Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1087508
`
`Filing date:
`
`10/08/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92075214
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Hi-Tech Pharmaceuticals, Inc.
`
`HI-TECH PHARMACEUTICALS, INC.
`6015-B UNITY DRIVE
`NORCROSS, GA 30071
`UNITED STATES
`Primary Email: Jessica@arthurwleach.com
`678-799-0474
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Jessica H. Leach
`
`Jessica@arthurwleach.com
`
`/Jessica H. Leach/
`
`10/08/2020
`
`Attachments
`
`DSN v. HT - Hi-Tech's Motion to Suspend.pdf(1382877 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`)
`
`DYNAMIC SPORTS NUTRITION, LLC,
`)
`
`
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`
`
`)
`
`
`Petitioner,
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`
`
`)
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`
`
`
`
`)
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`v.
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`
`
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`)
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`)
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`HI-TECH PHARMACEUTICALS, INC.
`)
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`)
`
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`Registrant.
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`
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`__________________________________________)
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`
`
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`Cancellation No. 92075214
`
`
`MOTION TO SUSPEND PROCEEDINGS
`PENDING DISPOSITION OF CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Registrant Hi-Tech
`
`
`
`Pharmaceuticals, Inc. (“Hi-Tech”) hereby moves the Board to suspend proceedings in this matter
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`pending final disposition of Civil Action No. 1:16-cv-00949 in federal district court for the
`
`Northern District of Georgia.
`
`Background
`
`Hi-Tech filed a complaint against Petitioner Dynamic Sports Nutrition, LLC (“DSN”) and
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`its CEO, Brian Clapp, in the Northern District of Georgia on September 28, 2015. Hi-Tech’s
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`complaint asserts claims of trademark infringement and false designation of origin, amongst
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`others, in relation to DSN’s use of “D-ANABOL 25” on goods identical in kind to those offered
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`under Hi-Tech’s incontestable DIANABOL registration. A copy of the complaint and civil cover
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`sheet are attached as Exhibit A.
`
`DSN filed a counterclaim in the civil action, alleging “the DIANABOL mark consists of
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`or comprises illegal, immoral, deceptive, and scandalous matter, specifically including substances
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`that are chemically similar in relevant respects to actual regulated drugs and other controlled
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`

`

`substances.” Exhibit B, p. 50 at ¶ 16. DSN further claims “the DIANABOL Mark is invalid due to
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`its hav[ing] become … a generic term … and/or due to its having been abandoned.” Id. at ¶15.
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`DSN does not contend that Hi-Tech stopped using the DIANABOL trademark on goods; rather,
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`DSN’s abandonment claim is based upon an allegation that Hi-Tech uses DIANABOL on
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`unlawful, “controlled substances” rather than the dietary supplements described in its application.
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`DSN moved for summary judgment on its counterclaim, which was denied. See generally
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`Exhibit C. In denying summary judgment, the District Court reasoned that the Food and Drug
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`Administration enforces the statutes that DSN cited for its “unlawful use” allegation, and any
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`determination as to whether Hi-Tech’s goods violate those statutes is “best left for the applicable
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`government agencies.” Id. at pp. 18-19. The Court further explained that DSN had failed to
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`establish “that a court or government agency of competent jurisdiction found Plaintiff’s Dianabol®
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`product non-compliant with the cited statutes or any other statute or regulation. And Defendants
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`have not shown that Plaintiff’s sale of Dianabol® constitutes a per-se violation” of any statute. Id.
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`at pp. 18-19. The Court also denied summary judgment as to DSN’s claim that DIANABOL is
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`generic, finding DSN’s evidence “not enough to compel a conclusion that the primary significance
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`of the DIANABOL® mark to the public is to identify the class of products, rather than the source
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`of the products.” Id. at p. 35.
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`On August 20, 2020, the District Court issued an Order setting trial for March 1, 2021. See
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`Exhibit D. Only three weeks later, DSN – unsatisfied with its prospects in District Court, and in a
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`strategic effort to harass, cause unnecessary expense, and divert Hi-Tech’s attention and resources
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`from trial preparations – filed its Petition to Cancel Hi-Tech’s incontestable DIANABOL
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`registration, claiming: (1) unlawful use, (2) use in an immoral, scandalous, or deceptive manner,
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`
`
`2
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`

`

`(3) failure to use when the application was filed, (4) fraud on the USPTO in filing the application,
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`(5) fraud on the USPTO in filing declarations of use, (6) abandonment, and (7) genericness.
