throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA624998
`ESTTA Tracking number:
`09/03/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91217551
`Defendant
`J.R. Mats, Inc.
`Plaintiff
`Internet Shops, Inc.
`No
`
`Proceeding.
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, J.R.
`Mats, Inc. hereby requests suspension of this proceeding pending a final determination of the civil action.
`Trademark Rule 2.117.
`J.R. Mats, Inc. has secured the express consent of all other parties to this proceeding for the suspension and
`resetting of dates requested herein.
`J.R. Mats, Inc. has provided an e-mail address herewith for itself and for the opposing party so that any order
`on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Facsimile or email (by agreement only) on this date.
`Respectfully submitted,
`/John P. Sullivan/
`John P. Sullivan
`trademarks@vklaw.com,jsullivan@vklaw.com,acostick@vklaw.com
`rms@mcconnellsneed.com,jbm@mcconnellsneed.com
`09/03/2014
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
`
`J.R. MATS, INC.
`1519 McDaniel Drive
`
`West Chester, Pennsylvania 19380
`
`Plaintiff,
`
`V.
`
`INTERNETSHOPSINGCOM
`
`d/b/a D.W. QUAIL GOLF
`103 Ashton Farms Drive
`
`Canton, Georgia 30115
`
`Defendant.
`
`
`
`CIVIL ACTION NO.
`
`JURY TRIAL DEMANDED
`
`COMPLAINT
`
`This is an action for false advertising,
`
`trademark infringement, unfair
`
`competition,
`
`false designation of origin, unjust enrichment, and declaratory
`
`judgment that Plaintiff owns the trademark REAL FEEL GOLF MATS.
`
`PARTIES
`
`1.
`
`Plaintiff,
`
`J.R. Mats,
`
`Inc.
`
`is
`
`a Pennsylvania corporation d/b/a
`
`RealFeelGolfMats.com located at 1519 McDaniel Drive, West Chester, Pennsylvania
`
`19380 (hereafter “J .R. Mats” or “Plaintiff’).
`
`2.
`
`Upon information and belief, Defendant InternetShopslnc.com is a
`
`Georgia company d/b/a D.W. Quail Golf (hereafter “D.W. Quail” or “Defendant”).
`
`3082875-1
`
`

`
`3.
`
`Upon information and belief, Defendant has conducted and continues
`
`to conduct business within the Commonwealth of Pennsylvania, including within
`
`the Eastern District of Pennsylvania (the “District”).
`
`JURISDICTION AND VENUE
`
`4.
`
`This action arises under the trademark laws of the United States, 15
`
`U.S.C. § 1051 _e_t _s_e__q_. It also arises under principles of state common and statutory
`
`law. Federal question jurisdiction is conferred pursuant to 15 U.S.C. § 1121 and 28
`
`U.S.C. §§ 1381 and 1388.
`
`5.
`
`This Court has supplemental jurisdiction over the claims brought
`
`under state statutory and common law pursuant to 28 U.S.C. §§ 1388(b) and 1367.
`
`6.
`
`This Court has personal
`
`jurisdiction over Defendant because
`
`Defendant, inter alia, transacts business in the Commonwealth of Pennsylvania,
`
`engages in a persistent course of conduct in the Commonwealth of Pennsylvania,
`
`and expects, or reasonably should expect, its acts to have legal consequences in the
`
`Commonwealth of Pennsylvania.
`
`'7.
`
`Venue is proper in the District pursuant to 28 U.S.C. § 1391 because a
`
`substantial part of the acts and omissions giving rise to these claims occurred in the
`
`District, and Defendant expects, or reasonably should expect, its acts and omissions
`
`to have legal consequences in the District.
`
`BACKGROUND
`
`8.
`
`J .R. Mats has been a leading designer and manufacturer of high-end
`
`commercial golf range mats for more than ten (10) years, offering golf practice mats
`
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`

