ESTTA Tracking number:
`
`Filing date:
`
`ESTTA1357709
`05/09/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`92085133
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Ledge Lounger, Inc.
`
`SCOTT A. BUROW
`BANNER & WITCOFF, LTD.
`71 SOUTH WACKER DRIVE, SUITE 3600
`CHICAGO, IL 60606
`UNITED STATES
`Primary email: sburow@bannerwitcoff.com
`Secondary email(s): mbecker@bannerwitcoff.com, aking@bannerwitcoff.com,
`echristou@bannerwitcoff.com, cwolfgram@bannerwitcoff.com, bwlitdock-
`et@bannerwitcoff.com, bwptotm@bannerwitcoff.com
`312-463-5000
`
`Motion to Suspend for Civil Action
`
`Scott A. Burow
`
`sburow@bannerwitcoff.com, mbecker@bannerwitcoff.com, ak-
`ing@bannerwitcoff.com, echristou@bannerwitcoff.com, cwolf-
`gram@bannerwitcoff.com, bwlitdocket@bannerwitcoff.com,
`bwptotm@bannerwitcoff.com
`
`/Scott A. Burow/
`
`05/09/2024
`
`Cancellation 92085133 - Motion to Suspend Proceedings.pdf(131005 bytes )
`Cancellation 92085133 - Exhibit A.pdf(6096318 bytes )
`
`

`

`Attorney Docket: 009169.00108
`
`
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE UNITED STATES TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`The Step2 Company, LLC
`
`Petitioner
`
`
`
`
`v.
`
`
`Ledge Lounger, Inc.
`
`
`
`Registrant
`
`
`
`
`
`
`
`92085133
`
`6,932,905
`
`
`
`
`
`
`
`Cancellation No.:
`
`
` Registration No.:
`
`
` Mark:
`
`
`
`
`
`
`
`
`
`MOTION TO SUSPEND PROCEEDINGS PURSUANT TO 37 CFR § 2.117(a)
`
`Registrant, Ledge Lounger, Inc. (“Ledge Lounger”), moves for suspension of the above-
`
`captioned cancellation proceeding pursuant to 37 CFR § 2.117(a) and TBMP §510.
`
`On May 6, 2024, Petitioner, The Step2 Company LLC (“Step2”), filed a civil action against
`
`Registrant, Ledge Lounger in the United States District Court for the Northern District of Ohio,
`
`Civil Action 5:24-cv-00807. A copy of the Complaint which seeks declaratory judgment of
`
`invalidity, unenforceability, and noninfringement of U.S. Trademark Registration No. 6,932,905
`
`is attached as Exhibit A.
`
`Pursuant to 37 CFR § 2.117 and TBMP § 510, whenever it comes to the attention of the
`
`Board that the parties are engaged in a civil action that “may have a bearing on the case,” the
`
`proceedings before the Board may be suspended. “Unless there are unusual circumstances the
`
`Board will suspend proceedings … if the final determination of the other proceeding may have a
`
`bearing on the issues before the Board.” (TBMP 510.02(a)); see also Monster Energy Co. v.
`
`
`
`
`- 1 -
`
`

`

`Martin, 125 USPQ2d 1774 (TTAB 2018) (“It is the policy of the Board to suspend proceedings
`
`when the parties are involved in a civil action which may be dispositive of or have a bearing on
`
`the Board proceeding.”) There are no unusual circumstances in this case.
`
`The parties in this proceeding and the district court litigation are the same. The litigation
`
`was filed by Step2 against Ledge Lounger. See Ex. A. The mark is the same. In the district court,
`
`the Complaint seeks declaratory judgment of invalidity, unenforceability, and noninfringement of
`
`U.S. Trademark Registration No. 6,932,905, Ex. A, ¶¶ 56-59, which is the same mark Petitioner
`
`seeks to cancel in this proceeding.
`
`Many of the issues included in the district court proceeding (likelihood of confusion and
`
`validity of the registration) are related to issues that likely will be joined in the cancellation
`
`proceedings before the Board. Registrant will seek an injunction against further use of its registered
`
`mark, which may have an impact on the Board proceeding.
`
`Given the relatedness of key issues, and that any decision of the Board on the common
`
`issues is not binding upon the Court, the Board proceedings should be suspended. See, e.g., TBMP
`
`510.02(a) and the cases cited therein, including inter alia, New Orleans Louisiana Saints LLC v.
`
`Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil action need not be dispositive of
`
`Board proceeding, but only needs to have a bearing on issues before the Board); General Motors
`
`Corp v. Cadillac Club Fashions, Inc., 22 USPQ2d 1933, 1936-37 (TTAB 1992) (relief sought in
`
`federal district court included an order directing Office to cancel registration involved in
`
`cancellation proceeding); Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ
`
`125 (TTAB 1974); Tokaido v. Honda Associates Inc., 179 USPQ 861 (TTAB 1973); and Whopper-
`
`Burger, Inc. v. Burger King Corp. 171 USPQ 805 (TTAB 1971).
`
`
`
`
`- 2 -
`
`

