`ESTTA1115385
`02/18/2021
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92076438
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`B & G Equipment Company, Inc.
`
`B & G EQUIPMENT COMPANY, INC.
`135 REGION SOUTH DRIVE
`JACKSON, GA 30233
`UNITED STATES
`Primary Email: trademarkdocketchica@us.dlapiper.com
`No phone number provided.
`
`Motion to Suspend for Civil Action
`
`Michael Geller
`
`michael.geller@dlapiper.com, ch.tm@dlapiper.com
`
`/Michael Geller/
`
`02/18/2021
`
`Attachments
`
`Airofog v BandG - Motion for Suspension 891.pdf(5145277 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Reg. No. 3,239,891
`
`In re:
`Sprayer Design
`Mark:
`August 28, 2006
`Filed:
`Registered: May 8, 2007
`
`AIROFOG USA, LLC,
`
`Petitioner,
`
`
`
` v.
`
`
`
`B&G EQUIPMENT COMPANY,
`
`
`
`Respondent.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Cancellation No.: 92076438
`
`MOTION FOR SUSPENSION
`
`Pursuant to 37 CFR § 2.117(a) and TBMP § 510.02(a), B&G Equipment Company
`
`(“B&G”), the owner of Registration No. 3,239,891 (the “Registration”), requests immediate
`
`suspension of the above-captioned proceeding (the “Cancellation”).
`
`On February 15, 2019, B&G filed a complaint in federal court in the Middle District of
`
`Florida against Petitioner, captioned B&G Equipment Company v. Airofog USA, LLC, Case No.
`
`8:19-cv-00403-CEH-AEP (the “Florida Litigation”). The Florida Litigation alleges claims for,
`
`inter alia, trademark infringement, false designation of origin, unfair competition, violations of
`
`the Florida Deceptive and Unfair Trade Practices Act, and unjust enrichment. B&G’s trademark
`
`infringement and unfair competition claims in the Florida Litigation center around Petitioner’s
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`unauthorized use of the trademark/trade dress depicted in the Registration. Pursuant to TBMP §
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`510.02(a), B&G attaches a copy of the file-stamped complaint in the Florida Litigation as
`
`Exhibit A.
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`EAST\114747473. 1
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`EAST\179437100.1
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`1
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`
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`On March 19, 2019, Petitioner filed its Answer in the Florida Litigation, claiming that the
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`Registration is invalid as “functional, generic, not inherently distinctive, ubiquitous, and [] not
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`[having] acquired secondary meaning.” Answer and Counterclaim, B&G Equipment Company v.
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`Airofog USA, LLC, Case No. 8:19-cv-00430-CEH-AEP, p. 13-14 (Mar. 19, 2019). A copy of
`
`Petitioner’s Answer and Counterclaim in the Litigation is attached as Exhibit B.
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`The Trademark Trial and Appeal Board (“TTAB”) may suspend a proceeding when the
`
`parties “are involved in a civil action that may have a bearing on the Board case.” TBMP §
`
`510.02(a). The Board will suspend the proceeding absent “unusual circumstances” if the
`
`proceeding “may have a bearing on the issues before the board.” TBMP § 510.02(a). The Board
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`policy is to favor suspension, even where the civil action involves matters outside the Board’s
`
`jurisdiction. TBMP § 510.02(a).
`
`The Florida Litigation involves Petitioner and B&G. In Florida Litigation, B&G alleges
`
`that Petitioner infringed the mark covered by the Registration, and Petitioner asserted a defense
`
`that the Registration is invalid. Thus, the Florida Litigation and issues in it bear directly and
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`substantially on this cancellation action against the Registration.
`
`Therefore, B&G requests suspension of this cancellation action until a final determination
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`of the Florida Litigation, as well as any and all appeals.
`
`//
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`//
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`//
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`//
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`//
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`EAST\179437100.1
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`2
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`
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`Dated: February 18, 2021
`
`
`
`Respectfully submitted,
`
`B&G EQUIPMENT COMPANY
`
`By:_/s/ Michael Geller
`Michael A. Geller
`DLA PIPER LLP (US)
`michael.geller@dlapiper.com
`444 West Lake Street, Suite 900
`Chicago, Illinois 60606-0089
`Telephone:
` 312.368.4000
`Facsimile:
` 312.251.2187
`
`Attorneys for B&G Equipment Co.
