Free Sealed Document - District Court of Connecticut - Connecticut

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UNITED STATES DISTRICT COURT DISTRICT OF CONNECTICUT LIGHT SOURCES, INC., and TAN SYSTEMS, INC., Plaintiffs v. Civil Action No. 303 CV 874 (MRK) At New Haven COSMEDICO LIGHT, INC., Defendant August 23, 2004

LOCAL RULE 56(a)(1) STATEMENT IN SUPPORT OF PLAINTIFFS' LIGHT SOURCES, INC. AND TAN SYSTEMS, INC. , MOTION FOR PARTIAL SUMMARY JUDGMENT AS TO DEFENDANT, COSMEDICO LIGHT, INC.' COUNTERCLAIMS I, II, III, IV AND V S, OF ITS ANSWER AND COUNTERCLAIM TO PLAINTIFFS' SECOND AMENDED COMPLAINT

Arthur T. Fattibene Paul A. Fattibene Fattibene & Fattibene 2480 Post Road Southport, CT 06890-1218

ORAL HEARING REQUESTED

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Plaintiffs' Local Rule 56(a)(1) Statement Plaintiffs, Light Sources, Inc. (Light Sources) and Tan Systems, Inc. (Tan Systems) hereby submit that the following statements of material facts are undisputed in this action, and that for the reasons set forth in Plaintiffs' Memorandum, Affidavits or Declarations, attached Exhibits and cited authorities in support of Plaintiffs' Motion for Partial Summary Judgment, entitle Plaintiffs to Judgment as a matter of law with respect to Defendants' Counterclaims I, II, IV and V. Summary Judgment should also be granted as to Plaintiffs, Light Sources and Tan Systems Count I of its Second Amended Complaint that is essentially a mirror image of Defendant' Counterclaims. s

The Parties 1. Plaintiff, Light Sources, is a corporation

organized under the Laws of the State of Connecticut with its principal place of business located in Orange, Connecticut 06477, at 37 Robinson Boulevard. (Declaration

of Christian J. Sauska, paragraph 2) (A-1, 2).1 2. Co-Plaintiff, Tan Systems, is a corporation

organized under the Laws of the State of Georgia that had
1

(A- ) refers to Plaintiffs' attached Appendix followed by appendix page number.

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its principal place of business located in McDonough, Georgia (Declaration of Kristen Tiffany, paragraph 2). 40) 3. Tan Systems initially commenced doing business on On February 16, 2004, during the (A-

or about April 1, 1988.

pendency of this action, Tan Systems sold all the assets of its business to Heartland Tan, an unrelated third party. Tan Systems is no longer in the sun tanning business and is in the process of being dissolved. (Supplemental (A-

Declaration of Kristen Tiffany Crumpler, paragraph 2). 79) 4. Between April 1988 to February 16, 2004, Tan

Systems was in the business of manufacturing and selling sun tanning beds, selling replacement sun tanning fluorescent lamps which Tan Systems purchased from various suppliers, and sundry other sun tanning related products. (Supplemental Declaration of Kristen Tiffany Crumpler, paragraph 3). (A-80) 5. Defendant, Cosmedico Light, is a corporation

organized under the laws of the State of Delaware with its principal place of business located at 233 Libbey Parkway, Unit 2 in Weymouth, Massachusetts 02189 (Cosmedico Answer and Counterclaim to Plaintiffs' Second Amended Complaint, paragraph 77), (Frank Deposition, page 14). (A-161)

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Jurisdiction 6. The Court has subject matter jurisdiction over the

actions pleaded and counterclaimed by the parties hereto, as they arise under the Trademark Laws of the United States, viz. 15 USC 1051 et seq. and 28 USC 1331, 1338 and 1367 (Cosmedico Answer and Counterclaims, paragraph 81) and 28 USC 2201, 2202 (Second Amended Complaint, paragraph 4). 7. The parties do not contest venue. (Cosmedico

Answer and Counterclaims to Second Amended Complaint, paragraph 82). 8. The Court has personal jurisdiction over Cosmedico

(Defendant' Answer and Counterclaim to Second Amended s Complaint, paragraph 6).

