Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA335406 Filing date: 03/03/2010 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92052133 Party Defendant Harry and David Correspondence Harry and David Address P.O. BOX 712 Medford, OR 97501 UNITED STATES Submission Motion to Suspend for Civil Action Filer's Name Steven E. Klein Filer's e-mail [email protected], [email protected], [email protected], tm- [email protected] Signature /Steven E. Klein/ Date 03/03/2010 Attachments Mot to Suspend.pdf ( 73 pages )(2751003 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the Matter of Trademark Registration No. 1159530 For the mark FRUIT-OF-THE-MONTH CLUB
______MR. NERRY B. PATHAK ) ) Petitioner, ) ) v. ) Cancellation No. 92052133 ) HARRY AND DAVID ) ) Registrant. ) ______)
REGISTRANT’S MOTION TO SUSPEND FOR
CIVIL ACTION AND PARALLEL PROCEEDING
Harry and David (“Registrant”) respectfully submits Registrant’s Motion To Suspend for
Civil Action and parallel proceeding because Registrant and an individual believed to be a sibling and/or affiliate of Petition are parties to a civil action and a Board inter partes proceeding which may both have a bearing on Cancellation No. 92052133 (the “Cancellation”).1 This
Motion is made pursuant to 37 CAR § 2.117 and Section 510 of the Trademark Trial and Appeal
Board Manual of Procedure (“TBMP”). Registrant attempted to obtain Petitioner’s consent to this motion, but received no response.
1 Registrant’s answer to the Petition for Cancellation is not due until April 10, 2010. Nothing herein is intended to waive, and Registrant expressly reserves, all challenges and defenses it may have to the Petition and the allegations contained therein.
1 REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4852464.1 0061715-00016 PENDING CIVIL ACTION
On February 11, 2009, Registrant filed a Complaint against Mr. Anshu B. Pathak for trademark infringement, unfair competition and cyber squatting in the United States District
Court for the District of Oregon, Case No. CV09-3013-CL (the “Civil Action”). The Complaint alleges, among other things, Anshu Pathak’s infringement of the FRUIT-OF-THE-MONTH
CLUB mark that is the subject of Registrant’s U.S. Reg. No. 1159530. A copy of the Complaint is attached hereto as Exhibit 1.
On July 7, 2009, Anshu Pathak filed an Answer to Complaint with Affirmative Defenses
(the “Answer”) in the Civil Action. The Answer sets forth denials and affirmative defenses based on many of the same allegations that Petitioner asserts in the Petition as grounds for cancellation, including an allegation that Registrant’s U.S. Reg. No. 1159530 is invalid for genericness. A copy of the Answer is attached hereto as Exhibit 2.
PENDING INTER PARTES PROCEEDING
On February 22, 2010, Anshu Pathak commenced Cancellation No. 92052111 by filing a
Petition to Cancel Registrant’s U.S. Reg. No. 1159530 with the Board. A copy of the Petition in
Cancellation No. 92052111 is attached hereto as Exhibit 3.
On February 25, 2010, Registrant filed a motion to suspend Cancellation No. 92052111 based on the potentially overlapping issues between the Civil Action and Cancellation No.
92052111. A copy of the Motion to Suspend (without exhibits) is attached hereto as Exhibit 4.
RELATIONSHIP WITH INSTANT PROCEEDING
On February 25, 2010, “Mr. Nerry B. Pathak” commenced this Cancellation No.
92052133. The address for Nerry Pathak set forth in the Petition is the same as the address of record listed for Anshu Pathak in both the Civil Action and Cancellation No. 92052111. Nerry
2 REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4852464.1 0061715-00016 Pathak is alleged to engage the same online fruit business as Anshu Pathak, albeit under different domain names. Nerry Pathak also purportedly executed the proof of service attached to the
Answer filed by Anshu Pathak in the Civil Action. See Exhibit 2. In the Civil Action, Anshu
Pathak has represented to Registrant that Anshu and Nerry Pathak are brothers.
The allegations of Nerry Pathak’s Petition here and Anshu Pathak’s petition in
Cancellation No. 92052111 are substantially identical.
ARGUMENT
It is well-settled that suspension of a Board proceeding pending the final determination of a civil action is appropriate even if the civil case may not be dispositive of the Board case, so long as the ruling will have a bearing on the rights of the parties in the Board case. See Martin
Beverage Co. Inc. v. Colita Beverage Company., 169 USPQ 568, 570 (TTAB 1971).
The same rules applies to pending inter partes proceedings before the Board. Cf. The Tamarkin
Co. v. Seaway Food Town Inc., 34 USPQ2d 1587, 1592 (TTAB 1995). To the extent that a civil action in a federal district court involves issues in common with those in a proceeding before the Board, the decision of a federal district court may be binding upon the Board, while the decision of the Board is not binding upon the court. See, for example, Goya Foods Inc. v.
Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950 (2d Cir.1988); TBMP § 510.02(a).
There need not be an identity of the parties for suspension to be appropriate. See Argo &
Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366 (TTAB 1975) (issuing order of suspend based on state court action between applicant and third party to determine ownership of applicant’s mark); see also NY-Exotics, Inc. v. Exotics.com, Inc., Cancellation No. 92040976,
2004 TTAB LEXIS 246, at *8 (TTAB 2004) (not precedential) (Board has discretion to suspend
3 REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4852464.1 0061715-00016 proceedings pending the final determination of a civil action where only one of the parties is involved).
Registrant respectfully requests that this Motion be granted because resolution of the claims and defenses in the Civil Action and in Cancellation No. 92052111 will have a bearing on
Petitioner’s claims that Registrant’s U.S. Reg. No 1159530 is invalid for genericness and/or fraud. Indeed, to the extent there are common issues between the Civil Action and this proceeding, the district court’s determinations may be binding on the Board.
Moreover, it appears that this Cancellation was commenced in a thinly veiled attempt to circumvent the motion to suspend filed by Registrant in Cancellation No. 92052111.2 Indeed, given the identity of allegations and issues and the clear coordination between Anshu and Nerry
Pathak, it appears that to the extent that Nerry Pathak exists, he is affiliated with and/or working in conjunction with Anshu Pathak. Accordingly, suspension until final determination of the
Civil Action and Cancellation No. 92052111 is appropriate.
DATED: March 3, 2010 Respectfully submitted,
By: /Steven E. Klein/______Steven T. Lovett Steven E. Klein STOEL RIVES LLP 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 (503) 224-3380
Attorneys for Registrant
2 The ESTTA Tracking Number for Registrant’s Motion to Suspend (ESTTA334131) in Cancellation No. 92052111 falls earlier in sequence, and presumably in time, then the Tracking Number assigned to Nerry Pathak’s Petition (ESTTA334256).
4 REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4852464.1 0061715-00016 CERTIFICATE OF SERVICE
I hereby certify that I served the foregoing Motion To Suspend for Civil Action on the following-named persons on the date indicated below by mailing with postage prepaid to said persons a true copy thereof, contained in a sealed envelope, addressed to said person at their last- known address indicated below:
Mr. Nerry B Pathak 25517 Los Cabs Drive Moreno Valley, CA 92551 and by forwarding a PDF copy via e-mail to said person at [email protected].
DATED: March 3, 2010
STOEL RIVES LLP
By: /Steven E. Klein/______Steven T. Lovett Steven E. Klein STOEL RIVES LLP 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 (503) 224-3380
Attorneys for Registrant
5 REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4852464.1 0061715-00016 EXHIBIT 1 TRADEMARK
Steven T. Lovett, OSB No. 910701 [email protected] Brad S. Daniels, OSB No. 025178 ORIGINAL [email protected] STGEL RIVES LLP 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 Telephone: (503) 224-3380 Facsimile: (503) 220-2480
Robert E. Bluth, OR Bar No. 902111 [email protected] Harry and David 2500 S. Pacific Highway Medford, OR 97501 Telephone: (541) 864-2525 Fax: (541) 864-2885
Attorneys for Plaintiff Harry and David
UNITED STATES DISTRICT COURT DISTRICT OF OREGON
[MEDFORD DIVISION] CV'09 .. 3013- ~kl" HARRY AND DAVID, an Oregon Civil Action No. corporation,
Plaintiff, COMPLAINT FOR TRADEMARK INFRINGEMENT, vs. UNFAIR COMPETITION, AND CYBERSQUATTING ANSHU PATHAK, an individual, dba Organic Fruit ofthe Month Club, also dba Brentwood Trading Group, also dba Premiwn Enterprises,
Defendant.
1. This is a textbook case ofcybersquatting and trademark predation. Defendant
Anshu Pathak ("Pathak") has registered multiple knockoffdomain names that imitate Harry and
David's famous FRUIT-OF-THE-MONTH CLUB® trademark. He also uses confusingly
COMPLAINT - Page 1 Portlnd3-1656437.1 0061715-00001 similar versions ofthat Harry and David trademark to mislabel his own services, victimizing consumers who mistake his goods for genuine FRUIT-OF-THE-MONTH CLUB brand goods and services. Harry and David brings this action to force Defendant to cease his infringing acts and account for his infringing conduct.
2. Harry and David makes the allegations set forth in this Complaint through undersigned counsel, upon knowledge with respect to Plaintiffand its own acts, and upon information and beliefas to all other matters.
THE PARTIES
3. Harry and David (sometimes referred to herein as "Plaintiff") is a nationally famouS premier direct marketing, e-commerce, and retail company operating over 140 stores nationwide. One ofHarry and David's best known and most successful offerings is its "FRUIT-
OF-THE-MONTH CLUB" mail order services, which has provided a multiplicity ofdelicious foods to customers new and old for over seventy years.
4. Harry and David is a corporation organized and existing under the laws ofthe
State ofOregon, with its principal place ofbusiness at 2500 S. Pacific Highway, Medford
Oregon 97501.
5. Defendant Pathak is a resident ofCalifornia.
6. Defendant Pathak resides at 25517 Los Cabos, Moreno Valley, California.
Under Defendant Pathak's direction, ownership and control, businesses operating as "Organic
Fruit ofthe Month Club," "Premium Enterprises" and "Brentwood Trading Group" have infringed Harry and David's trademark rights as set forth herein.
COMPLAINT - Page 2 Portlnd3-1656437.I0061715-00001 JURISDICTION
7. This action arises under the Trademark Laws ofthe United States, 15 U.S.C. §
1051 et seq. and related state statutes and the common law. This Court has jurisdiction under the provisions of28 U.S.C. §§ 1331, 1338(a) and (b), and 15 U.S.C. § 1121. Supplemental jurisdiction over the causes ofaction under state law is proper as substantially related to those causes ofaction over which this Court has original jurisdiction, pursuant to 28 U.S.C. § 1367.
8. Alternatively, this Court has diversity jurisdiction pursuant to 28 U.S.c. § 1332.
The matter in controversy between Plaintiff and Defendant exceeds the sum or value of$75,000, exclusive ofinterest or costs, and is between citizens ofdifferent States.
9. Defendant Pathak has used (and continues to use) "Fruit OfThe Month Club" and confusingly similar terms as would-be trademarks for goods and services he offers customers, including customers in this judicial District.
10. Defendant Pathak markets his infringing goods and services in this District and elsewhere in the United States in competition with Harry and David.
11. This action arises in material part from actions expressly aimed at this forum and causing harm here, including, in particular, in Jackson County.
12. Defendant Pathak has been aware ofHarry and David's FRUIT-OF-THE-
MONTH CLUB® goods since before he began deliberately infringing Harry and David's tradename and trademark rights. The brunt ofthe harm suffered by Harry and David from
Defendant's infringing acts is suffered in this forum, and Defendant knew that such harm was likely to be suffered in this forum when he infringed Harry and David's rights.
COMPLAINT - Page 3 Portlnd3-1656437.\ 0061715-00001 GENERAL ALLEGATIONS
13. PlaintiffHarry and David provides FRUIT-OF-THE-MONTH CLUB® goods and services in commerce in this forum and elsewhere in the United States.
14. Defendant has used "FRUIT OF THE MONTH" and/or "FRUIT OF THE
MONTH CLUB" to provide goods and provide services in competition with Harry and David's
FRUIT-OF-THE-MONTH CLUB® products and services in this forum and elsewhere in the
United States. Defendant's use of"FRUIT OF THE MONTH" and "FRUIT OF THE MONTH
CLUB" is likely to cause confusion among consumers in the United States, including in this
District.
15. Defendant's infringing activities are targeted at the same class ofconsumers who purchase genuine FRUIT-OF-THE-MONTH CLUB® goods and services.
16. Harry and David's ownership offederal trademark registrations ofits FRUIT-OF-
THE-MONTH CLUB® Mark is a matter ofpublic record.
17. The table below summarizes three ofHarry and David's federal trademark registrations (referred to collectively as ''the FRUIT-OF-THE-MONTH CLUB Registrations"):
Mark Registration Number Goods/Services and Reg. Date
Reg. 386,023 Fresh Fruits-Namely, Pears and Fruit-of·the-Mon~ Club (March 25, 1941) Grapes
fresh, dried and candied fruits, FRUIT-OF-THE-MONTH CLUB Reg. 905,212 fruit preserves, unshelled nuts, (Dec. 29, 1970) cheese, candy, and gift packages containing one or more ofthe listed items Reg. 1,159,530 Mail Order Services in the Field of FRUIT-OF-THE-MONTH CLUB (June 30, 1981) Food Items
COMPLAINT - Page 4 Portlnd3-1656437.l 0061715-00001 18. Registration 386,023 is valid and subsisting, and has not been canceled.