`
`EAST\179437100.1
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`3
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of this MOTION FOR SUSPENSION is being sent via
`courier, addressed to the correspondent of record:
`
`SUSAN J LATHAM
`FELDMAN & LATHAM, LLP D/B/A TRAILBLAZER
`1200 BRICKELL AVENUE, PENTHOUSE 1900
`MIAMI, FL 33131
`UNITED STATES
`slatham@trailblazerlaw.com; jfeldman@trailblazerlaw.com;
`lnguyen@trailblazerlaw.com; icervantes@trailblazerlaw.com; tm@trailblazerlaw.com
`
`/s/ Michael Geller
`Signature
`
`Michael Geller
`Name
`
`February 18, 2021
`Date of Signature
`
`EAST\179437100.1
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`4
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`
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`EXHIBIT A
`EXHIBIT A
`
`
`
`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 1 of 29 PageID 1
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`B&G EQUIPMENT COMPANY, INC.,
`
`Plaintiff,
`
`v.
`
`AIROFOG USA, LLC, a Florida limited
`liability company,
`
`Defendant.
`
`Civil Action No.
`
`COMPLAINT FOR DAMAGES, INJUNCTIVE
`RELIEF AND DEMAND FOR JURY TRIAL
`
`Plaintiff B&G Equipment Company, Inc. (“B&G” or “Plaintiff”) seeks legal and
`
`equitable remedies for violations of the Trademark Laws of the United States, 15 U.S.C. § 1051
`
`et seq. (also referred to as the “Lanham Act”). This action also asserts related state claims under
`
`both the statutory law and common law of the State of Florida. Defendant AiroFog USA, LLC
`
`(“Defendant”) is promoting, selling and offering for sale goods which are confusingly similar
`
`imitations of Plaintiff’s trademark goods, and such actions by Defendant additionally violate the
`
`express terms of the parties’ Settlement Agreement. Plaintiff seeks preliminary and permanent
`
`injunctive relief, equitable relief, monetary damages, attorney’s fees, and other necessary relief.
`
`In support of the aforementioned claims, Plaintiff alleges as follows:
`
`JURISDICTION AND VENUE
`
`1.
`
`This Court has subject matter jurisdiction over all causes of action set forth herein
`
`pursuant to 28 U.S.C. §§ 1331, 1332, 1338, and 1367, in that this is a civil action involving
`
`claims arising under the laws of the United States, and/or involving claims between parties with
`
`diversity of citizenship where the amount in controversy exceeds $75,000, wherein all other
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 2 of 29 PageID 2
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`state law claims are so related to claims within the Court’s original jurisdiction that they form
`
`part of the same case or controversy.
`
`2.
`
`This Court also has jurisdiction over the state law claims under the doctrine of
`
`supplemental jurisdiction, because the federal and state claims are based on the same operative
`
`facts, and judicial economy, convenience and fairness to the parties will result if this Court
`
`assumes and exercises jurisdiction over such state law claims.
`
`3.
`
`Venue is proper in this district pursuant to 28 U.S.C. §§ 1391, because, Defendant
`
`resides in this District, and because some or all of Defendant’s infringing activities set forth in
`
`this Complaint occurred within this District.
`
`PARTIES
`
`4.
`
`Plaintiff, B&G Equipment Company, Inc. (hereinafter referred to as “B&G”) is a
`
`Delaware corporation, having a principal place of business at 135 Region South Drive, Jackson,
`
`Georgia, 30233.
`
`5.
`
`B&G is a manufacturer and seller of various pest control products, such as
`
`sprayers and parts therefor, throughout the United States to both pest control specialists and the
`
`consuming public at large, and has been in the business of manufacturing and selling such
`
`products since 1949.
`
`6.
`
`Upon information and belief, Defendant is a Florida limited liability company
`
`with offices located at 15331 Flight Path Drive, Brooksville, Florida 34604.
`
`7.
