Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1093368
`
`Filing date:
`
`11/04/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92075315
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Pem Management, Inc.
`
`PEM MANAGEMENT, INC.
`103 FOULK ROAD
`SUITE 108
`WILMINGTON, DE 19803
`UNITED STATES
`No email provided.
`No phone number provided.
`
`Motion to Suspend for Civil Action
`
`Joseph M. Konieczny, Sr.
`
`jkonieczny@ryderlu.com
`
`/joseph m. konieczny, sr/
`
`11/04/2020
`
`DS1 Motion - Suspend Proceeding - Final.pdf(22557 bytes )
`DS1 Brief - Suspend Proceeding - Final.pdf(45375 bytes )
`DS1 Order - Suspend Proceeding - Final.pdf(34880 bytes )
`Exhibit 1 Complaint Final.pdf(168015 bytes )
`Exhibit 2 Answer Final.pdf(124029 bytes )
`Exhibit 3 Motion for SJM Final.pdf(196340 bytes )
`Exhibit 4 Response to SJM Final.pdf(86725 bytes )
`Exhibit 5 - Reply to SJM Final.pdf(194374 bytes )
`Exhibit 6 Daubert Motion Final.pdf(48154 bytes )
`Exhibit 7 Response to Daubert Final.pdf(265062 bytes )
`Exhibit 8 Reply for Daubert Final.pdf(225122 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Peninsula Components, Inc.
`
`
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`
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`Petitioner,
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`
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`v.
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`PEM Management, Inc.
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`
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`Registrant.
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`:
`:
`: In Re: Registration No. 1,400,893
`:
`: Cancellation Proceeding No.: 92075315
`:
`:
`:
`:
`
`MOTION TO SUSPEND
`
`For the reasons set forth in the accompanying brief and supporting exhibits, Registrant,
`
`
`
`PEM Management, Inc., moves the Board to suspend this proceeding pending the outcome of the
`
`litigation in Penn Engineering & Manufacturing Corp. v. Peninsula Components, Inc., No.:
`
`2:19-CV-00513-GEKP (ED Pa.).
`
`
`
`
`
`Dated: November 4, 2020
`
`
`
`Respectfully submitted,
`
`Ryder, Mazzeo & Konieczny LLC
`
` By: /joseph m. konieczny, sr./
`Joseph M. Konieczny, Sr. (Pa. 59,724)
`P.T.O. Reg. No. 35,806
`Frank A. Mazzeo (Pa. 65,537)
`P.T.O. Reg. No. 46,259
`P.O. Box 670
`Plymouth Meeting, PA 19462
`610-940-1962(voice)
`610-940-1963 (fax)
`jkonieczny@ryderlu.com
`
`Attorneys for Registrant
`
`
`
` 
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` 
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`

`

`CERTIFICATE OF SERVICE
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`
`
`I hereby certify that on the date set forth below, the undersigned counsel served a true
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`and correct copy of foregoing Motion To Stay and supporting brief and exhibits on Petitioner’s
`
`attorney of record by email to:
`
` 
`Richard A. Nebb
`Dergosits & Noah LLP
`One Embarcadero Center, Suite 350
`San Francisco, CA 94111
`rnebb@dergnoah.com
`
`
`
`
`
`Dated: November 4, 2020
`
`
`
`
`
`
`
`/joseph m. konieczny, sr./
`Joseph M. Konieczny, Sr.
`P.T.O. Reg. No. 35,806
`
`
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` 
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` 
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Peninsula Components, Inc.
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`PEM Management, Inc.
`
`
`
`
`
`Registrant.
`
`
`
`
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`:
`:
`: In Re: Registration No. 1,400,893
`:
`: Cancellation Proceeding No.: 92075315
`:
`:
`:
`:
`
`
`
`BRIEF IN SUPPORT OF MOTION TO SUSPEND PENDING
`THE OUTCOME OF CIVIL LITIGATION
`
`
`
`
`I.
`
`Introduction
`
`Penn Engineering & Manufacturing Corp. is the exclusive licensee from the registrant,
`
`PEM Management, Inc. (both collectively “PennEngineering”), of the subject registration, U.S.
