Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA19421
`
`Filing d'¢‘-1533
`
`11/17/2004
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`92041480
`Plaintiff
`Chemical Specialties
`
`1 Z
`
`Proceeding
`
`Party
`
`7 C
`
`olleen F. Goss
`l Fay, Sharpe, Fagan, Minnich & McKee, LLP
`C
`orrespondence ;
`.
`: 1100 Superior Avenue, Seventh Floor
`Address
`Cleveland, OH 44114-2518
`
`Submission
`Filer's Name
`
`Motion for Suspension of Proceeding
`Bryan A. Schwartz
`
`Date
`Attachments
`
`11/17/2004
`suspend.pdf ( 36 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CHEMICAL SPECIALTIES
`
`MANUFACTURING CORPORATION,
`
`V.
`
`POVIA PAINTS, INC.,
`
`Petitioner,
`
`Registrant.
`
`xys/&/\/\/\./\/\/\./O
`
`CANCELLATION NO. 92041480
`
`MOTION FOR SUSPENSION OF PROCEEDING
`
`Box TTAB —- NO FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`A1‘l11'1g'[O11, VA 22202~35l4
`
`By order of the Board dated March 18, 2004, proceedings in this Partial Cancellation
`
`proceeding were suspended for a period of six months, to and including September 18, 2004. On
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`October 19, 2004, the Trademark Trial and Appeal Board ordered resumption of the proceedings.
`
`Petitioner requests suspension of the proceedings based on the following grounds:
`
`1.
`
`On September 14, 2004, Petitioner Chemical Specialties was served with a federal
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`civil action alleging infringement of the WOOD RX trademark at issue in this cancellation
`
`proceeding. The federal action was filed by Inseco, Inc., the assignee of Registrant’s mark.
`
`Copies of the Complaint and Answer are attached as Exhibits A and B.
`
`2.
`
`Rule 5l0.02(a) of the Trademark Trial and Appeal Board Manual of Procedure
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`(TBMP) and 37 C.F.R. §2.ll7(a) provide: “[w]henever it shall come to the attention of the
`
`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil
`
`{BAS0205.DOC;l}
`
`

`
`action .
`
`.
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`. which may have a bearing on the case, proceedings before the Board may be
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`suspended until termination of the civil action[.]” The federal action concerns, inter alia, the
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`likelihood of confusion between the WOOD RX and Petitioner Chemical Specialties’ own mark.
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`Resolving this issue will require the federal court to determine how Registrant’s mark is used
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`and in what channels of trade. These questions are also fundamental to the instant proceeding,
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`and the district court’s resolution of them will be binding on this tribunal.
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`Accordingly, because the federal civil action has a bearing on, and may be dispositive of,
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`the instant cancellation proceeding, Petitioner requests suspension of this proceeding until
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`termination of the civil action.
`
`Respectfully submitted,
`
`By: /Bryan A. Schwartz/
`RAYMOND RUNDELLI (OH—0030778)
`BRYAN A. SCHWARTZ (CA-135928)
`CALFEE, HALTER & GRISWOLD LLP
`1400 McDonald Investment Center
`
`800 Superior Avenue
`Cleveland, Ohio 44114-2688
`216-622-8200
`
`FAX: 216-241-0816
`
`rrundelli@calfee.com
`bschwartz@ca1fee.co1r1
`
`Attorneys for Petitioner
`
`{BASOZOS DOC;l}
`
`2
`
`

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`CERTIFICATE OF TRANSMISSION
`
`I hereby certify that this Motion for Continued Suspension of Proceedings is being
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`transmitted Via ESTTA on November 17, 2004, by Bryan A. Schwartz.
`
`/Bryan A. Schwartz/
`One of the Attorneys for Petitioner
`
`{BAS0205.DOC;1}
`
`3
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`

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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of this Motion for Continued Suspension of Proceedings
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`was served on November 17, 2004, by first class mail, upon Registrant’s attorneys as follows:
`
`Jennifer Whitelaw
`
`WHITELAW LEGAL GROUP
`
`3838 Tamiami Trail North
`Third Floor
`
`Naples, FL 34103
`j@w11itelawf1nr1.co1n
`
`/Bryan A. Schwartz/
`One of the Attorneys for Petitioner
`
`{BAS0205.DOC;1}
`
`4
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`