`
`and practice mat systems that
`
`feature proprietary fiber blends and tufting
`
`technology.
`
`9.
`
`J .R. Mats has used the “REAL FEEL GOLF MATS” trademark, trade
`
`name, and service mark (the “REAL FEEL GOLF MATS Mark”) since at least as
`
`early as 2006, doing business under the REAL FEEL GOLF MATS Mark and using
`
`the REAL FEEL GOLF MATS Mark in connection with its golf mat products.
`
`10.
`
`Since at least as early as 2006, JR. Mats has been labeling and/or
`
`imprinting its golf mat products with the REAL FEEL GOLF MATS Mark, whereby
`
`consumers have widely come to associate the REAL FEEL GOLF MATS Mark with
`
`J .R. Mats and the high quality golf mat products produced by J .R. Mats. Copies of
`
`photographs showing the REAL FEEL GOLF MATS Mark as
`
`featured on
`
`packaging, labels and imprinted on J .R. Mats’ golf mat products are attached hereto
`
`as Exhibit A.
`
`11.
`
`J .R. Mats has conducted extensive advertising, marketing and
`
`promotion of its REAL FEEL GOLF MATS Mark throughout the United States.
`
`12.
`
`Attached hereto as Exhibit B are pages from J .R. Mats’ Website
`
`“REALFEELGOLFMATSCOM” (the “REAL FEEL Website”). As seen in the
`
`attached Exhibits A and B, J .R. Mats promotes its goods and services prominently
`
`displaying and emphasizing the REAL FEEL GOLF MATS Mark.
`
`13.
`
`J .R. Mats’ use of the REAL FEEL GOLF MATS Mark in connection
`
`with its goods and services is unique to J .R. Mats, and has no recognized meaning
`
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`

`
`in the golf industry except as designating J .R. Mats as the source of its goods and
`
`services.
`
`14.
`
`J .R. Mats has acquired common law trademark rights from actual use
`
`of the mark in U.S. commerce for nearly ten (10) years.
`
`15.
`
`J .R. Mats
`
`is
`
`the
`
`owner
`
`of
`
`the
`
`domain
`
`name
`
`“REALFEELGOLFMATSCOM” (“REAL FEEL Website”). J .R. Mats registered the
`
`domain name for the REAL FEEL Website in 2005.
`
`16.
`
`J .R. Mats has acquired a valuable goodwill symbolized by and
`
`embodied in its REAL FEEL GOLF MATS Mark as used by J .R. Mats and widely
`
`recognized by consumers in the golf industry.
`
`17.
`
`J .R. Mats’ REAL FEEL GOLF MATS Mark has become widely
`
`renowned and obtained fame
`
`in the
`
`golf
`
`industry and throughout
`
`the
`
`Commonwealth of Pennsylvania as being synonymous with high quality golf
`
`practice mats.
`
`DEFENDANT’S INFRINGEMENT
`
`18.
`
`Notwithstanding J .R. Mats’ well-known and common law rights in its
`
`REAL FEEL GOLF MATS Mark, and with at least constructive notice, Defendant
`
`has intentionally adopted and used the identical mark REAL FEEL GOLF MATS,
`
`as well as confusingly Variations thereof, in conjunction with its golf mat products
`
`and related advertising in the United.States.
`
`19.
`
`Defendant is now identifying its golf mat products in advertisements
`
`and on its website as "Real Feel Country Club WoodTee Golf Mats” and “Real Feel
`
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`

`
`Golf Mats” (collectively the ““Real Feel Golf Mats” names”). Attached as Exhibit C
`
`is a true and correct screenshot recently captured from Defendant’s website,
`
`wwvv.dwguailgolf.com (“Defendant’s Website”), which shows Defendant’s use of the
`
`“Real Feel Golf Mats” names in connection with golf mats advertised and offered for
`
`sale thereon.
`
`20.
`
`Upon information and belief, Defendant is the current registrant of the
`
`domain www.dwguailgolf.com, and has control over or is otherwise responsible for
`
`content posted on Defendant’s Website.
`
`21.
`
`Defendant is also actively advertising its golf mats through the Google
`
`AdWords program by using the name “Reel Feel Golf Mats”, and similar variations
`
`thereof. As a result of this advertising, links to Defendant’s website are appearing
`
`next to links for J .R. Mats’ REAL FEEL‘ Website in Google search results when
`
`Internet users search for the term “Real Feel Golf Mats”. Attached as Exhibit D is a
`
`true and correct copy of a screenshot showing results obtained when running a
`
`Google search for the name “Real Feel Golf Mats”.
`
`22.
`
`J .R. Mats began using the REAL FEEL GOLF MATS Mark in
`
`commerce in the United States in connection with golf mat products long before
`
`Defendant ever began using the “Real Feel Golf Mats” mark, or similar variations
`
`thereof.
`
`23.
`
`Defendant’s golf mat products are offered in direct competition to J .R.
`
`Mats’ golf mat products.
`
`3082875-1
`
`

