Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA356657
`ESTTA Tracking number:
`07/07/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92052527
`Defendant
`PUMA Aktiengesellschaft; Rudolf Dassler Sport
`LYNN A. SULLIVAN
`LEYDIG VOIT & MAYER, LTD.
`TWO PRUDENTIAL PLAZA, 180 N. STETSON, SUITE 4900
`CHICAGO, IL 60601-6731
`UNITED STATES
`lsullivan@leydig.com
`Motion to Suspend for Civil Action
`Nimita L. Parekh
`nparekh@leydig.com,lsullivan@leydig.com,trademark@leydig.com
`/Nimita L. Parekh/
`07/07/2010
`Puma AG's Motion to Suspend Cancellation.pdf ( 8 pages )(270040 bytes )
`Exhibit A.pdf ( 37 pages )(3225429 bytes )
`Exhibit B.pdf ( 36 pages )(1367378 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`TRADEMARKS: Attorney Reference 269819
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`K-SWISS lNC.,
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`Petitioner,
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`V.
`
`PUMA AKTIENGESELLSCHAFT; RUDOLF
`DASSLER SPORT
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`Registrant.
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`\é\2\J\J\J§/\é\/\é¥/
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`Cancellation No. 92052527
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`Registration No. 3,369,752
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`PUMA AG’s MOTION TO SUSPEND CANCELLATION ACTION
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`Pursuant to TBMP § 510.02(a) and 37 CFR §2.117(a), Registrant, PUMA
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`Aktiengesellschaft; Rudolf Dassler Sport (“PUMA AG”) hereby moves the Trademark Trial and
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`Appeal Board (“Board”) to suspend Cancellation Action No. 92052527 pending final
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`determination of a collateral Federal civil action captioned Puma AG RudolfDassler Sport and
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`Puma North America, Inc. v. K-Swiss 1110., Civil Action No. 1:09 CV-10718-DPW, currently
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`pending in the United States District Court for the District of Massachusetts. As set forth in the
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`attached memorandum in support of suspension, the pending Civil Action will have a direct
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`bearing on this Cancellation proceeding and will resolve issues that are present herein.
`
` *- mita L. Parekh
`
`LEYDIG, VOIT & MAYER, LTD
`180 N. Stetson Ave.
`
`Two Prudential Plaza, Suite 4900
`
`Chicago, Illinois 60601
`Telephone: (312) 616-5600
`Facsimile: (312) 616-5700
`Attorneysfor Registrant
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`

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`MEMORANDUM IN SUPPORT OF MOTION
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`I.
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`Statement of the Proceedings
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`On May 4, 2009, PUMA and PUMA North America, Inc. (“PUMA NA”)1 (collectively
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`“PUMA”) initiated a trademark infringement action in the United States District Court for the
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`District of Massachusetts (hereinafter the “Civil Action”) against Petitioner, K-Swiss Inc.
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`(hereinafter “K-Swiss”). A copy of PUMA’s Complaint in the Civil Action is attached hereto as
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`Exhibit A. As set forth therein, PUMA seeks a determination that K-Swiss infringed PUMA’s
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`U.S. Trademark Registration No. 3,369,752 (the “’752 Registration”), inter alia,2 as well as
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`engaged in acts of unfair competition, false designation of origin, dilution, and deceptive trade
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`practices. The ’752 Registration covers a formstrip design comprised of a curved band
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`designation for use in connection with footwear, apparel, and accessory products (hereinafter the
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`“Formstrip Mark”).
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`The primary basis for PUMA’s Civil Action is that K-Swiss’ use of a curved band
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`designation virtually identical to PUMA’s Forrnstrip Mark in connection with the manufacturing,
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`importation, distribution, advertising, promotion, and sale of K-Swiss’ DOLTON footwear is
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`likely to cause consumer confusion with PUMA’s Formstrip Mark. (See Exhibit A at p. 7, 11 21-
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`22; p. 8, 1] 23-25; and p. 9, 1] 26-28).
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`On August 11, 2009, K-Swiss filed its Answer to PUMA’s Complaint and asserted
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`several affirmative defenses and counterclaims. A copy of K-Swiss’ Answer and Counterclaims
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`in the Civil Action is attached hereto as Exhibit B. More specifically, K-Swiss raised a
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`functionality defense and asserted that PUMA misrepresented the ownership of the Formstrip
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`I PUMA NA, a wholly-owned subsidiary of PUMA AG, is a Delaware Corporation with a principal place of
`business located in Westford, Massachusetts.
`2 It should be noted that PUMA AG’s Civil Action is also based on two of its other incontestable registrations for the
`Formstrip Mark, namely, U.S. Reg. Nos.: 1,256,945 and 1,135,790.
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`

