Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA474276
`ESTTA Tracking number:
`05/24/2012
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91204560
`Defendant
`Fuse Science, Inc.
`ALLISON R IMBER
`ALLEN DYER DOPPELT MILBRATH & GILCHRIST PA
`255 SOUTH ORANGE AVENUE, PO BOX 3791
`ORLANDO, FL 32802
`UNITED STATES
`rthornburg@addmg.com, aimber@addmg.com, adoppelt@addmg.com
`Motion to Suspend for Civil Action
`Allison R. Imber
`aimber@addmg.com
`/Allison R. Imber/
`05/24/2012
`Applicant's Unopposed Motion to Suspend Opposition Pending Outcome of Civil
`Action.pdf ( 4 pages )(15504 bytes )
`Exhibit A.pdf ( 14 pages )(689070 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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`Opposition No. 91204560
`TM App. Serial Nos. 85/363,969
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`)))))))))))))
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`MUSCLEPHARM CORPORATION,
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`Opposer,
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`v.
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`FUSE SCIENCE, INC.,
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`Applicant.
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`APPLICANT’S UNOPPOSED MOTION TO SUSPEND OPPOSITION
`PENDING OUTCOME OF CIVIL ACTION
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`Applicant Fuse Science, Inc. (“Applicant”), though its undersigned counsel, hereby
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`moves the Trademark Trial and Appeal Board (“Board”) to suspend the instant opposition
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`proceeding pending the outcome of a current civil action between Applicant and Musclepharm
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`Corporation (“Opposer”) in the Southern District of Florida. Opposer has consented to the filing
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`of this motion. In further support, Opposer shows the Board the following:
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`I.
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`Background
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`Opposer filed a civil action against Applicant in the Southern District of Florida on
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`March 15, 2012, captioned MusclePharm Corp. v. Fuse Science, Inc., Case No. 1:12-cv-21065
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`JAL. (A copy of the Complaint in that case is attached hereto as Exhibit A). The Complaint
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`includes a count for trademark infringement under 15 U.S.C. §1114 for alleged infringement of
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`Opposer’s registered mark MUSCLEPHARM ENERGEL, as well as claims for false
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`designation of origin and unfair competition under 15 U.S.C. §1125(a) and unfair competition
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`under Florida common law. All relate to the alleged infringement of Opposer’s mark
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`MUSCLEPHARM ENERGEL by Applicant’s mark ENERJEL, the same mark at issue in this
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`opposition. (Exhibit A, pp. 4-6). Accordingly, Applicant respectfully requests that this matter be
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`suspended pending the outcome of this lawsuit, so that the issues involving this mark between
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`Opposer and Applicant can be resolved in a single appropriate forum.
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`II.
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`Request for Suspension
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`The Board has the discretion to suspend an opposition proceeding pending the outcome
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`of another proceeding in another jurisdiction, and it is appropriate to do so in this case. 37
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`C.F.R. §2.117(a); see Toro Co. v. Hardigg Industries, Inc., 187 USPQ 689 (TTAB 1975);
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`Tokaido v. Honda Associates, Inc., 179 USPQ 861 (TTAB 1973). The parties named in this
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`opposition proceeding are identical to the parties in the civil action pending in the Southern
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`District of Florida. In addition, the civil action involves issues in common with those in the
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`opposition proceeding. Specifically, the civil action contains a claim that Applicant’s mark, the
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`same mark at issue in this opposition, infringers Opposer’s registered mark. (Exhibit A, p. 4).
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`The outcome of the civil action will therefore directly impact and resolve the issues involved in
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`this opposition proceeding, as well as many others affecting the parties.
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`Equitable considerations also favor suspension of the opposition proceeding because
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`conducting two trials involving the same parties and the same issues is likely to result in
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`unnecessary duplication of effort and expense. There is also the potential that simultaneous
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`proceedings on these issues could result in inconsistent outcomes.
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`For the reasons set forth above, Applicant respectfully requests that the Board suspend
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`the instant opposition proceeding until final disposition of the civil action between the parties.
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`Dated: May 24, 2012
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`Respectfully Submitted,
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`/Allison R. Imber/
`Allison R. Imber, Esq.
`Robert S. Thornburg, Esq.
`Ava K. Doppelt, Esq.
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`Allen, Dyer, Doppelt, Milbrath
` & Gilchrist, P.A.
`255 South Orange Ave.