19. A copy ofUnited States Trademark Registration 386,023 is attached as Exhibit 1.
20. Registration 386,023 constitutes primafacie evidence ofthe validity ofthe registered mark, and ofHarry and David's ownership ofsaid registration and mark.
21. Registration 386,023 is incontestable pursuant to 15 U.S.c. § 1065.
22. Registration 905,212 is valid and subsisting, and has not been canceled.
23. A copy ofUnited States Trademark Registration 905,212 is attached as Exhibit 2.
24. Registration 905,212 constitutes prima facie evidence ofthe validity ofthe registered mark, and ofHarry and David's ownership ofsaid registration and mark.
25. Registration 905,212 is incontestable pursuant to 15 U.S.C. § 1065.
26. Registration 1,159,530 is valid and subsisting, and has not been canceled.
27. A copy ofUnited States Trademark Registration 1,159,530 is attached as Exhibit
3.
28. Registration 1,159,530 constitutes prima facie evidence ofthe validity ofthe registered mark, and ofHarry and David's ownership ofsaid registration and mark.
29. Registration 1,159,530 is incontestable pursuant to 15 U.S.C. § 1065.
30. As a result ofHarry and David's continuous and (but for infringement) exclusive use ofits distinctive FRUIT-OF-THE-MONTH CLUB® trademark, and the commercial success ofits goods and services provided under this Mark, Harry and David has achieved significant brand name recognition in the FRUIT-OF-THE-MONTH CLUB® Mark.
31. Harry and David's FRUIT-OF-THE-MONTH CLUB® trademark has come to represent the valuable goodwill and reputation ofHarry and David in the market for high quality goods and services including those identified in the FRUIT-OF-THE-MONTH CLUB®
COMPLAINT - Page 5 Portlnd3-1656437.10061715-00001 Registrations listed above. As a result, the consuming public has come to expect that such goods and services marketed and sold under Harry and David's FRUIT-OF-THE-MONTH CLUB®
Mark, or confusingly similar marks, are associated with Harry and David.
32. Harry and David also owns valuable rights in the tradename and trademark
"Harry and David." Representative federal trademark registrations are summarized in the following table:
Mark Registration Goods/Services Number and Reg. Date Reg. 400,009 fresh fruits - namely HARRY ..DAVID (February 9, nectarines, grapes, and pears 1943) fresh, preserved, and candied fruit; nuts, shelled and Reg. 793,717 unshelled; candies; confections- fl6Mf4W!~~ (August 3, namely, petits fours, sugar plums; 1965) smoked and cured meats and fowl; cakes; fruit flavored syrups; cheeses; and barbecue sauce. mail order services in the Reg. 1,529,034 field offruits, candies, plants, and 1IaIwtf1lld1JaDid (March 7, 1989) other gifts
Each ofthese Registrations is valid and subsisting, is incontestable, and has not been canceled.
33. Defendant Pathak owns and operates the following Infringing Domain Names:
a) FruitsoftheMonthClub.com
b) OrganicFruitoftheMonthClub.com
c) 1-800-0rganicFruitoftheMonthClub.com
COMPLAINT - Page 6 Portlnd3-1656437.10061715-00001 Defendant Pathak has also operated and continues to operate websites on the World Wide Web
at each ofthe Infringing Domain Names, and also at the following locations:
d) BrentwoodTradingGroup.com/fruitclub.html
e) 1800KidsMall.com
f) OrganicFruitClub.com
g) stores.yahoo.net (e.g., http://yhst- 461451872529ll.stores.yahoo.net/orfrcl.html)
The websites referenced in this paragraph are sometimes collectively referred to herein as the Infringing Websites.
34. Each ofthe Infringing Websites is interactive and designed to conduct e- commerce with customers in this District and elsewhere in the United States.
Infringement at www.FruitsoftheMonthClub.com
35. Anshu Pathak registered the domain name Fruit~oftheMonthClub.com in plain imitation ofHarry and David's registered FRUIT-OF-THE-MONTH CLUB trademark.
Basically, Anshu Pathak simply added an "s" to "Fruit," dropped the hyphens, and registered the resulting counterfeit version ofthe mark. This was done in a bad faith, deliberate effort to register a domain that was not just confusingly similar, but practically identical, to Harry and
David's famous FRUIT-OF-THE-MONTH CLUB® mark.
36. At the time Defendant Pathak registered Fruit.s.oftheMonthClub.com he was well aware ofHarry and David's FRUIT-OF-THE-MONTH CLUB® registrations.
37. Defendant Pathak has used the phrase "Fruit ofthe Month Club" on the website at www.FruitsoftheMonthClub.com to advertise infringing goods and services to customers in this
District and elsewhere in the United States, including as shown in the following screen captured
September 22,2008:
COMPLAINT - Page 7 PortJnd3-1656437.1 0061715-00001 r. Orgdnic Fruit Of The Month CLub - Windows Internet rxplorer ~ ~~, 0:;:1 ~ I~ httP;II_.fruit5~fthemon,_th_d_Ub_,CO_mJ,,-- _ Eile ~dit :!Iew Favorites Iools !:!elp -_.._------~----_--:::.-=---'--_..::.-~--_.;;:-=-=_.,-_.. ~ ._-- --- ifI ¢'i' 1.~gan~FruitOfTheMo,nthOil i-] . _
T Month· Exotic Fruit Of 8 Month - Exotic Fruit Of FA ~;: The Month Club The Month Club .~":- Membership Membership k ~ ~' 1\ It IkJ. 9 Month - Exotic Fruit Of 10 Month - Exotic Fruit Of f;~l, The Month Club The Month Club ~§, Membership Membership ~\
~.~.~
"." .. ,~: c 11 Month - Exotic Fruit 12 Month - Exotic Fruit Of The Month Club Of The Month Club Membership Membership
Not associated with Harri and D8'.tid's Fruit of the Month Club. Ansr'lls Organic 30(1 100% Exotic fruit dub packs and ships all our orders.l·lone of our orders are pacKed bi outside packers and shippers like Harry alid Oa'Yid,INhere to ouy fruit club, fruit ,~ft~,~ GUARANTEEQ month, fruit afthe month club, fruit dubs, month1i fruit club, organic ffllit ofthe month , ::~' ..' :.. clu/), exotic fruit ,)f1hEl m,)nlh club, organic fruits. e~olic fruits, 1ropl';31 fruits. rambu1an, cherimoya, dmgon fruit. gift fruit. frui.t gift basl'el gourmet frLlii gift basH:!. ALPHONSO M~NGOES IN HAY A:REf·.. alphanso mango, alphonso mangoes In 3,Juthern california, alphonso mangos, .3Ipl'lansG mango usa custom allow, atpi',onso fn3ngo in tl:;', alphOnso mango in usa. alptwnso mangoes. buv alp~IGnSO rnangoes. alplionso mango nyc. on '::;OOgI6 USN, AOL Yahoo and ",Ita ',"isla?
.... ~..
COMPLAINT - Page 8 Portlnd3-1656437.10061715·00001 38. The purported disclaimer positioned at the end ofthe webpage displayed at
FruitsoftheMonthClub.com as ofSeptember 22, 2008, contains text that reads as follows:
Not associated with Harry and David's Fruit of the Month Club. Anshu's Organic and Exotic fruit club packs and ships all our orders. None of our orders are packed by outside packers and shippers like Harry and David. Where to buy fruit club, fruit ofthe month, fruit of the month club, fruit clubs. monthly fruit club, organic fruit of the month club, exotic fruit ofthe month club, organic fruits, exotic fruits, tropical fruits, rambutan, cherimoya, dragon fruit, gift fruit, fruit gift basket, gourmet fruit gift basket, ALPHONSO MANGOES IN SAY AREA, alphanso mango, alphonso mangoes in southern california, alphonso mangos, alphanso mango usa custom allow, alphonso mango in us. alphonso mango in usa, alphonso mangoes, buy alphonso mangoes, alphonsQ mango NYC, on Google, MSN, AOL, Yahoo and Alta Vista?
This purported disclaimer is inaccurate and misleading. Indeed, it appears to have been made in bad faith and only aggravates and exacerbates Defendant's other infringing acts.
39. Defendant Pathak. continues to use the phrase "Fruit ofthe Month Club" to advertise infringing goods and services to customers in this District and elsewhere in the United
States, including as shown in the following screens captured February 9, 2009:
O;:~:'''' ,t!,t&tp:~.f~ItlllIttld.b.~ _ 'p.
"fIG tdl ~ ~fS 100II ~ ~. .~ ~. f.i:~~:~~':~~~:'~:;"'::=:~~'=-~~'''~C---''''''''''''··_ ~ ----~.~ .. H _" •__•••••••••_·__.H. •••••_-_••_-
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51 Montn - tMlk'MOf to Mon1Pl. fmtk: rnlll Or Tile ~ontnCtub the UorIm CJuo Uclt\Olf.Np· Memb«1lnlp
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a...... - BeG' gf-the menlh dub ChgFgl., ·pith! month ,14b Exqlts rou' gllh, mgnth .::Iyh ~ .lBrwl,-BgIIOllpS Nyl' pflh! IOQmb -Iyb QrganS y.gltlb&p qflh, DlOO!h Glyb Mut diM rno(!lh -':W.t. Sluts pfth, mpn1h clyb ~ ~ Chi'" 1!f!b0 mgotb c!tJb Win. gOtH! moo", club Omante fry" at the mpmh 'lUg Exotic. tun pI the IDQnth "Iub Wa9YM Bte' fi:gm Japto. ~
.• "'t.~'I: :!<.,..,..•.• '? ' .. .,:,.: !'."'~~", -.1;-" "1":'" __ I.o":,,,:~!> "'.t.'!'. ~,,·C~"l ~~:;!",!,",:., ~.~ '
COMPLAINT - Page 9 Portlnd3-1656437.I.0061715-00001 1';' Orr:.anlc ~tUlt Of lh~ Month LllJb WlOdOW\ tnlNClcl Fr.fllor~r r.~_ t~~ O:~,· ;t:.httv./_.f~:~~__._. .. .. _.. __. ._._. "'i .... .:< ..jP". flo ~dIt. ~'" ,_ rod< ~'" 'Ql • W
!'t~"'th P~flliU,,; Organic; Fruit of ·rh~ l'1onrll Club '..;.;,,,,r,, ~-("'~""'''":'~::'~.'l !'fJ:!::'¥",.... ~ C'~~':I: N" ..·ci :2~:".ve:; ~.~~ t Gty.r:o.: .>.~.,. ='e:'t'·s :...~. ,j ~_ ?~?" .....;: .':'£Pt ~ ~~'( Ii" "Y.~~'l.!::. 0:',w.Q'@!> ';1,M'~ :- ":'·~a:"~ '~::l!!;c'!o: . :!:':'~t "j 1~~:O9"";':: '.,11' frl,ltl:) .:..,,';;:;~, ~ -O;'~"'!:l!; ;'t:.l<':.1 • Ml);;f,~C;'1 ~P:~·:.l~! .':.~=tt~'·,!':e· :. ::'~;;ll: :.~. t-:i ~ f. ~Jil~ ':··~;~.Ci!f ':: )"';.H:':': N'). Fru:fr.• !.l!&r !I'~'::~ ; '.;':;<1::'::;,01 'N:ht:m.t'llt'· I;: o:·w ... :~>~ ."0:j:.lol-5 :~~!;::!:,~:~r ~~ Gr,;","'':- ~,.-: ~·n.Hl?
1 l1&nth • 6 0roan1c Fnllts of tt.e "onth 0 ..... S4.tbscripUon R.eouler price: 539.99 .s.le Pt'ice-~ &29.99' L Mor:tfl.•. !L.org-ll,,~f;'\Ut1of the Mor.th Club Sulncriptien POFOll St4rt: i~~nu_ar,. Vi
Infringement at 1-800-0rganicFruitoftheMonthClub.com, International Fruit ofthe Month Club.com, and OrganicFruitoftheMonthClub.com
40. Anshu Pathak also registered and is using the domain names
OrganicFruitoftheMonthClub.com, IntemationaIFruitoftheMonthClub.com, and 1-800-
OrganicFruitoftheMonthClub.com in bad faith imitation ofHarry and David's FRUIT-OF-THE-
MONTH CLUB® trademark.
41. The websites at www.OrganicFruitoftheMonthClub.com. 1-800- www.OrganicFruitoftheMonthClub.com, and www.OrganicFruitClub.com use the same infringing content as www.FruitsoftheMonthClub.com.
COMPLAINT - Page 10 Portlnd3-16S6437.1 0061715-00001 Infringement at BrentwoodTradingGroup.com, 1800kidsmall.com, and stores.yaboo.net
42. Defendant Pathak has also used websites located at
BrentwoodTradingGroup.com, 1800kidsmall.com, and stores.yahoo.net to offer goods and
services in competition with Harry and David.
