Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1298589
`
`Filing date:
`
`07/20/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92081581
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Defendant
`Bates Electric, Inc.
`
`MINDY M RICHTER
`SHUMAKER LOOP & KENDRICK LLP
`101 E KENNEDY BLVD
`SUITE 2800
`TAMPA, FL 33602
`UNITED STATES
`Primary email: tmdocketing@shumaker.com
`Secondary email(s): mrichter@shumaker.com
`813-229-7600
`
`Motion to Suspend for Civil Action
`
`Mindi Richter
`
`mrichter@shumaker.com
`
`/Mindi Richter/
`
`07/20/2023
`
`Attachments
`
`REGISTRANT MOTION to Suspend.pdf(1385511 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`BATES ELECTRIC, INC.
`
`Petitioner,
`
`Cancellation No.: 92081581
`
`v s .
`
`BATES ELECTRIC, INC.
`
`Registrant.
`________________________________/
`
`Mark: BATES ELECTRIC
`
`MOTION TO SUSPEND DUE TO CIVIL ACTION
`
`Registrant, Bates Electric, Inc. moves to suspend this action due to a pending civil action.
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`Specifically, the mark at issue in this proceeding is the subject of a suit pending in the United
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`States District Court for the Middle District of Florida, Bates Electric, Inc. v. Bates Electric, Inc.,
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`et al., Case No. 8:23-cv-00670-WFJ-SPF in which Registrant sued Petitioner for trademark
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`infringement and related claims, and Petitioner counterclaimed attempting to cancel Registrant’s
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`BATES ELECTRIC® mark at issue in this current proceeding. The Complaint and Amended
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`Counterclaim from the civil action are attached hereto as Exhibits A and B.
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`When a civil action “may have bearing on a pending case, proceedings before the Board
`
`may be suspended until termination of the civil action.” 37 C.F.R. § 2.117(a); see Seven-Up Co. v.
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`Bubble Up Corp., 312 F.2d 472, 476 (C.C.P.A. 1963) (stating it is the practice of the USPTO to
`
`suspend proceedings pending before it until the determination of the civil action); Gen. Motors
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`Corp. v. Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933 (T.T.A.B. 1992) (granting petitioner’s
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`motion to suspend because “a decision by the district court will be dispositive of the issues before
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`the Board”); The Toro Co. v. Hardigg Indus., Inc., 187 U.S.P.Q. (BNA) ¶ 689 (T.T.A.B. Aug. 19,
`
`1975) (granting the motion to suspend, despite objections by the applicant, because the final
`
`resolution of the civil action may be dispositive of the issues involved in the T.T.A.B proceeding);
`
`

`

`The Other Tel. Co. v. Connecticut Nat'l Tel. Co., Inc., 181 U.S.P.Q. (BNA) ¶ 125 (T.T.A.B. Feb.
`
`11, 1974) (stating “the final determination of the civil suit will directly affect the resolution . . . in
`
`the proceeding before the [T.T.A.B.]”); T.B.M.P. § 510.02(a) (“Unless there are unusual
`
`circumstances, the Board will suspend proceedings in the case before it if the final determination
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`of the other proceeding may have a bearing on the issues before the Board.”). A review of
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`Registrant’s Complaint and Petitioner’s Answer, Affirmative Defenses and First Amended
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`Counterclaims in the civil action indicates a decision by the Middle District Court will be
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`dispositive of the issues in this proceeding before the Board. Specifically, in the civil case,
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`Registrant sued Petitioner for infringement of the BATES ELECTRIC® mark that Petitioner is
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`attempting to cancel in this proceeding, and Petitioner counterclaimed asking the Court to cancel
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`Registrant’s BATES ELECTRIC® registration at issue in this proceeding.
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`Indeed Petitioner’s
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`counterclaim in the civil case contains the identical claims at issue in this proceeding.
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`Additionally, a decision of a federal district court is binding upon the Patent and Trademark
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`Office, while a decision by the Board is not binding or res judicata as to the issues before the
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`district court. The Toro Co. v. Hardigg Indus., Inc., 187 U.S.P.Q. (BNA) ¶ 689 (T.T.A.B. Aug. 19,
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`1975); see Townley Clothes, Inc. v. Goldring, Inc., 100 U.S.P.Q. (BNA) ¶ 57 (Com'r Pat. &
`
`Trademarks Dec. 28, 1953) (finding it would be against the interest of “judicial economy” for the
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`parties to proceed in two forums simultaneously when the findings of the court may be controlling
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`over the Board). Moreover, “suspension would avoid the undesirable result of the parties litigating
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`the same issue in two forums, with potentially inconsistent results and would minimize waste of
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`both the parties’ and the Board's resources.” Michel Farah, No. OPPOSITION 151,334, 2003 WL
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`22022077, at *5 (Aug. 21, 2003) (finding the common legal and factual issues warranted
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`suspension pending the ultimate outcome of the civil action); see Townley Clothes, Inc. v.
`
`