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`Mark in procuring the ’752 registration, as well as alleging that PUMA committed fraud on the
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`Patent and Trademark Office. (See Exhibit B at p. 24, 11 133-134; p. 25, 11 137-139; p. 26, 11 141-
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`143; and p. 27, 11 145-151). Accordingly, K-Swiss seeks a determination from the District Court,
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`inter alia, that the Registration for the Formstrip Mark should be cancelled.
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`On June 7, 2010, K-Swiss initiated the present proceeding to cancel PUMA AG’s
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`Formstrip Mark based, on the‘same allegations raised in the Civil Action, namely, functionality
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`of the Formstrip Mark, and that PUMA AG allegedly misrepresented the ownership of the
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`Formstrip Mark thereby committing fraud in procuring the ’752 Registration. As such, the
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`present Cancellation action is between the same parties and seeks to address the same claims that
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`are set forth in the Civil Action Counterclaim, and therefore, this proceeding should be stayed
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`until final determination of the collateral Civil Action.
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`II.
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`Argument
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`K-Swiss has prompted the Board in this proceeding to determine the validity of the ’752
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`Registration by raising three issues, inter alia, that are the subject of the Civil Action: (1)
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`whether PUMA misrepresented the ownership of the Formstrip Mark during prosecution; (2)
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`whether PUMA acted fraudulently in procuring the ’752 Registration; and (3) whether the
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`Formstrip mark or other similar strip designations are functional.
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`As exemplified by TBMP § 510.02(a) and 37 CFR § 2.117(a), the Board’s traditional
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`policy is to suspend a Board action when there is a related civil action. See The Other Telephone
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`Co. v. Connecticut National Telephone Co., Inc., 181 U.S.P.Q. 125, 126-27 (T.T.A.B. 1974).
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`Rule 2.117(a) provides, in pertinent part:
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`Whenever it shall come to the attention of the Trademark Trial and
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`Appeal Board that a party or parties to a pending case are engaged
`in a civil action or another Board proceeding which may have a
`bearing on the case, proceedings before the Board may be
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`

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`suspended until termination of the civil action or the other Board
`proceeding.
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`To the extent that a Federal civil action involves issues in common with those in a
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`proceeding before the Board, the decision of the federal court is binding on the parties thereto,
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`while the decision of the Board is merely advisory to the court. See, e. g., Goya Foods Inc. v.
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`Tropicana Products, Inc., 846 F.2d 848, 854 (2d Cir. 1988); American Bakeries Co. v. Pan-0-
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`Gold Baking Co., 650 F. Supp. 563, 567 (D. Minn. 1986) (“[I]t is preferable for the T.T.A.B. to
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`stay its own proceedings where parallel litigation occurs in the district court”). Further, it is not
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`necessary that the related civil matter be dispositive of all issues before the Board. Rather, as the
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`language of Rule 2.1 17(a) states, it is in the Board’s discretion to suspend an opposition or
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`cancellation action based on a civil action which “may have a bearing on the case.”
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`PUMA respectfully submits that this cancellation proceeding should be stayed pending
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`resolution of the Civil Action, as the decision, there, would be dispositive of the material issues
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`in the present Cancellation action. The parties and mark at issue in both proceedings are
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`identical. As noted above, the validity of the Formstrip Mark depicted in the ’752 Registration is
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`at issue in both proceedings. Further, in the operative pleadings for both proceedings, K-Swiss
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`alleges misrepresentation of the ownership of the mark, fraud, and functionality. Thus, the
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`District Court’s ruling on those issues will have an effect on the Board’s ruling on basically the
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`same issues in the present Cancellation action. Accordingly, the Civil Action involves all factual
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`and legal issues that arise in this proceeding, as well as factual and legal issues that cannot be
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`litigated in this Cancellation action.
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`Proceeding with the present Cancellation action would be contrary to the overriding
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`policies of Rule 2.1 l7(a), namely, to preserve the Board’s resources, as well as those of the
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`parties, to prevent inconsistencies in rulings and judgments between the Board and the Federal
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`

