throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA420632
`ESTTA Tracking number:
`07/19/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91193427
`Plaintiff
`Edom Laboratories, Inc.
`ALEC J MCGINN
`KUNZLER NEEDHAM MASSEY & THORPE
`8 EAST BROADWAY , SUITE 600
`SALT LAKE CITY, UT 84111
`UNITED STATES
`alecmcginn@kunzlerip.com
`Response to Board Order/Inquiry
`Alec J. McGinn
`alecmcginn@kunzlerip.com
`/Alec J. McGinn/
`07/19/2011
`Response to Order.pdf ( 3 pages )(106422 bytes )
`Ex. A - Stamped Complaint.pdf ( 18 pages )(686349 bytes )
`Ex. B - Answer and Counterclaims.pdf ( 24 pages )(629406 bytes )
`Ex. C - Order Staying Proceedings.pdf ( 2 pages )(34935 bytes )
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`Proceeding
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`XKC"GNGEVTQPKE"U[UVGO"HQT"VTCFGOCTM"VTKCNU"CPF"CRRGCNU"*ÐGUVVCÑ+
`DATE OF FILING: July 19, 2011
`
`IN THE PATENT AND TRADEMARK OFFICE BEFORE
`THE TRADEMARK TRIAL AND APPEAL BOARD
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`
`
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`In the matter of application serial nos. 77/803,465 and 77/843,368
`------------------------------------------------------
`EDOM LABORATORIES, INC.,
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`
`
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`REPLY TO ORDER
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`
`
`vs.
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`GLENN LICHTER,
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`
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`Consolidated Opposition Nos.: 91193427
`and 91194813
`-----------------------------------------------------
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`On July 19th, 2011, the Board issued an order consolidating opposition nos. 91193427
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`and 91194813. As part of the order, the Board directed Edom Laboratories to provide the Board
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`with information on the pending district court action. In particular, the order requested that
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`Edom inform the Board if the district court action remains pending, and if so, that Edom provide
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`a copy of the current complaint and answer in the civil action so that the Board may determine
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`whether the issues to be decided by the court may have a bearing on the issues to be decided by
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`the Board.
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`The district court action remains pending. However, the district court action is currently
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`stayed pending resolution of the opposition proceedings. The district court judge expressed
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`interest in having the dgpghkv"qh"vjg"DqctfÓu"opinion on the likelihood of confusion question. The
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`parties agreed to be bound, in the district court action, by the DqctfÓu"fgekukqp"on likelihood of
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`confusion, validity of the CHIRO-KLENZ mark, ownership of the CHIRO-KLENZ mark. In
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`view of that agreement, the district court stayed the district court action pending resolution of the
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`opposition proceedings. Since the district court has stayed the action pending resolution of the
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`oppositions, Edom requests that the oppositions be allowed to proceed.
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`Edom has attached a copy of the current complaint and answer to this reply, as requested
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`by the Board. In addition, Edom has also attached a copy of the Endorsed Order staying the
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`district court action pending the outcome of the opposition proceedings.
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`Respectfully submitted,
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`KUNZLER NEEDHAM MASSEY & THORPE
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`/s/ Alec J. McGinn
`Alec J. McGinn (Utah Bar No. 10775)
`8 East Broadway, Suite 600
`Salt Lake City, UT 84111
`Telephone: (801) 994-4646
`Facsimile: (801) 531-1929
`Email: alecmcginn@kmiplaw.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 19, 2011, a true and complete copy of the foregoing REPLY TO
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`ORDER was served on Todd Wengrovsky and Jura Zibas, the attorneys of record for the
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`opposed applications, by first-class U.S. mail, postage prepaid, at the following address:
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`Todd Wengrovsky
`285 Southfield Road, Box 585
`Calverton, New York, 11933
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`Jura C. Zibas
`Wilson, Elser, Moskowitz, Edelman & Dicker LLP
`150 East 42nd Street
`New York, NY 10005
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`/s/ Alec J. McGinn
`Attorney for Edom Laboratories, Inc.
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`CV - 9
`IN THE UNITED STATES DISTRICT COUQ
`
`EASTERN DISTRICT OF NEW YORK
`
`5 I 8 5
`
`EDOM LABORATORIES, INC.,
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`Plaintiff,
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`COMPLAINT
`
`V.