`

`Goldring, Inc., 100 U.S.P.Q. (BNA) ¶ 57 (Com'r Pat. & Trademarks Dec. 28, 1953); Squirrel
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`Brand Co. v. Barnard Nut Co. Inc., 101 U.S.P.Q. (BNA) ¶ 340 (Com'r Pat. & Trademarks May
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`21, 1954) (denying a petition to resume proceedings in favor of suspension). In this case, any
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`decision from the Middle District Court would be binding upon the Board, whereas a decision by
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`the Board would not be binding on the Middle District Court. Further, both the civil action and the
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`pending action have the same legal and factual issues, more specifically the issue of cancellation,
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`in which suspension would be in the interest of judicial economy, and it would avoid the potential
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`for inconsistent results.
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`WHEREFORE, Registrant, respectfully requests the Board to suspend this proceeding until
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`the civil action concludes.
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`Respectfully submitted,
`
`By:
`
`/Mindi M. Richter/
`Mindi M. Richter, Esq.
`Florida Bar No. 0044827
`SHUMAKER, LOOP & KENDRICK, LLP
`101 East Kennedy Boulevard, Suite 2800
`Tampa, Florida 33602
`Telephone No.: (813) 229-7600
`Facsimile No.: (813) 229-1660
`Email: mrichter@shumaker.com
`
`Attorneys for Registrant
`
`

