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ESTTA Tracking number:
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`Filing date:
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`ESTTA1391013
`10/22/2024
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding No.
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`92085573
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`Filing Party
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`Other Party
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`Defendant
`Radlinger Primus Line GmbH
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`Plaintiff
`Primus Pipe and Tube, Inc.
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`Pending Motion
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`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
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`Attachments
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`Consent Motion to Suspend TTAB Proceedings.pdf(81716 bytes )
`Exhibit 1 to Consent Motion to Suspend.pdf(6277135 bytes )
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`Consent Motion for Suspension in View of Civil Proceeding
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`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly,
`Radlinger Primus Line GmbH hereby requests suspension of this proceeding pending a final determination of
`the civil action. Trademark Rule 2.117.
`Radlinger Primus Line GmbH has secured the express consent of all other parties to this proceeding for the
`suspension requested herein.
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`Certificate of Service
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`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/s/ Katherine W. Soule
`Katherine W. Soule
`ksoule@sunsteinlaw.com, ssternberg@sunsteinlaw.com
`10/22/2024
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`

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`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Trademark Registrations:
`
`Registration: 4,693,008
`Mark:
`PRIMUS LINE
`Issued:
`February 24, 2015
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`Registration: 4,561,937
`Mark:
`RÄDLINGER PRIMUS LINE
`Issued:
`July 8, 2014
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`_________________________________
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`Primus Pipe and Tube, Inc.,
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`Petitioner,
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`Rädlinger Primus Line GmbH,
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`Registrant.
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`_________________________________
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`Cancellation No. 92085573
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`CONSENT MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF
`RELATED DISTRICT COURT ACTION
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`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Registrant, Rädlinger Primus
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`Line GmbH (“Registrant”), through its counsel, hereby moves the Board to suspend the above-
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`referenced proceeding (the “TTAB Proceedings”) pending final disposition of the related federal
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`district court case, Rädlinger Primus Line GmbH et al. v. Primus Pipe and Tube, Inc., Case No.
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`1:24-cv-1163, filed on October 18, 2024, in the United States District Court for the District of
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`Delaware (the “District Court Proceedings”) with the express consent of Petitioner, Primus Pipe
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`and Tube, Inc. (“Petitioner”). Copies of the complaint and civil cover sheet from the District Court
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`Proceedings are attached as Exhibit 1.
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`1
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`

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`The complaint seeks a judgment that, among other things, Petitioner is engaged in federal
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`trademark infringement, unfair competition, and false designation of origin in violation of Section
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`43(a) of the Lanham Act, as well as state and common law trademark infringement and unfair
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`competition based, in part, on its use of the trademarks at issue in the TTAB Proceedings.
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`It is “standard procedure” for the Board to suspend its administrative proceedings pending
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`the outcome of related civil litigation when the parties are involved in court proceedings
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`concerning the same marks and issues. New Orleans Louisiana Saint LLC v. Who Dat? Inc., 99
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`USPQ2d 1550, 1552 (TTAB 2011) (quoting 5 McCarthy on Trademarks and Unfair Competition
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`§ 32:47 (5th ed. updated March 2024)). The civil action need not be dispositive of the Board
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`proceedings. It is sufficient that the civil action have bearing on the issues before the Board to
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`warrant suspension. Id.
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`Here, the District Court Proceedings involve the same parties, the same marks, and the
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`same goods as those at issue in the TTAB Proceedings. In addition to the issues before the Board,
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`there are broader issues involved in the District Court Proceedings, including, for example,
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`infringement and unfair competition. In the District Court Proceedings, Registrant seeks, among
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`other remedies, damages and injunctive relief, which are not available in the TTAB Proceedings.
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`Because the parties, marks, and issues in the TTAB Proceedings are the same as those included in
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`the District Court Proceedings, suspension of the TTAB Proceedings is warranted.
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`Additionally, judicial economy favors suspension of the TTAB Proceedings. See TBMP
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`§ 510.02(a). Discovery in the District Court Proceedings will involve documents, depositions, and
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`other information relevant to the TTAB Proceedings. It would be a waste of the Board’s and the
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`parties’ time and resources to proceed with the TTAB Proceedings when related issues are pending
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`in the District Court Proceedings.