43. The following screen capture illustrates Defendant's infringement at the
BrentwoodTradingGroup.com website:
(... OrgdMlC hUll ot the Month Club Window's InternN flCplorcr ~1i6lrgj 0:·· f~nt~:!~.b",~wOO
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COMPLAINT - Page 11 Portlnd3-1656437.1 0061715-00001 44. The following screen capture illustrates Defendant's infringement at the
1800kidsmall.com website:
~ SraSoon.:aJ Ml~ I rUllo' the Month Club 11 Month Membership W10(J()vj:S Inlc-rncl L:t.plort::r f~- ~J~I q~~.~~~!~i~;;~~'t~!~~=-::;~:::_::~~;::::;: . ~. f.le ~ !)OW _os 10015 !:!Oil> ~...... ,;; UH'MittI' Accessories COMPLAINT - Page 12 Portlnd3-1656437.l 0061715·00001 45. The following screen capture illustrates Defendant's infringement at Yahoo Stores: .'_- Oreamc frwf Club WindOWi Int~rnet [xp:lofer ~;~ 1)( i.:l" ht!p:/Iyhst-i61'!S16n529II. EIIe E,dil 'flOw F!f\'ate' lools !:1e~ ~. ~ ~J" OI'9oric Ffut Olb . ;: Orpnlc Slellkl< Product Description '.V';!(0m~ 10 C'l"g3nIC Frun 0; Tne !;tomn Clut:!. OI!}aJllc Fnl~! Of 'Ole Moran Clut) m~mtlerst!lp l~ 13 P6rte~t gift "t.)f 3(j~ ":'CC3Sfcm O!~,'",nl~ Fnm Of Tne t1Slnth ClUt.lI~ fjr:signed tlo1 (Jr'J'~iu~ 1rfst, ~nd fin€st .apj.3nl::a!l~· grt;·~n trt.J.lts to OUI l·i'lC~mbefs. -~. ifs :':l~1 to 5.end Or~,an}c Fruits ea-eh month - allittal\es IS 8 Sln91e:. ~fdBr enClOs.e a tf'lrae'. SIX nine I)r!NQiil6 m~n:rj rr<~rill"Je(ehip H"I ihe Or~~ml.c. Fr.ui1 \fftn6 MonU"l Club. Your rnemb03fSfilP Mil stJrt ill the month i"U join. N .'iOll ~3fi specif( a monlh ro 5t311 Gift Mr,%~ . ." '''- Organic frvit of tIw 'Aonlh -~._ Orgonlc Fruit 01 the Month Club • ..'".."' .. ... ,;;... GoIJ~Gin.onrle Club· 519.99 Per Momh 519.95 Per Month ,,': •• MMlIlClUbs . : •. •• lIo~'S Dey-Gllt • .:. . •• SleIlk.8 . , •• falllllfs Day s:;Ift • . •• Steaks .;; . Organic Fruit Gold Club ;:tR~fDr~1~'-_ •• ~.Ullrieiloillll 'It' diJ,.~.. , TropicIl llUil of thellonth _ Jumb<> fruit oflhe Month Club ~; Club ~ • Mill Frvitollhe Month Club Mini season" Fruit ollhe Month frultoflhe Month Club Club 18OOfruftClub..com Infringement Using Keywords and Sponsored Links 46. Defendant also bids on Plaintiffs FRUIT OF THE MONTH and FRUIT-OF- THE-MONTH CLUB® trademarks, and confusingly similar phrases, as "keyword triggers" on search engines such as Google, as illustrated by the partial screen capture taken on September 221 2008: COMPLAINT - Page 13 Portlnd3-1656437.10061715-00001 Coogle iFrun-of2he-M~- ______. .11 Search I ~;: Web Results 1 - 10 of about 35,600 fur f Exotic Fruit Club $ 39.99 Sponsored Links Organicfruitclub,com TireU of Orange. Apple and Pear fruit clubs? Please "isit us. Clicking on this "Sponsored Link" caused one ofDefendant Pathak's infringing websites to be displayed, as shown in the screen capture below: r:: Orgamc Fruit Of ~he Month Club Wmdows Internet F.plor.r GJI6"!5 ®r§tOttc c:fmil ®/'CIto cUdnlk 6'tllb...-. TOll Free 1.866.234.8499 . ;;...... ; Mit1iEJc.0Il<: fruit 01 '..i''!c!C~ir:~ ~~ ~r.st'!\i os: E.(ot!,: .and Organic riUlt ·::1 !h"3 The'fIOl1l1l Club . J.:-v:mth Club. Cu. Fruit Cillos ..3fE- deslgnE-a 1c pr.:r.·iC!t unique and r-3iE fruits IIJ au!" moa!Ttt~.rs tf!)m aft ,~'i!;1 ."- CI.;o··lAiDiOrgaiWc fruit tnE- -Hl)rh:L tr~ e3S~' to send frUIt ~In "ad'! tnQn1h . 311 n {.3kSi: is ~ ,) Pr~O'~ ~ln&lie order Cho.1se 3 trUEFJ $i~.. nine ::;r t,-.;eIVe c' . fl1llfOfTheMottlfl mClnth mo?mherst'lIP mOll' fn.!it ¢f1ti~ H'ii:mth ClUbS Club' YQl,Jr t'nll;01ee:snjp 'hill St3rt In the mooUl iOU Nin. ryf J_bo~frnit ,,"Ii C3n specif~o a month to 5t::irto (iii!. M€"ssaoii'\9 1$ OfThe~CJub a::-3:Jla"l.e 'feu will '·la....e an Opth)!"tunlti-°"to ),Snt>3r:;l 7rft massage auring the ctled:" ~L.'t pn:.cess in "Cc.mmi'f"I! ~fruitllllCllIIiit S~ctiOll' OfThe MoothClUb Wni.seaSOOJlf~ Or Tile uOiiIiiClub . '. Pfernium ·SeasoMi 1 PJonll1 - E~oUc fruit Of The fIUiOfJ~ Mo8iI\ Month Club Membe.-.hip !'-.. , ...... , Club Juml!o ~froIt dfThe~1Jb ExoticHi.I!ofllle • MOnlhtlU!l 3 Month - botic Fruit Of The 4 IdOnIh • botic FnJit Of The ~ UonlI1 CluI> Membership UonlIl Club Membership ~ EJcolic flUlls Org/lnlc. NUIS Of The UomIlClub tobldoy, September 22, 2006 COMPLAINT - Page 14 Portlnd3-1656437.1 0061715·00001 47. As ofFebruary 9, 2009, Defendant continues to purchase Plaintiffs federally registered trademark as a keyword from Google, in an effort to divert customers searching for Plaintiffs genuine goods and services to Defendant's competing website. 48. Defendant's use ofPlaintiff's trademarks as keyword triggers is use in commerce that is likely to cause customer confusion or mistake, and to deceive consumers. 49. Even customers who, upon arriving at Defendant's Infringing Websites, may realize that they are not at a website that sells genuine Harry and David products, have been initially confused and deceived into visiting the Defendant's competing websites. Defendant thus seeks (and receives) a direct material benefit from the use ofPlaintiffs marks as keyword triggers, such as receiving more visits from customers for products being sold in competition with Plaintiffs products. Defendant's Infringement Has Been Deliberate 50. Anshu Pathak has continued to use "FRUIT OF THE MONTH" and "FRUIT OF THE MONTH CLUB" to provide infringing goods and services in competition with Harry and David's FRUIT-OF-THE-MONTH CLUB® goods and services, after and despite receiving actual notice ofHarry and David's federal trademark registrations No. 386,023, No. 905,212, and No. 1,159,530. 51. The terms "FRUIT OF THE MONTH," "FRUITS OF THE MONTH CLUB," and "FRUIT-OF-THE-MONTH CLUB" are practically identical. They are certainly phonetically similar and similar in appearance and in overall commercial impression. 52. Consumers familiar with Plaintiffs FRUIT-OF-THE-MONTH CLUB® products are likely to assume incorrectly that the goods and services marketed and sold using the Infringing Websites originated with Harry and David, or that there is some type ofaffiliation COMPLAINT - Page 15 Portlnd3-\656437.\ 0061715-00001 between Harry and David and the Defendant, or that Harry and David has sponsored, endorsed, or approved ofthe infringing goods and services. 53. The aforesaid acts ofDefendant have caused and, unless restrained and enjoined by this Court, will continue to cause irreparable damage, loss and injury to Harry and David, to an extent not yet ascertained. COUNT I (Infringement ofFederally Registered Trademarks) 54. Harry and David repeats and realleges each and every allegation contained in the preceding paragraphs, with the same force and effect as ifset forth fully herein. 55. This cause ofaction arises under Section 32 ofthe Lanham Act, 15 U.S.C. § 1114, for infringement ofregistered trademarks. 56. Defendant's unauthorized use ofthe terms "FRUIT OF THE MONTH" and "FRUIT OF THE MONTH CLUB" in connection with the sale, offering for sale, distribution and advertising ofcompeting goods and services has caused and is likely to cause confusion, mistake or deception as to the origin ofDefendant's goods and services and to mislead consumers into believing that Defendant's products originate from, are affiliated with, or are sponsored, authorized, approved or sanctioned by Harry and David. 57. Defendant's activities infringe Harry and David's trademark rights in violation of § 32(1) ofthe Lanham Act, 15 U.S.C. § 1114(1). 58. Defendant's aforesaid acts ofinfringement have caused Harry and David to sustain monetary damage, loss and injury, to an extent not yet ascertained. 59. Defendant has engaged and continues to engage in these activities knowingly and willfully, so as to justify the assessment oftreb1e damages as an exceptional case under 15 COMPLAINT - Page 16 Portlnd3-165643 7.1 0061715.-0000 I U.S.C. § 1117. Defendant's acts ofinfringement have been willful, intentional, in bad faith, and with full knowledge ofthe federal FRUIT-OF-THE-MONTH CLUB trademark registrations listed above. 60. Defendant's acts ofinfringement, unless enjoined by this Court, will continue to cause Harry and David to sustain irreparable damage, loss and injury, for which Harry and David has no adequate remedy at law. COUNT II (Federal Trademark Infringement - Section 43(a) False Designation of Origin, False Representation, Unfair Competition) 61. Harry and David repeats and realleges each and every allegation contained in the preceding paragraphs, with the same force and effect as ifset forth fully herein. 62. This cause ofaction arises under § 43(a) ofthe federal Lanham Act, 15 U.S.C. § 1125(a), for false designation oforigin, description and false representation, unfair competition and false advertising. 63. Harry and David possesses valuable common law rights to its HARRY AND DAVID and FRUIT-OF-THE-MONTH CLUB marks and the goodwill appurtenant thereto. 64. Defendant has misused the "Harry and David" trademark and tradename on his infringing websites. Defendant has unfairly competed with Harry and David, and has otherwise traded offthe reputation and goodwill ofHarry and David and Harry and David's products to promote Defendant's own goods and services. 65. Defendant's unauthorized use ofHarry and David's trademarks has caused Defendant's goods and services to enter into interstate commerce with a trademark designation that falsely describes and represents that their products originate from, are affiliated with or COMPLAINT - Page 17 Portlnd3-1656437.10061715-oo001 connected with, or are licensed, sponsored, authorized, approved or sanctioned by Harry and David and/or genuine products from Harry and David. 66. Defendant has made unauthorized use ofone or more terms confusingly similar to Plaintiffs famous tradename and trademarks in a manner that violates § 43(a) ofthe Lanham Act (15 U.S.C. § II25(a». 67. Defendant's acts offalse designation oforigin, description and false representation, unfair competition and false advertising have caused Harry and David to sustain monetary damage, loss and injury, to an extent not yet ascertained. 68. Defendant's acts offalse designation oforigin, false description and representation, unfair competition and false advertising, unless enjoined by this Court, will continue to cause Harry and David to sustain irreparable damage, loss and injury, for which Harry and David has no adequate remedy at law. COUNT III (Trademark Infringement and Unfair Competition - Oregon State Law) 69. Harry and David repeats and realleges each and every allegation contained in the preceding paragraphs, with the same force and effect as if set forth fully herein. 70. Harry and David is the owner ofState ofOregon Trademark Registration T9612, for the mark FRUIT-OF-THE-MONTH CLUB, registered March 16, 1962, for "Gift boxes and baskets offresh fruit in season, with or without dried fruit, candies, spices, cheeses and other foods." 71. Harry and David is also the owner ofState ofOregon Trademark Registrations S- 39978 and S-40012 for the marks FRUIT OF THE MONTH and FRUIT-OF-THE-MONTH CLUB, respectively. Oregon Trademark Registration S-39978 was registered June 18,2007, for COMPLAINT - Page 18 Portlnd3-1656437.1 0061715-00001 "mail order services in the field offood items." Registration S-40012 was registered July 12, 2007, for the same services. 72. Defendant has misused the "Harry and David" trademark and tradename on his infringing websites. 73. Defendant's unauthorized acts set forth herein constitute counterfeiting, trademark infringement and unfair competition as proscribed by ORS 647.095 and the common law ofthe State ofOregon. 74. Defendant's acts oftrademark infringement and unfair competition have caused Harry and David to sustain monetary damage, loss and injury, to an extent not yet ascertained. 75. Defendant's acts oftrademark infringement and unfair competition, unless enjoined by this Court, will continue to cause, irreparable damage, loss and injury to Harry and David, for which Harry and David has no adequate remedy at law. COUNT IV (Cyberpiracy ~ 15 U.S.C. Section 1125(d)(1)(A» 76. Harry and David repeats and realleges each and every allegation contained in the preceding paragraphs, with the same force and effect as ifset forth fully herein. 