`
`EXHIBIT A
`
`

`
`UNITED STATES DISTRICT cc«3Ii'lR'I-€536 23
`MIDDLE DISTRICT OF FLoRID,A
`FORT MYERS DIvISIoII;’g§['giig‘ '?
`
`In,
`’
`
` INSECO, INC,
`
`a Florida corporation,
`
`Plaintiff.
`
`v.
`
`CASE NO‘:
`
`CHEMICAL SPECIALTIES
`MANUFACTURING CORPORATION.
`
`a Maryland corporation,
`
`Defend ant.
`
`COMPLAINT
`
`Iniunctive Relief Sought
`
`Plaintiff, Inseco, Incl (hereinafter "plairItiff"), by and through the undersigned
`
`counsel, hereby files this Complaint against defendant. Chemical Specialties
`
`Manufacturing Corporation (hereinafter "Chemical Specialties"), and alleges as
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`follows:
`
`1.
`
`This Court has original jurisdiction over this action under
`
`28 USC. §>§l33l and l338(a), 15 USC. §>§> 1125, and the principles of pendent
`
`jurisdiction
`
`2.
`
`The matter in controversy exceeds, exclusive of interest and costs, the
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`sum of Seventy Five Thousand Dollars ($75,000.00).
`
`3.
`
`Venue is proper in this judicial district and division pursuant to
`
`28 USC. <§§>l391(a) and l39l(b) in that plaintiff's claim arises in this district and
`
`division
`
`4.
`
`Defendant has committed the acts complained of herein in this
`
`district and throughout the United States
`
`

`
`5.
`
`Inseco, inc. is a corporation organized and existing under the laws of
`
`the State of Florida, having its principal place of business in Florida, and is engaged
`
`in the business of, among other things, the selling of wood treatment, preservation
`
`and restoration products.
`
`6.
`
`Chemical Specialties is a corporation organized and exiting under the
`
`laws of Maryland and having its principle place of business in Maryland, although it
`
`is engaged in business in this District and in the State of Florida.
`
`7.
`
`lnseco, Inc. is a company manufacturing, distributing and otherwise
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`providing to the trade and to the public, paint, finishes, and wood treatments.
`
`8.
`
`Plaintiffs products are recognized for exceeding quality and
`
`remarkable performance in their application.
`
`9.
`
`Plaintiffs name, as well as the brand names and trademarks owned by
`
`plaintiff, are well~known and recognized throughout the country to the relevant
`
`consuming public for plaintiff's products.
`
`10.
`
`Plaintiff's philosophy of providing the highest quality goods has made
`
`it a leader in the paint and wood treatment industry.
`
`1 1.
`
`Plaintiff has enjoyed success in designing, manufacturing, developing,
`
`advertising, and marketing its goods.
`
`12,
`
`Plaintiff is the owner of all right, title, and interest in and to the mark
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`WOODRX , U. 8. Registration No, 2,068,833 (hereinafter the "WOODRX Mark"), which
`
`is used upon wood floors and decking as a preservative and sealant.
`
`13.
`
`By compliance with Section 15 of the Trademark Act, as a matter of
`
`recorded public record, Registration No. 2,068,833, is incontestable.
`
`

