Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1228291
`
`Filing date:
`
`08/10/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92080026
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Rapha Pharmaceuticals, Inc.
`
`RAPHA PHARMACEUTICALS INC
`7208 W SAND LAKE RD
`SUITE 305
`ORLANDO, FL 32819
`UNITED STATES
`Primary email: info@raphapharma.com
`407-362-7638
`
`Motion to Suspend for Civil Action
`
`Hector Molina
`
`hmolina@raphapharma.com
`
`/hectormolina/
`
`08/10/2022
`
`Motion to Suspend v1.pdf(163090 bytes )
`Case 62022cv01084.pdf(3533109 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`The Trademark Trial and Appeal Board
`
`
`
`Serial No. 86888489
`
`For the mark MORNING AFTER LEVONORGESTREL TABLET
`
`
`Auro Health LLC,
`
`Petitioner,
`
`vs.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92080026
`
`Registration No. 5263398
`
`Rapha Pharmaceuticals, Inc.,
`
`Respondent.
`
`
`
`
`
`RESPONDENT’S MOTION TO SUSPEND PROCEEDINGS PURSUANT TO 37 C.F.R. § 2.117(a)
`
`INTRODUCTION
`
`Rapha Pharmaceuticals, Inc. (“Respondent”) hereby moves to suspend proceedings related to this
`
`Petition for Cancellation, pursuant to 37 C.F.R. § 2.117(a), pending determination of a case in United States
`
`District Court for the Middle District of Florida entitled Auro Health LLC v. Rapha Pharmaceuticals, Inc.,
`
`case 6:2022cv01084 (“Federal Court Action”).
`
`As explained in more detail below, the Petition for Cancellation involves the same basic trademark
`
`issues relating to the Respondent’s registration of the mark MORNING AFTER LEVONORGESTREL
`
`TABLET (“Trademark”) as shown in Registration No. 5,263,398 as were raised in the Federal Court
`
`Action.
`
`As will be shown, the issues raised in the Federal Court Action regarding Respondent’s Trademark
`
`may have a bearing on this proceeding and therefore warrant suspension of this proceeding pursuant to 37
`
`C.F.R. § 2.117(a).
`
`
`
`1
`
`

`

`NATURE OF THE PROCEEDING
`
`Petitioner Auro Health, LLC (“Petitioner”) has petitioned to cancel Respondent’s registration of
`
`Respondent’s Trademark in a bad faith attempt by Petitioner to be absolved of its contractual and fiduciary
`
`duties to protect Respondent’s Trademark, as Respondent's contract manufacturer, for goods manufactured
`
`by Petitioner for Respondent.
`
`
`
`STATEMENT OF FACTS
`
`Petitioner acknowledged Respondent's registered Trademark in a contract manufacturing
`
`agreement entered into by and between Petitioner and Respondent on March 22, 2018 without making any
`
`objections thereto. Petitioner filed the Federal Court Action against Respondent on June 22, 2022 with the
`
`exact same Trademark issues raised in Petitioner’s Petition for Cancellation filed with the TTAB on June
`
`28, 2022 and yet failed, in bad faith, to notify the board immediately.
`
`
`
`LEGAL GROUNDS FOR MOTION TO SUSPEND UNDER 37 CFR 2.117(A)
`
`A motion to suspend is governed by 37 CFR § 2.117(a) which provides:
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a party or
`
`parties to a pending case are engaged in a Federal Court Action or another Board proceeding which
`
`may have a bearing on the case, proceedings before the Board may be suspended until termination
`
`of the Federal Court Action or the other Board proceeding.
`
`See also TBMP § 510.02(a).
`
`In the absence of unusual circumstances, the Board will suspend a proceeding if the final
`
`determination of the other proceeding may have a bearing on the issues before the Board. There is
`
`
`
`2
`
`

