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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.govESTTA Tracking number:Filing date:ProceedingIN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD91218363PartyPlaintiffNEW WAVE INNOVATIONS, INC.CorrespondenceAddressSubmissionJohn H. Faro, Esq.Faro & Associates1395 Brickell AvenueSuite 800Miami, FL 33131UNITED [email protected] to Amend Pleading/Amended PleadingFiler's NameJohn H. Faro, Esq.Filer's [email protected]/John H. 46 bytes )AmendedOppositionNov12.pdf(136018 bytes )CombineExh1.pdf(2121212 bytes )CombineExh2.pdf(497556 bytes )CombineExh4.pdf(214408 bytes )CombineExh5.pdf(1546184 bytes )CombineExh6.pdf(1576090 bytes )CombineExh7.pdf(87757 bytes )CombineExh8.pdf(1772719 bytes )CombineExh3.1.pdf(258772 bytes )ESTTA63862511/13/2014
IN THE UNITED STATES PATENT & TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL & APPEAL BOARDNEW WAVE INNOVATIONS, INC.Opposervs.MR. FOAMER, INC. (A FLORIDACORPORATION)Applicant/OPPOSITION NO. 91/218,363MOTION TO AMENDED OPPOSITIONThe Opposer, New Wave Innovations, Inc. (hereinafter also "NEW WAVE"), by counsel,herein responds to the Motion to Dismiss Opposition as follows:1.The Opposition filed in the subject proceeding was sufficiently detailed to complywith the “notice pleading” requirements, insofar as the parties have been engaged litigation sinceJuly 2013, in matters which directly implicate the issues now before the Board. Accordingly, thecontention by Applicant that its pleadings fail to place it upon notice of the issues is at bestdisingenuous. Notwithstanding, the proposed detailed Amended Opposition should obviate anyperceived inadequacies and provide additional clarity.2.The Amended Opposition includes a number of additional Exhibits demonstratingboth the standing of NEW WAVE to contest this registration and establish priority of use.3.Accordingly, it is respectfully requested the attached Amended Opposition beentered.1
Respectfully,/John H. Faro/Reg. No, 25,859FARO & ASSOCIATES1395 Brickell Avenue – Suite 800Miami, Florida 33131phone 305, 761-6921email: [email protected]
CERTIFICATE OF SERVICEI hereby certify that the foregoing pleading entitled:MOTION TO AMENDED OPPOSITIONwas forwarded, via email, to Counsel for Plaintiff, as per the attached Distribution List this 12thday of November, 2014./John H. Faro/DISTRIBUTION LIST:Isabel Jung, Esq.CARY, RODRIGUEZ, GREENBERG & O’KEEFE7900 Glades Road, Suite 520Boca Raton, FL 33434Email: [email protected]
IN THE UNITED STATES PATENT & TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL & APPEAL BOARDNEW WAVE INNOVATIONS, INC.Opposervs.MR. FOAMER, INC. (A FLORIDACORPORATION)Applicant/OPPOSITION NO. 91/218,363AMENDED OPPOSITION(First)The Opposer, New Wave Innovations, Inc. (hereinafter also "NEW WAVE"), by counsel,alleges for its Opposition to Trademark Application Ser. No. 86/108,666, for registration of theMR FOAMER mark (Date of First Use: August 12, 2012), by Mr. Foamer, Inc. (“FOAMER”),as follows. These allegations are based upon personal knowledge, with respect to NEW WAVE’sown acts, and upon information and belief as to all other matters.Nature of the Action1.New Wave Innovations, Inc., a California Corporation, based in Lodi, California,herein asserts its Opposition to the registration of the MR FOAMER mark by the TrademarkApplicant, Mr. Foamer, Inc. The basis of the Opposition can be summarized as follows:A.There is Likelihood of Confusion in the marketplace – Count I The NEW WAVE was the first to adopt and use the MR FOAMER mark incommerce in December 2011, in Christmas card promotion and marketing1
program for the distribution and sale of NEW WAVE commercial car washproducts; The FOAMER, with knowledge of the NEW WAVE’s prior use of the mark inDecember 2011, adopted and registered the Mr. Foamer name, as its corporatename, in July 2012, and thereafter in about August 2012, began using the MRFOAMER mark, as a “house mark” in association with virtually all of itscommercial car wash products and services; There has been actual confusion between the NEW WAVE’s use of the MRFOAMER mark, in association with its distribution of commercial car washproducts, including specifically internet sales of the commercial car washproducts; There is and continues to be a likelihood of confusion, more accurately, reverseconfusion, between the each of the NEW WAVE’s and the FOAMER’s use ofthe MR FOAMER mark on commercial car wash products and servicesassociated with the MR FOAMER mark, because each of the partiescommercial car wash products and services are distributed through the samechannels of trade (on-line, trade shows, commercial care wash parts distributorsand commercial car wash chemicals distributors) to virtually the samecustomers; Upon learning of the FOAMER’s attempt to register the MR FOAMER mark,NEW WAVE filed its own trademark applications, which are now pending andawaiting examination, alleging a date of first use in December 2011;2
