Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA439800
`ESTTA Tracking number:
`11/07/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91201962
`Defendant
`MVP Group International, Inc.
`JAMES P. BRODER
`ROEDER & BRODER LLP
`9915 MIRA MESA BLVD STE 300
`SAN DIEGO, CA 92131-7002
`
`jbroder@rbiplaw.com
`Motion to Suspend for Civil Action
`James P. Broder
`jpbroder@san.rr.com
`/James P. Broder/
`11/07/2011
`MotionToSuspend11072011.pdf ( 3 pages )(13987 bytes )
`Complaint-1.pdf ( 33 pages )(1864313 bytes )
`Complaint-1-Exhibits.pdf ( 22 pages )(504583 bytes )
`Complaint-2.pdf ( 12 pages )(45792 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Serial No. 85/078,522
`______________________________________
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`SMITH MOUNTAIN INDUSTRIES, Inc.
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`Opposer,
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`) Opposition No.: 91201962
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`v.
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`MVP GROUP INTERNATIONAL, INC.,
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`a Kentucky corporation,
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`Applicant.
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`_____________________________________ )
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`MOTION TO SUSPEND PROCEEDINGS
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Applicant, MVP Group International, Inc., pursuant to 37 C.F.R. §2.117(a),
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`hereby requests that the Board suspend the current proceedings pending the
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`outcome of two Federal civil actions between the parties. The civil actions are
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`Smith Mountain Industries, Inc. v. MVP Group International, Inc., Case No. 6:11-cv-
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`00023-NKM, U.S. District Court for the Western District of Virginia and MVP Group
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`International, Inc. v. Smith Mountain Industries, Inc., Case No. 2:11-cv-02608-MBS,
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`U.S. District Court for the District of South Carolina, Charleston Division, and its
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`1
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`final determination will likely have a bearing on the issues before the Board.
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`Copies of the complaints are attached to this motion.
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`Should this motion be denied, Applicant moves in the alternative for a ten-
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`day extension of time in which to file its Answer in the present proceeding.
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`Dated this 7th of November, 2011.
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`Respectfully submitted,
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`MVP Group International, Inc., Applicant
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`By: __/James P. Broder/_____________
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`JAMES P. BRODER
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`Attorney for Petitioner
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`Registration No. 43,514
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` ROEDER & BRODER LLP
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`9915 Mira Mesa Blvd., Ste. 300
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`San Diego, California 92131
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`Telephone: (858) 635-2142
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`Facsimile: (858) 635-9686
`Email: jbroder@rbiplaw.com
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`Attached: Copy of complaints in Smith Mountain Industries, Inc. v. MVP Group
`International, Inc., and MVP Group International, Inc. v. Smith Mountain Industries,
`Inc.
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`2
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`CERTIFICATE OF SERVICE
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`On November 7, 2011, a true and correct copy of the foregoing MOTION
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`was duly served by first-class mail, postage pre-paid, with courtesy electronic
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`mail copy to counsel for Opposer:
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`Thomas F. Bergert, Esq.
`WILLIAMS MULLEN PC
`321 E. Main Street, Suite 400
`Charlottesville, VA 22902
`Telephone: (434) 951-5700
`Facsimile: (434) 817-0977
`Email: tbergert@williamsmullen.com
`Counsel for Opposer SMITH MOUNTAIN INDUSTRIES. INC.
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`/James P. Broder/ __________
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 1 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 1 of 33
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`I
`IN THE UNITED STATES DISTRICT COURT
`F
`FOR THE WESTERN DISTRICT OF VIRGINIA
`L
`Lynchburg Division
`
`S
`SMITH MOUNTAIN INDUSTRIES, INC.,
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`P
`Plaintiff,
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`v.
`V
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`M
`MVP GROUP INTERNATIONAL, INC.
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`D
`Defendant.
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`\J\./\/%%/\d\/%\&
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`C
`COMPLAINT
`
`c
`Case No. 6:11-cv- 00013
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`S
`d
`Smith Mountain Industries, Inc., d/b/a Virginia Candle Company (“Virginia Candle” or
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`i
`“Plaintiff’),
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`through counsel,
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`states as
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`follows
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`o
`for
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`its Complaint against MVP Group
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`l
`International, Inc. (“MVP” or “Defendant”):
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`1
`1.
