)1;
`
`~*—-————-
`
`TTAB
`
`MARK
`
`Attorney Docket No. 7126-6
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91172418
`
`) )
`
`) )
`
`Serial No. 78/710,398
`) Mark: ROLLIT & Design
`)
`SUBMISSION OF DISTRICT COURT
`)
`PLEADINGS IN SUPPORT OF
`)
`) MOTION TO SUSPEND OPPOSITION
`)
`FOR CIVIL ACTION
`MOTION TO CONSOLIDATE ACTION
`
`WITH OPP. NO. 91167201
`
`3M COMPANY,
`
`Opposer,
`
`v.
`
`MAURICE KANBAR,
`
`Respondent.
`
`BOX TTAB NO FEE
`
`Commissioner for Trademarks
`
`P O Box 1451
`
`Arlington, VA 22313-1451
`
`
`
`SUBMISSION OF DISTRICT COURT PLEADINGS IN SUPPORT OF
`
`MOTION TO SUSPEND OPPOSITION FOR CIVIL ACTION
`
`MAURICE KANBAR, Respondent herein, hereby submits the district court pleadings in
`
`support of his Motion to Suspend this Opposition pending the outcome of the following civil
`
`action: 3M Company v. Rollit, LLC, Rex Products Inc., MK Enterprises Inc, and Maurice
`
`Kanbar, Case No. C 06-01225 JW, U.S. District Court, N.D. California, San Jose Division. This
`
`civil action has a bearing on this Opposition and involves issues in common with those in this
`
`proceeding.
`
`MOTION TO CONSOLIDATE ACTION WITH OPP. NO. 91167201
`
`Respondent fimher hereby moves the Board to consolidate this action with Opposition
`
`10-10-2006
`U.s Parunu. TMo.':rTM Ml‘! I:::t’J: on
`
`

`
`Attorney Docket No. 7126-6
`Opposition No. 91 172418
`
`No. 91 167201 which concerns the same parties and a similar mark.
`
`Dated: October 4, 2006
`
`
`
`PERRY IP GROUP A LAW CORPORATION
`
`100 Drake's Landing Road, Suite 100
`Greenbrae, CA 949491
`
`Telephone: (415) 461-5800
`Facsimile: (415)461-5810
`
`

`
`CERTIFICATE OF SERVICE
`
`Attorney Docket No. 7126-6
`Opposition No. 91 172418
`
`The undersigned states:
`
`I am employed in Greenbrae, California, over the age of 18 years, and not a party to the above-
`
`: entitled case.
`
`I am employed in the office of a member of the Bar of this Court at whose
`
`. direction this service is made.
`
`On the date indicated below, I served the foregoing SUBMISSION OF DISTRICT
`
`‘ COURT PLEADINGS IN SUPPORT OF MOTION TO SUSPEND OPPOSITION FOR
`
`I CIVIL ACTION and MOTION TO CONSOLIDATE ACTION WITH OPP. NO. 91167201
`
`on the parties in said action by depositing a true copy thereof with the United States Postal
`
`Service as first class mail, postage pre-paid, enclosed in a sealed envelope addressed as follows:
`
`Joel D. Leviton
`
`Ann Cathcart Chaplin
`Fish & Richardson P.C.
`
`3300 Dain Rauscher Plaza, Suite 3300
`Minneapolis, MN 55402
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the United States Postal
`
`1 Service as first class mail in an envelope addressed to: Commissioner for Trademarks, Box
`
`TTAB NO FEE, P.O. Box 1451, Arlington, VA 22313-1451 on the date indicated below.
`
`I declare under penalty of perjury under the laws of the United States of America that the
`
`
`
`PERRY IP GROUP
`
`A LAW CORPORATION
`
`
`
`= 100 Drake’s Landing Road Suite 100
`. Greenbrae, CA 94904
`Tel:
`415-461-5800
`
`Fax:
`
`415-461-5810
`
`