Undisputed Background Facts 9. Light Sources is a prominent and well known

manufacturer and seller of specialty type gas discharge lamps such as ultraviolet, fluorescent, sun tanning lamps, germicidal lamps, and various other highly specialized lighting lamps. worldwide. 2). Light Sources sells the lamps it makes

(Declaration of Christian J. Sauska, paragraph

(A-1, 2) 10. Light Sources is one of the only seven known

manufacturers of low pressure sun tanning lamps of the type

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in suit.

The only known manufacturers of low pressure

fluorescent sun tanning lamps are: Osram Sylvania Sylvania Lighting International Light Sources/Light Tech Voltarc Phillips Inter Electric Narva (Deposition transcript of Jerry Frank, Cosmedico President, page 175). (A-178) 11. Cosmedico' primary business is the marketing and s

selling of low pressure fluorescent sun tanning lamps, transformers and starters. any lamps. 12. Cosmedico does not manufacture

(Frank deposition, page 16). (A-163)

Cosmedico is a small marketing company consisting

of only six employees, including its President, Jerry Frank. The functions performed by the six employees relate

to marketing, sales, service, warehousing and secretarial. (Frank deposition, pages 14, 15). 13. (A-162, 163)

The lamps bearing Cosmedico' alleged trademarks, s

which Cosmedico is asserting are being infringed by Plaintiffs in this action, are manufactured for Cosmedico by Osram Sylvania. (Frank deposition, page 22). (A-164)

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14.

Light Sources commenced the marketing and selling

of the sun tanning lamps bearing the alleged accused letter markings THR and TLR about January 2002. These lamps were

exclusively made for and exclusively sold to Tan Systems only. Tan Systems functioned as Light Sources' exclusive (Declarations of Kristen

distributor of the accused lamps.

Tiffany, paragraph 20, (A-44) and Christian J. Sauska, paragraph 21). (A-6) 15. Light Sources, on each accused lamp it made and

sold to Tan Systems, imprinted directly on the lamp a thirteen digit lamp model number, e.g. FR71T12-THR-160 or FR71T12-TLR-100. Light Sources also prominently marked

each lamp with a statement that the lamp is manufactured by Light Sources. (Declaration of Kristen Tiffany, Paragraph

22 (A-44); Fattibene Declaration Exhibits 40 and 41). (A290, 291). 16. Light Sources also imprinted on each accused lamp

it made and sold to Tan Systems, Tan Systems house brand or trademark TURB0POWER. (Declaration of Kristen Tiffany,

paragraphs 19-22 (A-44, 45) and Exhibits 40 and 41 (A-290, 291) attached to Declaration of Arthur T. Fattibene). 17. Tan Systems marketed the lamps bearing the

accused lettering THR-160 and TLR-100 in association with Tan Systems' house brand or trademark TURB0POWER or TURBO

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as indicated in Exhibits 39, 40 and 41 attached to Declaration of Arthur T. Fattibene. (A-285-291) (See also

Declaration of Kristen Tiffany, paragraph 20). (A-44) 18. Light Sources adopted the industry wide coding

method for assigning the model numbers applied to the accused lamps Light Sources exclusively made and marketed to Tan Systems, e.g. FR71T12-THR-160 or FR71T12-TLR-100 to inform the purchaser as to the physical characteristics of the associated lamp, e.g. FR means a fluorescent lamp; 71 is the length of the lamp; T12 is the diameter of the lamp in 1/8 inch increments or 1½ inch diameter lamp (12x1/8 = 1½). THR-160 refers to Tan Systems' TURB0POWER high output The reference to TLR-100

(160 watts) reflector lamp.

refers to a Tan Systems TURB0POWER lamp of a lower output (100 watts) with a reflector. (Supplemental Declaration of

Kristen Tiffany Crumpler, paragraph 5). (A-80) 19. While in business, Tan Systems has advertised its

TURB0POWER lamp made by Light Sources in the industry trade journals, and that Tan Systems' TURB0POWER brand or trademark had become well known to the industry; and purchasers of such lamps associated a TURB0POWER lamp as a Tan Systems product. (Supplemental Declaration of Kristen

Tiffany Crumpler, paragraph 5). (A-80)

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20.

