Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA342409
`ESTTA Tracking number:
`04/14/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91194326
`Plaintiff
`Intel Corporation
`Eric J. Ball
`Fenwick & West LLP
`801 California Street , Silicon Valley Center
`Mountain View, CA 94041
`UNITED STATES
`trademarks@fenwick.com
`Motion to Suspend for Civil Action
`Eric J. Ball, Esq.
`trademarks@fenwick.com
`/EJB/
`04/14/2010
`Consented Motion to Suspend Pending Termination of Civil Action_Part1.pdf ( 3
`pages )(117492 bytes )
`Exhibit 1.pdf ( 12 pages )(427563 bytes )
`Exhibit 2.pdf ( 105 pages )(2993387 bytes )
`POS.pdf ( 1 page )(56610 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Intel Corporation,
`Opposer,
`
`vs.
`
`Express Scripts, Inc.,
`Applicant.
`
`Opposition No: 91 194326
`
`Serial No.:
`Filed:
`Mark:
`
`77/649,295
`January 14, 2009
`INTELLACT
`
`Int’l Classes: 35, 36, 44
`Published:
`December 22, 2009
`
`<'400<'0'J<»0'-><»O'>0O’:DO’JCO'D"«0D<0'J
`
`CONSENTED MOTION TO SUSPEND
`
`PENDING TERMINATION OF CIVIL ACTION
`
`Opposer, Intel Corporation (“Intel” or “Opposer”) hereby moves to suspend the above-
`
`captioned opposition proceeding pursuant to 37 C.F.R. § 2.1l7(a) and TBMP § 5l0.02(a)
`
`pending termination of a civil proceeding (the “Civil Action”) that may be dispositive of the
`
`opposition. Applicant, Express Scripts, Inc. (“Express Scripts” or “Applicant”) agrees with and
`
`consents to Intel’s motion to suspend pending termination of the Civil Action.
`
`The Civil Action was brought by Express Scripts against Intel in the United States
`
`District Court for the Eastern District of Missouri, Case No. 09—CV—O0796 ERW. Express
`
`Scripts’ Complaint seeks inter alia a declaratory judgment that the INTELLACT mark does not
`
`infringe on or dilute the INTEL mark. Intel answered Express Scripts’ Complaint and filed
`
`counter-claims seeking inter alia a judgment that the INTELLACT mark infringes on and dilutes
`
`the INTEL mark. Intel’s Complaint further seeks a judgment ordering Express Scripts to
`
`withdraw its application for the INTELLACT mark. A copy of Express Scripts’ Complaint and
`
`

`
`Intel’s Answer and Counter—Claims filed in the Civil Action are attached hereto as Exhibits 1
`
`and 2.
`
`ARGUMENT
`
`On March 29, 2010, Intel filed an opposition against Express Scripts’ Application Serial
`
`No. 77/649,295 for the INTELLACT mark alleging that the INTELLACT mark infringes on and
`
`dilutes the INTEL mark. Likewise, Express Scripts’ Complaint and lntel’s Counter—Claims in
`
`the pending Civil Action involve actions for trademark infringement and dilution under the
`
`Lanham Act based on the INTEL and INTELLACT marks. Most, if not all, of the issues in the
`opposition proceeding will be decided by the district court. Accordingly, pursuant to 37 C.F.R.
`
`§ 2.117, suspension of the opposition proceeding is appropriate. See, 37 C.F.R. § 2.117
`
`(“Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a party
`
`or parties to a pending case are engaged in a civil action or another Board proceeding which may
`
`have a bearing on the case, proceedings before the Board may be suspended until termination of
`
`the civil action or the other Board proceeding.”).1
`
`The district court’s resolution of the dispute would also decide issues not before the
`
`Board. For example, the Civil Action involves inter alia claims of unfair competition and false
`
`designation or origin, and seeks injunctive relief and monetary damages. The opposition
`
`proceeding cannot dispose of all the issues before the district court, but the district court
`
`proceedings can dispose of most, if not all, of the issues involved in the opposition proceeding.
`
`1 See also, TBMP § 5l0.02(a) (“Ordinarily, the Board will suspend proceedings in the case
`before it if the final determination of the other proceeding will have a bearing on the issues
`before the Board”); Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB
`1995) (suspension granted for opposition because state court litigation which would decide
`applicant ’s ownership of mark “may have a bearing on the question of applicant’s right of
`registration”); Wh0pper—Burger, Inc. v. Burger King, Inc., 171 USPQ 805, 807 (TTAB 1971)
`(suspension granted in cancellation proceeding Where complaint sought to enjoin defendant from
`using mark and requested cancellation of the mark).
`
`