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`DAVID J. MICLEAN (# 115098/I'nicIea11@fr.com)
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood City, California 94063
`Telephone: (650) 839-5070
`. Facsxmile: (650) 839-5071
`.
`.
`Ann N. Cathoart Chaplin, Of Counsel
`Joel D. Leviton, Of Counsel
`FISH & RICHARDSON P.C., RA.
`3300 Dan: Rfiuscher Plaza
`60 South Sixth Street
`7 Minneapolis, MN 55402
`Telephone: (612) 337-2591
`Fa'.cSm1iIe: -(612) 288-9696
`
`INC
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`Kevin H. Rhodes
`Michael L. Gannon
`3M Innovative Properties Company
`Office of Intellectual Property Counsel
`3M Center
`'
`.
`P.O. Box 33427
`St. Paul, MN 55133-3427
`Telephone: (651) 733-1500
`Facs1mile: (651) 736-3833
`
`3M COMPANY
`
`15
`16
`17
`18
`19
`3M cOMPANY,.
`20
`Plaintiff,
`21
`'
`,
`v.
`-
`22
`23 ROLLIT, LLC, REX PRODUCTS INC.,
`MK ENTERPRISES INC.,
`24 MAURICE KANBAR,
`Defendants.
`25
`
`‘
`UNITED STATES DISTRICT COURT
`- NQRTI-IERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
`_
`Case No.
`COMPLAINT FOR TRADEMARK
`INFRINGEMENTINVIOLATION OF 15
`U.S.C. § 1114, FEDERAL UNFAIR
`COMPETITION IN VIOLATION OF 15
`U.S.C. § 1l2S(a), FEDERAL TRADEM
`DILUTION IN VIOLATION 1-5 U.S.C. §
`l12S(c), TRADEMARK DILUTION IN
`' VIOLATION OF CALIFORNIA
`BUSINESS AND PROFESSIONS CODE §
`1433 o, UNTRUE
`D
`SL
`
`'
`
`1
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`COMPLAINT FOR TRADEMARK TNFRINGEMFNT
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`VIOLATION on THE LAWS OF THE
`smrs or CALIFORNIA AND THE
`COMMON LAW
`-
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`my TRIAL DEMANDED
`
`Plaintifi", 3M Company, by way ofits Ccmiaint against Def-'endan‘ts Maurice. Kanbar, MK
`Enterprises, Roliit, LLC,-
`Rex Products -Inc. (collectively “Defendants”), alleges as follows:
`113_E_2.A_R_T1..E_5
`Plai1rtifl'§M Company is a Delaware corporation having aprincipal piece of
`.
`1.
`business at 2501 Hudson Road, St. Piaul, Minnesota 55144 (hereinafier “3M“ or f‘Plai‘I-1tifE").
`2.
`Upon information and belief, defendant Rex Products Inc. is a Delaware
`corporation with a principal place of business at 409 Littlefield Avenue, South San Francisco,
`
`7
`
`COMPLAINT FOR Tn Anrmnnv rucnnu-.~. .... ....
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`