`
`24.
`
`Defendant’s recent introduction of the “Real Feel Golf Mats” names, or
`
`similar variations thereof, for golf mat products is a willful attempt to palm off J .R.
`
`Mats’ good will in its REAL FEEL GOLF MATS Mark, and represents a blatant
`
`attempt to create consumer confusion.
`
`25.
`
`Defendant’s usage of the “Real Feel Golf Mats” mark, or similar
`
`variations thereof,
`
`for golf mat products has caused J .R. Mats grievous and
`
`irreparable injury.
`
`26.
`
`As a result of Defendant’s acts complained of herein, members of the
`
`public and the trade are likely to believe that Defendant’s golf mat products
`
`originate from, or are offered in affiliation with, or sponsored by, or under license
`
`from or rendered with the approval of J .R. Mats.
`
`2'7.
`
`Defendant’s use of its infringing trademark in conjunction with its golf
`
`mat products represents to J .R. Mats’ clientele and potential clientele, as well as to
`
`the trade and the public, that Defendant operates under the sponsorship or in
`
`affiliation with, with a license from or with the approval of J .R. Mats, when in fact
`
`it does not.
`
`28.
`
`Upon information and belief, Defendant benefitted from the
`
`infringement of J .R. Mats’ REAL FEEL GOLF MATS Mark through the use of the
`
`“Real Feel Golf Mats” names, and similar variations thereof, as well as from the
`
`other acts and activities complained of herein.
`
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`

`
`
`
`29.
`
`By the acts and activities complained of herein, Defendant has passed
`
`off its goods as rendered by or associated with or connected with or sponsored by or
`
`under license from or with the approval of J .R. Mats.
`
`30.
`
`Defendant’s acts complained of herein are likely to cause and/or have
`
`caused confusion, subliminal confusion, mistake or deception among the trade or
`
`public.
`
`31.
`
`Defendant’s infringement complained herein has been willful and
`
`deliberate and represents an attempt to appropriate to Defendant the goodwill that
`
`J .R. Mats has earned for its trademark and goods in issue to give to Defendant a
`
`recognition and advantage in the marketplace which Defendant would not
`
`otherwise possess.
`
`32.
`
`Defendant’s adoption and use of the infringing “Real Feel Golf Mats”
`
`names, or similar variations thereof, in connection with golf mat products, was and
`
`is:
`
`a.
`
`With full knowledge of J .R. Mats’ use of its REAL FEEL GOLF
`
`MATS Mark for golf mat products, and
`
`b.
`
`Was and is with the intent and for the purpose, and has had the
`
`effect, of wrongfully infringing upon J .R. Mats’ REAL FEEL
`
`GOLF MATS Mark.
`
`83.
`
`By trading upon the goodwill of J .R. Mats’ REAL FEEL GOLF MATS
`
`Mark, Defendant has obtained for its goods a salability which they would not have
`
`otherwise had.
`
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`

`
`DEFENDANT’S FALSE ADVERTISING
`
`34.
`
`Defendant’s Website describes golf mat product offered under the “Real
`
`Feel Golf Mats” names as follows:
`
`
`
`Dura-Pro" Real Feel Country Club WoodTee"‘ Goif Mats Features & Facts
`
`. use Real Tees
`
`. Approx. 1%“ Thick
`. 130% MADE IN THE USA NYLON
`
`. 15232 Face weight
`. 1:) Year UV Protection
`
`Out-|*7?u,G¢Eb1a!t
`
`_
`0 Industrial Bonded ~ Not Glued
`
`Wll Nct Stain Clubs
`I
`.
`. Indoor ,r' Outdoor
`
`7?‘
`
`' Rea‘ Fee‘ Tecmmogy
`' Tme Feel 5°” Ma“
`
`' “SE A-'- Cl-UB5
`
`. 30% Denser than Smlar Mats
`
`L
`
`‘ i‘
`
`” i
`
`35.
`
`Defendant’s Website expressly states that Defendant’s golf mat has a
`
`one hundred and sixty~two (162) ounce face weight, as noted above and shown in
`
`Exhibit C attached hereto.
`
`36.
`
`Tests recently conducted on Defendant’s golf mat by an independent
`
`laboratory, Commercial Testing Company, determined that Defendant’s mat only
`
`had a face weight of one hundred and two point four (102.4) ounces. Attached
`
`hereto as Exhibit E is a true and correct copy of Commercial Testing Company’s
`
`laboratory report regarding the face weight of Defendant’s golf mat.
`
`37.
`
`Defendant’s Website expressly states that Defendant’s golf mat
`
`is
`
`approximately 1% inches thick, as noted above and shown in Exhibit C attached
`
`hereto.
`
`38.
`
`Tests recently conducted on Defendant’s golf mat by an independent
`
`laboratory, Commercial Testing Company, determined that height of Defendant’s
`
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`.8.
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`