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`DSN’s counterclaim in District Court encompasses all of the claims in its Petition. DSN’s
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`counterclaim expressly includes Count 2, stating “the DIANABOL mark consists of or comprises
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`illegal, immoral, deceptive, and scandalous matter”, as well as Count 6, stating “the DIANABOL
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`Mark is invalid … due to its having been abandoned” and Count 7, stating “the DIANABOL Mark
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`is invalid due to its hav[ing] become … a generic term …” Exhibit B, p. 50 at ¶¶ 15-16.
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`Additionally, DSN’s Counts 1 through 6 are based upon the same “unlawful use” allegation that
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`forms the basis for its allegations of abandonment and “illegal, immoral, deceptive, and scandalous
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`matter” in District Court, as shown in representative allegations below:
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`• Count 1 – Unlawful Use: “Respondent was aware that anabolic steroids were illegal
`but nevertheless intentionally included the steroids in the goods bearing the
`“DIANABOL” mark.” Petition, ¶ 20; see also Id. at ¶¶ 19, 21-28.
`
`• Count 2 – Use in an immoral, scandalous, or deceptive manner: “Respondent was
`aware that anabolic steroids were illegal but nevertheless intentionally included the
`steroids in the goods bearing the “DIANABOL” mark.” Petition, ¶ 32; see also Id.
`¶¶ 30-31, 33-34.
`
`• Count 3 – Failure to use when the application was filed: “At the time that
`Respondent filed the initial application for its “DIANABOL” Mark … Respondent
`only sold products containing illegal anabolic steroids under the “DIANABOL”
`Mark.” Petition, ¶ 36; see also Id. at ¶¶ 37-38.
`
`• Count 4 – Fraud on the USPTO in filing the application: “At the time Respondent
`filed its application for the “DIANABOL” Mark, Respondent was aware that it was
`using the mark to sell products which contained illegal anabolic steroids.” Petition,
`¶ 42; see also Id. at ¶¶ 43-48.
`
`• Count 5 – Fraud on the USPTO in filing declarations of use: “At the time
`Respondent filed the Declarations of Use to renew the registration for its
`“DIANABOL” Mark, Respondent was aware that it was using the Mark to sell
`products containing anabolic steroids.” Petition, ¶ 50; see also Id. at ¶¶ 51-59.
`
`• Count 6 – Abandonment: “Any use by Respondent of the “DIANABOL” Mark on
`any “Dietary supplements, excluding anabolic steroids,” within the past three years
`
`3
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`

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`has been token use made merely to reserve a right in the trademark.” Petition, ¶ 63;
`see also Id. at ¶¶ 60-62, 64.
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`
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`In sum, DSN has asserted identical allegations in the Northern District of Georgia and
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`disposition of its counterclaim will affect, and likely be dispositive of, every claim in its Petition
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`to Cancel.
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`Argument and Authority
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`
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`The Board is empowered to suspend a cancellation proceeding pending the final
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`determination of any civil action that “may have a bearing” on the Board case. See TBMP §
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`510.02(a). In fact, “[i]t is the policy of the Board to suspend proceedings when the parties are
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`involved in a civil action which may be dispositive of or have a bearing on the Board proceeding.”
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`Monster Energy Company v. Martin, 125 USPQ2d 1774 (TTAB 2018) (citing TBMP § 510.02(a)).
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`Absent “unusual circumstances” the Board grants motions to suspend under these circumstances
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`because “judicial economy is usually served by suspension.” TBMP § 510.02(a).
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`The Board routinely grants suspension even in cancellation proceedings instituted before
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`the civil action. See Tokaido v. Honda Associates Inc., 179 USPQ 861, 862 (TTAB 1973)
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`(reasoning “notwithstanding the fact that the Patent Office proceeding was the first to be filed, it
`
`is deemed to be the better policy to suspend proceedings herein until the civil suit has been finally
`
`concluded.”); see also Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805, 806-807
`
`(TTAB 1971).1 DSN filed its Petition to Cancel five years after institution of the civil action in the
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`Northern District of Georgia and only a few months before its trial setting.
`
`
`1 Although the United States Supreme Court has since rejected reasoning set out in Tokaido and
`Whopper-Burger, that TTAB decisions are not binding on district courts, “the Board’s policy to
`suspend in favor of a civil action has not changed.” TBMP § 510.02(a) (citing B & B Hardware,
`Inc. v. Hargis Indus., Inc., 575 U.S. 138, 160 (2015)).
`
`
`
`4
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`

`

`No unusual circumstance exists in this matter warranting a shift from the Board’s policy
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`of suspending proceedings pending disposition of a civil action between the parties. The ongoing
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`litigation in District Court involves the same parties, the same registration, the same claims, and
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`overlapping factual and legal issues, and its determination will undoubtedly have a bearing on this
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`case. There is simply no (legitimate) reason for the Board or Hi-Tech to expend resources in this
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`second forum pending disposition of the civil action, and immediate suspension of the proceedings
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`will promote judicial economy.