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`2
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`

`

`
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`WHEREFORE, Registrant respectfully requests, with the express consent of Petitioner,
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`that the TTAB Proceedings be suspended pending the outcome of the District Court Proceedings.
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`Dated: October 22, 2024
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`RÄDLINGER PRIMUS LINE GMBH
`
`By its attorneys,
`
`
`/s/ Sharona H. Sternberg__________
`Sharona H. Sternberg
`Katherine W. Soule
`SUNSTEIN LLP
`100 High Street
`Boston, Massachusetts 02110-2321
`ssternberg@sunsteinlaw.com
`ksoule@sunsteinlaw.com
`Telephone: (617) 443-9292
`
`3
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of Registrant’s Consent Motion to Suspend
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`Proceedings Pending Disposition of Related District Court Action was served on October 22, 2024,
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`to Petitioner’s Attorney of Record, Benjamin Charkow, by electronic mail
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`to
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`bcharkow@mabr.com, esullenberger@mabr.com, and docket@mabr.com.
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`/s/ Katherine W. Soule
`Katherine W. Soule
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`4
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`Exhibit 1
`Exhibit 1
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`

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`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 1 of 23 PageID #: 1
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`Plaintiffs,
`
`
`
`v.
`
`
`Rädlinger Primus Line GmbH and
`Raedlinger Primus Line, Inc.,
`
`
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`
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`Primus Pipe and Tube, Inc.,
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`
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`Defendant.
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` C.A. No. ________________________
`
`
` COMPLAINT &
` JURY DEMAND
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`COMPLAINT AND JURY DEMAND
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`This is an action for trademark and trade name infringement, false designation of origin,
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`and unfair competition. Plaintiffs Rädlinger Primus Line GmbH and Raedlinger Primus Line, Inc.
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`(collectively, “Primus Line”) alleges as follows for its complaint against Defendant Primus Pipe
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`and Tube, Inc. (“Primus Pipe”):
`
`NATURE OF THE ACTION
`
`1.
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`Primus Line seeks damages and injunctive relief for trademark and trade name
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`infringement, false designation of origin, and unfair competition by Defendant Primus Pipe and
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`Tube in violation of the laws of the United States and the State of Florida. Defendant Primus Pipe
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`and Tube’s use of the PRIMUS company name and trademarks in connection with pipes and tubes,
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`despite knowledge of Primus Line’s use of the PRIMUS company name and trademarks in
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`connection with pipes and tubes, among other things, constitutes willful violation of Primus Line’s
`
`rights.
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`
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`
`
`1
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 2 of 23 PageID #: 2
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`
`
`PARTIES
`
`2.
`
`Plaintiff Rädlinger Primus Line GmbH is a corporation duly organized and existing
`
`under the laws of Germany and having its principal place of business at Kammerdorfer Strasse 16,
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`Cham, Germany 93413.
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`3.
`
`Plaintiff Raedlinger Primus Line, Inc. is a corporation duly organized and existing
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`under the laws of the State of North Carolina and having its principal place of business at 112 S.
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`Tyron Street, Suite 1500, Charlotte, North Carolina 28284.
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`4.
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`Defendant Primus Pipe and Tube, Inc., is, upon information and belief, a
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`corporation organized and existing under the laws of the State of Delaware having its place of
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`business at 5855 Obispo Avenue, Long Beach, California 90805, United States.
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`5.
`
`Upon information and belief, Defendant Primus Pipe and Tube, Inc.’s primary
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`facility is located at 241 W. Clarke Street, Wildwood, Florida 34785, United States.
`
`6.
`
`Upon information and belief, Primus Pipe and Tube, Inc. is a subsidiary of Ta Chen
`
`International (“TCI”) and Ta Chen Stainless Pipe Co., Ltd., a Taiwanese company that has a
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`number of locations and subsidiaries in the United States that provide pipes, tubes, and piping
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`products of various sizes and uses.
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`JURISDICTION AND VENUE
`
`7.