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`courts, and to recognize the broader jurisdiction and greater authority of the Federal courts. As
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`such, to avoid the possibility of conflicting opinions, this proceeding should be stayed pending
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`the final outcome of the Civil Action.
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`Based on the foregoing, PUMA AG respectfully requests that the Board promptly issue a
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`suspension of the Cancellation Action pending the outcome of the related Civil Action.
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`III.
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`Request for Suspension of Time for PUMA AG to File Answer
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`PUMA AG requests that the Board suspend the time in which to file its Answer in the
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`Cancellation Action pending the Board’s ruling on the present Motion to Suspend.
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`PUMA AG’s Answer in this proceeding is currently due on July 18, 2010. Pursuant to
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`TBMP §510.02(a), PUMA AG does not believe that an Answer is required pending the
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`determination of its timely filed Motion to Suspend. See also, The Other Telephone Co. v.
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`Connecticut National Telephone Co., 181 U.S.P.Q. 125, 126 (T.T.A.B. 1974), petition denied,
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`181 U.S.P.Q. 779 (Comm’r 1974) (Board found opposer was not in default for failure to take
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`testimony pending the determination of its motion to suspend for civil action noting “a favorable
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`ruling by the Board on the motion to suspend would obviate the expenditure of time and money
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`required in the taking of testimony”). As a precautionary measure, however, PUMA AG
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`respectfully requests that the Board suspend the time in which its Answer must be filed pending
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`the ruling on the present Motion.
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`Based on the foregoing and in the event that PUMA AG’s Motion to Suspend is denied, it
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`respectfully requests that the Board reset the time period to allow additional time for PUMA AG
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`to file its Answer. See The Other Telephone Co., 181 U.S.P.Q. at 126 (“[I]n the event that the
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`proceeding is not held in abeyance because of the civil suit, opposer will be given another
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`opportunity to take testimony”).
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`

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`Date: July 7, 2010
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`Respectfully submitted
`
`%%J/%
`
`
`180 N. Stetson Ave.
`
`Two Prudential Plaza, Suite 4900
`
`Chicago, Illinois 60601
`Telephone: (312) 616-5600
`Facsimile: (312) 616-5700
`Attorneys for Registrant
`
`

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`CERTIFICATE OF ELECTRONIC FILING
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`The undersigned attorney hereby certifies that this MOTION TO SUSPEND
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`CANCELLATION ACTION AND MEMORANDUM IN SUPPORT THEREOF is being
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`electronically filed with the United States Patent and Trademark Office Trademark Trial and
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`Appeal Board on July 7, 2010.
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`ye,
`
`

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`CERTIFICATE OF SERVICE
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`The undersigned attorney hereby certifies that this MOTION TO SUSPEND
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`CANCELLATION ACTION AND MEMORANDUM IN SUPPORT THEREOF is being served
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`on counsel for Petitioner via First Class Mail on this 7th day of July, 2010 as follows:
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`Neil D. Greenstein
`
`TechMark
`
`1917 Palomar Oaks Way
`Suite 300
`
`Carlsbad, CA 92008
`Telephone: (408) 280-2228
`Facsimile: (408) 280-2250
`Attorneyfor Petitioner
`
`il~4
`
`

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`EXHIBIT A
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`

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`Case 1:09-cv-10718-DPW Document1
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`Filed 05/04/09 Page 1 of 15
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`PUMA AG RUDOLF DASSLER SPORT
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`and PUMA NORTH AMERICA, INC.,
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`Plaintiffs,
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`_
`_
`_
`Civil Action No.:
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`V‘
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`K-SWISS INC.,
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`JURY TRIAL DEMANDED
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`Defendant.
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`COMPLAINT
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`Plaintiffs PUMA AG Rudolf Dassler Sport and PUMA North America, Inc. (collectively,
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`“PUMA”), bring this complaint against Defendant K-Swiss Inc. (“K-Swiss”) to redress
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`infringement and dilution of PUMA’s signature Formstrip trademark, and allege as follows:
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`PARTIES
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`1.
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`Plaintiff PUMA AG Rudolf Dassler Sport (“PUMA AG”) is a German
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`Corporation with auprincipal place of business located at Wuerzburger Strasse 13, D-91074
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`Herzogenaurach, Germany.
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`2.
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`Plaintiff PUMA North America, Inc. (“PUMA NA”), a wholly-owned subsidiary
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`of PUMA AG, is a Delaware Corporation with a principal place of business located at 10
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`Lyberty Way, Westford, Massachusetts 01886.
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`3.
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`Upon information and belief, defendant K-Swiss is a Delaware Corporation with a
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`principal place of business located at 31248 Oak Crest Drive, Westlake Village, California
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`91361.
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`