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`For these reasons, Hi-Tech respectfully requests that the Board enter an order suspending
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`this matter pending final disposition of the federal litigation currently set for trial in March of 2021.
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`Dated: October 8, 2020
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`Respectfully submitted,
`
`/s/ Jessica H. Leach
`Jessica H. Leach
`Jessica@ArthurWLeach.com
`The Law Office of Arthur W. Leach
`4080 McGinnis Ferry Rd, Suite 401
`Alpharetta, GA 30005
`Phone: (678)799-0474
`
`Attorney for Hi-Tech Pharmaceuticals, Inc.
`
`5
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 8th day of October, 2020, a true and correct copy of the
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`foregoing has been served upon the Attorney of Record for Petitioner Dynamic Sports Nutrition,
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`LLC, Kelly O. Wallace, at the following email addresses of record: kelly@wellbornlaw.com,
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`sam@wellbornlaw.com.
`
`/s/ Jessica H. Leach
`Jessica H. Leach, Esq.
`
`6
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:16-cv-00949-MLB Document 1-11 Filed 09/28/15 Page 1 of 2
`CIVIL COVER SHEET
`JS44 (Rev. 1/13 NDGA)
`
`The JS44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form is required for the use of the Clerk of Court for the purpose of initiating the civil docket record. (SEE INSTRUCTIONS ATTACHED)
`
`I. (a) PLAINTIFF(S)
`
`DEFENDANT(S)
`
`Hi-Tech Pharmaceuticals, Inc.
`
`Dynamic Sports Nutrition, LLC d/b/a Anabolic
`Research, a Texas limited liability company; and
`Brian Clapp, an individual
`
`(b) COUNTY OF RESIDENCE OF FIRST LISTED
`Gwinnett
`Gwinnett
` PLAINTIFF
`
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
` COUNTY OF RESIDENCE OF FIRST LISTED
`Harris County, Texas
` DEFENDANT
` (IN U.S. PLAINTIFF CASES ONLY)
`
`NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF
`LAND INVOLVED
`
`(c) ATTORNEYS (FIRM NAME, ADDRESS, TELEPHONE NUMBER, AND
`E-MAIL ADDRESS)
`
`ATTORNEYS (IF KNOWN)
`
`Arthur W. Leach and C.L. Parker
`The Law Office of Arthur W. Leach
`5870 Windward Pkwy., Suite 225
`Alpharetta, Georgia 30005
`art@arthurwleach.com; cl@clparkerllc.com
`
`II. BASIS OF JURISDICTION
`
`(PLACE AN “X” IN ONE BOX ONLY)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES
`
`(PLACE AN “X” IN ONE BOX FOR PLAINTIFF AND ONE BOX FOR DEFENDANT)
`
` (FOR DIVERSITY CASES ONLY)
`
` 1 U.S. GOVERNMENT
` PLAINTIFF
`
` 3 FEDERAL QUESTION
` (U.S. GOVERNMENT NOT A PARTY)
`
` 1
`
` 1 CITIZEN OF THIS STATE
`
` 4
`
` PLF
`
` DEF
`
` PLF
`
` 2 U.S. GOVERNMENT
` DEFENDANT
`
` 4 DIVERSITY
` (INDICATE CITIZENSHIP OF PARTIES
` IN ITEM III)
`
` 2
`
` 2 CITIZEN OF ANOTHER STATE
`
` 5
`
` 3
`
` 3 CITIZEN OR SUBJECT OF A
` FOREIGN COUNTRY
`
` 6
`
` DEF
`
` 4
`
` INCORPORATED OR PRINCIPAL
` PLACE OF BUSINESS IN THIS STATE
`
` 5
`
` INCORPORATED AND PRINCIPAL
` PLACE OF BUSINESS IN ANOTHER
` STATE
`
` 6
`
` FOREIGN NATION
`
`■■ ■■■
`
`IV. ORIGIN (PLACE AN “X “IN ONE BOX ONLY)
`
` 1 ORIGINAL
` PROCEEDING
`
` 2 REMOVED FROM
` STATE COURT
`
` 3 REMANDED FROM
` APPELLATE COURT
`
` 4 REINSTATED OR
` REOPENED
`
` TRANSFERRED FROM
` 5 ANOTHER DISTRICT
` (Specify District)
`
` 6 MULTIDISTRICT
` LITIGATION
`
` APPEAL TO DISTRICT JUDGE
` 7 FROM MAGISTRATE JUDGE
` JUDGMENT
`
`
`V. CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSE - DO NOT CITE
` JURISDICTIONAL STATUTES UNLESS DIVERSITY)
`
`Plaintiff's claims in this case include claims for trademark infringement under 15 U.S.C. § 1114; false
`designation of origin and unfair competition under 15 U.S.C. § 1125(a); false advertising under 15
`U.S.C. § 1125(a); violation of the Georgia Deceptive Trade Practices Act, O.C.G.A. §10-1-372(a);
`unfair competition under common law; and violations of Georgia RICO, O.C.G.A. § 16-14-4(a)-(c).