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`common law. For more than twenty-five years, 3M has manufactured and sold repositionable
`notes, or sticky notes, around the world under the famous POST-IT brand, which is an '
`incdntestable federallyregistered trademark under United States law. Forover twenty—five years,
`3Mhas used thecolor Canary Yellowin connection withits POST-_IT®_stickynotes. The Canary
`- 5 Yellow color, used on and
`connection with sticky notes, is an incontestable federally registered
`
`_
`
`
`
`' Unon information and belief, Defendants, in preparing to enter the sticky note
`7. '
`inarket, have adopted
`confusingly similar trademark ROLLIT to usein connection with
`
`12 Defendants’ imitationproducts will cause irreparable harm-to 3M and its world-fanious POST-IT
`
`JUR1sn1'c'IIoN AND VENUE
`This Court has subject matterjurisdiction under 15 Use. §_1 121 and 28 U.S.C. §§
`
`8.
`
`23
`
`24
`
`FACTS RELEVANT TO ALL COUNTS
`The 3M Company
`For more than 100 years, 3M -— formerly known as lvfinnesota Mining and
`11.
`26 Manufacturing Company -- has been developing and marketing innovative products and so]-
`27
`that serve a diverse field of customers.
`
`28
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`1
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`COMPLAINT FOR Tn Ant-‘Mam
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`3M’s success is not only fueled by its innovations, but also by its creation and
`12.
`development ofsome ofthe mostrecognizable brands in the world, including POST-'IT,
`SCQTCH, SCOTCH-BRITE, SCOTCHGARD, TI-IINSULATE, and NEXCARE.
`13.
`Through the consistent high quality ofits products and 11:5 technological mnovauon
`3M has established and maintained over the years areputation for excellence among consumers
`and the public generally.
`I
`i
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`3
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`5
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`14
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`14.
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`3M"s Famous rosr-rr Brand
`3M introduced the now famous POST-IT brand ofsticky notes over twenty-‘five
`years ago. Since that time, 3M has used the POST-1'1‘ mark in connection with a variety of
`products including, without limitation, repositionable notes, printed notes, trays and dispensers for
`holding stationery notes, adhesive tape, cover-up tape, tape flags, computer software,-easel pads,
`and other home and office-related products.
`I
`15. -
`-Given 3M’s widespread use and promotion ofthe POST-IT brand and the many
`high quality products sold under the POST-IT mark, POST-IT has becorne one of the most
`
`SM sells hundreds ofmillions otiidollars ofPOST-1'1‘ brand products‘per year.
`3Mis devoted to promoting the POST-
`
`_ 17.
`
`contributed to the massive public awareness and renown of the POST-IT brand and
`associated with the POST—IT brand.
`
`the products
`
`27
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`28
`
`A -
`
`PHIIDI AI\M~ r-nn-ru-.—.—..._...-
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`'
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`16/63/2666
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`as
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`television advertising, print advertising, office supply catalogs, direct mail, online advertising,
`
`
`
`example, in 2005 over 400 million end-user impressions were achieved by 3M’s public relation
`
`19.
`
`3M‘s brands and‘ branding initiatives have been the topic ofnumerous trade
`articles. -For instance, the June 2004 edition of Ofiice Products International included a profile of
`
`3M’s POST-IT'brand products, including POST-IT sticky notes, are sold through,
`- 20.
`“among other channels, a variety ofnational retailers including office‘supply stores such as Office
`Max and Office Depot, mass merchandisers such as Target, Wal-Mart, and Sam's, Club, drugstores
`such as Walgreen's, and Internet and catalog retailers such as Staples. Given the success and
`prominence ofthe POST—lT brand, POST-IT sticky notes are soldin virtually allmajor retail
`outlets that sell oflice supplies and other stationery products.
`I
`21.
`3M sells its POST-IT brand products, including POST-IT sticky notes, through '
`numerous major national ofiice supply wholesalers including United Stationers and S.P. Richards.
`' 3M is the owner ofnumerous federal trademark registrations for the famous
`POST-IT trademark, many ofwhich are incontestable, including:
`I
`Incontestable Registration No. 1,046,353 for the mark POST-IT in connection with
`“Paper and cardboard sheet material having adhesive coating on both sides thereoffor
`attachment to walls or other vertical surfaces to hold displays or other messages in place,”
`issued August 17, 1976;
`
`'
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`22.
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`14
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`118
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`CDM'PLAfN'l‘ FOR 'E'Daht:uanv mr.-um.-.... ..... _
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`lncontestable Registration No. I,l98,t'i94 for the mark POST-IT in connection with
`' “Stationery notes containing adhesive on one side for attachment to surfaces,” issued June
`22, 1982;
`O
`
`lncontestable Registration No. 1,208,297 for the mark POST-IT in connection with
`“Trays for holding stationery notes,” issued September 14, I982;
`Lncontestable Registration No. 1,284,295 for the mark POSIT-IT in connection with
`“Adhesive-tape forihome and’office use," issued July 3, 1984;
`_
`.
`'_Inco_nte_sta‘b'l_e RegistrationNo. I,935,38l for the mark POST-IT in connection with -
`“adhesive backed easel paperand ease] pads,” issued November 14, 1995;
`‘Incontestable Registration No. 2,012,212 for the mark POST-IT in connection with .
`“computer software for‘creating notes and annotations," issued October 29, 1996;
`Registration No. 2,402,722 for the POST-IT and Design mark. (with the design
`portion-in yellow) in connection with “Stationery notes and note pads containing adhesive
`on one side ofthe sheets for attachmentto surfaces; adhesive tape for stationery or office
`use; cover-up tape for paper; tape flags;
`‘note forms; printed notes featuring
`messages, pictures or.ornamental designs; 3.dh_.3SlVf.'wb3CkCd easel paper and easel pads;
`bulletin boards; glue sticks for stationery or ofiice use; and paper and cardboard sheet
`material having adhesive coatings on bothsides for attachmentto walls orothervertical
`surfaces to hold displays or other messages in place,” issued November 7, 2000; '.
`Registration No. 2,402,723 for the POST-IT and Design
`in connection with
`"Stationery notes and note pads containing adhesive on one side of the sheets for
`
`, pictures or ornarnental
`designs; adhesive-backed easel paper and easel pads; bulletin boards; glue sticks for
`stationery or ofice use; and paper and cardboard sheet material having adhesive coatings
`on both sides for attachment to walls or other vertical surfaces to hold displays or other
`messages in place,“ issued November 7, 2000;
`
`‘
`
`i"n3M'DT:|1'll'I''I'.‘fiD run AI'\I"|lAO‘IIIr nu-1---—— --- --
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`Registration No. 2,371,084 for the POST-IT and Design mark (with the design
`-
`portion in yellow) in connection with “Computer software for creating notes and
`annotations,” issued July 25, 2000;
`‘
`-
`Registration No. 2,372,332 for the pos'r.1r and Design mark in connection with .
`“Computer software for creating notes and annotations," issued August 1, 2000;
`-
`Registration No. 2,736,421 for the mark POST-IT in connection with “Stationery
`notes and note pads containing adhesive on one side of the sheets for attachment to
`
`2
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`7
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`8
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`surfaces; adhesive tape for stationery or office use; cover-up tape ‘for paper; tape flags;
`printed note forms; printed notes featuring messages, pictures or ornamental designs;
`adhesive-backed easel paper and easel pads; bulletin boards; glue sticks for stationery or‘
`ofiice use; and paper and cardboa.rd'sheet material having adhesivecoatiiigs on both sides
`for attachment to walls or other surfaces to hold displays or other messages in place,”
`issued July 15, 2003.
`I
`_
`'
`_
`True and correct copies ofthe foregoing registrations are attached hereto as Exhibit 1. 3M’s
`registrations are valid, subsisting, and, as indicated above, many have achieved incontestable
