Free Answer to Third Party Complaint - District Court of Connecticut - Connecticut

Case 3:03-cv-00874-MRK

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF CONNECTICUT At New Haven

LIGHT SOURCES, INC. and TAN SYSTEMS, INC. Plaintiffs v. COSMEDICO LIGHT, INC. Defendant ______________________________ COSMEDICO LIGHT, INC., Counter-Plaintiff v. LIGHT SOURCES, INC. and TAN SYSTEMS, INC., Counter-Defendants

Civil Action No. 303-CV-874(MRK)

Jury Demand Requested

February 2, 2004

COUNTER-DEFENDANTS, LIGHT SOURCES, INC. AND TAN SYSTEMS, INC., REPLY TO COUNTER-PLAINTIFF, COSMEDICO LIGHT, INC.'S ANSWER TO SECOND AMENDED COMPLAINT AND COUNTERCLAIMS For Counter-Defendant, Light Sources, Inc.'s, and Counter-Defendant, Tan Systems, Inc.'s Reply to CounterPlaintiff, Cosmedico Light, Inc.'s, Answer and Counterclaims to Counter-Defendants Second Amended Complaint, the Counter-Defendants in this action respond as follows:

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R E P L Y As to Counter-Plaintiff's Counterclaims Parties: 77. On information and belief, the allegations of

paragraph 77 are admitted. 78. 79. Admitted. Tan Systems, Inc. admits it is transacting and

doing business, and denies the remaining allegations of paragraph 79. 80. Admitted.

Jurisdiction and Venue: 81. Counter-Defendants admit that Cosmedico is

asserting that this action arises under the Trademark Laws of the United States and that the Court has subject matter jurisdiction alleged in paragraph 81. 82. Admitted.

Background Facts: 83. Counter-Defendants have insufficient information

to either admit or deny the allegations of paragraph 83, and therefore, the allegations are denied. 84. Counter-Defendants admit that a copy of

Cosmedico's federal trademark registration No. 2,124,659 is attached to Plaintiffs' Second Amended Complaint as Exhibit A. The remaining allegations of paragraph 84 are denied.

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85.

Counter-Defendants have insufficient information

to either admit or deny the allegations of paragraph 85, and therefore, the allegations are denied. 86. Counter-Defendants have insufficient information

to either admit or deny the allegations of paragraph 86, and therefore, the allegations are denied. 87. Counter-Defendants have insufficient information

to either admit or deny the allegations of paragraph 87, and therefore, the allegations are denied. 88. Counter-Defendants have insufficient information

to either admit or deny the allegations of paragraph 88, and therefore, the allegations are denied. 89. Counter-Defendants have insufficient information

to either admit or deny the allegations of paragraph 89, and therefore, the allegations are denied. 90. Counter-Defendants have insufficient information

to either admit or deny the allegations of paragraph 90, and therefore, the allegations are denied. Counter-Defendants Business Activities 91. 92. Denied. Counter-Defendant, Light Sources, denies the Counter-Defendant, Tan

allegations of paragraph 92.

Systems, admits that Cosmedico sells its products in competition with Tan Systems' products. Counter-Defendants

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have insufficient information to either admit or deny the remainder allegations of paragraph 92, and therefore, Counter-Defendants deny the same. 93. Counter-Defendants admit that the letters THR and

TLR are used as an acronym for Counter-Defendants TURB0POWER high and low output reflector lamps respectively. denied. 94. 95. Denied. Light Sources and Tan Systems admit that All other allegations of paragraph 93 are

Cosmedico sent repeated letters to cease and desist from infringing Cosmedico's alleged trademark VHR, COSMOLUX VLR and VLR trademarks, despite the fact that the CounterDefendants have never used the alleged VHR mark, Cosmedico's compound mark COSMOLUX VLR and/or VLR or any marks confusingly similar therewith. As to the First Counterclaim For Trademark Infringement Under Federal Law 96. Counter-Defendants repeat and incorporate by

reference herein the responses asserted to paragraphs 77 to 95 herein. 97. Counter-Defendants admit Cosmedico is attempting

to allege that this count is for trademark infringement

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under the provisions of the Trademark Laws of the United States, particularly 15 USC 1114(1) et seq. 98. 99. 100. 101. 102. Denied. Denied. Denied. Denied. Denied.

As to Second Counterclaim For False Designation Of Origin Under Federal Law 103. Counter-Defendants repeat and incorporate by

reference herein their respective responses asserted to paragraphs 72 to 102 respectively. 104. Counter-Defendants admit the Counter-Plaintiff

is seeking to allege a count for alleged false designation of origin under the Trademark Laws of the United States, particularly 15 USC 1125(a). 105. 106. 107. 108. Denied. Denied. Denied. Denied.

As to Third Counterclaim For Trademark Dilution Under Federal Law 109. Counter-Defendants hereby repeat and incorporate

by reference herein their responses as alleged to paragraphs 77 to 107 herein.

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110.

Counter-Defendants admit that Cosmedico is

seeking to allege a count for trademark dilution under the Trademark Laws of the United States, particularly under 15 USC 1125(c). 111. 112. 113. 114. Denied. Denied. Denied. Denied.

