Promera Health, LLC. v. Vireo Systems, Inc. et al, No. 1:15-cv-10595 (D. Mass. Jan 06, 2016), AMENDED COMPLAINT against
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`Multiple Documents
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`Part Description
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`9 pages
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`Exhibit 1
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`Exhibit 2
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`Exhibit 3
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`Exhibit 4
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`Exhibit 5
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`Exhibit 6
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`© 2016 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Service
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`Harvest Trading Group - Ex. 1105
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`PROMERA HEALTH, LLC,
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`Plaintiff,
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`v.
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`VIREO SYSTEMS, INC.,
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`Defendant.
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`Civil Action No. 1:15-cv-10595-NMG
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`SECOND AMENDED COMPLAINT FOR DECLARATORY JUDGMENT
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`For its complaint against defendant Vireo Systems, Inc. (“Vireo”), plaintiff, ProMera
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`Health, LLC (“ProMera”), alleges as follows:
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`1.
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`ProMera seeks a declaratory judgment that its use of its federally registered
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`CON-CRET and CON-CRET REINFORCED trademarks has not and does not infringe or
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`otherwise interfere with the asserted rights of Vireo, and ProMera’s acts have not violated and do
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`not violate federal or state laws relating to trademark infringement, unfair competition, or
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`deceptive trade practices, including without limitation Sections 32 and 43(a) of the Lanham Act
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`15 U.S.C. §§ 1114 and 1125(a), or the statutory or common law of the Commonwealth of
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`Massachusetts or the laws of other states.
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`PARTIES
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`2.
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`ProMera is a Massachusetts limited liability company with its principal place of
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`business in Norwell, Massachusetts.
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`3.
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` Vireo is a Tennessee corporation with its principal place of business in
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`Madison, Tennessee.
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 2 of 9
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`JURISDICTION AND VENUE
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`4.
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`This Court has subject matter jurisdiction over this complaint pursuant to 28
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`U.S.C. §§ 1121, 1331, 1338, 2201 and 2202.
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`5.
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`This Court has personal jurisdiction over Vireo because, inter alia, Vireo has
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`purposefully availed itself of the laws of Massachusetts, the claims at issue arise out of or are
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`related to Vireo’s Massachusetts activities, and the exercise of personal jurisdiction over Vireo is
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`reasonable. More specifically, Vireo is a Member of ProMera and party to a contract with
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`ProMera, regularly transacts business with ProMera, consistently communicates with ProMera
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`and other Massachusetts entities, and its owner and representatives have repeatedly traveled to
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`Massachusetts, including to litigate separate federal and state-court actions against ProMera
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`and/or ProMera’s affiliates.
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`6.
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`Venue is proper in this forum pursuant to 28 U.S.C. §§ 1391(b) and (c), and the
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`applicable law of this Court.
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`CASE OR CONTROVERSY
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`7.
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`ProMera is a leading developer and marketer of dietary supplements used by
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`athletes to enhance performance and maximize work-out results. Since 2007, ProMera’s product
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`line has grown into over 40 high quality products including a variety of supplements that aid in
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`increasing energy, endurance, strength, weight loss, fat burn, and decreasing post-workout
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`recovery intervals while remaining compliant with the regulations of organized amateur and
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`professional sporting organizations.
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`8.
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`One of the dietary supplements marketed by ProMera is creatine hydrochloride
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`(HCl). Creatine HCl is believed to improve strength, increase lean muscle mass, and help the
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`muscles recover more quickly during exercise.
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 3 of 9
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`9.
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`ProMera’s creatine HCl supplements are distributed under the ProMera CON-
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`CRET and CON-CRET REINFORCED brands.
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`10.
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`ProMera is the exclusive owner of incontestable U.S. Trademark Registration No.
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`3,222,738 for CON-CRET, listed on the Principal Register, granted March 27, 2007, and used
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`for goods included within International Class 5. A copy of the registration from the records of
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`the United States Patent and Trademark Office is attached to this complaint as Exhibit 1.
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`11.
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`ProMera is the exclusive owner of U.S. Trademark Registration No. 4,112,219
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`for CON-CRET REINFORCED, listed on the Principal Register, granted March 13, 2012, and
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`used for goods included within International Class 5. A copy of the registration from the
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`records of the United States Patent and Trademark Office is attached to this complaint as Exhibit
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`2.
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`12.
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`ProMera is the exclusive owner of U.S. Trademark Application Serial No.
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`86,387,745 for CON-CRET BLACK, filed September 8, 2014 for goods included within
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`International Class 5. A copy of the application status from the records of the United States
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`Patent and Trademark Office is attached to this complaint as Exhibit 3.
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`13.
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`The trademarks that are the subject of the foregoing registrations and application
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`are referred to collectively hereinafter as ProMera’s “CON-CRET Marks.”
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`14.