`
`Finally, if both proceedings move forward simultaneously, two separate forums would
`
`face the expense and effort of dealing with issues that could be better resolved in one forum — the
`
`district court — because of its more comprehensive jurisdiction to consider all of the issues.
`
`CONCLUSION
`
`The interests ofjudicial economy and judicial consistency require that the Board suspend
`
`the present opposition proceeding until tennination of the Civil Action. Accordingly, Intel
`
`respectfully requests that the Board enter an order suspending the opposition proceeding pending
`
`termination of the Civil Action.
`
`Dated: April 14, 2010
`
`Jedediah Wakefield, Esq.
`jwakefield@femvicl<.com
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone:
`(415) 875-2300
`Facsimile:
`(415)281-1350
`
`Eric Ball, Esq.
`eball@fenwicl<.com
`FENWICK & WEST LLP
`
`801 California Street
`
`Mountain View, CA 94041
`Telephone:
`(650) 988-8500
`Facsimile:
`(650) 938-5200
`
`Attorneys for Opposer, Intel Corporation
`
`

`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`UNITED STATES DISTRICT COURT
`
`EASTERN DISTRICT OF MISSOURI
`EASTERN DIVISION
`
`Case No.
`
`) )
`
`)
`)
`
`) )
`
`) )
`
`)
`
`EXPRESS SCRIPTS, INC.,
`
`Plaintiff,
`
`Vs.
`
`INTEL CORPORATION,
`
`Defendant.
`
`COMPLAINT
`
`COMES NOW Plaintiff Express Scripts, Inc. (“Plaintiff’ or “ESI”), and for its Complaint
`
`against Defendant Intel Corporation (“Defendant” or “Intel”), respectfully states as follows:
`
`1.
`
`This is an action for declaratory judgment seeking, among other relief, a declaration
`
`Nature of Action
`
`under the Federal Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, that:
`
`ESI has not
`
`infringed upon any valid and enforceable trademark or service mark of Intel;
`ESI has not diluted
`any valid and enforceable trademark or service mark of Intel; and
`ESI has not committed any
`
`acts of unfair competition.
`
`The Parties
`
`2.
`
`Plaintiff ESI is a corporation organized and existing under the laws of the State of
`
`Delaware, having a principal place of business at One Express Way, St. Louis, Missouri, 63121,
`
`United States.
`
`3.
`
`Defendant Intel Corporation is a corporation organized and existing under the laws
`
`of the State of Delaware and, upon information and belief, has a principal place of business at 2200
`
`l\/Iission College Boulevard, Santa Clara, CA, 95054, United_States.
`
`

`
`lurisdiction and Venue
`
`4.
`
`This action arises under the Trademark Laws of the United States (15 U.S.C. § 1051,
`
`ex‘ seq.), state unfair competition law, and the Federal Declaratory judgment Act (28 U.S.C. §§ 2201
`
`and 2202).
`
`5.
`
`This Court has jurisdiction over the subject matter of this action pursuant to 28
`
`U.S.C.
`
`1331 and 1338 and 15 U.S.C. § 1121, and under the Declaratory Judgment Act, for the
`
`purpose of grantingthe declaratory relief sought herein.
`
`6.
`
`I
`
`, Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 because: (i) a
`
`substantial portion of the events giving rise to this action occurred in this judicial district; and/or
`
`Intel does business, may be found, and is subject to personal jurisdiction, in this judicial district.
`
`Facts Common to All Counts
`
`7.
`
`Founded in 1986, ESI is one of theilargest pharmacy benefit management companies
`
`in North America. ESI provides pharmacy benefit management related services including, but not
`
`limited to, pharmacy benefit management and consultation services, pharmaceutical advice services,
`
`provision of pharmaceutical and medical information, and other related services, under and in
`
`connection with ESI’s valuable and famous service marks.
`
`8.
`
`ESI is the owner of all right, title and interest in, to, and under the mark
`
`INTELLACTW for a variety of services including, but not limited to, pharmaceutical advice
`
`services, provision of pharmaceutical and medical information, pharmacy benefitimanagement and
`
`consultation services, and other related services, and owns U.S. Trademark Application Serial
`
`No. 77/649,295 for the mark INTELLACTSM for “consulting services regarding healthcare costs
`
`and options to improve patients‘ health; pharmacy services, namely, providing pharmaceutical
`
`benefit optimization guidance and advice; retail pharmacy services,” for “pharmacy benefit
`
`management clinical program to review and analyze lab data, medical data and pharmacy claims;
`
`