`
`Reg. No. 1,400,893 (“the ‘893 Registration”), which issued more than 34 years ago based on first
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`use at least as early as 1962. Petitioner, Peninsula Components, Inc. (“Pencom”), has had actual
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`knowledge of the ‘893 Registration since at least as early as August 17, 2007, when
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`PennEngineering sued Pencom for infringing, inter alia, the ‘893 Registration (“2007
`
`Litigation”), which litigation concluded with a settlement agreement in 2008 (“2008 Settlement
`
`Agreement”). Now, more than 34 years after registration, and 12 years after the 2008 Settlement
`
`Agreement, Pencom seeks to cancel the ‘893 Registration on the grounds of functionality, an
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`issue that could have been raised at any time over the past 34 years!1 More importantly, relative
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`to this motion, this exact same issue has been litigated in a current Federal intellectual property
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`                                                            
`1 PennEngineering is filing concurrently herewith a motion to dismiss for failure to state a claim. The Board
`requests consideration of this motion to suspend only to the extent its motion to dismiss is denied.
`
` 
`
`1 
`
`

`

`lawsuit2 for the past 21 months! Therefore, this cancellation proceeding should be suspended
`
`pending the outcome of the Current Litigation.
`
`
`
`II.
`
`Statement of Facts
`
`Registrant, PEM Management, Inc. is a holding company for intellectual property that is
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`licensed exclusively to Penn Engineering & Manufacturing Co. PennEngineering is one of the
`
`leading designers and manufacturers of industrial fastening solutions in the U.S.
`
`PennEngineering has a robust and diverse IP portfolio which contains trademarks, trade dress,
`
`design patents and utility patents, inter alia, and goes to great lengths to protect its valuable
`
`intellectual property.
`
`On February 5, 2019, PennEngineering sued Pencom for trademark infringement, false
`
`designation of origin, false advertising, and counterfeiting of, inter alia, the ‘893 Registration.
`
`Ex. 1; Amended Complaint ¶¶68-72, 103-107, 126-129, 150-154 PennEngineering &
`
`Manufacturing Corp. v. Peninsula Components, Inc., No.: 2:19-CV-00513-GEKP (E.D. Pa.). In
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`response, Pencom has pled an affirmative defense of “Invalidity of Trademarks” and more
`
`specifically:
`
`Plaintiff’s claims are barred, in whole or in part, on the basis that the
`configurations of both of Plaintiff’s Double Square marks at issue are functional
`as applied to Case 2:19-cv-00513-GEKP Document 13 Filed 06/17/19 Page 19 of
`22 20 fastener products, and therefore not entitled to federal registration under 15
`U.S.C. § 1052(e)(5), or to enforce the Double Square marks as against Defendant.
`Further, incontestability does not bar functionality as a (sic) defence to an
`allegation of infringement. (15 U.S.C. § 1115(b)(8)).
`
`Ex. 2; Answer ¶12 Sixth Affirmative Defense PennEngineering & Manufacturing Corp. v.
`
`Peninsula Components, Inc., No.: 2:19-CV-00513-GEKP (E.D. Pa.). The Current Litigation has
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`                                                            
`2 PennEngineering & Manufacturing Corp. v. Peninsula Components, Inc., No.: 2:19-CV-00513-GEKP (E.D. Pa.)
`(“Current Litigation”).
`
` 
`
`2 
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`

`

`been pending and actively litigated for the past 21 months. And, as described below, the
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`functionality has been extensively discovered and briefed in the Current Litigation.
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`III. Legal Standard
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`Whenever it comes to the attention of the Board that a party or parties to a case pending
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`before it are involved in a civil action that may have a bearing on the Board case, proceedings
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`before the Board may be suspended until final determination of the civil action. T.B.M.P.
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`510.02(a); 37 C.F.R. § 2.117.  “Most commonly, a request to suspend pending the outcome of
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`another proceeding seeks suspension because of a civil action pending between the parties in a
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`federal district court.” Id. In such a case, “judicial economy is usually served by suspension.” Id.