77. Defendant Pathak has registered, trafficked in, and used domain names that are identical or confusingly similar to or dilutive ofHarry and David's "FRUIT-OF-THE-MONTH CLUB" trademark (including at least FruitSoftheMonthClub.com, IntemationalFruitoftheMonthClub.com, OrganicFruitoftheMonthClub.com, and 1-800- OrganicFruitoftheMonthClub.com), with bad faith intent to profit from his predatory acts. COMPLAINT - Page 19 Portlnd3-1656437.10061715-00001 78. Harry and David's "FRUIT-OF-THE-MONTH CLUB" trademark has been famous since long before the times at which Defendant Pathak registered each Infringing Domain Name. 79. Defendant's cyberpiracy has caused Harry and David to sustain monetary damage, loss and injury, to an extent not yet ascertained. Unless enjoined by this Court, Defendant will continue to cause, irreparable damage, loss and injury to Harry and David, for which Harry and David has no adequate remedy at law. PRAYER FOR RELIEF WHEREFORE, PlaintiffHarry and David respectfully prays for judgment as follows: 1. That Defendant -- and each agent, servant, employee, attorney and other person in active concert or participation with Defendant who receives actual notice or knowledge ofthis injunction by personal service or otherwise -- be preliminarily and permanently enjoined: a. From directly or indirectly using, preparing, producing, manufacturing, ordering, printing, publishing, rendering, distributing, selling, offering for sale, advertising, promoting or otherwise exploiting any goods using the term "FRUIT OF THE MONTH CLUB," or any other term similar to Plaintiffs FRUIT OF THE MONTH or FRUIT-OF-THE-MONTH CLUB® Mark so as to be likely to cause confusion, deception or mistake; b. From otherwise continuing to infringe upon Plaintiff's FRUIT-OF-THE-MONTH CLUB®Mark; c. From further using in connection with any goods or services, any false or deceptive designation or description, whether by words or other symbols or representations, which suggest or imply any relationship with Plaintiffand/or Plaintiff's goods and services; COMPLAINT - Page 20 Portlnd3-1656437.1 0061715-00001 d. From further unlawfully trading upon and appropriating the goodwill and the business reputation ofPlaintiffand/or Plaintiffs products; e. From misusing Plaintiffs trademarks or tradename; f. From publishing false statements regarding Harry and David; g. From further engaging in any acts ofunfair competition against Plaintiffand/or Plaintiffs products; h. From in any way inducing, encouraging, aiding, abetting or contributing to any of the aforesaid acts. 2. That Defendant immediately take all actions necessary to transfer ownership and control ofeach infringing domain name registration to Harry and David, including at least the following domain registrations: a) FruitsoftheMonthClub.com b) IntemationalFruitoftheMonthClub.com c) OrganicFruitoftheMonthClub.com d) 1-800-0rganicFruitoftheMonthClub.com 3. That Defendant file with this Court and serve on Plaintiff in accordance with 15 U.S.C. § 1116, within 30 days after service on Defendant ofsuch injunction (or such extended period as this Court may direct), a report in writing and under oath, setting forth in detail the manner and fonn in which it has complied with this injunction. 4. That in accordance with 15 U.S.C. § 1118, Defendant deliver up to Plaintiff for destruction or other disposition all goods, labels, signs, prints, packages, wrappers, advertisements, business fonns, letterheads and promotional materials bearing or displaying the "FRUIT OF THE MONTH" and "FRillT OF THE MONTH CLUB" name, or any other tenn COMPLAINT - Page 21 Portlnd3-1656437.l 0061715-00001 similar to Plaintiffs FRUIT-OF-THE-MONTH CLUB® Marks so as to be likely to cause confusion, deception or mistake, in Defendant's possession, custody or control (and to recall for such purpose any such products and materials in the possession, custody or control ofany other person), as well as any reproduction, counterfeit, copy or colorable imitation thereof. 5. That Defendant be required to immediately account to Plaintiff for all gains, profits and advantages derived from Defendant's wrongful acts. 6. That Plaintiffbe awarded monetary reliefarising out ofDefendant's false designation oforigin, trademark infringement, unfair competition, and other unlawful acts, in an amount to be determined according to proofs, 7. That, should Plaintiff elect statutory damages under 15 U.S.C. § 1117(d), the Court award statutory damages to Plaintiffin the amount of$1 00,000 for each Infringing Domain Name. 8. That for Defendant's violation ofOregon law (ORS 647.105), Defendant pay Plaintiffthe greater of$10,000 or the sum of(a) an amount not to exceed three times the profits derived by the defendant from the wrongful manufacture, use, display or sale; and (b) an amount not to exceed three times all damages suffered by the owner because ofthe wrongful manufacture, use, display or sale. 9. That because ofthe willful nature ofDefendant's infringement, and pursuant to 15 U. S.C. § 1117, the Court enter judgment for Plaintifffor three times the amount ofsaid damages, declare that this case is an "exceptional case" under 15 U.S.C. § 1117, and order Defendant to pay Plaintiffs costs and disbursements in this action, together with Plaintiffs reasonable attorneys' fees. COMPLAINT - Page 22 Portlnd3-1656437.l 0061715-00001 10. That Plaintiffhave such other and further reliefas the Court may deem just and proper. Dated: February 11,2009 Steven . Lovett, OSB No. 910701 [email protected] Brad S. Daniels, OSB No. 025178 [email protected] STOEL RIVES LLP 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 Telephone: (503) 224-3380 Facsimile: (503) 220-2480 Robert E. Bluth, OR Bar No. 902111 [email protected] Harry and David 2500 S. Pacific Highway Medford, OR 97501 Telephone: (541) 864-2525 Fax: (541) 864-2885 Attorneys for PlaintiffHarry and David COMPLAINT - Page 23 Portlnd3-1656437.1 0061715-00001 Registered Mar. 25, 1941 Trade-Mark 386,023 Republished~ under the Act or 1946, Oct. 26~ 1948, by llarry and David~ Medrord~ Oreg. Affidavit under Section 8 accepted. Affidavit under Seotion 15 reoeived, Nov. 20, 1953. UNITED STATES PATENT OFFICE H~ Bretbers, also do_ budDeII5 .. Holmes Bro•. Beat Creek Onlhants, Medlord, Oree. Act of Felmlal'T ZO, 19115 APPliclation September Ill. 19U. 8eJ'Ial No. 486,218 Fruit-of-the-Month Club STATEMENT To 411 wlWm ii mav concern: goocts, or to the packasea conta1ning. the same Be 1t known t.hat Bolme8 Brother&, al:oo doing by placing thereon .. printed label on which the bUSIness lI$ Holmes Bros. Bear creek Orchards, a trade-mark 1li shown, firm domlcUed in Medford, Orecon. doing buslQeM The word "Fruit" 1a dl.sclalmed for rell'istratiou at Medford,. Qregon. and composed of the follow purposes apart from the mark as shown. with res Ing members B:arJT L. Bolmell and DaVid H. ervation of applicant's common. law rl&:bts in the Holmes, both dtlzens of the UDited states. has prem1lles. adopted and uJed the trade-mark shown in the The undersigned hereby a~lnts MidI.. Rich aeeompanying drawing. for X"RBBH FRUITS- ards and Murray, a firm compOlIccl of Lee W. NAMELY, PEARS AND GRAPES-in Clasa 46. MidI.. Brayton Q. Riche.rds. and Ale>l:B.nder W. Poods and Ingred1ent.s of foods and presen~ here Kurray, whose POStal address is 53'7 6. Dearoorn wIth fl.ve speclm~ or faeldmUea showing the Street, Ch1caIlO. I1Unofs, ita attorneYll, to prosecute trade-mark IIoIl nctually used by appl1cant upon this application for reg1stration, With full powers t.he EOOdJI, and requests that the same be reilts ot substitution and revocation, and to make al tered 1n the United states Patent Olflce In ac terations and amendment.s thereln, to reCeive the cordance with the act of FebrUary 20, 1905, as cert111cate. and to transact all ousinesa in the amended. Patent 01l10e connected thereWith. The traae-mark baa been continuously used and applied. to NJd 1l'oods tn applicant'. ous!l:leas HOLMES. BROTHEBS, since 1936. BY DAVlD H, HOL'MES, The trade-mark 15 awUed or a.tIlxed to the A Member of the Fu-m. ElH1BIT,-~_._-.( PAGfi-OFL...- hit. Cls.: 29. 30 aDd 31 Prior U.s. a.: 46 Rea. No. 905,Z12 UDited States Patent aadTrademark Office Registered Dec.. 19, 1970 10YarR-.l R_WII1 Appro'f'CCl Scp. 24, 1990 TRADEMARK PRINCIPAL REGISTER FRUlT-QF-'J'HE.MONTH CLUB HARRY AND DAvm (OREGON COR. SERVES. UNSHELLED NUTS, CHEESE, PORAnON) [TEA.J CANDY, AND GIFT PACKAGES P. O.BOX 712 CONTAINlNG ONE OR MORE OF THE MEDFORD, OR 97501 LlSTBO ITEMS, IN CLASS 46 (INT. CLS. 29,30 AND 31). OWNER OF U.S. REO. NOS. '86,023. FIRST USE ()"'{)-1936; IN COMMERCE 706,089 AND 111,802. ()4.1936. FOR: FllBSH, [CANNED,] DlUBD AND CANDIE.D FRUITS, FRUIT PRE- SBR. NO. 71-3-42,637, FILED 11-4-1969. In testimony whereof I -hove henurrto set my hand and CDIISed the UQ/ of The Patent and Trademark Office to be af.Ibced on Nav. 6. 1990. COMMISSIONER. OF PATENTS AND TRADE.MAR.KS EXHIBIT ?, PAGE-L-OF ;z,. 905,212,' United·States Patent Office Registered Dec. 29, 1970 PRINCIPAL REGISTER Trademark Scr. No. 342.,637, mod No... 4, 1969 FRUIT-OFwTHE-MONTH CLUB Harry and David (Oregon corpoflltion) F0r: FRESH. CANNED, DRIeD AND CANDlED lkar Creek Orchard. FRUITS, FRUIT PRESBRVES. UNSHE.llED NUTS, Medford, Oreg. 97S01 CHF...ESE, TEA, CANDY, AND GIFT PACKAGES CONTAINING ONE OR MORE OP THE LISTED ITEMS,;II CLASS 46 (INT. CLS. 29,30, and 31). Fiest use at least as early as 1936; in commeru at lea.! liS ~arJy a. 1936. Owner of Reg. Nos. 386,023, 706,089, nnd 8 i1 ,802. P. P. CRALNICK, Examiner EXHIBIT ~ PAGE .". OF~ Int. Cl.: 42 Prior U.S. Cl.: 101 !leg. No. 1,159,530 United States Patent and Trademark Office RePstered JUIL. 30. 1981 SERVICE MARK Principal Reeister' FRUIT.o()F·mE~MONTH CLUB, Harry and David (Oregon corporation) Por, MAIL ORDER SERVICES IN THE Bear Creek Orchards FIELD OF FOOD ITEMS, in CLASS 42 (U.S. CI. Mcdfotd. Otego 97S01 101). Pint Wle 1936; in commerce 1936. Owner of U.S. Reg. NO&. 386,023, 905.212 and others. Su. No. 228,291, filed Aug. 20, 1979. HENRY S. ZAK, Primary Examiner EXHIBn:~3 _ PAGE , OFL EXHIBIT 2 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 1 of 27 1 Anshu Pathak 25517 Los Cabos Drive, 2 Moreno valley, CA 92551 Phone 951-801-2112 3 Fax 951-801-2125 E-Mail:[email protected] 4 5 UNITED STATES DISTRICT COURT 6 DISTRICT OF OREGON 7 MEDFORD DIVISION 8 "I.L~...... ,YAND DAVID, An Oregon ) Case No.CV 09-3013 CL ) 9 ) ANSWERTOCO~LMNT~TH AFFIRMATIVE DEFENSES 10 Plaintiff ~ ) 11 v. ) 12 SHU PATHAK., an individual d/b/a Organic~ ) 13 mit OfThe Month Club, also dba Brentwood ) ) 14 rading Group, also dba Premium Enterprises ) ) 15 Defendants. ) ) 16 ) ) 17 ) ) 18 19 Defendant Anshu Pathak (hereinafter "ANSHUII) in Answer to PlaintiffHarry and David's 20 (hereinafter "HARRY") Complaint, as follows: 21 1. Defendant is without knowledge or information sufficient to form a belief 22 as to the truth ofthe allegations ofparagraph 1 and therefore denies same. 23 a. Plaintiffhas concealed the truth in their complaint that, Plaintiffowns, 24 Trade mark, Registration number 3262655, for "HARRY AND DAVID" 25 under IC 035 for online retail store services. Page 10f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 2 of 27 b. As per United States Patent and Trade mark Office, Registration number 1 386023,905212, 1159530 "HARRY" does not have Trade Mark for 2 "FRUIT-OF-THE-MONTH CLUB" under IC 035 for online retail store 3 services. 4 c. As per United States Patent and Trade mark Office, "HARRY" has not filed application for Word Mark "FRUIT-OF-THE-MONTH CLUB" 5 under IC 035 for online retail store services as ofJune 29, 2009. 6 d. As per United States Patent and Trade mark Office, Registration number 7 386023, "HARRY" has Trade Mark for "FRUIT-OF-THE-MONTH 8 CLUB" under IC 031. US 046. e. As per United States Patent and Trade mark Office, Registration number 9 905212, has Trade Mark for "FRUIT-OF-THE-MONTH CLUB" under IC 10 029 030 031. US 046. G & S: FRESH, [ CANNED, ] DRIED AND 11 CANDIED FRUITS, FRUIT PRESERVES, UNSHELLED NUTS, 12 CHEESE, [TEA,] CANDY, AND GIFT PACKAGES CONTAINING 13 ONE OR MORE OF THE LISTED ITEMS. f. As per United States Patent and Trade mark Office, Registration number 14 1159530 "HARRY" has Trade Mark for "FRUIT-OF-THE-MONTH 15 CLUB" under IC 042. US 101. G& S: Mail Order Services in the Field of 16 Food Items. FIRST USE: 19360000. FIRST USE IN COMMERCE: 17 19360000. g. "ANSHU" has on-line retail store offering USDA Certified Organic Fruits 18 named as ..www.organicfruitofthemonthc1ub.com.. since December 10, 19 2002. 20 h. "HARRY" was not offering USDA Certified Organic Fruits to their 21 customers through their mail order catalogue in 2002. 22 1. "HARRY" was not offering USDA Certified Organic Fruits to their customers through their on-line retail store in 2002. 23 J. "ANSHU" has not confused "HARRY'S" mail order customers through 24 his on-line retail store since December 10, 2002. 25 Page 20£ 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 3 of 27 k. "ANSHU" is not offering fruits or fruit clubs by mail order catalogues like 1 "HARRY'S". 2 1. "HARRY" has Trade Mark for mail order business for "FRUIT-OF-THE 3 MONTH CLUB. 4 m. Internet or on-line stores were not in existence when "HARRyit applied for his Trade Mark" for "FRUIT-OF-THE-MONTH CLUB. 5 n. As ofJune 29, 2009 "HARRY" has not filed application for Trade Mark 6 under IC 035 for online retail store services for "FRUIT-OF-THE 7 MONTH CLUB. B o. As ofJune 29,2009 "HARRY" has not provided any documents showing that customers were confused, and made a mistakes and joined 9 "ANSHU'S" organic fruit ofthe month club. 10 2. Defendant is without knowledge or information sufficient to form a belief 11 as to the truth ofthe allegations ofparagraph 2 and therefore denies same. 12 3. Defendant is without knowledge or information sufficient to form a belief 13 as to the truth ofthe allegations ofparagraph 3 and therefore denies same. 14 4. Defendant admits the allegations ofparagraph 4. 15 16 5. Defendant denies the allegations ofparagraph 5. 