`
`This action arises under federal law, state law, and common law. The federal law
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`claims are federal trademark and trade name infringement in violation of Section 43(a) of the
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`Lanham Act (15 U.S.C. § 1125(a)) and federal false designation of origin and unfair competition
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`in violation of the Lanham Act (15 U.S.C. § 1125(a)). The state and common law claims are
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`trademark infringement and unfair competition in violation of Florida statutory law and common
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`law.
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`
`
`
`2
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 3 of 23 PageID #: 3
`
`
`
`8.
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`This Court has original subject matter jurisdiction over the federal law claims under
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`28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1338(a)–(b) (trademarks and unfair competition),
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`and 15 U.S.C. § 1121 (Lanham Act).
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`9.
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`This Court has supplemental subject matter jurisdiction over the state law and
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`common law claims under 28 U.S.C. § 1367(a).
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`10.
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`This Court has personal jurisdiction over Defendant Primus Pipe and Tube because
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`Primus Pipe is incorporated in the State of Delaware. This Court has both specific and general
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`personal jurisdiction over Defendant Primus Pipe and Tube. Defendant Primus Pipe and Tube is
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`subject to this Court’s general personal jurisdiction because it is at home in the State of Delaware
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`and the exercise of jurisdiction would be reasonable.
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`11.
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`Venue is proper in this district under 28 U.S.C. §§ 1391(b)–(c) because, inter alia,
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`Defendant resides in this district and is subject to personal jurisdiction in Delaware.
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`BACKGROUND
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`Plaintiff Primus Line and Its PRIMUS Company Name and Trademarks
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`12.
`
`Plaintiff Rädlinger Primus Line GmbH was founded in Germany in 2001 by the
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`Werner Rädlinger Group, a family-run group of companies, in order to create an innovative
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`product for safe, reliable, and sustainable trenchless rehabilitation of pressurized pipes for different
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`applications, such as water, gas, and oil, and the construction of freely layable pipelines. After five
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`years of intensive development work, Primus Line released its product to the market in 2001.
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`13.
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`Today, Primus Line continues to be family-run and has offices around the world,
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`including in the United States, Canada, Australia, and China, serving customers globally.
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`14.
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`Primus Line is a pipe and tube company in the business of providing goods and
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`services in the fields of pipes and tubes, including pipes, tubes, and services relating to the
`
`
`
`
`3
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 4 of 23 PageID #: 4
`
`
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`installation, maintenance, and repair of pipelines (the “Primus Line Goods and Services”) to
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`contractors, engineering companies, pipe owners, and municipalities.
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`15.
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`Primus Line currently offers the Primus Line Rehab system for the trenchless
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`rehabilitation of pressure pipes, as well as the Primus Line Overland Piping system for flexible
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`above-ground pipes.
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`16.
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`The Primus Line Rehab system is an environmentally oriented technology for
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`rehabilitating aging pipelines, including pipelines for transporting water, gas, and oil, among other
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`things. See https://www.primusline.com/en-us/rehabilitation/system (last accessed September 24,
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`2024). The Primus Line Rehab system is a loose-fit process, meaning that an annular space remains
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`between the inserted liner and existing pipe, and the Primus Liner functions like a new pipe within
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`the existing pipe, taking the internal operating pressure off the aging pipe and facilitating the
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`calculation of remaining service life of the pipe.
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`17.
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`As part of the Primus Line Rehab system, Primus Line offers a Primus Line Test
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`Piece, which is a metal pipe integrated into the pipe network at the end of a rehabilitated section
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`used to check the condition of the pipe as its service life progresses. The Primus Line Test Piece
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`is a two-meter long metal pipe spool with the Primus Liner inside and Primus Line connectors at
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`the ends, as shown below.
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`4
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`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 5 of 23 PageID #: 5
`
`
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`
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`https://www.linkedin.com/posts/r-dlinger-primus-line-gmbh_do-you-know-the-primus-line-test-
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`piece-activity-7229468060271693824-
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`OTxM?utm_source=share&utm_medium=member_desktop (last accessed September 24, 2024).
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`18.