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`IV. Argument
`
`
`
`This cancellation proceeding should be suspended pending the outcome of the Current
`
`Litigation because the exact same issue, functionality of the mark of the ‘893 Registration, is
`
`being litigated in Federal Court. As described above, Pencom’s sixth affirmative defense
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`challenges the validity of the ‘893 Registration based on functionality of the mark, which is the
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`identical grounds for cancelling the ‘893 Registration. Petition ¶20-30. Moreover, the
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`functionality issue has been the subject of extensive discovery, expert reports, and briefing. For
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`example, this issue has been fully briefed in the following related documents in the Current
`
`Litigation:
`
`1)
`
`
`2)
`
`
`3)
`
`
`
`Motion for Summary Judgment on Defendant’s Affirmative Defense of Invalidity
`of the Double Square Marks Based on Functionality (Dkt. 43); ex. 3;
`
`Response in Opposition to Motion for Summary Judgment on Defendant’s
`Affirmative Defense of Invalidity of the Double Square Marks Based on
`Functionality (Dkt. 50); ex. 4;
`
`Reply to Response in Opposition to Motion for Summary Judgment on
`Defendant’s Affirmative Defense of Invalidity of the Double Square Marks Based
`on Functionality (Dkt. 58); ex. 5;
`
` 
`
`3 
`
`

`

`4)
`
`
`5)
`
`
`6)
`
`Motion to Exclude Testimony and Expert Report of Defendant’s Expert Kent B.
`Godsted (Dkt. 45); ex. 6;
`
`Memorandum in Opposition to Motion to Exclude Testimony and Expert Report
`of Defendant’s Expert Kent B. Godsted (Dkt. 49); ex. 7; and,
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`Reply to Response to Motion to Exclude Testimony and Expert Report of
`Defendant’s Expert Kent B. Godsted (Dkt. 59); ex. 8.
`
`
`These motions are temporarily withdrawn and awaiting rescheduling of their filing deadlines by
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`the Court. Order June 22, 2020 (Dkt. 112).
`
`
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`The Current Litigation will have an obvious bearing, and in fact be controlling, on the
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`only grounds for cancellation pleaded in this cancellation proceeding, which includes the exact
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`same parties, the exact same issue, and the exact same trademark. Trademark Trial and Appeal
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`Board Manual of Procedure, §510.02(a) provides:
`
`"Most commonly, a request to suspend pending the outcome of another
`proceeding seeks suspension because of a civil action pending between the parties
`in a federal district court. To the extent that a civil action in a federal district court
`involves issues in common with those in a proceeding before the Board, the
`decision of the federal district court is often binding upon the Board, while the
`decision of the Board is not binding upon the court."
`
`Furthermore, in view of the extensive discovery and briefing to which the functionality issue has
`
`been subjected in the Current Litigation, suspension of this proceeding will save time, effort
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`expense and administrative resources for the Board due to the identity of issues in both
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`proceedings. Therefore, there is good cause to support PennEngineering’s request to suspend
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`this cancellation pending the outcome of the Current Litigation.
`
`
`
` 
`
`
`
`4 
`
`

`

`V.
`
`Conclusion
`
`For the foregoing reasons, PennEngineering respectfully requests that the Board GRANT
`
`its motion and SUSPEND the current proceedings pending the outcome of the Current Litigation.
`
`Dated: November 4, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Ryder, Mazzeo & Konieczny LLC
`
`By: /joseph m. konieczny, sr./
`Joseph M. Konieczny, Sr. (Pa. 59,724)
`P.T.O. Reg. No. 35,806
`Frank A. Mazzeo (Pa. 65,537)
`P.T.O. Reg. No. 46,259
`P.O. Box 670
`Plymouth Meeting, PA 19462
`610-940-1962(voice)
`610-940-1963 (fax)
`jkonieczny@ryderlu.com
`Attorneys for Registrant
`
` 
`
`5 
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Peninsula Components, Inc.
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`PEM Management, Inc.
`
`
`
`
`
`Registrant.
`
`
`
`
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`:
`:
`: In Re: Registration No. 1,400,893
`:
`: Cancellation Proceeding No.: 92075315
`:
`:
`:
`:
`
`ORDER
`
` AND NOW, this ___ day of _______, 2020, upon consideration of PEM Management
`
`
`
`Inc.’s Motion to Suspend, and any responses thereto, it is hereby ORDERED and DECREED
`
`that the Motion to Suspend is GRANTED. The above-captioned cancellation proceeding is
`
`SUSPENDED pending the outcome of the civil litigation in PennEngineering & Manufacturing
`
`Corp. v. Peninsula Components, Inc., No.: 2:19-CV-00513-GEKP (E.D. Pa.).
`
`
`
` 
`
`By the Trademark Trial and Appeal Board:
`
`1 
`
`

`

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`Exhibit 1
`Exhibit 1
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 1 of 32
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`
`
`Penn Engineering & Manufacturing Corp.
`
`
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`
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`Plaintiff,
`
`
`
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`
`
`
`
` v.
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`
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`Peninsula Components, Inc.,
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`Defendant.