`
`14,
`
`Plaintiffs wood treatments sold under the WOODRX Mark (the
`
`"WOODRX Products") outperform the products of plaintiff's competitors in
`
`effectiveness,
`
`15.
`
`The WOODRX Products are sold for and, in fact, are used and are
`
`capable of use on exterior and interior wood flooring and decking,
`
`lo.
`
`Plaintiff's goods have been widely advertised and extensively offered
`
`for sale under the WOODRX Mark throughout the United States and the WOODRX
`
`Mark has become, through widespread and favorable public acceptance and
`
`recognition, an asset of substantial value as a symbol of plaintiff, its quality
`
`products, and its goodwill,
`
`17.
`
`i8,
`
`The WOODRX Products are distributed throughout the United States
`
`Plaintiff enjoys considerable success and an enviable reputation in
`
`the paint and wood treatment industry due in large part to their use of, and rights
`
`in, the WOODRX Mark, as well as the superior quality of the WOODRX Products.
`
`19,
`
`Plaintiff's success has also been the result of great investment and
`
`expenditure by plaintiff to develop and protect its high quality product line As a
`
`result of plaintiffs investment, the WOODRX Mark has become synonymous with
`
`high—quality wood treatments.
`
`20.
`
`Plaintiff is diligent in protecting and enforcing its exclusive rights, as
`
`is consistent with the maintenance of plaintiff's good reputation and brand identity
`
`in plaintiff's product line
`
`21.
`
`The WOODRX Mark has been extensively and continuously advertised
`
`to the public through various modes. By reason of such advertising, as well as the
`
`

`
`quality and performance of the product, the goodwill. reputation and brand identity
`
`in the WOODRX Mark, it paramount and highly valued by plaintiff,
`
`22.
`
`23.
`
`Plaintiff and Defendant are direct competitors,
`
`Defendant is and has been regularly and actively engaged in the
`
`unauthorized, infringing, unlicensed and imitative use of the confusingly similar
`
`trademark Rx FOR WOOD FLOORS (the "Infringing Mark”) for products designed,
`advertised and sold as wood flooring cleaners, preservatives and sealants,
`
`24.
`
`On October 1, 2001, defendant filed for a U. S, trademark registration
`
`for the Mark Rx FOR WOOD FLOORS, Serial No. 76/318,619, for wood floor cleaner
`
`in Class 3.
`
`25,
`
`On lune 28, 2002, the Patent and Trademark Office issued a final
`
`refusal to register Rx FOR WOOD FLOORS under Section 2(d) based on a likelihood
`
`of confusion with plaintiff's WOODRX Mark, Reg, No, 2,068,833,
`
`26,
`
`Registration No 2,068,833 obtained by the plaintiff constitutes a
`
`pl'll’Vl0l facie right to use the Mark WOODRX for the goods recited in the registration.
`
`27,
`
`The Defendant has advertised, and continues, despite objection from
`
`the plaintiff, to advertise and sell a variety of products under the name of Rx for
`
`Wood Floors, These products are sold throughout the United States, in Florida, in
`
`this District, and over the internet and are sold as wood flooring cleaners,
`
`preservatives and sealers
`
`28
`
`The advertising has been used by the defendant and offered to the
`
`public utilizing this district as a forum for defendant's illegal activities with
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`knowledge of the plaintiffs use of the WOODRX Mark in commerce on similar
`
`products.
`
`

`
`29,
`
`Defendant has engaged in the transaction of business and the
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`commission of tortious acts in Florida and is subject to the jurisdiction of this Court
`
`pursuant to Florida Statutes <§>48,193 et seq., and Rule 4 of the Federal Rules of Civil
`
`Procedure.
`
`30.
`
`By publishing, utilizing, and distributing its advertisements and
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`selling Rx FOR WOOD FLOORS products, defendant deliberately created the
`
`likelihood of confusion, or caused mistake as between plaintiff's WOODRX products
`
`and defendant's Rx FOR WOOD FLOORS products.
`
`31.
`
`Defendant's advertising and sale of Rx FOR WOOD FLOORS products
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`have and will continue to damage and dilute the goodwill plaintiff has developed in
`
`connection with offering its legitimate authorized WOODRX Products
`
`32,
`
`Defendant is offering to the public products for cleaning, preserving
`
`and sealing wood floors under the infringing Mark.
`
`33.
`
`Defendants offering of products to clean, preserve or seal wood
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`flooring under the infringing Mark is, and will be, without permission or authority of
`
`Plaintiff and without any legitimate license to the infringing Mark.
`
`34.
`
`The Infringing Mark has been used by the defendant and offered to
`
`the public utilizing this District as a forum for its infringing activities with
`
`knowledge of the source of the Infringing Mark and of the fact that the infringing
`
`Mark is not the genuine authorized product of defendant.
`
`35.
`
`By using the infringing Mark, defendant has misrepresented and
`
`falsely described to the general public the origin and source of Defendant's goods
`
`and services so as to deceive the public and deliberately create the likelihood of
`
`confusion, or cause mistake, or to deceive as to the affiliation, connection, or
`
`

