Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1086734
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`Filing date:
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`10/06/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`92074712
`
`Party
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`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
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Motion to Suspend for Civil Action
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`John A. Clifford
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`jclifford@merchantgould.com, aavery@merchantgould.com, dockm-
`pls@merchantgould.com
`
`/John A. Clifford/
`
`10/06/2020
`
`14316592_1.PDF(91706 bytes )
`14313731_1.PDF(890050 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`NutrasourceRD, LLC,
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`Petitioner,
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`v.
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`Nutrasource Diagnostics Inc.
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`Registrant.
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`Opposition No. 92074712
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`Mark: NUTRASOURCE
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`Registration No. 5,367,424
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`Registration Date: January 2, 2018
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`AMENDED MOTION TO SUSPEND FOR CIVIL ACTION
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`On September 1, 2020, Registrant Nutrasource Diagnostics Inc. sued Petitioner
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`NutrasourceRD, LLC in the United States District Court, District of New Jersey, case
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`number 3:20-cv-12193, addressing the same issues in this proceeding. (See attached
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`Complaint.) On that same date, pursuant to 37 C.F.R. § 2.117(a), Registrant filed a Motion
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`to Suspend for Civil Action and attached a copy of the Complaint. (Dkt. #7.) That Motion
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`is still pending. However, it has come to Registrant’s attention that Petitioner was not
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`served with a copy of the earlier Motion to Suspend. Registrant regrets this oversight and
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`attaches a Certificate of Service demonstrating that Petitioner has now been properly served
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`through this Amended Motion to Suspend and that Registrant has complied with 37 C.F.R.
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`§ 2.119. Petitioner, through its counsel, has been aware of the Civil Action and Complaint
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`since September 1, 2020, when notice was provided via email.
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`Registrant respectfully requests that the Board suspend this pending case until
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`termination of the civil action.
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`Date: _10/06/2020______________
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`Respectfully submitted,
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`
`NUTRASOURCE DIAGNOSTICS INC.
`
`By its attorneys,
`
`
`_/John A. Clifford/________________
`John A. Clifford
`MERCHANT & GOULD P.C.
`P.O. Box 2910
`Minneapolis, MN 55402-0910
`Tel. 612.336.4616
`Fax 612.332.9081
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`2
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that a true and correct copy of the foregoing AMENDED
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`MOTION TO SUSPEND FOR CIVIL ACTION was served, via email, this 6th day of
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`October 2020 to the following attorney of record.
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`NEIL B FRIEDMAN
`HODGSON RUSS LLP
`NFriedma@hodgsonruss.com
`ipdocketing@hodgsonruss.com
`SFindora@ hodgsonruss.com
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` /Amanda Avery/
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`Amanda Avery
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`3
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`

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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 1 of 15 PageID: 1
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`
`
`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
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`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
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`
`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`NUTRASOURCE DIAGNOSTICS INC.,
`(A Canadian Corporation),
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`
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`v.
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`NUTRASOURCERD, LLC,
`(A New Jersey Limited Liability
`Company),
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`
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`
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`Plaintiff,
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`Defendant.
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`Civil Action No.__
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`JURY TRIAL DEMANDED
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`COMPLAINT
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`COMES NOW the Plaintiff, Nutrasource Diagnostics Inc., by its attorneys, to assert its
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`claims against Defendant NutrasourceRD. Plaintiff states and alleges as follows:
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`
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`The Parties
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`1.
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`Plaintiff, Nutrasource Diagnostics Inc. is a corporation formed under the laws of
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`Canada, having a principal place of business at 120 Research Lane, Suite 101, Guelph, Ontario,
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`
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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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`Canada N1G 0B4. Plaintiff does business as NUTRASOURCE and is a full service contract
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`research organization in the fields of foods, pharmaceuticals, dietary supplements and more.
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`Plaintiff was founded in 2002 and has operated throughout the United States since its founding.
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`2.
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`Defendant, NutraSourceRD, LLC is a limited liability company formed under the
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`laws of New Jersey, having a principal place of business at 101 Crawford’s Corner, Holmdel, NJ
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`07733. Upon information and belief, Defendant was formed in November of 2010 and claims to
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`be a company of dietetic professionals offering “The right dietician at the right time” to clients in
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`the United States.