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`No.:_____________________
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`
`
`COMPLAINT
`
`Penn Engineering & Manufacturing Corp., a Pennsylvania corporation, by way of
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`Complaint against Peninsula Components, Inc., on knowledge as to Penn Engineering &
`
`Manufacturing Corp., and otherwise on information and belief, alleges as follows:
`
`Nature of the Action
`
`1.
`
`This is a civil action for trademark infringement, false designation of origin, false
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`advertising and counterfeiting under the trademark laws of the United States including 15 U.S.C.
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`sections 1114, 1116, 1117, 1125(a); and, common law trademark infringement and unfair
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`competition.
`
`
`
`Jurisdiction
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`2.
`
`Subject matter jurisdiction over this action is proper in this court under 15 U.S.C.
`
`section 1121 and 28 U.S.C. sections 1331, 1338 and 1367(a), and over the related state claims
`
`under the doctrine of supplemental jurisdiction.
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 2 of 32
`
`3.
`
`Venue is proper in this district under 28 U.S.C. section 1391 for the reasons set
`
`Venue
`
`forth below.
`
`The Parties
`
`4.
`
`Plaintiff, Penn Engineering & Manufacturing Corp., (“PennEngineering”), is a
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`Pennsylvania corporation having a place of business at 5190 Old Easton Road, Danboro,
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`Pennsylvania, 18196.
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`5.
`
`On information and belief, defendant Peninsula Components, Inc. (“Defendant”)
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`is a California company having a place of business at 1300 Industrial Road, Suite 21, San Carlos,
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`California 94070.
`
`Statement of Facts Common to All Counts
`
`PennEngineering is a global leader in the industrial fastening solutions industry.
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`PennEngineering was established in 1942 by K.A. Swanstrom.
`
`6.
`
`7.
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`PennEngineering’s first manufacturing facility consisted of only four fastener machines in a
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`Doylestown, Pennsylvania garage. Since then, PennEngineering has grown into a global
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`industry leader. PennEngineering is now headquartered in Danboro, Pennsylvania.
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`PennEngineering’s Extensive Product Line
`
`8.
`
`PennEngineering designs and manufactures a wide variety of fasteners, fastener
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`components and fastener installation equipment for diverse industries, including the electronics,
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`computer, data/telecom, medical, automotive, marine, and aerospace/aircraft industries, and for
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`general manufacturing.
`
`9.
`
`Since 1942, PennEngineering has been in the business of designing,
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`manufacturing and selling a wide variety of fastening products including: nuts; bolts; studs; pins;
`
`
`
`2
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 3 of 32
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`standoffs; rivets, captive panel screws and hardware; cable tie-mounts and hooks; fasteners for
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`mounting into printed circuit boards; and, miniature (micro-sized) fasteners.
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`10.
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`Since first inventing a novel clinch fastener in 1943, PennEngineering has steadily
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`expanded the type and variety of products in its portfolio.
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`11.
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`All of these products are advertised, promoted and sold using one or more of
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`PennEngineering’s numerous trademarks and most are advertised, promoted and sold using the
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`“PEM Family of Marks” defined below.
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`12.
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`Since 1942, PennEngineering has steadily grown its engineering and production
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`capacity. PennEngineering now has manufacturing and technical facilities in the United States,
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`Europe, and Asia including Danboro, Pennsylvania; Winston-Salem, North Carolina; Galway,
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`Ireland; Friedrichsdorf, Germany and Kunshan, China.
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`13.
`
`Over the past 77 years, PennEngineering has manufactured and sold billions of
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`fastener products. In addition to the United States, PennEngineering’s products are sold in more
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`than 75 countries through an extensive network of engineering representatives and distributors
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`in, for example, Australia, Austria, Brazil, Canada, China, Denmark, France, Finland, Germany,
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`Hong Kong, India, Ireland, Israel, Italy, Japan, South Korea, Mexico, New Zealand, Norway,
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`Portugal, Singapore, Spain, South Africa, Sweden, Switzerland, Taiwan, United Kingdom and
`
`the United States.
`
`14.
`
`Since 1942, PennEngineering has grown steadily and now has more than 1,700
`
`employees globally and annual revenue in excess of 400 million dollars.
`
`15.
`
`Since 1942, PennEngineering has continuously invented new fastener products
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`and improved on old fastener products as evidence by its extensive patent portfolio.