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`The Primus Line Test Piece usually consists of two half-shell pipes screwed
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`together, which can be wholly removed to test for tightness and chemical resistance. Regular
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`inspection of the Primus Line Test Piece gives the pipe operator additional planning and
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`operational reliability. Id.
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`19.
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`The Primus Line Overland Piping system is an environmentally oriented, quick-to-
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`install and reusable solution for creating above-ground pipes that can be flexibly unrolled and
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`rolled up again and that adapts naturally to changes in direction and uneven surfaces. See
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`https://www.primusline.com/en/overland-piping/system.
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`20.
`
`Since at least as early as May 2013, Primus Line has marketed and sold its pipes,
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`tubes, and services relating to the installation, maintenance, and repair of gas and liquid pipeline
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`in the United States in connection with PRIMUS-Formative marks (as defined below) to customers
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`throughout the world, including customers in the United States.
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`
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`5
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 6 of 23 PageID #: 6
`
`
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`21.
`
`The PRIMUS-Formative marks include, but are not limited to, the following
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`registered marks: U.S. Registration No. 4,693,008 for the mark PRIMUS LINE (plus design); and
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`U.S. Registration No. 4,561,937 for the mark RÄDLINGER PRIMUS LINE.
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`22.
`
`Primus Line promotes the Primus Line Goods and Services in connection with its
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`PRIMUS-Formative marks across the United States, since at least as early as May 2013, through
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`its website, www.primusline.com, social media, print and digital marketing materials,
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`presentations and lectures to customers and potential customers, and through its active
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`participation at industry conferences and active memberships in industry organizations, such as
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`the National Association of Sewer Service Companies (NASSCO) or the American Water Works
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`Association (AWWA).
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`23.
`
`Primus Line is regularly mentioned in connection with its Primus Line Goods and
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`Services in industry publications and third-party articles and press releases with worldwide
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`distribution.
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`24.
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`Primus Line has invested substantial time, money, and effort to advertise and
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`promote the Primus Line Goods and Services under PRIMUS-Formative marks in the United
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`States. Primus Line prominently displays PRIMUS-Formative marks on its website. By virtue of
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`its efforts, Primus Line has developed substantial recognition and goodwill in its mark.
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`25.
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`Plaintiff Rädlinger Primus Line GmbH owns U.S. Registration No. 4,693,008 for
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`the mark PRIMUS LINE (plus design) in connection with: “Metal pipes; metal tubes” in
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`International Class 6; “Non-metal tubes, namely, tubing made of textile material and high-strength
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`threads for transport of gases and liquids” in International Class 17; and “Installation, maintenance
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`and repair of gas and liquid pipelines” in International Class 37.
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`6
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`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 7 of 23 PageID #: 7
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`
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`26.
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`A true and copy of the certificate of registration for U.S. Registration No. 4,693,008
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`is attached as Exhibit A.
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`27.
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`Plaintiff Rädlinger Primus Line GmbH owns U.S. Registration No. 4,561,937 for
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`the mark RÄDLINGER PRIMUS LINE in connection with “Metal pipes; metal tubes” in
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`International Class 6 and “Non-metal tubes, namely, tubing made of textile material and high-
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`strength threads for transport of gases and liquids” in International Class 17.
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`28.
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`A true and correct copy of the certificate of registration for U.S. Registration No.
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`4,561,937 is attached as Exhibit B.
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`29.
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`Through Primus Line’s significant and long-term promotional activities, its
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`PRIMUS LINE company name and PRIMUS-Formative marks embody extensive goodwill and
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`industry recognition.
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`Defendant Primus Pipe and Tube and Its Unlawful Conduct
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`30.
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`Upon information and belief, on July 31, 2017, Outkumpu Stainless Pipe Inc.
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`changed its name to Primus Pipe and Tube, Inc. by filing with the Secretary of State of the State
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`of Delaware a Certificate of Amendment to its Restated Certificate of Incorporation. Upon
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`information and belief, the name change became effective and Primus Pipe started using the
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`Primus Pipe and Tube company name and PRIMUS-formative trademarks (the “Infringing
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`PRIMUS Marks”) on or after August 1, 2017, well after Primus Line started using its PRIMUS-
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`Formative marks in connection with pipes and tubes and related services in the United States.