`
`mat is only 0.98 inches thick. Attached hereto as Exhibit F is a true and correct
`
`copy of Commercial Testing Company’s laboratory report regarding the thickness of
`
`Defendant’s golf mat.
`
`89.
`
`Defendant’s website expressly states that Defendant’s golf mat is “30%
`
`Denser than Similar Mats.”
`
`40.
`
`Upon information and belief, Defendant’s claim that its golf mats are
`
`30% denser than similar mats is not based on any independent testing.
`
`41.
`
`Defendant’s advertising claims regarding the face weight, denseness,
`
`and thickness of its golf mats offered under the “Real Feel Golf Mats” names are
`
`false and/or misleading, which has deceived consumers and directed sales away
`
`from competitors, such as J .R. Mats, in the golf mat industry.
`
`42.
`
`J .R. Mats has no control over the quality of goods which are sold by
`
`Defendant, with the result that J.R. Mats’ valuable goodwill with respect to its
`
`trademark may be irreparably damaged by the acts of Defendant.
`
`48.
`
`All such conduct by Defendant was and continues to be in bad faith,
`
`willful, deliberate and in knowing violation of the law.
`
`44.
`
`The activities of Defendant complained of herein have caused, and
`
`unless restrained and enjoined by the Court will continue to cause, irreparable
`
`harm, damage and injury.
`
`45.
`
`Upon information and belief, Defendant will continue its tortious acts,
`
`including its infringement,
`
`false advertising, and unfair competition, unless
`
`restrained by this Court.
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`3082875-1
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`

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`FALSE ADVERTISING UNDER THE LANHAM ACT
`
`COUNT I
`
`46.
`
`The allegations of paragraphs 1 through 45 are incorporated herein by
`
`reference as though fully set forth herein.
`
`47.
`
`J .R. Mats alleges that Defendant and its agents, distributors, or other
`
`persons or entities related to or doing business with Defendant, made false and/or
`
`misleading representations in interstate commerce regarding their goods.
`
`48.
`
`Defendant’s representations that its “Real Feel Golf Mats” product has
`
`a face weight of one hundred and siXty—tWo (16.2) ounces is false and misleading.
`
`49.
`
`Defendant’s representations that its “Real Feel Golf Mats” product is
`
`
`
`approximately 1% inches thick is false and misleading.
`
`50.
`
`Upon information and belief, Defendant’s representations that its golf
`
`mats are 80% denser than similar mats is false and misleading.
`
`51.
`
`Defendant’s aforesaid acts are meant to mislead customers and to
`
`usurp legitimate sales from J.R. Mats and other competitors in the golf mat
`
`industry.
`
`52.
`
`Defendant’s aforesaid acts have caused and, unless restrained by this
`
`Court, will continue to cause J.R. Mats and the public to suffer great and
`
`irreparable damage and injury through false and/or misleading advertising.
`
`58.
`
`Defendant’s aforesaid acts are willful and deliberate.
`
`54.
`
`Such acts constitute false and/or misleading advertising in violation of
`
`Section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a)(1)(A) and (B).
`
`3082875-1
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`

