throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA655258
`ESTTA Tracking number:
`02/11/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214355
`Plaintiff
`3M Company
`Wendy C. Larson
`Pirkey Barber PLLC
`600 Congress Ave., Suite 2120
`Austin, TX 78701
`UNITED STATES
`bbarber@pirkeybarber.com, wlarson@pirkeybarber.com,
`eolson@pirkeybarber.com, tmcentral@pirkeybarber.com, trade-
`marks@mmm.com
`Motion to Suspend for Civil Action
`William G. Barber
`bbarber@pirkeybarber.com, wlarson@pirkeybarber.com,
`eolson@pirkeybarber.com, tmcentral@pirkeybarber.com, trade-
`marks@mmm.com
`/WGB/
`02/11/2015
`Mtn to Suspend.pdf(438024 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
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`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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`3M Company,
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`
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`v.
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`3m’s Automotive,
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`Opposer,
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`Applicant.
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`§
`§
`§
`§
`§ Opposition No. 91214355
`§
`§
`§
`§
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`OPPOSER’S MOTION TO SUSPEND
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`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510, Opposer moves to suspend this
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`
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`opposition proceeding. Opposer has filed a complaint against Applicant in the United States
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`District Court for the Middle District of Florida (the “Court”) in the civil action styled 3M
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`Company v. 3M’S AUTOMOTIVE, INC., Civil Action No. 8:15-cv-293-T-36TGW (the “Civil
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`Action”), which may have a bearing on this proceeding. A copy of Opposer’s Complaint, without
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`exhibits (the “Complaint”), is attached hereto as Exhibit A.
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`As can be seen from the Complaint, the parties in this opposition proceeding are the same
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`as those in the Civil Action, and the central issue in both cases is whether Applicant’s use of the
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`mark 3M’S AUTOMOTIVE INC. is likely to cause confusion with or dilution of Opposer’s
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`famous mark 3M.
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`
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`Suspension of this proceeding is clearly appropriate under these circumstances. As stated
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`in TBMP § 510.02(a), “Ordinarily, the Board will suspend proceedings in the case before it if the
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`final determination of the other proceeding will have a bearing on the issues before the Board.”
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`This is because, “[t]o the extent that a civil action in a federal district court involves issues in
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`common with those in a proceeding before the Board, the decision of the federal district court is
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`binding upon the Board, while the decision of the Board is not binding upon the court.” Id.
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`Here, there is no question that the Civil Action will have a bearing on the issues in this
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`opposition proceeding, and my indeed be dispositive of this proceeding.
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`For these reasons, this proceeding should be suspended pending termination of the Civil
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`Action.
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`CONCLUSION
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`Because there is a civil action pending between these parties that is potentially dispositive
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`of (or at the very least will have a bearing on) this consolidated opposition, the proceeding should
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`be suspended until termination of the Civil Action.
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`Respectfully submitted,
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`
`
`
`
`
`
` /William G. Barber/
`William G. Barber
`Wendy C. Larson
`PIRKEY BARBER PLLC
`600 Congress Avenue, Suite 2120
`Austin, Texas 78701
`(512) 322-5200
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`ATTORNEYS FOR OPPOSER
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`Date: February 11, 2015
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`CERTIFICATE OF SERVICE
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`
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`This is to certify that a copy of the foregoing OPPOSER’S MOTION TO SUSPEND was
`served by first class mail on February 11, 2015 on the Applicant at the address listed below:
`
`
`Miguel Gonzalez
`3m’s Automotive
`2023 Del Prado Blvd. South, Suite B
`Cape Coral, FL 33990
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`/William G. Barber/
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`EXHIBIT A
`EXHIBIT A
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`
`
`

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`UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF FLORIDA
`
`3315 FEB I
`
`I
`
`AM I J: 21
`
`M1oui£'ais1'i€fi:
`TA HPA. F L 0;;
`
`3M COMPANY,
`
`Plaintiff,
`
`vs.
`
`3M’S AUTOMOTIVE INC.,
`
`Defendant.
`
`Case No. “O1/‘ 9»Q3"7"L;é
`
`L“)
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT
`
`AND DILUTION, AND UNFAIR COMPETITION
`
`NATURE OF ACTION AND JURISDICTION
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`1.
`
`This is an action for trademark infringement, unfair competition, and
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`dilution under the trademark act of 1946, as amended, 15 U.S.C. § 1051 et seq.
`
`(“Lanham Act”); trademark dilution under Florida Statutes § 495.151; and trademark
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`infringement under Florida common law.
`
`2.
`
`This Court has jurisdiction over the subject matter of this action pursuant
`
`to Section 39 of the Lanham Act, 15 U.S.C. § 1121; pursuant to chapter 85 of the
`
`judiciary and judicial procedure code, 28 U.S.C. §§ 1331 and 1338; and has supplemental
`
`jurisdiction over the state law claims under 28 U.S.C. § 1367(a).
`
`PARTIES
`
`3.
`
`3M Company (“3M”) is a Delaware corporation having its principal place
`
`of business at 3M Center, 2501 Hudson Road, St. Paul, Minnesota 55144.
`
`