Accordingly, NEW WAVE has standing to challenge the potential registrationof the MR FOAMER mark by FOAMER;B.The FOAMER’s Trademark Application Must Be Stricken For Fraud Upon TheTrademark Office – Count II FOAMER’s trademark application affirmatively represents that FOAMERwas the first to adopt and use the MR FOAMER trademark, in commerce,in association with the marketing and distribution of commercial car washproducts, which is false and known to have been false at the application wasfiled; FOAMER’s trademark application affirmatively represents that FOAMERwas not aware of anyone else using the same or similar mark in commerce,and, thus, it asserts that there is no likelihood of confusion with its adoptionand use of such mark, which is false; FOAMER has affirmatively represented in its trademark application that theexemplar illustrating the use of the MR FOAMER mark was first used onor about August 2012, which is false; and FOAMER’s attorney, who filed the instant trademark application, is thesame attorney who has and continues to represent FOAMER in the unfaircompetition, trademark infringement lawsuit between the parties in theFederal District Court for the Southern District of Florida, New WaveInnovations, Inc. v. James (Jim) McClimond, Case No. 2013-CV-22541.(herein “Lanham Act Litigation”3
The Lanham Act Litigation between the parties asserts a claim fromcommon law trademark infringement by NEW WAVE against FOAMER.Paragraphs 22 & 57 (from Count IV for Common Law TrademarkInfringement) are reproduced below for the convenience of the Board:22.NEW WAVE actively promotes its business, its productsand its proprietary “Turbo Foam Technology”, under a number ofregistered and unregistered marks and product designations, whichare prominently displayed on its marketing and promotionalmaterials, including the unregistered trademarks Mr. Foamer, TurboFoam, Turbo Foam Generator and Elephant Ear Foam Applicator(collectively also “NEW WAVE MARKS”).Generator andElephant Ear Foam Applicator (collectively also "NEW WAVEMARKS").57.MCCLIMOND has infringed, and continues to infringe, onNEW WAVE’s exclusive rights to the NEW WAVE MARKS anddistinctive trade dress, by applying the NEW WAVE MARKS, or acolorable imitation of the NEW WAVE MARKS, to printedmaterials, products and advertising materials, including but notlimited to the “Twist ‘n Kleen” foam generator and the “ElephantEars” foam applicator, sold by MCCLIMOND. The NEW WAVEuse and promotion of the “Mr. Foamer” mark being depicted in theholiday character greetings messages annexed hereto as Exhibit“6”. Such unauthorized use of the NEW WAVE MARKS is likelyto cause confusion or mistake and/or to deceive the public. Accordingly, the FOAMER representations in its trademark application, asregards its priority of adoption and use of the MR FOAMER mark andlikelihood of confusion, were patently false and known to have been falseat the time of the filing of FOAMER’s application for the registration of theMR FOAMER mark; and, such representation were intentional andcalculated to deceive the Trademark Office.application should be stricken.4FOAMER’s trademark
Parties1.The Opposer, NEW WAVE is a California corporation, (founded in about January2010), with its principle place of business in Lodi, California. NEW WAVE designs, engineers,and manufactures innovative and proprietary products for automatic commercial car washes.2.NEW WAVE markets and distributes its proprietary commercial car wash productsin commerce, nationally, under various trade and service marks, including the MR FOAMERmark.3.James (Jim) McClimond (also “MCCLIMOND”), is an individual, customer andreseller of NEW WAVE automatic commercial car wash products and accessories incorporatingthe NEW WAVE proprietary product designs and trademarks.4.Car Wash Experts, Inc., is a Florida corporation, organized and existing under thelaws of the State of Florida; and, upon information and belief, was founded by MCCLIMOND tomanufacture, market and/or distribute automatic commercial car wash products, includingautomatic commercial car wash products and accessories incorporating the NEW WAVEproprietary product designs and trademarks5.The Applicant, Mr. Foamer, Inc., is a Florida corporation, organized and existingunder the laws of the State of Florida; and, upon information and belief, was founded byMCCLIMOND to manufacture, market and/or distribute automatic commercial car wash products,including automatic commercial car wash products and accessories incorporating the NEWWAVE proprietary product designs and trademarks.COUNT I6.NEW WAVE incorporates Paragraphs 1- 4, as if restated herein and further alleges:7.In late October and/or early November 2011, MCCLIMOND contacted NEW5