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`31.
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`Like Primus Line, Primus Pipe is a pipe and tube company, offering pipes and tubes
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`and related services (“Primus Pipe Goods and Services”).
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`7
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`

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`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 8 of 23 PageID #: 8
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`
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`32.
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`Like Primus Line, Primus Pipe
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`refers
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`to
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`itself as “Primus.” See
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`http://www.primuspipeandtube.com/ (last accessed September 23, 2024) (“Let Primus be your
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`source when quality and deliveries are critical”) (emphasis added).
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`33.
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`Both companies use and display PRIMUS marks in a similar fashion on their
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`websites.
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`Primus
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`Line,
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`https://www.primusline.com/en-us/,
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`and
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`Primus
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`Pipe,
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`http://www.primuspipeandtube.com/default.html, display the PRIMUS-formative marks in the
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`top-left corner of their respective websites:
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`
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`34.
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`The Primus Pipe Goods and Services promoted and sold in connection with the
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`Infringing PRIMUS Marks are identical, highly similar, and/or related to the Primus Line Goods
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`and Services promoted and sold in connection with Primus Line’s PRIMUS-Formative marks.
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`35.
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`Upon information and belief, both Primus Line and Primus Pipe market to the same
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`class of consumers, including contractors, engineers, pipe owners, and municipalities. Primus Line
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`produces pipes and tubes for safe, reliable, and sustainable trenchless rehabilitation of pressurized
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`pipes and the construction of freely layable pipelines. Primus Pipe provides pipes and tubes,
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`including large diameter heavy wall pipes. Both parties provide pipes and tubes.
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`36.
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`The PRIMUS element of the parties’ respective marks are identical. They do not
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`differ in sight, spelling, or pronunciation. Plaintiff Primus Line’s PRIMUS-Formative marks are
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`8
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`

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`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 9 of 23 PageID #: 9
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`
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`highly similar to the Primus Pipe’s Infringing PRIMUS Marks, as PRIMUS is the dominant
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`element of both parties’ marks, and the subordinate elements of the parties’ marks, LINE and PIPE
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`AND TUBE, respectively, are similarly descriptive.
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`37.
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`Upon information and belief, Primus Pipe uses and displays the Infringing
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`PRIMUS Marks on its website, promotional materials, and social media to market and promote
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`the Primus Pipe Goods and Services. Primus Pipe promotes the Infringing PRIMUS Marks and
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`the Primus Pipe Goods and Services to construction projects and engineers across industries.
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`38.
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`There is significant overlap in the industries to which both Primus Line and Primus
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`Pipe sell goods and services.
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`39.
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`Both Primus Line and Primus Pipe market their goods and services using the same
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`channels of trade and media, including their websites and social media.
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`40.
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`Upon information and belief, Primus Pipe markets and sells the Primus Pipe Goods
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`and Services under the Infringing PRIMUS Marks in the same geographic regions that Primus
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`Line markets and sells the Primus Line Goods and Services under the PRIMUS-Formative marks,
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`including, among other geographic locations, in the State of Florida.
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`41.
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`As a result of Primus Pipe’s marketing and sale of the Primus Pipe Goods and
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`Services in connection with the Infringing PRIMUS marks, consumers are likely to be confused
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`such that consumers will erroneously believe that Primus Pipe is affiliated, connected, or
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`associated with, or in some way related to Primus Line or the Primus Line Goods and Services
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`offered under the PRIMUS Mark.
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`42.
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`Primus Pipe owns U.S. Application Serial No. 98/122,987 for the mark PRIMUS
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`PIPE AND TUBE in connection with: “Stainless steel pipes; Stainless steel tubing; Tubes of nickel
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`alloys; Nickel grade pipes; Carbon steel pipes” in International Class 6, filed on August 8, 2023.
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`9
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`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 10 of 23 PageID #: 10
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`43.
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`A true and copy of the application for U.S. Application Serial No. 98/122,987 is
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`attached as Exhibit C.
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`44.