`

`PROOF OF SERVICE
`
`The undersigned hereby certifies that the foregoing Motion has been served upon Attorneys
`for Applicant, Bates Electric, Inc., Bryan K. Wheelock, Harness, Dickey & Pierce, PLC, 7700
`Bonhomme, Suite 400, St. Louis, MO 63105, as follows:
`
`by delivering a copy of the paper to the person served;
`by leaving a copy at the usual place of business of the person served, with someone in the
`person’s employment;
`by leaving a copy at the residence of the person served, with a member of the person’s
`family over the age of fourteen years and of discretion, since the person is not believed to
`have a usual place of business;
`by transmitting a copy to the person served by the “Express Mail Post Office to
`Addressee” service of the United States Postal Service;
`by transmitting a copy to the person served by first class mail;
`by transmitting a copy by overnight courier;
`by transmitting a copy to the person served by electronic mail (i.e., E-Mail);
`
`x
`
`on July 20, 2023.
`
`/Mindi M. Richter/
`Mindi M. Richter, Esquire
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 1 of 14 PageID 1
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
`
`BATES ELECTRIC, INC.,
`a Florida corporation,
`
`Plaintiff,
`
`v.
`
`CASE NO. __________________
`
`BATES ELECTRIC, INC.,
`a Missouri corporation, and
`BATES ELECTRIC SERVICE &
`TECHNOLOGY, INC., a Missouri corporation,
`
`Defendants.
`________________________________________/
`
`COMPLAINT AND DEMAND FOR JURY TRIAL,
`INJUNCTIVE RELIEF SOUGHT
`
`Plaintiff, Bates Electric, Inc., a Florida corporation, (“Plaintiff”), by and
`
`through its undersigned attorneys, sues Defendants, Bates Electric, Inc., a Missouri
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`corporation (“Defendant BEI”), and Bates Electric Service & Technology, Inc., a
`
`Missouri corporation (“Defendant BESTI”) (collectively “Defendants”), and as its
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`Complaint states as follows:
`
`Nature of Action
`
`1.
`
`This is a civil action for trademark infringement and unfair
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`competition arising under the federal Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and
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`1125(d), as well as a related Florida state law claim. Plaintiff offers a wide variety
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 2 of 14 PageID 2
`
`of electrical contractor services under the trademark BATES ELECTRIC®. Plaintiff
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`owns valuable rights and goodwill in its BATES ELECTRIC® trademark, which it
`
`has used continuously since at least as early as 1985. Plaintiff also owns a United
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`States federal trademark registration for BATES ELECTRIC® (Registration No.
`
`6,236,971). Defendants are based in Missouri and also offer electrical contractor
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`services under the mark BATES ELECTRIC. While their use in other parts of the
`
`country was not initially problematic, Defendants have recently began using the
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`BATES ELECTRIC mark in Florida, which is causing a large amount of actual
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`confusion in the marketplace. Despite Plaintiff’s demands, Defendants have
`
`refused to cease and desist from their infringement and unfair competition.
`
`Parties
`
`2.
`
`Plaintiff, Bates Electric, Inc., is a corporation duly organized and
`
`validly existing under the laws of the State of Florida, with a principal place of
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`business in Tampa, Florida.
`
`3.
`
`On information and belief, Defendant BEI is a Missouri corporation
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`with its principal place of business located in Arnold, Missouri.
`
`4.
`
`On information and belief, Defendant BESTI is a Missouri corporation
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`with its principal place of business located in Arnold, Missouri.
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`5.
`
`On information and belief, Defendants are affiliated entities with both
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`using the BATES ELECTRIC mark in various states, including in Florida.
`
`2
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 3 of 14 PageID 3
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`6.
`
`Defendants do business in the State of Florida under the infringing
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`BATES ELECTRIC mark.
`
`7.
`
`Defendant BEI controls, facilitates and is aware of Defendant BESTI’s
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`use of BATES ELECTRIC, including in Florida, and is aware of Plaintiff and its
`
`rights in the BATES ELECTRIC® mark, including in Florida.
`
`8.
`
`Defendants have both intentionally and willfully infringed and
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`continue to infringe Plaintiff’s mark with knowledge that Plaintiff is located in
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`Florida and actual confusion has occurred in Florida.
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`Venue
`
`9.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C.
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`§ 1391(b)(2) because a substantial part of the events giving rise to the claims
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`asserted in this Complaint occurred in this judicial district and/or a substantial
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`part of the property that is the subject of the action is situated in this district.
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`Subject Matter Jurisdiction
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`10.
`
`The claims of
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`trademark infringement and unfair competition