`
`Upon information and belief, Defendant is a distributor of pest control products,
`
`including sprayers.
`
`8.
`
`Upon information and belief, Defendant distributes pest control products both
`
`within Florida and throughout the United States.
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`
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 3 of 29 PageID 3
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`FACTUAL BACKGROUND
`
`B&G’s Trade Dress
`
`9.
`
`B&G has been manufacturing and selling pest control products for over sixty-
`
`seven (67) years.
`
`10.
`
`One of B&G’s longest-running and most popular products is the B&G ‘Sprayer’
`
`(hereinafter the “Sprayer”). An image of the Sprayer is shown below:
`
`11.
`
`After its introduction in 1962, the Sprayer quickly became the corporate image
`
`and brand for B&G, and continues to represent B&G’s corporate image and brand to this day.
`
`12.
`
`The Sprayer comes in a variety of volumetric sizes (e.g., ½ Gallon, 1 Gallon, 2
`
`Gallon, etc.), but each size shares a common product configuration unique to B&G, including
`
`the following elements: (1) a cylindrical barrel; (2) circumferential rings extending around the
`
`barrel; (3) a slightly conical top member for the barrel; (4) a handle configuration incorporating
`
`a tubular gripping portion and a semicircular support member connecting the gripping portion to
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`
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 4 of 29 PageID 4
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`a pump portion of the barrel; (5) a sprayer wand with an obtusely angled tip portion; and (6) a
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`diagonal mounting pocket for the sprayer wand affixed to the barrel.
`
`13.
`
`By 2007, B&G had obtained two (2) Trademark Registrations on the Sprayer: (1)
`
`U.S. Reg. No. 3,210,240 (for the Sprayer including the words “B&G” stamped thereon) and (2)
`
`U.S. Reg. No. 3,239,891 (for the Sprayer body alone) (collectively, the “Trademark
`
`Registrations”). Copies of the Trademark Registrations are attached hereto as Exhibit A.
`
`14.
`
`The Trademark Registrations became incontestable on April 18, 2012 and January
`
`2, 2013, respectively. Copies of the U.S. Trademark Office’s Acceptances of B&G’s
`
`Declarations of Incontestability are attached hereto as Exhibit B.
`
`15.
`
`In addition to B&G’s federally registered rights as set forth in the Trademark
`
`Registrations, B&G has common law trademark and trade dress rights in the combination of
`
`unique and ornamental features that comprise the Sprayer, including: (1) a cylindrical barrel; (2)
`
`circumferential rings extending around the barrel; (3) a slightly conical top member for the
`
`barrel; (4) a handle configuration incorporating a tubular gripping portion and a semicircular
`
`support member connecting the gripping portion to a pump portion of the barrel; (5) a sprayer
`
`wand with an obtusely angled tip portion; and (6) a diagonal mounting pocket for the sprayer
`
`wand affixed to the barrel, which holds the sprayer wand generally upright when mounted on
`
`the barrel (collectively, the “Sprayer Trade Dress”).
`
`16.
`
`The Sprayer Trade Dress is purely aesthetic, and non-functional.
`
`17.
`
`B&G first sold a sprayer including all the elements of the Sprayer Trade Dress in
`
`1962.
`
`18.
`
`Since 1962, B&G has continuously and actively marketed sprayers including the
`
`Sprayer Trade Dress in interstate commerce.
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`EAST\164222765.7
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`
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 5 of 29 PageID 5
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`19.
`
`The Sprayer Trade Dress has acquired secondary meaning through over fifty (50)
`
`years of substantially continuous and exclusive use by B&G in the marketplace.
`
`20.
`
`Since B&G’s first sale in 1962, B&G has enjoyed the goodwill associated with
`
`the Sprayer Trade Dress, and greatly values such goodwill.
`
`21.
`
`Customers within the pest control industry associate the Sprayer Trade Dress
`
`exclusively with B&G.
`
`Defendant’s Copycat Products
`
`22.
`
`Upon information and belief, Defendant began selling a sprayer (hereinafter the
`
`“AF Sprayer”) with a design that blatantly copied the design of the B&G Sprayer at least as
`
`early as October 2014.