Jerry Frank, President of Cosmedico, testified on

deposition that he was not aware of any instance of any actual confusion between Cosmedico' asserted trademarks in s suit and Light Sources' use of the letters THR and TLR. (Frank' deposition, pages 55-56). (A-165, 166) s 21. Jerry Frank, President of Cosmedico, testified on

deposition that Cosmedico has no evidence to support any claim of damages caused by Plaintiffs' use of THR and TLR between Cosmedico' asserted trademarks and the accused s marks. 22. (Frank deposition, page 125). (A-174) Neither Tan Systems and/or Light Sources is aware

of any instance of any actual confusion between the asserted Cosmedico' VHR and VLR marks in suit, and Tan Systems and/or Light Sources' use of the letters THR and TLR on the lamps made by Light Sources and sold to Tan Systems. (Supplemental Declaration of Kristen Tiffany Crumpler, paragraph 6 (A-80, 81); Declaration of Christian J. Sauska, paragraph 23) (A-6, 7). 23. The letters or term VHR is used throughout the

sun tanning industry as a descriptive or generic acronym to mean that category of lamps that have a very high output (160 watts or more) with a reflector before Cosmedico' VHR s mark was registered on December 30, 1997. (Declaration of

Christian J. Sauska, paragraphs 9, 10, 11, 12, 13; (A-3, 4)

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Declaration of Kristen Tiffany, Paragraphs 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18). (A-42-44) 24. Acronyms have been widely used throughout the sun

tanning industry for describing a specific category of lamps that have similar physical characteristics, e.g. VHO for very high output lamps (160 watts or more) without reflector; HO for high output lamps (100 watts or less) without reflector; VHR for very high output lamps with a reflector (160 watts or more); VHOR for very high output lamps with reflector or HOR for lamps having an output of 100 watts or less with reflector; and R means a reflector type lamp. ((Frank' deposition transcript, pages 106, s

107, 108; (A-171-173) the Exhibits attached to Declarations of Christian J. Sauska, Kristen Tiffany, and Exhibits 1, 2, 3, (A-93-110) 5, 6, 7, 8, 9, 10, 12, 14, 15, 16, 17, 18, 20, and 21 attached to Declaration of Arthur T. Fattibene (A-114-127, 129, 130, 132-138 and 140-143). 25. Cosmedico is not aware of any instance where

either Tan Systems or Light Sources used the mark COSMOLUX VLR which is being asserted by Cosmedico in this action. (Frank deposition, page 101). (A-170) 26. Cosmedico does not have any evidence to date on

which it can rely to support any claim of damage by Tan Systems. (Frank deposition, page 125). (A-174)

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27.

Cosmedico has not received any remunerations in

the form of royalties or payments for use by others of the trademarks that Cosmedico is asserting in this litigation. (Frank Deposition, page 55). (A-165)

The Marks Cosmedico Is Asserting Against Plaintiffs The VHR Mark 28. Cosmedico filed a trademark application S.N.