`

`no requirement the determination will likely be dispositive of the Board proceeding but only that it
`
`may have a bearing on the proceeding. See TBMP § 510.02(a) citing, in part, New Orleans
`
`Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011).
`
`
`
`ARGUMENT
`
`THIS PROCEEDING SHOULD BE SUSPENDED BECAUSE THE DECISION IN THE
`
`FEDERAL COURT ACTION MAY HAVE A BEARING ON THIS PROCEEDING
`
`
`
`The Decision in the Federal Court Action may have a bearing on this proceeding. The final
`
`adjudication of the Federal Court Action clearly may have a bearing on this proceeding in that it may have
`
`an impact on the ownership of the mark, the scope of protection, and strength of the mark, the claims and
`
`defenses available to the parties, the evidence to be submitted and other factors to be considered by the
`
`Board. The ultimate determination of the matter could also provide evidence to support additional grounds
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`for Cancellation just as it could also preclude certain additional grounds for Cancellation.
`
`In addition, the granting of this motion could avoid premature and unnecessary discovery regarding
`
`currently unresolved issues about the Respondent’s Mark that may be resolved in the Federal Court Action.
`
`As noted, the relevant allegations in Petition for Cancellation are essentially identical to those in
`
`the Federal Court Action and may have a bearing upon this Petition and warrants suspension of this
`
`proceeding.
`
`
`
`3
`
`

`

`CONCLUSION
`
`For all the reasons set forth above, Respondent respectfully submits the Federal Court Action may
`
`have a bearing on this proceeding and therefore should be suspended until final determination of the civil
`
`action pursuant to 37 C.F.R. § 2.117(a).
`
`
`
`Dated: August 10, 2022
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/ Hector Molina /
`Hector Molina
`Chief Operations Officer
`7208 W. Sand Lake Rd., Suite 305
`Orlando, FL 32819
`(956) 229-0049
`hmolina@raphapharma.com
`
`4
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`The Trademark Trial and Appeal Board
`
`
`
`Serial No. 86888489
`
`For the mark MORNING AFTER LEVONORGESTREL TABLET
`
`
`Auro Health LLC,
`
`Petitioner,
`
`vs.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Cancellation No. 92080026
`
`Registration No. 5263398
`
`Rapha Pharmaceuticals, Inc.,
`
`Respondent.
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I HEREBY CERTIFY that I caused a copy of the foregoing this MOTION TO SUSPEND to be
`
`served, via first class mail, postage prepaid this 10th of August 2022, upon:
`
`Name: Auro Health LLC
`Correspondence: SANDRA J. WUNDERLICH
`TUCKER ELLIS LLP
`100 SOUTH 4TH STREET, SUITE 600
`ST. LOUIS, MO 63102
`
`
`
`
`
`Dated: August 10, 2022
`
`
`
`
`
`5
`
`/ Hector Molina /
`Hector Molina
`Chief Operations Officer
`7208 W. Sand Lake Rd., Suite 305
`Orlando, FL 32819
`(956) 229-0049
`hmolina@raphapharma.com
`
`

`

`Case 6:22-cv-01084-WWB-DCI Document 5 Filed 06/22/22 Page 1 of 2 PagelD 439
`
`AO 440 (Rev. 06/12) Summonsin a Civil Action
`
`UNITED STATES DISTRICT COURT
`for the
`Middle District of Florida
`
`[|
`
`AURO HEALTH LLC
`
`Plaintiff(s)
`Vv.
`
`RAPHA PHARMACEUTICALS,INC.
`
`aeeaed
`
`Defendant(s)
`
`bb lailgo-
`Date:
`Time:18/39pm
`SUMMONSIN A CIVIL acide itia is.Gc#d5UO
`
`Civil Action No. 6:22-cv-1084-WWB-DCI
`
`|
`
`!
`
`To: (Defendant's name and address)
`
`Rapha Pharmaceuticals,Inc.,
`Serve: Michael Shoffner
`7208 W. Sand Lake Road, Suite 305
`Orlando, FL 32819
`
`A lawsuit has been filed against you.
`
`Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
`are the United States or a United States agency, or an officer or employee of the United States described inFed,R.Civ,
`P12 (a)(2) or (3) — you mustserve onthe plaintiff an answer to the attached complaint or a motion under Rule 12 of
`the Federal Rules of Civil Procedure. The answer or motion must be served onthe plaintiff or plaintiff's attorney,
`whose nameand addressare: SpencerH. Silvergiate, P.A.
`CLARKE SILVERGLATE, P.A.
`799 Brickell Plaza, Suite 900
`Miami, Florida 33131
`T: (305) 377-0700
`ssilverglate@cspalaw.com
`
`If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
`You also mustfile your answer or motion with the court.
`
`Date:
`
`June 22, 2022
`
`CLERK OF COURT
`
`Signature ofClerk or Deputy Clerk
`
`