`
`23.
`
`Upon information and belief, prior to 2014, a Chinese company also called
`
`AiroFog (“AiroFog China”) had been trying to sell a sprayer similar in design to the AF Sprayer
`
`through various distribution channels in the United States.
`
`24.
`
`Upon information and belief, after failing to gain traction in the United States
`
`through standard distribution channels in the pest control industry, AiroFog China decided to set
`
`up its own U.S. distributor, namely, Defendant.
`
`25.
`
`Shown below are images of the B&G Sprayer (right) and the AF Sprayer (left)
`
`from 2016, arranged side-by-side.
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 6 of 29 PageID 6
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`26.
`
`As shown above, the design of the AF Sprayer was substantially identical to that
`
`of the B&G Sprayer in 2016.
`
`27.
`
`At the time the AF Sprayer was first introduced (2014), the B&G Sprayer had
`
`been on sale for over fifty (50) years, and B&G had accumulated substantial goodwill in the
`
`design of the Sprayer.
`
`28.
`
`The AF Sprayer includes all the features shown in the Trademark Registrations,
`
`with the exception of the word “B&G” on the barrel (which has been replaced with the word
`
`“AiroFog”).
`
`29.
`
`The AF Sprayer includes all the elements of the Sprayer Trade Dress.
`
`30.
`
`B&G and Defendant share the same channels of trade with respect to their
`
`products.
`
`31.
`
`B&G and Defendant have attended the same trade shows in the past.
`
`32.
`
`B&G and Defendant target the same end customers, namely, Pest Control
`
`Operators (PCOs).
`
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 7 of 29 PageID 7
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`33.
`
`Defendant is infringing, and will continue to infringe, B&G’s intellectual property
`
`rights in the Trademark Registrations, and in the Sprayer Trade Dress, unless enjoined by this
`
`Court.
`
`34.
`
`Upon information and belief, Defendant will continue to willfully infringe B&G’s
`
`intellectual property rights in the Trademark Registrations and Sprayer Trade Dress, unless
`
`enjoined.
`
`35. Many alternative ornamental designs exist in the marketplace for pest control
`
`products, such that Defendant did not need to copy the designs for B&G’s Sprayer in order to
`
`compete.
`
`36.
`
`Defendant’s copying of the design for B&G’s Sprayer permitted Defendant to
`
`make virtually no investment in product design and development with respect to the AF
`
`Sprayer, and also allowed Defendant to benefit from the substantial goodwill B&G has
`
`accumulated in the marketplace.
`
`37.
`
`Upon information and belief, Defendant introduced the AF Sprayer with an
`
`intention to trade off B&G’s long-standing goodwill, in order to cause confusion in the
`
`marketplace for pest control products, and to lead customers to believe that Defendant’s
`
`products are sponsored by, or affiliated with, B&G.
`
`The 2016 Litigation And Settlement
`
`38.
`
`In 2016, B&G brought claims against Defendant in this judicial district for, inter
`
`alia, trademark infringement and unfair competition. See B&G Equipment Co., Inc. v. AiroFog
`
`USA LLC, Case No. 8:16-cv-03432-CEH-MAP (the “2016 Litigation”).
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 8 of 29 PageID 8
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`39.
`
`The Court (Honorable Charlene Edwards Honeywell) dismissed the 2016
`
`Litigation on December 5, 2017 pursuant to a settlement between the parties. See ECF No. 33,
`
`2016 Litigation.
`
`40.
`
`The parties settlement of the 2016 Litigation was set forth in a written Settlement
`
`Agreement dated November 15, 2017 (the “Settlement Agreement”), attached hereto as Exhibit
`
`C.
`
`41.
`
`The Defendant expressly agreed to make material changes to specific ones of its
`
`products in the Settlement Agreement, including the AF Sprayer.
`
`42. With respect to the AF Sprayer, the Defendant agreed to mark the AF Sprayer as
`
`“Made In China” with vinyl, destructible labels.
`
`43.