74/677,694 in the U.S. Patent and Trademark Office on June 5, 1995, to register the mark VHR for Ultra Violet Fluorescent Lighting Tubes for Sunning and Tanning Purposes in International Class 011, and in which Cosmedico alleged a date of first use of the VHR mark in connection with the stated goods in interstate commerce as December 1994. Trademark Application SN 74/677,694). (VHR

(Exhibit 36, (A-182,

183) Declaration of Arthur T. Fattibene). 29. On November 22, 1995, the Examining Attorney, to

whom the application SN 74/677,694 was assigned for examination, rendered an " Office Action" in which the Examining Attorney inquired of the Applicant, Cosmedico, as to " whether the wording " VHR" has any significance in the relevant trade or industry or as applied to the goods." (Examining Attorney' Action dated November 11, 1995). s

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(Exhibit 36A (A-190, 191) attached Declaration of Arthur T. Fattibene). 30. In a response dated May 8, 1996 to the Trademark

Examining Attorney' inquiry and received by the Patent and s Trademark Office on May 14, 1996, Cosmedico stated: " The Examiner is advised that the expression ` VHR' was developed by the Applicant herein (Cosmedico) and is an acronym for the words " very high reflector-output" To the best of . Applicant' knowledge, the expression ` s VHR' has no relevance in the trade or industry, but is a derived expression made up by Applicant herein." (Cosmedico' Response dated May 14, 1996, Exhibit 36B, (As 192, 193) Declaration of Arthur T. Fattibene). 31. Accepting Cosmedico' representation as above s

stated in paragraph 30, the Examining Attorney passed the application for publication and the application was published on October 8, 1996. (Notice of Publication-

Exhibit 36C (A-198) attached to Declaration of Arthur T. Fattibene). 32. The VHR mark was finally registered on December

30, 1997, bearing U.S. Registration No. 2,124,659. (Exhibit 36D (A-199) Declaration of Arthur T. Fattibene). 33. The VHR mark has not become incontestable, as

Cosmedico has not filed the necessary (Title 15 Sect 1065) affidavit or declaration so as to render the registered

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mark VHR incontestable.

(See File History, Exhibit 36 (A-

182-199) attached to Declaration of Arthur T. Fattibene). 34. Prior to the filing of Cosmedico' trademark s

application, VHR has been used as an acronym which was understood by those in the industry to mean a category of fluorescent sun lamps that have a very high output (160 watts or more) that also included a reflector. (Declaration of Kristen Tiffany, paragraphs 9, 10, 11, 12, 13, 14, 15, 16, 17, 18). (A-41-44) 35. Dr. Muller of QDM Co., Inc., considered as one of

the pioneers of the sun tanning industry, designed a Very High Performance (VHP) Tanning Bed that strictly utilized 160 watt VHO and VHR type lamps before Cosmedico applied for the VHR trademark in suit. Tiffany, paragraphs 10-12). (Declaration of Kristen

(A-41, 42)

The Asserted CosmoLux VLR Mark (Without Cat Design) 36. On or about July 28, 1997, Cosmedico filed an

Intent to Use trademark application in the United States Patent and Trademark Office for a stylized composite word mark, viz. CosmoLux VLR, which was assigned S.N. 75/334,449, and in which Cosmedico alleged that the said mark was for Very High Output Long Life Reflector Style

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Fluorescent Lighting Tubes.

(Exhibit 37 (A-206, 207, 208)

attached to Declaration of Arthur T. Fattibene). 37. On April 27, 1998, the Examiner refused

registration of the composite work mark COSMOLUX VLR, under the Trademark Act, Section 2(d), 15 USC 1052(d) because the Applicant' mark, when used in connection with the s identified goods, resembled U.S. Registration No. 1,365,507 as likely to cause confusion. The Examining Attorney also

inquired as to whether the term VLR has any meaning or significance other than that of a trademark. (Examining

Attorney Action of April 27, 1998, Exhibit 37A (A-210-218) attached to Declaration of Arthur T. Fattibene). 38. On or about August 8, 1998, the Applicant filed

an Amendment to the Examining Attorney' Action of April s 27, 1998, in which Cosmedico did not respond to the Examining Attorney' inquiry as to whether the term VLR had s any meaning or significance other than that of a trademark. (Exhibit 37B (A-224-226) attached to Declaration of Arthur T. Fattibene). 39. On February 19, 1999, the Examining Attorney

reported that the application " appears to be entitled to registration" and advised applicant that the mark would be published for opposition on March 23, 1999, notwithstanding that Cosmedico failed to respond to the Examining