`
`PennEngineering spends more than $1,200,000 per year to design, develop, test and certify its
`
`
`
`3
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 4 of 32
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`new fastener products. PennEngineering has been issued1 more than 150 U.S. and foreign
`
`patents for its fastener products, fastener installation equipment, and methods of manufacturing.
`
`PennEngineering’s Superior Product Quality
`
`16.
`
`Over the past 77 years, PennEngineering has developed a reputation for
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`designing, manufacturing and selling only the highest quality fastener products.
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`PennEngineering exercises extensive quality control at its manufacturing plants and has a
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`manufacturing strategy of defect prevention rather than defect detection. PennEngineering uses
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`statistical tools throughout its manufacturing processes to monitor the performance and assure
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`effective quality control of each process step. If a non-conforming situation arises, it is resolved
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`immediately with the use of appropriate quality assurance tools.
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`PennEngineering’s Famous PEM Family of Marks
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`17.
`
`Since at least as early as 1946, PennEngineering has used the trademark PEM in
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`commerce to advertise, promote and sell its fastener products and accessories, and to identify and
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`distinguish its goods from the goods of other companies.
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`18.
`
`On June 19, 1962, PennEngineering was awarded U.S. Registration No. 732,947
`
`(“the ‘947 Registration”), which grants PennEngineering the exclusive right to use the mark
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`PEM, or any confusingly similar mark (colorable imitation), in connection with "drill bushings
`
`and self-clinching nuts, fasteners, studs and stand-offs”, and in connection with related goods.
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`19.
`
`The mark PEM was registered on the Principal Register without the need to claim
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`secondary meaning.
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`20.
`
` The ‘947 Registration became incontestable under the Lanham Act on October
`
`25, 1984 when the U.S. Patent & Trademark Office accepted and acknowledged
`
`
`1 PennEngineering assigns all of its patent and trademark rights to a holding company, PEM Management, Inc., and
`is granted back an exclusive license under the patents and trademarks.
`
`
`
`4
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 5 of 32
`
`PennEngineering’s Section 15 Affidavit.
`
`21.
`
`For more than 77 years, PennEngineering has continuously used and heavily
`
`promoted and advertised the mark PEM.
`
`22.
`
`Over the years, PennEngineering has adopted numerous additional marks for its
`
`fastener products that incorporate the mark PEM.
`
`23.
`
`For example, PennEngineering advertises, promotes and sells its fastener products
`
`using the federally-registered marks listed in Table 1:
`
`Table I
`
`Mark
`
`Registration
`Number
`
`Registration
`Date
`
`Incontestability
`Date
`
`10/25/1984
`
`6/19/1962
`
`11/17/1981
`
`8/3/1987
`
`PEM
`
`PEM
`
`732,947
`
`
`1,177,822
`
`
`PEM
`
`PEM
`
`1,403,759
`
`2,758,505
`
`Goods & Services
`
`Drill bushings and self-
`clinching nuts, fasteners,
`studs and stand-offs
`Broaching-type captive
`fasteners-namely, broaching-
`type captive fasteners with
`internal threads, broaching-
`type captive standoffs with
`and without internal threads,
`broaching-type captive solder
`terminals, broaching-type
`captive studs, broaching-type
`captive panel fasteners and
`metallic inserts.