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`asserted in this action arise under the provisions of the Lanham Act, 15 U.S.C. §
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`1501 et seq. This Court has original jurisdiction over these claims pursuant to 15
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`U.S.C. § 1121(a) and 28 U.S.C. § 1338(a). This Court further has jurisdiction of the
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`Florida state law claim pursuant to 28 U.S.C. § 1367.
`
`3
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 4 of 14 PageID 4
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`Common Factual Allegations
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`11.
`
`Plaintiff markets and provides a wide variety of electrical contractor
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`services in the State of Florida as well as other states.
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`12.
`
`Plaintiff has been providing such services under the BATES
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`ELECTRIC® trademarks since at least as early as 1985. Specifically Plaintiff began
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`use of BATES ELECTRICAL in the 1980’s and later made a minor change to BATES
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`ELECTRIC.
`
`13.
`
`For many years, Plaintiff has expended a great deal of time and funds
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`building and promoting the business operated under the BATES ELECTRIC®
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`name and mark, resulting in substantial goodwill and consumer recognition.
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`14.
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`Plaintiff is the owner of a registration with the United States Patent
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`and Trademark Office (“USPTO”)
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`for BATES ELECTRIC® for “electrical
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`contractor services,” a true and correct copy of the certificate for which is attached
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`hereto as Exhibit 1.
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`15.
`
`This registration is valid and subsisting, and has not been cancelled,
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`revoked, or abandoned.
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`16. As a result of Plaintiff’s sales and advertising of its services under the
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`Mark, the widespread sale and rendition of such services to the public under the
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`Mark, and the quality services rendered and sold under the Mark, such services
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`have come to be, and now are, well and favorably known to the trade and public
`
`4
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 5 of 14 PageID 5
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`under the Mark. The Mark is a means by which such services are identified as
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`being sold and rendered by Plaintiff.
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`17. As a result of Plaintiff’s sales and advertising of its services under the
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`Mark, and the quality of the services sold and rendered under the Mark, valuable
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`goodwill in the business as represented by the Mark has been generated. The
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`goodwill is symbolized by the Mark, and Plaintiff is the owner of the goodwill in
`
`the Mark.
`
`18. Despite Plaintiff’s common law rights and federal
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`trademark
`
`registration for the Mark, Plaintiff became aware that Defendants began using the
`
`name BATES ELECTRIC for the same electrical contractor services.
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`19. While it initially seemed that Defendant BEI was using the mark and
`
`offering its services only in Missouri, Plaintiff recently learned that Defendants
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`began use of BATES ELECTRIC in Florida.
`
`20. Defendants are affiliated entities, and both use the infringing BATES
`
`ELECTRIC mark.
`
`21. Defendant BEI is aware of and participates, oversees and controls
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`Defendant BESTI’s use of BATES ELECTRIC in Florida.
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`22. As a result of Defendants’ use in Florida, Plaintiff began experiencing
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`many instances of actual confusion with companies and consumers believing that
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`Defendants were Plaintiff or in some way affiliated with Plaintiff.
`
`5
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 6 of 14 PageID 6
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`23. As a result, Plaintiff sent Defendant BEI a letter in July 2022,
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`informing it of the potential confusion and instances of actual confusion and
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`demanding it to cease use of BATES ELECTRIC at least in the State of Florida.
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`24. After a series of back and forth communications, Defendant BEI
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`continued to refuse to cease use of the mark in Florida or elsewhere and in
`
`retaliation filed a Petition to Cancel Plaintiff’s trademark registration in the
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`USPTO. A copy of the Petition is attached hereto as Exhibit 2. Plaintiff has filed