`

`Aside from the factors outlined above, the timing of the proceedings also warrants
`
`suspension. The cancellation proceeding was filed very recently, on May 6, 2024. Registrant’s
`
`Answer is not due until June 16, 2024 and no discovery has been served. Thus, the cancellation
`
`proceeding is in a very early stage, so no harm will come to Petitioner if the proceeding is stayed
`
`pending the outcome of the district court proceeding. See, e.g., Other Telephone, supra.
`
`Because the pending civil action may have a bearing on this cancellation proceeding,
`
`Registrant respectfully requests suspension of Cancellation No. 92085133 pending the outcome of
`
`Civil Action No. 5:24-cv-00807, and any appeal therefrom.
`
`Date: May 9, 2024
`
`
`
`
`
`
`
`Respectfully submitted,
`BANNER & WITCOFF, LTD.
`Attorneys for Registrant, Ledge Lounger
`
` By: /Scott A. Burow/
`Scott A. Burow
`Matthew P. Becker
`Anna L. King
`Evi Christou
`Christian T. Wolfgram
`71 South Wacker Drive, Suite 3600
`Chicago, Illinois 60606
`Telephone: (312) 463-5000
`Email: bwptotm@bannerwitcoff.com
`
`
`
`
`
`
`
`
`- 3 -
`
`

`

`
`
`
`
`Certificate of Service
`
`I hereby certify that on this 9th day of May, 2024, a copy of the foregoing Motion to Suspend
`was served by electronic mail, on counsel for Petitioner, at the following email addresses:
`
`jbennett@fbtlaw.com
`plinden@fbtlaw.com
`aabner@fbtlaw.com
`tweeks@fbtlaw.com
`
`
`John F. Bennett
`FROST BROWN TODD LLP
`301 East Fourth Street, Suite 3300
`Cincinnati, OH 45202
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/mark houston/
`
`
`
`
`- 4 -
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`