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`On April 12, 2024, the USPTO issued a Non-Final Office Action in connection
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`with U.S. Application Serial No. 98/122,987, refusing registration of the PRIMUS PIPE AND
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`TUBE mark based on a likelihood of confusion with Plaintiff Primus Line’s trademark
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`registrations for the marks PRIMUS LINE (plus design) (U.S. Reg. No. 4,693,008) and
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`RÄDLINGER PRIMUS LINE (U.S. Reg. No. 4,561,937).
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`45.
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`A true and correct copy of the Non-Final Office Action issued by the USPTO
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`against U.S. Application Serial No. 98/122,987 on April 12, 2024, is attached as Exhibit D.
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`46.
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`Primus Pipe owns U.S. Application Serial No. 98/122,977 for the mark P PRIMUS
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`PIPE AND TUBE (plus design), shown below, in connection with: “Stainless steel pipes; Stainless
`
`steel tubing; Tubes of nickel alloys; Nickel grade pipes; Carbon steel pipes” in International Class
`
`6, filed on August 8, 2023.
`
`47.
`
`A true and copy of the application for U.S. Application Serial No. 98/122,977 is
`
`
`
`attached as Exhibit E.
`
`48.
`
`On April 12, 2024, the USPTO issued a Non-Final Office Action in connection
`
`with U.S. Application Serial No. 98/122,977, refusing registration of the PRIMUS PIPE AND
`
`TUBE mark based on a likelihood of confusion with Plaintiff Primus Line’s trademark
`
`registrations for the marks PRIMUS LINE (plus design) (U.S. Reg. No. 4,693,008) and
`
`RÄDLINGER PRIMUS LINE (U.S. Reg. No. 4,561,937).
`
`
`
`
`10
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 11 of 23 PageID #: 11
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`
`
`49.
`
`A true and correct copy of the Non-Final Office Action issued by the USPTO
`
`against U.S. Application Serial No. 98/122,977 on April 12, 2024, is attached as Exhibit F.
`
`50.
`
`On April 17, 2024, counsel for Primus Pipe contacted counsel for Primus Line,
`
`informing Primus Line that Primus Line’s registrations were cited against Primus Pipe’s trademark
`
`applications.
`
`51.
`
`On June 28, 2024, Primus Pipe filed a Petition for Cancellation of Class 6 of Primus
`
`Line’s Registration Nos. 4,693,008 and 4,561,937 with the United States Trademark Trial and
`
`Appeal Board (Cancellation No. 92085573), seeking to cancel Primus Line’s registrations for
`
`PRIMUS LINE and RÄDLINGER PRIMUS LINE with respect to Class 6 in connection with
`
`“Metal pipes; metal tubes,” alleging non-use.
`
`52.
`
`Primus Pipe did not seek to cancel Plaintiff’s registrations for PRIMUS LINE (plus
`
`design) (U.S. Reg. No. 4,693,008) and RÄDLINGER PRIMUS LINE (U.S. Reg. No. 4,561,937)
`
`in connection with the goods and services in International Classes 17 and 37.
`
`53.
`
`In a letter dated August 19, 2024, counsel for Primus Line confirmed that Primus
`
`Line uses its PRIMUS-Formative marks in connection with “Metal pipes; metal tubes” and notified
`
`Primus Pipe that it was infringing Primus Line’s trademark rights by using the Infringing PRIMUS
`
`Marks in connection with pipes and tubes. Counsel for both parties engaged in further
`
`correspondence.
`
`54.
`
`Despite Primus Line’s demand that Primus Pipe cease the use of the Infringing
`
`PRIMUS Marks, Primus Pipe has continued to use the Infringing PRIMUS Marks on its website,
`
`and in its online promotion.
`
`55.
`
`Primus Pipe is thereby willfully and purposefully using marks confusingly similar
`
`to Primus Line’s registered marks for its own competing services and creating a false impression
`
`
`
`
`11
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 12 of 23 PageID #: 12
`
`
`
`that Primus Pipe and its goods and services are affiliated or related to Primus Line and Primus
`
`Line’s goods and services, or that Primus Pipe is a successor or affiliate of Primus Line’s business.