`
`Section 3.3(a) of the Settlement Agreement specifically states:
`
`All stickers comprise vinyl, destructible labels, or some equivalent
`type of label which is tamper resistant, or which is made in such a
`manner so as not to be easily removable from the respective
`Products without destruction of the label itself. B&G agrees that the
`following types of labels are appropriate for use in connection with
`this sub-section: (i) Brady Defender™ destructible labels made by
`Brady (http://www.bradybrandprotection.com/), (ii) CAMCODE®
`destructible
`labels
`made
`by
`Horizons
`Inc.
`(https://www.camcode.com/), or (iii) NADCO® destructible vinyl
`labels [Material 7613] made by Nadco Tapes & Labels, Inc.
`(http://www.nadco-inc.com/index.html).
`
`44.
`
`The Defendant additionally expressly agreed to make the lengths of the wands for
`
`the AF Sprayer either 7 ½ or 17 ½ inches exactly.
`
`45.
`
`Section 3.4(a) of the Settlement Agreement specifically states:
`
`The lengths of the wands for the AF Sprayer shall be only 7 ½
`inches or 17 ½ inches, and shall not be interchangeable with wands
`for the current B&G Sprayer; The hose, trigger valve, and filter for
`the AF Sprayer shall not be interchangeable with the current B&G
`Sprayer; No parts for the AF Sprayer shall be interchangeable with
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 9 of 29 PageID 9
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`the B&G Sprayer, except for the parts shown in Exhibit C attached
`hereto…
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`46.
`
`As shown above, the Defendant also expressly agreed to make the wands not
`
`interchangeable with the wands for the B&G Sprayer.
`
`47.
`
`Defendant also expressly agreed to make the hose, trigger valve, and filter for the
`
`AF Sprayer not interchangeable with the B&G Sprayer.
`
`48.
`
`Finally, Defendant expressly agreed in the Settlement Agreement to make no
`
`parts for the AF Sprayer that would be interchangeable with the B&G Sprayer, except for a few
`
`limited parts listed in the Settlement Agreement which are not at issue in this case.
`
`Defendant’s Recent Actions
`
`49.
`
`Defendant has failed to adhere to the promises it made in the Settlement
`
`Agreement.
`
`50.
`
`Plaintiff recently learned that Defendant has breached the Settlement Agreement
`
`in several material ways, including but not limited to:
`
`a. using “Made in China” labels that are easily removable without destruction of the
`
`label;
`
`b. using wands for the AF Sprayer that are not exactly 7 ½ inches nor exactly 17 ½
`
`inches; and
`
`c. using parts for the AF Sprayer that are interchangeable with parts for the B&G
`
`Sprayer, including but not limited to the wands.
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 10 of 29 PageID 10
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`51.
`
`Below is an image of the “Made In China” label on an AF Sprayer; the label is
`
`already peeling off, and does not appear to be destructible in any manner:
`
`52.
`
`Below is an image of the wand of the AF Sprayer (top) compared to the wand of
`
`the current B&G Sprayer (bottom); the wands have identical lengths of 8 ½ inches:
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 11 of 29 PageID 11
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`53.
`
`Below is an image of the wand of the AF Sprayer disassembled; the parts shown
`
`are attachable to the B&G Sprayer, and thus interchangeable with the B&G Sprayer:
`
`54.
`
`In accordance with the notice provisions of Section 5.1 of the Settlement
`
`Agreement, Plaintiff notified Defendant in writing of the identified material breaches on
`
`December 14, 2018 and provided Defendant the thirty (30) days specified in the agreement to
`
`cure (the “Notice Letter”). A true and correct copy of the Notice Letter is attached hereto as
`
`Exhibit D.
`
`55.
`
`Defendant did not cure the material breaches referenced above by January 14,
`
`2019.
`
`56.
`
`In fact, Plaintiff heard nothing from Defendant in response to the Notice Letter
`
`until midday on January 14, 2019, when Defendant’s counsel contacted Plaintiff’s counsel to
`
`request an extension of time to address the issues raised in the Notice Letter.
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 12 of 29 PageID 12
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`57.
`
`The months of November through February are the peak sales time for pest
`
`control products.
`
`58.