`
`W
`
`us L:,.:mc“:l com:
`
`3%
`
`NOV 2 5 2009
`
`‘k
`
`BREAKTHROUGH, INC.; HERB
`SPECIAL TEA PLUS, INC.; BODY
`
`NATURALS, INC.; ROSA REECE GARY
`
`HARLEM; CORI LICHTER; and GLEN
`
`Civil No.
`Judge:
`
`_
`
`.
`
`“
`
`a’
`L. I lg,
`"E. "ND OF iC‘ '
`9!.
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`’
`
`LICHTER;
`
`Jury Trial Demanded
`
`Defendants.
`
`BOYLE. Mi
`
`Comes now Edom Laboratories, Inc., by and through counsel, who complains against the
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`defendants as follows:
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`PARTIES
`
`1.
`
`Plaintiff Edom Laboratories, Inc., (hereinafter “Edom”) is a corporation formed
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`under the laws of New York, having its principal place of business at 100 E. Jefryn Blvd., Suite
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`M, Box 780, Deer Park, New York. Edom is in the business of marketing and distributing health
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`products and nutritional supplements.
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`2.
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`Defendant Special Tea Plus, Inc., (hereinafter “Special Tea”) is a corporation
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`formed under the laws of New York, having its principal place of business at 4 Yorktown Road,
`
`Dix Hills, New York.
`
`3.
`
`Defendant Body Breakthrough, Inc., (hereinafter “Body Breakthrough”) is a
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`corporation formed under the laws of New York, having its principal place of business at 30
`
`Olympia Place, East Northport, New York.
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`

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`4.
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`Upon information and belief, defendant Herb Naturals, Inc., (hereinafter “Herb
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`Naturals”) is a corporation with its principal place of business in Suffolk County, New York.
`
`5.
`
`Defendant Rosa Reece is an individual residing in Suffolk County, New York
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`and, upon information and belief, is an officer of Herb Naturals.
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`6.
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`Defendant Gary Harlem is an individual residing in Suffolk County, New York
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`and, upon information and belief, is an owner and officer of Special Tea, Body Breakthrough,
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`and Herb Naturals.
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`7.
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`Defendant Cori Lichter is an individual residing in Suffolk County, New York
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`and, upon information and belief, is an officer of Special Tea and Body Breakthrough.
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`8.
`
`Defendant Glen Lichter is an individual residing in Suffolk County, New York
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`upon information and belief, is an owner and officer of Special Tea, Body Breakthrough, and
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`Herb Naturals.
`
`JURISDICTION
`
`9.
`
`The complaint alleges that the defendants are liable under the Lanham Act for
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`unfair competition. Accordingly, this Court has federal question jurisdiction in accordance with
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`15 U.S.C § 1121 and 28 U.S.C. § 1338. The Court has supplemental jurisdiction over related
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`causes of action under 28 U.S.C. § 1367(a).
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`10.
`
`This Court has personal jurisdiction over each of the defendants. Each of the
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`defendants reside in, and/or conduct significant business activities in, this jurisdiction.
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`1 1.
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`Venue is proper under 28 U.S.C. § 139l(b) because, among other things, Edom
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`and each of the defendants are doing and/or transacting business in this judicial district, and a
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`

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`substantial part of the events giving rise to the claims alleged in herein occurred in this judicial
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`district.
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`GENERAL ALLEGATIONS
`
`12.
`
`Edom is a provider of hi gh-quality nutritional supplements, which it sells to
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`customers through various channels. One of the products that Edorniprovides is a detoxifying
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`herbal tea sold under the brand name CHIRO-KLENZ. A photo of a box of CHIRO-KLENZ
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`brand tea is provided in Exhibit A.
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`13.
`
`Upon information and belief, the defendants Special Tea, Herb Naturals, and
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`Body Breakthrough are closely held corporations which are owned and/or managed by
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`defendants Gary Harlem, Rosa Reece, Glen Lichter, and Cori Lichter.
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`14.
`
`Edom introduced CHIRO-KLENZ brand tea in 1992 and has been selling it ever
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`since. Edom typically sells CHIRO-KLENZ tea to chiropractic offices, which then sell the
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`CHIRO-KLENZ tea to patients.