`
`(IF COMPLEX, CHECK REASON BELOW)
`
`1. Unusually large number of parties.
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`6. Problems locating or preserving evidence
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`2. Unusually large number of claims or defenses.
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`7. Pending parallel investigations or actions by government.
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`3. Factual issues are exceptionally complex
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`8. Multiple use of experts.
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`4. Greater than normal volume of evidence.
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`9. Need for discovery outside United States boundaries.
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`5. Extended discovery period is needed.
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`10. Existence of highly technical issues and proof.
`
`FOR OFFICE USE ONLY
`
`CONTINUED ON REVERSE
`
`RECEIPT #
`
`AMOUNT $
`
` APPLYING IFP
`
` MAG. JUDGE (IFP)
`
`JUDGE
`
`MAG. JUDGE
`
` NATURE OF SUIT
`
` CAUSE OF ACTION
`
` _
`
` (Referral)
`
`■■■
`

`

`463 HABEAS CORPUS- Alien Detainee
`510 MOTIONS TO VACATE SENTENCE
`530 HABEAS CORPUS
`535 HABEAS CORPUS DEATH PENALTY
`540 MANDAMUS & OTHER
`550 CIVIL RIGHTS - Filed Pro se
`555 PRISON CONDITION(S) - Filed Pro se
`560 CIVIL DETAINEE: CONDITIONS OF
` CONFINEMENT
`
`PRISONER PETITIONS - "4" MONTHS DISCOVERY
`TRACK
`
`550 CIVIL RIGHTS - Filed by Counsel
`555 PRISON CONDITION(S) - Filed by Counsel
`
`FORFEITURE/PENALTY - "4" MONTHS DISCOVERY
`TRACK
`
`625 DRUG RELATED SEIZURE OF PROPERTY
` 21 USC 881
`690 OTHER
`
`LABOR - "4" MONTHS DISCOVERY TRACK
`710 FAIR LABOR STANDARDS ACT
`720 LABOR/MGMT. RELATIONS
`740 RAILWAY LABOR ACT
`751 FAMILY and MEDICAL LEAVE ACT
`790 OTHER LABOR LITIGATION
`791 EMPL. RET. INC. SECURITY ACT
`
`375 FALSE CLAIMS ACT
`400 STATE REAPPORTIONMENT
`430 BANKS AND BANKING
`450 COMMERCE/ICC RATES/ETC.
`460 DEPORTATION
`470 RACKETEER INFLUENCED AND CORRUPT
` ORGANIZATIONS
`480 CONSUMER CREDIT
`490 CABLE/SATELLITE TV
`891 AGRICULTURAL ACTS
`893 ENVIRONMENTAL MATTERS
`895 FREEDOM OF INFORMATION ACT
`950 CONSTITUTIONALITY OF STATE STATUTES
`890 OTHER STATUTORY ACTIONS
`899 ADMINISTRATIVE PROCEDURES ACT /
`REVIEW OR APPEAL OF AGENCY DECISION
`
`OTHER STATUTES - "8" MONTHS DISCOVERY
`TRACK
`
`410 ANTITRUST
`850 SECURITIES / COMMODITIES / EXCHANGE
`
`OTHER STATUTES - “0" MONTHS DISCOVERY
`TRACK
`
`896 ARBITRATION
` (Confirm / Vacate / Order / Modify)
`
`PROPERTY RIGHTS - "4" MONTHS DISCOVERY TRACK
`820 COPYRIGHTS
`840 TRADEMARK
`
`PROPERTY RIGHTS - "8" MONTHS DISCOVERY TRACK
`830 PATENT
`
`* PLEASE NOTE DISCOVERY
`TRACK FOR EACH CASE TYPE.