`
`Despite this peak sales time, Plaintiff agreed to a limited extension of time of
`
`fourteen (14) days for Defendant to respond to the Notice Letter, in hopes that Defendant would
`
`cure the referenced material breaches, and that litigation would not be necessary.
`
`59.
`
`Defendant failed to cure the material breaches of the Settlement Agreement by
`
`January 28, 2019, and thus this litigation became necessary.
`
`60.
`
`Defendant continues to advertise and sell the AF Sprayer to this day, while
`
`touting the interchangeability of parts with the B&G Sprayer, and wand lengths greater than 7 ½
`
`and 17 ½ inches. Attached hereto as Exhibit E are pages from the website of distributor (Pest
`
`Management Supply) selling Defendant’s products. These pages advertise wand lengths of 8
`
`inches and 18 inches for the AF Sprayer, and also advertise AF Sprayer parts that “fit[] [both]
`
`AiroFog and B&G tanksprayers.”
`
`61.
`
`To protect its trademarks and other valuable intellectual property from further
`
`infringement by Defendant, and to seek relief for the ongoing irreparable harm caused by
`
`Defendant, Plaintiff has filed the present action.
`
`Trademark Infringement Under Section 32 of the Lanham Act
`
`COUNT I
`
`62.
`
`B&G restates and incorporates by reference Paragraphs 1 to 61 above, as if set
`
`forth fully in this Count.
`
`63.
`
`B&G owns all right, title and interest in and to the Trademark Registrations.
`
`64.
`
`Defendant is improperly and willfully infringing the Trademark Registrations in
`
`interstate commerce through the advertising, promotion, sale and distribution of the AF Sprayer.
`
`65.
`
`The AF Sprayer is a counterfeit copy of B&G’s genuine Sprayer.
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 13 of 29 PageID 13
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`66.
`
`Defendant’s use in interstate commerce of the product designs that are virtually
`
`identical to the product configuration described in the Trademark Registrations is likely to cause
`
`confusion or deception of consumers as to the source, origin, or sponsorship of the products in
`
`violation of Section 32 of the Lanham Act (15 U.S.C. § 1114). Particularly, customers are
`
`likely to purchase Defendant’s sprayer products believing them to be those of B&G, thereby
`
`resulting in a loss of goodwill and sales to B&G.
`
`67.
`
`Defendant’s conduct constitutes trademark infringement in violation of Section 32
`
`of the Lanham Act, 15 U.S.C. § 1114.
`
`68.
`
`As a direct and proximate result of Defendant’s conduct, B&G has been, and is
`
`likely to be, substantially injured in its business including harm to its goodwill and reputation
`
`and the loss of revenues and profits.
`
`69.
`
`B&G has no adequate remedy at law, and unless enjoined by this Court,
`
`Defendant will continue to engage in such acts of trademark infringement, to the irreparable
`
`damage and injury of B&G.
`
`70.
`
`Upon information and belief, Defendant has engaged in the above-referenced acts
`
`of trademark infringement with full knowledge of B&G’s exclusive rights in the Trademark
`
`Registrations, and Defendant continues in such acts of intentional infringement, thus making
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`this case exceptional and entitling B&G to an award of treble its actual damages, plus attorneys’
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`fees in bringing and maintaining this action.
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 14 of 29 PageID 14
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`COUNT II
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`Unfair Competition by False Designation of Origin Under Section 43(a) of the Lanham Act
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`71.
`
`B&G restates and incorporates by reference Paragraphs 1 to 61 above, as if set
`
`forth fully in this Count.
`
`72.
`
`The designs reflected in the Trademark Registrations acts as indicators of source
`
`and/or origin, and have acquired distinctiveness via secondary meaning.
`
`73.
`
`The Trademark Registrations are valid and subsisting, and incontestable.
`
`74.
`
`The designs reflected in the Trademark Registrations are non-functional and
`
`distinctive in the minds of the relevant purchasers of B&G’s goods and services as being
`
`associated exclusively with B&G.
`
`75.
`
`The Sprayer Trade Dress collectively operates as an indicator of source and/or
`
`origin, and has acquired distinctiveness via secondary meaning.
`
`76.