`
`association of defendants with plaintiff, or as to the origin, sponsorship, or approval
`
`of defendant's goods and services, or commercial activities by the ultimate
`
`purchaser as to both the source and sponsorship of the Defendant's goods and
`
`services.
`
`36.
`
`it is believed that defendants goods and services offered under the
`
`Infringing Mark are inferior in quality to the goods and services authorized to be
`
`sold by plaintiff and the sale thereof has and will continue to damage and dilute the
`
`goodwill plaintiff has developed in connection with offering products to clean, seal
`
`or preserve wood flooring or decks.
`
`37.
`
`This use of the infringing Mark products to clean, seal or preserve
`
`wood is and will be without permission or authority of plaintiff and without any
`
`legitimate license to offer such goods and services under the lnfringing Mark.
`
`38.
`
`Defendant, with full knowledge of the notoriety of plaintiff's WOODRX
`
`Mark, intended to and did trade on the goodwill associated with plaintiff's WOODRX
`
`Mark and has misled and will continue to mislead the public into assuming a
`
`connection between plaintiff and defendant's goods and services by defendant's
`
`offer to the public of its goods under the infringing Mark.
`
`39.
`
`Defendant has advertised, distributed, offered for sale, and/or sold in
`
`Florida and in interstate commerce wood cleaning, preservative and sealing
`
`products under the infringing Mark, which is confusingly similar to Plaintiffs
`
`WOODRX Mark, thus creating the likelihood of confusion, deception, and mistake as
`
`to the affiliation. connection, or association of Defendants with plaintiff, or as to the
`
`origin, sponsorship, or approval of defendants’ goods, services, or commercial
`
`activities.
`
`

`
`40.
`
`The use by defendant of the infringing Mark constitutes knowing use
`
`of a false designation of origin and a false description or representation that
`
`wrongly and falsely designates the defendants goods and services offered to the
`
`public by defendant as originating from or connected with plaintiff and constitutes
`
`utilizing false descriptions or representations in commerce.
`
`41.
`
`The imitation, reproduction, and unauthorized use of the infringing
`
`Mark causes irreparable injury to plaintiff, including injury to its business
`
`reputation and dilution of the distinctive quality of the plaintiff's WOODRX Mark.
`
`42.
`
`Defendant's use of the infringing Mark is likely to and does permit
`
`defendant to pass off its goods and services as those of plaintiff, all to the
`
`detriment of plaintiff and the unjust enrichment of defendant,
`
`43.
`
`Defendant's use of the infringing Mark has caused and is likely to
`
`continue to cause damage to plaintiff by tarnishing the valuable reputation and
`
`image associated with plaintiff and its goods and services. Defendant has further
`
`passed off its goods and services as those of plaintiff's by its misrepresentations to
`
`the consuming public, members of which are likely to and do believe that
`
`Defendants products under the infringing Mark emanate from or are associated
`
`with plaintiff.
`
`44,
`
`Such acts of defendant permit and accomplish confusion, mislead
`
`and deceive the public as to the affiliation, connection, or association of defendant
`
`with plaintiff, or as to the origin, sponsorship, or approval of defendant's goods.
`
`services, or commercial activities as to the source of defendants goods and
`
`services, permit and accomplish passing off of defendants goods and services as
`
`those of plaintiff, and falsely suggests a connection with plaintiff,
`
`