`

`, Case 6:22-cv-01084-WWB-DCI Document 5 Filed 06/22/22 Page 2 of 2 PagelD 440
`
`AO 440 (Rev. 06/12) Summonsina Civil Action (Page 2)
`
`Civil Action No. 6:22-cv-1084-WWB-DCl
`
`(This section should not befiled with the court unless required by Fed_R, Ciy. P. 4 ())
`
`PROOF OF SERVICE
`
`This summonsfor (nameofindividual andtitle, ifany)
`
`wasreceived by me on (date)
`
`(1 I personally served the summonsonthe individualat (place)
`
`on (date)
`
`; or
`
`7 I left the summonsat the individual’s residence or usual place of abode with (name)
`
`On (date)
`
`, and mailed a copy to the individual’s last known address; or
`
`, a person of suitable age and discretion whoresidesthere,
`
`© I served the summonson (nameofindividual)
`
`designated by law to accept service of process on behalf of (name oforganization)
`
`on (date)
`
`; or
`
`© I returned the summons unexecuted because
`
`C Other(specify):
`
`, who is
`
`3; or
`
`Myfees are $
`
`for travel and $
`
`for services, for a total of $
`
`0.00
`
`I declare under penalty of perjury that this informationistrue.
`
`Date:
`
`Server's signature
`
`
`
`Printed name andtitle
`
`Server's address
`
`Additional information regarding attempted service,etc:
`
`

`

`Case 6:22-cv-01084 Documenti Filed 06/21/22 Page 1 of 28 PagelD 1
`
`THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`AURO HEALTH LLC,
`
`Civil Action No. 22-1084
`
`Plaintiff,
`
`v.
`
`RAPHA PHARMACEUTICALS, INC.,
`
`Defendant.
`
`
`COMPLAINT
`
`Plaintiff Auro Health LLC (“Auro Health” or “Plaintiff’) brings this action against Rapha
`
`Pharmaceuticals, Inc. (“Rapha”or “Defendant”), and alleges as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is a civil action at law and equity arising under the United States Trademark
`
`Act of 1946, 15 U.S.C. §§ 1051 et seq. (the “Lanham Act”) and the Declaratory Judgment Act,
`
`28 U.S.C. §§ 2201 and 2202 in which Auro Health seeks a declaratory judgment as to its
`
`non-infringement of trademark rights asserted by Rapha as well as a declaratory judgmentas to
`
`the non-enforceability and invalidity of any alleged trademark or trade dress rights asserted by
`
`Rapha. Thisis also an action for: (i) violation of federal unfair competition law,(ii) violation of
`
`state law unfair competition law;(iii) intentional interference with business relationships; and(iii)
`
`trade libel. Auro Health has been forced to seek judicial assistance because Rapha submitted a
`
`spurious allegation of infringement to Amazon, which caused Amazon to delist one of Auro
`
`Health’s best-selling products on its platform. Even though Amazonreinstated the product within
`
`days after determining that Rapha’s allegations of infringement were unfounded, Rapha has
`
`indicated it plans to continue its efforts to harm Auro Health by pressing Amazonto delist Auro
`
`

`

`Case 6:22-cv-01084 Documenti Filed 06/21/22 Page 2 of 28 PagelD 2
`
`Health’s products, by notifying distributors, platforms, and retailers of the unfounded accusations
`
`of infringement, and seeking to initiate regulatory proceedings to prevent Auro Health’s sales of
`
`its products.. Auro Health has suffered harm-through-the-delisting- of its product-without due
`
`process in the form oflost sales, lost customers, tarnishmentof its standing as an Amazonseller,
`
`and stands to suffer even more harm to its business in the form of damageto its relationships with
`
`distributors, platforms, and retailers if Rapha’s smear campaign is allowed to continue unabated.
`
`PARTIES
`
`2.
`
`Auro Healthis a limited liability company organized underthe lawsof the State of
`
`NewJersey, having an address andprincipal place of business at 279 Princeton Hightstown Road,
`
`East Windsor, NJ 08520.
`
`3.
`
`Uponinformation andbelief, Rapha is a corporation incorporated under the laws
`
`of the State of Florida, having an address and principal place of business at 7208 W. Sand Lake
`
`Road, Suite 305, Orlando, FL 32819.
`
`JURISDICTION AND VENUE
`
`4.
`
`This Court has jurisdiction over the subject matter of this action pursuant to
`
`28 U.S.C. §§ 1331, 1332, and 1338, and 15 U.S.C. § 1121 in that the parties are citizens of different
`
`states and the matter in controversy exceeds the sum or value of $75,000. Moreover, this matter
`
`involves claims arising under the Lanham Act. The Court has supplemental jurisdiction over the
`
`commonlaw claims under 28 U.S.C. § 1367.
`
`5.
`
`This Court has personal jurisdiction over Rapha becauseit is a Florida corporation
`
`andits principal place of businessis in Florida.
`
`6.
`
`Venueis properin this district and division pursuantto 28 U.S.C. § 1391, 28 U.S.C.
`
`§ 1400(b).
`
`