`
`STATUTORY TRADEMARK INFRINGEMENT
`
`COUNT II
`
`55.
`
`The allegations of paragraphs 1 through 54 are incorporated herein by
`
`reference as though fully set forth herein.
`
`56.
`
`Defendant’s use of its infringing “Real Feel Golf Mats” mark,
`
`in
`
`addition to its use of similar variations thereof, in connection with Defendant’s golf
`
`mat products, as Well as in connection with Defendant’s promotion, offering and
`
`sale of the same, is an infringement of J .R. Mats’ REAL FEEL GOLF MATS Mark
`
`under the trademark laws of the United States, Lanham Act § 48(a), 15. U.S.C. §
`
`1125(a).
`
`57.
`
`J .R. Mats has no control over the quality of goods which are provided,
`
`promoted, advertised and sold by Defendant, with the result that J .R. Mats’
`
`valuable goodwill with respect to its trademark may be irreparably injured by the
`
`acts of Defendant complained of herein.
`
`58.
`
`As a result of said trademark infringement, J.R. Mats has suffered and
`
`continues to suffer irreparable injury, for which it has no adequate remedy at law.
`
`COUNT III
`
`FEDERAL UNFAIR COMPETITION AND
`
`FALSE DESIGNATION OF ORIGIN
`
`59.
`
`The allegations of paragraphs 1 through 58 are incorporated herein by
`
`reference as though fully set forth herein.
`
`60.
`
`This cause of action arises under the trademark laws of the United
`
`States, Lanham Act § 43(a), 15. U.S.C. § 1125(a).
`
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`.11.
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`
`
`61.
`
`Defendant has adopted and is now using a colorable imitation of J .R.
`
`Mats’ REAL FEEL GOLF MATS Mark, for goods which are substantially similar to
`
`those offered by J .R. Mats.
`
`62.
`
`Defendant’s use of a colorable imitation of JR. Mats’ REAL FEEL
`
`GOLF MATS Mark in connection with Defendant’s golf mat products have caused
`
`and will continue to cause customers, potential customers and past customers to
`
`mistakenly attribute the properties and reputation of J .R. Mats’ golf mat products
`
`to those of the Defendant.
`
`68.
`
`The use by Defendant of its infringing “Real Feel Golf Mats” mark, and
`
`similar Variations thereof, in connection with its golf mat products, and to advertise
`
`and promote Defendant’s golf mat products, constitutes unfair competition, a false
`
`description and representation and a false designation of the origin of Defendant’s
`
`seasoned golf mat products and constitutes unfair competition, all in violation of
`
`Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
`
`64.
`
`As a result of said unfair competition and false designation of origin,
`
`J .R. Mats has suffered and continues to suffer irreparable injury, for which it has no
`
`adequate remedy at law.
`
`COMMON LAW TRADEMARK INFRINGEMENT
`
`COUNT IV
`
`65.
`
`The allegations of paragraphs 1 through 64 are incorporated herein by
`
`reference as though fully set forth herein.
`
`66.
`
`This cause of action arises under the common law.
`
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`-12-
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`
`67. Defendants
`
`aforementioned
`
`conduct
`
`constitutes
`
`common
`
`law
`
`trademark infringement.
`
`68.
`
`As a result of said infringement, J .R. Mats has suffered and continues
`
`to suffer serious and substantial injury, including irreparable injury, for which it
`
`has no remedy at law.
`
`COUNT V
`
`UNFAIR COMPETITION
`
`69.
`
`The allegations of paragraphs 1 through 68 are incorporated herein by
`
`reference as though fully set forth herein.
`
`70.
`
`This cause of action arises under the common law.
`
`71.
`
`Defendant’s aforementioned conduct constitutes unfair competition.
`
`72.
`
`By means and as a result of said unfair competition, J .R. Mats has
`
`suffered and continues
`
`to suffer
`
`serious and substantial
`
`injury,
`
`including
`
`irreparable injury for which it has no adequate remedy at law.
`
`COUNT VI
`
`UNJUST ENRICHMENT
`
`73.
`
`The allegations of paragraphs 1 through '72 are incorporated herein by
`
`reference.
`
`74.
`
`This cause of action arises under the common law.
`
`7 5.
`
`By the acts and activities complained of herein, Defendant has been
`
`unjustly enriched.
`
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`.13.
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`