`
`a
`This is an action for trademark infringement, trade dress infringement, and unfair
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`c
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`competition arising under the Lanham Act, 15 U.S.C. §§ 1051 et seq. and the common law.
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`C
`B
`Because MVP’s infringement is ongoing and Virginia Candle has been, and is likely to continue
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`t
`to be, harmed by such infringement, Virginia Candle seeks, among other things, preliminary and
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`p
`permanent injunctive relief.
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`Parties
`P
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`2
`2.
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`P
`Plaintiff Smith Mountain Industries,
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`Inc.
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`i
`is a Virginia corporation with its
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`p
`principal offices located in Forest, Virginia.
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`3
`3.
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`t
`On information and belief, Defendant MVP Group International,
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`Inc.
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`is a
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`K
`S
`Kentucky corporation with offices located in Charleston, South Carolina. On further information
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`i
`a
`and belief, Defendant regularly conducts business within the Commonwealth of Virginia,
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`including without limitation in this district.
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`.
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`

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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 2 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 2 of 33
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`J
`Jurisdiction, Controlling Law, and Venue
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`4.
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`T
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`This Court has jurisdiction over the subject matter of this action pursuant to 15
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`U
`b
`U.S.C. § 1l2l(a) and 28 U.S.C. §§ 1331, l338(a), (b) because this action arises under an Act of
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`t
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`Congress relating to trademarks, and because the action asserts a claim of unfair competition
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`j
`h
`joined with a substantial and related claim under the trademark laws.
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`5
`5.
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`t
`This Court has supplemental jurisdiction pursuant to 28 U.S.C. § 1367 over all
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`c
`c
`common law claims in this civil action because the common law claims are so related to claims
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`o
`t
`over which this Court has original jurisdiction that the common law claims form part of the same
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`c
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`case or controversy under Article III of the United States Constitution.
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`6
`6.
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`o
`Upon information and belief, this Court has personal jurisdiction over MVP
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`b
`C
`because MVP regularly conducts business within the Commonwealth of Virginia,
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`including
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`without limitation in this district; and because MVP has committed, and continues to commit,
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`g
`a
`acts of infringement within the Commonwealth of Virginia, including without limitation in this
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`d
`district.
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`7.
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`V
`.
`Venue is proper in this district pursuant to 28 U.S.C. §§ 139l(b) because it is a
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`district in which MVP is subject to personal jurisdiction.
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`F
`Factual Allegations
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`V
`Virginia Candle’s Products
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`S
`8.
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`r
`V
`Virginia Candle is a leading developer, manufacturer, and marketer of premium
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`q
`quality fragrance products, including candles. Founded over twenty years ago in Lynchburg,
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`V
`a
`Virginia, Virginia Candle distributes its products to retailers across the United States, as well as
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`.c
`sells its products through its website http://www.virginiacandle.com. Through years of extensive
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`m
`marketing and product development, Virginia Candle has established a reputation within the
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`industry for producing and delivering unique candle and fragrance goods of exceptional quality.
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`.
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`

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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 3 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 3 of 33
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`9
`9.
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`r
`Several aspects of Virginia Candle’s products serve to distinguish them from
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`those of Virginia Candle’s competitors, and are in part responsible for both Virginia Candle’s
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`s
`superior reputation and its candles’ popularity.
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`In addition to using premium wax blends and
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`carefully formulated fragrances that ensure consistent smells and longer bum times, Virginia
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`Candle uses natural wicks made from natural wood. These signature wicks not only burn clean,
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`b
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`but also simulate the soothing sound of a crackling fire.
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`Virginia Candle’s Marks and Trade Dress
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`1
`10.
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`Virginia Candle owns a federal registration for the word mark ECOWOOD
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`W
`w
`WICK, for use in connection with “Candles, candle wicks,” United States Patent and Trademark
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`O
`e
`Office (“USPTO”) Reg. No. 3,299,600 (“the ’600 Registration”), which issued on September 25,
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`2
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`2007. The ‘600 Registration is registered on the Principal Register, with a date of first use of at
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`least as early as November 15, 2005, and a date of first use in interstate commerce of at least as
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`e
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`early as December 1, 2005. The ’600 Registration is currently valid and subsisting. A true and
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`6
`accurate copy of the Certificate of Reg. No. 3,299,600 is attached hereto as Exhibit A.
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`1
`11.