`
`pharmaceutical benefit management services,” and for “consulting and advice services regarding
`
`pharmaceuticals, prescription drugs, medications, healthcare benefits, general health and wellness;
`
`pharmacy services, namely, providing pharmaceutical information and alternatives to existing or
`
`prescribed medications; provision of pharmaceutical, medication, drug, and healthcare information
`
`via telephone, websites on global and other computer networks, and direct mailings; medical
`
`counseling in the nature of drug therapy counseling and disease management counseling”
`
`(collectively the “INTELLACTGM Marks”).
`
`9,
`
`Since at least as early as February 2009, ESI has utilized the INTELLACTGM Marks
`
`on and in connection with the provision of some or all the aboVe—identified services.
`
`10.
`
`ESI has expended, and continues to expend, a substantial amount of resources,
`
`money, time and effort promoting, marketing, advertising and building consumer recognition and
`
`goodwill in its extremely valuable services under and in connection with its highly recognized service
`
`marks, including its INTELLACTGM Marks.
`11.
`The INTIELLACTGM Marks have been used, and continue to be used, by ESI among
`
`the relevant purchasing public and consumers, to identify the source of origin of ESI’s high quality
`
`services and, further, to distinguish such high—quality services from those products and services
`
`offered by its competitors and others.
`
`12.
`Defendant Intel is in the semiconductor chip business and describes itself as “the
`world’s largest semiconductor chip maker” that develops “integrated digital technology products,
`
`primarily integrated circuits, for industries such as computing and communications,” and is striving
`
`to “be the preeminent provider of semiconductor chips and platforms for the worldwide digital
`
`community.” On information and belief, Defendant Intel owns a number of United States
`
`trademark registrations relating to its use of “Intel” on and in connection with its goods.
`
`

`
`13.
`
`V On or about May 1, 2009, ESI received the correspondence attached hereto as
`
`Ex/9z'[7z'z‘A from one of Intel’s in—house attorneys. In the correspondence, Intel expressly asserted
`
`that ESI’s use of INTELLACTSM infringes and dilutes Intel’s “trademark rights and violate’s Intel’s
`
`rights under the laws of trademark dilution and unfair competition law.” Additionally, Intel
`
`demanded that ESI abandon its U.S. application to register INTELLACTSM for its pharmacy
`
`benefits management related services.
`
`14.
`
`INTELLACT is a unique, fanciful, coined, term created by ESI to be used on and in
`
`connection with its pharmacy benefit management related services.
`
`15.
`
`Through its allegations, Defendant Intel has taken the position that it owns all right,
`
`title, and interest, in and to any and all marks that contain the root of the word “Intelligent” as a
`
`component or portion thereof, regardless of the formation of the term or word and the goods or
`
`services associated with such use.
`
`16.
`
`The U.S. Patent and Trademark Office has reviewed and issued over one—hundred
`
`trademark and service mark applications for registration that employ the component “Intel” as a
`
`portion thereof for goods and/or services in the health care industry notwithstanding Defendant
`
`Intel’s prior registrations and applications for marks containing the term “Intel” as a component
`
`thereof.
`
`17.
`
`Defendant Intel does not own the exclusive right to use and employ the term “Intel”
`
`as a component of any and all marks for any and all goods or services.
`
`18.
`By way of example, the U.S. Patent and Trademark Office has examined applications
`and issued registrations for the following representative marks (among innumerable others) in the
`
`health care industry notwithstanding Defendant Intel’s registrations and applications for “Intel”
`
`specified goods or services:
`
`0
`
`INTELICARE, U.S. Reg. No. 3,466,715
`
`