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`COUNT VII
`
`STATE STATUTORY AND COMMON LAW DILUTION;
`INJURY TO BUSINESS REPUTATION
`
`76.
`
`The allegations of paragraphs 1 through 75 are incorporated herein by
`
`reference.
`
`77.
`
`This cause of action arises under
`
`the common law and the
`
`Pennsylvania state anti-dilution statute, 54 Pa. C.S.A. § 1124.
`
`78.
`
`J .R. Mats’ REAL FEEL GOLF MATS Mark has become and is famous
`
`in the minds of
`
`the relevant
`
`trade and throughout
`
`the Commonwealth of
`
`Pennsylvania.
`
`79.
`
`J .R. Mats’ REAL FEEL GOLF MATS Mark
`
`has
`
`acquired
`
`distinctiveness and fame, through its extensive advertisements and promotional
`
`efforts, and by earning millions in revenue from the sale of golf mat products.
`
`80.
`
`Defendant’s use of the “Real Feel Golf Mats” names began after J .R.
`
`Mats’ REAL FEEL GOLF MATS Mark became widely known.
`
`81.
`
`Defendant, by its wrongful use of J.R. Mats’ REAL FEEL GOLF MATS
`
`Mark, has wrongfully implied an affiliation between J .R. Mats and Defendant.
`
`82.
`
`Defendant’s wrongful use of JR. Mats’ REAL FEEL GOLF MATS
`
`Mark was intentionally designed to trade upon J .R. Mats’ goodwill and business
`
`reputation and to injure and dilute the distinctive quality of J .R. Mats’ REAL FEEL
`
`GOLF MATS Mark in violation of 54 Pa. C.S.A. § 1124.
`
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`- 14.
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`

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`83.
`
`By the acts complained of herein, Defendant has lessened the capacity
`
`of the REAL FEEL GOLF MATS Mark to identify and distinguish J .R. Mats’ golf
`
`mat products.
`
`84.
`
`By the acts complained of herein, Defendant has caused and is likely to
`
`continue to cause dilution of the distinctive quality of the J .R. Mats’ REAL FEEL
`
`GOLF MATS Mark.
`
`85.
`
`By the acts complained of herein, Defendant has caused dilution of the
`
`distinctive quality of the J .R. Mats’ REAL FEEL GOLF MATS Mark by blurring
`
`and/or tarnishment.
`
`86.
`
`By the acts complained of herein, Defendant has caused dilution of the
`
`distinctive quality of J .R. Mats’ REAL FEEL GOLF MATS Mark.
`
`87.
`
`By means and as a result of said dilution, J .R. Mats has suffered and
`
`continues to suffer serious and substantial injury, including irreparable injury for
`
`which J .R. Mats has no adequate remedy at law.
`
`COUNT VIII
`
`DECLARATORY JUDGMENT THAT J .R. MATS OWNS
`
`“REAL FEEL GOLF MATS” TRADEMARK
`
`88.
`
`The allegations of paragraphs 1 through 87 are incorporated herein by
`
`reference.
`
`89.
`
`This is an action for declaratory judgment pursuant to the Federal
`
`Declaratory Judgment Act, Title 28 U.S.C. §§ 2201 and 2202. An actual and
`
`justiciable controversy exists between the parties.
`
`30828754
`
`-15-
`
`

`
`90.
`
`J .R. Mats was the first use mark REAL FEEL GOLF MATS in
`
`interstate commerce.
`
`91.
`
`J .R. Mats has filed an opposition with the Trademark Trial and Appeal
`
`Board against Defendant’s U.S. Trademark Application, Serial No. 85/748,439, for
`
`the mark DURA-PRO REAL FEEL GOLF MATS, in part, on the grounds that
`
`Defendant was not the first to use the mark REAL FEEL GOLF MATS in interstate
`
`commerce, but that J .R. Mats was the first to do so and is the exclusive owner of the
`
`REAL FEEL GOLF MATS Mark.
`
`92.
`
`JR. Mats seeks a declaration that it was to the first to use REEL
`
`FEEL GOLF MATS in in interstate commerce and has been using the REAL FEEL
`
`GOLF MATS Mark in interstate commerce in the United States for a longer period
`
`of time than Defendant has been using the “Real Feel Golf Mats” names in
`
`commerce and for other reasons.
`
`93.
`
`Accordingly, based on such priority, J .R. Mats seeks a declaration that
`
`it is the exclusive owner of the REAL FEEL GOLF MATS Mark in the United
`
`States.
`
`PRAYERS FOR RELIEF
`
`WHEREFORE, J .R. Mats requests that this Court enter judgment:
`
`1.
`
`That Defendant, its agents, officers, sales representatives, servants,
`
`employees, associates, attorneys, successors and assigns, and any and all persons or
`
`entities acting by, through, under or in active concert or in participation with any or
`
`30828754
`
`-15-
`
`