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`15.
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`The defendant Special Tea was Edom’s private re-labeler for CHIRO-KLENZ
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`tea. Special Tea purchased the herbal tea from third-parties and placed the CHIRO-KLENZ
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`brand on the tea on Edom’s behalf. Edom then sold the tea under the CHIRO-KLENZ mark.
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`16. Without Edom’s approval, Gary R. Harlem of Special Tea filed a trademark
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`application for the CHIRO-KLENZ mark even though Edom was the owner of the mark. In
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`March 1993, the United States Patent and Trademark Office (USPTO) registered the CHIRO-
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`KLENZ mark in Mr. Harlem’s name (U.S. Reg. No. 1,760,128). Mr. Harlem later assigned the
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`registration to Special Tea.
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`

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`17.
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`In September of 1997, Edom and Special Tea entered into a contract.
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`In order to
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`ensure Edom had clean title to the CHIRO-KLENZ mark, and in an attempt to amicably resolve
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`the trademark ownership question, Edom purchased the CHIRO-KLENZ mark from Special Tea
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`for $75,000.00. Edom also agreed to use Special Tea as its exclusive source of CHIRO-KLENZ
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`brand tea for a ten-year period, subject to conditions specified in the contract.
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`18.
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`Edom paid Special Tea the $75,000.00 for the CHIRO-KLENZ trademark
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`registration, and Special Tea assigned the trademark registration and all associated rights to
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`Edom.
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`19.
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`The original registration of the CHIRO-KLENZ mark was abandoned when Edom
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`inadvertently failed to file certain affidavits with the U.S. Patent and Trademark Office
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`(“USPTO”). Edom filed a new application for the CHIRO-KLENZ mark, which matured into
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`U.S. Registration 2,459,970 on June 21, 2001.
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`20.
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`Edom invested considerable effort and funds into marketing CHIRO-KLENZ
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`brand tea and, as a result, CHIRO-KLENZ tea became Edom’s top selling product.
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`21.
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`In view of the success of the CHIRO-KLENZ brand tea, the volume of sales over
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`the years and the distinctive appearance of the package for the CHIRO-KLENZ tea, the product
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`has become recognized by those in the marketplace as emanating from a single source, Edom.
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`22.
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`The distinctive appearance of the package for the CHIRO-KLENZ tea includes
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`ornamental features which comprise proprietary and protectable trade dress which serves the
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`purpose of identifying and distinguishing Edom’s CHIRO-KLENZ tea from that of its
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`competitors.
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`

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`23.
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`In 2004, customers began contacting Edom to complain about a drop in the
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`quality of CHIRO-KLENZ tea. Edom contacted Special Tea, informed it of the complaints, and
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`insisted that Special Tea resolve the quality problems.
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`24.
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`Special Tea did not adequately resolve the quality problems. In December 2004,
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`after providing proper notice to Special Tea, and in accordance with the terms of the contract,
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`Edom terminated the contract with Special Tea. Edom found a new party to supply it with tea to
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`be sold under the CHIRO-KLENZ mark.
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`25.
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`In January 2005, Special Tea filed a civil action in New York state court against
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`Edom alleging breach of the contract. The civil action was captioned Special Tea, Inc. v. Edom
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`Laboratories, Inc., and was assigned index no. 2005-00934. On January 18, 2008, the Court
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`ruled in Edom’s favor, finding that Special Tea had materially breached the contract, and that
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`Edom was within its rights to terminate the contract as a result of that breach.
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`26.
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`On January 24, 2006, while the civil action was pending, Special Tea filed a
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`petition with the USPTO to cancel Edom’s CHIRO-KLENZ mark. Special Tea again asserted
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`that Edom breached the contract and that the rights in the CHIRO-KLENZ mark had reverted to
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`Special Tea. The cancelation proceeding was given cancelation proceeding no. 92045380.
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`27.
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`However, because Edom had moved from the address listed in the USPTO’s
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`records, Edom never received notification of the cancelation proceeding.
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`28.
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`Special Tea was aware of Edom’s new address and was in contact with Edom.
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`However, Special Tea never informed Edom of the cancelation proceeding. Nor did Special Tea
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`inform the USPTO of Edom’s new address. Moreover, Special Tea affirmatively misrepresented
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`Edom’s address to the USPTO in the Petition to Cancel.