`

`Case 6:22-cv-01084 Documenti1 Filed 06/21/22 Page 3 of 28 PagelD 3
`
`BACKGROUND FACTS
`
`A. The Parties
`
`7:
`
`Auro Health is-a pharmaceutical company offering a variety of over-the-counter
`
`products through e-commerce websites and retailers throughout the United States.
`
`8.
`
`Raphais a pharmaceutical company offering over the counter products through e-
`
`commerce websites andretailers.
`
`B. Auro Health’s Levonorgestrel Products
`
`9.
`
`Amongother products, Auro Health currently offers levonorgestrel, an emergency
`
`contraceptive that is commonly referred to as the morning after pill, under the brand name “E-
`
`Con® Morning After” (“E-Con®”) on e-commercesites andat retailers nationwide.
`
`10.
`
`Auro Health ownsall right, title, and interest in the United States Trademark
`
`Registration No. 6,309,989 for E-CON. A true and correct copy ofits Certificate of Registration
`
`is attached hereto as Exhibit A.
`
`11.
`
`E-CONis registered for use in connection with “pharmaceutical preparation for
`
`emergency contraception and reproductive health.” Ex. A.
`
`12._Before offering the E-Con® product to customersin the United States, Auro Health
`
`submitted its proposal to use “E-Con® Morning After” to the FDA for approval as required so that
`
`the FDA can ensure that there is no likelihood of confusion between the names of existing
`
`medicines and the proposed nameofthe product.
`
`13.
`
`The FDA approved Auro Health’s use of “E-Con® Morning After” for sale of
`
`levonorgestrel in the United States.
`
`14.
`
`Auro Health is preparing to launch another levonorgestrel product for sale at
`
`retailers and e-commerce sites under
`
`®
`the brand name “FemChoice* Morning After”
`
`(“FemChoice®”’).
`
`

`

`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 4 of 28 PagelD 4
`
`15.
`
`Auro Health ownsall right, title, and interest in the United States Trademark
`
`Application No. 88,653,282 for FEMCHOICE, which has been allowed and published by the
`
`United States Patent and Trademark Office (“USPTO”), and upon submission of a specimen, will
`
`mature into a registration. A true and correct copy of the Notice of Allowanceis attached hereto
`
`as Exhibit B.
`
`16.
`
`Similar to E-CON, FEMCHOICEis registered for use in connection with
`
`“pharmaceutical preparation for emergency contraception and reproductive health.” Ex. B.
`
`17.
`
`As required, Auro Health also submitted the name “FemChoice® Morning After”
`
`to the FDA for approvalso that the FDA can ensurethat there is no likelihood ofconfusion between
`
`the namesof existing medicines and the proposed nameofthe product.
`
`18.|The FDA approved Auro Health’s use of “FemChoice® Morning After”forsale of
`
`levonorgestrel in the United States.
`
`19.|The FDA found nolikelihood of confusion between Auro Health’s use of E-Con®
`
`Morning After and FemChoice® MorningAfter even though the FDApreviously authorized Rapha
`
`to use “Morning After”forits sale of levonorgestrel in the United States. A true and correct copy
`
`of the FDA Proprietary Name Search Results is attached as Exhibit C.
`
`C. The Prosecution History of Rapha’s Claimed Trademark Rights
`
`20.
`
`On March13, 2015, Raphafiled Application No. 86,562,865 to register “Morning
`
`After” as a trademark for oral contraceptives and contraceptive preparations with the USPTO. A
`
`true and correct copy ofits application is attached hereto as Exhibit D.
`
`21.
`
`On June 25, 2015,
`
`the USPTO examiner issued an Office Action refusing
`
`registration ofthe mark as descriptive in violation ofthe Trademark Act Section 2(e)(1), 15 U.S.C.
`
`§1052(e)(1). A true and correct copy of the Office Action is attached hereto as ExhibitE.
`
`