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`Virginia Candle owns a federal
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`registration for
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`the stylized mark WW
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`WOODWICK, for use in connection with “Scented candles” and other goods, USPTO Reg. No.
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`3
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`3,556,278 (“the ’278 Registration”), which issued on January 6, 2009. The ’278 Registration is
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`registered on the Principal Register, with dates of first use and first use in interstate commerce
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`for “scented candles” of at least as early as July 12, 2005. The ’278 Registration is currently
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`valid and subsisting. A true and accurate copy of the Certificate of Reg. No. 3,556,278 is
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`attached hereto as Exhibit B.
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`12.
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`Virginia Candle owns a federal registration for the stylized mark WOODWICK,
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`for use in connection with “Scented candles” and other goods, USPTO Reg. No. 3,258,312 (“the
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 4 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 4 of 33
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`:
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`‘312 Registration”), which issued on July 3, 2007. The ‘312 Registration is registered on the
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`Principal Register with dates of first use and first use in interstate commerce for “scented
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`candles” and “potpourri” of at least as early as July 12, 2005. The ‘312 Registration is currently
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`valid and subsisting. A true and accurate copy of the Certificate of Reg. No. 3,258,312 is
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`attached hereto as Exhibit C.
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`1
`13.
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`Virginia Candle owns a federal registration for the stylized mark WW, for use in
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`a
`connection with “Scented oils used to produce aromas; scented oils used to produce aromas and
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`reeds used to diffuse the oil aromas sold as a combination,” USPTO Reg. No. 3,414,660 (“the
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`‘660 Registration”), which issued on April 22, 2008. The ‘660 Registration is registered on the
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`Principal Register, with dates of first use and first use in interstate commerce of at least as early
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`a
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`as June 1, 2006. The ‘660 Registration is currently valid and subsisting. A true and accurate
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`copy of the Certificate of Reg. No. 3,414,660 is attached hereto as Exhibit D.
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`14.
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`Virginia Candle owns a federal registration for the stylized mark NATURE’S
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`W
`WICK, for use in connection with “Scented candles” and other goods, USPTO Reg. No.
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`3
`o
`3,832,697 (“the ‘697 Registration”), which issued on August 10, 2010. The ‘697 Registration is
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`registered on the Principal Register, with date of first use of at least as early as July, 2009, and
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`date of first use in interstate commerce of at least as early as September, 2009. A true and
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`accurate copy of the Certificate of Reg. No. 3,832,697 is attached hereto as Exhibit E.
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`15.
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`V
`Virginia Candle owns common law rights in the mark CRACKLES AS IT
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`B
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`BURNS in connection with candles and related goods, which mark has been in continuous use in
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`commerce since at least as early as 2006. A photograph of a Virginia Candle label bearing the
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`CRACKLES AS IT BURNS mark is attached hereto as Exhibit F.
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`16.
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`V
`Virginia Candle owns
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`common law rights
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`in
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`H
`the mark HEAR THE
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 5 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 5 of 33
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`DIFFERENCE A WOODWICK MAKES in connection with candles and related goods, which
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`mark was first used in commerce at least as early as 2005.
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`17.
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`V
`m
`Virginia Candle owns common law rights in its leaf mark (“Leaf Mark”), depicted
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`b
`below, in connection with candles and related goods, which mark has been in continuous use in
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`commerce since at least as early as September, 2009, and is prominently featured on many of
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`Virginia Candle’s products. Virginia Candle has filed Application Serial No. 85355856 with the
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`f
`USPTO (“the ‘856 Application”) to register the Leaf Mark in connection with “candles” and
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`ç
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`A
`“scented candles,” which application is currently pending. A copy of the ‘856 Application is
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`a
`attached hereto as Exhibit G.
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`V
`Virginia Candle’s Leaf Mark
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`Virginia Candle product with Leaf Mark
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`18.
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`One line of Virginia Candle’s candles is housed in a stylish, contemporary glass
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`+
`d
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`jar with a wooden lid embossed with Virginia Candle’s signature WoodWick logo, and the jars
`a
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`V
`have a unique and elegant slope with a domed label. Virginia Candle owns the trade dress in the
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`shape, style, and overall appearance and the product configuration of this line of products
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 6 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 6 of 33
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`(
`d
`(“WoodWick Trade Dress”). Virginia Candle has used the Trade Dress since at least as early as
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`2
`r
`2005 to identify, its scented candles and related products, and to distinguish Virginia Candle’s
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`products from similar offerings by other companies. Below are representative images depicting
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`these aspects of Virginia Candle’s trade dress.