17 6. Defendant is without knowledge or information sufficient to form a beliefas to the truth 18 ofthe allegations ofparagraph 6 and therefore denies the same. 19 7. Defendant is without knowledge or information sufficient to form a beliefas to the truth 20 ofthe allegations ofparagraph 7 and therefore denies the same. 21 8. Defendant is without knowledge or information sufficient to form a beliefas to the truth 22 ofthe allegations ofparagraph 8 and therefore denies the same. 23 9. Defendant is without knowledge or information sufficient to form a beliefas to the truth 24 ofthe allegations ofparagraph 9 and therefore denies the same. "Fruit ofthe month club" 25 Page 30f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 4 of 27 is a generic term and "HARRY" does not have Trade Mark for "Fruit ofthe month club". 1 "HARRY" has a stylized Trade Mark for limited purposes for ItFRUIT-OF-THE 2 3 MONTH CLUB" 4 10. Defendant is without knowledge or information sufficient to form a belief as to the truth 5 ofthe allegations ofparagraph 10 and therefore denies the same. 6 11. Defendant is without knowledge or information sufficient to form a beliefas to the truth 7 ofthe allegations ofparagraph 11 and therefore denies the same. 8 12. Defendant is without knowledge or information sufficient to form a belief as to the truth 9 ofthe allegations ofparagraph 12 and therefore denies the same. 10 13. Defendant is without knowledge or information sufficient to form a belief as to the truth 11 ofthe allegations ofparagraph 13 and therefore denies the same. 12 14. Defendant is without knowledge or information sufficient to form a beliefas to the truth 13 ofthe allegations ofparagraph 14 and therefore denies the same. 14 15. Defendant is without knowledge or information sufficient to form a beliefas to the truth 15 16 ofthe allegations ofparagraph 15 and therefore denies the same. 17 16. Defendant admits the allegations ofparagraph 16. "HARRY" has Trade Marks in 18 approved "Fonts andStyle" for "limitedpurposes" only issued by United States Patent 19 and Trade Mark Office. "ANSHU" has not used "HARRY'S" Trade Marks in approved 20 "Fonts andStyle" for "limited purposes" issued by United States Patent and Trade 21 Mark Office. "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit of 22 the month" for his online business. United States Patent and Trade Mark Office has not 23 issued "fruit ofthe month club" and IIfruit ofthe month" Trade Marks to 'IHARRY" for 24 their online business or for unlimited purposes. 25 Page 40f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 5 of 27 17. Defendant admits the allegations ofparagraph 17. "HARRy ll has Trade Marks in 1 approved IlFonts andStyle" for "limitedpurposes" only issued by United States Patent 2 and Trade Mark Office. "ANSHU" has not used IlHARRY'S" Trade Marks in approved 3 4 "Fonts andSty/e" for Illimited purposes" issued by United States Patent and Trade 5 Mark Office. "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit of 6 the month" for his online business. United States Patent and Trade Mark Office has not 7 issued "fruit ofthe month clubll and "fruit ofthe month" Trade Marks to "HARRY" for 8 their online business or for unlimited purposes. 9 18. Defendant admits the allegations ofparagraph 18. "HARRY" has Trade Marks in 10 approved IlFonts andSty/ell for "limitedpurposesII only issued by United States Patent 11 and Trade Mark Office. "ANSHU" has not used IlHARRY'SIl Trade Marks in approved 12 "Fonts andStyle" for "limitedpurposes" issued by United States Patent and Trade 13 Mark Office. "ANSHU" has used "generic term", Ilfruit ofthe month club" and Ilfruit of 14 the month" for his online business. United States Patent and Trade Mark Office has not 15 16 issued Ilfruit ofthe month club" and Ilfruit ofthe month" Trade Marks to IlHARRY" for 17 their online business or for unlimited purposes. 18 19. Defendant admits the allegations ofparagraph 19. IlHARRYIl has Trade Marks in 19 approved "Fonts andStyle" for Illimited purposes" only issued by United States Patent 20 and Trade Mark Office. "ANSHUII has not used "HARRY'S" Trade Marks in approved 21 "Fonts and Stylell for Illimited purposesll issued by United States Patent and Trade 22 Mark Office. IIANSHU" has used "generic term", "fruit ofthe month club" and "fruit of 23 the monthll for his online business. United States Patent and Trade Mark Office has not 24 issued "fruit ofthe month club" and "fruit ofthe month" Trade Marks to "HARRY" for 25 Page 50f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 6 of 27 their online business or for unlimited purposes. 1 20. Defendant admits the allegations ofparagraph 20. "HARRY" has Trade Marks in 2 approved "Fonts and Style" for "limited purposes" only issued by United States Patent 3 4 and Trade Mark Office. "ANSHU" has not used "HARRY'S" Trade Marks in approved 5 "Fonts and Style" for "limited purposes" issued by United States Patent and Trade ll ll 6 Mark Office. "ANSHU" has used "generic tenn , lIfruit ofthe month club and "fruit of 7 the month" for his online business. United States Patent and Trade Mark Office has not 8 issued "fruit ofthe month clubll and lIfruit ofthe month" Trade Marks to "HARRY" for 9 their online business or for unlimited purposes. 10 21. Defendant admits the allegations ofparagraph 21. "HARRY" has Trade Marks in 11 approved "Fonts andStyle" for "limitedpurposes" only issued by United States Patent 12 and Trade Mark Office. 13 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStylell 14 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 15 ll 16 "ANSHU" has used "generic tenn , "fruit ofthe month club" and "fruit ofthe 17 month" for his online business. 18 United States Patent and Trade Mark Office has not issued "fruit ofthe month 19 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 20 unlimited purposes. 21 22. Defendant admits the allegations ofparagraph 22. "HARRY" has Trade Marks in 22 approved "Fonts and Style" for "limitedpurposes" only issued by United States Patent 23 and Trade Mark Office. 24 "ANSHUlI has not used lIHARRY'S" Trade Marks in approved lIFonts and Style" 25 Page 60f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 7 of 27 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 1 "ANSHU" has used llgeneric term!" "fruit ofthe month club" and "fruit ofthe 2 3 month" for his online business. 4 United States Patent and Trade Mark Office has not issued "fruit ofthe month ll ll 5 club and "fruit ofthe month Trade Marks to "HARRYll for their online business or for 6 unlimited purposes. 7 23. Defendant admits the allegations ofparagraph 23. "HARRY" has Trade Marks in 8 approved llFonts andStyle" for "limitedpurposesll only issued by United States Patent 9 and Trade Mark Office. 10 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 11 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 12 "ANSHU" has used "generic term", "fruit ofthe month clubll and "fruit ofthe 13 month" for his online business. 14 United States Patent and Trade Mark Office has not issued llfruit ofthe month 15 16 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 17 unlimited purposes. 18 24. Defendant admits the allegations ofparagraph 24. "HARRY" has Trade Marks in 19 approved "Fonts andStyle" for "limited purposes" only issued by United States Patent 20 and Trade Mark Office. 21 "ANSHU" has not used "HARR~S" Trade Marks in approved "Fonts andStyle" 22 for "limited purposes" issued by United States Patent and Trade Mark Office. 23 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 24 month" for his online business. 25 Page 70f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 8 of 27 United States Patent and Trade Mark Office has not issued "fruit ofthe month 1 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 2 3 unlimited purposes. 4 25. Defendant admits the allegations ofparagraph 25. "HARRY" has Trade Marks in 5 approved "Fonts andStyle" for "limitedpurposes" only issued by United States Patent 6 and Trade Mark Office. 7 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 8 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 9 "ANSHU" has used "generic term'\ "fruit ofthe month club" and "fruit ofthe 10 month" for his online business. 11 United States Patent and Trade Mark Office has not issued "fruit ofthe month 12 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 13 unlimited purposes. 14 26. Defendant admits the allegations ofparagraph 26. "HARRY" has Trade Marks in 15 16 approved "Fonts andStyle" for "limitedpurposes" only issued by United States Patent 17 and Trade Mark Office. 18 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 19 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 20 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 21 month" for his online business. 22 United States Patent and Trade Mark Office has not issued "fruit ofthe month 23 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 24 unlimited purposes. 25 Page 80f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 9 of 27 27. Defendant admits the allegations ofparagraph 27. "HARRY" has Trade Marks in 1 approved "Fonts andStyle" for "limitedpurposes" only issued by United States Patent 2 3 and Trade Mark Office. 4 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 5 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 6 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 7 month" for his online business. 8 United States Patent and Trade Mark Office has not issued "fruit ofthe month 9 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 10 unlimited purposes. 11 28. Defendant admits the allegations ofparagraph 28. "HARRY" has Trade Marks in 12 approved "Fonts andStyle" for "limited purposes" only issued by United States Patent 13 and Trade Mark Office. 14 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts and Style" 15 16 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 17 "ANSHU' has used "generic term", "fruit ofthe month club" and "fruit ofthe 18 month" for his online business. 19 United States Patent and Trade Mark Office has not issued "fruit ofthe month 20 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 21 unlimited purposes. 22 29. Defendant admits the allegations ofparagraph 29. "HARRY" has Trade Marks in 23 approved "Fonts andStyle" for "limited purposes" only issued by United States Patent 24 and Trade Mark Office. 25 Page 90f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 10 of 27 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 1 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 2 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 3 4 month" for his online business. 5 United States Patent and Trade Mark Office has not issued "fruit ofthe month 6 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 7 unlimited purposes. 8 30. Defendant is without knowledge or information sufficient to form a beliefas to the truth 9 ofthe allegations ofparagraph 30 and therefore denies the same. 10 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 11 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 12 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 13 month" for his online business. 14 United States Patent and Trade Mark Office has not issued "fruit ofthe month 15 16 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 17 unlimited purposes. 18 31. Defendant is without knowledge or information sufficient to form a beliefas to the truth 19 ofthe allegations ofparagraph 31 and therefore denies the same. 20 "HARRYIl has Trade Marks in approved "Fonts andSty/e" for "limited 21 purposes" only issued by United States Patent and Trade Mark Office. 22 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 23 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 24 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 25 Page l(bf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 11 of 27 month" for his online business. 1 United States Patent and Trade Mark Office has not issued "fruit ofthe month 2 3 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 4 unlimited purposes. 5 32. Defendant admits the allegations ofparagraph 32. "HARRY" has Trade Marks in 6 approved "Fonts andStyle" for "limitedpurposes" only issued by United States Patent 7 and Trade Mark Office. 8 "HARRY" has concealed the truth in paragraph 32, that they have Trade mark for 9 "Harry and David" serial number 78677802 for IC 035. US 100 101 102. G & S: retail 10 store services, online retail store services, and mail order services in the field ofgifts, 11 home decor items, foods, and flowers. FIRST USE: 20060315. FIRST USE IN 12 COMMERCE: 20060315 13 "HARRY" stated in their application to United States Patent and Trade mark 14 office that they first time used the word "Harry and David" in commerce [world wide 15 16 web] on March 15,2006 for serial number 78677802. 17 "HARRY" has not filed application for "FRUIT-OF-THE-MONTH CLUB" under 18 IC 035. US 100 101 102 for online retail store services as ofJune 29, 2009. 19 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 20 for "limited purposes" issued by United States Patent and Trade Mark Office. 21 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 22 month" for his online business. 23 United States Patent and Trade Mark Office has not issued "fruit ofthe month 24 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 25 Page Ibf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 12 of 27 unlimited purposes. 