`

`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 5 of 28 PagelD 5
`
`22.
`
`In the June 25, 2015 Office Action, the USPTO examiner noted that in addition to
`
`the mark being descriptive, “the applied-for mark appears to be generic in connection with the
`
`identified goods, and therefore incapable of functioning as a source-identifier for applicant’s
`
`goods.” Ex. E.
`
`23.
`
`Inthe June 25, 2015 Office Action, the USPTO examinerexplained:
`
`[A}pplicant’s mark, “MORNING AFTER(stylized), merely describes the fact that
`applicant’s [products are] contraceptives. As demonstrated by the attached
`evidence from princeton.edu, webmd.com, google.com and plannedparenthood.org
`the common commercial name for emergency contraceptivepills is “morning after
`pills.” The applied-for goodsare oral contraceptives and contraceptive preparations
`and applicant’s specimen states that the goods are emergency contraceptives.
`Therefore applicant’s use of the wording “morning after” in connection with these
`types of contraceptives would merely be perceived by consumers [as] simply
`identifying the common commercial name for
`the goods,
`ie.,
`that
`the
`contraceptives are morning after emergency contraceptives.
`
`Ex. E.
`
`24.
`
`The USPTO examiner advised that an amendment to the Supplemental Register
`
`could not be recommendedbecause the mark appeared to be generic. Ex. E.
`
`25.
`
`Nonetheless, in response to the June 25, 2015 Office Action, Rapha amendedits
`
`Application to seek registration on the Supplemental Register. A true and correct copy of Rapha’s
`
`Response to the June 25, 2015 Office Action is attached hereto as Exhibit F.
`
`26.
`
`On January 19, 2016, the USPTO examinerissued another Office Action refusing
`
`registration of the mark on the Supplemental Register “because the applied-for mark is generic
`
`and thus incapable of distinguishing applicant’s services.” A true and correct copy of the January
`
`19, 2016 Office Action is attached hereto as Exhibit G.
`
`27.
`
`|The USPTO examiner explained that the wording “morningafter pill” is “widely
`
`used in the industry to refer to contraceptive preparations,” and in support of this conclusion
`
`

`

`Case 6:22-cv-01084 Documenti1 Filed 06/21/22 Page 6 of 28 PagelD 6
`
`included multiple examples of this commonusageincluding blogs, forums, and newsarticles. Ex.
`
`G.
`
`28.—Havingnothing to refute the USPTOexaminer’s evidence, Rapha failed to respond
`
`to this Office Action, and asa result, its Application was abandoned. A true and correct copy of
`
`the Abandonmentof the Application is attached hereto as Exhibit H.
`
`29.
`
`In spite of the overwhelming evidence that “morning after” is a generic term that
`
`cannot serve as a source identifier, Rapha continued its efforts to claim exclusive rights to use
`
`“morning after” for its emergency contraceptive.
`
`30.
`
`On January 27, 2016, Rapha filed Application No. 86,888,489 to register a stylized
`
`mark consisting of the words “MORNING AFTER LEVONORGESTREL TABLET1.5 MG.” A
`
`true and correct copy of the Application is attached hereto as ExhibitI.
`
`31.
`
`On May 18, 2016, the USPTO examiner issued an Office Action, among other
`
`things, requiring Raphato disclaim the wording “MORNING AFTER”and “TABLET” because
`
`it “merely describes a feature, purpose, or use of applicant’s goods, and thus is an unregisterable
`
`componentof the mark.” A true and correct copy of the May 18, 2016 Office Action is attached
`
`hereto as Exhibit J.
`
`32.
`
`The USPTO examinerattached similar evidence from princeton.edu, webmd.com,
`
`and plannedparenthood.org to demonstrate that “morning after” commonly refers to morning after
`
`pills as an emergency contraceptive. Ex. J.
`
`33.
`
`|The USPTO examinernoted that Rapha could not “claim exclusive rights to terms
`
`that others may needto use to describe their goods and/or services in the marketplace.” Ex. J.
`
`34.
`
`As required, Rapha modified its application to disclaim the exclusive right to use
`
`“morning after” and “tablet,” stating expressly: “No claim is made to the exclusive right to use
`
`