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`Jurisdiction and Venue
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`3.
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`Subject matter jurisdiction is provided under 28 U.S.C. §§1331 and 1338.
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`Because the amount in controversy is in excess of $75,000 and is between a Canadian
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`corporation, a citizen or subject of a foreign state, and a New Jersey citizen, jurisdiction is also
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`present under 28 U.S.C. § 1332. Supplemental jurisdiction of the related state law and common
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`law claims is provided by 28 U.S.C. Sec. 1367(a).
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`4.
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`Personal jurisdiction over Defendant exists because Defendant is incorporated in
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`this judicial district and has a principal place of business here.
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`5.
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`Venue is proper in this judicial district because the Defendant is a New Jersey
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`corporation and resides within this district.
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`Factual Background
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`Introduction
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`6.
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`The parties to this action are no strangers to each other. They have a history of
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`interaction, negotiation and resolution of a trademark dispute concerning the names and
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`trademarks NUTRASOURCE and NUTRASOUCERD. This is an action to enforce that
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`2
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`6433820.1
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`

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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 3 of 15 PageID: 3
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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
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`unfair competition under federal, state statutes, and the common law. Specifically, the Lanham
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`Act, 15 U.S.C. § 1051 et seq., New Jersey Statute Section 56:3-13.16 and 13.20 and the common
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`law of the State of New Jersey. This also is an action to rectify and settle the United States
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`Trademark Register as maintained by the United States Patent and Trademark Office concerning
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`the trademarks NUTRASOURCE and NUTRASOURCERD.
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`Plaintiff and its NUTRASOURCE trademark.
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`7.
`
`Nutrasource Diagnostics Inc. (“Plaintiff”) was founded in 2002 and is a full
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`service contract research organization helping health and food companies discover a strategic
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`pathway to market so they can reach more consumers and grow their business. Plaintiff works
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`with clients across the United States, and worldwide, in the fields of foods, pharmaceuticals,
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`dietary supplements, foods and beverages, biologics, fats and oils and other similar product lines.
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`Plaintiff employs scientists, sports nutritionists, engineers, medical doctors, nurses, pharmacists,
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`and researches to assist clients with advice, consulting, testing and analysis of ingredients, foods,
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`and the like.
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`8.
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`Plaintiff adopted the name Nutrasource Diagnostics Inc. as its trade name,
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`company name and mark at its incorporation in 2002, and quickly adopted NUTRASOURCE as
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`its principal trademark and moniker. Plaintiff does business as NUTRASOURCE and refers to
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`its employees and staff as the Nutrasource Team.
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`9.
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`Plaintiff obtained the Internet domain name www.nutrasource.ca on July 17,
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`2001, while preparing to launch its business and has maintained and used that domain name to
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`host a web page since that time. Plaintiff’s web page provides information about Plaintiff to
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`6433820.1
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`3
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`

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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 4 of 15 PageID: 4
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`customers, prospective customers, and the public through the world, and has routinely been
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`accessed by residents of the United States since first created.
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`10.
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`The name and trademark NUTRASOURCE have been widely and heavily used
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`by Plaintiff, in the U.S. and worldwide, and the brand NUTRASOURCE is well known in the
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`relevant industry.
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`11.
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`Plaintiff owns U.S. Trademark Registration No. 5,367,424, for NUTRASOURCE
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`on the Principal Register of the United States Patent and Trademark Office, issued January 2,
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`2018 based on an application filed on July 21, 2016. That application was itself based on a prior-
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`filed Canadian application that is now Canadian Trademark Registration TMA 978693.
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`12.
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`Plaintiff’s Trademark Registration No. 5,367,424 covers the following services in
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`International Class 42: Testing, analysis and evaluation of natural health products, functional
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`foods, and nutraceuticals; Medical and scientific research, namely, conducting human clinical
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`trials in the field of natural health products and supplements; conducting research and providing
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`consulting services in the field of nutrition and nutraceuticals, and the following services in
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`International Class 44: Conducting human diagnostic testing of levels of compounds in the
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`blood, namely, fatty acids, lipids, and carbohydrates; Conducting glycemic index testing, and is
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`entitled to all of the statutory presumptions accorded it under Section 33 of the Lanham Act 15
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`U.S.C §:1115. A copy of this Registration is attached hereto as Exhibit A.