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`

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`29.
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`On April 13, 2006, the Trademark Trial and Appeal Board (TTAB) entered
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`judgment by default and granted Special Tea’s petition to cancel Edom’s CHIRO-KLENZ mark.
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`Special Tea then filed its own application for the CHIRO-KLENZ mark, which matured into
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`Reg. No. 3,327,764 on October 30, 2007.
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`30.
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`On January 7, 2008, Special Tea assigned the newly acquired CHIRO-KLENZ
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`mark (Reg. No. 3,327,764) to Glen Lichter. Mr. Lichter then began selling CHIRO-KLENZ
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`brand tea through Body Breakthrough. Herb Naturals distributed the infringing CHIRO-
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`KLENZ. A photo of a box of the infringing CHIRO-KLENZ is provided at Exhibit B.
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`31.
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`In 2008, Edom discovered that Special Tea had canceled Edom’s CHIRO-
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`KLENZ registration, had registered the mark for itself, and assigned the registration to Mr.
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`Lichter.
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`32.
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`Edom filed a civil suit in New York state court alleging that the defendants were
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`using the CHIRO-KLENZ name in violation of the contract that assigned the CHIRO-KLENZ
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`name to Edom. The suit was captioned Edom Laboratories v. Special Tea, Inc. ; Herb Naturals,
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`Inc. ; Body Breakthrough, Inc. ; Rosa Reece; Gary Harlem; Cory Lichter; and Glen Lichter, and
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`was assigned case number 2008-27705.
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`33.
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`Edom also filed a Petition for Cancelation with the USPTO on August 1, 2008.
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`The proceeding was given cancellation no. 92049824. In the petition, Edom argued that the
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`mark should be canceled as Edom, not Special Tea or Glen Lichter, was the proper owner of the
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`mark.
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`34.
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`The TTAB determined that Special Tea assigned all rights in the CHIRO-KLENZ
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`mark to Edom and that the contract made no provision for a reversion of those rights. The
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`TTAB determined that Edom was the proper owner of the CHIRO-KLENZ mark, and in
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`September 2009, canceled Glen Lichter’s registration of CHIRO-KLENZ.
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`35.
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`Following the TTAB decision, Edom filed an application to the USPTO for a new
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`registration of the CHIRO-KLENZ mark which has been assigned Serial No. 77/843,368.
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`36.
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`Following the TTAB decision, Glen Lichter filed an application for registration of
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`SUPER CHIRO TEA to be used in connection with herbal teas.
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`37.
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`Upon information and belief, Herb Naturals and Body Breakthrough, under the
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`direction and control of Gary Harlem, Glen Lichter, Rosa Reece, and Cori Lichter (hereinafter
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`referred to as “the individual defendants”) have begun selling an herbal tea that competes with
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`Edom’s CHIRO-KLENZ brand tea using the mark SUPER CHIRO. A photo of a box of the
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`infringing SUPER CHIRO product is provided at Exhibit C.
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`38.
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`Upon information and belief, Special Tea, Herb Naturals, and Body
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`Breakthrough, under the direction and control of the individual defendants, are selling their
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`competing products under the SUPER CHIRO mark in packaging that is nearly identical to the
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`packaging used for Edom’s authentic CHIRO-KLENZ.
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`39.
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`Upon information and belief, Special Tea, Herb Naturals and Body Breakthrough,
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`under the direction and control of the individual defendants, are holding themselves out to
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`consumers as the original makers of CHIRO-KLENZ, have placed testimonials for CHIRO-
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`KLENZ on their website to encourage purchases of SUPER CHIRO, and made statements to
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`associate themselves with Edom and the CHIRO-KLENZ brand.
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`40.
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`Upon information and belief, Special Tea, Herb Naturals and Body Breakthrough,
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`under the direction and control of the individual defendants, falsely state that they are the
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`“original makers of CHIRO-KLENZ” on their packaging and in their promotional materials.
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`41.
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`The activities outlined above have caused actual confusion among consumers,
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`even in the short time since the introduction of the SUPER CHIRO product. Customers have
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`contacted Edom asking about the defendants’ SUPER CHIRO product.