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`Case 1:09-cv-10718-DPW Document 1
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`Filed 05/04/09 Page 2 of 15
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`JURISDICTION AND VENUE
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`4.
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`This is an action at law and in equity for trademark infringement, trademark
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`dilution, unfair competition, and deceptive trade practices arising under the Lanham Act,
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`15 U.S.C. § 1051, et seq.; the antidilution laws of the several states, including the Massachusetts
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`antidilution statute, Mass. Gen. Laws ch. 1l0H, § 13; the unfair and deceptive trade practices
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`laws of the several states, including the Massachusetts Unfair Business Practices Act, Mass. Gen.
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`Laws ch. 93A, §§ 1-11; and common law.
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`5.
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`This Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. §
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`1121 and 28 U.S.C. §§ 1331 and 1338(a) because PUMA’s federal claims arise under the
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`Lanham Act, 15 U.S.C. § 1051, et seq. This Court has subject matter jurisdiction over PUMA’s
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`related state law and common law claims pursuant to 28 U.S.C. §§ 1338(b) and 1367.
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`6.
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`Upon information and belief, this Court has personal jurisdiction over K—Swiss
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`because K—Swiss routinely conducts, solicits, and/or transacts business within thisjudicial
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`district and elsewhere in the Commonwealth of Massachusetts, derives substantial revenue from
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`the sale, distribution, and/or manufacture of products within this judicial district and elsewhere in
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`the Commonwealth of Massachusetts, and/or has otherwise made or established constitutionally
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`sufficient contacts in the Commonwealth of Massachusetts to permit this Court’s exercise of
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`personal jurisdiction.
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`7.
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`Venue is proper in thisjudicial district pursuant to 28 U.S.C. §§ 1391 because a
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`substantial part of the acts complained of in this Complaint occurred in this judicial district and
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`each party is subject to personal jurisdiction in this judicial district.
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`FACTS COMMON TO ALL CLAIMS FOR RELIEF
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`PUMA’s Signature Formstrip Trademark
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`

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`Case 1:09-cv-10718-DPW Document 1
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`Filed 05/04/09 Page 3 of 15
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`' 8.
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`Founded in Herzogenaurach, Germany in 1948 as PUMA Schuhfabrik Rudolf
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`Dassler, PUMA is one of the world’s leading designers and manufacturers of innovative athletic,
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`lifestyle, and fashion footwear, apparel, and accessory products. PUMA has a global distribution
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`base reaching sport retailers, department stores, and boutiques in over eighty countries around
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`the world.
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`9.
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`For decades, PUMA has continuously used its signature Formstrip mark in the
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`United States in connection with its high-quality athletic, lifestyle, and fashion footwear.
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`PUMA’s signature Formstrip mark has come to signify the quality and reputation of PUMA’s
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`high-quality athletic, lifestyle, and fashion footwear throughout the United States and the world.
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`PUMA NA is the exclusive licensee of the Formstrip mark in the United States. In addition, all
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`U.S. marketing and sales are handled by PUMA NA in Westford, Massachusetts, and PUMA’s
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`international design center is located in Boston, Massachusetts, where all designs for PUMA’s
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`shoes and other articles are created. Examples of PUMA’s footwear bearing the Formstrip mark
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`are attached as Exhibit 1.
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`10.
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`PUMA AG is the owner of several federal trademark and service mark
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`registrations, including several registrations for the Formstrip mark.
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`ll.
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`PUMA AG is the owner of U.S. Registration No. 1,256,945 (“the ’945
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`Registration”) for the Formstrip mark, as depicted below, for “shoes, especially sports and
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`leisure shoes.” The ’945 Registration was issued by the United States Patent and Trademark
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`Office (“USPTO”) in 1983.
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`