`SEE LOCAL RULE 26.3
`
`■■✔✔ ■
`
`Case 1:16-cv-00949-MLB Document 1-11 Filed 09/28/15 Page 2 of 2
`VI. NATURE OF SUIT (PLACE AN “X” IN ONE BOX ONLY)
`
`CIVIL RIGHTS - "4" MONTHS DISCOVERY TRACK
`441 VOTING
`442 EMPLOYMENT
`443 HOUSING/ ACCOMMODATIONS
`444 WELFARE
`440 OTHER CIVIL RIGHTS
`445 AMERICANS with DISABILITIES - Employment
`446 AMERICANS with DISABILITIES - Other
`448 EDUCATION
`
`IMMIGRATION - "0" MONTHS DISCOVERY TRACK
`462 NATURALIZATION APPLICATION
`465 OTHER IMMIGRATION ACTIONS
`
`SOCIAL SECURITY - "0" MONTHS DISCOVERY
`TRACK
`
`861 HIA (1395ff)
`862 BLACK LUNG (923)
`863 DIWC (405(g))
`863 DIWW (405(g))
`864 SSID TITLE XVI
`865 RSI (405(g))
`
`FEDERAL TAX SUITS - "4" MONTHS DISCOVERY
`TRACK
`
`870 TAXES (U.S. Plaintiff or Defendant)
`871 IRS - THIRD PARTY 26 USC 7609
`
`PRISONER PETITIONS - "0" MONTHS DISCOVERY
`TRACK
`
`OTHER STATUTES - "4" MONTHS DISCOVERY
`TRACK
`
`CONTRACT - "0" MONTHS DISCOVERY TRACK
`150 RECOVERY OF OVERPAYMENT &
` ENFORCEMENT OF JUDGMENT
`152 RECOVERY OF DEFAULTED STUDENT
` LOANS (Excl. Veterans)
`153 RECOVERY OF OVERPAYMENT OF
` VETERAN'S BENEFITS
`
`CONTRACT - "4" MONTHS DISCOVERY TRACK
`110 INSURANCE
`120 MARINE
`130 MILLER ACT
`140 NEGOTIABLE INSTRUMENT
`151 MEDICARE ACT
`160 STOCKHOLDERS' SUITS
`190 OTHER CONTRACT
`195 CONTRACT PRODUCT LIABILITY
`196 FRANCHISE
`
`REAL PROPERTY - "4" MONTHS DISCOVERY
`TRACK
`
`210 LAND CONDEMNATION
`220 FORECLOSURE
`230 RENT LEASE & EJECTMENT
`240 TORTS TO LAND
`245 TORT PRODUCT LIABILITY
`290 ALL OTHER REAL PROPERTY
`
`TORTS - PERSONAL INJURY - "4" MONTHS
`DISCOVERY TRACK
`310 AIRPLANE
`315 AIRPLANE PRODUCT LIABILITY
`320 ASSAULT, LIBEL & SLANDER
`330 FEDERAL EMPLOYERS' LIABILITY
`340 MARINE
`345 MARINE PRODUCT LIABILITY
`350 MOTOR VEHICLE
`355 MOTOR VEHICLE PRODUCT LIABILITY
`360 OTHER PERSONAL INJURY
`362 PERSONAL INJURY - MEDICAL
` MALPRACTICE
`365 PERSONAL INJURY - PRODUCT LIABILITY
`367 PERSONAL INJURY - HEALTH CARE/
` PHARMACEUTICAL PRODUCT LIABILITY
`368 ASBESTOS PERSONAL INJURY PRODUCT
` LIABILITY
`
`TORTS - PERSONAL PROPERTY - "4" MONTHS
`DISCOVERY TRACK
`370 OTHER FRAUD
`371 TRUTH IN LENDING
`380 OTHER PERSONAL PROPERTY DAMAGE
`385 PROPERTY DAMAGE PRODUCT LIABILITY
`
`BANKRUPTCY - "0" MONTHS DISCOVERY TRACK
`422 APPEAL 28 USC 158
`423 WITHDRAWAL 28 USC 157
`
`VII. REQUESTED IN COMPLAINT:
`
`CHECK IF CLASS ACTION UNDER F.R.Civ.P. 23
`DEMAND $_____________________________
`
`
`JURY DEMAND
` YES
` NO (CHECK YES ONLY IF DEMANDED IN COMPLAINT)
`
`VIII. RELATED/REFILED CASE(S) IF ANY
`
`JUDGE_______________________________
`
`
`DOCKET NO._______________________
`
`CIVIL CASES ARE DEEMED RELATED IF THE PENDING CASE INVOLVES: (CHECK APPROPRIATE BOX)
`1. PROPERTY INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.
`
`2. SAME ISSUE OF FACT OR ARISES OUT OF THE SAME EVENT OR TRANSACTION INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.
`
`3. VALIDITY OR INFRINGEMENT OF THE SAME PATENT, COPYRIGHT OR TRADEMARK INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.
`
`4. APPEALS ARISING OUT OF THE SAME BANKRUPTCY CASE AND ANY CASE RELATED THERETO WHICH HAVE BEEN DECIDED BY THE SAME
`BANKRUPTCY JUDGE.
`5. REPETITIVE CASES FILED BY PRO SE LITIGANTS.