`

`Attorney Docket: 009169.00108
`
`
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE UNITED STATES TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`The Step2 Company, LLC
`
`Petitioner
`
`
`
`
`v.
`
`
`Ledge Lounger, Inc.
`
`
`
`Registrant
`
`
`
`
`
`92085133
`
`6,932,905
`
`
`
`
`
`
`
`Cancellation No.:
`
`
` Registration No.:
`
`
` Mark:
`
`
`
`
`
`
`
`
`
`MOTION TO SUSPEND PROCEEDINGS PURSUANT TO 37 CFR § 2.117(a)
`
`EXHIBIT A
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 1 of 16. PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF OHIO
`EASTERN DIVISION
`
`THE STEP2 COMPANY, LLC,
`
`Case No. 5:24-cv-807
`
`Plaintiff,
`
`v.
`
`LEDGE LOUNGER, INC.,
`
`Defendant.
`
`COMPLAINT
`
`DEMAND FOR JURY TRIAL
`
`The Step2 Company, LLC (“Step2”), for its complaint against Defendant Ledge Lounger,
`
`Inc. (“Ledge Lounger”), states as follows:
`
`SUMMARY AND NATURE OF THE ACTION
`
`1.
`
`Not all companies can thrive in the face of fair competition. Regrettably, some
`
`choose to cheat rather than compete fairly. Defendant Ledge Lounger is such a company. When
`
`Defendant Ledge Lounger noticed that Step2 and other companies had begun selling competitive
`
`chaise lounges, Defendant Ledge Lounger abused the trademark system by seeking monopoly
`
`protection for the generic shape of a chaise lounge that had been around for decades. Worse,
`
`Defendant Ledge Lounger submitted multiple bogus infringement reports with Amazon, resulting
`
`in the removal of successful and non-infringing chaise lounges of competitors, including Step2.
`
`Step2 files this lawsuit to put an end to Defendant Ledge Lounger’s abusive, anticompetitive
`
`tactics and to recover damages resulting from Defendant Ledge Lounger’s bad-faith misconduct.
`
`PARTIES
`
`2.
`
`Step2 is a Delaware limited liability company with a principal place of business at
`
`10010 Aurora Hudson Road, Streetsboro, Ohio 44241.
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 2 of 16. PageID #: 2
`
`3.
`
`On information and belief, Defendant Ledge Lounger is a Texas corporation with
`
`a principal place of business at 616 Cane Island Parkway, Katy, Texas 77494.
`
`JURISDICTION AND VENUE
`
`4.
`
`The below claims for declaratory judgment arise under the Federal Trademark Act
`
`of 1946, 15 U.S.C. § 1051 et seq., and under 28 U.S.C. §§ 2201 and 2202.
`
`5.
`
`Subject matter jurisdiction of this Court is conferred by 15 U.S.C. § 1121 and 28
`
`U.S.C. §§ 1331 and 1338, and this Court has supplemental jurisdiction for claims arising under
`
`state law under 28 U.S.C. § 1367.
`
`6.
`
`Venue in this judicial district is proper under 28 U.S.C. § 1391 at least because this
`
`judicial district is where Defendant Ledge Lounger is subject to the Court’s personal jurisdiction
`
`with respect to this action and because Defendant Ledge Lounger’s false trademark claims arose
`
`in this district.
`
`7.
`
`This Court has personal jurisdiction over Defendant Ledge Lounger at least because
`
`the Court’s exercise of personal jurisdiction is consistent with the Ohio Constitution and the United
`
`States Constitution. In addition, this Court has personal jurisdiction over Defendant Ledge
`
`Lounger at least because Step2’s causes of action arise from (1) Defendant Ledge Lounger’s
`
`causing tortious injury in Ohio, where Defendant Ledge Lounger regularly does and solicits
`
`business; and (2) Defendant Ledge Lounger’s causing tortious injury in Ohio to Step2 by an act
`
`outside Ohio committed with the purpose of injuring Step2, when Defendant Ledge Lounger might
`
`reasonably have expected that Step2 would be injured thereby in Ohio. Ohio Rev. Code §
`
`2307.382; SnapRays, dba SnapPower v. Lighting Def. Grp., No. 2023-1184, 2024 WL 1916631,
`
`at *5 (Fed. Cir. May 2, 2024) (holding extra-judicial enforcement activities through Amazon
`
`2
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 3 of 16. PageID #: 3
`
`subjected defendant to personal jurisdiction in plaintiff’s state for declaratory judgment claim,
`
`reversing district court’s granting of motion to dismiss for lack of personal jurisdiction).
`
`BACKGROUND COMMON TO ALL CLAIMS
`
`Step2 and Its Vero Pool Lounger
`
`8.
`
`Step2—located in Streetsboro, Ohio—was founded in 1991 and is one of the largest
`
`American manufacturers of preschool and toddler toys; Step2 also is one of the world’s largest
`
`rotational molders of plastics.
`
`9.
`
`Over the years, Step2 has successfully expanded from toys into other areas,
`
`including the home and garden market.
`
`10. Most recently, in 2023, Step2 expanded further into the pool category and now sells
`
`pool furniture, which includes the “Vero Collection”:
`
`Step2’s Vero Collection
`
`3
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 4 of 16. PageID #: 4
`
`11.
`
`The Vero Collection has been an enormous success for Step2. One of the best
`
`sellers in the Vero Collection is the Vero Pool Lounger, an outdoor pool chair with a sleek,