`
`45,
`
`Defendant's unlawful activity results in irreparable harm and injury to
`
`plaintiff. Among other harms, it; deprives plaintiff of its absolute right to determine
`
`the manner in which its goods and services are presented to the general public;
`
`deceives the public as to the origin and sponsorship of such goods and services;
`
`wrongfully trades upon and cashes in on plaintiffs reputation and exclusive rights
`
`in its trademarks; and, to the extent the infringing goods and services are of inferior
`
`quality, irreparably harms and injures plaintiff's reputation.
`
`46.
`
`Plaintiff is entitled to an injunction restraining defendant, its officers,
`
`agents and employees, and all persons acting in concert with is, from engaging in
`
`any further acts in violation of 15 USC. §§> 1116 and 1125.
`
`COUNT ONE
`
`E§._D_l_.3_R_AL TRADEMARK INFRINGEMENT
`
`Plaintiff reaileges Paragraphs 1 through 46,
`
`Defendants acts as alleged herein with respect to defendant's
`
`47.
`
`48,
`
`infringement of plaintiff's WOODRX Mark are likely to cause public confusion,
`
`mistake or deception and constitute trademark infringement.
`
`49.
`
`Defendants acts, as alleged herein, have caused irreparable injury
`
`and damage to plaintiff and, unless restrained, will continue to do so.
`
`50.
`
`51,
`
`As a result, plaintiff has suffered damages with interest,
`
`Plaintiff has no adequate complete remedy at law.
`
`WHEREFORE, plaintiff, lnseco. lnc., demands judgment against defendant
`
`including;
`
`a.
`
`a preliminary and permanent injunction enjoining and restraining
`defendant and its officers, directors, principals, agents, servants,
`employees, successors, assigns, attorneys, and all those persons in
`
`

`
`active concert or participation therewith who received actual notice of
`this Court's orders:
`
`i,
`
`ii,
`
`vi.
`
`vii,
`
`viii.
`
`from causing likelihood of confusion, or causing mistake, or to
`_ deceive as to the affiliation, connection, or association of
`defendant with plaintiff or plaintiff's marks, or as to the origin.
`sponsorship, or approval of defendant's goods, services, or
`commercial activities, or causing injury to business reputation,
`or dilution of the distinctiveness of the plaintiff's WOODRX
`Mark or plaintiff's forms of advertisement,
`
`from directly or indirectly falsely designating or representing
`that any goods or services are authorized, approved,
`associated with or originating from plaintiff;
`
`from directly or indirectly using the infringing Mark which is
`likely to cause confusion or further irreparable harm to
`Plaintiff's business reputation or goodwill;
`
`from utilizing the Infringing Mark in any shape or manner;
`
`from publishing, assembling, marketing, distributing, or
`otherwise utilizing any literature, business forms,
`advertisements, signs, or any other representations, regardless
`of the medium, which bear the infringing Mark, and from
`otherwise unfairly competing in any way with Plaintiff;
`
`to deliver up to plaintiff all literature, advertisements, business
`forms, signs, and any other representations, regardless of
`form, which are in or comes to be in Defendants’ respective
`possession, custody or control and which bear the infringing
`Mark;
`
`to notify its direct customers, agents, and representatives that
`the Infringing Mark is not connected with the plaintiff,
`
`to immediately institute full compliance with any order
`entered by this Court and, within thirty days following the date
`of entry of any preliminary or permanent injunctive relief
`issued by this Court, propound and file a statement under oath
`and penalty of perjury, that each and every injunctive provision
`has been fully and completely complied with,
`
`an accounting and judgment for all profits gained by defendant while
`engaging in the acts complained of herein,
`
`all damages sustained by plaintiff,
`
`