`
`6. COMPANION OR RELATED CASE TO CASE(S) BEING SIMULTANEOUSLY FILED (INCLUDE ABBREVIATED STYLE OF OTHER CASE(S)):
`
`7. EITHER SAME OR ALL OF THE PARTIES AND ISSUES IN THIS CASE WERE PREVIOUSLY INVOLVED IN CASE NO.
`DISMISSED. This case IS
` IS NOT (check one box) SUBSTANTIALLY THE SAME CASE.
`
` , WHICH WAS
`
`/s/ Arthur W. Leach
`
`September 28, 2015
`
`SIGNATURE OF ATTORNEY OF RECORD
`
` DATE
`
`

`

`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 1 of 61
`
`IN THE UNITED STATES DISTRICT COURT
`NOTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`
`HI-TECH PHARMACEUTICALS, INC., a )
`Georgia corporation,
`
`
`
`)
`
`
`
`
`
`
`
`)
`
`Plaintiff,
`
`
`
`
`)
`
`)
`
`
`
`
`
`
`
`)
`
`
`
`
`
`
`v.
`)
`
`
`
`
`
`
`
`)
`DYNAMIC SPORTS NUTRITION, LLC
`)
`d/b/a ANABOLIC RESEARCH,
`
`)
`a TEXAS limited liability company; and
`)
`BRIAN CLAPP, an individual,
`
`)
`
`
`
`
`
`
`
`)
`
`Defendants.
`
`
`
`)
`_____________________________________/
`
`Case No.
`
`
`
`
`
`
`
`
`
`VERIFIED COMPLAINT
`
`COMES NOW, the Plaintiff, Hi-Tech Pharmaceuticals, Inc. (“Hi-Tech”), by
`
`and through the undersigned counsel of record, and for its Complaint against the
`
`Defendants Dynamic Sports Nutrition, LLC (“DSN”) and Brain Clapp (“Mr. Clapp,”
`
`collectively DSN and Mr. Clapp shall be referred to as “Defendants”), states as
`
`follows:
`
`
`
`
`
`

`

`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 2 of 61
`
`INTRODUCTION
`
`1.
`
`Hi-Tech is the owner of the incontestable registration for DIANABOL®
`
`for dietary supplements. See Exhibit 1. DSN, at the direction of Mr. Clapp, willfully
`
`infringed Hi-Tech’s mark by its use of D-ANABOL 25 for dietary supplements
`
`(“Infringing Products”). Defendants’ actions are designed to and will cause
`
`confusion amongst the consuming public and constitute trademark infringement and
`
`unfair competition under the Lanham Act and violation of Deceptive Trade Practices
`
`Act and unfair competition under Georgia law.
`
`THE PARTIES
`
`2.
`
`Hi-Tech is a corporation organized and existing under the laws of the
`
`State of Georgia, with its principal place of business located at 6015-B Unity Drive,
`
`Norcross, Georgia 30071. Hi-Tech sells, distributes, and manufactures high quality
`
`dietary supplement products in the State of Georgia and throughout the United
`
`States.
`
`3.
`
`Defendant DSN is a limited liability company d/b/a/ Anabolic Research
`
`and is organized under the laws of the State of Texas whose registered agent is
`
`Jeffrey E. Sher located at 2727 Allen Pkwy, Suite 900, Houston, Texas 77019. Upon
`
`information and belief, DSN sells, distributes, and markets its products, including
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`2
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 3 of 61
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`the Infringing Products at issue, in the State of Georgia, in this District, and
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`throughout the United States.
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`4. Mr. Clapp is an individual and citizen of Texas and may be served at
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`1240 Wilson Ct., Humble, Texas 77396. Upon information and belief, Mr. Clapp is
`
`the chief executive officer, owner, and president of DSN. Upon information and
`
`belief, Mr. Clapp authorizes, participates in, directs, controls, causes, ratifies, and/or
`
`is the moving force behind the selection and sale and distribution of the Infringing
`
`Products and/or is personally sells the Infringing Products.
`
`JURISDICTION AND VENUE
`
`5.
`
`This Court has subject matter jurisdiction over this action pursuant to
`
`15 U.S.C § 1331 (federal question), 15 U.S.C § 1121 (Lanham Act claims), 28
`
`U.S.C. § 1338 (trademark and unfair competition claims), 28 U.S.C § 1367
`
`(supplemental jurisdiction), and 28 U.S.C. § 1332 (diversity), as this action is
`
`between citizens of different states and the amount in controversy, exclusive of
`
`interest and costs, exceeds seventy-five thousand dollars ($75,000.00).
`
`6.
`
`Pursuant to 28 U.S.C. § 1367, this Court also has supplemental
`
`jurisdiction over Hi-Tech’s claims arising from the laws of the State of Georgia as
`
`those claims are substantially related to those causes of action over which the Court
`
`has original jurisdiction.
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`3
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 4 of 61
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`7.