1 33. Defendant admits that he owns domain names stated in paragraph 33, but denies that he i 2 infringing Trade Marks ofIlHARRYIl."HARRY" has Trade Marks in approved IlFonts 3 4 andStyle" for "limitedpurposes" only issued by United States Patent and Trade Mark 5 Office. 6 "ANSOO" has not used "HARRY'SII Trade Marks in approved "Fonts andStyle" 7 for "limitedpurposesII issued by United States Patent and Trade Mark Office. 8 "ANSHUIl has used Il generic term", Ilfruit ofthe month club" and Ilfruit ofthe 9 month" for his online business. 10 United States Patent and Trade Mark Office has not issued "fruit ofthe month 11 club" and "fruit ofthe month" Trade Marks to "HARRYIl for their online business or for 12 unlimited purposes. 13 34. Defendant admits that he operates web sites stated in paragraph 34, but denies that he is 14 infringing Trade Marks of"HARRY". "HARRyll has Trade Marks in approved "Fonts 15 16 andStyleII for IllimitedpurposesII only issued by United States Patent and Trade Mark 17 Office. 18 "ANSHU Il has not used II HARRY'S" Trade Marks in approved "Fonts and Stylell 19 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 20 "ANSHU" has used Ilgeneric term", "fruit ofthe month club tl and "fruit ofthe 21 monthtl for his online business. 22 United States Patent and Trade Mark Office has not issued Ilfruit ofthe month 23 clubll and "fruit ofthe monthll Trade Marks to "HARRY" for their online business or for 24 unlimited purposes. 25 Page 1:bf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 13 of 27 35. Defendant admits as stated in paragraph 35, that he registered the domain name 1 ..www.fruitsofthemonthclub.com.. on September 6, 2002 and has been doing business on 2 the web since last 6 years which is known to Plaintiff. 3 4 Plaintiffcannot apply for Trade Mark under IC 35 for "FRUIT-OF-THE-MON 5 CLUB" for online store or sales due to the presence ofDefendant's web site 6 ..www.fruitsofthemonthclub.coml1 7 "HARRYI1 has Trade Marks in approved "Fonts and Style" for IIlimited 8 purposes" only issued by United States Patent and Trade Mark Office. 9 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts and Style" 10 for "limited purposes" issued by United States Patent and Trade Mark Office. 11 "ANSHU" has used "generic term", "fruit ofthe month club" and I1fruit ofthe 12 month" for his online business. 13 United States Patent and Trade Mark Office has not issued "fruit ofthe month 14 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 15 16 unlimited purposes. 17 36. Defendant is without knowledge or information sufficient to form a beliefas to the truth 18 ofthe allegations ofparagraph 36 and therefore denies the same. 19 37. Defendant admits as stated in paragraph 37, that he has used the phrase "Exotic Fruit of 20 the month club" as per the screen shot. of"www.fruitsofthemonthclub.com". 21 Plaintiffdoes not offer "Exotic Fruit ofthe month club" like defendant to his 22 customers. 23 Defendant has clearly stated on his website as per the screen shot that he is not 24 associated with Plaintiffto avoid confusion on the world wide web. 25 Page 1:bf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 14 of 27 "HARRY" has Trade Marks in approved "Fonts andStyle" for "limited 1 purposes" only issued by United States Patent and Trade Mark Office. 2 3 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" 4 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 5 "ANSHU" has used "generic tenn", "fruit ofthe month club" and "fruit ofthe 6 month" for his online business. 7 United States Patent and Trade Mark Office has not issued "fruit ofthe month 8 club" or for unlimited purposes. 9 38. Defendant admits as stated in paragraph 38, that he has made a disclaimer in good faith at 10 the end ofthe web page stating that he is not associated with the Plaintiff. 11 Defendant has personally seen boxes packed for Plaintiffby H&L ofLos 12 Angeles, which can be verified by subpoena. 13 Defendant has been informed by an employee ofMelissa's ofLos Angeles that 14 they are shipping fruits and fruit baskets on behalfofPlaintiff, which can be verified by 15 16 subpoena. 17 Plaintiffdid not inform Defendant that Defendant's disclaimer is inaccurate or 18 misleading to the public before filing this lawsuit. 19 39. Defendant admits as stated in paragraph 39, that he has used the phrase "Exotic Fruit of 20 the month club" as per the screen shot captured on February 9, 2009. 21 Plaintiffdoes not offer "Exotic Fruit ofthe month club" like defendant to his 22 customers. 23 Defendant has been offering "organic fruit ofthe month club" since 2002 on the 24 world wide web. 25 Page Itbf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 15 of 27 "HARRY" has Trade Marks in approved "Fonts and Sty/e" for Illimited 1 purposes" only issued by United States Patent and Trade Mark Office. 2 "ANSHU' has not used "HARRY'S" Trade Marks in approved 3 "Fonts and Style" 4 for "limitedpurposes" issued by United States Patent and Trade Mark Office. 5 "ANSHU" has used "generic tenn", "fruit ofthe month club" and "fruit ofthe 6 month" for his online business. United States Patent and Trade Mark Office has not 7 issued "fruit ofthe month club" and "fruit ofthe month" Trade Marks to "HARRYIl for 8 their online business or for unlimited purposes. 9 40. Defendant admits as stated in paragraph 40, that he registered the domain name 10 •• www.organicfruitofthemonthclub.com.. on December 10, 2002 and has been doing 11 business on the world wide web since last 6 years which is known to Plaintiff. 12 Plaintiffwas not selling USDA certified organic fruits or was offering certified 13 organic fruits to his club members through his mail order catalogue or through his on line 14 web store in 2002. 15 16 Plaintiffhas not applied for Trade Mark under IC 35 for IIFRUIT-OF-THE 17 MONTH CLUB" for online store or sales as ofJune 26, 2009. 18 "HARRY" has Trade Marks in approved "Fonts and Style" fot "limited 19 purposes" only issued by United States Patent and Trade Mark Office. IlANSHU" has not 20 used "HARRY'S" Trade Marks in approved "Fonts andSty/e" for "limitedpurposes" 21 issued by United States Patent and Trade Mark Office. 22 "ANSHU" has used the word, "organic fruit ofthe month club" for his online 23 business selling USDA certified Organic Fruits. 24 United States Patent and Trade Mark Office has not issued "fruit ofthe month 25 Page 1!Df 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 16 of 27 club" and "fruit ofthe month" Trade Marks to "HARRY" for their online business or for 1 unlimited purposes. 2 3 41. Defendant is without knowledge or information sufficient to form a beliefas to the truth 4 ofthe allegations ofparagraph 41 and therefore denies the same. 5 Defendant registered ..www.organicfruitclub.com.. on December 10,2002 to offer 6 organic fruit club membership to the public on world wide web. 7 Defendant registered the domain name ..www.organicfruitofthemonthclub.com" 8 on December 10, 2002 and has been doing business on the world wide web since last 6 9 years which is known to Plaintiff. 10 Defendant registered ..www.I-800-organicfruitofthemonthclub.com.. on February 11 27,2007 to offer organic fruit club membership to the public on world wide web. 12 Plaintiffwas not selling USDA certified organic fruits or was offering certified 13 organic fruits to his club members through his mail order catalogue or through his on line 14 web store in 2002. 15 16 Plaintiffhas not applied for Trade Mark under Ie 35 for "FRUIT-OF-THE 17 MONTH CLUB" for online store or sales as ofJune 29,2009. 18 "HARRY" has Trade Marks in approved "Fonts andStyle" for "limited 19 purposes" only issued by United States Patent and Trade Mark Office. "ANSHU" has not 20 used "HARRY'S" Trade Marks in approved "Fonts andStyle" for "limitedpurposes" 21 issued by United States Patent and Trade Mark Office. 22 "ANSHU" has used the word, "organic fruit ofthe month club" for his online 23 business selling USDA certified Organic Fruits. 24 United States Patent and Trade Mark Office has not issued "fruit ofthe month 25 Page 100f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 17 of 27 clubll and Ilfruit ofthe monthll Trade Marks to IlHARRY" for their online business or for 1 unlimited purposes. 2 3 42. Defendant is without knowledge or information sufficient to form a beliefas to the truth 4 ofthe allegations ofparagraph 42 and therefore denies the same. n 5 Defendant registered nwww.brentwoodtradinggroup.com on November 18, 2004 6 to offer organic fruit club membership to the public on world wide web. 7 Defendant registered the domain name nwww.1800kidsmall.com.. on December 8 19,2004 and has been doing business on the world wide web since last 4 years which is 9 known to Plaintiff. 10 Plaintiffwas not selling USDA certified organic fruits or was offering certified 11 organic fruits to his club members through his mail order catalogue or through his on line 12 web store in 2002. 13 Plaintiffhas not applied for Trade Mark under IC 35 for 11 FRUIT-OF-THE 14 MONnI CLUBnfor online store or sales as ofJune 26, 2009. 15 II 16 "HARRY has Trade Marks in approved IIFonts andStyle" for nlimited 17 purposesll only issued by United States Patent and Trade Mark Office. "ANSHU" has not 18 used "HARRY'SII Trade Marks in approved IlFonts and Style" for IIlimited purposesn 19 issued by United States Patent and Trade Mark Office. 20 "ANSHU' has used the word, "organic fruit ofthe month club" for his online 21 business selling USDA certified Organic Fruits. 22 United States Patent and Trade Mark Office has not issued nfruit ofthe month 23 clubll and "fruit ofthe month II Trade Marks to IlHARRY" for their online business or for 24 unlimited purposes. 25 Page 10f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 18 of 27 43. Defendant admits as stated in paragraph 43, that he has used the phrase "Organic Fruit of 1 the month club". "6 Variety Fruit ofthe month club", "Exotic Fruit ofthe month club". 2 3 "Tropical Fruit ofthe month club" ."Mini Tropical Fruit ofthe month club", "Exotic Fruit 4 ofthe month club" as per the partial screen shot. of .. www.brentwoodtradinggroup.com... 5 Plaintiffdoes not offer tIOrganic Fruit ofthe month club". "6 Variety Fruit ofthe 6 month club". t1Exotic Fruit ofthe month club". 'Tropical Fruit ofthe month club"."Mini 7 Tropical Fruit ofthe month clubtl like defendant to his customers since 1999. 8 "HARRY" has Trade Marks in approved "Fonts andStyle" for "limited 9 purposes" only issued by United States Patent and Trade Mark Office. "ANSHU" has not 10 used "HARRY'S" Trade Marks in approved "Fonts andStyle" for "limitedpurposes" 11 issued by United States Patent and Trade Mark Office. 12 "ANSHUtI has used "generic term", "fruit ofthe month club" and "fruit ofthe 13 month" for his online business. United States Patent and Trade Mark Office has not 14 issued "fruit ofthe month clubtl and "fruit ofthe month" Trade Marks to "HARRY" for 15 16 their online business or for unlimited purposes. 17 44. Defendant admits as stated in paragraph 44, that he has used the phrase "Seasonal Fruit 0 tl 18 the month club" as per the partial screen shot. of"www.1800kidsmall.com • 19 Plaintiffdoes not offer t1Seasonal Fruit ofthe month club" with exotic fruits or 20 exotic fruits like defendant to his customers since 1999. 21 Plaintiffdoes not have Trade Mark for t1Seasonal Fruit ofthe month club" or 22 "Seasonal Fruit Club". 23 "HARRY" has Trade Marks in approved "Fonts andStyle" for "limited 24 purposes" only issued by United States Patent and Trade Mark Office. 25 Page 1a:>f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 19 of 27 "ANSHU" has not used "HARR~S" Trade Marks in approved "Fonts andStyle" 1 for"limited plll'poses" issued by United States Patent and Trade Mark Office on his web 2 3 site "www.1800kidsmall.com". 4 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 5 month" for his online business. United States Patent and Trade Mark Office has not 6 issued I1fruit ofthe month club" and "fruit ofthe month" Trade Marks to "HARRY" for 7 their online business or for unlimited purposes. 8 45. Defendant admits as stated in paragraph 45, that he has used the phrase 110rganic Fruit of 9 the month club" "Organic fruit gold club", "Exotic Fruit ofthe month club 11 , I1Tropical 10 Fruit ofthe month club", "Jumbo Fruit ofthe month club", "Mini Fruit ofthe month 11 l1 club , "Mix Fruit ofthe month club", "Mini Seasonal Fruit ofthe month club" and lIFruit 12 ll ofthe month club" as per the partial screen shot. of "Yahoo Stores • 13 Plaintiff does not offer "Seasonal Fruit ofthe month clubll with exotic fruits or 14 exotic fruits like defendant to his customers since 1999. 15 16 Plaintiffdoes not have Trade Mark for "Seasonal Fruit ofthe month club" or 17 "Seasonal Fruit Club". 18 Plaintiffdoes not have Trade Mark for "Exotic Fruit ofthe month club" or 19 I1Exotic Fruit Club". 20 Plaintiffdoes not have Trade Mark for 110rganic Fruit ofthe month clubl1 or 21 lIOrganic Fruit Club". 