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`19.
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`A
`a
`At all times relevant to this Complaint, Virginia Candle has used, and continues to
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`use, the respective marks represented by the ‘60O Registration, the ‘278 Registration, the ‘312
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`R
`e
`Registration, the ‘660 Registration, and the ‘697 Registration; the Leaf Mark; the CRACKLES
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`A
`AS IT BURNS mark;
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`K
`the HEAR THE DIFFERENCE A WOODWICK MAKES mark;
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`(
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`(collectively, the “Virginia Candle Marks”); and the WoodWick Trade Dress in connection with
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`the goods set forth above to advertise, market, offer to sell, and sell such goods in interstate
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`commerce.
`C
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`2
`20.
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`Virginia Candle prominently displays the Virginia Candle Marks on its scented
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`candles and related products, including on the packaging for said products, and in advertising
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`and promotional materials distributed throughout the United States.
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`21.
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`a
`Virginia Candle has devoted considerable time, effort, and money to designing,
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`a
`developing, manufacturing, advertising, marketing, and selling various scented candle and
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`6
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 7 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 7 of 33
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`related products under the Virginia Candle Marks and the WoodWick Trade Dress throughout
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`the United States. As a consequence of its efforts, Virginia Candle has developed a large and
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`diverse customer base and a prominent position in the market for the sale of these products.
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`22.
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`As of the date of the filing of this Complaint, Virginia Candle is actively
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`expanding its use of the Virginia Candle Marks and the WoodWick Trade Dress in connection
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`with the advertising, marketing, offering to sell, and sale of these products throughout the United
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`States.
`S
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`23.
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`The Virginia Candle Marks and the WoodWick Trade Dress, when used in
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`connection with scented candle and related products, indicate to members of the purchasing
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`a
`public that the goods being offered originate from and are provided by Virginia Candle only, and
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`no other person or entity.
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`24.
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`V
`a
`Virginia Candle has extensively used the Virginia Candle Marks and WoodWick
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`Trade Dress to identify and distinguish its goods from those of its competitors, such that the
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`Virginia Candle Marks and WoodWick Trade Dress represent and possess significant goodwill
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`which is of great monetary and reputational value to Virginia Candle.
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`25.
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`B
`Because of Virginia Candle’s significant expenditure of time, effort, and money
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`in the marketing, advertising, and promotion of the Virginia Candle Marks and WoodWick
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`Trade Dress,
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`these marks have developed and now possess strong secondary meaning to
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`consumers of scented candle and related products, such that the consuming public identifies them
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`as indicating products of distinctively high quality originating only from Virginia Candle.
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`M
`-n
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`MVP’s Pattern of Infringing Conduct
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`26.
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`n
`MVP designs, manufactures, and sells scented candles and other home fragrance
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`products.
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 8 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 8 of 33
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`27.
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`MVP advertises, markets, offers to sell, and sells scented candles and related
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`products under marks and trade dress that are confusingly similar to the Virginia Candle Marks
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`a
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`and WoodWick Trade Dress. On information and belief, these scented candles and related
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`products are sold in the same types of retail and distribution channels as the goods sold by
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`Virginia Candle under the Virginia Candle Marks and WoodWick Trade Dress.
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`2
`28.
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`MVP sells scented candles and related products to the same classes of purchasers
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`as those who purchase Virginia Candle’s products.
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`2
`29.
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`MVP advertises, markets, offers to sell, and/or sells scented candles and related
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`products under the marks ECO WIX and/or ECO WICK.
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`3
`30.
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`MVP uses the marks ECO WIX and/or ECO WICK to advertise, market, offer to
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`sell, and/or sell goods that are virtually identical to the goods offered by Virginia Candle under
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`its ECOWOOD WICK mark.
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`3
`31.
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`n
`MVP uses the phrase “crackles as it burns” in connection with candles, including
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`without limitation on candle jar lids. A photograph of one of MVP’s candle jar lids, depicting
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`MVP’s use of the phrase “crackles as it burns” is depicted below.
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 9 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 9 of 33
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`32.
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`Virginia Candle has superior rights in its CRACKLES AS IT BURNS Mark, a
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`representative image of which is attached as Exhibit F and is depicted below.