`
`minimalist design in the well-known shape of a curved chaise lounge, as shown below:
`
`Step2’s Vero Pool Lounger
`
`History of Chaise Lounges
`
`12.
`
`A “chaise longue” (or the anglicized “chaise lounge”) originally referred to an
`
`upholstered sofa in the shape of a chair that was long enough to support the legs of the sitter. The
`
`modern chaise lounge was first popularized in 16th-century France, created to allow the wealthy
`
`to rest without the need to retire to a bedroom.
`
`13.
`
`Today, however, the chaise lounge now broadly refers to any long reclining chair
`
`sized to support an entire body.
`
`14.
`
`The shape of the modern chaise lounge has a curved profile and has been
`
`recognizable and ubiquitous for at least a century. For example, below are some of the more
`
`famous designs:
`
`4
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 5 of 16. PageID #: 5
`
`Designer(s)
`
`Date
`
`Name
`
`Image
`
`Edward Wormley
`
`1948
`
`Listen-to-Me Chaise
`
`Greta M. Grossman 1951
`
`GMG Chaise Lounge
`
`Adrian Pearsall
`
`1960s
`
`Wave Lounge Chair
`
`Poul Kjærholm
`
`1960s
`
`PK 24 Chaise Lounge
`Chair
`
`Niels Hvass
`
`1996
`
`Wave
`
`BuskHertzog
`
`2003
`
`SENSE lounge chair
`
`5
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 6 of 16. PageID #: 6
`
`15.
`
`Chaise lounges have been widely available at retail stores in the United States for
`
`decades. For example, on information and belief, the Wave chaise from Float LLC, shown below,
`
`was available at least as early as 2008:
`
`Wave Chaise as Shown in Architectural Digest
`
`Wave Chaises as Shown in Dwell Magazine
`
`Defendant Ledge Lounger’s Improper Attempts
`To Monopolize the Shape of the Chaise Lounges
`
`16.
`
`Since approximately 2019, Defendant Ledge Lounger has attempted to secure for
`
`itself intellectual property protection for the various shapes of chaise lounges.
`
`17.
`
`For example, in December 2019, Defendant Ledge Lounger filed applications for
`
`two design patents. In April 2021, those applications issued as U.S. Patent Nos. D917,189 and
`
`D917,190.
`
`18.
`
`Later, in November 2021, Defendant Ledge Lounger filed another design patent
`
`application, issuing as U.S. Patent No. D985,953 in May 2023.
`
`19.
`
`Below are figures from the three design patents:
`
`6
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 7 of 16. PageID #: 7
`
`Defendant’s
`U.S. Patent No. D917,189
`
`Defendant’s
`U.S. Patent No. D917,190
`
`Defendant’s
`U.S. Patent No. D985,953
`
`20.
`
`Unlike utility patents, the purpose of design patents is to protect the ornamental
`
`design of an “article of manufacture” for a limited time: 15 years. 35 U.S.C. §§ 171, 173. The
`
`subject matter that is claimed “is the design embodied in or applied to an article of manufacture
`
`(or portion thereof) and not the article itself.” Manual of Patent Examining Procedure § 1502.
`
`21.
`
`To obtain a design patent, the claimed design must be “new,” and the application
`
`must be filed within one year after the first public disclosure. 35 U.S.C. §§ 102, 171. To be “new,”
`
`an ordinary observer must view the design as different, rather than a modified version of an already
`
`existing design with minor differences. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d
`
`1233, 1241 (Fed. Cir. 2009).
`
`22.
`
`And, importantly, the protection is limited to the specific design shown and claimed
`
`in solid lines—not dashed or broken lines, which are meant to reflect what has not been claimed.
`
`See In re Zahn, 617 F.2d 261, 266-67 (CCPA 1980); In re Blum, 54 CCPA 1231, 374 F.2d 904,
`
`907 (CCPA 1967).
`
`23.
`
`Although design patents may provide narrow protection, Defendant Ledge
`
`Lounger—on information and belief—wanted to secure for itself exclusivity over the generic
`
`shape of its “Signature Chaise,” which Defendant Ledge Lounger had been selling since 2011.
`
`7
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 8 of 16. PageID #: 8
`
`Defendant Ledge Lounger could not obtain design patent protection for that shape, though, at least
`
`because that generic shape had long been in the public domain and in use by others.
`
`24.
`
`Consequently, unable to secure for itself patent protection on the generic shape of
`
`the “Signature Chaise,” Defendant Ledge Lounger was seemingly powerless to stop others from
`
`competing fairly in the marketplace.
`
`25.
`
`And so Defendant Ledge Lounger chose to pursue a different path to try to stymie
`
`legitimate competition: trademark law.
`
`26.
`
`But the purposes of trademark law and patent law are very different. While patent
`
`law incentivizes innovation by granting inventors exclusive rights to their inventions for a limited
`
`time, the primary purpose of trademark law is to prevent consumer confusion by ensuring that
`
`consumers can identify and rely upon consistent quality and origin of products and services.
`
`27.
`