22 I1 23 lIHARRY has Trade Marks in approved "Fonts and Style" for I1limited 24 pllrposesll only issued by United States Patent and Trade Mark Office. 25 "ANSHU" has not used "HARRY'S" Trade Marks in approved "Fonts andStyle" Page 19:>£ 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 20 of 27 1 for "limited purposes" issued by United States Patent and Trade Mark Office on his web 2 site ..www.1800kidsmall.com... 3 "ANSHU" has used "generic term", "fruit ofthe month club" and "fruit ofthe 4 month" for his online business. United States Patent and Trade Mark Office has not 5 issued "fruit ofthe month club" and "fruit ofthe month" Trade Marks to "HARRY" for 6 their online business or for unlimited purposes. 7 46. Defendant admits as stated in paragraph 46, that he bids on "Fruit ofthe Month" and 8 "Fruit ofthe month club" key words on Google. 9 10 Defendant never bided on "Fruit-of-the-Month Club" on Google as per the 11 partial screen shot stated on Page 14 ofPlaintiffs complaint. 12 Plaintiffhas not filed lawsuit on Google as they are afraid ofGoogle. 13 Plaintiffor their counsels has not informed Google as ofJune 29, 2009 to not to 14 take bids on their Trade marks. 15 Google does not allow bids on "Trade Marks" on their platform as their policy. 16 "HARRY" has spent money on key words for bidding on competitor's "Trade 17 Marks" on Google and other search engines. 18 "HARRY" has Trade Marks in approved "Fonts andStyle" for "limited 19 purposes" only issued by United States Patent and Trade Mark Office. "ANSHU" has not 20 used "HARRY'S" Trade Marks in approved "Fonts and Style" for "limited purposes" 21 22 issued by United States Patent and Trade Mark Office. 23 "ANSHU' has bided on "generic term", "fruit ofthe month club" and "fruit of 24 the month" for his online business. 25 United States Patent and Trade Mark Office has not issued "fruit ofthe month Page 20:>f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 21 of 27 1 club" and "fruit ofthe month" Trade Marks to "HARRyn for their online business or for 2 unlimited purposes. 3 47. Defendant is without knowledge or information sufficient to form a beliefas to the truth 4 ofthe allegations ofparagraph 47 and therefore denies the same. 5 48. Defendant is without knowledge or information sufficient to form a belief as to the truth 6 ofthe allegations ofparagraph 48 and therefore denies the same. 7 49. Defendant is without knowledge or information sufficient to form a belief as to the truth 8 ofthe allegations ofparagraph 49 and therefore denies the same. 9 10 50. Defendant is without knowledge or information sufficient to form a beliefas to the truth 11 ofthe allegations ofparagraph 50 and therefore denies the same. 12 51. Defendant is without knowledge or information sufficient to form a beliefas to the truth 13 ofthe allegations ofparagraph 51 and therefore denies the same. 14 52. Defendant is without knowledge or information sufficient to form a beliefas to the truth 15 ofthe allegations ofparagraph 52 and therefore denies the same. 16 53. Defendant is without knowledge or information sufficient to form a belief as to the truth 17 ofthe allegations ofparagraph 53 and therefore denies the same. 18 RELIEF FOR COUNT I 19 54. Defendant realleges its responses to paragraphs 1 through 53 ofthis answer as ifset forth 20 in full. 21 22 55. Defendant denies the allegations ofparagraph 55. 23 56. Defendant denies the allegations ofparagraph 56. 24 57. Defendant denies the allegations ofparagraph 57. 25 58. Defendant denies the allegations ofparagraph 58. Page 2bf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 22 of 27 1 59. Defendant denies the allegations ofparagraph 59. 2 60. Defendant denies the allegations ofparagraph 60. 3 RELIEF FOR COUNT n 4 61. Defendant realleges its responses to paragraphs I through 60 ofthis answer as ifset forth 5 in full. 6 62. Defendant denies the allegations ofparagraph 62. 7 63. Defendant denies the allegations ofparagraph 63. 8 64. Defendant denies the allegations ofparagraph 64. 9 10 65. Defendant denies the allegations ofparagraph 65. 11 66. Defendant denies the allegations ofparagraph 66. 12 67. Defendant denies the allegations ofparagraph 67. 13 68. Defendant denies the allegations ofparagraph 68. 14 RELIEF FOR COUNT m 15 69. Defendant realleges its responses to paragraphs 1 through 68 ofthis answer as ifset forth 16 in full. 17 70. Defendant denies the allegations ofparagraph 70. 18 71. Defendant denies the allegations ofparagraph 71. 19 72. Defendant denies the allegations ofparagraph 72. 20 73. Defendant denies the allegations ofparagraph 73. 21 22 74. Defendant denies the allegations ofparagraph 74. 23 75. Defendant denies the allegations ofparagraph 75. 24 RELIEF FOR COUNT IV 25 76. Defendant realleges its responses to paragraphs 1 through 75 ofthis answer as ifset forth Page 22)f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 23 of 27 1 in full. 2 77. Defendant denies the allegations ofparagraph 77. 3 78. Defendant denies the allegations ofparagraph 78. 4 79. Defendant denies the allegations ofparagraph 79. 5 AFFIRMATIVE DEFENSES 6 For its affirmative defenses, Defendant alleges: 7 80. Plaintiffdoes not have any actionable claims against Defendant as Defendant has not 8 used "HARRY'S" Trade Marks in approved "Fonts andStyle" for "limitedpurposes" 9 10 issued by United States Patent and Trade Mark Office. 11 81. Plaintiff does not and cannot hold trademark rights in the generic phrases, such as "fruit 12 ofthe month club". Plaintiffdoes not have any actionable claims against Defendant. 13 82. Plaintiff's registrations at issue and claimed rights at issue show generic 14 phrases and PlaintifIhas no rights in said generic phrases. 15 83. Plaintiffs alleged Federal Reg. No. 386,023,0905212 and 1159530 is invalid for 16 genericness. 17 84. Plaintiffhas failed to join an indispensable party to the proceeding at hand, namely the 18 third party entity responsible for registration ofany supposed complained ofkeywords, 19 and relief cannot be afforded Plaintiff without the necessary joinder ofthis third party. 20 85. Plaintiffhas failed to join an indispensable party to the proceeding at hand, namely, 21 22 Google Inc; responsible for registration ofany supposed complained ofkeywords, 23 and reliefcannot be afforded Plaintiff without the necessary joinder ofthis third party. 24 86. To the extent that Defendant uses any variations ofthe generic phrases at issue, such use 25 constitutes fair use permitted under law. Page 2:bf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 24 of 27 1 87. Plaintiff. on information and belief, is guilty ofunclean hands in attempting to obtain an 2 equitable remedy on the account that, based upon information and belief, Plaintiffhas 3 itselfpreviously purchased and used trademarks ofcompetitor's [Hickory Farms and 4 Others] as keyword triggers for Plaintiff's advertising from Google, Yahoo, MSN, AOL 5 and others. 6 88. Plaintiff, on information and belief, is guilty ofunclean hands in attempting to claim and 7 assert exclusive rights in the terms "fruit ofthe month club" by instituting and 8 maintaining this action against Defendant despite knowledge ofwidespread third-party 9 10 use in the industry ofthose terms as product descriptors, and on that basis is not entitled 11 to equitable or monetary relief. 12 89. Plaintiff, on information and belief, is guilty ofunclean hands as Plaintiff concealed the 13 truth in their complaint that do not have trade mark under IC 35 for "FRUIT OF THE 14 MONTH CLUB" or "FRUIT-OF-THE-MONTIi CLUB" for unlimited usage. 15 90. Plaintiff's claims are barred, in whole or in part, because Defendant has not infringed a 16 valid and enforceable trademark right, ifany, owned by Plaintiff. 17 91. Plaintiff's claims are barred in whole or in part as Plaintiffhas not acquired secondary 18 meaning with respect to the phrases "fruit ofthe month" and "fruit ofthe month club" at 19 issue. 20 92. Any and all acts alleged to have been committed by Defendant, ifperformed, were 21 22 performed with lack ofknowledge and lack ofwillful intent. 23 93. Plaintiff cannot establish that it has or will suffer any damages from any use by 24 Defendant ofany mark. 25 94. Plaintiff's claims are barred, in whole or in part, because Plaintifffailed to Page 2o\bf 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 25 of 27 1 take reasonable steps to mitigate damages~ ifany. 2 95. Plaintiff's claims have failed to state a cause ofaction upon which reliefmay be granted. 3 The underlying claims ofPlaintiffare not actionable, even iftrue, because Plaintiffhas 4 not identified which specific trademark Defendant has supposedly unlawfully used~ nor 5 any instances that any claim ofa likelihood ofconfusion ever resulted in a supposed sale. 6 96. Plaintiffis guilty of laches~ acquiescence and estoppel by failing to enforce its rights~ if 7 any~ over a lengthy time period, against others with respect to the conduct complained of~ 8 as well as because~ on infonnation and belief~ Plaintiffitselfhas engaged in keyword 9 10 bidding on trademarks ofothers. 11 97. Plaintiff is further guilty ofunclean hands through the attempted enforcement ofrights 12 which Plaintiffknows~ or should reasonably know, it does not hold~ as well as by 13 committing acts ofunfair competition by restraining commerce and competitors with 14 rights which Plaintiffdoes not own~ or by restraining commerce in activities that may not 15 lawfully be restrained. 16 98. Defendant reserves the right to amend this Answer to raise and rely upon 17 any defenses that become available or apparent during discovery. 18 PRAYER FOR RELIEF 19 WHEREFORE~ Defendant prays for reliefas follows: 20 1. That this Court enter judgment for Defendant and against Plaintiff's complaint; 21 22 2. That this Court grant and enter a judgment that the phrase "fruit ofthe month club" at issue is 23 generic~ and that Federal Registration numbers 386023,905212 and 1159530 be cancelled and 24 that the director ofthe USPTO be provided with a certified order ofsame; 25 3. That this Court grant and enter a judgment that Oregon State Trademark Reg No. T9612 be Page 25':>f 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 26 of 27 1 cancelled and that the Oregon Secretary ofState be provided with a certified order ofsame; 2 4. That Plaintiffand its agents, officers, attorneys, representatives, and those acting in concert 3 and/or privity with them be preliminary and pennanently enjoined by this Court from suing, 4 threatening to sue, or making charges that Defendant or Defendant's customers, have committed 5 any acts oftrademark infringement, unfair competition, or dilution respecting the phrases 6 asserted by Plaintiff. 7 4. That this Court assess the costs ofthis action and attorneys' fees against 8 9 Plaintiff, and under the provisions ofthe Trademark Act based upon 10 findings that this case is exceptional, pursuant to 15 U.S.C. §1113; 11 5. For such and other further reliefthat the court deems just and proper. 12 ReS~eCtfu1mitted 13 ------AnshuPa 14 Defendant Pro Se 15 16 17 18 19 20 21 22 23 24 25 Page 200£ 27 Case 1:09-cv-03013-CL Document 17 Filed 07/06/2009 Page 27 of 27 PROOF OF SERVICE 1 2 I, Nerry Pathak reside in the County ofRiverside, State ofCalifornia. I am over the age of 18 years and not a party to the within action; my residential address is 25517 Los Cabos Drive, 3 Moreno Valley, CA 92551. 4 On June 30, 2009, I mailed a copy ofthe following document(s) described as: 5 1. Answer to complaint for Case No. Case No.CV 09-3013 CL 6 On the interested parties in this action as follows by First Class Mail: 7 1. STOEL RIVES LLP, 900 SW FIFTH AVE, SUITE 2600, PORTLAND, OR 97204 8 2. ROBERT E BLUTH, 2500 S.PACIFIC HIGHWAY, MEDFORD, OR 97501 9 BY MAIL -I deposited the document(s) listed above in a sealed envelope with postage thereon fully prepaid in the U.S. Mail at Moreno Valley, California, addressed as set forth 10 below. I am readily familiar with the standard practice ofcollection and processing correspondence for mailing. Under that practice it would be deposited with the U.S. Postal 11 Service on that same day with postage fully prepaid in the ordinary course ofbusiness. I am aware that on motion ofthe party served, service is presumed valid ifpostal cancellation date or 12 postage meter date is more than one day after date ofdeposit for mailing in affidavit. 13 I declare under penalty ofperjury under the laws ofthe State ofCalifornia and the United States ofAmerica that the foregoing is true and correct. 14 Executed at Moreno Valley, Riverside County, California. 