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`a motion to dismiss the Petition, which is currently pending.
`
`25. Meanwhile, confusion in the marketplace between the parties is
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`continuing to occur, causing Plaintiff to incur damage and harm to its business as
`
`well as its brand, reputation and goodwill.
`
`26.
`
`By virtue of the foregoing, Defendants are infringing upon Plaintiff’s
`
`Mark and unfairly competing with Plaintiff. Defendants’ use in connection with
`
`their business has been and is likely to continue to cause confusion, mistake, or
`
`deception among the trade and the public.
`
`27. Despite Plaintiff’s demands that Defendants cease and desist from the
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`infringement, Defendants have intentionally, willfully, actively, and deliberately
`
`refused to comply, have not ceased and desisted from the wrongful use of the
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`mark, and have intentionally and deliberately persisted in their infringement of
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`Plaintiff’s trademark rights and unfair competition with Plaintiff.
`
`6
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 7 of 14 PageID 7
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`28. Defendants’ intentional infringement of Plaintiff’s Mark and unfair
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`competition is causing irreparable injury to Plaintiff, and, unless the injunction
`
`sought in this Complaint is granted, will continue to cause irreparable injury to
`
`Plaintiff due to the confusion, mistake, and deception that will be and has been
`
`generated among the trade and the public. Plaintiff has suffered and will continue
`
`to suffer damage, the exact amount of damage being unknown to Plaintiff at this
`
`time. The damage to Plaintiff is, and will continue to be, irreparable because,
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`among other reasons, of the continuing nature of the trademark infringement and
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`unfair competition which would necessitate a multiplicity of suits for damages if
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`the continuance of the wrongs is not enjoined.
`
`29. All conditions precedent to the institution and maintenance of this
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`action have occurred or been performed by Plaintiff.
`
`30.
`
`Plaintiff has engaged the law firm of Shumaker, Loop & Kendrick,
`
`LLP to represent it and is obligated to pay its attorneys a reasonable fee for their
`
`services in this action.
`
`COUNT I
`
`Federal Trademark Infringement
`
`31.
`
`Plaintiff realleges paragraphs 1 through 30 of this Complaint as if
`
`fully restated herein.
`
`7
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 8 of 14 PageID 8
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`32.
`
`This is an action for an injunction arising under 15 U.S.C. §§ 1114 and
`
`1116, and for damages arising under 15 U.S.C. §§ 1114 and 1117.
`
`33. Defendants have, by virtue of their above-described acts, infringed
`
`upon Plaintiff’s rights in its federal trademark registration in violation of 15 U.S.C.
`
`§ 1114.
`
`34. Defendants’ above-described acts of
`
`infringement have been
`
`committed, and are continuing to be committed, willfully and with the knowledge
`
`that their above-described mark is intended to be used to cause confusion, or to
`
`cause mistake, or to deceive.
`
`35. Defendants’ above-described acts of
`
`infringement have caused
`
`irreparable injury to Plaintiff and will continue to cause irreparable injury to
`
`Plaintiff if Defendants are not restrained by this Court from further violating
`
`Plaintiff’s trademark rights due to the confusion, mistake, or deception that will
`
`likely be generated among the trade and the public as a consequence of the above-
`
`described acts of infringement. Plaintiff has no adequate remedy at law.
`
`36. As a result of
`
`the above-described intentional and deliberate
`
`infringement of Plaintiff’s trademark rights by Defendants, Plaintiff is entitled to
`
`an injunction and an award of Defendants’ profits, up to three (3) times any
`
`damages sustained by Plaintiff, costs of this action, and attorneys’ fees, all as set
`
`forth in 15 U.S.C. §§ 1116 and 1117, subject to the discretion of this Court.
`
`8
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 9 of 14 PageID 9
`
`COUNT II
`
`Federal Unfair Competition
`
`37.
`
`Plaintiff realleges paragraphs 1 through 30 of this Complaint as if
`
`fully restated herein.
`
`38.
`
`This is an action for an injunction arising under 15 U.S.C. §§ 1125 and
`
`1116, and for damages arising under 15 U.S.C. §§ 1125 and 1117.
`
`39. Defendants have, by virtue of their above-described acts, infringed
`
`upon Plaintiff’s federally registered and common law rights in the Mark and are
`
`competing unfairly with Plaintiff by falsely designating Defendants’ services as
`
`originating with Plaintiff or with a concern legitimately connected with Plaintiff
`
`in violation of 15 U.S.C. § 1125.
`
`40. Defendants’ above-described acts of
`
`infringement and unfair
`
`competition have been committed, and are continuing to be committed, willfully
`
`with the knowledge that their above-described marks are intended to be used to
`
`cause confusion, or to cause mistake, or to deceive.
`
`41. Defendants’ above-described acts of
`
`infringement and unfair
`
`competition have caused irreparable injury to Plaintiff and will continue to cause
`
`irreparable injury to Plaintiff if Defendants are not restrained by this Court from
`
`further violating Plaintiff’s trademark rights and competing unfairly with Plaintiff
`
`due to the confusion, mistake or deception that will likely be generated among the
`
`9
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 10 of 14 PageID 10
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`trade and the public as a consequence of the above-described acts of infringement