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`Case 1:09-cv-10718—DPW Document 1
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`Filed 05/04/09 Page 4 of 15
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`-5.*‘..._—._,,J
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`i
`__ __......-.._...a
`-
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`
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`__,,_.......
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`PUMA AG filed affidavits pursuant to Sections 8 and 15 of the Lanham Act, 15 U.S.C.
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`§§ 1058 and 1065, all of which were accepted by the USPTO. The ’945 Registration has
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`become incontestable pursuant to 15 U.S.C. § 1065. PUMA AG also filed a renewal of
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`registration pursuant to Section 9 of the Lanham Act, 15 U.S.C. § 1059, which was granted by
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`the USPTO. A copy of the certificate of registration for the ’945 Registration is attached as
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`Exhibit 2.
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`I
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`12.
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`PUMA AG is also the owner of U.S. Registration Nos. 1,135,790 (“the ‘790
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`Registration”) and 3,369,752 (“the ‘752 Registration”), which were registered with the USPTO
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`in 1980 and 2008, respectively. The ‘790 Registration, like the ‘945 Registration, has become
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`incontestable pursuant to 15 U.S.C. § 1065. A copy of the certificate of registration for the ‘790
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`Registration and the ‘752 Registration are attached as Exhibits 3 and 4, respectively
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`13.
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`PUMA’s signature Formstrip mark is well-known and famous throughout the
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`United States and the world and has been for decades. PUMA has used the Formstrip mark in
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`connection with PUMA’s sponsorship of various athletes competing in sports organizations and
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`tournaments located in the United States and around the world, including, for example, several
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`Olympic Games, the U.S. Open, French Open, Australia Open, and Wimbledon tennis
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`tournaments, the Superbowl, Formula 1 racing tournaments, World Cup soccer tournaments, and
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`the Track and Field World Championships. Athletes such as world’s fastest human Usain Bolt,
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`boxer Oscar De La Hoya, tennis players Martina Navratilova, Serena Williams, and Boris
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`

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`Case 1:09-cv-10718-DPW Document 1
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`Filed 05/04/09 Page 5 of 15
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`Becker, golfer Geoff Ogilvy, soccer player Nicholas Anelka, football players Joe Namath and
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`Marcus Allen, and basketball player Vince Carter were, and some continue to be, sponsored by
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`PUMA and have all worn PUMA’s footwear bearing the Formstrip mark. Prominent use of
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`PUMA’s signature Formstrip mark in connection with these sponsorship activities has enhanced
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`the strength and fame of this mark.
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`l4.
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`In addition, PUMA promotes, advertises, and sells PUMA’s high-quality athletic,
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`lifestyle, and fashion footwear bearing its signature Formstrip mark in retail stores, department
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`stores, and boutiques and through the Internet in the United States and the world. For example,
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`PUMA has opened scores of Concept Stores and Outlet Stores throughout the world, including
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`over l0O stores in the U.S. alone, with locations in major cities such as Boston, Frankfurt,
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`Glasgow, London, Melbourne, Milan, New York City, Paris, Rome, San Francisco, Seattle,
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`Stockholm, and Tokyo, all of which promote, advertise, and sell PUMA’s high-quality athletic,
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`lifestyle, fashion footwear bearing PUMA’s signature Formstrip mark. PUMA also owns and
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`operates several online PUMA Stores, which can be accessed at www.,r_>uma.com/store. These
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`online PUMA Stores, which all sell PUMA’s high-quality athletic, lifestyle, and fashion
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`footwear bearing the Formstrip mark, offer online shopping to persons in the United States and
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`Canada. PUMA further promotes, advertises, and sells PUMA’s high-quality athletic, lifestyle,
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`and fashion footwear bearing the Formstrip mark in department stores and retail sporting goods
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`stores throughout the United States, including, for example, Bloomingdale’s, CitySports, Foot
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`Locker, Macy’s, Modell’s Sporting Goods, Neiman Marcus, and Nordstrom. Many of these
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`department stores and retail stores are located in shopping malls throughout the United States.
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`Currently PUMA is competing in the Volvo Worldwide Ocean Race, which this month is
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`visiting Boston. PUMA promotes its Formstrip brand in that race worldwide, including by
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`