`
`all of them, be enjoined preliminarily and permanently by Order of this Court from
`
`doing, abiding, causing or abetting any of the following:
`
`a. directly or indirectly infringing J .R. Mats’ REAL FEEL GOLF
`
`MATS Mark;
`
`from passing off, inducing or enabling others to sell or pass off any
`
`goods provided by Defendant as originating from Plaintiff, which
`
`are not Plaintiffs goods or are not rendered by or under the control
`
`or supervision of Plaintiff and approved by Plaintiff;
`
`directly or indirectly engaging in any acts or activities calculated to
`
`trade upon and/or dilute and/or tarnish J.R. Mats’ REAL FEEL
`
`GOLF MATS Mark, and/or the reputation or goodwill of J .R. Mats,
`
`or in any manner to compete with J .R. Mats unfairly;
`
`using in the sale, offering for
`
`sale, promotion, advertising,
`
`marketing and/or distribution of its goods or services the mark
`
`“REAL FEEL GOLF MATS”, or any mark which is a variant of,
`
`simulates, imitates,
`
`is substantially similar to, or is confusingly
`
`similar to, J .R. Mats’ REAL FEEL GOLF MATS Mark;
`
`making false or misleading statements and representations
`
`concerning the characteristics of Defendant’s golf mat products
`
`offered for sale and/or sold by Defendant on Defendant’s Website or
`
`through other retail and wholesale channels, including statements
`
`30828754
`
`-17-
`
`

`
`and representations concerning the face weight, denseness, and
`
`thickness of Defendant’s golf mat products;
`
`f.
`
`further violating J .R. Mats’ property rights and goodwill; and
`
`g.
`
`from otherwise competing unfairly with J .R. Mats in any manner
`
`whatsoever.
`
`2.
`
`That J .R. Mats is the rightful and exclusive owner of the REAL FEEL
`
`GOLF MATS trademark, trade name, and service mark.
`
`3.
`
`That Defendant be required to deliver up to J .R. Mats for destruction,
`
`all promotional materials, advertisements, menus, packaging, labeling and other
`
`communications to the public in the possession or under its control bearing thereon
`
`any material or representations that are or may be false or misleading concerning
`
`the source of origin of the services offered by J .R. Mats.
`
`4.
`
`5.
`
`That Defendant be required to cease all false advertising.
`
`That Defendant take all necessary and appropriate steps to recall for
`
`destruction all advertising and other materials,
`
`including but not
`
`limited to
`
`packaging, advertising and promotional materials bearing the “Real Feel Golf Mats”
`
`names, or any variant, colorable imitation, simulation, copy, imitation or counterfeit
`
`of J .R. Mat’s REAL FEEL GOLF MATS Mark, and that Defendant be required to
`
`remove
`
`such infringing marks
`
`from its packaging, promotional materials,
`
`advertisements and other documents, in any media.
`
`6.
`
`That Defendant be required to disseminate appropriate and corrective
`
`advertising and promotional materials throughout the golf industry generally and
`
`3082875-1
`
`

`
`to its consumer base, including but not limited to, on the homepage of Defendant’s
`
`Website (vvww.dwguailgolf.com),
`
`to correct Defendant’s false, misleading and
`
`deceptive representations.
`
`7.
`
`That Defendant be required to notify its customers and the golf
`
`industry generally of the precise face weight, denseness, and thickness of its golf
`
`mat products.
`
`8.
`
`That Defendant be required to notify each and every customer who
`
`purchased golf mats sold under the “Real Feel Golf Mats” names from Defendant’s
`
`Website that
`
`the purchased golf mats were did not possess the face Weight,
`
`denseness, or
`
`thickness claimed on Defendant’s Website, and offering such
`
`customers the opportunity to return the purchased golf mats for a full and complete
`
`refund.
`
`9.
`
`That Defendant
`
`take
`
`all necessary and appropriate
`
`steps
`
`to
`
`immediately remove all references to the “Real Feel Golf Mats” names from
`
`Defendant’s Website and other locations on the Internet, including, but not limited
`
`to, from Google AdWords and any other online advertising channels, as well as
`
`immediately remove all
`
`false and/or misleading advertising claims regarding
`
`Defendant’s golf mat products as complained of herein from same.
`
`10.
`
`That Defendant be required to pay over to J .R. Mats all profits realized
`
`by it from its unlawful acts complained of herein.
`
`30828754
`
`- 19.
`
`