`
`Panel fasteners, namely self-
`clinching, snap-in floating
`and hybrid panel fasteners
`Self-clinching fasteners, self-
`locating weld fasteners, and
`self-clinching drill bushings
`
`8/5/1986
`
`8/12/1991
`
`Metal fasteners
`
`9/2/2003
`
`9/2/2009
`
`889,244
`
`4/14/1970
`
`4/14/2010
`
`
`
`
`
`5
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 6 of 32
`
`1,043,967
`
`7/20/1976
`
`11/9/1981
`
`1,092,108
`
`7/25/1983
`
`5/30/2015
`
`1,113,034
`
`2/13/1979
`
`4/23/1984
`
`4,331,371
`
`5/7/2013
`
`11/19/2018
`
`
`
`
`
`
`
`
`
`PEMFLEX
`
`937,397
`
`7/11/1972
`
`7/11/2012
`
`Presses for installing fasteners
`or the like and also for parts
`of said presses
`
`Panel fastener assemblies and
`spring loaded plunger
`assemblies
`Electrical terminals and
`electrical grounding stand-
`offs
`Fasteners made of metal,
`namely, nuts, weld nuts,
`studs, pins, standoffs, rivets
`and inserts, cable-tie mounts
`and hooks for sheet metal;
`self-clinching panel fasteners
`made of metal or mostly of
`metal; panel fasteners and
`panel fastener assemblies
`made of metal or mostly of
`metal; sheet-metal fasteners
`made of metal; fasteners
`made of metal or mostly of
`metal for mounting into
`printed circuit boards; micro
`fasteners made of metal for
`use in the consumer
`electronics industry
`Fasteners, i.e., nuts
`
`PEMHEX
`
`781,236
`
`12/8/1964
`
`12/8/2004
`
`Fasteners
`
`PEMSERT
`
`883,650
`
`1/6/1970
`
`1/6/2010
`
`Inserts
`
`PEMSERTER
`
`1,365,248
`
`10/15/1985
`
`6/3/1991
`
`PEMSERTER
`MICRO-MATE
`
`1,433,571
`
`3/24/1987
`
`7/2/1992
`
`PEMSERTER
`and triangle
`composite
`
`3,567,528
`
`1/27/2009
`
`2/9/2015
`
`Power-operated presses for
`installing fastener
`Non-powered hand presses
`for punching holes and
`installing fasteners for use in
`sheet metal
`
`Power-operated presses for
`installing fasteners
`
`
`
`6
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 7 of 32
`
`PEM SP
`
`3,270,807
`
`7/31/2007
`
`8/5/2013
`
`Metal fasteners
`
`PEM300
`
`1,444,862
`
`6/30/1987
`
`10/20/1992
`
`Sheet Metal Fasteners
`
`AUTOPEM
`
`4,296,186
`
`2/26/2013
`
`11/16/2018
`
`MICROPEM
`
`4,250,883
`
`11/27/2012
`
`11/13/2018
`
`AEROPEM
`
`4,298,838
`
`3/5/2013
`
`11/16/2018
`
`Metal fasteners, namely, nuts,
`bolts, screws, rivets,
`standoffs, clinching fasteners;
`metal threaded fasteners
`
`Metal fasteners, namely, nuts,
`bolts, screws, rivets,
`standoffs, clinching fasteners;
`metal threaded fasteners
`
`Metal fasteners, namely, nuts,
`bolts, screws, rivets,
`standoffs, clinching fasteners;
`metal threaded fasteners
`
`PEM SH
`
`5,023,068
`
`8/16/2016
`
` Not eligible
`
`Metal fasteners, namely, nuts
`
`PEM SH and
`design
`
`5,023,067
`
`8/16/2018
`
` Not eligible
`
`Metal fasteners, namely, nuts
`
`PEM VM
`
`5,305,895
`
` 10/10/2017
`
` Not eligible
`
`PEM SMPP
`
`5,055,266
`
`10/4/2018
`
` Not eligible
`
`Metal fasteners, namely, self-
`clinching fasteners, metal
`base plates and self-clinching
`fasteners pre-installed into
`base plates
`Metal fasteners, namely, nuts
`
`
`
`24.
`
`The date on which each of the above-listed Registrations became incontestable
`
`under the Lanham Act is also listed in Table I.
`
`25.
`
`All of PennEngineering’s registered trademarks identified above are collectively
`
`referred to as the “PEM Family of Marks.”
`
`
`
`7
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 8 of 32
`
`26.
`
`Each of the federal registrations for the PEM Family of Marks is owned by PEM
`
`Management, Inc. PennEngineering is the exclusive licensee of all rights in said marks and said
`
`federal registrations.
`
`27.
`
`Since at least as early as 1946, PennEngineering has also used the trademark and
`
`tradename Penn Engineering in commerce to advertise, promote and sell its fastener products
`
`and accessories, and to identify and distinguish its goods from the goods of other companies.
`
`PennEngineering’s Additional Famous Trademarks
`
`28.
`
`In addition to the PEM Family of Marks, PennEngineering owns more than 100
`
`other federally-registered and common law marks including the marks listed in Table II:
`
`Mark
`
`Registration
`Number
`
` 1,400,893
`
`Table II
`Registration
`Incontestability
`Date
`Date
`
` 12/30/1991
`
` 7/15/1986
`
`Goods & Services
`
` Floating fasteners
`
`
`“Double Square 1”
`
`
`
`
`“Double Square 2”
`
` 3,404,061
`
` 4/1/2008
`
` 4/16/2018
`
`Metal floating fasteners
`
`
`
`29.
`
`The date on which each of the above-listed Registrations became incontestable
`
`under the Lanham Act is also listed in Table II.
`
`30.