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`42.
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`Upon information and belief, Special Tea, Herb Naturals, and Body
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`Breakthrough, under the direction and control of the individual defendants, with full knowledge
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`of Edom’s rights in the CHIRO-KLENZ mark, have worked together to infringe Edom’s
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`trademarks and trade dress in an attempt to cause confusion and to profit from that confusion.
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`FIRST CAUSE OF ACTION
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`Federal Unfair Competition, 15 U.S.C.A. §1125(a)
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`43.
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`Edom realleges and reincorporates each and every allegation of Paragraphs 1
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`through 40 as though fully set forth here.
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`44.
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`Edom is the owner of the CHIRO-KLENZ trademark, which mark is valid and
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`enforceable.
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`45.
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`Special Tea, Herb Naturals, and Body Breakthrough’s use of the mark CHIRO-
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`KLENZ on a product that competes directly with Edom’s CHIRO-KLENZ is likely to cause
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`confusion among consumers.
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`46.
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`Special Tea, Herb Naturals, and Body Breakthrough’s use of the mark SUPER
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`CHIRO on a product that competes directly with Edom’s CHIRO-KLENZ brand tea is likely to
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`cause confusion among consumers.
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`47.
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`Special Tea, Herb Naturals, and Body Breakthrough are using packaging that is so
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`similar to that used by Edom that it is likely to cause consumer confusion.
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`48.
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`Special Tea, Herb Naturals, and Body Breakthrough are infringing on Edom’s
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`trade dress rights in its packaging.
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`49.
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`Special Tea, Herb Naturals, and Body Breakthrough have undertaken this course
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`of action with full knowledge of Edom’s rights in the CHIRO-KLENZ mark and with bad faith
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`intent to profit from the goodwill that Edom has cultivated in the CHIRO-KLENZ brand.
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`50.
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`Upon information and belief, Special Tea, Herb Naturals, and Body Breakthrough
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`have made numerous false and misleading statements in an attempt to associate their product
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`with Edom and to use the goodwill Edom has built in the CHIRO-KLENZ brand to sell their
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`competing product. These statements are likely to deceive consumers into thinking that Special
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`Tea, Herb Naturals, and Body Breakthrough are affiliated with, connected, or associated with
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`Edom, or that Edom sponsors endorses, or approves of the infringing CHIRO-KLENZ and
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`SUPER CHIRO products.
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`51.
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`Upon information and belief, the aforesaid acts constitute a false designation of
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`origin, in that Special Tea, Herb Naturals and Body Breakthrough have failed to adequately
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`inform consumers at the point of sale that the SUPER CHIRO tea is not CHIRO-KLENZ brand
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`tea.
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`52.
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`Upon information and belief, the individual defendants are officers and/or
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`directors of Special Tea, Herb Naturals, and Body Breakthrough and have directed the
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`corporations to engage in the acts of unfair competition specified herein.
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`53.
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`Upon information and belief, the individual defendants have used Special Tea,
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`Herb Naturals, and Body Breakthrough to knowingly engage in the unfair practices outlined
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`above in an attempt to shield themselves from liability for their actions.
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`54.
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`Upon information and belief, by their acts, defendants have made and will make
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`substantial profits and gains to which it is not in law or equity entitled.
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`55.
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`Edom has no adequate remedy at law for these injuries. Unless defendants are
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`restrained by this Court, these injuries will continue to occur.
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`SECOND CAUSE OF ACTION
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`State Unfair Competition
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`56.
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`Edom realleges and reincorporates each and every allegation of paragraphs 1
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`through 53 as though fully set forth here.
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`57.
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`The conduct of Special Tea, Body Breakthrough, and Herb Naturals, as alleged
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`above, including the sale of tea bearing confusingly similar trademarks and using a confusingly
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`similar package, constitutes unfair competition under New York’s common law. Special Tea,
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`Body Breakthrough, and Herb Naturals’ acts have resulted in the “passing off” of SUPER
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`CHIRO products and CHIRO-KLENZ products as those of Edom, or as somehow related or
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`associated with, or sponsored or endorsed by Edom.
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`58.
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`Upon information and belief, by its acts, Special Tea, Body Breakthrough, and
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`Herb Naturals has made and will make substantial profits and gains to which it is not in law or
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`equity entitled.
