissioner for Trademarks or a federal court.
`
`Second Filing Deadline:  You must file a Declaration of Use (or Excusable Nonuse) and an Application
`
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and When to File:
`
` and  an  Application for Renewal
`You must file a Declaration of Use (or Excusable Nonuse)
`between every 9th and 10th-year period, calculated from the registration date.*
`
`Grace Period Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with
`the payment of an additional fee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS:  The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use
`(or Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO).
`The time periods for filing are based on the U.S. registration date (not the international registration date).  The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for
`nationally issued registrations.  See 15 U.S.C. §§1058, 1141k.  However, owners of international registrations
`do not file renewal applications at the USPTO. Instead, the holder must file a renewal of the underlying
`international registration at the International Bureau of the  World Intellectual Property Organization, under
`Article 7 of the Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the
`date of the international registration.  See 15 U.S.C. §1141j.  For more information and renewal forms for the
`international registration, see http://www.wipo.int/madrid/en/.
`
`NOTE:  Fees and requirements for maintaining registrations are subject to change.  Please check the
`USPTO website for further information.
` With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online at h
`ttp://www.uspto.gov.
`
`NOTE:  A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic  Application System (TEAS) Correspondence  Address and Change of Owner  Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of 2 / RN # 5367424
`
`

`

`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 4 of 20 PageID: 19
`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 4 of 20 PageID: 19
`
`EXHIBIT B
`EXHIBIT B
`
`

`

`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 5 of 20 PageID: 20
`Case 3:20-cv-12193 Document 1-1 Filed 09/01/20 Page 5 of 20 PageID: 20
`
`
`
`nutrasource diagnostics inc.
`
`Reg. No, 3,871,901
`
`NUTRASOURCE DIAGNOSTICS INC. (CANADA CORPORATION)
`120 RESEARCH LANE
`
`Registered Nov. 9, 2010 SUITE 203
`GUELPII, ON, CANA 3A N1GOB4
`
`FOR: TESTING, ANALYSIS AND EVALUATION OF NATURAL HEALTH PRODUCTS,
`
`
`FUNCTIOI\AL FOODS,AND NUTRACEU'ICALS; MEDICALA1\ ) SCIENTIF C 2 4 S *ARCH,
`
`
`
`
`NAVIELY, CONDUCTING HUMAN CLI\IICAL TRIALS IN THE FIELD OF \IATUR