`Determined to prevent healthy competition with its “Signature Chaise” and
`
`disregarding the purpose of trademark law, Defendant Ledge Lounger filed a trademark
`
`application in August 2019, seeking for itself the exclusive rights to the shape of the “Signature
`
`Chaise”—eight years after Defendant Ledge Lounger had been selling it.
`
`28.
`
`Specifically, Defendant Ledge Lounger sought protection in alleged trade dress,
`
`i.e., the visual appearance of a product or its packaging, which can be protected only under one of
`
`two circumstances. First, the product design can be protected if it is inherently distinctive, i.e., its
`
`“intrinsic nature serves to identify a particular source.” Two Pesos, Inc. v. Taco Cabana, Inc., 505
`
`U.S. 763, 768 (1992). Second, a non-inherently distinctive trade dress is protectable if it acquires
`
`distinctiveness through secondary meaning, which occurs when, “in the minds of the public, the
`
`primary significance of a [trade dress] is to identify the source of the product rather than the
`
`product itself.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982).
`
`8
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 9 of 16. PageID #: 9
`
`29.
`
`The shape of Defendant Ledge Lounger’s “Signature Chaise,” however, is not
`
`inherently distinctive, and the public has never associated the generic chaise shape with Defendant
`
`Ledge Lounger or come to rely on the generic chaise shape as a source identifier.
`
`30.
`
`After the trademark application published in November 2021, competitors noticed
`
`that Defendant Ledge Lounger had inappropriately attempted to monopolize the generic design of
`
`a chaise lounge, and, in March 2022, Advantus, Corp. (“Advantus”) filed a “notice of opposition”
`
`with the Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark
`
`Office (“USPTO”), opposing the application. Attached as Exhibit 1 is a copy of Advantus’s notice
`
`of opposition, and the documents for the related proceeding—including the exhibits to the notice
`
`of opposition—are available at https://ttabvue.uspto.gov/ttabvue/v?pno=91274876.
`
`31.
`
`Advantus’s notice of opposition correctly demonstrated that the alleged trade dress
`
`was not registrable for multiple reasons, including: (1) the alleged trade dress comprises matter
`
`that, as a whole, is functional; (2) the alleged trade dress is not inherently distinctive and had not
`
`acquired distinctiveness; and (3) Defendant Ledge Lounger had attempted to obtain a registration
`
`through fraud. (See, generally, Ex. 1.)
`
`32. With respect to functionality, Defendant Ledge Lounger’s “Signature Chaise,”
`
`designed to support a full adult and allow partial submersion in water, is shaped strictly to
`
`accomplish the chaise’s purpose. For among other reasons, the shape is essential to the use of a
`
`chair as marketed by Defendant Ledge Lounger to be partially submerged in water. The product
`
`configuration is thus functional and not registrable under the Trademark Act § 2(e), 15 U.S.C. §
`
`1052(e)(5).
`
`9
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 10 of 16. PageID #: 10
`
`33.
`
`In fact, the USPTO trademark examining attorney assigned to the application noted
`
`the functionality of the alleged trade dress and initially rejected the application in December 2019
`
`on that ground.
`
`34.
`
`In response, though, Defendant Ledge Lounger submitted a declaration by its Chief
`
`Executive Officer, Christopher Anderson, swearing under oath:
`
`Neither the applied-for-mark, nor any features thereof, is or has been the
`subject matter of a design or utility patent or patent application, including
`expired patents and abandoned patent applications.
`
`35.
`
`That statement is false. When Mr. Anderson made that statement, he was one of the
`
`named inventors of U.S. Patent No. 10,104,975, which expressly described the functionality of
`
`Defendant Ledge Lounger’s “Signature Chaise.”
`
`36.
`
`On information and belief, both Defendant Ledge Lounger and Mr. Anderson knew
`
`the statement was false when Defendant Ledge Lounger submitted the declaration to the USPTO.
`
`37.
`
`On information and belief, Defendant Ledge Lounger submitted the false
`
`declaration with the purpose of stymieing fair competition and harming Defendant Ledge
`
`Lounger’s competitors.
`
`38.
`
`Advantus expressly referenced the fraud in its notice of opposition. (Ex. 1 ¶¶ 115-
`
`138.)
`
`39.
`
`Before the TTAB could issue a final decision with respect to the notice of
`
`opposition, however, Defendant Ledge Lounger—on information and belief—convinced
`
`Advantus to withdraw the petition.
`
`40.
`
`And so, on November 22, 2022, Advantus withdrew its opposition, and, with the
`
`opposition withdrawn, the USPTO allowed the registration on December 27, 2022, No. 6,932,905
`
`(“the ’905 Registration,” attached as Exhibit 2), based, in part, on Defendant Ledge Lounger’s
`
`fraudulent statements.
`
`10
`
`