`
`PennEngineering’s registered trademarks identified in Table II are collectively
`
`referred to as the “Double Square Marks.”
`
`31.
`
`Each of the federal registrations for the Double Square Marks is owned by PEM
`
`Management, Inc. PennEngineering is the exclusive licensee of all rights in said marks and said
`
`federal registrations.
`
`
`
`8
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 9 of 32
`
`32.
`
`In addition, PennEngineering owns dozens of common law marks for its fasteners
`
`including the following:
`
`Common Law Mark
`
`Table III
`
`A4, AC, AS, B, BS, CLA, CLS, CLSS, FE, FEO, FEOX,
`FEX, H, HNL, KF2, KFS2, LA4, LAC, LAS, LK, LKA,
`LKS, S, SS, S-RT, SFN, SH, SL, SMPS, SMPP, SMTSO,
`SMTSOB, SP, U, UL, WN, WNS
`
`MPP, TK4, TKA, TPS, TP4, TPXS
`BSO, BSO4, BSOA, BSOS CSOS, CSS, DSO, DSOS,
`KFB3, KFE, KFSE, KSSB, MSO4, MSOFS, SKC,
`SMTSS, SO, SO4, SOA, SOS, SOAG, SOSG, SSA, SSC,
`SSS, TSO4, TSO, TSOA, TSOS
`CFN, PL, PLC
`CFHA, CFHC, CHA, CHC, FH, FH4, FHA, FHP, FHS,
`FHL, FHLS, FHX, HF109, HFE, HFG8, HFH, HFHB,
`HFHS, HFLH, KFH, SGPC, TFH, TFHS, THFE
`F, F4
`HFCB
`MSIB
`PEM C.A.P.S., PF10, PF11, PF11M, PF11MF, PF11MW,
`PF12, PF12M, PF12MF, PF12MW, PF30, PF31, PF32,
`PF50, PF60, PF7M, PF7MF, PFC2, PFS2, PFC2P, PFC4,
`PFHV, PFK, PSHP, SMTPFLSM, SMTPR
`PSL2, PTL2
`RAA, RAS, SMTRA
`SCB, SCBJ, SCBR
`SF, SFP, SFK, SFW, SKC-F, T, T4, TS
`TD, TDO, VM
`
`
`
`
`
`Goods With Which the Marks
`Have Been Used
`
`Nuts
`
`Pins
`Standoffs
`
`Self-locking nuts
`Studs
`
`Flush fasteners
`Heat sink mounting system
`Inserts
`Panel screws and panel fastener
`assemblies
`
`Spring-loaded plunger assembly
`Right angle fasteners
`Clinch bolts
`Clinch fasteners
`Tie-mounts, hooks, mounts
`
`All of PennEngineering’s common law trademarks identified in Table III are collectively
`
`referred to as the Common Law Marks.
`
`Advertising, Marketing and Promotion of PennEngineering’s Marks
`
`33.
`
`Through PennEngineering's substantial marketing and advertising efforts, the
`
`PEM Family of Marks, Double Square Marks and Common Law Marks have become famous in
`
`
`
`9
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 10 of 32
`
`the fastening solutions industry, and recognized throughout the United States as a trademark of
`
`PennEngineering.
`
`34.
`
`The PEM Family of Marks, Double Square Marks, and Common Law Marks, and
`
`the extensive recognition and goodwill symbolized by the PEM Family of Marks, Double Square
`
`Marks, and Common Law Marks, are extremely valuable assets of PennEngineering.
`
`35.
`
`The PEM Family of Marks, Double Square Marks, and Common Law Marks
`
`represent PennEngineering's reputation as a producer of top quality fastener products and
`
`fastener installation equipment.
`
`36.
`
`Today, nearly all of PennEngineering's sales relate to fastener products and
`
`fastener installation equipment sold under the PEM Family of Marks.
`
`37.
`
`PennEngineering's fastener products and fastener installation equipment bearing
`
`the PEM Family of Marks, Double Square Marks, and Common Law Marks are sold throughout
`
`the entire world through an extensive network of distributors in the U.S. and dozens of foreign
`
`countries. PennEngineering currently has more than 120 distributors in 47 countries.
`
`38.
`
`PennEngineering’s fastener products and fastener installation equipment bearing
`
`the PEM Family of Marks, Double Square Marks, and Common Law Marks are also advertised,
`
`promoted and sold on its extensive interactive website www.pemnet.com. PennEngineering has
`
`operated this website since at least as early as 1996.