`

`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 7 of 28 PagelD 7
`
`‘MORNING AFTER’and ‘TABLET? apart from the mark as shown.Atrue and correct copy of
`
`
`
`
`
`37.|The USPTO examinerfurther noted that “background designs in composite marks
`
`Rapha’s Response to the May 18, 2016 Office Action is attached hereto as Exhibit K.
`
`35.
`
`Although the USPTOinitially approved the mark for publication, this approval was
`
`withdrawn on January 7, 2017 because the applied-for mark was determinedto be descriptive. A
`
`true and correct copy of the USPTO’s withdrawal of approval of the mark is attached hereto as
`
`Exhibit L.
`
`36.
`
`The
`
`USPTO
`
`examiner
`
`submitted
`
`evidence
`
`demonstrating
`
`that
`
`“LEVONORGESTREL”is the generic term for the goods, and is incapable of serving as a source
`
`identifier. Ex. L.
`
`consisting of common geometric shapes, such ascircles,” are generally not regarded as marks for
`
`goods absent a showing of distinctiveness in the design alone. Ex. L.
`
`38.
`
`The USPTO examiner concludedbystating:
`
`In this case, the applied-for mark feature[s] a pink semicircle above the word
`“MORNING.” However, this common geometric shape is merely a background
`design which is incapable of identifying and distinguishing a particular source of
`goods. Therefore, applicant’s addition of a design element does [not] change
`applicant’s descriptive mark under Section 2(e)(1) into a non-descriptive one.
`
`AFTER
`mark MORNING
`applied-for
`the
`because
`Therefore,
`LEVONORGESTREL TABLETis merely descriptive of the applicant’s goods,
`registration is refused under Trademark Act Section 2(e)(1).
`
`Ex, L.
`
`39.
`
`Following multiple exchanges between Rapha and the examiner,
`
`the USPTO
`
`examiner entered an Amendmentto the Application describing the mark as:
`
`stylized words “MORNING AFTER LEVONORGESTREL TABLET”and a pink
`crescent representing a rising sun or setting sun above andto the left of the word
`“MORNING” written
`in
`blue. The
`color
`pink
`appears
`in
`“AFTER
`LEVONORGESTREL TABLET.
`
`

`

`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 8 of 28 PagelD 8
`
`A true and correct copy of the examiner’s amendmentis attached hereto as Exhibit M.
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`40.
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`The Amendmentto the Application includedthis disclaimer: “No claim is madeto
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`the exclusive right to use “MORNING AFTER”and “LEVONORGESTERL TABLET”apart
`
`from the mark as shown. Ex. M.
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`41.—_Ultimately, the USPTO allowedregistration of the logo depicted below (Serial No.
`
`5,263,398) on August 15, 2017 with the required disclaimers.
`
`SnAD
`jMorning
`evanorgastr After
`
`A true and correct copy of the Registration Certificate is attached hereto as Exhibit N.
`
`D. The Importance of the Amazon Marketplace
`
`42.
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`Over the past twenty years, online retailing has revolutionized how companies
`
`reach American consumers. Electronic marketplaces combined with dramatically increased
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`transport speed and improved logistics networks allow even relatively small companies to compete
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`across thousands of miles, resulting in increased competition and lowered prices.
`
`43.
`
`Amazon.com (“Amazon”) provides, among other
`
`things, ecommerce, order
`
`fulfillment, and shipping services to third parties selling various products on Amazon’s platform.
`
`Amazon’s platform is the largest in the country, if not the world.
`
`44.
`
`For an onlineretailer to effectively compete in the United States, it must sell on the
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`Amazon Marketplace. See, e.g, Emily Dayton, Amazon Statistics You Should Know:
`
`Opportunities to Make the Most of America’s Top Online Marketplace, BigCommerce Blog(last
`
`visited June 10, 2022), https://www.bigcommerce.com/blog/amazon-statistics/. (“Each month
`
`more than 197 million people around the world get on their devices and visit Amazon.com. That’s
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`

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`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 9 of 28 PagelD 9
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`more than the entire population of Russia. In 2018, Amazon’s share of the US e-commerce market
`
`hit 49% .
`
`.
`
`. that is more than Amazon’s top three competitors combined, with eBay comingin at
`
`6.6%, Apple at 3% and Walmart at 3.7%.”)
`
`45.
`
`Nine out of ten American consumers use Amazonto price check products they find
`
`elsewhere, and roughly 95 million people have Amazon Prime membershipsin the United States.
`
`See id.
`
`46.|Amazonallowssellers to offer for sale and sell products on the Amazon.com
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`platform. To do so, Amazon requires sellers to enter into agreements with it concerning the
`
`relationship betweenit and sellers, duties and responsibilities of the sellers, and other policies. See
`
`Amazon’s
`
`Participation
`
`Agreement
`
`available
`
`at
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`https://www.amazon.com/gp/help/customer/display.html/ref=hp_rel_topic?ie=UTF8&nodeld=11
`
`61272 (last visited June 11, 2022).
`
`47.|Amazon constantly monitors and scores each seller’s account performance through
`
`an Account Health dashboard that “shows how well your account is performing against the
`
`performance metrics and policies required to sell on Amazon.” A true and correct copy of the
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`email notice from Amazonciting this policy is attached hereto as Exhibit O.
`
`E. Overview of Amazon’s IP Complaint Process
`
`48.
`
`Facing the considerable challenges of managing this sprawling hive of commercial
`
`activity, Amazon, Inc. established intellectual property complaint and enforcement systems for
`
`Amazon.com primarily designed to protect itself from liability for contributing to infringement.
`
`49.
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`These include a trademark infringement reporting procedure.
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`