`
`56.
`
`For example, it is standard practice in the pipe and tube industry for consumers to
`
`search the NSF Public Health and Safety database to confirm whether a company they are
`
`considering for a project is NSF-certified, for example whether it is NSF61-certified. Consumers
`
`searching for “Primus” in the NSF database will get the following search results listing Primus
`
`Pipe and Tube, Inc. and Rädlinger Primus Line GmbH. Consumers may incorrectly assume that
`
`Primus Pipe and Tube, Inc. is a subsidiary of Rädlinger Primus Line GmbH and/or that the
`
`companies are otherwise related, given the shared PRIMUS mark.1
`
`
`
`
`
`
`
`1 See
`https://info.nsf.org/Certified/Common/Company.asp?CompanyName=primus&_gl=1*fn29yk*_
`ga*MTU3ODI1NTczNy4xNzI3Nzk3MDE1*_ga_P2KS3C05YD*MTcyNzc5NzAyMi4xLjEuM
`TcyNzc5NzI5MS41OC4wLjA.*_gcl_au*MTcwMzIwMjIyMy4xNzI3Nzk3MDIz*_ga_B3R74P
`2MZC*MTcyNzc5NzAyMi4xLjEuMTcyNzc5NzI5MS41OC4wLjA.
`
`
`
`
`12
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 13 of 23 PageID #: 13
`
`
`
`
`
`57.
`
`Primus Pipe’s unauthorized use of the Infringing PRIMUS Marks in connection
`
`with identical, highly similar and/or related goods and services to those offered by Primus Line in
`
`connection with its PRIMUS-Formative marks will continue to cause consumer confusion and
`
`harm to Primus Line’s reputation in the marketplace.
`
`58.
`
`The parties have been unable to resolve the dispute, which has led to this lawsuit.
`
`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT
`Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)
`
`Primus Line incorporates by reference the allegations set forth above as though
`
`59.
`
`fully set out herein.
`
`60.
`
`Defendant Primus Pipe uses the company name Primus Pipe and Tube, Inc. and
`
`Primus and uses the trademarks PRIMUS PIPE AND TUBE and P PRIMUS PIPE AND TUBE
`
`
`
`
`13
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 14 of 23 PageID #: 14
`
`
`
`(plus design) in commerce in connection with its advertising, promotion, and sale of the Primus
`
`Pipe and Tube Goods and Services without authorization from Primus Line, infringing upon
`
`Primus Line’s PRIMUS-Formative marks.
`
`61.
`
`Defendant Primus Pipe’s acts and conduct as set forth above likely have already
`
`caused and will continue to cause confusion, or to cause mistake, or to deceive as to the affiliation,
`
`connection, or association of Defendant Primus Pipe with Plaintiff Primus Line or as to the origin,
`
`sponsorship, or approval of Primus Pipe’s goods, services, or commercial activities.
`
`62.
`
`Defendant Primus Pipe’s unauthorized use of the Infringing PRIMUS Marks and
`
`company name constitutes trademark and trade name infringement in violation of Section 32(1) of
`
`the Lanham Act, codified at 15 U.S.C. § 1114(1).
`
`63.
`
`Defendant Primus Pipe’s unauthorized use of the Infringing PRIMUS Marks and
`
`company name will result in harm to Primus Line’s reputation and its goodwill in its PRIMUS-
`
`Formative marks in the marketplace.
`
`64.
`
`Defendant Primus Pipe’s infringement of Primus Line’s trade name and trademarks
`
`has been willful, wanton, reckless, and in total disregard of Primus Line’s rights.
`
`65.
`
`By reason of the foregoing, Plaintiff Primus Line has suffered monetary damages
`
`and loss of goodwill.
`
`66.
`
`Defendant Primus Pipe’s acts and conduct are causing irreparable injury to Primus
`
`Line, for which there is no adequate remedy at law, and will continue to do so unless this Court
`
`enjoins Defendant Primus Pipe’s use of the Infringing PRIMUS Marks and company name.
`
`67.