`
`and unfair competition. Plaintiff has no adequate remedy at law.
`
`42. As a result of
`
`the above-described intentional and deliberate
`
`infringement of Plaintiff’s trademark rights and unfair competition by Defendants,
`
`Plaintiff is entitled to an injunction and an award of Defendants’ profits, up to
`
`three (3) times any damages sustained by Plaintiff, costs of this action, and
`
`attorneys’ fees, all as set forth in 15 U.S.C. §§ 1116 and 1117, subject to the
`
`discretion of this Court.
`
`COUNT III
`
`Common Law Unfair Competition
`
`43.
`
`Plaintiff realleges paragraphs 1 through 30 of this Complaint as if
`
`fully restated herein.
`
`44.
`
`This is an action against Defendants for damages and injunctive relief
`
`for common law unfair competition under Florida law due to Defendants’
`
`infringement of a common law trademark.
`
`45.
`
`Plaintiff
`
`is the owner of
`
`the common law trademark BATES
`
`ELECTRIC.
`
`46. Defendants are intentionally offering services to members of the
`
`public under an identical mark to that of Plaintiff.
`
`10
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 11 of 14 PageID 11
`
`47.
`
`Plaintiff adopted and used the Mark prior
`
`to Defendants’
`
`corresponding uses.
`
`48. Defendants’ use of such mark is confusingly similar to Plaintiff’s use
`
`of its Mark, is used for the same and/or related services, is directed at the same
`
`customers and is likely to cause confusion or mistake among ordinary purchasers
`
`in the marketplace as to the source, origin, association or sponsorship of Plaintiff’s
`
`services with those of Defendants.
`
`49. Defendants’ infringement of the marks has caused, and is continuing
`
`to cause, irreparable harm to Plaintiff’s business.
`
`50. Defendants have refused to cease their activities despite demands by
`
`Plaintiff.
`
`51. Unless restrained and enjoined, Defendants’ conduct is likely to
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`continue.
`
`52. Defendants’ conduct is willful, wanton, malicious, deliberate and
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`with reckless disregard for Plaintiff’s rights entitling Plaintiff to an award of
`
`punitive damages.
`
`COUNT IV
`
`DECLARATION REGARDING PLAINTIFF’S
`TRADEMARK REGISTRATION
`
`53.
`
`Plaintiff realleges paragraphs 1 through 30 of this Complaint as if
`
`fully restated herein.
`
`11
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 12 of 14 PageID 12
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`54. Based on the parties’ pre-suit communications and Defendant BEI’s
`
`filing of a Petition to Cancel Plaintiff’s trademark registration for BATES
`
`ELECTRIC®, an actual controversy has arisen and now exists between the parties
`
`as to whether Plaintiff’s registration is valid and should be cancelled.
`
`55. Although the full grounds for Defendant’s Petition for Cancellation are
`
`not entirely clear, it seems to be asserting that the registration is somehow invalid on
`
`the alleged basis that Defendant began use of the Mark in certain states prior to
`
`Plaintiff and Plaintiff’s registration and/or that Plaintiff somehow engaged in fraud
`
`in obtaining the registration because it “has never rendered electrical contractor
`
`services under the Mark in commerce that the U.S. Congress may lawfully regulate.”
`
`56.
`
`Plaintiff has clear priority in the BATES ELECTRIC® mark and has
`
`used and does use the mark in the State of Florida as well as other states.
`
`57.
`
`In addition, the U.S. Congress can obviously lawfully regulate the
`
`electrical contractor services that Plaintiff provides, and Plaintiff has used its Mark
`
`in commerce sufficiently for its federal registration.
`
`58.
`
`Plaintiff registered its Mark in good faith with no intent to deceive the
`
`USPTO.
`
`59. Under the trademark laws of the United States, Plaintiff’s trademark
`
`registration is valid and there are no grounds to cancel it.
`
`60.
`
`Plaintiff would suffer harm and damage if its registration was cancelled.
`
`12
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 13 of 14 PageID 13
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`61.
`
`Pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201 et seq.,
`
`Plaintiff requests a declaration by the Court that its federal trademark registration is
`
`valid and there are no grounds upon which it should be cancelled.
`
`WHEREFORE, Plaintiff demands judgment against Defendants for:
`
`(a)
`
`an injunction preliminarily during the pendency of this action and
`thereafter permanently enjoining and restraining Defendants, their
`officers, agents, servants, employees, and attorneys, and all other
`persons in active concert or participation with them, from infringing
`Plaintiff’s trademark rights and unfairly competing with Plaintiff in
`any manner whatsoever in connection with the operation of their
`business, and from continuing to operate their business in any
`manner tending to confuse or deceive the public into believing that
`their business is in any way connected with, sponsored by, or
`affiliated with Plaintiff;
`
`(b)
`
`an order directing Defendants to file with the Court and serve upon
`Plaintiff a report in writing under oath setting forth in detail the
`manner and form in which Defendants have complied with the
`injunction entered by the Court within thirty (30) days after the entry
`of the injunction in compliance with 15 U.S.C. § 1116(a);
`
`(c)
`
`an accounting of Defendants’ wrongfully derived profits and an order
`that the same be paid over to Plaintiff;
`
`(d)
`
`up to three (3) times any damages sustained by Plaintiff;
`
`(e)
`
`punitive damages;
`
`(f)
`
`(g)
`
`(h)
`
`restitution to Plaintiff of any and all money Defendants have acquired
`by means of unfair competition;
`
`trademark
`that Plaintiff’s federal
`a declaration by the Court
`registration for the Mark is valid and should not be cancelled;
`
`interest on such profits and damages at the highest rate allowed by
`law;
`
`13
`
`