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`10
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`59.
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`Upon information and belief, the individual defendants are officers and/or
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`directors of Special Tea, Herb Naturals, and Body Breakthrough and have directed the
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`corporations to engage in the acts of unfair competition specified herein.
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`60.
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`Upon information and belief, the individual defendants have used Special Tea,
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`Herb Naturals, and Body Breakthrough to knowingly engage in the unfair practices outlined
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`above in an attempt to shield themselves from liability for their actions.
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`61.
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`Upon information and belief, Special Tea, Body Breakthrough, and Herb Naturals
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`intend to continue their infringing acts, and will continue to willfully unfairly compete with
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`Edom unless restrained by this Court.
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`62.
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`Special Tea, Body Breakthrough, and Herb Naturals’ acts have caused, and will
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`continue to cause, irreparable injury to Edom, and Edom has no adequate remedy at law.
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`THIRD CAUSE OF ACTION
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`Trademark Infringement
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`63.
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`Edom realleges and reincorporates each and every allegation of Paragraphs 1
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`through 5 9 as though fully set forth here.
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`64.
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`Edom has made continuous, uninterrupted, and extensive use of the CHIRO-
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`KLENZ mark.
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`65.
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`As a result, Edom has a protectable interest in the CHIRO—KLENZ mark.
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`66.
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`Special Tea, Herb Naturals, and Body Breakthrough’s use of the CHIRO-KLENZ
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`mark and the SUPER CHIRO mark is likely to cause confusion among consumers.
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`67.
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`Special Tea, Herb Naturals, and Body Breakthrough’s use misappropriates the
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`extensive and long-standing goodwill in the CHIRO-KLENZ marks built up by Edom.
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`ll
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`68.
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`Upon information and belief, the individual defendants are officers and/or
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`directors of Special Tea, Herb Naturals, and Body Breakthrough and have directed the
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`corporations to engage in the acts of unfair competition specified herein.
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`69.
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`Upon infonnation and belief, the individual defendants have used Special Tea,
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`Herb Naturals, and Body Breakthrough to knowingly engage in the unfair practices outlined
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`above in an attempt to shield themselves from liability for their actions.
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`70.
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`Edom has no adequate remedy at law for these injuries. Unless defendants are
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`restrained by this Court from continuing its use of the CHIRO-KLENZ marks, these injuries will
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`continue to occur.
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`FOURTH CAUSE OF ACTION
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`Trade Dress Infringement
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`71.
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`Edom realleges and reincorporates each and every allegation of paragraphs 1
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`through 68 as though fully set forth here.
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`72.
`
`Edom has a protectable interest in the packaging of its CHIRO-KLENZ product.
`
`73.
`
`Special Tea, Herb Naturals, and Body Breakthrough’s use of similar trade dress is
`
`likely to cause consumer confusion.
`
`74.
`
`Upon information and belief, the individual defendants are officers and/or
`
`directors of Special Tea, Herb Naturals, and Body Breakthrough and have directed the
`
`corporations to engage in the acts of unfair competition specified herein.
`
`75.
`
`Upon information and belief, the individual defendants have used Special Tea,
`
`Herb Naturals, and Body Breakthrough to knowingly engage in the unfair practices outlined
`
`above in an attempt to shield themselves from liability for their actions.
`
`12
`
`

`
`76.
`
`Edom has no adequate remedy at law for these injuries. Unless defendants are
`
`restrained from using Edom’s protectable trade dress, these injuries will continue to occur.
`
`FIFTH CLAIM FOR RELIEF
`
`Common Law Unjust Enrichment
`
`77.
`
`Edom realleges and reincorporates each and every allegation of paragraphs 1
`
`through 74 as though fully set forth here.
`
`78.
`
`Upon information and belief, Special Tea, Body Breakthrough, and Herb Naturals
`
`have been and will continue to be unjustly enriched as a result of their unauthorized use of the
`
`CHIRO-KLENZ trademark and trade dress as aforesaid, and by its sale of the tea bearing
`
`confusingly similar marks in confusingly similar packages, thereby depriving Edom of revenues
`
`it rightfully should receive by virtue of the use of the CHIRO-KLENZ trademark and trade dress.