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Attorney' inquiry as to the meaning of VLR. s

(Exhibit 37C

(A-229) attached to Declaration of Arthur T. Fattibene). 40. 1999. A notice of allowance was issued on June 15,

(Exhibit 37D attached to Declaration of Arthur T. (A-230)

Fattibene). 41.

On or about November 10, 1999, Cosmedico

submitted a Statement of Use together with three specimens of the mark allegedly as used in commerce. (Exhibit 37E

attached to Declaration of Arthur T. Fattibene). (A-232, 235) 42. On February 16, 2000, the Examining Attorney

refused to accept the specimen of the alleged actual use for the reason that the specimen of the alleged use did not conform to the drawing of the mark submitted with the original application papers. (Examining Attorney' Action s

of February 16, 200, Exhibit 37F attached to Declaration of Arthur T. Fattibene). (A-236, 237) 43. On May 16, 2000, Cosmedico filed a response to

the Examining Attorney' Action of February 16, 2000, s wherein Cosmedico attempted to submit a new drawing in an effort to conform the drawing to the specimen Cosmedico submitted to evidence actual use of the mark CosmoLux VLR. (Exhibit 37G attached to Declaration of Arthur T. Fattibene). (A-241, 242)

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44.

On February 12, 2001, the Examining Attorney

refused to accept Cosmedico' new proposed drawing of the s alleged CosmoLux VLR mark because the new proposed drawing did not conform to the specimen Cosmedico submitted. The

Examining Attorney rendered the action FINAL, wherein the only appropriate response was to (1) comply with the outstanding requirements, if feasible, or (2) file an appeal. (Exhibit 37H attached to Declaration of Arthur T.

Fattibene). (A-245, 246) 45. Cosmedico did neither and the application was

ultimately determined to have been abandoned on October 5, 2001 for failure to provide a proper use statement. (Exhibit 37I attached to Declaration of Arthur T. Fattibene). (A-249) 46. On May 14, 2002, Cosmedico filed a new trademark

application which was assigned S.N. 76/415,356 to register a stylized composite word and design mark COSMOLUX VLR with the outline of a cat design between the two words for very high output, long life, reflector style fluorescent lighting lamp, in International Class 011, and asserting a date of first use as July 30, 1997. (Exhibit 38 attached

to Declaration of Arthur T. Fattibene). (A-254-259) 47. On September 16, 2002, the Examining Attorney

rendered an " Office Action" in which the Examining Attorney

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refused registration under Trademark Act Section 2(d); 15 USC 1052(d) because the Applicant' mark, when used in s connection with the stated goods, would likely cause confusion with a prior registered mark, No. 2,476,193. (Exhibit 38A attached to Declaration of Arthur T. Fattibene). 48. (A-260-267)

The Examining Attorney also requested that the

applicant state whether the term " VLR" has any meaning or significance in relation to the goods other than that of a trademark. (Exhibit 38A, Declaration of Arthur T.

Fattibene). (A-262) 49. As the U.S. Patent and Trademark Office did not

receive a response from Cosmedico within the six (6) month time limit for reply, the Patent and Trademark Office considered the renewed application S.N. 76/415,356 abandoned and issued a Notice of Abandonment as of May 6, 2003. (A-269) 50. Cosmedico, after learning of the abandonment of (Exhibit 38B, Declaration of Arthur T. Fattibene).

the trademark application S.N. 76/415,356, filed a Petition to Reinstate the trademark application S.N. 76/415,356 on the grounds that Cosmedico did timely respond to the Examining Attorney' action of September 16, 2002. s Attached to the Petition to Reinstate was Cosmedico' s