`
`4.
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`Defendant 3M’S AUTOMOTIVE INC.
`
`is a Florida corporation with a
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`principal place of business at 2023 Del Prado Boulevard South, Suite B, Cape Coral,
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`Florida 33990.
`
`A.
`
`3M’S BUSINESS AND TRADEMARKS
`
`FACTS
`
`5.
`
`3M owns the mark and trade name 3M (the “3M Mark”).
`
`3M
`
`commenced use of the 3M Mark in commerce which may lawfully be regulated by
`
`Congress over a century ago. Since that time, 3M has continuously used the 3M Mark in
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`commerce.
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`6.
`
`3M is one of the world’s most diversified companies. Over the years, 3M
`
`has expanded its use of the 3M Mark and presently offers thousands of products and
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`services in a wide variety of fields under the 3M Mark.
`
`7.
`
`3M offers a vast array of products for the automotive sector, and has a
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`long history in the automotive and automotive aftermarket and repair industries.
`
`3M
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`supplies the automotive and automotive aftermarket and repair industries with thousands
`
`of different products and services, and offers its products and services throughout the
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`U.S. and globally.
`
`8.
`
`3M promotes its automotive-related products and services in a number of
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`ways,
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`including
`
`on
`
`its
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`websites
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`3Mcollision.com;
`
`3Mauto.com,
`
`and
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`solutions.3m.conv’_w1gsfportalfen USB MfA'uton1otive. The 3M Mark appears prominently
`
`on these websites and in connection with such automotive-related products and services.
`
`

`
`9.
`
`3M is also involved in the automotive industry through its affiliation with the
`
`National Association for Stock Car Racing, Inc. (“NASCAR”). For many years, 3M has
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`been the sponsor of the No. 16 car in the NASCAR racing circuit. The 3M Mark has been
`
`displayed prominently on the No. 16 car and used extensively in connection with 3M’s
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`NASCAR-related activities and promotions.
`
`10.
`
`3M operates manufacturing plants and automotive centers around the
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`world.
`
`11.
`
`Over the years, 3M has operated through a large number of other names
`
`and entities bearing the 3M Mark in connection with a wide variety of goods, services,
`
`and markets, including “3M Automotive Industry Center.”
`
`12.
`
`For many years, 3M has displayed the 3M Mark as a part of a logo design.
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`3M’s current logo design, adopted in 1978, consists of “3M” in block Helvetica letters (as
`
`shown below). This logo is used in connection with almost every 3M product and
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`service, and is displayed prominently on 3M’s website at www.3M.com.
`
`13.
`
`3M has developed an enormous amount of goodwill in its 3M Mark and
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`has established an excellent business reputation. The 3M Mark is extremely well-known
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`and respected by consumers. The 3M Mark represents products indicative of 3M’s
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`commitment to providing high-quality, innovative products and services to consumers.
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`14.
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`The 3M Mark is inherently distinctive and serves to identify and indicate
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`the source of 3M’s products and services to the consuming public.
`
`

`
`15.
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`As a result of the long use and promotion of the 3M Mark by 3M, the 3M
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`Mark has become distinctive to designate 3M, to distinguish 3M and its products and
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`services from those of other businesses, and to distinguish the source or origin of 3M’s
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`products and services. As a result of these efforts by 3M, the consuming public in
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`Florida and throughout the United States widely recognizes and associates the 3M Mark
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`with 3M and its diverse offering of products and services.
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`16.
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`The 3M Mark is famous throughout
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`the United States,
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`including in
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`Florida, and is highly distinctive.
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`17.
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`The 3M Mark became famous throughout the United States, including in
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`Florida, long before Defendant commenced use of its mark.
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`18.
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`The 3M Mark is widely recognized by the general consuming public of the
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`United States as a designation of 3M’s goods and services.
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`19.
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`The 3M Mark is well-known to those in the automotive and automotive
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`aftermarket and repair industries.
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`20.
`
`As a result of 3M’s long use and promotion of the 3M Mark in Florida and
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`elsewhere, 3M has acquired valuable common law rights in the 3M Mark.
`
`21.
`
`In accordance with federal law, 3M has registered the 3M Mark on the
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`Principal Register of the United States Patent and Trademark Office (“USPTO”). 3M
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`now owns hundreds of U.S. registrations for the 3M mark for numerous products and
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`services. See, e.g., U.S. Reg. Nos. 1214547, 1270473, 1363965, 1410228, 1599607,
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`1729347, 1959106, 1959107, 1959108, 1959109, 2072005, 2103462. These registrations
`
`