`
`The Sprayer Trade Dress is valid and subsisting, and has been in continuous and
`
`exclusive use throughout the United States, by B&G, since at least as early as 1962.
`
`77.
`
`The Sprayer Trade Dress is non-functional and distinctive in the minds of the
`
`relevant purchasers of B&G’s goods and services as being associated exclusively with B&G.
`
`78.
`
`Defendant, through their use, display and copying of the designs of B&G’s unique
`
`products (including the Sprayer), has without authorization, in connection with their goods
`
`and/or services in commerce, made or contributed to the making of false designations of origin,
`
`false or misleading descriptions of fact, and/or false or misleading representations of fact, which
`
`are likely to cause confusion, mistake, or to deceive as to the affiliation, connection or
`
`association of Defendant with B&G, and/or as to the origin, sponsorship or approval of
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`Defendant’s goods and/or services, in violation of Section 43(a)(1)(A) of the Lanham Act (15
`
`U.S.C. § 1125(a)(1)(A)).
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 15 of 29 PageID 15
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`79.
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`Consumers are likely to purchase pest control products such as AF Sprayer from
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`Defendant believing that Defendant is affiliated, connected or associated with B&G, resulting in
`
`a loss of goodwill to B&G.
`
`80.
`
`Defendant’s acts as set forth herein constitute unfair competition, and/or induce or
`
`contribute to acts of unfair competition.
`
`81.
`
`Defendant’s unfair acts have been committed in bad faith and with the intent to
`
`cause confusion, mistake and/or to deceive.
`
`82.
`
`As a direct and proximate result of Defendant’s conduct, B&G has been, and is
`
`likely to be, substantially injured in its business including harm to its goodwill and reputation
`
`and the loss of revenues and profits.
`
`83.
`
`B&G has no adequate remedy at law because the designs reflected in the
`
`Trademark Registrations and in the Sprayer Trade Dress are unique and represent to the public
`
`B&G’s identity, reputation, and goodwill, such that damages alone cannot fully compensate
`
`B&G for Defendant’s misconduct.
`
`84.
`
`Unless enjoined by this Court, Defendant and those acting in concert with them
`
`will continue to infringe B&G’s intellectual property rights, to B&G’s irreparable injury. This
`
`threat of future injury to B&G’s business identity, goodwill, and reputation requires injunctive
`
`relief to prevent Defendant’s continued use of the designs reflected in the Trademark
`
`Registrations and in the Sprayer Trade Dress, and/or product configurations confusingly similar
`
`thereto, and to ameliorate and mitigate B&G’s injuries.
`
`85.
`
`Upon information and belief, Defendant has engaged in the above-referenced acts
`
`of unfair competition with knowledge of B&G’s exclusive rights, and Defendant will continue
`
`in such acts unless enjoined by this Court.
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 16 of 29 PageID 16
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`COUNT III
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`Unfair Competition (Florida Common Law)
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`86.
`
`B&G restates and incorporates by reference Paragraphs 1 through 61 above, as if
`
`set forth fully in this Count.
`
`87.
`
`B&G owns and enjoys common law trademark rights in the shape and design of
`
`its products (including those designs reflected in the Trademark Registrations, and in the
`
`Sprayer Trade Dress) in the State of Florida and throughout the United States.
`
`88.
`
`The designs reflected in the Trademark Registrations, and in the Sprayer Trade
`
`Dress operate as indicators of source and/or origin, particularly when used in interstate
`
`commerce. Moreover, these designs have acquired distinctiveness via secondary meaning.
`
`89.
`
`Defendant, through their use, display and copying of the designs reflected in the
`
`Trademark Registrations, and in the Sprayer Trade Dress, has without authorization, in
`
`connection with their goods and/or services in commerce, made or contributed to the making of
`
`false designations of origin, false or misleading descriptions of fact, and/or false or misleading
`
`representations of fact, which are likely to cause confusion, mistake, or to deceive as to the
`
`affiliation, connection or association of Defendant with B&G, and/or as to the origin,
`
`sponsorship or approval of Defendant’s goods and services in violation of the common law of
`
`the State of Florida.
`
`90.