`
`16
`
`status.
`
`
`
`3M’s Famous Canag Yellow Trademark
`17
`Since at least as early as 1978, 3M has been using the distinctive color Canary ‘
`23.
`18
`19 Yellow iniconnection with sticky notes (the “Canary Yellovv Mark”).
`20
`24.
`As a result of 3M’s long and continuous use of this color in connection with sticky
`2]
`notes, the Canary Yellow Mark has become distinctive of 3M’s sticky notes, well known, and
`22
`famous.
`'
`
`25.
`
`3M is the owner of Registration No. 2,390,667 for the color Canary Yellow used
`
`over the entire surface of “stationery notes containing adhesive on one side for attachment to
`
`surfaces." Registration No. 2,390,667 issued October 3, 2000 and has achieved incontestable
`
`status. A true and correct copy of Registration No. 2,390,667 is attached hereto as Exhibit 2.
`/11
`'
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`25
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`26
`27
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`28
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`q
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`fV'nt.lm An!-I-1-An urn-..—.—\:uu..-.........-.
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`Defendants’ Unlawful Conduct
`Notwithstanding 3M’s well-known long standing prior rights in its famous
`26.
`POST-IT and Canary Yellow trademarks, Defendants are seeking to enter the sticky note market
`by selling confusingly similar yellow-colored sticky notes on a roll, and sticky note dispensers,
`underthe trademark ROLLIT. Below is an image ofDefendants’ website showing Defendants’
`ILOLLIT sticky notes and dispensers.
`
`2
`3
`4
`5
`6
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`7
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`8 9
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`10
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`23
`24
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`25
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`
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`p
`
`p
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`.
`
`
`
`
`..l‘E’.‘f*.
`*“‘ “"“"‘”*-"°"
`
`+s”".3.".'t"‘r».‘§it".i»5's"'iii:‘E‘..1..-..m.,‘f:"-‘-’
`_ 3 _
`an
`'
`_
`.
`..r.-.-.-*.~.=.r_tg.jI;.5ni.....t*.~:..sv...
`...l =*r.:.'
`,
`I
`.
`.
`n
`
`27.
`Notwithstanding 3M’s well-known priorifgtits in its famous 1=os'rW—I'-,1‘ trademark,
`Defendant Maurice Kanbar filed an application to register ROLLIT as A tradernarl; in connection
`with “adhesive note paper, paper tape, dispensers for paper"tape" in the United States Eatent and
`Trademark Office based on Mr. Kanbar’s alleged bona fi
`de intention to use the ROLLIT
`tradeniark. Mr. Kanbar’s application to register ROLLIT isipresently pending in the United States.
`Patent and Trademark Office.
`.
`-
`p
`3
`—‘
`'
`-
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`28.
`Notwithstanding 3M’s well-known prior 1‘igl{1_ts'.in.:its fanious POST_
`-IT~t1-ademark,
`Defendant MK Enterprises, Inc. filedan applicatipi-1ato'registeria design rriark contaiitirig the
`ROLLIT designation in connection with ‘.‘adl1esine%t%_ie paper,“papertape, dispensers for paper I
`tape” inthe United States Patent and Trad_e1na1'k Office based«in MK Enterprises, Inc.‘s alleged
`bona fide intention to use the ROLLIT and Design trademark. Defendant Enterprises, lnc.‘s
`application forpthe ROLLIT and Design trademark is presently pending in the United States Patent
`and Trademark Office. Upon information and belief, Defendant MK Enterprises, Inc. is a_
`company formed by Defendant Maurice Kanbar.
`'
`
`
`
` 52 COMPLAINT t-‘nu Tnanrua RI.’ nucnmm:m-.-u-u- i '
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`29.
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`Upon information and belief, none of the Defendants own a registration for the
`ROLLIT trademark in the United States or elsewhere.
`
`Defendant Rex Products Inc. is the owner ofthe rollitcgrn domainname ‘
`30.
`registration. Upon information and belief, Rex Products Inc. is another company formed by
`4
`5 Defendant Maurice Kanbai and/or Mr. Kanbar’s business partner.
`31.
`As shown above, one, some, andfor all ofthe Defendants operate a website at
`L-.a3_;,;.rg1lit.com used to promote confusingly
`yellow colored ROLLIT sticky notes that
`come on a roll and dispensers for sticky notes.’ H I
`i.
`32.
`On the www.rollit.com website, numetousllcoiifnismtiigiy simiiar yellow colored
`
`2
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`8
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`;. "
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`Defendant Rollit, LLC is identified in small type at the bottom ofthe '
`33.
`I 11 .
`12 www.rollj1,com website.
`_
`_
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`13
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`IJ:-ponfiirifdiniiation and belief, Defendant Rollit, LLC is anotherlcompany _operated
`l4
`in whole or in part by Defendant Maurice Kanbar.
`
`
`
`
`
`The terms “post itnotes,” “post it," “post-it notes," “post it,” “post it note,” “post-it
`fl,,.,.»-"36.
`note,” and “post its" do not appear on the visual text shown on the www.rol1it.cog website.
`;
`37.
`Upon information and belief, Defendants’ confusingly similar yellow ROLLIT
`sticky notes and ROLLIT sticky note dispensers are not yet available for
`I
`.-
`-'~I——--....-n.~.-
`purchase by_ the public.
`"
`337" oi»;
`ninformation and belief, one, some, and/or all ofthe Defendants have met with
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` attempting to have ROLLIT sticky notes and sticky note dispensers sold in ofiice supply sto
`
`I Upon infonnation and belief, one, sorne, andlor all ofthe Defendants are
`_42.
`attempting to have ROLLIT sticky notes and sticky.note dispensers sold in office supply stores
`.
`that can-y POST-IT
`notes and dispensers.
`
`.
`
`5
`
`‘
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`43.
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`8
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`9
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`includes the statement “Equivalent to 600 3" x 3" Post-it® notes.”
`
`Upon information and belief, the packaging for ROLLIT sticky-notes includes the _
`47.
`statement “Post-it® is a registered trademark of3MvCorp.”
`(
`IT are six letter designations ending with the suffix “IT.’
`Both ROLLIT and POST-IT are two syllable designations ending with the suffix .
`
`48..
`
`Both ROLLIT and POST«-
`
` 46.
`
`
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`49.
`
`“IT.”
`
`notes.”
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`22
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`23
`24
`25
`26
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`S0.
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`51.
`52.
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`53.
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`Defendants’ product packaging refers to the ROLLIT product as “any length stickyin
`.
`I
`_
`i
`POST-IT sticky notes consist ofpaper with adhesive on one side.
`
`'
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`I
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`Defendants’ ROLLIT sticky notes consist ofpaper with adhesive on one side.
`. The products that one, some, and/or all of the Defendants intend to sell under the
`
`1f\'
`
`PHIKDI AINT 'I'.‘f\D ‘I'D 1 net I A hv l'\II'|l'u-I us... .... .._
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`are a
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`The ROLLIT sticky notes that one, some, andfor all ofthe Defendants intend to sell
`§5.
`e ofyellow confiisingiy similar to 3M’s Canary Yellow Mark.
`_
`.
`3M sells POST-IT sticky notes that are the distinctive Canary Yellow color.
`so
`Upon information and belief, one, some, and/or all ofthe Defendants plan to sell
`57.
`ROLLIT sticky notes and dispensers overthe Internet through the nroliitcom website.
`58.
`Upon information and belief, one, some, and/or all of theDefendants plan to sell
`
`By adopting the trademark ROLLIT to usein connection with sticky notes and
`59.
`sticky note dispensers, Defendants are willfully attempting to trade upon and
`the
`considerable goodwill associated with the POST-IT brand.
`
`'
`
`13
`
`
`
`
`
`
`
`----—~~*°"'“"’/
`..
`__
`considerable goodwill associated with the POST—IT traden1arl_<_._
`62._
`By using the POST-IT trademark on the packaging for ROLLIT sticky notes and
`dispensers, Defendants are willfully attempting to trade upon and
`the considerable goodwill
`associated with the POST-IT trademark.
`
`21
`22
`
`
`
`11 l"f'\|tl'nI'An.1"'l"r:'('n-1-1-I-use-u-n....-...._...._..
`
`