`
`39.
`
`PennEngineering’s fastener products and fastener installation equipment bearing
`
`the PEM Family of Marks, Double Square Marks, and Common Law Marks are also advertised,
`
`promoted and sold at national and international trade shows including the following: Pacific
`
`Design & Manufacturing; FABTECH; Composites Europe; mtex; MIDEST; International
`
`Fastener Expo; and, Manufacturing Indonesia.
`
`
`
`10
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 11 of 32
`
`40.
`
`PennEngineering’s fastener products and fastener installation equipment bearing
`
`the PEM Family of Marks, Double Square Marks, and Common Law Marks are also advertised,
`
`promoted and sold through numerous national and international trade journals including: Design
`
`News; Assembly; NASA Tech Briefs; Machine Design; Design World; Electronic Component
`
`News; Fabricator; Electronic Products; Thomas Register; Global Spec; Blech; BBR; Elektronik
`
`Automotive; Automobil Produktion; Industrie et Technologies; and Ingenieurs de l’Automobile.
`
`41. Many of PennEngineering’s distributors utilize PennEngineering’s automated
`
`catalog on its website. All authorized distributors are entitled to incorporate the same marketing
`
`information on its website that appears on PennEngineering’s website by linking the distributor’s
`
`website to PennEngineering’s website. This program allows the distributor to be absolutely sure
`
`that they always have the most up to date information running on its websites. This program is
`
`one more step to make PennEngineering’s customers aware that the only way they can be
`
`assured of getting genuine PEM fasteners is to go to a PEM authorized distributor.
`
`42.
`
`PennEngineering’s fastener products and fastener installation equipment bearing
`
`the PEM Family of Marks, Double Square Marks and Common Law Marks are also advertised,
`
`promoted and sold through independent technical representatives and its own direct
`
`sales/technical force.
`
`43.
`
`In Europe and Asia, PennEngineering’s authorized distributors also act as
`
`technical representatives who are also supported by PennEngineering’s direct representatives.
`
`44.
`
`All totaled, PennEngineering currently spends more than $1,200,000 per year
`
`advertising and promoting its PEM Family of Marks, Double Square Marks, and Common Law
`
`Marks in the United States and throughout the world.
`
`45.
`
`Over the past 10 years, PennEngineering has spent more than $10,000,000
`
`
`
`11
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 12 of 32
`
`advertising and promoting its PEM Family of Marks, Double Square Marks, and Common Law
`
`Marks.
`
`46.
`
`Thus, through extensive and continuous advertising and promotion, the PEM
`
`Family of Marks, Double Square Marks, and Common Law Marks have become famous
`
`throughout the United States and recognized to be the exclusive trademarks of PennEngineering.
`
`Defendant’s Trademark Infringement
`
`47.
`
`Recently, PennEngineering discovered that Defendant is unlawfully using marks
`
`that are identical to PennEngineering’s mark PEM and numerous of the Common Law marks, in
`
`connection with the sale of competing fastening products, and is also selling competing fastener
`
`products that have the same product configuration as protected by the Double Square Marks
`
`(collectively the “Infringing Marks”).
`
`48.
`
`Defendant is using the mark PEM as part of an online advertising campaign with
`
`Google Ads to sell competing fastener products. Defendant pays Google, LLC, and/or one of its
`
`subsidiaries, to display Defendant’s online advertisement when web users search for
`
`PennEngineering’s website. Defendant’s infringing online advertisement uses the mark PEM
`
`and falsely associates Defendant with the mark PEM. For example, in response to a Google
`
`Chrome query using the term “pem fasteners”, Defendant’s online advertisement is displayed at
`
`the top of the “hits” list as follows: “Pem Fasteners | Experts Since 1982 | Pencom Peninsula
`
`Components.” A true and correct screenshot from a Google Chrome search showing
`
`Defendant’s online advertisement used in its Google Ads campaign is attached hereto as Exhibit
`
`1.
`
`49.
`
` Defendant is also using the Infringing Marks on its interactive internet website
`
`www.pencomsf.com. True and correct screenshots of selected pages from Defendant’s website
`
`
`
`12
`
`

`

`Case 2:19-cv-00513-GEKP Document 1 Filed 02/05/19 Page 13 of 32
`
`www.pencomsf.com, which include the Infringing Marks, are attached hereto as Exhibits 2 and 3.
`
`50.
`
`For example, Defendant is also using t