`
`11.
`
`That Defendant be directed to pay over to JR. Mats all damages
`
`suffered by Plaintiff as a result of Defendant’s acts herein complained of, and that
`
`such damages be trebled.
`
`12.
`
`That the award of JR. Mats’ damages and Defendant’s profits be
`
`trebled as a result of Defendant’s willful and deliberate infringement of J .R. Mats’
`
`REAL FEEL GOLF MATS Mark.
`
`13.
`
`That the award of J.R. Mats’ damages and Defendant’s profits be
`
`trebled as a result of Defendant’s false and/or misleading advertising.
`
`14.
`
`That J.R. Mats be awarded punitive damages for the willful and
`
`deliberate acts of false advertising,
`
`infringement, unfair competition and other
`
`unlawful injurious acts of Defendant complained of herein.
`
`15.
`
`That J .R. Mats be awarded its reasonable attorneys’ fees and the cost
`
`of this action in view of Defendant’s false advertising and willful and deliberate
`
`violation of J .R. Mats’ rights.
`
`16. That J .R. Mats be awarded such other relief as this Court deems just and
`proper.
`
`JURY DEMAND
`
`Plaintiff demands trial by a jury on all claims to which it is entitled.
`
`J.R. MATS, INC.
`
`DATE: June 11 2014 VOLPE AND KOE
`
`'
`
`30828754
`
`United Plaza
`
`.20..
`
`
`
`

`
`30 S. 17”‘ Street
`
`Philadelphia, Pa 19103
`
`Attorneys for Plaintiff
`J.R. Mats, Inc.
`
`30828754
`
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`can rot!-Free: (300) 344-2115
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`_C0m
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`“Finally, A Golf Mat that Lets You Swing ‘Down-
`and-Through’ with True Divot Action For Realistic
`Practice — And It Even Takes A Real Tee!”
`
`Ijnprove your galne by practicing on your New Couniry
`Club Elite® Real Feel Golf Mat TM All year long — at home,
`in your own back, garage, shed, or basement.
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`V ND Bounce “"
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`J TakesA Real Tee "'
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`The Real Feel Golf Mat | Practice How You Play
`
`http://www.realfeelgolfmats.com/
`
`Home
`Driving Range Mat Inquiries
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`Sitemap
`Contact
`
`“Finally, A Golf Mat that Lets You Swing ‘Down-and-Through’ with True Divot Action For
`Realistic Practice – And It Even Takes A Real Tee!”
`
`Improve your game by practicing on your New Country Club Elite® Real Feel Golf Mat ™ All year long – at home,
`in your own back, garage, shed, or basement.
`
`1 of 19
`
`6/11/2014 9:54 AM
`
`

`
`The Real Feel Golf Mat | Practice How You Play
`
`http://www.realfeelgolfmats.com/
`
`No Bounce ™
`Takes A Real Tee ™
`Swing Down And Through ™
`True Divot Action ™
`
`“I had Given Up Hope… Until I Saw The Country Club Elite® Golf Mat”
`
`“Dear Mr. McGrath,
`
`It was my pleasure to meet you at this years PGA show. Thank you so much for your help with our custom MEGSA Mats and also
`introducing me to your new Country Club Elite Mats. As you know we run multiple golf academies and have been looking for an
`acceptable synthetic hitting turf option for years. I had given up hope until seeing your product. It provides a true feel with true
`results especially on a “fat-shot”. We plan on installing your product at two of our academies this year with more to come. Best
`wishes for your continued success.
`
`Sincerely,”
`
`Mike Bender
`Mike Bender Golf Academy - Lake Mary, FL
`
`#4 in Golf Digests America’s 50 Greatest Teachers
`PGA Teacher Of The Year
`Top 25 Golf School
`Coach to the pros: Zach Johnson, Seon Hwa, Johnathan Byrd, Robert Damron
`
`
`
`“The Golf Mat Has Surpassed All My Expectations”
`
`Click here for CCE Golf Mat Sizes and Pricing
`
`“A little over a year ago I invested in one of your Golf Mats. The product has surpassed all my expectations and then some. Being
`a retired person affords me the op

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