`
`INTELLICARE, U.S. Reg. Nos. 2,767,798; 2,702,128; 2,311,653
`
`INTELIGRID, U.S. Reg. No. 3,489,912
`
`INTELISTAF HEALTHCARE, U.S. Reg. Nos. 3,365,373; 2,498,122
`
`INTELISOURCE, U.S. Reg. No. 2,929,846
`
`INTELICHART, U.S. Reg. No. 3,472,992
`
`INTELLIMAX, U.S. Reg. No. 3,264,124
`
`INTELERAD, U.S. Reg. No. 3,246,876
`
`INTELLYST, U.S. Reg. No. 2,966,951
`
`INTELLIRX, U.S. Reg. No. 2,688,865
`
`1NTELLIPHARM,U.S. Reg. No. 2,489,036
`INTEL15ISCAN,U.S. Reg. No. 2,564,679
`
`INTELLISURG, U.S. Reg. Nos. 3,495,307, 3,504,293
`
`INTELLIJET, U.S. Reg. No. 3,593,857
`
`INTELLISIGHT, U.S. Reg. No. 3,603,479
`INTELLIBRIDGE,
`Reg. No. 3,602,621
`
`INTELICHART, U.S. Reg. No. 3,472,992,
`
`INTELLIPREV, U.S. Reg. NO. 3,315,322 '
`
`V
`
`INTELLIPAP, U.S. Reg. No. 3,468,567
`
`INTELLIQLICK, U.S. Reg. No. 3,329,654
`
`INTELLITRIAL, U.S. Reg. No. 3,206,811
`INTELLITOPICS, U.S. Reg. No. 3,041,303
`
`INTELIDATA, U.S. Reg. No. 3,013,281
`
`INTELIGRATION, U.S. Reg. No. 3,044,768
`
`INTELLIDOT, U.S. Reg. No. 3,410,260
`
`INTELLAMED, U.S. Reg. No. 2,831,585
`
`

`
`0
`
`0
`
`INTELECENTER, U.S. Reg. No. 2,835,948
`
`INTELLIVUE, U.S. Reg. No. 2,960,l35
`
`COUNT I
`
`Declaratory Relief
`
`19.
`
`ESI realleges and incorporates each and every allegation set forth in paragraphs 1
`
`through 18 of the Complaint as if fully set forth and restated herein.
`
`20.
`
`Intel has expressly accused ESI’s use of INTELLACTW on and in connection with
`
`its pharmacy benefit management related services of infringing Intel’s alleged trademark rights and
`
`of constituting trademark dilution and unfair competition.
`
`21.
`
`There is no likelihood of confusion between ESI’s use of INTELLACTGM on or in
`
`connection with its pharmacy benefit management related services and Defendant Intel’s alleged
`ownership and use of “Intel” including, but not limited to, on and in connection with Intel’s
`
`semiconductor chip business.
`
`‘ 22.
`
`There is no likelihood that any relevant consumers would be confused, mistaken or
`
`deceived into believing that ESI is affiliated, connected or otherwise associated with Intel, or that
`
`Intel is sponsoring or has otherwise approved of ESI’s pharmacy benefit management services as a
`
`result of ESI’s use of the mark INTELLACTSM.
`
`23.
`
`ESI’s use of INTELLACTGM on and in connection with ESI’s pharmacy benefit
`
`management related services has not and will not result in the dilution of Defendant’s Intel’s use of
`
`“Intel” on and in connection with Intel’s business including, but not limited to, its semiconductor
`
`chip business.
`24.
`
`There now exists between ESI and Intel an actual, substantial, and continuing
`
`justiciable controversy with respect to:
`
`