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`13.
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`Prior to filing the above application, Plaintiff previously owned U.S. Trademark
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`Registration No. 3,871,901 for the mark NDI NUTRASOURCE DIAGNOSTICS INC. and Oval
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`Design on the Principal Register of the United States Patent and Trademark Office, issued on
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`November 9, 2010 based on an application filed on October 20, 2008. “Diagnostics Inc.” was
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`disclaimed. That application was itself based on a prior-filed Canadian trademark application
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`6433820.1
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`4
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`

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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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`that issued in Canada on November 23, 2009. Registration No. 3,871,901 is now canceled as of
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`June 16, 2017. Prior to cancellation, Registration No. 3,871,901 covered the following services
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`in International Class 42: Testing, analysis and evaluation of natural health products, functional
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`foods, and nutraceuticals; Medical and scientific research, namely, conducting human clinical
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`trials in the field of natural health products and supplements; conducting research and providing
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`consulting services in the field of nutrition and nutraceuticals and the following services in
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`International Class 44: Conducting human diagnostic testing of levels of compounds in the
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`blood, namely, fatty acids, lipids, and carbohydrates; Conducting glycemic index testing. A
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`copy of this now canceled Registration is attached hereto as Exhibit B.
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`14.
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`Both of Plaintiff’s U.S. Trademark Registrations serve as public notice of the
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`trademark rights of Plaintiff in and relating to the NUTRASOURCE mark for the services listed
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`therein as of the respective filing dates of the applications in accordance with law.
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`15.
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`Plaintiff has made continuous and unbroken use of the NUTRASOURCE mark in
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`commerce to and with the United States since first adopting the mark in 2002.
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`Defendant and its NUTRASOURCERD mark.
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`16.
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`According to the Division of Revenue and Enterprise Services of the State of New
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`Jersey, Defendant, NUTRASOURCE RD, LLC was formed on November 1, 2010 as a limited
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`liability company.
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`17.
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`Defendant owns and maintains a domain name and website at
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`www.nutrasourcerd.com.
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`18.
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`That domain name was created on November 1, 2017.
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`19.
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`Based on a review of that web page, Plaintiff asserts on information and belief
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`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
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`healthcare, long-term care, nursing homes, and the like. Defendant and its employees and
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`affiliates manage the clinical nutrition departments of others, and Defendant provides trained
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`Registered Dieticians from its business operations in a number of operations located mostly
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`along the Eastern Seaboard of the United States. Defendant states that it makes sure to keep up
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`on the latest nutritional data to ensure optimal care for clients of Defendant.
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`20.
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`Defendant uses the name and trademark NutraSourceRD on its web page while
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`promoting and advertising its business and its services.
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`21.
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`Defendant filed U.S. Trademark Application Serial No. 90050309 on July 13,
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`2020, with the United States Patent and Trademark Office seeking to register the trademark
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`NutraSourceRD for the following services in International Class 44: Dietician services;
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`Providing medical testing of fitness and medical consultations to individuals to help them make
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`health, wellness and nutritional changes in their daily living to improve health; Medical
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`evaluation services, namely, assessment services for patients in Long term care facilities,
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`independent living and assisted living facilities for purposes of guiding treatment; nutritional
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`assessment services; nutritional physical rehabilitation services; nutritional counseling; provision
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`of information in the fields of diet, nutrition from food sources and from food systems, health,
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`health care, lifestyle wellness, health wellness, medicine, nutrition, prevention of diseases, use of
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`nutritional supplements for medical purposes, health, health well-being and weight management;
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`dietetic advisory and dietitian services; providing in-person energy, holistic and vibrational
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`healing and health care services; providing wellness, weight loss and weight management
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`program services, namely, counseling, personal assessments, personalized routines, maintenance
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`schedules; providing a web site featuring information about health, wellness and nutrition;
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`6433820.1
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`6
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 7 of 15 PageID: 7
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`Providing food service consultation; Educational services. A copy of this application is attached
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`hereto as Exhibit C.
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`22.