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`2168 JACKSON ST
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`
`13
`
`9-—
`
`ROLLIT sticky notes and dispensers, as to 3M’s sponsorship or approval ofROLLIT products,
`and as to an affiliation, connection, or association between 3M and Defendants.
`65.
`Use oftheiconfusingly similar color yellow on and in connection with sticky notes
`sold or intended to be sold under the ROLLIT'traden1ark_enhances the likelihood of confusion
`caused by the ROLLIT trademark.
`
`, R.eference.to the POST-IT trademark on the packaging for ROLLIT products
`66.
`enhances the likelihood of confirsion caused by the Defendants.
`67.
`“Reference to “SM Corp.” on the packaging for ROLLIT products enhances the
`likelihood of confusion caused by the Defendants.
`
`The prominent display ofconfusingly similar yellow sticky notes on the packaging
`68.
`forROLLITproducts enhances the likelihood ofconfusion caused by the Defendants. _
`69.
`The prominent display of confusingly similar yellow sticky notes on the
`
`www.rollit.corn website enhances the likelihood of confusion caused by the Defendants.-
`
`70.
`Incorporating the POST-IT trademark in numerous metatags on the www.rollit.corn _
`website enhances the likelihood of confusion caused by the Defendants.
`71.
`Incorporating the POST~IT trademark in numerous rnetategs on the ywprollitgom
`website is likely to cause initial interest confusion.‘
`
`72.
`
`Incorporating the POST-IT‘trademark in numerous metatags on the www.rollit.com__
`
`Incorporating the POST-IT trademark in numerous metatags on the www.roIlitcom
`73.
`website demonstrates Defendants’ intent to trade offthe goodwill associated with the ‘POST-IT
`
`brand.
`
`
`
`y.—n
`
`.<3\ooo-'.Ja\U\-ts-U-tt-J
`lg)o—-n-4-pdi—sn-.5|—I--4o--O\Oon-4onU:-I‘:U8N
`l'~JN‘t-Jl-.J!~Jt~1on--Ja\t.n-lb.l.a.I
`
`y._n
`
`B-3 n—I
`
`Ix)hi
`
`