`
`(a)
`
`Intel’s allegations and threats that ESI’s use of INTELLACTSM infringes
`
`upon Intel’s alleged trademark rights in or to “Intel”;
`
`(b)
`
`Intel’s allegations that ESI has diluted the distinctive quality of Intel’s alleged
`
`trademark rights in or to “Intel”; and
`
`(C)
`
`Intel’s allegations that ESI has somehow committed acts of unfair
`
`competition.
`
`25.
`
`.
`
`ESI is entitled to a declaratory judgment that ESI’s advertising, marketing, offer for
`
`sale, sale, and provision of pharmacy benefit management related services under the mark and
`
`designation INTELLACTSM does not:
`
`infringe Defendant Intel’s alleged rights in “Intel”;
`
`dilute Defendant Intel’s alleged trademark rights in the designation “Intel”; and
`
`constitute unfair
`
`competition (under the Federal Trademark Act or the common law of the State of Missouri).
`
`26.
`
`ESI is entitled to a declaratory judgment that there is no likelihood of confusion
`
`between ESI’s use of INTELLACTGM on or in connection with its pharmacy benefit management
`
`related services and Defendant’s use of “Intel” on or in connection with its business.
`
`27.
`
`ESI is entitled to a declaratory judgment that there is no likelihood that any relevant
`
`consumers would be confused, mistaken or deceived into believing that ESI is affiliated, connected
`
`or otherwise associated with Intel, or that Intel is sponsoring or has otherwise approved of ESI’s
`
`pharmacy benefit management related services.
`
`28.
`
`ESI is entitled to a declaratory judgment that ESI’s use of INTELLACTSM on or in
`
`connection with its pharmacy benefit management related services will not result in the unlawful
`
`dilution of Intel’s alleged trademark rights in or to “Intel.”
`
`

`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff Express Scripts, Inc., respectfully requests that the Court enter
`
`judgment:
`
`A.
`
`Declaring that ESI’s use of INTELLACTGM on or in connection with its pharmacy
`
`benefit management related services does not violate any of Defendant Intel’s alleged rights in or to
`
`“INTEL”;
`
`B.
`
`Declaring that ESI’s advertising, marketing, offer for sale, sale, and provision of
`
`pharmacy benefit management related services under or in connection with the designation
`
`INTELLACTSM does not constitute infringement or dilution of any of Defendant Intel’s alleged
`
`trademark rights in or to “Intel,” and, further, does not constitute unfair competition under the
`
`Federal Trademark Act or the common law of the State of Missouri;
`
`C.
`
`Declaring that there is no likelihood of confusion between ESI’s use of
`
`INTELLACTSM on or in connection with its pharmacy benefit management related services and
`
`Defendant’s use of Intel as a designation for in connection with its business including, but not
`
`limited to, its semiconductor chip business;
`
`D.
`
`Declaring that there is no likelihood that any relevant consumers would be confused,
`
`mistaken or deceived into believing that ESI is affiliated, connected or otherwise associated with
`
`Intel, or that Intel is sponsoring or has otherwise approved of ESI’s pharmacy benefit management
`
`related services;
`
`E.
`
`Declaring that ESI’s use of INTELLACTW on or in connection with its pharmacy
`
`benefit management related services will not dilute the alleged distinctive quality of Intel’s alleged
`
`trademark rights in or to “Intel”;
`
`F.
`
`Ordering Intel to compensate ESI for ESI’s costs and attorneys’ fees incurred in
`
`connection with this action; and
`
`

`
`G.
`
`Granting ESI such other and further relief as the Court finds just and proper under
`
`the circumstances.
`
`Respectfully submitted,
`
`BRYAN CAVE LLP
`
`David A. Roodman #5116
`daroodman BrvanCaVe.corn
`
`Arneer Gado #109918
`
`aagadoga/',BrvanCave.com
`Wflhemina Tyler #1156683
`Wilhernina.§3_*1er@,B1;yancCave.com
`BRYAN CAVE LLP
`
`One Metropolitan Square
`211 North Broadway, Suite 3600 ‘
`St. Louis, Missouri 63102-2750
`Telephone: (314) 259-2000
`Facsimile:
`(314) 259-2020
`
`ATTORNEYS FOR PLAINTIFF
`
`EXPRESS SCRIPTS, INC.
`
`