As to the Fourth Counterclaim For Trademark Infringement Under The Common Law 115. Counter-Defendants repeat and incorporate herein

by reference their respective responses made to paragraphs 77 to 114 herein. 116. Counter-Defendants admit Cosmedico is seeking to

allege an action sounding in trademark infringement under the common law. 117. 118. 119. Denied. Denied. Denied.

As to the Fifth Counterclaim For Unfair Competition Under Connecticut Law 120. Counter-Defendants repeat and incorporate herein

by reference their respective responses made to paragraphs 77 to 119 herein.

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121.

Counter-Defendants admit Cosmedico is seeking to

allege a count for unfair competition and unfair or deceptive practices under the Laws of the State of Connecticut, including C.G.S. Chapter 42-110(b). 122. Counter-Defendants admit that Counter-Defendants

filed an opposition No. 104,357, and that said opposition was amicably settled. The remainder of the allegations

asserted in paragraph 112 are denied. 123. 124. 125. Denied. Denied. Denied

CONSOLIDATED AFFIRMATIVE DEFENSES TO COUNTER-PLAINTIFF'S FIRST TO FIFTH COUNTERCLAIMS First Affirmative Defense Counter-Defendants use of the letters THR and TLR do not infringe any of Counter-Plaintiff's alleged asserted trademarks. Second Affirmative Defense Counter-Plaintiff's alleged trademarks VHR and VLR and the formative VLR in the COSMOLUX VLR mark are descriptive acronyms for Very High output Reflector lamps and Very Low output Reflector lamps respectively, as said acronyms are commonly understood in the trade.

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Third Affirmative Defense Counter-Defendants have never used the composite mark COSMOLUX VLR, or any mark confusingly similar thereto, and therefore do not infringe said asserted marks. Fourth Affirmative Defense Counter-Plaintiff's Counts are barred by laches. Fifth Affirmative Defense Counter-Plaintiff's Counts are barred by estoppel. Sixth Affirmative Defense Counter-Plaintiff's Counts are barred by acquiescence. Seventh Affirmative Defense Counter-Plaintiff's Counts sounding in unfair competition are barred by the Statute of Limitations. Eighth Affirmative Defense Trademark Registration No. 2,124,659 for the mark VHR was improperly issued by the U.S. Patent and Trademark Office in that the alleged trademark is merely descriptive of the goods and the mark has not become distinctive. Ninth Affirmative Defense Trademark Registration No. 2,788,198 for the composite mark COSMOLUX VLR was improperly issued by the U.S. Patent and Trademark Office in that the alleged trademark includes an unregistrable component that is merely descriptive of

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the goods that has not become distinctive and should have been disclaimed. Tenth Affirmative Defense Counter-Plaintiff's Counts are barred in equity due to Counter-Plaintiff's unclean hands. Eleventh Affirmative Defense Counter-Plaintiff's registered mark VHR is rendered unenforceable and/or invalid for inequitable conduct. Twelfth Affirmative Defense Counter-Plaintiff's Counts fail to state a cause of action for which relief may be granted. Thirteenth Affirmative Defense Counter-Plaintiff has not acquired any trademark use of the mark VLR apart from the composite mark COSMOLUX VLR. Fourteenth Affirmative Defense Counter-Defendants at all times prominently indicated the source of the goods by displaying the CounterDefendants' name on or in association with the goods. Fifteenth Affirmative Defense Counter-Plaintiff's alleged marks, if valid, are exceptionally weak marks which can not encompass CounterDefendants' use of the letters THR and TLR.

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RELIEF REQUESTED WHEREFORE, Counter-Defendants pray that the Court: (A) Enter judgment of non-infringement in favor of

the Counter-Defendants. (B) Enter judgment in favor of Counter-Defendants

that the Counter-Defendants have not falsely designated the origin or source of their goods or services in violation of any law. (C) Enter judgment in favor of Counter-Defendants

that they have not unlawfully diluted any alleged distinctiveness of Counter-Plaintiff's alleged trademarks. (D) Enter judgment in favor of Counter-Defendants

that they have not willfully infringed any alleged asserted trademarks. (E) Enter judgment in favor of Counter-Defendants

that they did not violate any Federal and/or state law of unfair competition. (F) Enter judgment in favor of Counter-Defendants

that Counter-Defendants' acts do not constitute any unfair competition under the common law. (G) Enter judgment in favor of Counter-Defendants

that the Counter-Defendants are not precluded from using the letters THR and TLR.

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(H)

Enter judgment in favor of Counter-Defendants

that Counter-Defendants' use of the letters THR and TLR is not confusingly similar to Counter-Plaintiff's alleged trademarks VHR, COSMOLUX VLR and VLR. (I) A dismissal of all of Counter-Plaintiff's

counterclaims or counts. (J) That Counter-Defendants be awarded their

reasonable attorney fees in view of the exceptional circumstances of this case. (K) That the Court grant such other further relief as

the Court deems just in law or equity.

Respectfully submitted, Fattibene and Fattibene

By____________________________ Arthur T. Fattibene, CT 06916 Paul A. Fattibene, CT 12760 2480 Post Road Southport, CT 06890 Tel. 203-255-4400 Fax 203-259-0033 February 2, 2004

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