`Ste. 1400
`Orlando, FL 32801
`Tel: (407) 841-2330
`Fax: (407) 841-2343
`aimber@addmg.com
`rthornburg@addmg.com
`adoppelt@addmg.com
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`Attorneys for Applicant
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`3
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`The undersigned hereby certifies that on this 24th day of May, 2012, a copy of the
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`foregoing was served via email and first class mail, postage prepaid, on the following:
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`Erica W. Stump
`Erica W. Stump, P.A.
`110 Broward Blvd., Suite 1700
`Fort Lauderdale, FL 33301
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`Attorneys for Opposer
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`/Michel Rodriguez/
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`Certificate of Service
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`4
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`EXHIBIT A
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 1 of 8
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
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`MUSCLEPHARM CORPORATION,
`a Nevada Corporation
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`Plaintiff,
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`CASE NO.
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`vs.
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`FUSE SCIENCE, INC.
`a Nevada Corporation,
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`Defendant.
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`_____________________________________/
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`COMPLAINT FOR TRADEMARK INFRINGEMENT
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`Plaintiff MusclePharm Corporation, (“MP”), sues Defendant Fuse Science, Inc. (“Fuse”),
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`and alleges:
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`Introduction
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`1.
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`MP seeks to prevent its competitor, Fuse, from infringing on MP’s ENERGEL
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`trademark by its use of ENERJEL for the same or similar goods in violation of the Lanham Act
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`and state law.
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`Nature of Action, Subject Matter Jurisdiction and Venue
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`2.
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`This is a civil action for (a) trademark infringement, unfair competition, and false
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`designation of origin under the Lanham Act of the United States, 15 U.S.C. §§ 1051 et seq. and
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`(b) common law unfair competition arising under the laws of the State of Florida.
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`3.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. § 1338. This
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`Court has supplemental jurisdiction over MP’s state law claim pursuant to 28 U.S.C. § 1367
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`because the state law claim is integrally related to the federal claims and arises from a common
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`1
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 2 of 8
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`nucleus of operative facts such that the administration of such claim here is in the interests of
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`judicial economy.
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`4.
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`5.
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`6.
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`MP is a Nevada corporation with its principal place of business in Colorado.
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`Fuse is a Nevada corporation with its principal place of business in Florida.
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`This Court has personal jurisdiction over Fuse pursuant to §48.193(1)(a) because
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`Fuse operates, conducts, engages in, and carries on a business in this state and has an office in
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`this state.
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`7.
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`Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(b) because: (1) Fuse
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`resides within this judicial district; (b) the infringing conduct takes place in this District; and (c)
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`the claims alleged in this action arose in this District.
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`General Allegations
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`8.
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`MP is a leading provider of high quality dietary supplement products. MP is the
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`official supplement of the UFC. MP sponsors numerous UFC fighters with great notoriety, such
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`as Quinton "Rampage" Jackson, Rashad Evans, and Anderson Silva. MP additionally sponsors
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`many famous athletes, such as Michael Vick, Chad Ochocinco, Patrick Willis, and other NFL
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`players.
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`9.
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`MP's ENERGEL is sold online at Bodybuilding.com, Amazon.com, and
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`Worldclassnutrition.com.
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`10.
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`MP's ENERGEL is advertised in the preeminent sports nutrition publications,
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`such as Status Fitness, Inside Fitness, Muscular Development, Muscle & Fitness Hers, Muscle
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`and Body, and Muscle and Performance. It has also been advertised in the national newspaper
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`publication USA Today.
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 3 of 8
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`11.
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`MP is the owner of federal trademark MUSCLEPHARM ENERGEL® issued by
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`the United States Patent and Trademark Office (“PTO”), Registration Number 4,077,299. A
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`copy of the registration is attached hereto as Exhibit “A.” The registration is valid, unrevoked,
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`and uncancelled.
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`12.
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`ENERGEL is a dietary supplement product intended to provide energy sold in a
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`gel packet.
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`13.
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`MP has expended considerable sums of money and effort in connection with
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`advertising and promotion of the distinctive ENERGEL trademark.
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`14.
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`As a result of all of these efforts and events, the ENERGEL trademark is well
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`known and highly regarded by the consuming public.
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`15.
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`MP adopted and has continuously used the ENERGEL trademark since October
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`23, 2009. MP submitted its application for the MUSCLEPHARM ENERGEL® trademark on
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`July 20, 2011.
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`16.
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`The ENERGEL trademark has either acquired a secondary meaning and
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`significance in the minds of the consuming public, or is distinctive in nature, thereby obviating
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`the necessity to develop secondary meaning.
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`Fuse’s Wrongful and Tortious Conduct
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`17.
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`After MP’s adoption and use of the ENERGEL trademark, Fuse improperly
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`adopted ENERJEL for its own competitive line of dietary supplement products to provide energy
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`in an effort to capitalize on MP’s goodwill.