`
`April 30, 2009
`
`Via Federal Express
`
`Ms. Lindsay Cohen, Esq.
`Bryan Cave LLP
`One Metropolitan Square
`211 North Broadway, Suite 3600
`St. Louis, MO 63121
`
`EXHIBIT
`
`9
`
`Re:
`
`Trademark Application for INTELLACT in classes 35, 36 and 44
`Our Ref.: 10349
`
`Dear Ms. Cohen:
`
`Intel Corporation (“Intel”) has learned that you have filed U.S. Trademark Application
`Serial No. 77/649,295 on behalf of your client Express Scripts, Inc. for the mark
`INTELLACT and that your client intends to use this mark in connection with consulting
`services regarding pharmaceuticals, prescriptions, medications, and healthcare.
`
`I
`As you know, Intel is a well-known producer of a wide range of computer,
`communication, software, networking, and Internet-related products and services, in
`connection with which Intel adopted and maintains a large family of INTEL-based
`trademarks and trade names datingback to 1968. Through lnteI’s substantial use and
`promotion, the INTEL name and marks are considered among the most famous in the
`world. As such, they are afforded a broad scope of protection under U.S. and foreign
`intellectual property laws.
`
`'
`
`Given InteI’s strong presence in the computer industry and the fact that Intel actively
`provides a wide range of medical and healthcare products and services, Intel believes
`that your client’s use of INTELLACT is likely to deceive or confuse consumers as to the
`source of your client’s products and services, and/or suggest some affiliation or
`relationship with Intel that does not exist. Furthermore, any use of INTELLACT is likely
`to dilute the famous INTEL mark under both Federal and state law. Use of the
`INTELLACT trademark thus constitutes infringement of Intel's established trademark
`rights and violates Intel’s rights under the laws of trademark dilution and unfair
`competition law, Accordingly, Intel must insist that your client abandon its INTELLACT
`trademark application.
`
`Intel Corporation
`2200 Mission College Blvd.
`RNB—151
`Santa Clara, CA 95052
`
`

`
`Please note that our intention is not to disrupt your client’s business but to protect |ntel’s
`trade name and trademark rights. We are therefore interested in settling this matter in
`an efficient and amicable manner. If your client is amenable to a name change, Intel is
`willing to offer a reasonable phase—out period to facilitate the transition to a new name.
`
`‘Please provide your client’s written assurances that they will promptly comply with this
`request by May 22, 2009. We thank you for your cooperation in this matter and look
`forward to a timely response.
`
`Regards,
`
`%/6?
`
`Christopher George
`Senior Attorney
`INTEL CORPORATION
`
`(408) 653-9396
`"Tel:
`Fax: (408)765-6071
`E-mail: christopher. e. george@intel. com
`
`Intel Corporation
`2200 Mission College Blvd.
`RN B-1 51
`Santa Clara, CA 95052
`
`