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`woodwickr
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`33.
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`MVP uses the phrase HEAR THE DIFFERENCE in connection with candles,
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`including without limitation on its candle labels.
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`3
`34.
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`Virginia Candle has superior
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`rights
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`in its HEAR THE DIFFERENCE A
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`W
`WOODWICK MAKES mark.
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`3
`35.
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`MVP advertises, markets, offers to sell, and/or sells scented candles and related
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`products under this stylized WICK mark, including as set forth in the photograph below:
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`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 10 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 10 of 33
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`36.
`
`t
`Virginia Candle’s NATURE’S WICK mark as set forth in the ‘697 Registration is
`
`d
`depicted below, which features a leaf element:
`
`+
`I 0
`n
`natures W1Cl(
`
`37.
`
`M
`MVP advertises, markets, offers
`
`for
`
`sale,
`
`
`and sells candles housed in
`
`c
`
`contemporary glass jars having hourglass shapes and domed labels, and featuring embossed
`
`o
`w
`wooden lids, which are confusingly similar to the WoodWick Trade Dress as show below:
`
`M
`MVP’s Candle Jar
`
`Virginia Candle’s Candle Jar
`
`10
`1
`
`
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 11 of 33
`
`V
`Virginia Candle’s Candle Jar
`
`MVP’s Candle Jar
`
`
`
`n
`V
`Virginia Candle’s Candle Jar (foreground), MVP’s Candle Jar (background)
`
`3
`38.
`
`d
`On information and belief, certain of MVP’s wooden lids are of the same shape,
`
`s
`e
`style, appearance, and dimensions as Virginia Candle’s wooden lids, and certain of MVP’s
`
`w
`j
`wooden lids even fit into Virginia Candle’s candle jars.
`
`11
`
`
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 12 of 33
`.
`f33
`Case 6:1 1-cv—00023—N KM Documen
`11
`Filed 07/01/11 Page12°
`
`V
`Virginia Candie’s Lid (with gasket)
`e
`
`MVP’s Lid (with gasket)
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`V
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`r
`
`
`
`
`
`M
`MVP’s Lid (gasket removed)
`
`1
`12
`
`
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 13 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 13 of 33
`
`3
`39.
`
`g
`On information and belief, MVP was aware of Virginia Candle’s federal
`
`r
`
`registrations for and rights in and to the Virginia Candle Marks and WoodWick Trade Dress
`
`w
`C
`when MVP commenced use of ECO WIX, ECO WICK, WICK, CRACKLES AS IT BURNS,
`
`H
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`HEAR THE DIFFERENCE, and its leaf design (collectively, “the Infringing Marks”), and the
`
`s
`r
`shape style and overall appearance of its Eco Wixjars.
`
`4
`40.
`
`
`MVP has advertised, marketed, offered for sale, and sold products that infringe
`
`o
`o
`one or more of the Virginia Candle Marks and the WoodWick Trade Dress to retail stores in the
`
`C
`Commonwealth of Virginia.
`
`41.
`
`A
`u
`As a result of MVP’s conduct, Virginia Candle has suffered irreparable harm in
`
`a
`addition to damages.
`
`COUNT I
`C
`(
`
`(Infringement of ECOWOOD WICK mark under 15 U.S.C. § 1114)
`
`4
`42.
`
`t
`Plaintiff repeats and realleges, as if fully set forth herein, each and every
`
`a
`allegation contained in the foregoing paragraphs.
`
`43.
`
`T
`f
`This claim arises under 15 U.S.C. § 1114 for willful and deliberate infringement
`
`s
`o
`of the ECOWOOD WICK mark set forth in the ‘600 Registration.
`
`44.
`
`a
`T
`The ECOWOOD WICK mark set forth in the ‘600 Registration is a valid,
`
`,
`
`p
`protectable, and enforceable mark.
`
`4
`45.
`
`m
`Virginia Candle has rights in its ECOWOOD WICK mark that are superior to any
`
`r
`s
`rights MVP may have in its ECO WIX or ECO WICK marks which are used in connection with
`
`s
`similar, related, and/or identical goods.
`
`4
`46.
`
`V
`Consumers associate the ECOWOOD WICK mark with Virginia Candle as the
`
`s
`single source of the goods provided under that mark.
`
`.
`
`47.