`

`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 11 of 16. PageID #: 11
`
`41.
`
`On information and belief, ever since Defendant Ledge Lounger obtained the ’905
`
`Registration, Defendant Ledge Lounger has known that its alleged trade dress is functional, is not
`
`distinctive, is generic, and was obtained through fraud.
`
`Defendant Ledge Lounger’s Abusive,
`Anti-Competitive Weaponization of Its Registration
`
`42. With the ’905 Registration in hand, Defendant Ledge Lounger wasted no time
`
`asserting it against competitors.
`
`43.
`
`For example, Defendant Ledge Lounger noticed competitor Global Pool Products,
`
`Inc. (“Global Pool Products”) had begun threatening Defendant Ledge Lounger’s market share
`
`with the sale of a competitive chaise lounge.
`
`44.
`
`In response to this threat, Defendant Ledge Lounger—on information and belief—
`
`submitted one or more infringement reports to Amazon, asserting that chaise lounges of Global
`
`Pool Products had infringed the ’905 Registration.
`
`45.
`
`Because the ’905 Registration is invalid and obtained through fraud, Global Pool
`
`Products filed a petition with the TTAB in November 2023 to cancel the registration, explaining
`
`correctly that the alleged trade dress is generic, that the alleged trade dress is functional, and that
`
`the ’905 Registration was obtained through fraud. (See, generally, Global Pool Product’s Petition
`
`for Cancellation, attached as Exhibit 3.) The documents for the related proceeding—including the
`
`exhibits to the petition—are available at https://ttabvue.uspto.gov/ttabvue/v?pno=92083609.
`
`46.
`
`Four days later, Defendant Ledge Lounger sued Global Pool Products in U.S.
`
`District Court for the Southern District of Texas, Case No. 4:23-cv-04258, asserting nine claims
`
`for relief, including claims for infringement of the ’905 Registration. Notably, however, Defendant
`
`Ledge Lounger did not sue Global Pool Products for alleged infringement of any design patent. In
`
`lieu of answering, Global Pool Products moved to dismiss under Rule 12(b)(6) on the grounds that
`
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`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 12 of 16. PageID #: 12
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`Ledge Lounger had failed to plead plausible facts that the ’905 Registration is valid. The district
`
`court has not yet ruled on the motion.
`
`Defendant Ledge Lounger’s Anti-Competitive Attacks against Step2
`
`47. With the motion to dismiss pending, on April 3, 2024, Defendant Ledge Lounger
`
`sent a cease and desist letter to Step2 at Step2’s headquarters in Streetsboro, Ohio, alleging that
`
`Step2’s Vero Pool Lounger infringed the ’905 Registration. Defendant Ledge Lounger did not
`
`allege that Step2 had infringed any of Defendant Ledge Lounger’s patents.
`
`48.
`
`On information and belief, around the same time, Defendant Ledge Lounger
`
`submitted multiple infringement reports to Amazon, alleging that Step2’s Vero Pool Lounger
`
`infringed valid trade dress rights in Defendant Ledge Lounger’s “Signature Chaise” and
`
`demanding removal of Step2’s Vero Pool Lounger from Amazon.
`
`49.
`
`On information and belief, when Defendant Ledge Lounger submitted its
`
`infringement reports regarding Step2’s Vero Pool Lounger, Defendant Ledge Lounger
`
`threatened—either expressly or impliedly—to sue Amazon if Amazon refused to remove Step2’s
`
`listings for the Vero Pool Lounger.
`
`50.
`
`On information and belief, each time Defendant Ledge Lounger submitted such an
`
`infringement report to Amazon, Defendant Ledge Lounger knew (1) that the ’905 Registration was
`
`invalid, (2) that the ’905 Registration was obtained through fraud, (3) that Step2’s Vero Pool
`
`Lounger did not infringe the ’905 Registration, and (4) that Step2 had significant sales of the Vero
`
`Pool Lounger through Amazon.
`
`51.
`
`In other words, Defendant Ledge Lounger knowingly submitted false and baseless
`
`infringement reports to Amazon with the purpose of stymieing fair competition and harming Step2,
`
`including harming Step2’s business relationships with both Amazon and Step2’s customers.
`
`12
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`