`
`EXHIBIT 2
`EXHIBIT 2
`
`

`
`Case 4:G€3wev~O§?98~ERW Doeurnent 23
`
`Filed 03MB/10 Page 3 Ot27
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MISSOURI
`EASTERN DIVISION
`
`Case No. 4:09—cv-00796 (ERW)
`
`) )
`
`)
`
`3
`
`) )
`
`)
`
`EXPRESS SCRIPTS, INC.,
`
`Plaintiff,
`
`V"
`
`INTEL CORPORATION,
`
`Defendant.
`
`
`
`INTEL CORPORATION ’S ANSWER TO EXPRESS SCRIPTS INC.’S COMPLAINT
`AND COUNTERCLAIMS AGAINST EXPRESS SCRIPTS IN C.
`
`Defendant Intel Corporation (“Intel”), for its Answer to the Complaint of Plaintiff
`
`Express Scripts, Inc. (“Express Scripts”), responds as follows:
`
`Nature of Action
`
`1.
`
`Intel neither admits nor denies the averments contained in Paragraph 1 of the
`
`Complaint because those averments are conclusions of law to which no response is required; to
`
`the extent those averments may be deemed averments of fact, Intel is without knowledge or
`
`information sufficient to form a belief as to the truth of these averments and on that basis denies
`
`each of them, except that Intel admits that the Complaint purports to be a declaratory judgment
`
`action.
`
`2.
`
`Intel is without knowledge or information sufficient to form a belief to the truth
`
`of the averments contained in Paragraph 2 of the Complaint and on that basis denies each and
`
`every averment contained therein.
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`3.
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`Intel admits the averments of paragraph 3 of the Complaint.
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`Jurisdiction and Venue
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`4.
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`Intel neither admits nor denies the averments contained in Paragraph 4 of t;he
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`Complaint because those averments are conclusions of law to which no response is required; to
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`the extent those averments may be deemed averments of fact, Intel
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`is without knowledge or
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`information sufficient to form a belief as to the truth of these averments and on that basis denies
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`each of them.
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`5.
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`Intel neither admits nor denies the averments contained in Paragraph 5 of the
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`Complaint because those averments are conclusions of law to which no response is required; to
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`the extent those averments may be deemed averments of fact, Intel is without knowledge or
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`information sufficient to form a belief as to the truth of these averments and on that basis denies
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`each of them.
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`6.
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`Intel neither admits nor denies the averments contained in Paragraph 6 of the
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`Complaint because those averments are conclusions of law to which no response is required; to
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`the extent those averments may be deemed averments of fact, Intel is without knowledge or
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`information sufficient to form a belief as to the truth of these averments and on that basis denies
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`each of them, except that Intel admits that it does business in this judicial district.
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`Facts Common to All Counts
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`7.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 7 of the Complaint and on that basis denies each and
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`every averment contained therein.
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`8.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 8 of the Complaint and on that basis denies each and
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`Case 4:O9~<:‘¢«O0?%—ERW Document 23
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`every averment contained therein, except that Intel admits the existence of U.S. Trademark
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`Application Serial No. 77/649,295, the text of which speaks for itself.
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`9.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 9 of the Complaint and on that basis denies each and
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`every averment contained therein.
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`10.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 10 of the Complaint and on that basis denies each and
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`every averment contained therein.
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`11.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 11 of the Complaint and on that basis denies each and
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`every averment contained therein.
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`12.
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`Intel denies each and every averment contained in Paragraph 12 of the Complaint
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`except Intel admits that Intel owns numerous United States trademark registrations relating to its
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`use of the mark INTEL on and in connection with a wide variety of goods and services, that one
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`such good and related services provided by Intel is for semiconductor chips, and that Intel has
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`filed certain documents with the Securities and Exchange Commission, the text of which speaks
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`for themselves.
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`13.
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`Intel denies each and every averment contained in Paragraph 13 of the Complaint
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`except admits that Intel sent a letter to Express Scripts, dated April 30, 2009, the text of which
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`speaks for itself.
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`14.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 14 of the Complaint and on that basis denies each and
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`every averment contained therein.
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`{2a€;e4:€}9wcv-OOYQS-ERW
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`£>oCumant23
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`Filed O3/15/10 Page4of27
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`15.
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`Intel denies each and every averment contained in Paragraph 15 of the Complaint
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`except admits that Intel owns numerous United States trademark registrations for the mark
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`INTEL as well as common law rights in the mark INTEL, and any and all rights and interests
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`relating thereto.
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`16.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 16 of the Complaint and on that basis denies each and
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`every averment contained therein.
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`17.
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`Intel neither admits nor denies the averments contained in Paragraph 17 of the
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`Complaint because those averments are conclusions of law to which no response is required; to
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`the extent those averments may be deemed averments of fact, Intel denies each and every
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`averment contained in Paragraph 17 of the Complaint.
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`18.
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`Intel is without knowledge or information sufficient to form a belief as to the truth
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`of the averments contained in Paragraph 18 of the Complaint and on that basis denies each and
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`every averment contained therein, except Intel admits that Paragraph 18 of the Complaint lists