`
`By reason of the foregoing, Plaintiff Primus Line has been damaged and is entitled
`
`to injunctive relief and damages in an amount to be proven at trial.
`
`
`
`
`14
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 15 of 23 PageID #: 15
`
`
`
`COUNT II
`FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN
`Section 43 (a) of the Lanham Act, 15 U.S.C. § 1125(a)
`
`Primus Line incorporates by reference the preceding paragraphs above as though
`
`68.
`
`fully set out herein.
`
`69.
`
`Defendant Primus Pipe uses the Infringing PRIMUS Marks in commerce in
`
`connection with its advertising, promotion, and sale of the Primus Pipe Goods and Services
`
`without authorization from Primus Line.
`
`70.
`
`Defendant Primus Pipe’s unlawful acts are likely to cause confusion, or to cause
`
`mistake, or to deceive as to the affiliation, connection, or association of Defendant Primus Pipe
`
`with Primus Line or as to the origin, sponsorship, or approval of Defendant Primus Pipe’s goods,
`
`services, or commercial activities, and/or as to the nature, characteristics, or qualities of Plaintiff
`
`Primus Line’s goods and services.
`
`71.
`
`Defendant Primus Pipe has engaged in unlawful acts that constitute unfair
`
`competition and false designation of origin in violation of Section 43(a) of the Lanham Act,
`
`codified at 15 U.S.C. § 1125(a).
`
`72.
`
`Defendant Primus Pipe’s acts and conduct are causing irreparable injury to Primus
`
`Line, for which there is no adequate remedy at law, and will continue to do so unless this Court
`
`enjoins Defendant Primus Pipe’s use of the Infringing PRIMUS Marks and company name.
`
`73.
`
`By reason of the foregoing, Primus Line has suffered monetary damages and loss
`
`of goodwill.
`
`74.
`
`Defendant Primus Pipe’s conduct as described above has been willful, wanton,
`
`reckless, and in total disregard for Primus Line’s rights.
`
`
`
`
`15
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 16 of 23 PageID #: 16
`
`
`
`75.
`
`By reason of the foregoing, Plaintiff Primus Line has been damaged and is entitled
`
`to injunctive relief and damages in an amount to be proven at trial.
`
`COUNT III
`UNFAIR COMPETITION
`in Violation of Fla. Stat. § 501.204
`
`76.
`
`Primus Line incorporates by reference the allegations set forth above as though
`
`fully set out herein.
`
`77.
`
`The acts complained of herein occurred primarily and substantially in the State of
`
`Florida because Defendant Primus Pipe actively conducts business in Florida.
`
`78.
`
`Defendant Primus Pipe is using the Infringing PRIMUS Marks in connection with
`
`the sale, offer for sale, and advertising and marketing of the Primus Pipe Goods and Services in
`
`commerce without authorization from Primus Line in an unlawful and unfair manner so as to create
`
`a likelihood of confusion among prospective purchasers as to the source of its goods and services,
`
`which acts have damaged and impaired the goodwill symbolized by Primus Line’s PRIMUS-
`
`Formative Marks to its immediate and irreparable harm.
`
`79.
`
` As set forth above, Defendant Primus Pipe has engaged in unlawful business acts
`
`or practices, including trademark infringement, violations of the Lanham Act, and violations of
`
`Florida Statutes, all in an effort to gain an unfair competitive advantage by trading on Plaintiff
`
`Primus Line’s efforts and reputation.
`
`80.
`
`As set forth above, Defendant Primus Pipe’s acts constitute unfair competition and
`
`deceptive acts in violation of Fla. Stat. § 501.204.
`
`81.
`
`As a result of Defendant Primus Pipe’s unlawful actions and practices, Plaintiff
`
`Primus Line has sustained economic damages, including but not limited to lost sales and profits, a
`
`
`
`
`16
`
`

`

`Case 1:24-cv-01163-UNA Document 1 Filed 10/18/24 Page 17 of 23 PageID #: 17
`
`
`
`reduction in the value of Primus Line’s PRIMUS-Formative marks, and being compelled to expend
`
`money to redress and prevent Defendant Primus Pipe’s unfair competit

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