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`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 13 of 16. PageID #: 13
`
`52.
`
`In response to Defendant Ledge Lounger’s reports, Amazon removed Step2’s Vero
`
`Pool Lounger from Amazon.
`
`53.
`
`On information and belief, when Defendant Ledge Lounger submitted its
`
`infringement reports to Amazon regarding Step2’s Vero Pool Lounger, Defendant Ledge Lounger
`
`believed that Amazon would remove the listings for Step2’s Vero Pool Lounger as standard
`
`operating procedure, regardless of the merits of Defendant Ledge Lounger’s allegations.
`
`54. Moreover, when Defendant Ledge Lounger submitted its infringement reports with
`
`Amazon regarding Step2’s Vero Pool Lounger, Defendant Ledge Lounger purposefully directed
`
`its activities at Step2 in Ohio, intending effects that would be felt in Ohio, and, indeed, that were
`
`expressly aimed at Ohio.
`
`55.
`
`As a result of Defendant Ledge Lounger’s false statements and related misconduct,
`
`Step2 has already lost significant sales of the Vero Pool Lounger, and, unless the Court enjoins
`
`Defendant Ledge Lounger, Step2 will suffer millions of dollars in additional damages as well as
`
`serious and irreparable harm, including to the reputation and goodwill that Step2 has spent years
`
`and significant resources building with its customers.
`
`FIRST CLAIM FOR RELIEF
`(Declaratory Judgment of Invalidity and Unenforceability of the ’905 Registration)
`
`56.
`
`Step2 repeats and incorporates by reference the allegations set forth in the foregoing
`
`paragraphs.
`
`57.
`
`The ’905 Registration is invalid and unenforceable at least because the purported
`
`trade dress (1) comprises matter that, as a whole, is functional; (2) is not inherently distinctive and
`
`has not acquired distinctiveness; (3) fails to function as a trademark, i.e., does not function as an
`
`identifier of the source of Defendant Ledge Lounger’s goods; and (4) was obtained through fraud.
`
`13
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`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 14 of 16. PageID #: 14
`
`58.
`
`Because the USPTO erred in registering Defendant Ledge Lounger’s trademark
`
`application, which Defendant Ledge Lounger sought and obtained through fraud, Step2 filed its
`
`own petition for cancellation of the ’905 Registration. Attached collectively as Exhibit 4 is a copy
`
`of Step2’s petition for cancellation, together with its exhibits.
`
`59.
`
`There is an actual, substantial, and continuing justiciable controversy between
`
`Defendant Ledge Lounger and Step2 regarding the validity and enforceability of the ’905
`
`Registration.
`
`SECOND CLAIM FOR RELIEF
`(Declaratory Judgment of Noninfringement of the ’905 Registration)
`
`60.
`
`Step2 repeats and incorporates by reference the allegations set forth in the foregoing
`
`paragraphs.
`
`61.
`
`Notwithstanding the invalidity and unenforceability of the ’905 Registration,
`
`Step2’s Vero Pool Lounger does not infringe the ’905 Registration.
`
`62.
`
`That is, Step2’s Vero Pool Lounger is not likely to cause confusion among ordinary
`
`consumers as to the source, sponsorship, affiliation, or approval with respect to Step2, Defendant
`
`Ledge Lounger, or Defendant Ledge Lounger’s goods.
`
`63.
`
`There is an actual, substantial, and continuing justiciable controversy between
`
`Defendant Ledge Lounger and Step2 regarding Step2’s alleged infringement.
`
`THIRD CLAIM FOR RELIEF
`(Tortious Interference)
`
`64.
`
`Step2 repeats and incorporates by reference the allegations set forth in the foregoing
`
`paragraphs.
`
`65. When Defendant Ledge Lounger submitted its infringement reports with Amazon
`
`regarding Step2’s Vero Pool Lounger, Defendant Ledge Lounger knew that Step2 had a business
`
`14
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`