`
`79.
`
`Upon information and belief, by its acts, Special Tea, Body Breakthrough, and
`
`Herb Naturals have made and will make substantial profits and gains to which they are not in law
`
`or equity entitled.
`
`80.
`
`Upon information and belief, Special Tea, Body Breakthrough, and Herb Naturals
`
`intend to continue their infringing acts, and will continue to willfully unjustly enrich itself, unless
`
`restrained by this Court.
`
`81.
`
`Upon information and belief, the individual defendants are officers and/or
`
`directors of Special Tea, Herb Naturals, and Body Breakthrough and have directed the
`
`corporations to engage in the acts specified herein.
`
`82.
`
`Upon information and belief, the individual defendants have used Special Tea,
`
`Herb Naturals, and Body Breakthrough to knowingly engage in the activities outlined above in
`
`13
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`

`
`an attempt to shield themselves from liability for their actions.
`
`83.
`
`Special Tea, Body Breakthrough, and Herb Naturals’ acts have caused, and will
`
`continue to cause, irreparable injury to Edom, and Edom has no adequate remedy at law.
`
`SIXTH CLAIM FOR RELIEF
`
`Deceptive Acts and Practices in Violation ofNew York General Business Law § 349
`
`84.
`
`Edom realleges and reincorporates each and every allegation of paragraphs 1
`
`through 82 as though fully set forth here.
`
`85.
`
`Special Tea, Body Breakthrough, and Herb Naturals are deceiving consumers,
`
`including consumers who reside in New York, by luring them into purchasing their inferior
`
`products using a trademark and trade dress which are confusingly similar to the CHIRO-KLENZ
`
`trademark and trade dress. Special Tea, Body Breakthrough, and Herb Naturals’ conduct
`
`constitutes deceptive acts and practices in violation of Section 349 of the New York General
`
`Business Law, and have caused public harm.
`
`86.
`
`Upon information and belief, by its acts, Special Tea, Body Breakthrough, and
`
`Herb Naturals have made and will make substantial profits and gains to which they are not in law
`
`or equity entitled.
`
`87.
`
`Upon information and belief, Special Tea, Body Breakthrough, and Herb Naturals
`
`intend to continue their deceptive acts and practices, and will continue to willfully deceive
`
`consumers, unless restrained by this Court.
`
`88.
`
`Upon information and belief, the individual defendants are officers and/or
`
`directors of Special Tea, Herb Naturals, and Body Breakthrough and have directed the
`
`corporations to engage in the deceptive acts specified herein.
`
`14
`
`

`
`89.
`
`Upon information and belief, the individual defendants have used Special Tea,
`
`Herb Naturals, and Body Breakthrough to knowingly engage in the deceptive acts outlined above
`
`in an attempt to shield themselves from liability for their actions.
`
`90.
`
`Special Tea, Body Breakthrough, and Herb Naturals’ acts have caused, and will
`
`continue to cause, irreparable injury to Edom, and Edom has no adequate remedy at law.
`
`SEVENTH CLAIM FOR RELIEF
`
`Trademark Dilution in Violation ofNew York General Business Law §§ 3 60-] et seq.
`
`91.
`
`Edom realleges and reincorporates each and every allegation of paragraphs 1
`
`through 88 as though fully set forth here.
`
`92.
`
`Edom is the owner of the CHIRO-KLENZ trademark. By virtue of Edom’s
`
`prominent use of the CHIRO-KLENZ trademark which has become and continues to be
`
`distinctive and has acquired secondary meaning.
`
`93.
`
`Special Tea, Body Breakthrough, and Herb Naturals are liable for dilution of the
`
`CHIRO-KLENZ trademark under Section 360-1, et seq. of the New York General Business Law.
`
`Special Tea, Body Breakthrough, and Herb Naturals’ use of the CHIRO-KLENZ mark and/or
`
`marks confusingly similar thereto, in conjunction with inferior tea products dilutes the distinctive
`
`quality of the CHIRO-KLENZ mark. Special Tea, Body Breakthrough, and Herb Naturals’
`
`unlawful use of the CHIRO-KLENZ mark and/or marks confusingly similar thereto is likely to
`
`tarnish said marks in the minds of consumers, thereby lessening the value of the CHIRO-KLENZ
`
`mark as a unique identifier of Edom and its high quality products bearing such mark.