`

`Case 8:23-cv-00670 Document 1 Filed 03/27/23 Page 14 of 14 PageID 14
`
`(i)
`
`(j)
`
`costs of this action;
`
`attorneys’ fees; and
`
`(k)
`
`such other relief as the Court may deem just and appropriate.
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff, by and through its undersigned attorneys, request a trial by jury
`
`on all issues so triable.
`
`/s/ Mindi M. Richter
`Mindi M. Richter, Esquire
`Florida Bar No. 0044827
`J. Todd Timmerman, Esquire
`Florida Bar No. 0956058
`Shumaker, Loop & Kendrick, LLP
`101 East Kennedy Boulevard, Suite
`2800
`Tampa, Florida 33602
`Telephone: (813) 229-7600
`Facsimile: (813) 229-1660
`
`Attorneys for Plaintiff
`
`14
`
`

`

`Case 8:23-cv-00670 Document 1-1 Filed 03/27/23 Page 1 of 3 PagelD 15
`Case 8:23-cv-00670 Document 1-1 Filed 03/27/23 Page 1 of 3 PageID 15
`
`EXHIBIT 1
`
`

`

`Case 8:23-cv-00670 Document1-1 Filed 03/27/23 Page 2 of 3 PagelD 16
`Case 8:23-cv-00670 Document 1-1 Filed 03/27/23 Page 2 of 3 PageID 16
`
`quite States of Amery,
`Guited States Patent and Trademark Office
`lly
`
`BATES ELECTRIC
`
`Reg. No. 6,236,971
`
`Registered Jan. 05, 2021
`
`Int. Cl.: 37
`
`Service Mark
`
`Principal Register
`
`Bates Electric, Inc. (FLORIDA CORPORATION)
`7901 Hopi Place
`Tampa, FLORIDA 33634
`
`CLASS 37: electrical contractor services
`
`FIRST USE 12-00-2002; INCOMMERCE12-00-2002
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO
`
`ANY PARTICULAR FONTSTYLE, SIZE OR COLOR
`
`No claim is made to the exclusive right to use the following apart from the mark as
`shown: "ELECTRIC"
`
`SEC.2(F)
`
`SER. NO. 88-829,779, FILED 03-11-2020
`
`
`
`Prnclaan: frthin—
`
`Director of the United States
`
`Patent and Trademark Office
`
`
`
`

`

`Case 8:23-cv-00670 Document1-1 Filed 03/27/23 Page 3 of 3 PagelD 17
`Case 8:23-cv-00670 Document 1-1 Filed 03/27/23 Page 3 of 3 PageID 17
`
`REQUIREMENTSTO MAINTAIN YOUR FEDERAL TRADEMARK REGISTRATION
`
`DOCUMENTS BELOW DURING THE SPECIFIED TIME PERIODS.
`
`WARNING: YOUR REGISTRATION WILL BE CANCELLEDIF YOU DO NOTFILE THE
`
`Requirementsin the First Ten Years*
`What and WhentoFile:
`
`¢ First Filing Deadline: You mustfile a Declaration of Use (or Excusable Nonuse) between the 5th and 6th
`years after the registration date. See 15 U.S.C. §§1058, 1141k.
`If the declaration is accepted,
`the
`registration will continue in force for the remainderof the ten-year period, calculated from the registration
`date, unless cancelled by an order of the Commissioner for Trademarksor a federal court.
`
`¢ Second Filing Deadline: You must file a Declaration of Use (or Excusable Nonuse) and an Application
`for Renewal between the 9th and 10th years after the registration date.* See 15 U.S.C. §1059.
`
`Requirements in Successive Ten-Year Periods*
`What and Whento File:
`
`an Application for Renewal
`and
`file a Declaration of Use (or Excusable Nonuse)
`* You must
`between every 9th and 10th-year period, calculated from the registration date.*
`
`GracePeriod Filings*
`
`The above documents will be accepted as timely if filed within six months after the deadlines listed above with the
`paymentof an additionalfee.
`
`*ATTENTION MADRID PROTOCOL REGISTRANTS: The holder of an international registration with an
`extension of protection to the United States under the Madrid Protocol must timely file the Declarations of Use (or
`Excusable Nonuse) referenced above directly with the United States Patent and Trademark Office (USPTO). The
`time periods for filing are based on the U.S. registration date (not the international registration date). The
`deadlines and grace periods for the Declarations of Use (or Excusable Nonuse) are identical to those for nationally
`issued registrations. See 15 U.S.C. §§1058, 1141k. However, owners of international registrations do not file
`renewal applications at the USPTO. Instead,
`the holder must file a renewal of the underlying international
`registration at the International Bureau of the World Intellectual Property Organization, under Article 7 of the
`Madrid Protocol, before the expiration of each ten-year term of protection, calculated from the date of the
`international registration. See 15 U.S.C. §1141j. For more information and renewal forms for the international
`registration, see http://www.wipo.int/madrid/en/.
`
`NOTE: Fees and requirements for maintaining registrations are subject to change. Please check the
`USPTO website for further information. With the exception of renewal applications for registered
`extensions of protection, you can file the registration maintenance documents referenced above online at
`http://www.uspto.gov.
`
`NOTE: A courtesy e-mail reminder of USPTO maintenance filing deadlines will be sent to trademark
`owners/holders who authorize e-mail communication and maintain a current e-mail address with the
`
`USPTO. To ensure that e-mail is authorized and your address is current, please use the Trademark
`Electronic Application System (TEAS) Correspondence Address and Change of Owner Address Forms
`available at http://www.uspto.gov.
`
`Page: 2 of 2 / RN # 6236971
`
`