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`19/93/2995
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`PAGE
`
`14
`
`I r
`
`egistrations pursuantto 15 U.S.C. § 1072.
`f 77." Upon inronnafion and belief, priorto Defendants’ ms: ofthe ROLLIT
`grademark, Defendant Roll-it, LLC had actual knowledge of3M’s prior 11-ac‘1cmar_l,<.i1'ghts in the
`=POST-IT trademark.
`'
`
`Prior to Defendants’ first use of 1:116 ROLi.IT trademark, Defendant Maurice
`
`r- ...... pm... .1...“ .-.1...-..
`
`1 3
`
`COMPLAINT FOR TRADEMARK INFR FNGPMFNT
`
`

`
`1Bx’Ei3/2666
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`12:65
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`PAGE
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`15
`
`Defendants’ unlawfiil activities have resulted in unjust enrichment to Defendants
`85.
`5 and immediate ineparable harm to 3M. IfDefendants’ unlawful activities are not immediately
`
`COUNTI
`
`_
`
`’ Federal Trademark Infringement
`
`
`
`
`
`14
`15
`
`Defendants’ unauthorized use in coinmerce ofreproductions, counterfeits, copies,
`88.
`and/or colorable imitations of 3M’s federally registered POST-IT and Canary Yellow trademarks
`
`sticky notes is likely to confuse consumers into believing that SM is the source of Defendants’
`17
`lé goods or that Defendants’ goods are sponsoredby, affiliated with or otherwise approved or
`
`27
`28
`
`packaging and promotional material ‘constitutes trademark infringement in violation of Section 32
`ofthe Lanham Act, 15 U.S.C. § 1114.
`
`1 in
`
`COMPLAINT I-‘rin Tnansu am: mun mnmrcur
`
`

`
`.
`
`ioios/zaas
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`12:35
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`2139 Mel‘
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`sou ST
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`PAGE
`
`15
`
`Defendants‘ incorporation ofthe POST-IT trademark in nunieroiis metatags on the
`92.
`www.rollit.com website constitutes trademark infringement in violation of Section 32 of the
`Lanham Act, 15 u.s.c.§ 1114.
`"
`-
`
`Defendants’ unlawful acts have been committed with constructire loiowledge, and
`93.
`upon information and beliefactual knowledge, of3lVl’s rights in the POST-IT and Canary Yellow
`
`
`
`
`
`12
`
`13
`
`14
`15
`16
`
`18
`19
`
`'20
`
`25
`
`
`
`
`
`caused 3M monetary damage in an amount presently unknown, but in an amount to be determined
`
`at trial.
`
`96.
`
`covnrir
`I
`Federal-Unfair Competition
`3M realleges and incorporates by reference the allegations set forth in paragraphs 1
`
`3M is the owner ofthe common law rights in the trademarks identified above
`97.
`including POST-IT and the Canary Yellow Mark.
`
`
`98
`
`The acts ofDefendants complained ofherein are likely to cause confiision, to cause
`
`Defendants‘ unauthorized use ofthe ROLLIT trademark in connection with sticky
`99.
`notes and related goods constitutes a commercial use in interstate commerce.
`
`1 Q
`
`('fOMP1.AmT mu ‘rt: a nun: any I\Il:"hnu-nu. ..... ..
`
`

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`18/'63/2086
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`PAGE
`
`17
`
`101. Defendants’ unauthorized incorporation of the POST-IT trademark in numerous
`rnetatags on the E rollzt com website constitutes a commercial use Ln interstate commerce
`I02
`Defendants
`
`painting off, and false description or representation in violation ofSection 43(a) ofthe Lanham I
`
`2
`3
`
`4
`
`_ J03. Defendants’ unlawful acts have caused 3M immediate irreparable harm, and will
`i
`7 - continue to cause irreinarable harmto 3M unless enjoined.
`
`long before Defendants’
`
`19
`
`sticky notes.
`
`I07. Defendants’ use ofthe ROLLIT trademark in connection with sticky notes and
`dispensers for sticky notes has diluted the distinctive quality of.3M’
`s famous POST-‘IT trademark 9
`through bltu-ring and/or through tarnishing.
`108.
`
`interstate commerce.
`
`1;
`
`COMPULINT Fnn Tnannuanv mrumm-.-mm-r
`
`
`
`
`
`
`
`1 1 .
`
`et'ttie1;
`
`12
`
`13
`14
`
`15"
`15
`17
`
`COUNTIII
`
`I05.
`
`Federal Trademark Dilution
`3M realleges and incorporates bjr reference the allegations set forth in paragraphs 1
`through 104 above as though set forth in their entirety herein.
`105.
`3M’s ‘POST-IT and CB.nal'y Yellow trademarks are strong, highly distinctive, and
`famous, and achieved such fame long before Defendants’
`
`first use of the ROLLIT trademark and
`first use ofa confusingly similar color yellow on and in connection with _
`
`