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`Case 1:09-cv-10718-DPW Document 1
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`Filed 05/04/09 Page 6 of 15
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`prominently displaying the Formstrip on two sides of the hull of Volvo 70 racing sailboat, and in
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`its connection with its movable PUMA City pavilion, a combination PUMA store and lounge,
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`which travels from port to port with the race and is now located on the Fan Pier in Boston.
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`15.
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`Prominent use of PUMA’s signature and famous Formstrip mark in connection
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`with these Concept Stores, Outlet Stores, department stores, retail sporting goods stores, online
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`PUMA Stores, and the Ocean Race and PUMA City pavilion, has further enhanced the strength
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`and fame of this mark.
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`16.
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`PUMA’s high-quality athletic, lifestyle, and fashion footwear bearing its signature
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`Formstrip mark are also promoted and advertised in print media and television advertisements in
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`the United States and around the world.
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`l7.
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`The Formstrip mark is a non-functional, famous, strong, and highly distinctive
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`mark that is prominently displayed on most of PUMA’s athletic, lifestyle, and fashion footwear.
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`The public has come to recognize and understand that the Formstrip mark distinguishes and
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`identifies PUMA’s athletic, lifestyle, and fashion footwear.
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`18.
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`For decades, PUMA has extensively, continuously, and exclusively used and
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`promoted high-quality athletic, lifestyle, and fashion footwear bearing its signature Formstrip
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`mark. PUMA has committed substantial amounts of time, money, and resources to develop a
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`worldwide reputation as one of the premier manufacturers of these products. PUMA’s 2008
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`annual sales of footwear products alone bearing the Formstrip mark have totaled over 1 billion
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`dollars worldwide and have been substantial within the United States.
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`19.
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`In 2008, PUMA spent hundreds of millions of dollars worldwide, and a
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`substantial amount in the United States, advertising and promoting its athletic, lifestyle, and
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`fashion footwear bearing PUMA’s signature Formstrip mark worldwide. As a result of PUMA’s
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`

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`Case 1:09-cv-10718-DPW Document 1
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`Filed 05/04/09 Page 7 of 15
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`promotion and advertisement of its signature Forrnstrip mark throughout the United States and
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`the world, the public has come to associate the Formstrip mark with PUMA as the exclusive
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`source of PUMA’s high-quality athletic, lifestyle, and fashion footwear. PUMA’s Formstrip
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`mark has achieved international fame and worldwide public recognition.
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`20.
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`As a result of PUMA’s extensive use and promotion of its signature Formstrip
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`mark, PUMA has built a valuable reputation and substantial goodwill that is symbolized by the
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`Formstrip mark. The purchasing public has come to recognize and associate the Formstrip mark
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`with PUMA and treats them as synonymous.
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`K—Swiss’s Infringement, Dilution, and Unlawful Activities
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`21.
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`Upon information and belief, K-Swiss is willfully, intentionally, maliciously, and
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`systematically manufacturing, importing, exporting, distributing, advertising, promoting,
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`offering for sale, selling, soliciting orders for, and/or taking orders for footwear bearing strip
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`designations that are virtually identical to PUMA’s signature Formstrip mark thereby causing
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`immediate, substantial, and irreparable harm to PUMA.
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`22.
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`Examples of K—Swiss’s footwear bearing the infringing strip designations being
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`sold on K-Swiss’ website under the name “Dolton E,” article numbers 02235-123, 02235-106,
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`and 02235-135, at www.kswiss.com, are depicted below and attached as Exhibit 5.
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`

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`Case 1:09-cv-10718-DPW Document 1
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`Filed 05/04/09 Page 8 of 15
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`23.
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`Upon information and belief, K-Swiss has advertised, promoted, offered for sale,
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`and/or has made available for sale footwear bearing strip designations that are virtually identical
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`to PUMA’s Formstrip mark through its online Internet store in Massachusetts and throughout the
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`United States.
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`24.
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`The footwear that K-Swiss has manufactured, imported, exported, distributed,
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`advertised, promoted, offered for sale, sold, and/or solicited orders for are not manufactured or
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`distributed by PUMA. K-Swiss is not associated or connected with PUMA. K-Swiss is also not
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`authorized, sponsored, endorsed, approved by, or in any way affiliated with PUMA.
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`25.
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`Upon information and belief, K-Swiss’ footwear bearing the strip designations
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`that are virtually identical to PUMA’s Formstrip mark are similar to footwear bearing PUMA’s
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`-3-
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`