`

`Case 8:23-cv-00670 Document 1-2 Filed 03/27/23 Page 1 of 6 PagelD 18
`Case 8:23-cv-00670 Document 1-2 Filed 03/27/23 Page 1 of 6 PageID 18
`
`EXHIBIT 2
`EXHIBIT 2
`
`

`

`Case 8:23-cv-00670 Document 1-2 Filed 03/27/23 Page 2 of 6 PageID 19
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Bates Electric, Inc.
`
`
`
`
`Petitioner
`
`
`
`
`
`v.
`
`
`
`Bates Electric, Inc.
`
`
`
`
`Registrant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`Cancellation No.
`
`PETITION FOR CANCELLATION
`
`Petitioner Bates Electric, Inc. (the "Petitioner"), petitions to cancel United States
`Trademark Registration No. 6,236,971 for BATES ELECTRIC (the "Mark") owned by Bates
`Electric, Inc. (the "Respondent").
`
`The Parties
`1. Petitioner is a corporation incorporated as Bates Electric, Inc. in Missouri on July 16,
`1992 with a principal place of business at 2006 Sierra Parkway, Arnold, MO 63010.
`
`2. Respondent is a corporation incorporated as Bates Electrical Services, Inc. in Florida on
`March 20, 1985 with change name to Bates Electric, Inc. on August 1, 2002 with a principal
`place of business at 7901 Hopi Place, Tampa, FL 33634.
`
`Background
`3. Since at least as early as February 1992 Petitioner has rendered electrical contractor
`services under the MARK attached hereto as a JPEG image in MISSOURI with address
`of 2006 Sierra Parkway, Arnold, MO 63010.
`
`
`
`
`1
`
`

`

`Case 8:23-cv-00670 Document 1-2 Filed 03/27/23 Page 3 of 6 PageID 20
`
`4. Since at least as early as August 2020 Petitioner has rendered electrical contractor
`services in GEORGIA under the MARK through a satellite installation with an address of
`5317 Peachtree Blvd, Suite 203 Chamblee, GA 30341.
`
`5. Since at least as early as December 2016 Petitioner has rendered electrical contractor
`services in NORTH CAROLINA under the MARK through a satellite installation with an
`address of 2012 Hwy 160 West , #126 Fort Mill, SC 29708.
`
`6. Since at least as early as July 2016 Petitioner has rendered electrical contractor services
`in ILLINOIS under the MARK through a satellite installation with an address of 800 West
`Fifth Ave, Suite 206C, Naperville, IL 60563.
`
`7. Since at least as early as October 2018 Petitioner has rendered electrical contractor
`services in VIRGINIA under the MARK through a satellite installation with an address of
`4451 Cox Allen Rd, Suite 4451, Glen Allen, VA 23060.
`
`8. Since at least as early as October 2016 Petitioner has rendered electrical contractor
`services in