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`the mark and registration number of various United States trademark registrations; however,
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`Intel denies Express Scripts’ averments with respect to the marks INTELICARE, INTELISTAF
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`HEALTHCARE, and INTELLIRX as they are inaccurate.
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`COUNT I
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`Declaratory Relief
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`19.
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`Intel admits that Express Scripts purports to reallege and incorporate by reference
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`into paragraph 19 of the Complaint, the averments set forth in paragraphs 1
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`through 18 of the
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`Complaint.
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`4:O9~Cv—{}O796-ERW Document 23
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`20.
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`Intel denies each and every averment contained in Paragraph 20 of the Complaint
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`7
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`except Intel admits that Express Scripts’ use of the INTELLACT mark constitutes trademark
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`infringement, dilution and unfair competition with respect to Intel’s trademark rights.
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`21.
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`22.
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`23.
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`24.
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`Intel denies each and every averment contained in Paragraph 21 of the Complaint.
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`Intel denies each and every averment contained in Paragraph 22 of the Complaint.
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`Intel denies each and every averment contained in Paragraph 23 of the Complaint.
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`Intel denies each and every averment contained in Paragraph 24 of the Complaint,
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`except that Intel admits than an actual controversy now exists between the parties regarding
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`Express Scripts’ trademark infringement, dilution and unfair competition with respect to Intel’s
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`trademark rights.
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`Intel further denies that said actual controversy existed at the time of Express
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`Scripts’ filing of this Complaint.
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`25.
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`26.
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`27.
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`28.
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`Intel denies each and every averment contained in Paragraph 25 of the Complaint.
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`Intel denies each and every averment contained in Paragraph 26 of the Complaint.
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`Intel denies each and every averment contained in Paragraph 27 of the Complaint.
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`Intel denies each and every averment contained in Paragraph 28 of the Complaint.
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`PRAYER FOR RELIEF
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`WHEREFORE, Intel prays that Express Scripts ta'ke nothing by its Complaint, that said
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`pleading be dismissed, with prejudice, that Intel recover its costs, and for such other and further
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`relief as the Court may deem proper.
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`AFFIRMATIVE DEFENSES
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`As separate and affirmative defenses to Express Scripts’ Complaint and to each cause of
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`action, claim, and averment contained therein, Intel states as follows:
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`First Affirmative Defense — Unclean Hands
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`29.
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`Express Scripts’ Complaint, and each and every averment thereof, is barred by the
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`doctrine of unclean hands.
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`Second Affirmative Defense — Lack of Subject Matter Jurisdiction
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`30.
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`This Court lacks subject matter jurisdiction over Express Scripts’ Complaint, and
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`each and every averment thereof. Express Scripts filed this Complaint before an actual case or
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`controversy between the parties existed. Express Scripts further filed this Complaint not because
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`it believed suit by Intel was imminent but rather to control the forum where this dispute would be
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`resolved and to deter settlement negotiations. Such an anticipatory filing, calculated to win the
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`race to the courthouse, is not one of the legitimate purposes for which the Declaratory Judgment
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`Act may be used.
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`COUNTERCLAIMS
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`Defendant and Counterclaimant Intel Corporation (“Intel”) alleges as follows:
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`1.
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`This action arises from use of the name and mark “INTELLACT” by Plaintiff and
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`Counterclaim Defendant Express Scripts, Inc. (“Express Scripts”) in connection with goods and
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`services for the healthcare and pharmaceutical
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`industries,
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`including software and software
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`services such as “data standardization and integration,” “data mining” and an “evidence—based
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`rules engine.”
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`2.
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`Express Scripts’ use of a trademark virtually identical
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`to the world—famous
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`INTEL mark, adding to it merely the non—distinctive “ACT” — a common word — is likely to
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`cause confusion that Intel is the source or sponsor of Express Scripts’ goods and services, or that
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`there is an association between Intel and Express Scripts.
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`In addition, Express Scripts’ acts are
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`causing, and/or are likely to cause, dilution of the INTEL trademark.
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`Case 4:OQ-CV-00796-ERW Document 213
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`Filed CtZ§i15/’1t”3
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`l3age7<3f2?
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`3.
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`Accordingly, Intel seeks injunctive relief and damages under the Lanham Act (15
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`U.S.C.
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`1051-1127 et seq.), federal false designation of origin law (15 U.S.C. § 1125(a)), the
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`Trademark Dilution Revision Act (15 U.S.C. § 1125(c)), and the common law doctrines of
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`trademark infringement, and unfair competition.
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`I.
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`JURISDICTION AND VENUE
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`4.
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`This Court has personal jurisdiction over Express Scripts because, on information
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`and belief, Express Scripts