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`Case 1:09-cv—10718-DPW Document 1
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`Filed 05/04/09 Page 9 of 15
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`signature Formstrip mark, and such footwear are advertised through the same or similar channels
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`of trade, including without limitation via the Internet, print media, television advertisements, in
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`shopping malls and through the Internet in Massachusetts and throughout the United States.
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`26.
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`K-Swiss’ use of strip designations that are virtually identical to PUMA’s
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`signature Formstrip mark is likely to deceive, confuse, and mislead prospective and actual
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`purchasers into believing that the footwear sold by K-Swiss is manufactured by, authorized by,
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`or in some other manner associated with PUMA. The likely confusion, mistake, and/or
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`deception engendered by K-Swiss’ misappropriation of PUMA’s signature Formstrip mark is
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`causing immediate, substantial, and irreparable harm to the goodwill symbolized by PUMA’s
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`Formstrip mark and the reputation for the high-quality PUMA athletic, lifestyle, and fashion
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`footwear that such mark embodies.
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`27.
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`K-Swiss’ activities have caused an/or are likely to cause dilution by blurring
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`and/or tamishment by eroding the public’s exclusive identification of PUMA’s famous Formstrip
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`mark with PUMA and otherwise lessening the capacity of such mark to identify and distinguish
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`PUMA’s goods and services.
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`28.
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`Unless enjoined by this Court, K-Swiss’ actions will continue and will result in
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`further irreparable harm to PUMA.
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`FEDERAL TRADEMARK INFRINGEMENT UNDER 15 U.S.C.
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`1114
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`COUNT I:
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`29.
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`PUMA repeats and incorporates by reference the allegations contained in
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`paragraphs 1 through 28 above as though fully set forth in this claim for relief.
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`30.
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`This is a claim for federal trademark infringement under 15 U.S.C. § ll 14 of
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`PUMA’s Formstrip marks, specifically, the ‘945, ’790, and ‘752 Registrations.
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`

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`Case 1:09-cv—10718—DPW Document 1
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`Filed 05/04/09 Page 10 of 15
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`31.
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`K-Swiss’ use in interstate commerce of confusingly similar reproductions,
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`counterfeits, copies, or colorable imitations of PUMA’s federally registered Formstrip mark in
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`connection with the sale, offering for sale, distribution, or advertising of, or in connection with,
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`K-Swiss’ goods and services is likely to cause confusion, or to cause mistake, or to deceive, by
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`creating the false and misleading impression that K-Swiss’ goods and services are manufactured
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`and distributed by PUMA, or are associated or connected with PUMA, or are sponsored by,
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`endorsed by, or approved by PUMA.
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`32.
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`K-Swiss has used, and continues to use, strip designations confusingly similar to
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`PUMA’s federally registered Formstrip mark in violation of Section 32 of the Lanham Act, 15
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`U.S.C. § 1 114, and K-Swiss’ activities have caused and, unless enjoined by this Court, will
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`continue to cause a likelihood of confusion and public deception in the marketplace, and injury
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`to PUMA’s goodwill and reputation as symbolized by PUMA’s signature Formstrip mark, for
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`which PUMA has no adequate remedy at law.
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`33.
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`K-Swiss’ actions demonstrate an intentional, willful, and malicious intent to trade
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`on the goodwill associated with PUMA’s federally registered Formstrip mark, thereby causing
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`immediate, substantial, and irreparable injury to PUMA.
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`34.
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`K~Swiss has caused, and is likely to continue causing, substantial injury to the
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`public and to PUMA, and PUMA is entitled to injunctive relief, to recover K-Swiss’ profits,
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`actual damages, enhanced profits and damages, reasonable attorneys’ fees and costs, and treble
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`damages, pursuant to 15 U.S.C. §§ 1114, 1116, and 1117.
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`FEDERAL TRADEMARK INFRINGEMENT UNDER 15 U.S.C.
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`1125 a
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`COUNT II:
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`35.
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`PUMA repeats and incorporates by reference the allegations contained in
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`paragraphs 1 through 34 above as though fully set forth in this claim for relief.
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`-10-
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`

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`Case 1:09-cv-10718—DPW Document1
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`Filed 05/04/09 Page 11 of 15
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`36.
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`This is a claim for federal trademark infringement under 15 U.S.C. §l l25(a) of
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`PUMA’s Formstrip marks, specifically, the ‘945, ’790, and ‘752 Registrations.
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`37.
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`K-Swiss’ use in interstate commerce of strip designations that are virtually
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`identical to PUMA’s Formstrip mark on K-Swiss’ footwear has caused and will continue to
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`cause likely confusion, or to cause mistake, or to deceive as to the origin, sponsorship, or
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`approval of K-Swiss’ goods, services, or commercial activities by PUMA.
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`38.
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`K-Swiss has used, and continues to use, strip designations that are virtually
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`identical to PUMA’s Formstrip mark thereby creating a false designation of origin in violation of
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`Section 43 of the Lanham Act, 15 U.S.C. § ll25(a), and K-Swiss’ activities have caused and,
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`unless enjoined by this Court, will continue to cause a likelihood of confusion and public
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`deception in the marketplace, and injury to PUMA’s goodwill and reputation as symbolized by
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`PUMA’s signature Formstrip mark, for which PUMA has no adequate remedy at law.
`
`39.
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`K-Swiss’ actions demonstrate an intentional, willful, and malicious intent to trade
`
`on the goodwill associated with PUMA’s Formstrip mark, thereby causing immediate,
`
`substantial, and irreparable injury to PUMA.
`
`40.
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`K-Swiss has caused, and is likely to continue causing, substantial injury to the
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`public and to PUMA, and PUMA is entitled to injunctive relief and to recover K~Swiss’ profits,
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`actual damages, enhanced profits and damages, reasonable attorneys’ fees and costs, treble
`
`damages, and an order for destruction pursuant to 15 U.S.C. §§ ll 16, 1117, 1118 and l 125.
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`COUNT IV:
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`FEDERAL TRADEMARK DILUTION
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`41.
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`PUMA repeats and incorporates by reference the allegations contained in
`
`paragraphs 1 through 40 above as though fully set forth in this claim for relief.
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`-1]-
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`