`
`1a/as/2on5 12:35
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`PAGE
`
`18
`
`1 10. Defendants’ actions constitute dilution in violation ofSection 43ic) ofthe Lanham
`Act, 15 U.S.C. § ll25(c).
`
`lll. Defendants’
`
`COUNT IV
`
`'I’raden1ar-it Dilution in Violation of
`
`12
`13
`
`Cal. Bus. & Prof. Code§ 14330
`3M realleges and incorporates by reference the allegations set forth in paragraphs 1
`113.
`through I12 above as though
`forth in their entirety herein.
`Yellow
`114.
`3M has common lavatrademark.rig'hts in the POST-IT and
`trademarks, which are valid, strong, highly distinctive, and famous, and achieved such fame before
`15
`1.6 ' Defendants’ firstuse ofthe ROLLIT trademarkand before Defendants’ first use ofat confilsingly
`17
`color yellow on and in connection ‘with sticky.notes.
`115.
`The actions ofDefendants are likely to cause injury to the business reputation of
`JM and likely to cause dilution of 3M’s POST-IT and Canary Yellow tradeniarks.
`ll6. Defendants’ actions constitute a violation of California's Business and Professions
`
`11?.
`
`due to Defendants’ acts
`
`3M has been damaged and has suffered irreparable
`md will continue to suffer irreparable injury unless Defendants’
`I 18.
`
`22
`
`23
`
`26
`
`
`
`activities are enjoined.
`3M has suffered and will continue to suffer damages by reason ofDefendants’ acts
`as alleged above and 3114 is entitled to recover from Defendants the damages sustained as a result
`of Defendants’ acts.
`
`1 7
`
`COMM .ATN'l" mu ‘Tn anmuov nu:-nnm.-. u-t.»
`
`

`
`iexos/zoos
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`19
`
`
`
`affiliation, connection or association ofDefendants and 3
`
`approval of Defendants’ goods by 3M, to'3M’s harm.
`
`In making and disseminating advertising and promotional materials including the
`122. '
`statements alleged herein, Defendants.l<new, or bythe exercise ofreasonable care sholilcl have
`known, that the statements were untrue and/or misleading and so acted
`violation ofCalifornia A
`18
`19 Business & Professions Code § 17500 andfor§ 17535.
`20
`I
`123.
`‘
`
`
`
`
`
`
`28
`
`Common Law Trademark Infringement
`3M realleges and incorporates by reference the allegations set forth in paragraphs 1
`I24.
`through 123 above as though set forth in their entirety herein.
`I25. Defendants’ unauthorized use of the ROLLIT trademark, the POST-IT trademark
`and a confusingly similar color yellow on and in connection with sticky notes and sticky note
`_
`
`1'
`
`1g‘
`
`COMP! ANT me To Ancuaov I'L1nnI\un_. .. _
`
`

`
`1a/eaxzeee
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`2133 JACKSON 57
`
`PAGE
`
`26
`
` i11fringernent of3M’s trademark rights, and is likely to_cause confusion, and mistake, and/or
`
`.
`
`/
`
`5 - deception as to the affiliation, connecticnior association ofDefendants and 3M, and/or as to th
`5 origin, sponsorship, or approval of Defendants’ goods by 3M.
`125-.
`3M has been damaged andhas suffered irreparable injury due to Defendants‘ acts
`8. and will continue to suffcf in-eparable injury unless Defendants’ activities are enjoined.
`
`PRAYER FOR RELIEF
`.
` .
`WI-IEREFORE, Plainfiff3M Company seeks reliefas follows:
`
`IT trademark, and/or any confusingly similar
`
`19
`
`COMPLAINT FOR TRADEMARK l'MI?D 'l'I.I(".|.-1A:1.w
`
`

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`1a/oaxzaaa
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`5'3
`c:< NST
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`PAGE
`
`21
`
`Using am posr-11 trademarlc, and/or any confi1sin.gly similar
`:1.
`designaiion, as a metatag in an Internet website, or as visible or non-visible text on
`511"Tnféhi§t website;
`
`
`
`.
`ofdllulfing _3'M;;1.'P:os3firr_tradei;aé:k;
`eonfusiagly-siiollaiilio.3M’sCanary Yellow Mark or
`g... ‘
`or dilufing 3M"aii’-ellowMark;
`- ofhenvise
`:h,'5
`.3: .U_nfa_irl‘y- competing with 3M
`whaisoever;
`-‘
`i.
`likelihood ofcon-fi1sio11__._a:1d’.injm3r.to Plaintifi"s business
`rep_i1tafioa;.and
`I
`
`_
`
`'
`=
`-'=
`.-
`-
`V
`oi;C_alij:'_fo1jn.ia;
`;.‘
`'pnnts,
`Réq'mn"='‘mg Defendants to delivef iii: £3: ae;.;'u'a¢éon'a:ilabels, signs,
`packages, wrappers, receptaeles, advertisements, catalogs, pronlotional materials, and all ‘other
`19
`20 materials in the possessio‘n‘o_r'control ofDefendants that bear, or are intended to he sold by
`21
`Defendants in eonnection the ROLLIT trademark or otherwise infringe or dilute 3M’s
`
`
`
`25
`26
`
`27
`
`5.
`and 1117;
`
`Treblmg the amount ofdamages awarded Plaumffpursuant to 15 U S C §§ H14
`
`6.
`
`Awardmg 3M 1ts attorneys’ fees, costs and expenses pursuant to 15 U S C §§ 1114
`
`28 . and 1117;
`
`
`2n '
`
`%MPLA]NT FOR TRADEMARK INT-‘R|'h.'lr:I:u|:u-r
`
`