`
`an award of attorneys fees and costs pursuant to 15 U.S.C. §>l
`
`1 17; and
`
`such other interlocutory and permanent relief as this Court may deem
`just and proper.
`
`COUNT TWO
`
`FEDERAL UNFAIR COMPETITION
`
`_I_5 U.S.C. §1l25|aj
`
`Plaintiff realleges Paragraphs 1 through 46.
`
`Defendant's acts, as alleged herein constitute unfair competition which
`
`52.
`
`53,
`
`is likely to cause confusion, mistake or deception in violation of 15 U.S.C. §~l l25(a).
`
`54.
`
`Defendant's acts, as alleged herein, have caused irreparable injury and
`
`damage to plaintiff and, unless restrained, will continue to do so.
`
`55.
`
`56.
`
`As a result, plaintiff has suffered damages with interest
`
`Plaintiff has no adequate complete remedy at law.
`
`WHEREFORE, plaintiff, lnseco, lnc., demands judgment against defendant
`
`including:
`
`a.
`
`a preliminary and permanent injunction enjoining and restraining
`defendant, its officers, directors, principals, agents, servants,
`employees, successors, and assigns, and all those in active concert or
`participation with them, from:
`
`i\
`
`ii,
`
`iii.
`
`iv.
`
`from causing likelihood of confusion, or causing mistake, or to
`deceive as to the origin, sponsorship, or approval of Plaintiffs
`goods, or causing injury to business reputation, or dilution of
`the distinctiveness of the plaintiff's goods;
`
`from directly or indirectly using the false, misleading and
`deceptive advertisements and/or promotional material which
`are likely to cause confusion or further irreparable harm to
`plaintiff's business reputation or goodwill;
`
`from utilizing the false, misleading and deceptive
`advertisements in any shape or manner;
`
`from publishing, assembling, marketing, distributing, or
`otherwise utilizing any literature, business forms,
`advertisements, signs, or any other representations, regardless
`
`lO
`
`

`
`v,
`
`vi.
`
`vi
`
`viii,
`
`of the medium, which bear unauthorized, false, misleading
`and deceptive photographs and/or statements, and from
`otherwise unfairly competing in any way with plaintiff;
`
`to deliver up to plaintiff all literature, advertisements, business
`forms, signs, and any other representations. regardless of
`form, which are in or comes to be in defendant's respective
`possession, custody or control and which bear any
`unauthorized false, misleading and deceptive material
`including, but not limited to, false, misleading and deceptive
`photographs and/or statements;
`
`to notify its direct customers, agents. and representatives that
`the herein—described advertisements do not accurately depict
`plaintiff's WOODRX products;
`
`to cease all advertising, marketing and sale of any products
`using the Mark Rx for Wood or Rx for Wood Floors; and
`
`to immediately institute full compliance with any order
`entered by this Court and, within thirty days following the date
`of entry of any preliminary or permanent injunctive relief
`issued by this Court, propound and file a statement under oath
`and penalty of perjury, that each and every injunctive provision
`has been fully and completely complied with,
`
`bvi
`
`c.
`
`d.
`
`e.
`
`an accounting and judgment for all profits gained by defendant while
`engaging in the acts complained of herein;
`
`all damages suffered by plaintiff;
`
`an award of attorneys fees and costs pursuant to 15 USC, §1117; and
`
`such other interlocutory and permanent relief as this Court may deem
`just and proper.
`
`FEDERAL FALSE DESIGNATION OF ORIGIN AND FALSE DESCRIPTION
`15 U.S.C. 1125 a I
`
`COUNT THREE
`
`57,
`
`58.
`
`Plaintiff realleges Paragraphs 1 through 46
`
`Defendant's acts as alleged herein constitute a false designation of
`
`origin, a false and misleading description of fact or a false or misleading
`
`

`
`representation of fact which is likely to cause confusion, mistake or deception as to
`
`the affiliation, connection or association of the plaintiffwith the defendant or as to
`
`the origin, sponsorship or approval ofthe defendant's goods by the plaintiff, all in
`
`violation of 15 USC, §1]25(a)(1)(a)n
`
`59.
`
`Defendants acts as alleged herein have caused irreparable injury and
`
`damage to plaintiff and, unless restrained, will continue to do so.
`
`60,
`
`61.
`
`As a result, plaintiff has suffered damages with interest.
`
`Plaintiff has no adequate complete remedy at law.
`
`WHEREFORE, plaintiff, lnseco, Inc, demands judgment against defendant
`
`including;
`
`a,
`
`a preliminary and permanent injunction enjoining and restraining
`defendant and its officers, directors, principals, agents, servants.
`employees, successors, assigns, attorneys, and all those persons in
`active concert or participation therewith who received actual notice of
`this Court's orders:
`
`i.
`
`ii.
`
`iii,
`
`iv
`
`from causing likelihood of confusion, or causing mistake, or to
`deceive as to the origin, sponsorship, or approval of Plaintiffs
`goods, or causing injury to business reputation, or dilution of
`the distinctiveness of the plaintiff's goods;
`
`from directly or indirectly using the false, misleading and
`deceptive advertisements and/or promotional material which
`are likely to cause confusion or further irreparable harm to
`plaintiff's business reputation or goodwill;
`
`from utilizing the false, misleading and deceptive
`advertisements in any shape or manner;
`
`from publishing. assembling, marketing, distributing, or
`otherwise utilizing any literature, business forms,
`advertisements, signs, or any other representations, regardless
`of the medium, which bear unauthorized, false, misleading
`and deceptive photographs and/or statements, and from
`otherwise unfairly competing in any way with plaintiff;
`
`v
`
`to deliver up to plaintiff all literature, advertisements, business
`forms, signs, and any other representations, regardless of
`
`