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`18.
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`To that end, Fuse improperly submitted an application for ENERJEL, Serial No.
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`85/363,969 in IC 005.
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`3
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 4 of 8
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`19.
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`There is a significant likelihood of confusion between ENERGEL and ENERJEL
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`because:
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`a. ENERGEL is an arbitrary or suggestive trademark, thus entitled to a great deal of
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`protection.
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`b. ENERGEL and ENERJEL are confusingly similar in appearance, sound,
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`connotation, and commercial impression.
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`c. The goods sold in conjunction with the marks are similar or the same and
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`marketed in the same type of gel packet.
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`d. The advertising channels of the two products are the same.
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`e. The consumers and the trade channels of the goods are the same.
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`f. Upon information and belief, there appears to be bad faith here because Fuse had
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`constructive knowledge of MP’s registration for MUSCLEPHARM ENERGEL®.
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`20.
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`MP sent Fuse a cease and desist letter on or about February 23, 2011, to which it
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`received no response. A copy of the cease and desist letter is attached hereto as Exhibit "B."
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`21.
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`MP has not granted Fuse any right, assignment or license to use the ENERGEL
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`trademark, nor would MP grant such rights.
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`22.
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`MP has retained the undersigned law firm to represent it in this matter.
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`COUNT I
`Trademark Infringement Under Federal Law, 15 U.S.C. § 1114
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`MP repeats paragraphs 1 through 22 in support of this count.
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`MP is the owner of the trademark registration MUSCLEPHARM ENERGEL®,
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`23.
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`24.
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`Registration Number 3,849,855, which is valid and subsisting.
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`25.
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`Fuse’s adoption and use of ENERJEL, which is confusingly similar to
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`MUSCLEPHARM ENERGEL, is likely to cause confusion, mistake, or to deceive purchasers
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 5 of 8
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`and potential purchasers into believing that Fuse’s products and services are the same as MP’s
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`products and services or that Fuse’s products and services are in some way affiliated with,
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`sponsored, authorized, approved, sanctioned, or licensed by MP.
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`26.
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`Fuse’s actions constitute an infringement of the MUSCLEPHARM ENERGEL
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`trademark in violation of 15 U.S.C. § 1114.
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`27.
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`Upon information and belief, Fuse has engaged in this activity knowingly,
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`willfully, with actual malice, and in bad faith.
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`28.
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`Fuse’s infringing conduct has caused MP to sustain irreparable harm, monetary
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`damage, loss, and injury, in an amount to be determined at the time of trial.
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`29.
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`In accordance with 15 U.S.C. § 1117(a) MP should be awarded its actual
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`damages, costs and attorney’s fees, and Fuse’s profits derived from its infringing activities. If
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`this Court determines that Fuse has engaged in these infringing activities knowingly and
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`willfully, then MP should be awarded three times Fuse’s profits from its infringing activities.
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`30.
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`Fuse’s actions have caused, and unless enjoined by this Court will continue to
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`cause, irreparable damage, loss, and injury to MP for which it has no adequate remedy at law.
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`COUNT II
`False Designation of Origin and Unfair Competition
`Under Federal Law, 15 U.S.C. § 1125(a)
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`MP repeats paragraphs 1 through 22 in support of this count.
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`Fuse’s adoption and use of ENERJEL, which is confusingly similar to
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`31.
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`32.
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`ENERGEL, is likely to cause confusion, mistake, or to deceive purchasers and potential
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`purchasers into believing that Fuse’s products and services are the same as MP’s products and
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`services or that Fuse’s products and services are in some way affiliated with, sponsored,
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`authorized, approved, sanctioned, or licensed by MP.
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 6 of 8
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`33.
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`Fuse is attempting to trade upon the goodwill developed by MP by its use of
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`ENERJEL, which is confusingly similar to ENERGEL.
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`34.
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`By its actions, Fuse has unfairly competed with and continues to unfairly compete
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`with MP in violation of 15 U.S.C. § 1125(a).
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`35.
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`Upon information and belief, Fuse has engaged in this activity knowingly,
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`willfully, with actual malice, and in bad faith.
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`36.
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`Fuse’s infringing conduct has caused MP to sustain irreparable harm, monetary
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`damage, loss, and injury, in an amount to be determined at the time of trial.
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`37.
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`In accordance with 15 U.S.C. § 1117(a) MP should be awarded its actual
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`damages, costs and attorney’s fees, and Fuse’s profits derived from its infringing activities. If
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`this Court determines that Fuse has engaged in these infringing activities knowingly and
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`willfully, then MP should be awarded three times Fuse’s profits from its infringing activities.