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`Defendant’s Application Serial No. 90050309 does not assert any first use date by
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`which Defendant has used the subject mark, but rather asserts that Defendant has merely an
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`“intention to use” the mark, pursuant to Section 1(b) of the Lanham Act.
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`23.
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`On information and belief, Plaintiff is the first party to use the NUTRASOURCE
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`mark, and Defendant made no use of the mark NUTRASOURCERD prior to either the first use
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`of the NUTRASOURCE mark by Plaintiff, or the time that Plaintiff filed its first application to
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`register the NUTRASOURCE mark in the United States.
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`The Trademark Dispute between the parties, and the Settlement of that matter.
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`24.
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`Plaintiff became aware of the existence of Defendant and its use of the
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`NutraSourceRd mark in early 2020.
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`25.
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`Plaintiff instructed its U.S. based trademark counsel to contact Defendant and ask
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`that Defendant change its name and trademark to one not confusingly similar to
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`NUTRASOURCE. That was done immediately after Plaintiff became aware of the existence of
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`Defendant.
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`26.
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`A suitable letter was sent by Plaintiff’s counsel, and negotiations commenced
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`between Plaintiff’s U.S. based counsel, and legal counsel retained for that purpose by Defendant.
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`27.
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`Through an exchange of e-mails and telephone calls, between February of 2020
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`and May of 2020, legal counsel for the parties exchanged information, negotiated terms,
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`exchanged drafts of proposed written agreements and redlined comments thereto, and ultimately
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`settled the matter. All material terms and conditions were agreed between legal counsel on
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`6433820.1
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`7
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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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`behalf of the parties via telephone although no written agreement has been signed by the officers
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`of the parties.
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`28.
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`In May of 2020, a binding and enforceable agreement was reached between the
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`parties.
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`29.
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`That settlement was memorialized in a document entitled “Settlement Agreement
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`and Release.” One of the terms of that agreement is that the parties would maintain the
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`confidentiality of the terms of the agreement and to prevent knowledge of the specific terms
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`hereof from reaching third persons or parties. For that reason, Plaintiff has not attached a copy
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`of that agreement.
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`30.
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`In broad outline form, that agreement requires Defendant to change its name.
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`Other general and customary terms found in agreements of this type are also included.
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`31.
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`The conversations and exchange of communications between counsel also show
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`that Defendant had actual knowledge of Plaintiff, and of the existence of Plaintiff’s current U.S.
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`Trademark Registration No. 5,367,424 as of February of 2020.
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`32.
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`On or about June 2, 2020, Defendant engaged new legal counsel to seek a “do
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`over” of the negotiations. In a letter dated June 2, 2020, new counsel attempted to repudiate the
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`settlement. Plaintiff’s counsel refused to renegotiate the finalized settlement agreement with
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`Defendant’s new legal counsel.
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`33.
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`On July 13, 2020, Defendant filed its U.S. Trademark application Serial No.
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`90050309 described above.
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`34.
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`On July 14, 2020, Defendant filed a Trademark Cancellation Proceeding with the
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`Trademark Trial and Appeal Board of the United States Patent and Trademark Office seeking to
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`6433820.1
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`8
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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
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`assigned Cancellation No. 92074712 and is now pending in that administrative tribunal.
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`35.
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`In that Petition, Defendant admitted that the marks of the parties are confusingly
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`similar. Defendant also admitted that the services of the parties are closely related and that
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`simultaneous use and registration of the marks NUTRASOURCE by Plaintiff and
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`NUTRASOURCERD by Defendant will cause damage due to the “identical, otherwise related
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`and/or complementary” services of the parties. Plaintiff agrees with these allegations. A
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`complete copy of Defendant’s Petition for Cancellation is attached hereto as Exhibit D. Damage
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`to Plaintiff and its mark can be presumed by the allegations in Defendant’s Petition for
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`Cancellation.
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`36.
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`However, Defendant also claims essentially that it has prior, and therefore
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`superior, rights over the trademarks of the parties herein, and that Plaintiff’s mark creates a
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`likelihood of confusion Plaintiff disagrees with this allegation. Plaintiff is the first, senior user of
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`the subject marks by a margin of at least eight years, having adopted its mark in 2002 while
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`Defendant did not even exist until approximately late 2010.
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`37.