`
`form, which are in or comes to be in defendant's respective
`possession, custody or control and which bear any
`unauthorized false, misleading and deceptive material,
`including but not limited to, false, misleading and deceptive
`photographs and/or statements;
`
`vi.
`
`vii.
`
`to notify its direct customers, agents, and representatives that
`the herein—described advertisements do not accurately depict
`plaintiff's WOODRX products;
`
`to immediately institute full compliance with any order
`entered by this Court and, within thirty days following the date
`of entry of any preliminary or permanent injunctive relief
`issued by this Court, propound and file a statement under oath
`and penalty of perjury, that each and every injunctive provision
`has been fully and completely complied with,
`
`an accounting and judgment for all profits gained by defendant while
`engaging in the acts complained of herein;
`
`all damages suffered by plaintiff;
`
`an award of attorneys fees and costs pursuant to 15 USC. <§1l17; and
`
`such other interlocutory and permanent relief as this Court may deem
`just and proper,
`
`COUNT FOUR
`
`FLORIDA TRADEMARK INFRINGEMENT
`
`(Florida Statutes § 495.131)
`
`62.
`
`63.
`
`Plaintiff realleges Paragraphs 1 through 46.
`
`Defendant's acts, as alleged herein, are likely to cause public
`
`confusion, mistake or deception and constitute trademark infringement in violation
`
`of Florida law”
`
`64,
`
`Defendant's acts, as alleged herein, constitute an infringement of
`
`plaintiff's trademark as defined in Section 495 131, Florida Statutes.
`
`65.
`
`Defendant's acts, as alleged herein, have caused irreparable injury
`
`and damage to plaintiff and, unless restrained, will continue to do so.
`
`

`
`66.
`
`67,
`
`As a result, plaintiff has suffered damages with interest,
`
`Plaintiff has no adequate complete remedy at law.
`
`WHEREFORE, Plaintiff, lnseco, inc, demands judgment against defendant
`
`for:
`
`a.
`
`a preliminary and permanent injunction enjoining and restraining
`defendants and its officers, directors, principals, agents, servants,
`employees, successors, assigns, attorneys, and all those persons in
`active concert or participation therewith who received actual notice of
`this Court's orders:
`
`i.
`
`ii,
`
`iii,
`
`from causing likelihood of confusion, or causing mistake, or to
`deceive as to the affiliation, connection, or association of
`Defendants with plaintiff or plaintiff's WOODRX Mark, or as to
`the origin, sponsorship, or approval of defendant's goods,
`services, or commercial activities, or causing injury to business
`reputation, or dilution of the distinctiveness of the plaintiffs
`WOODRX Mark or plaintiff's forms of advertisement,
`
`from directly or indirectly falsely designating or representing
`that any goods or services are authorized, approved,
`associated with or originating from plaintiff;
`
`from directly or indirectly using the Infringing Mark which is
`likely to cause confusion or further irreparable harm to
`Plaintiffs business reputation or goodwill;
`
`from utilizing the Infringing Mark in any shape or manner;
`
`from publishing, assembling, marketing, distributing, or
`otherwise utilizing any literature, business forms.
`advertisements, signs, or any other representations, regardless
`of the medium, which bear the Infringing Mark, and from
`otherwise unfairly competing in any way with plaintiff;
`
`to deliver up to plaintiff all literature, advertisements, business
`forms, signs, and any other representations, regardless of
`form, which are in or comes to be in Defendants’ respective
`possession, custody or control and which bear the infringing
`Mark;
`
`vii.
`
`to notify its direct customers, agents, and representatives that
`the infringing Mark is not connected with the plaintiff,
`
`14
`
`