`
`V
`p
`Virginia Candle has not given MVP consent, permission, or license to use the
`,
`
`13
`1
`
`
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 14 of 33
`Filed 07/01/11
`Case 6:11—cv—00023—NKM Document 1
`Page 14 of 33
`
`E
`ECOWOOD WICK mark.
`
`4
`48.
`
`t
`MVP’s use of the ECO WIX and ECO WICK marks creates a likelihood of
`
`t
`c
`confusion, mistake, or deception among consumers with Virginia Candle’s ECOWOOD WICK
`
`mark.
`m
`
`4
`49.
`
`o
`MVP knew, or should have known by the exercise of reasonable care, that its use
`
`o
`h
`of the ECO WIX and ECO WICK marks in connection with candles and related goods would
`
`e
`c
`cause confusion, mistake, or deception among consumers with Virginia Candle’s ECOWOOD
`
`W
`WICK mark.
`
`5
`50.
`
`
`On information and belief, MVP knew of Virginia Candle’s federally registered
`
`E
`n
`ECOWOOD WICK mark, and intended to induce and did induce, and intends to induce and will
`
`i
`g
`induce, consumers to purchase MVP’s goods by trading off the extensive goodwill built up by
`
`V
`Virginia Candle in its ECOWOOD WICK mark.
`
`5
`51.
`
`g
`To date, MVP has not ceased using the infringing ECO WIX and ECO WICK
`
`m
`h
`marks in violation of Virginia Candle’s rights to the exclusive use of its ECOWOOD WICK
`
`m
`mark.
`
`5
`52.
`
`n
`MVP’s wrongful acts alleged herein violate Virginia Candle’s rights under 15
`
`U
`
`U.S.C. § 11l4(a), and, on information and belief, have been deliberate, willful, and in disregard
`
`o
`of Virginia Candle’s rights.
`
`5
`53.
`
`i
`MVP’s wrongful acts alleged herein violate Virginia common law, and Virginia
`
`m
`C
`h
`Candle’s rights protected thereunder, and, on information and belief, have been deliberate,
`,
`
`t
`w
`willful, and in disregard of Virginia Candle’s rights.
`
`.
`
`5
`54.
`
`e
`MVP’s wrongful acts alleged herein have permitted and/or will permit MVP to
`
`t
`e
`earn substantial revenues and profits on the strength of Virginia Candle’s ECOWOOD WICK
`
`1
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 15 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 15 of 33
`
`m
`mark.
`
`5
`55.
`
`,
`By reason of MVP’s wrongful acts alleged herein, Virginia Candle has suffered
`
`a
`
`and is continuing to suffer damage to its business, trade, reputation, and goodwill as a result of
`
`t
`a
`the erroneous perception that the goods of MVP are affiliated with, sponsored by, approved by,
`
`o
`or originate from Virginia Candle.
`
`5
`56.
`
`i
`As a result of MVP’s wrongful acts alleged herein, Virginia Candle has suffered
`
`a
`and is continuing to suffer
`
`irreparable injury.
`
`g
`Virginia Candle cannot be adequately
`
`c
`d
`compensated for these injuries by damages alone, and Virginia Candle has no adequate remedy
`
`i
`a
`at law for MVP’s infringement of its rights. Virginia Candle is entitled to preliminary and
`
`p
`e
`pennanent injunctive relief, as well as attorney fees.
`
`C
`COUNT II
`(
`j
`(Infringement of ECOWOOD WICK mark under 15 U.S.C. § 1125(a) and common law)
`
`5
`57.
`
`t
`Plaintiff repeats and realleges, as if fully set forth herein, each and every
`
`a
`allegation contained in the foregoing paragraphs.
`
`5
`58.
`
`
`This claim arises under 15 U.S.C. § l125(a) for willful and deliberate unfair
`
`a
`c
`competition, including false designation of origin and palming off, and under Virginia common
`
`l
`law.
`
`5
`59.
`
`
`The ECOWOOD WICK mark is valid and enforceable, and has attained
`
`s
`secondary meaning.
`
`6
`60.
`
`t
`MVP’s use of the ECO WIX and ECO WICK marks creates a likelihood of
`
`l
`c
`confusion, mistake, or deception with Virginia Candle’s ECOWOOD WICK mark.
`
`.
`
`6
`61.