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`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 15 of 16. PageID #: 15
`
`relationship with Amazon and that Step2 had existing and prospective business relationships with
`
`Amazon’s customers.
`
`66.
`
`Defendant Ledge Lounger submitted its infringement reports with Amazon in bad
`
`faith with the intentional and improper purpose to prevent sales and stymie Step2’s business
`
`relationships.
`
`67.
`
`Step2 has been damaged by Defendant Ledge Lounger’s tortious interference and
`
`is entitled both to monetary relief—including lost profits—in an amount to be determined at trial
`
`and to equitable relief from the Court to stop the current harm caused by Defendant Ledge
`
`Lounger’s misconduct and to prevent Defendant Ledge Lounger from causing similar harm in the
`
`future.
`
`FOURTH CLAIM FOR RELIEF
`(Defamation)
`
`68.
`
`Step2 repeats and incorporates by reference the allegations set forth in the foregoing
`
`paragraphs.
`
`69.
`
`The infringement reports from Defendant Ledge Lounger to Amazon regarding
`
`Step2’s Vero Pool Lounger were false.
`
`70.
`
`71.
`
`Defendant Ledge Lounger knew the reports were false.
`
`Step2 has been damaged by Defendant Ledge Lounger’s defamatory statements and
`
`is entitled both to monetary relief—including lost profits—in an amount to be determined at trial
`
`and to equitable relief from the Court to stop the current harm caused by Defendant Ledge
`
`Lounger’s misconduct and to prevent Defendant Ledge Lounger from causing similar harm in the
`
`future.
`
`15
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`

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`Case: 5:24-cv-00807 Doc #: 1 Filed: 05/06/24 16 of 16. PageID #: 16
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Step2 prays for judgment and relief against Defendant Ledge Lounger,
`
`including:
`
`A.
`
`B.
`
`C.
`
`Declaring that the ’905 Registration is invalid and unenforceable;
`
`Declaring that Step2 has not infringed the ’905 Registration;
`
`Awarding Step2 damages attributable to Defendant Ledge Lounger’s wrongful
`
`conduct, together with pre-judgment and post-judgment interest;
`
`D.
`
`E.
`
`Awarding Step2 its costs and reasonable attorneys’ fees;
`
`Entering permanent and preliminary injunctive relief under the Court’s equitable
`
`authority, including ordering Defendant Ledge Lounger to take corrective measures to mitigate the
`
`irreparable harm it has caused Step2 and to ensure that Defendant Ledge Lounger causes no future
`
`irreparable harm to Step2; and
`
`F.
`
`Such other and further relief as this Court may deem just and proper.
`
`JURY DEMAND
`
`Plaintiff Step2 demands a trial by jury for all issues so triable.
`
`Dated: May 6, 2024
`
`
`
`Respectfully submitted,
`
`
`s/ John F. Bennett
`John F. Bennett (0074506)
`Paul J. Linden (0083699)
`Ava M. Abner (0100384)
`FROST BROWN TODD LLP
`301 East Fourth Street, Suite 3300
`Cincinnati, OH 45202
`513-651-6423
`jbennett@fbtlaw.com
`plinden@fbtlaw.com
`aabner@fbtlaw.com
`
`Attorneys for Plaintiff
`THE STEP2 COMPANY, LLC
`
`16
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`0153749.0787617 4875-5084-7932v1
`
`

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`Case: 5:24-cv-00807 Doc #: 1-1 Filed: 05/06/24 1 of 29. PageID #: 17
`
`
`
`
`
`Exhibit 1
`
`Advantus, Corp.’s Notice of Opposition
`
`

`

`Case: 5:24-cv-00807 Doc #: 1-1 Filed: 05/06/24 2 of 29. PageID #: 18
`
`Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1194964
`03/07/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Granted to date
`of previous ex-
`tension
`
`Address
`
`Attorney informa-
`tion
`
`Advantus, Corp.
`
`03/09/2022
`
`12276 SAN JOSE BLVD., BLDG. 618
`JACKSONVILLE, FL 32223
`UNITED STATES
`
`ELIZABETH G. BORLAND
`SMITH, GAMBRELL & RUSSELL, LLP
`1105 WEST PEACHTREE STREET, N.E.
`SUITE 1000
`ATLANTA, GA 30309
`UNITED STATES
`Primary email: eborland@sgrlaw.com
`Secondary email(s): mbedsole@sgrlaw.com, krowe@sgrlaw.com, khennes-
`sey@sgrlaw.com, docketing@sgrlaw.com, rrivera@sgrlaw.com, mbed-
`solse@sgrlaw.com
`404-8153645
`
`Docket no.
`
`Applicant information
`
`Application no.
`
`88600425
`
`Opposition filing
`date
`
`Applicant
`
`03/07/2022
`
`Ledge Lounger, Inc.
`31203 US90 EAST
`BROOKSHIRE, TX 77423
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`11/09/2021
`
`Opposition period
`ends
`