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`are valid and subsisting, and all are incontestable pursuant to 15 U.S.C. § 1065. True and
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`correct copies of these registrations are attached hereto as Exhibit A.
`
`B.
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`DEFENDANT’S INFRINGING ACTIVITIES
`
`22.
`
`Upon information and belief, Defendant provides services in the automotive
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`repair industry. For example, on a website operated by Defendant or an affiliated person
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`or entity at w.3'msautomotive.comr’I-Iome.1;l1p, Defendant states that “For all
`
`your automotive service needs,
`
`trust 3M’s Automotive, where your satisfaction is
`
`guaranteed.” This website enables consumers to View a list of services and promotional
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`deals offered by Defendant. Print-outs of portions of this website are attached hereto as
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`Exhibit B.
`
`23.
`
`Defendant promotes its
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`services under
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`the name and mark “3M’s
`
`Automotive” (the “3M’S AUTOMOTIVE Mark”). The 3M’S AUTOMOTIVE Mark,
`
`which is sometimes presented in a typestyle similar to that used by 3M with its 3M logo,
`
`is prominently displayed at least on Defendant’s signage and website (as shown below).
`
`--
`
`,.';';...;,;'t1:r'n“I'l-M"""'ir‘
`
`.;-r-r-"I —:~
`
`

`
`24.
`
`Defendant filed an application at the USPTO to register the mark 3M’S
`
`AUTOMOTIVE INC. and Design (shown directly above) for “automobile repair and
`
`maintenance” in class 37 (Serial No. 85893542) (“Defendant’s Application”). 3M has
`
`timely opposed Defendant’s Application.
`
`25.
`
`Defendant is using the 3M’S AUTOMOTIVE Mark in commerce.
`
`26.
`
`Defendant is not affiliated with or sponsored by 3M and has not been
`
`authorized by 3M to use the 3M Mark, or any confusingly similar mark.
`
`27.
`
`3M has notified Defendant of its trademark rights, and has attempted to
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`resolve this dispute with Defendant prior to filing this lawsuit. Defendant has refused
`
`3M’s attempts to resolve this matter amicably, and has continued using the 3M’S
`
`AUTOMOTIVE Mark.
`
`C.
`
`EFFECT OF DEFENDANT’S ACTIVITIES
`
`28.
`
`Defendant’s unauthorized use of the 3M’S AUTOMOTIVE Mark is likely
`
`to cause confusion, to cause mistake, and/or to deceive customers and potential customers
`
`of the parties, at least as to some affiliation, connection or association of Defendant with
`
`3M, or as to the origin, sponsorship, or approval of Defendant’s products and services by
`
`3M.
`
`29.
`
`Defendant’s unauthorized use of the 3M’S AUTOMOTIVE Mark falsely
`
`designates the origin of its products, and falsely and misleadingly describes and
`
`represents facts with respect to Defendant and its products and services.
`
`30.
`
`Defendant’s unauthorized use of the 3M’S AUTOMOTIVE Mark unfairly
`
`enables Defendant to trade on and receive the benefit of goodwill built up at great labor
`
`

`
`and expense by 3M over many years, and to gain acceptance for its products and services
`
`not solely on its own merits, but on the reputation and goodwill of 3M, its 3M Mark, and
`
`its products and services.
`
`31.
`
`Defendant’s unauthorized use of the 3M’S AUTOMOTIVE Mark is likely
`
`to cause dilution by blurring and by tarnishment of 3M’s famous 3M Mark.
`
`32.
`
`Defendant’s unauthorized use of the 3M’S AUTOMOTIVE Mark unjustly
`
`enriches Defendant at 3M’s expense. Defendant has been and continues to be unjustly
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`enriched by obtaining a benefit from 3M by taking undue advantage of 3M and its
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`goodwill. Specifically, Defendant has taken undue advantage of 3M by trading on and
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`profiting from the goodwill in the 3M Mark developed and owned by 3M, resulting in
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`Defendant wrongfully obtaining a monetary and reputational benefit for its own business
`
`and services.
`
`33.
`
`Defendant’s unauthorized use of the 3M’S AUTOMOTIVE Mark removes
`
`from 3M the ability to control the nature and quality of products and services associated
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`with the 3M Mark, and places the valuable reputation and goodwill of 3M in the hands of
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`Defendant, over whom 3M has no control.
`
`34.
`
`Unless these acts of Defendant are restrained by this Court, they will
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`continue, and they will continue to cause irreparable injury to 3M and to the public for
`
`which there is no adequate remedy at law.
`
`COUNT I: FEDERAL TRADEMARK INFRINGEMENT
`
`35.
`
`3M repeats the allegations above as if fully set forth herein.
`
`