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`This Court may exercise personal jurisdiction over the Defendants
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`pursuant to O.C.G.A. §9-10-91 because one or more of the Defendants are doing
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`business in this judicial district and/or have committed tortious acts within this
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`judicial district including unfair competition, trademark infringement, mail and wire
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`fraud as a part of a Georgia RICO violation among other wrongful and unlawful acts.
`
`This Court therefore has jurisdiction over the Defendants pursuant to the provisions
`
`of the Georgia long-arm statute.
`
`8.
`
`This Court also has personal jurisdiction over Defendants because they
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`purposefully directed and targeted their activities, as set forth herein, at Georgia
`
`resident Hi-Tech, and the effects of those activities arose in Georgia.
`
`9.
`
`By way of further example and without limitation, Defendants have
`
`purposefully and voluntarily placed the Infringing Products and fraudulent
`
`supplements into the stream of commerce with the knowledge, understanding, and
`
`expectation that such Infringing Products would and will be purchased in the
`
`Northern District of Georgia, and the products were and are actually purchased in
`
`the Northern district of Georgia.
`
`10. Venue is proper under 28 U.S.C. § 1391 (b) in that one or more of the
`
`Defendants are doing and transacting business within this judicial district, and have
`
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`4
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 5 of 61
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`committed the tortious acts complained of herein in this judicial district of the State
`
`of Georgia.
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`FACTUAL BACKGROUND
`
`I. 
`
`HI-TECH AND DIANABOL®
`
`11. Hi-Tech is a producer of high quality dietary supplements, including
`
`numerous products designed for muscle and body building, such as testosterone
`
`boosters, muscle-gainers, muscle preservation products, and legal hormone boosters.
`
`12. One of Hi-Tech’s products is DIANABOL®, a muscle preservation
`
`dietary supplement for consumers seeking to gain muscle.
`
`13. Hi-Tech is the owner, by way of assignment, of USPTO Registration
`
`No. 3,378,354 for the mark DIANABOL® in international class 005 for “dietary
`
`supplements, excluding anabolic steroids” with a registration date of February 5,
`
`2008. A copy of the certificate of registration is attached hereto as “Exhibit 1.”
`
`14. The DIANABOL® trademark and the resulting registration is
`
`incontestable, valid, existing and in full force and effect.
`
`15. The DIANABOL® trademark is associated exclusively with Hi-Tech
`
`for use with dietary supplements. Hi-Tech first used the mark on or about March
`
`31, 2002 and has used its mark in interstate commerce continuously since this date.
`
`As a result of its continued use, marketing of its products and other business
`
`
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`5
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 6 of 61
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`generation efforts to promote the DIANABOL® trademark, the DIANABOL®
`
`trademark has become well-known in commerce to identify Hi-Tech’s products and
`
`business. Consequently, Hi-Tech has developed substantial recognition among the
`
`consuming public for its high quality products sold under its DIANABOL®
`
`trademark and enjoys extensive goodwill associated with the DIANABOL®
`
`trademark. Furthermore, consumers throughout the United States now recognize the
`
`DIANABOL® trademark as identifying a single source of Hi-Tech's high quality
`
`dietary and nutritional supplements.
`
`16. Hi-Tech distributes, markets and sells DIANABOL® in the State of
`
`Georgia and throughout the United States via an extensive network of wholesale,
`
`Internet, and retail outlets such as health food stores, gyms and fitness centers.
`
`17. Hi-Tech has expended substantial resources to develop, promote,
`
`brand, market, sell, and maintain the quality of its DIANABOL® product.
`
`18. Hi-Tech markets and promotes its dietary supplements, including
`
`DIANABOL®, through many types of advertising media including printed brochures
`
`and flyers, magazine advertisements, web pages, online advertisements, and
`
`distributors' catalogs. As a result, Hi-Tech’s DIANABOL® product and brand has
`
`established substantial and valuable goodwill among consumers of dietary
`
`supplements.
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`6
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 7 of 61
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`II.  DSN’S ATTEMPTED REGISTRATION OF “D-ANABOL”
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`19. Defendants were aware of Hi-Tech and its DIANABOL® registration
`
`but, nevertheless, on March 29, 2011, attempted to circumvent Hi-Tech’s
`
`incontestable, registered DIANABOL® rights, by applying to register D-ANABOL
`
`25 as a trademark for dietary supplements, which was assigned U.S. Serial No.
`
`85/280,036.
`
`20. On June 28, 2011, the PTO refused registration of the D-ANABOL 25
`
`application, citing Hi-Tech’s DIANABOL® registration against said application, and
`
`attached a copy of Hi-Tech’s DIANABOL® registration to its refusal. Exhibit 2, p.
`
`8.
`
`21.