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`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 10 of 28 PagelD 10
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`50.
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`In general, a party may submit an intellectual property infringement complaint to
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`Amazon, and in doing so, must verify under oaththat it has the intellectual property rights claimed,
`
`and that its rights are being infringed upon by anotherseller.
`
`51.
`
`After receiving a trademark infringement complaint, Amazon may accept the
`
`allegations without any noticeto the seller or the opportunity to respond, and Amazon maydelist
`
`the products ofthe accused seller and “take appropriate action against the responsible sellers.” See
`
`https://sellercentral.amazon.com/gp/help/external/USSQCEKADDAORLZ.
`
`52.
`
`After Amazon delists the product of the accusedseller, it notifies the seller of this
`
`action, and encouragesthe seller to contact the complainant for resolution, Jd.
`
`53.|Amazonoffers the delisted seller the right to appeal its decision, but Amazon does
`
`not provide a time frame for the resolution process, or explain howits decisions are made.
`
`54.
`
`As long as the complainant refuses to withdraw the complaint, the seller’s ASIN
`
`remains locked so the seller cannot sell the goods associated with that ASIN, unless Amazon
`
`reviews the appeal and finds that the product does not infringe the complainant’s intellectual
`
`property.
`
`55.
`
`There is no immediate right to seek relief from Amazon’s decision to delist a
`
`product or to suspend a seller, and submission of an infringement complaint can result in the
`
`delisting of products forever, regardless of the merits of the alleged infringement.
`
`56.
`
`As a result, Amazon’s intellectual property complaint process can provide an
`
`unscrupulous seller with a powerful tool to prevent sales of a competitors’ product without due
`
`processor prior notice, at least for a period of time, which is exactly what occurred here.
`
`57.
`
`The process is streamlined and generally results in the automatic suspension of a
`
`seller’s listing, regardless of the merits of the complaint.
`
`=tl's
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`

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`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 11 of 28 PagelD 11
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`58.|The complainant must swearto the following: “I have a good faith belief that the
`
`content(s) described above violate(s) my rights described above orthose held by the rights owner,
`
`and
`
`that
`
`the
`
`use
`
`of
`
`such
`
`content(s)
`
`is
`
`contrary
`
`to
`
`9
`
`law.
`
`https://www.amazon.com/report/infringementn(last visited June 10, 2022).
`
`
`
`59.|The complainant also must aver: “I declare, under penalty of perjury, that the
`
`information contained in this notification is correct and accurate and that I am the owneror agent
`
`of the ownerofthe rights described above.” Jd.
`
`60.|Amazon has theright to suspend sellers from Amazonforpolicy violations without
`
`
`
`
`63.|The Amazon Marketplace is an incredibly valuable platform for sales of Auro
`
`warning.
`
`61.
`
`Aslong as the intellectual property complaint remains on the account,the seller is
`
`at risk of being suspended by Amazon.
`
`F. Rapha’s Submission of a Baseless IP Complaint to Amazon against Auro Health
`
`62.
`
`Auro Health
`
`sells
`
`over-the-counter
`
`pharmaceutical
`
`products
`
`including
`
`levonorgestrel underthe brand name E-Con® Morning After on Amazon.com.
`
`Health’s products, including its E-Con® product.
`
`64.
`
`In fact, as is well known to Rapha, Amazon is Auro Health’s primary distribution
`
`channel for these products.
`
`65.
`
`Rapha also sells its products including levonorgestrel through the web domain
`
`Amazon.com.
`
`66.
`
`Rapha and Auro Health compete for sales of levonorgestrel products on
`
`Amazon.com.
`
`a Ele
`
`