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`Case 1:09-cv—10718—DPW Document 1
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`Filed 05/04/09 Page 12 of 15
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`42.
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`By PUMA extensively and continuously promoting and commercially using its
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`signature Formstrip mark in the United States and throughout the world, the Formstrip mark has
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`become a famous, distinctive, and well-known mark symbolizing PUMA’s goods and services.
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`43.
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`K-Swiss’ use in interstate commerce of strip designations that are virtually
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`identical to PUMA’s famous Formstrip mark on K-Swiss’ footwear after the Formstrip mark
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`became famous has caused and/or is likely to cause dilution by blurring and/or tamishment by
`
`impairing the distinctiveness of and/or harming the reputation of PUMA’s famous Formstrip
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`mark. K-Swiss’ activities have eroded the public’s exclusive identification of this famous mark
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`with PUMA and otherwise lessened the capacity of such mark to identify and distinguish
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`PUMA’s goods and services.
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`44.
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`K-Swiss has used, and continues to use, strip designations that are virtually
`
`identical to PUMA’s famous and distinctive Formstrip mark thereby causing dilution of the
`
`distinctive quality of the Formstrip mark in violation of Section 43 of the Lanham Act, 15 U.S.C.
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`§ 1125(c), and K-Swiss’ activities have caused and/or is likely to cause, unless enjoined by this
`
`Court, dilution by blurring and/or tamishment by impairing the distinctiveness of and/or harming
`
`the reputation of PUMA’s famous Formstrip mark, public deception in the marketplace, and
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`injury to PUMA’s goodwill and reputation as symbolized by the Formstrip mark, for which
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`PUMA has no adequate remedy at law.
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`45.
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`K-Swiss’ actions demonstrate an intentional, willful, and malicious intent to trade
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`on the goodwill associated with PUMA’s famous and distinctive Formstrip mark, thereby
`
`causing immediate, substantial, and irreparable injury to PUMA.
`
`46.
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`K-Swiss has caused, and is likely to continue causing, substantial injury to the
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`public and to PUMA, and PUMA is entitled to injunctive relief and to recover K-Swiss’ profits,
`
`-12-
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`

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`Case ‘|:09—cv-10718-DPW Document 1
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`Filed 05/04/09 Page 13 of 15
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`actual damages, enhanced profits and damages, reasonable attorneys’ fees and costs, treble
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`damages, and an order for destruction pursuant to 15 U.S.C. §§ 1116, 1 117, 1118, and 1125.
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`STATE TRADEMARK DILUTION AND INJURY TO BUSINESS REPUTATION
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`UNDER MASS. GEN. LAWS ch. 110H § 13
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`COUNT V:
`
`47.
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`PUMA repeats and incorporates by reference the allegations contained in
`
`paragraphs 1 through 46 above as though fully set forth in this claim for relief.
`
`48.
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`K—Swiss’ acts within Massachusetts as described in this complaint are in violation
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`ofMAss. GEN. LAWS ch. 110H § 13.
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`49.
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`K—Swiss’ violations ofMAss. GEN. LAWS ch. 1 10H § 13 caused PUMA
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`substantial damages in Massachusetts in an amount to be determined at trial.
`
`A
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`COUNT VI:
`STATE UNFAIR AND DECEPTIVE TRADE PRACTICES
`UNDER MASS. GEN. LAWS ch. 93A
`1-11
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`50.
`
`PUMA repeats and incorporates by reference the allegations contained in
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`paragraphs 1 through 49 abov