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`ProMera has invested substantial time, money, and effort in building the business
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`conducted in connection with the CON-CRET Marks and in promoting its goods and services
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`offered and to be offered in connection with the CON-CRET Marks.
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`15.
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`In addition, ProMera has expended hundreds of thousands of dollars in marketing
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`its goods and services under the marks. For example, ProMera promotes its goods and services
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`under the CON-CRET Marks on its website located at promerasports.com, in print advertising,
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 4 of 9
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`at industry trade shows, and through social media. The stores that offer the CON-CRET
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`products display advertising that bear the CON-CRET Marks and the product is delivered in
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`packaging bearing the CON-CRET Marks. A copy of the labelling included with the current
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`CON-CRET creatine HCl product is included as Exhibit 4.
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`16.
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`On or about March 22, 2011, ProMera and Vireo entered into a certain Product
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`Development and Marketing Agreement (“PDMA”) under the terms of which Vireo would serve
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`as the sole provider of bulk creatine HCl to ProMera. The parties operated under this
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`arrangement until early February 2015.
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`17.
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` On February 4, 2015, Vireo sent a letter to ProMera terminating the PDMA and
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`informing ProMera that Vireo had initiated litigation in Tennessee state court against ProMera
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`for alleged breaches of the PDMA. Vireo refused to supply ProMera with further deliveries of
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`creatine HCl. In its February 4 letter, Vireo further demanded that ProMera cease using
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`ProMera’s CON-CRET and CON-CRET REINFORCED marks arguing that the marks had
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`become inextricably associated with the creatine HCl sourced from Vireo and alleging that any
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`sale of third-party creatine HCl under the CON-CRET Marks would “be a violation of the
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`federal and state trademark laws and will constitute an [sic] deceptive and unfair act by ProMera
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`by passing off other products as the patent-protected products that are exclusively manufactured
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`by Vireo.” A true and correct copy of Vireo’s February 4, 2015 letter is attached as Exhibit 5.
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`18.
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`As a result of Vireo’s actions, ProMera is forced to identify alternate sources of
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`high-quality creatine HCl for its CON-CRET products. Vireo, however, is seeking to prevent
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`ProMera from using any source of creatine HCl.
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`19.
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`On February 10, 2015, Vireo again wrote to ProMera threatening “willful and
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`knowing infringement of Vireo’s patent rights” as to U.S. Patent Nos. 8,354,450 (“the ‘450
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 5 of 9
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`patent”) and 8,962,685 (“the ‘685 patent”) for the sale of creatine HCl sourced from any third
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`party. Vireo further reiterated its threat that any distribution of creatine HCl from a source other
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`than Vireo would constitute “passing off the non-patented product as the patented one and
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`would deceive the public” and threatened to “inform retailers and consumers, as well as state
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`and federal consumer protection agencies and order to protect retailers and consumers [from
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`purchasing non-Vireo sourced creatine HCl].” A true and correct copy of Vireo’s February 10,
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`2015 letter is attached as Exhibit 6.
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`20.
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`Vireo’s false allegations of infringement relating to ProMera’s creatine HCl
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`products and claims of passing off and false designation of origin have placed a cloud over
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`ProMera’s business.
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`21.
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`There exists a clear and serious threat to ProMera’s business so long as these
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`issues regarding the CON-CRET Marks remain unresolved. ProMera therefore needs and seeks
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`resolution of the issues asserted in this action to lift this cloud over its business.
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`22.
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`ProMera is entitled to declaratory relief in order to avoid wrongful injury to the
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`reputation of its goods and services in the marketplace and other direct injury suffered from
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`Vireo’s false allegations.
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`COUNT I
`(DECLARATORY JUDGMENT AS TO TRADEMARKS)
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`ProMera repeats and realleges the foregoing allegations as though fully set forth
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`23.
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`herein.
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`24.
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`ProMera has been using its CON-CRET Marks and is in the process of
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`substantially expanding the business that it is and will be conducting under the CON-CRET
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`Marks. It has promoted, and is in the process of increasing its promotion of the CON-CRET
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`Marks. After ProMera’s substantial use, promotion, and investment, Vireo has now objected to
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`5
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 6 of 9
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`ProMera’s use of the marks, contending that the marks are inextricably linked to the ‘450 and
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`‘685 patents and further use of the marks would cause confusion to the public, constitute passing
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`off non-patented product for patented product and violate consumer protection laws.
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`25.
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`Therefore, there exists an actual and justiciable controversy between ProMera and
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`Vireo under 28 U.S.C. § 2201 and ProMera is in need of a declaration of its rights and a
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`determination whether ProMera’s use of its CON-CRET Marks are tied to the ‘450 or ‘685
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`patents or otherwise infringe or interfere with Vireo’s rights.
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`26.