`
`15
`
`

`
`94.
`
`Upon information and belief, the individual defendants are officers and/or
`
`directors of Special Tea, Herb Naturals, and Body Breakthrough and have directed the
`
`corporations to engage in the acts of unfair competition specified herein.
`
`95.
`
`Upon information and belief, the individual defendants have used Special Tea,
`
`Herb Naturals, and Body Breakthrough to knowingly engage in the unfair practices outlined
`
`above in an attempt to shield themselves from liability for their actions.
`
`96.
`
`Upon information and belief, by its acts, Special Tea, Body Breakthrough, and
`
`Herb Naturals have made and will make substantial profits and gains to which it is not in law or
`
`equity entitled.
`
`97.
`
`Upon information and belief, Special Tea, Body Breakthrough, and Herb Naturals
`
`intend to continue its infringing acts, and will continue to willfully dilute the Edom marks, unless
`
`restrained by this Court.
`
`98.
`
`Special Tea, Body Breakthrough, and Herb Naturals’ acts have caused, and will
`
`continue to cause, irreparable injury to Edom, and Edom has no adequate remedy at law.
`
`JURY DEMAND
`
`Plaintiff respectfully demands a trial by jury on all matters alleged herein in accordance
`
`with Rule 38(b) of the Federal Rules of Civil Procedure.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Edom requests judgment against defendants as follows:
`
`1.
`
`Enter a judgment that defendants have engaged in trademark infringement, trade
`
`dress infringement and unfair competition in violation of the Lanham Act and the New York
`
`General Business Law;
`
`16
`
`

`
`2.
`
`For a preliminary injunction and permanent injunction against defendants, their
`
`partners, successors, predecessors, assigns and all persons acting for, with, by, through, or under
`
`them, and:
`
`Restraining defendants from using in any manner the CHIRO-KLENZ mark, the
`
`SUPER CHIRO mark, infringing trade dress, and anyvariations thereof in a
`
`manner that is likely to cause confusion, mistake, or to deceive;
`
`Restraining defendants from using in any manner a name or mark confusingly
`
`similar to Edom’s Marks in connection with defendants’ goods or services in such
`
`a manner that is likely to create the erroneous belief that these goods or services
`
`are authorized by, sponsored by, licensed by, or are in some other way associated
`
`with Edom;
`
`Restraining defendants from making any representation or statement that falsely
`
`leads consumers to believe that their products are affiliated with, sponsored by, or
`
`approved by Edorn;
`
`For statutory and civil damages in an amount to be proven at trial;
`
`For punitive damages;
`
`For treble damages;
`
`6.
`
`For an accounting and disgorgement of all gains, profits, and advantages derived
`
`by defendants from their acts of unfair competition, infringement, dilution, and other violations
`
`of law;
`
`7.
`
`For corrective advertising;
`
`17
`
`

`
`8.
`
`For monetary damages according to proof at trial sustained by Edom as a result of
`
`defendants’ unlawful acts alleged here;
`
`9.
`
`For all costs and expenses, including without limitation, reasonable attorney’s
`
`fees incurred by Edom in this action;
`
`10.
`
`For prejudgment interest at the maximum legal rate; and
`
`11.
`
`For other and further relief as the court deems just and proper.
`
`Respectfully submitted,
`
`Dated: November 2-? , 2009
`
`Glenn T. Henn erger (GTH 6625)
`gthdocket@hoffmannbaron.com
`HOFFMANN & BARON, LLP
`
`6900 Jericho Turnpike
`Syosset, NY 11791
`Telephone:
`(516) 822-3550
`Facsimile: (516)822-3582
`
`Of Counsel:
`
`Alan L. Edwards
`
`aedwards@kmiplaw.com
`Alec J. McGinn
`
`alecmcginn@kmiplaw.com
`KUNZLER & MCKENZIE
`
`8 East Broadway Ste 600
`Salt Lake City, Utah 84111
`Telephone: (801) 994-4646
`Facsimile: (801)531-1929
`
`Counsel for Plaint1fl'Ed0m Laboratories, Inc.
`
`18
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`Case 2:09-cv-051

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