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response to the Examining Attorney' Office Action of s September 16, 2002. In said response, Cosmedico advised

that the " letters VLR have no significance in the industry and are merely an abbreviation of very high output, long life reflector. The expression however has no significance

in the light industry." (Exhibit 38C, Declaration of Arthur T. Fattibene). 51. (A-274-278)

Based on Cosmedico' representations, the s

Examining Attorney passed application S.N. 76/415,356 to publication and the mark was published on September 9, 2003. (A-282) 52. Cosmedico' composite stylized word and design s (Exhibit 38D, Declaration of Arthur T. Fattibene).

mark COSMOLUX VLR with cat design was finally registered on December 2, 2003, bearing U.S. Registration No. 2,788,198. (Exhibit 38E, Declaration of Arthur T. Fattibene). (A-284)

The VLR Mark 53. Cosmedico' alleged trademark consisting merely s

of the letters VLR is not a U.S. trademark registered to Cosmedico. 54. The mark comprising the letters VLR has been

registered in international class 011 to another unrelated

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third party Envirex, Inc., under U.S. Registration No. 2,133,076. 55. (A-301)

Tan Systems' reference to the acronym VHR and VLR

to describe the particular category or type of lamps Tan Systems used in its Sunliner tanning bed occurred prior to the granting of Cosmedico' asserted VHR trademark s registration in suit. (Declaration of Kristen Tiffany,

paragraph 13; Exhibit D) (A-43); (Declaration of Arthur T. Fattibene, Exhibit 2) (A-106-109). 56. Jerry Frank testified on deposition that it is

not Cosmedico' contention to claim any exclusive rights to s the letters " HR" OR " . LR" 89). (A-167, 168) 57. Jerry Frank testified on deposition that to his (Frank deposition, pages 88,

knowledge, he is not aware that Cosmedico ever applied the letters VHR to any lamp separate and apart from the word CosmoLux, but that he would investigate the matter and, if possible, would make such lamps available for inspection. Cosmedico has not produced any lamp bearing the alleged registered trademark " VHR" per se, i.e. independently of its house mark COSMOLUX. 169) 58. Jerry Frank testified on deposition that the (Frank deposition, page 92). (A-

letter " to one knowledgeable in the art [of tanning] R"

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means a " reflector type lamp" . 108). (A-173)

(Frank deposition, page

59.

Jerry Frank testified on deposition that a high

output [suntan] lamp operates at 80 to 100 watts, and maybe as high as 120 watts. 103) 60. Jerry Frank testified on deposition that he sent (Frank deposition, page 108). (A-

a letter to a customer, Dr. Kern, requesting that the VLR mark should be designated with an ® in its advertisements to indicate that VLR is a registered mark of Cosmedico, when in fact it is not. (A-175, 176) 61. Cosmedico, in letters and advertisements, falsely (Frank deposition, pages 145-146).

designated VLR as being a registered mark by applying the ® symbol thereto, when in fact the VLR mark and COSMOLUX VLR mark were not registered. (Frank Deposition, page 149 (A-

177); Exhibits N and O attached to Declaration of Kristen Tiffany) (A-70, 71; A-72, 73). 62. Cosmedico has never applied the registered VHR

mark to any lamp separate or apart from the terms COSMEDICO or COSMOLUX. (Declaration of Christian J. Sauska,

paragraphs 5-8). (A-2, 3) 63. Cosmedico has stipulated in the Joint Report of

the Parties Planning Meeting filed with the Court on or

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about August 20, 2003, that " Plaintiff, Light Sources, Inc. (Light Sources) have never applied the asserted common law COSMOLUX VLR [mark] to any product." Respectfully submitted, ____________________________ Arthur T. Fattibene, CT06916 Counsel for Plaintiff Fattibene and Fattibene 2480 Post Road Southport, CT 06890 Tel: 203-255-4400 Fax: 203-259-0033

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