`
`t
`MVP has infringed, and continues to infringe, the ECOWOOD WICK mark in
`,
`
`e
`i
`interstate commerce, which use by MVP tends to falsely describe and represent a false
`
`d
`a
`designation of origin with Virginia Candle, and which tends to palm off MVP’s goods as
`,
`
`15
`1
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 16 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 16 of 33
`
`a
`n
`affiliated with, sponsored by, approved by, or originating from Virginia Candle.
`
`6
`62.
`
`m
`MVP’s acts demonstrate MVP’s intent both to palm off its goods as affiliated
`
`m
`w
`with, sponsored by, approved by, or originating from Virginia Candle, and to trade off the
`
`g
`goodwill in Virginia Candle’s ECOWOOD WICK mark.
`
`6
`63.
`
`n
`MVP’s wrongful acts alleged herein constitute unfair competition under 15
`
`U
`
`U.S.C. § 1l25(a), and Virginia Candle has been and will continue to be damaged by such unfair
`
`c
`e
`competition, suffering injury to its business, trade, reputation, and goodwill.
`
`6
`64.
`
`o
`MVP’s unfair competition, false designation of origin, and palming off have been
`
`w
`o
`willful, deliberate, and intentional, and will no doubt continue unless enjoined by this Court.
`
`C
`COUNT III
`(
`1
`(Infringement of WOODWICK Marks under 15 U.S.C. § 1114)
`
`6
`65.
`
`t
`Plaintiff repeats and realleges, as if fully set forth herein, each and every
`
`a
`allegation contained in the foregoing paragraphs.
`
`6
`66.
`
`w
`This claim arises under 15 U.S.C. § 1114 for willful and deliberate infringement
`
`o
`s
`of the ECOWOOD WICK mark set forth in the ‘600 Registration, the WW WOODWICK mark
`
`r
`s
`set forth in the ‘278 Registration, the WOODWICK mark set forth in the ‘3l2 Registration, the
`
`
`W
`WW mark set forth in the ‘660 Registration, and the NATURE’S WICK mark set forth in the
`
`:
`k
`‘697 Registration (collectively, the “WOODWICK Marks”).
`
`6
`67.
`
`6
`68.
`
`e
`The WOODWICK Marks are valid, protectable, and enforceable marks.
`
`.
`
`y
`Virginia Candle has continuously and exclusively used the WOODWICK Marks
`
`t
`s
`r
`since prior to MVP’s use of the WICK mark in connection with similar, related, and/or identical
`,
`
`g
`goods.
`
`6
`69.
`
`n
`By reason of Virginia Candle’s use and promotion of the WOODWICK Marks,
`
`,
`
`a
`c
`and the distinctiveness of those marks, consumers associate the WOODWICK Marks with
`,
`
`1
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 17 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 17 of 33
`
`V
`r
`Virginia Candle as the single source of the goods provided under those marks.
`
`7
`70.
`
`e
`MVP is using the infringing WICK mark to promote the sale of and sell goods
`
`t
`that are virtually identical
`
`r
`to those offered by Virginia Candle in connection with its
`
`W
`WOODWICK Marks.
`
`7
`71.
`
`i
`Virginia Candle has not given MVP consent, permission, or license to use the
`
`W
`WOODWICK Marks.
`
`72.
`
`M
`c
`MVP’s use of the WICK mark creates a likelihood of confusion, mistake, or
`
`h
`d
`deception among consumers between MVP’s goods and those offered by Virginia Candle in
`
`c
`connection with its WOODWICK Marks.
`
`7
`73.
`
`o
`MVP knew, or should have known by the exercise of reasonable care, that its use
`
`o
`a
`of the WICK mark in connection with candles and related goods would cause confusion,
`
`m
`
`mistake, or deception among consumers with Virginia Candle’s WOODWICK Marks.
`
`7
`74.
`
`
`On information and belief, MVP knew of Virginia Candle’s prior use of its
`
`f
`o
`federally registered WOODWICK Marks, and intended to induce and did induce, and intends to
`
`i
`induce and will
`
`g
`induce, consumers to purchase MVP’s goods by trading off the extensive
`
`g
`K
`goodwill built up by Virginia Candle in its WOODWICK Marks.
`
`75.
`
`T
`C
`To date, MVP has not ceased using the infringing WICK mark, in violation of
`
`V
`s
`Virginia Candle’s rights to the exclusive use of its WOODWICK Marks.
`
`7
`76.