`
`Consumers are likely to purchase pest control products from Defendant believing
`
`that Defendant is affiliated, connected or associated with B&G, resulting in a loss of goodwill to
`
`B&G.
`
`91.
`
`Defendant’s acts as set forth herein constitute unfair competition, and/or induce or
`
`contribute to acts of unfair competition.
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 17 of 29 PageID 17
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`92.
`
`Defendant’s unfair acts have been committed in bad faith and with the intent to
`
`cause confusion, mistake and/or to deceive.
`
`93.
`
`As a direct and proximate result of Defendant’s conduct, B&G has been, and is
`
`likely to be, substantially injured in its business including harm to its goodwill and reputation
`
`and the loss of revenues and profits.
`
`94.
`
`Upon information and belief, Defendant’s acts of unfair competition are, and have
`
`been, oppressive, fraudulent and malicious, thus entitling B&G to punitive damages.
`
`95.
`
`B&G has no adequate remedy at law because the designs reflected in the
`
`Trademark Registrations, and in the Sprayer Trade Dress, are unique and represent to the public
`
`B&G’s identity, reputation, and goodwill, such that damages alone cannot fully compensate
`
`B&G for Defendant’s misconduct.
`
`96.
`
`Unless enjoined by this Court, Defendant and those acting in concert with them
`
`will continue to infringe B&G’s intellectual property rights, to B&G’s irreparable injury. This
`
`threat of future injury to B&G’s business identity, goodwill, and reputation requires injunctive
`
`relief to prevent Defendant’s continued use of the designs reflected in the Trademark
`
`Registrations, and the Sprayer Trade Dress, and/or product configurations confusingly similar
`
`thereto, and to ameliorate and mitigate B&G’s injuries.
`
`97.
`
`Upon information and belief, Defendant has engaged in the above-referenced acts
`
`of unfair competition with knowledge of B&G’s exclusive intellectual property rights, and
`
`Defendant will continue in such acts unless enjoined by this Court.
`
`Violation Of Florida Deceptive And Unfair Trade Practices Act
`
`COUNT IV
`
`98.
`
`B&G restates and incorporates by reference Paragraphs 1 through 61 above, as if
`
`set forth fully in this Count.
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 18 of 29 PageID 18
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`99.
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`Defendant’s use of the designs reflected in the Trademark Registrations, and the
`
`Sprayer Trade Dress, or colorable imitations thereof, constitute deceptive and unfair practices
`
`under Florida’s Deceptive and Unfair Trade Practices Act (F.S.A. § 501.201 et seq.).
`
`100.
`
`Specifically, Defendant’s use of the designs reflected in the Trademark
`
`Registrations, and the Sprayer Trade Dress, and attempt to profit from the sale of the Infringing
`
`Products to third parties go against public policy and are immoral, unethical, oppressive,
`
`unscrupulous, and substantially injurious to consumers.
`
`101. As a direct result of Defendant’s deceptive and unfair practices, B&G has been,
`
`and continues to be, damaged by Defendant’s use of the designs reflected in the Trademark
`
`Registrations, and the Sprayer Trade Dress, and attempts to profit from the sale of the Infringing
`
`Products.
`
`COUNT V
`
`Unjust Enrichment
`
`102. B&G restates and incorporates by reference Paragraphs 1 through 61 above, as if
`
`set forth fully in this Count.
`
`103. B&G has invested substantial time, labor and money in the design and production
`
`of the B&G Sprayer.
`
`104. Defendant has wrongfully misappropriated the unique features of the B&G
`
`Sprayer (as reflected in the Trademark Registrations, and the Sprayer Trade Dress), and has
`
`profited from and received certain other benefits as a result of such wrongful misappropriation.
`
`105. Defendant has been unjustly enriched at B&G’s expense.
`
`106.
`
`It would be inequitable to allow Defendant to retain the profits and other benefits
`
`it acquired through its wrongful actions.
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`EAST\164222765.7
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`Case 8:19-cv-00403-CEH-AEP Document 1 Filed 02/15/19 Page 19 of 29 PageID 19
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`COUNT VI
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`Unfair Competition by False Advertising Under Section 43(a) of the Lanham Act
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`107.