15 17 18 19 20 21 22 23 24 25 Page 21:>£ 27 Exhibit 3 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA333510 Filing date: 02/22/2010 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Petition for Cancellation Notice is hereby given that the following party requests to cancel indicated registration. Petitioner Information Name Mr. Anshu B Pathak Entity Individual Citizenship UNITED STATES Address 25517 Los Cabos Drive Moreno Valley, CA 92551 UNITED STATES Correspondence Mr. Anshu B Pathak information 25517 Los Cabos Drive Moreno Valley, CA 92551 UNITED STATES [email protected] Phone:951 345 4623 Registration Subject to Cancellation Registration No 1159530 Registration date 06/30/1981 Registrant Harry and David P.O. BOX 712 Medford, OR 97501 UNITED STATES Goods/Services Subject to Cancellation Class 042. First Use: 1936/00/00 First Use In Commerce: 1936/00/00 All goods and services in the class are cancelled, namely: Mail Order Services in the Field of Food Items Grounds for Cancellation Torres v. Cantine Torresella S.r.l.Fraud 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986) Genericness Trademark Act section 23 Attachments Petition-fruit.pdf ( 3 pages )(309721 bytes ) Certificate of Service The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by USPS Express Mail Post Office to Addressee on this date. Signature /anshupathak/ Name Mr. Anshu B Pathak Date 02/22/2010 1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 2 In the matter of Trademark Registration No. 1159530 3 For the mark: FRUIT-OF-THE-MONTH CLUB International Class: 042 4 PETITION TO CANCEL TRADEMARK, “FRUIT-OF-THE-MONTH CLUB” UNDER 5 INTERNATIONAL CLASS 042 6 Petitioner’s Name and Address: Anshu Bharat Pathak, 25517 Los Cabos Drive, Moreno 7 Valley, CA 92551, Phone: 951 345 4623, Fax: 951 657 6599, Email: [email protected] 8 To the best of petitioner’s knowledge, the name and address of the current owner of the registration is Harry and David, P. O. Box 712 Medford, OR 97501. 9 The above identified petitioner believes that he is being damaged, continues to be 10 damaged and is being sued for “Trademark Infringement” due to the ongoing malicious acts the owner of above identified registration, and hereby petitions to cancel the same. 11 The grounds for cancellation are as follows: 12 A. Harry and David Inc, has Trademark for “FRUIT-OF-THE-MONTH CLUB” under 13 International Class 042 for mail order services. [Exhibit A] B. Harry and David Inc, does not have Trademark for generic word “fruit of the month 14 club” or “FRUIT OF THE MONTH CLUB” under International Class 035 to file lawsuits against users for on-line retail store services. 15 C. United States Patent and Trademark office give Trademarks under International Class 042 for United States Mail order services. 16 D. United States Patent and Trademark office does not give Trademarks under International Class 042 for UPS Mail order services. 17 E. United States Patent and Trademark office does not give Trademarks under International Class 042 for FEDEX Mail order services. 18 F. Harry and David Inc, has not shipped all their food products by US Mail after obtaining the Trademark, which can be verified with UPS. The Trademark for 19 “FRUIT-OF-THE-MONTH CLUB” under International Class 042 for mail order services should be cancelled. 20 G. Harry and David Inc, has not shipped all their food products by US Mail after obtaining the Trademark, which can be verified with FEDEX. The Trademark for 21 “FRUIT-OF-THE-MONTH CLUB” under International Class 042 for mail order services should be cancelled. 22 H. Harry and David Inc, has received over hundred million dollars in discounts from UPS and FedEx by not shipping all their food products by US Mail. The Trademark 23 for “FRUIT-OF-THE-MONTH CLUB” under International Class 042 for mail order services should be cancelled and United States Patent and Trademark Office should 24 recover the discounts received from UPS and FedEx for violating the Trademark act for personal and financial benefits. 25 Page 1 of 3 I. Harry and David Inc; does not have Trademark for “FRUIT-OF-THE-MONTH 1 CLUB” under International Class 035 for online retail store services. J. There is no pending application of Harry and David Inc; for Trademark for “FRUIT- 2 OF-THE-MONTH CLUB” under International Class 035 for online retail store 3 services as of February 22, 2010. K. Harry and David Inc; and their counsels understand the difference between 4 Trademark under International Class 035 and under International Class 042. L. Harry and David Inc; has Trademark for “HARRY & DAVID” under International 5 Class 035, [Registration Number 3262655] for retail store services, online retail store services, and mail order services in the field of gifts, home decor items, foods, and 6 flowers. [Exhibit B] M. Harry and David Inc; is trying to create a monopoly with help of the word mark, 7 “FRUIT-OF-THE-MONTH CLUB” in the area of “Periodic shipments of Fruits” on the world wide web. 8 N. Since 1999 and onwards, Harry and David has developed a pattern to threaten small businesses who does not have money to fight the lawsuit in the Federal court and has 9 taken away their domain names to create their monopoly on the world wide web without having the Trademark for “FRUIT-OF-THE-MONTH CLUB” under 10 International Class 035 for online retail store services. Petitioner is a victim. 11 O. Since 1999 and onwards, Harry and David has developed a pattern to file “Trademark Infringement Lawsuits in the Federal courts” against small businesses who does not 12 have money to fight the lawsuit in the Federal court and shut down their businesses to create their monopoly on the world wide web without having the Trademark for 13 “FRUIT-OF-THE-MONTH CLUB” under International Class 035 for online retail store services. Petitioner is a victim. 14 P. Harry and David has developed a pattern to wipe out all the on-line small businesses offering “periodic fruit of the month club membership to the public” so that they can 15 apply for the Trademark for “FRUIT-OF-THE-MONTH CLUB” under International Class 035 for online retail store services. 16 Q. Petitioner Anshu Pathak is operating “ORGANICFRUITCLUB.COM” AND “ORGANICFRUITOFTHEMONTHCLUB.COM” and other on-line retail stores 17 featuring periodic shipments of Certified Organic Fruits, Exotic Fruits and Tropical Fruits to club members, since 1999. 18 R. “Fruit of the Month” is a “generic word” used by many on-line retailers which can be verified with Google, AOL, MSN, Yahoo and other search engines. 19 S. There are 47,400,000 search results for “Fruit of the Month” on Google as of February 22, 2010 which is similar to Harry and David’s Trademark for “FRUIT-OF- 20 THE-MONTH CLUB”. Harry and David’s Trademark for “FRUIT-OF-THE- MONTH CLUB” should be cancelled as it is generic.[Exhibit C] 21 T. “Fruit of the Month Club” is a “generic word” used by many on-line retailers which can be verified with Google, AOL, MSN, Yahoo and other search engines. 22 U. There are 1,390,000 search results for “Fruit of the Month Club” on Google as of February 22, 2010 which is similar to Harry and David’s Trademark for “FRUIT-OF- 23 THE-MONTH CLUB”. Harry and David’s Trademark for “FRUIT-OF-THE- MONTH CLUB” should be cancelled as it is generic.[Exhibit D] 24 V. “FRUIT-OF-THE-MONTH CLUB” is a “generic word” used by many on-line retailers which can be verified with Google, AOL, MSN, Yahoo and other search 25 Page 2 of 3 engines. Based on the facts, Harry and David’s Trademark for “FRUIT-OF-THE- 1 MONTH CLUB” should be cancelled as it is generic. W. There are 3,110,000 search results for “FRUIT-OF-THE-MONTH CLUB” on Google 2 as of February 22, 2010. Harry and David’s Trademark for “FRUIT-OF-THE- MONTH CLUB” should be cancelled as it is generic and similar to “Fruit of the 3 Month” and “Fruit of the month club”. [Exhibit E] X. Harry and David, has filed a “Trademark Infringement” lawsuit against Petitioner in 4 State of Oregon to harass Petitioner [09-CV – 03013-CL] without having the Trademark for “FRUIT-OF-THE-MONTH CLUB” under International Class 035 for 5 online retail store services. 6 Y. Harry and David, has filed a “Trademark Infringement” lawsuit against Petitioner in State of Oregon to take away Petitioner’s domain names for free to create and 7 maintain their monopoly on the World Wide Web [Internet] in area of “Periodic shipments of fruits to club members”. 8 Z. Harry and David, has filed a “Trademark Infringement” lawsuit against Petitioner in State of Oregon to harass Petitioner [09-CV – 03013-CL] for usage of the generic 9 word of, “Fruit of the month club”. 10 11 Thank you 12 ------Anshu Pathak 13 Petitioner, An Individual doing business as (1) Organicfruitofthemonthclub.com 14 (2) Organicfruitclub.com February 22, 2010 15 16 17 18 19 20 21 22 23 24 25 Page 3 of 3 Exhibit 4 Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA334131 Filing date: 02/25/2010 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 92052111 Party Defendant Harry and David Correspondence Harry and David Address P.O. BOX 712 Medford, OR 97501 UNITED STATES Submission Motion to Suspend for Civil Action Filer's Name Steven E. Klein Filer's e-mail [email protected], [email protected], [email protected], tm- [email protected] Signature /Steven E. Klein/ Date 02/25/2010 Attachments Motion to Suspend for Civil Action.pdf ( 60 pages )(2407285 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD In the Matter of Trademark Registration No. 1159530 For the mark FRUIT-OF-THE-MONTH CLUB ______MR. ANSHU B. PATHAK ) ) Petitioner, ) ) v. ) Cancellation No. 92052111 ) HARRY AND DAVID ) ) Registrant. ) ______) REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Harry and David (“Registrant”) respectfully submits Registrant’s Motion To Suspend for Civil Action because Petitioner and Registrant are parties to a civil action which may have a bearing on Cancellation No. 92052111 (the “Cancellation”).1 This Motion is made pursuant to 37 CFR § 2.117 and Section 510 of the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”). Registrant consulted with Petitioner but Petitioner would not stipulate to this motion. PENDING CIVIL ACTION On February 11, 2009, Registrant filed a Complaint against Petitioner for trademark infringement, unfair competition and cybersquatting in the United States District Court for the District of Oregon, Case No. CV09-3013-CL (the “Complaint”). The Complaint alleges, among other things, Petitioner’s infringement of the FRUIT-OF-THE-MONTH CLUB mark that is the 1 Registrant’s answer to the Petition for Cancellation is not due until April 5, 2010. Nothing herein is intended to waive, and Registrant expressly reserves, all challenges and defenses it may have to the Petition and the allegations contained therein. 1A REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4847491.1 0061715-00017 subject of Registrant’s U.S. Reg. No. 1159530. A copy of the Complaint is attached hereto as Exhibit 1. On July 7, 2009, Petitioner filed an Answer to Complaint with Affirmative Defenses (the “Answer”). The Answer sets forth denials and affirmative defenses based on many of the same allegations that Petitioner asserts in the Petition as grounds for cancellation, including an allegation that Registrant’s U.S. Reg. No. 1159530 is invalid for genericness. A copy of the Answer is attached hereto as Exhibit 2. ARGUMENT It is well-settled that suspension of a Board proceeding pending the final determination of a civil action is appropriate even if the civil case may not be dispositive of the Board case, so long as the ruling will have a bearing on the rights of the parties in the Board case. See Martin Beverage Co. Inc. v. Colita Beverage Company., 169 USPQ 568, 570 (TTAB 1971). To the extent that a civil action in a federal district court involves issues in common with those in a proceeding before the Board, the decision of a federal district court is binding upon the Board, while the decision of the Board is not binding upon the court. See, for example, Goya Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950 (2d Cir.1988); TBMP § 510.02(a). Registrant respectfully requests that this Motion be granted because resolution of the claims and defenses in the civil action will have a bearing on Petitioner’s claims that Registrant’s U.S. Reg. No 1159530 is invalid for genericness and/or fraud. Indeed, to the extent there are common issues between the civil action and this proceeding, the district 2A REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4847491.1 0061715-00017 court’s determinations will be binding on the Board. Accordingly, suspension until final determination of the civil action is appropriate. DATED: February 25, 2010 Respectfully submitted, By: /Steven E. Klein/______Steven T. Lovett Steven E. Klein STOEL RIVES LLP 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 (503) 224-3380 Attorneys for Registrant 3A REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4847491.1 0061715-00017 CERTIFICATE OF SERVICE I hereby certify that I served the foregoing Motion To Suspend for Civil Action on the following-named persons on the date indicated below by mailing with postage prepaid to said persons a true copy thereof, contained in a sealed envelope, addressed to said person at their last- known address indicated below: Mr. Anshu B Pathak 25517 Los Cabos Drive Moreno Valley, CA 92551 and by forwarding a PDF copy via e-mail to said person at [email protected]. DATED: February 25, 2010 STOEL RIVES LLP By: /Steven E. Klein/______Steven T. Lovett Steven E. Klein STOEL RIVES LLP 900 SW Fifth Avenue, Suite 2600 Portland, OR 97204 (503) 224-3380 Attorneys for Registrant 4A REGISTRANT’S MOTION TO SUSPEND FOR CIVIL ACTION Portlnd2-4847491.1 0061715-00017