`
`viii.
`
`to immediately institute full compliance with any order
`entered by this Court and, within thirty days following the date
`of entry of any preliminary or permanent injunctive relief
`issued by this Court, propound and file a statement under oath
`and penalty of perjury, that each and every injunctive provision
`has been fully and completely complied with;
`
`an accounting and judgment for all profits gained by Defendants
`while engaging in the acts complained of herein,
`
`all damages suffered by plaintiff;
`
`an award of attorneys fees and costs; and
`
`such other interlocutory and permanent relief as this Court may deem
`just and proper, pursuant to Section 495,141, Florida Statutes.
`
` Alan F, Wagn
`
`FBN: 037410
`Trial Counsel for Plaintiff
`WAGNER, VAUGHAN E} MCLAUGHLIN, PA
`601 Bayshore Boulevard, Suite 910
`Tampa, FL 33606
`Telephone:
`(813) 225-4000
`Facsimile:
`(8l3)225—40lO
`E~mail: Alanwagner@WagnerLavv.corn
`
`

`
`EXHIBIT B
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`FORT MYERS DIVISION
`
`INSECO, INC.,
`
`)
`
`Plaintiff,
`
`v.
`CHEMICAL SPECIALTIES
`
`I
`3 CASE NO. 2:04-cv—430—FtM—VMC—29SPC
`)) JUDGE COVINGTON
`
`MANUFACTURING CORPORATION,
`
`Defendant.
`
`...
`
`)
`
`I
`
`)
`
`ANSWER OF DEFENDANT,
`CHEMICAL SPECIALTIES MANUFACTURING CORPORATION
`
`For its Answer to the Complaint of Inseco, Inc.
`
`(“Plaintiff”), Defendant Chemical
`
`Specialties Manufacturing Corporation (“Defendant”) hereby avers as follows:
`
`Response to Plaintiff’s Averments
`
`Defendant admits the averments of paragraph 1 of the Complaint.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`1.
`
`2.
`
`truth or falsity of the averments of paragraph 2 of the Complaint.
`
`3.
`
`Defendant admits the averments of paragraph 3 of the Complaint inasmuch as
`
`venue is proper in this judicial district under 28 U.S.C. § 1391.
`
`4.
`
`5.
`
`Defendant denies the averments of paragraph 4 of the Complaint.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 5 of the Complaint.
`
`6.
`
`Defendant admits the averments of paragraph 6 of the Complaint.
`
`

`
`Inseco, Inc. vs. Chemical Specialties Manufacturing Corporation
`Case Number: 2:04~cv-430-FtM—VMC—29SPC
`Answer of Defendant, Chemical Specialties Manufacturing Corporation
`
`7.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 7 of the Complaint.
`
`8.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 8 of the Complaint.
`
`9.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 9 of the Complaint.
`
`10.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 10 of the Complaint.
`
`ll.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph ll of the Complaint.
`
`.12.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 12 of the Complaint.
`
`13.
`
`Defendant admits that the record of the U.S. Patent and Trademark Office shows
`
`that a Section 1.5 affidavit was accepted for Registration No. 2,068,833. As to the remaining
`
`averments of paragraph 13, Defendant lacks knowledge or information sufficient to form a belief
`
`as to their truth or falsity.
`
`14.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 14 of the Complaint.
`
`15.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 15 of the Complaint.
`
`16.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 16 of the Complaint.
`
`

`
`Inseco, Inc. vs. Chemical Specialties Manufacturing Corporation
`Case Number: 2:O4—cv~-430—FtM—VMC-29SPC
`Answer of Defendant, Chemical Specialties Manufacturing Corporation
`
`7.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averrncnts of paragraph 7 of the Complaint.
`
`8.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 8 of the Complaint.
`
`9.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 9 of the Complaint.
`
`10.
`
`Defendant lacks knowledge or information sufficient to form a belief as to the
`
`truth or falsity of the averments of paragraph 10