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`ProMera’s use of the CON-CRET Marks in connection with its marketing and
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`sale of product not practicing the claims of the ‘450 or ‘685 patents is not likely to cause
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`confusion, or mistake, or deceive purchasers of ProMera’s goods or services.
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`27.
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`ProMera’s use of the CON-CRET Marks in connection with its marketing and
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`sale of product not practicing the claims of the ‘450 or ‘685 patents does not violate Section 32
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`of the Lanham Act, 15 U.S.C. § 1114.
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`28.
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`ProMera’s use of the CON-CRET Marks in connection with its marketing and
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`sale of creatine HCl based products is not likely to cause confusion, or to cause mistake, or to
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`deceive as to the affiliation, connection, or association of ProMera’s products with Vireo, or as to
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`the origin, sponsorship, or approval of ProMera’s goods or services by Vireo.
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`29.
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`ProMera’s use of the CON-CRET Marks in connection with its marketing and
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`sale of product not practicing the claims of the ‘450 or ‘685 patents does not violate Section
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`43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`30.
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` ProMera’s use of the CON-CRET Marks in connection with its marketing and
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`sale of product does not constitute trademark infringement under the statutory or common laws
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`of the Commonwealth of Massachusetts, or the laws of other States.
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`6
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`007
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 7 of 9
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`31.
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`ProMera’s use of the CON-CRET Marks in connection with its marketing and
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`sale of product does not constitute deceptive trade practices under the Commonwealth of
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`Massachusetts’ deceptive trade practices statute, G.L. c. 93A and it does not constitute unfair
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`competition under the laws of the Commonwealth of Massachusetts or similar laws of any other
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`state or common law.
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`32.
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`Based on the foregoing, pursuant to 28 U.S.C. § 2201, ProMera is in need of a
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`declaration of the rights and legal relations of the parties and is entitled to a declaratory judgment
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`that Vireo is without right or authority to object to ProMera’s use of its CON-CRET Marks or to
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`seek to prevent ProMera’s use on the basis of alleged infringement, unfair competition, or
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`deceptive trade practices under federal or state law.
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`REQUEST FOR RELIEF
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`Wherefore, ProMera prays for judgment in its favor and against Vireo as follows:
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`a.
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`Declaring that ProMera’s use of its CON-CRET and CON-CRET REINFORCED
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`marks does not infringe or violate any of Vireo’s rights and that Vireo is without right or
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`authority to object to ProMera’s use of the marks on the basis of alleged infringement, unfair
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`competition, or deceptive trade practices under federal or state law.
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`b.
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`c.
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`Awarding ProMera its costs pursuant to Rule 54(d), Fed. R. Civ. P.; and
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`Granting any other relief
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`the Court may deem appropriate under
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`the
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`circumstances.
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`ProMera respectfully demands a trial by jury of all issues so triable.
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`DEMAND FOR JURY
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`*
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`*
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`*
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 8 of 9
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`Respectfully Submitted,
`ProMera Health, LLC
`By its attorneys,
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`
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`David M. Magee, BBO #652399
`mageed@pepperlaw.com
`William M. Taylor, BBO #624981
`taylorw@pepperlaw.com
`PEPPER HAMILTON LLP
`125 High Street
`High Street Tower
`Boston, MA 02110-2736
`617-204-5100
`
`John C. Hansberry*
`hansberryj@pepperlaw.com
`Raymond A. Miller*
`millerra@pepperlaw.com
`PEPPER HAMILTON LLP
`Suite 5000
`500 Grant Street
`Pittsburgh, Pennsylvania 15219-2507
`412.454.5000
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`Attorneys for ProMera Health, LLC
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` Pro hac vice motions to be filed
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` *
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`8
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`Dated:
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`009
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`Case 1:15-cv-10595-NMG Document 57 Filed 01/06/16 Page 9 of 9
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`CERTIFICATE OF SERVICE
`th day, of
`I HEREBY CERTIFY that a copy of the foregoing was filed on the
` using the Court’s CM/ECF system, which will provide notice to:
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`T. Christopher Donnelly
`Donnelly, Conroy & Gelhaar, LLP
`One Beacon Street
`33rd Floor
`Boston, MA 02108
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`Brian M. Gaff
`McDermott Will & Emery
`28 State Street
`Boston, MA 02109
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`
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`Brendan T. St. Amant
`Donnelly, Conroy & Gelhaar, LLP
`One Beacon Street
`33rd Floor
`Boston, MA 02108
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`Andre R. Barry
`Cline Williams Wright Johnson &
`Oldfather, LLP
`1900 U.S. Bank Building
`233 South 13th Street
`Lincoln, NE 68508
`
`Shawn D. Renner
`Cline Williams Wright Johnson &
`Oldfather, LLP
`1900 U.S. Bank Building
`233 South 13th Street
`Lincoln, NE 68508
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`/s/ David M. Magee .
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