`
`19/93/2995
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`
`ST
`
`PIQGE
`
`22
`
`Ordering Defendant Maurice Kanbar to expressly abandon with prrejudice U.S.
`Trademark Application Serial No. 78/552 oo4--
`'
`
`2
`
`Ordering Defendant MK Enterprises Inc. to expressly abandon with prejudice U.S.
`
`Awarding 3M such‘ other reliefas the Court may deemjust and proper.
`DEMAND FOR JURY TRIAL
`
`3M hcrebgdemands atrial bjrjury as to all issues triable byjury. .
`
`Dated: February 17, 2006.
`
`FISH &. RICHARDSON 1=_.c.
`
`‘
`
`
` - David J. Miclean
`FISH & RICHARDSON 15.c.
`500 Arguello Street, Suite 500
`Redwood City, California 94063 -
`Telephone: (650) 839-5070
`Facszmile: (650) 339-5071
`
`‘
`
`'
`
`Att'orney_s for Plaintiff‘ .
`3M COMPANY
`
`

`
`av‘
`
`JODY WEINER (141876) jodycarlweiner@aol.com
`LAW OFFICES OF JODY C. WEINER & ASSOCIATES
`846 Filbert Street
`
`San Francisco, California 94133
`Telephone: (415) 921-2042; Fax: (415) 921-2092
`
`Attorneys for Defendants
`ROLLIT, LLC, REX PRODUCTS, INC.
`
`MK ENTERPRISES, INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN JOSE DIVISION
`
`3M COMPANY,
`
`Civil Action No. C 06-01225 IW
`
`ANSWER AND AFFIRMATIVE
`DEFENSES OF DEFENDANTS ROLLIT,
`LLC, REX PRODUCTS, INC AND MK
`ENTERPRISES, INC.
`
`Plaintiff,
`
`V
`
`'
`
`ROLLIT, LLC, REX PRODUCTS INC.,
`MK ENTERPRISES, INC. AND
`MAURICE KANBAR,
`
`Defendants.
`
`COME NOW Defendants Rollit, LLC, Rex Products, Inc. and MK Enterprises, INC.
`(Defendants) and answer the Complaint served on or about March 1, 2006 (the “Complaint”) of I
`
`Plaintiff 3M Company as follows:
`
`ANSWER TO ALLEGATIONS
`
`1.
`
`In answer to paragraph 1, Defendants are without sufficient knowledge or
`
`information sufficient to form a belief as to the truth of the allegations in said paragraph, and on
`
`that basis deny each and every allegation therein.
`
`2.
`
`In answer to paragraph 2, Defendants admit that Rex Products, Inc. is a
`
`DEFENDANTS ROLLIT, LLC, MK ENTERPRISES, INC. and REX PRODUCTS, INC.S’ ANSWER TO COMPLAINT
`
`1
`
`

`
`4;!
`
`Delaware corporation, doing business in California as Rex Design, and deny all other allegations
`
`therein.
`
`3.
`
`In answer to paragraph 3, Defendants admit that MK Enterprises, Inc. is a
`
`Delaware corporation doing business in California and does business as RABNAK enterprises,
`
`Inc.
`
`4.
`
`In answer to paragraph 4, Defendants admit that Maurice Kanbar resides at
`
`that address.
`
`5.
`
`In answer to paragraph 5, Defendants admit that Rollit, LLC’s principal place
`
`of business is located at 2822 Van Ness Ave., San Francisco, CA 94109, and it does business
`
`under that name.
`
`6.
`
`In answer to paragraph 6, Defendants are without sufficient knowledge or
`
`information sufficient to form a belief as to the truth of the allegations in said paragraph, and on
`
`that basis deny each and every allegation therein.
`
`7.
`
`In answer to paragraph 7, Defendants deny the allegations contained in
`
`paragraph 7.
`
`8.
`
`In answer to paragraphs 8, 9 and 10, Defendants admit that the Court has
`
`subject matter jurisdiction, personal jurisdiction over the defendants and that venue is proper in
`
`this district, but deny that any acts of infringement