`
`In doing so, the PTO found that the D-ANABOL 25 and DIANABOL®
`
`trademarks were similar in sound and appearance, that they created the same overall
`
`commercial impression, and that they identified the same or substantially similar
`
`products. Id., p. 3.
`
`22. While Defendants responded to the PTO’s rejection, on May 1, 2012,
`
`the PTO issued its “final” rejection of Defendants’ trademark application, again
`
`citing confusing similarity between the D-ANABOL 25 and DIANABOL®
`
`trademarks. Exhibit 3.
`
`
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`7
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 8 of 61
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`23. The PTO found there was a likelihood of confusion between Hi-Tech’s
`
`DIANABOL® and DSN’s D-ANABOL trademarks, stating in part:
`
`Online literature and/or advertisements for applicant’s product [DSN’s
`D-ANABOL] demonstrate that applicant’s and registrant’s [Hi-
`Tech’s] goods are: (1) marketed through the same channels; (2)
`directed to the same potential customers; and (3) even promoted as
`comparable competing products wherein they provide, in part, ‘If you
`are looking to buy Dianabol …online, our D-adabol 25 is exactly what
`you need.
`
`Id., p. 3.
`
`
`24. The PTO further stated that, “[t]he dominant feature of the applicant’s
`
`mark is nearly identical in appearance to registrant’s mark. The letter I is merely
`
`replaced with a hyphen.” Id., p. 4.
`
`25. The PTO also found that the term D-ANABOL 25 is the phonetic
`
`equivalent of DIANABOL® , and that the term “25” would (incorrectly be perceived
`
`as the milligram dosage of DSN’s goods. Id.
`
`25”
`“D-ANABOL
`III.  DEFENDANTS’ USE OF THE
`TRADEMARK AND SALE OF THE
`INFRINGING
`PRODUCTS
`
`
`26. Defendants have used and continue to use the unregistered, infringing
`
`trademark "D-ANABOL 25” to sell its D-ANABOL 25 product.
`
`
`
`8
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 9 of 61
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`27. The trademark "D-ANABOL 25” is confusingly similar to Hi-Tech’s
`
`DIANABOL® trademark in that the Defendants’ are using a near identical match to
`
`Hi-Tech’s incontestable, registered trademark.
`
`28. The Infringing Products are similar to or the same as Hi-Tech’s
`
`DIANABOL® product as both products are muscle building dietary supplements and
`
`the products directly compete against each other and both products travel in the same
`
`trade channels.
`
`29. The Infringing Products are advertised in the same media as Hi-Tech’s
`
`DIANABOL® products, namely websites and muscle or fitness magazines.
`
`30. Defendants
`
`own
`
`and
`
`operate
`
`the
`
`following websites:
`
`www.Anabolics.com; www.DynamicSportsNutrition.com; www.Dianabol.com;
`
`www.BuySteroids.com; www.Steroid.com; and RoidStore.com. Barry Clapp is
`
`listed as the registered agent for each of these domains and may own and operate
`
`additional infringing domains and websites unknown to Hi-Tech.
`
`31. Defendants’ website www.Anabolics.com is an ecommerce site and
`
`serves as an instrument to confuse and deceive consumers into thinking that the
`
`Infringing Products are similar to or the same as Hi-Tech’s DIANABOL® product.
`
`32. Defendants’ website www.DynamicSportsNutrition.com
`
`is an
`
`ecommerce site and serves as an instrument to confuse and deceive consumers into
`
`
`
`9
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`Case 1:16-cv-00949-MLB Document 1 Filed 09/28/15 Page 10 of 61
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`thinking that the Infringing Products are similar to or the same as Hi-Tech’s
`
`DIANABOL® product.
`
`33. Defendants’ website www.Dianabol.com serves as an instrument to
`
`confuse and deceive consumers into thinking that the Infringing Products are similar
`
`to or the same as Hi-Tech’s DIANABOL® product under the guise of acting as
`
`educational website dedicated to Hi-Tech’s DIANABOL® product while providing
`
`links to purchase the Infringing Products.
`
`34. Defendants’ website www.BuySteroids.com serves as a redirection
`
`page which directs consumers to Defendants’ website www.Anabolics.com intended
`
`to confuse and deceive consumers into thinking that the Infringing Products are
`
`similar to or the same as Hi-Tech’s DIANABOL® product.
`
`35. Defendants’ website www.Steroid.com serves as an instrument to
`
`confuse and deceive consumers into thinking that the Infringing Products are similar
`
`to or the same as Hi-Tech’s DIANABOL® product under the guise of acting as
`
`educational website dedicated to general steroid education while providing links to
`
`purchase the Infringing Products.
`
`36. Defendants’ website www.RoidStore .com serves as a redirection page
`
`which