`
`i
`MVP’s wrongful acts alleged herein violate Virginia Candle’s rights under 15
`
`U
`
`U.S.C. § 1114(a), and, on information and belief, have been deliberate, willful, and in disregard
`
`o
`of Virginia Candle’s rights.
`
`7
`77.
`
`i
`a
`MVP’s wrongful acts alleged herein violate Virginia common law, and Virginia
`,
`
`m
`C
`h
`Candle’s rights protected thereunder, and, on information and belief, have been deliberate,
`,
`
`17
`
`1
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 18 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 18 of 33
`
`w
`t
`willful, and in disregard of Virginia Candle’s rights.
`
`7
`78.
`
`e
`MVP’s wrongful acts alleged herein have permitted and/or will permit MVP to
`
`e
`t
`earn substantial revenues and profits on the strength of Virginia Candle’s extensive advertising,
`
`i
`c
`consumer recognition, and goodwill associated with its WOODWICK Marks.
`
`7
`79.
`
`,
`By reason of MVP’s wrongful acts alleged herein, Virginia Candle has suffered
`
`
`a
`and is continuing to suffer damage to its business, trade, reputation, and goodwill as a result of
`
`t
`a
`the erroneous perception that the goods of MVP are affiliated with, sponsored by, approved by,
`
`o
`or originate from Virginia Candle.
`
`8
`80.
`
`i
`As a result of MVP’s wrongful acts alleged herein, Virginia Candle has suffered
`
`a
`and is continuing to suffer
`
`irreparable injury.
`
`g
`Virginia Candle cannot be adequately
`
`c
`d
`compensated for these injuries by damages alone, and Virginia Candle has no adequate remedy
`
`a
`V
`at law for MVP’s infringement of its rights. Virginia Candle is entitled to preliminary and
`
`p
`e
`permanent injunctive relief, as well as attorney fees.
`
`C
`COUNT IV
`(
`1
`(Infringement of WOODWICK Marks under 15 U.S.C. § 1l25(a) and common law)
`
`8
`81.
`
`t
`Plaintiff repeats and realleges, as if fully set forth herein, each and every
`
`a
`allegation contained in the foregoing paragraphs.
`
`8
`82.
`
`r
`This claim arises under 15 U.S.C. § 1l25(a) for willful and deliberate unfair
`
`a
`c
`competition, including false designation of origin and palming off, and under Virginia common
`
`l
`law.
`
`8
`83.
`
`a
`The WOODWICK Marks are valid and enforceable, and have attained secondary
`,
`
`
`m
`meaning such that consumers identify these marks as originating from Virginia Candle.
`
`.
`
`E
`84.
`
`
`m
`MVP’s use of the WICK mark creates a likelihood of confusion, mistake, or
`,
`
`h
`d
`deception among consumers between MVP’s goods and those offered by Virginia Candle in
`
`1
`18
`
`
`
`

`
`Case 6:11-cv-00023-NKM Document 1 Filed 07/01/11 Page 19 of 33
`Case 6:11-CV-00023-NKM Document 1
`Filed 07/01/11 Page 19 of 33
`
`c
`connection with its WOODWICK Marks.
`
`8
`85.
`
`f
`Having constructive, if not actual, knowledge of Virginia Candle’s prior use of
`
`s
`t
`the WOODWICK Marks, MVP has infringed, and continues to infringe, the WOODWICK
`
`d
`M
`Marks in interstate commerce in connection with goods that are similar, related, and/or identical
`
`V
`t
`to those offered by Virginia Candle, which use by MVP tends to falsely describe and represent a
`
`n
`f
`false designation of origin with Virginia Candle, and which tends to palm off MVP’s goods as
`
`a
`i
`affiliated with, sponsored by, approved by, or originating from Virginia Candle.
`
`8
`86.
`
`k
`MVP’s acts are likely to cause confusion, mistake, and deception among
`
`c
`consumers of products sold under the WOODWICK Marks.
`
`.
`
`87.
`
`M
`f
`MVP’s acts demonstrate MVP’s intent both to palm off its goods as affiliated
`
`m
`w
`with, sponsored by, approved by, or originating from Virginia Candle, and to trade off the
`
`g
`e
`goodwill that Virginia Candle has established in the WOODWICK Marks in connection with its
`
`g
`goods.
`
`8
`88.
`
`a
`MVP’s wrongful acts alleged herein constitute u