`
`36.
`
`The acts of Defendant complained of herein constitute infringement of the
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`federally registered 3M Mark in violation of 15 U.S.C. § 1114(1).
`
`COUNT II: FEDERAL UNFAIR COMPETITION
`
`37.
`
`3M repeats the allegations above as if fully set forth herein.
`
`38.
`
`The acts of Defendant complained of herein constitute unfair competition
`
`in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1l25(a).
`
`COUNT III: FEDERAL DILUTION
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`39.
`
`3M repeats the allegations above as if fully set forth herein.
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`40.
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`Defendant’s use in commerce of the 3M’S AUTOMOTIVE Mark is likely
`
`to cause dilution by blurring and/or tamishment of the famous 3M Mark in violation of
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`15 U.S.C. § ll25(c).
`
`COUNT IV: DILUTION UNDER FLORIDA LAW
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`41.
`
`3M repeats the allegations above as if fully set forth herein.
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`42.
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`The acts of Defendant complained of herein constitute dilution of the 3M
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`Mark in violation of Florida Statutes § 495.151.
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`COUNT V: COMMON LAW TRADEMARK INFRINGEMENT
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`43.
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`3M repeats the allegations above as if fiilly set forth herein.
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`44.
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`The acts of Defendant complained of herein constitute trademark and trade
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`name infiingement in Violation of the common law of the State of Florida.
`
`

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`COUNT VI: REFUSAL OF REGISTRATION
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`3M repeats the allegations above as if fully set forth herein.
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`This Court has the power under 15 U.S.C. § 1119 and 28 U.S.C. § 2201 to
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`47.
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`48.
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`determine Defendant’s right
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`to registration of the 3M’S AUTOMOTIVE INC. and
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`Design mark (Serial No. 85893542).
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`49.
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`The 3M’S AUTOMOTIVE INC. and Design mark,
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`the subject of
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`Defendant’s Application, so resembles 3M’s 3M Mark as to be likely to cause confilsion,
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`or to cause mistake, or to deceive. Registration should therefore be refused under 15
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`U.S.C. § 1052(d).
`
`50.
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`The 3M’S AUTOMOTIVE INC. and Design mark would be likely to
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`cause dilution by blurring of 3M’s 3M Mark under Section 43(a) of the Lanham Act.
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`Registration should therefore be refused under 15 U.S.C. § 1052, last paragraph.
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`DEMAND FOR RELIEF
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`WHEREFORE, 3M demands that:
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`(a)
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`Defendant,
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`its agents, servants, employees, and attorneys, and other
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`persons who are in active concert or participation with any of them, be permanently
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`enjoined and restrained from using the marks, names and/or domain names “3M,” “3M’S
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`Automotive,” “3M’S AUTOMOTIVE INC.,” 3msautomotive.com, and any other mark,
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`trade name, fictitious business name, company name, domain name, or designation that is
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`confusingly similar to or likely to cause dilution of the 3M Mark, and from any attempt to
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`retain any part of the goodwill misappropriated from 3M;
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`(b)
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`Defendant be ordered to file with this Court and to serve upon 3M, within
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`thirty (30) days after the entry and service on Defendant of an injunction, a report in
`
`

`
`writing and under oath setting forth in detail the manner and form in which Defendant
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`has complied with the injunction; and
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`(c)
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`The Court determine that Defendant is not entitled to registration of the
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`3M’S AUTOMOTIVE INC. and Design, mark and certify an order to the Director of the
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`USPTO pursuant to 15 U.S.C. § 1119 refusing registration of Application Serial No.
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`85893542 with prejudice, who shall make appropriate entry upon the records of the
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`USPTO and shall be controlled thereby.
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`DATED: February 11, 2015
`
`Respectfully submitted,
`
`By:
`
`10
`
`
`
`-
`'
`‘yr.-Q
`Danielle S. Kcm '_
`l<emQd§&)gtlaw.coI11
`GREENBERG TRAURIG, P.A.
`
`625 East Twiggs Street, Suite 100
`Tampa, FL 33602
`Telephone: (813) 318-5700
`Facsimile:
`(813)318-5900
`
`-and-
`
`William G. Barber
`
`Wendy C. Larson
`Pirkey Barber PLLC
`600 Congress Avenue, Suite 2120
`Austin, Texas 78701
`
`(512) 322-5200
`tmcentral
`irke barber.com
`
`ATTORNEYS FOR PLAINTIFF
`
`3M COMPANY

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