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`There is a strong public policy in favor of parties resolving disputes among
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`themselves as was done here. Trademark disputes are very often resolved by the parties involved
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`without resort to litigation in court.
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`38.
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`Courts have long recognized that settlements are to be favored, and will be
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`enforced if necessary by a court of law. It has long been the practice of parties to engage legal
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`counsel for the purpose of negotiating and agreeing to settlements of disputes and other
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`contracts. Legal counsel with apparent authority to bind their client have long been authorized to
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`6433820.1
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`9
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 10 of 15 PageID: 10
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`do so. Settlements made by legal counsel are every bit as enforceable as agreements made by the
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`parties themselves.
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`39.
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`Efforts to renegotiate or repudiate validly made contracts and settlements, if
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`allowed, are a breach of the agreement, will damage the public confidence in contracts, the
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`public confidence in the binding nature of settlements, and will cause parties to litigate every
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`dispute in court placing an undue burden on the courts, and increasing the cost of resolution of
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`conflicts.
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`40.
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`Should this Court find that the settlement reached by the legal counsel of the
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`parties is not enforceable, which it should not, then Plaintiff asserts that ongoing use of the
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`NUTRASOURCERD mark by the Defendant will and does create a likelihood of confusion in
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`the marketplace, a damage to reputation, and a confusion as to a source of the services of the
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`Defendant, and a false or mistaken perception of an improper affiliation, endorsement,
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`sponsorship or license between the Plaintiff and the Defendant when there is no such
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`relationship. There is a risk to damage to the reputation of the Plaintiff through uncontrolled use
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`of the mark NUTRASOURCERD by the Defendant.
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`41.
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`The existence of Defendant’s Trademark Application Serial No. 90050309 creates
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`a cloud on the rights of Plaintiff to its NUTRASOURCE mark causing damage to Plaintiff.
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`42.
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`The existence of Petition for Cancellation proceeding No. 92074712 causes
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`damage to Plaintiff and creates a cloud on the rights of Plaintiff to its mark and its lawful
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`registration of the mark.
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`COUNT I
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`Breach of Contract
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`43.
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`Paragraphs 1-42 above are incorporated as if repeated.
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`6433820.1
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`10
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 11 of 15 PageID: 11
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`44. Defendant has breached the Settlement Agreement and Release reached between
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`the parties.
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`45. Plaintiff seeks specific performance of the terms of the Settlement Agreement and
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`Release.
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`46. Plaintiff also seeks damages in an amount not yet determined, but believed to be
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`in excess of $100,000.
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`If, and only if, the Court determines there is no contract between the parties concerning
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`the renaming of the Defendant, or that Defendant has not breached that agreement, the Plaintiff
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`asserts its second, third, fourth, fifth and sixth claims in the alternative as follows.
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`COUNT II
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`Federal Trademark Infringement
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`47.
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`Paragraphs 1-42 above are incorporated as if repeated.
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`48.
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`The acts of Defendant complained of herein are likely to cause confusion,
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`mistake, or deception as to origin, sponsorship, or approval and therefore constitute federal
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`trademark infringement in violation of 15 U.S.C. § 1114(1).
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`49.
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`By reason of Defendant's bad faith and willful infringement, Plaintiff is entitled to
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`recover actual damages, treble damages, an accounting for Defendant's profits, attorney fees, and
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`the costs of this litigation pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to 15
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`U.S.C. § 1116.
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`COUNT III
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`Federal Unfair Competition
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`50.
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`Paragraphs 1-42 above are incorporated as if repeated.
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`6433820.1
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`11
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 12 of 15 PageID: 12
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`51.
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`The acts of Defendant complained of herein constitute unfair competition in
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`violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`52.
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`Plaintiff is entitled to recover actual and treble damages, attorney fees, and the
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`costs of this litigation pursuant to 15 U.S.C. § 1117 and injunctive relief pursuant to 15 U.S.C. §
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`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.
`
`
`
`6433820.1
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 13 of 15 PageID: 13
`
`
`
`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;
`
`
`
`6433820.1
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`13
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`Case 3:20-cv-12193 Document 1 Filed 09/01/20 Page 14 of 15 PageID: 14
`
`
`
`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
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`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
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`15
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`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