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`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 12 of 28 PagelD 12
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`67.
`
`On or about June 2, 2022, Rapha submitted Complaint Number 10152446721 (“IP
`
`Complaint”) to Amazon alleging that Auro Health’s E-Con®product infringed its Design
`
`trademark, Registration No. 5,263,398.
`
`68.
`
`Auro Health’s first and only notice of Rapha’s IP Complaint was provided by
`
`Amazon via email on June 2, 2022. Ex. O.
`
`69.
`
`Amazon’s email advised Auro Health that Amazonhad delisted Auro Health’s E-
`
`Con™product (ASIN B0897YYY 17) based upon Rapha’s allegation that the product“is infringing
`
`on the “Morning After” stylized text trademark” and “artwork” of Rapha’s product. Ex. O.
`
`70.
`
`Amazon’s email directed Auro Health to contact Rapha to request that the IP
`
`Complaint be withdrawn, Ex. O.
`
`71.
`
`Amazon’s email did not request a response from Auro Health to evaluate the
`
`allegations of infringement, but provided Auro Health a link to submit an appeal. Ex. O.
`
`ws
`
`While Rapha is the owner of U.S. Trademark Registration No. 5,263,398 for a
`
`stylized logo that includes the words “MORNING AFTER LEVONORGESTREL TABLET” (the
`
`“Design”), it has no enforceable trademark rights in any of the words that appearin its Design,
`
`including the words “Morning After,” and cannot prevent others from using these words on their
`
`product packaging.
`
`73.
`
`Apart
`
`from Auro Health’s use of the generic terms “Morning After,”
`
`“Levonorgestrel” and “Emergency Contraceptive” to describe the E-Con®product, whichit is
`
`entitled to use without limitation, neitherits logo nor its packaging bears any similarity to Rapha’s
`
`Design or packaging.
`
`74,
`
`A true and accurate depiction of the two packagesside by side are set forth below:
`
`hee
`
`

`

`Case 6:22-cv-01084 Documenti Filed 06/21/22 Page 13 of 28 PagelD 13
`
` ;
`
`| MORNING AFTER|#3
`SCR H RRP Ree ee
`ia
`a
`t
`levanorgestrel tabiel 7.5 mg
`tl
`|; Eeiraomerconiacention|& F
`tasesyanefpaginasatedwpeetentedws,
`|
`Matforrepaiesberthonateel,
`ua
`Vfebaet Leeruepeste |tag:
`
`
`coclaarmpi chlisbllitandeldalialiealpatcd ;
`
`L. 1
`La
`
`L
`
`Rapha’s Morning After Package
`
`E-Con® Morning After Package
`
`75.
`
`76.
`
`The E-Con® product packaging doesnot include Rapha’s Design.
`
`Nor does the E-Con® product packaging resemble any part of the “artwork” on
`
`Rapha’s packaging.
`
`77.
`
`Neither ofthe two bases Rapha submitted to Amazon in support of its IP Complaint
`
`are valid.
`
`78.|This was known to Raphaat the time the IP Complaint was submitted.
`
`G. Auro Health’s Attempts to Resolve the Matter Without Court Intervention
`
`79.
`
`On June 7, 2022, Auro Health sent a letter to Rapha demanding the withdrawal of
`
`the IP Complaint so that Amazon wouldlift the embargo against sales of Auro Health’s E-Con®
`
`product. A true and correct copyofthis letter is attached as Exhibit P.
`
`80.
`
`Auro Health also submitted an appeal directly to Amazon that
`
`included
`
`documentation establishing that Rapha’s IP Complaint wasbaseless.
`
`81.
`
`On June 8, 2022, Rapha responded to Auro Health’s demand byreiterating its
`
`baseless infringement claims, and stating that it
`
`intended to “notify all known distributors,
`
`« [3%
`
`

`

`Case 6:22-cv-01084 Document1 Filed 06/21/22 Page 14 of 28 PagelD 14
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`platforms, and retailers selling E-Con”of the alleged infringement. A true and correct copy ofthis
`
`letter is attached as Exhibit Q.
`
`82.
`
` Rapha also demanded that Auro Health recall all of its E-Con® products from the
`
`market within 72 hours. Ex. Q.
`
`83.
`
`Inthe same letter, Rapha expandedits threats to include allegations of infringement
`
`against Auro Health’s new product called FemChoice®. Ex. Q.
`
`84.
`
`A true and correct copy of the FDA-approved FemChoice®product packagingis
`
`depicted below.
`
`| = = IIMA _
`
`85.
`
` Rapha’s allegations that Auro Health’s FemCh