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`38.
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`Fuse’s actions have caused, and unless enjoined by this Court will continue to
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`cause, irreparable damage, loss, and injury to MP for which it has no adequate remedy at law.
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`COUNT III
`Unfair Competition Under Florida Common Law
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`MP repeats paragraphs 1 through 22 in support of this count.
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`Fuse’s adoption and use of ENERJEL, which is confusingly similar to
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`39.
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`40.
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`ENERGEL, is likely to cause confusion, mistake, or to deceive purchasers and potential
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`purchasers into believing that Fuse’s products and services are the same as MP’s products and
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`services or that Fuse’s products and services are in some way affiliated with, sponsored,
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`authorized, approved, sanctioned, or licensed by MP.
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`41.
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`By its actions, Fuse has unfairly competed with and continues to unfairly compete
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`with MP.
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 7 of 8
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`42.
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`Upon information and belief, Fuse has engaged in this activity knowingly,
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`willfully, with actual malice, and in bad faith, so as to justify the assessment of increased,
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`exemplary and punitive damages against it in an amount to be determined at trial.
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`43.
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`Fuse’s actions have caused MP to sustain irreparable harm, monetary damage,
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`loss, and injury in an amount to be determined at the time of trial.
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`44.
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`Fuse’s actions have caused, and unless enjoined by this Court, will continue to
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`cause, irreparable damage, loss, and injury to MP for which it has no adequate remedy at law.
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`PRAYER FOR RELIEF
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`WHEREFORE, MP prays for a Judgment and an Order as follows:
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`A.
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`Ordering that Fuse, its officers, agents, servants, employees, and attorneys, and
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`those persons in active concert or participation with them, who receive actual notice of the Order
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`by personal service or otherwise, be preliminarily and permanently enjoined and restrained from:
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`1.
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`2.
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`Using ENERJEL or any confusingly similar variation of ENERGEL;
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`Imprinting, producing, marketing, selling, transporting, distributing,
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`moving and/or otherwise circulating any and all services or products, including, but not
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`limited to its skin care products or services related thereto, which bear the ENERJEL
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`mark or any confusingly similar variation of ENERGEL; and
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`3.
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`Acting in any manner which causes Fuse’s products, including, but not
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`limited to its dietary supplement products to be in any way confused with MP, MP’s
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`products or services, and the goodwill associated with ENERGEL;
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`B.
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`Ordering that in accordance with 15 U.S.C. § 1117, Fuse be required to:
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`1.
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`Account for and pay over to MP an amount equal to MP’s actual damages,
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`and all of the gains, profits, savings, and advantages realized by Fuse as a result of Fuse’s
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`Case 1:12-cv-21065-JAL Document 1 Entered on FLSD Docket 03/15/2012 Page 8 of 8
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`unfair competition, and if Fuse’s actions are deemed willful and intentional, then such
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`amount should be increased to an amount not exceeding three times of such amount;
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`2.
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`3.
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`Reimburse MP for the costs of this action; and
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`Reimburse MP for any and all reasonable attorney’s fees incurred as a
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`result of Fuse’s unfair competition;
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`C.
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`Expressly abandon the ENERJEL application, Serial No. 85/363,969;
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`D.
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`Ordering that under Florida common law, Fuse shall pay actual and punitive
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`damages, together with the costs of this action upon a proper showing; and
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`E.
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`That MP be awarded such other and further relief as the Court may deem just and
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`proper.
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`Respectfully submitted,
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`s/Erica W. Stump
`Erica W. Stump, Esq. (Florida Bar No. 427632)
`Electronic Mail: erica@ericawstump.com
`ERICA W. STUMP, P.A.
`8400 N. University Drive, Suite 201
`Fort Lauderdale, FL 33321
`Telephone: 786-506-1088
`Attorney for MusclePharm Corporation
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`Case 1:12-cv-21065-JAL Document 1-1 Entered on FLSD Docket 03/15/2012 Page 1 of 2
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`Case 1:12-cv-21065-JAL Document 1-1 Entered on FLSD Docket 03/15/2012 Page 2 of 2
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`Case 1:12-cv-21065-JAL Document 1-2 Entered on FLSD Docket 03/15/2012 Page 1 of 3
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`Case 1:12-cv-21065-JAL Document 1-2 Entered on FLSD Docket 03/15/2012 Page 2 of 3
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`Case 1:12-cv-21065-JAL Document 1-2 Entered on FLSD Docket 03/15/2012 Page 3 of 3