WAVE and solicited information relative to the Car Wash Experts, Inc., distribution of automaticcommercial car wash products incorporating the NEW WAVE proprietary “Turbo FoamTechnology”.8.From about November 2011, through March 2012, Car Wash Experts, Inc., orderedapproximately 7,000, in automatic commercial car wash products incorporating the NEW WAVEproprietary “Turbo Foam Technology”, including products having a distinctive “turbo foamgenerator” and distinctive “elephant ears” design and appearance, New Wave Innovations InvoiceNos. 156, 166, 179 & 213, annexed hereto as Composite Exhibit “1”.9.On or about late November or early December 2011, NEW WAVE designed aChristmas card, (based upon it proprietary product design), which depicted its proprietary productas Santa Claus figure named Mr. Foamer, NEW WAVE December 2011, Christmas card annexedhereto as Exhibit “2”.10.NEW WAVE sent this MR FOAMER Christmas card, via email, to its customersand prospective customers in December 2011, including McClimond at Car Wash Experts, Inc.,in Florida.11.This MR FOAMER Christmas car included a discount coupon for the purchase ofNEW WAVE’s products, Discount Coupon for NEW WAVE’s products annexed hereto asExhibit “3”.12.This Discount Coupon (Exhibit “3”) offered a number of discounts on thepurchase of NEW WAVE products if made before March 1, 2012 – reflecting the NEW WAVEsolicitation of sale of NEW WAVE commercial car wash products in advance of the March 12,2012, expiration date, and before the incorporation of FOAMER in July 2012, and the date of firstuse of the MR FOAMER mark by FOAMER in August 20126
13.NEW WAVE has continued to use the MR FOAMER mark and the MR FOAMERcharacter, in commerce, with discount coupons solicitation of sales on NEW WAVE products forvarious holiday product promotions, including Halloween, Thanksgiving and New Year’s, NEWWAVE’s MR FOAMER Halloween card depicted its proprietary product emerging from apumpkin, annexed hereto as Exhibit “4”.14.NEW WAVE’s use of the MR FOAMER mark, for the name of the NEW WAVEpromotional figure/character (typically dressed in holiday/seasonal garb or regalia), in associationwith NEW WAVE’s holiday/seasonal promotions for it commercial car wash products, has andcontinues to result in the likelihood and/or the reverse confusion of NEW WAVE with FOAMER,and FOAMER’s products marketed under the MR FOAMER house mark with NEW WAVE’sproducts and services.15.NEW WAVE’s use of the MR FOAMER mark, for the name of the NEW WAVEpromotional figure/character (typically dressed in holiday/seasonal garb or regalia), for thepromotions of it commercial car wash products, has and continues to result in the likelihood ofconfusion of consumers of commercial car products, as to relationship/affiliation between NEWWAVE and FOAMER.16.NEW WAVE has since learning of the FOAMER trademark application, hasapplied for registration of the MR. FOAMER mark as a service mark for its distribution ofcommercial car wash products. Each of NEW WAVE’s applications were filed on or about June19, 2014, SN 86/304,665 & SN 86/303,800, filing receipts annexed hereto, as Exhibits “5” &“6”. The date of first use for each of the NEW WAVE’s applications is December 2011, whichis prior in time to the date of first use alleged in Application Ser. No. 86/108,66617.There has been actual confusion, more accurately, reverse confusion, between7
NEW WAVE and FOAMER, in that NEW WAVE is repeated queried by his own customers as ituse of the MR FOAMER mark, and as to his affiliation with the FOAMER.18.There has been actual confusion as between the FOAMER’s customers and NEWWAVE, and FOAMER’s defective products have and continue to be returned to NEW WAVE fora refund and/or replacement.WHEREFORE NEW WAVE respectfully requests the Board grant this Opposition anddeny registration of the MR FOAMER mark to FOAMER as likelihood to result in confusion ofNEW WAVE and FOAMER and confusion between their respective products.COUNT II19.NEW WAVE incorporates Paragraphs 1- 4, as if restated herein and further alleges:20.Each of NEW WAVE and FOAMER are competitors; and, each manufacture anddistribute commercial car wash foam generators, and accessory product, which are virtuallyindistinguishable from one another.21.On or about July 16, 2013, NEW WAVE sued Mr. Foamer et al in the FederalDistrict Court for the Southern District of Florida, New Wave Innovations, Inc. v. James (Jim)McClimond, Case No. 2013-CV-22541. The claims asserted against Mr. Foamer et al, includeunfair competition based upon trade secret theft, common law trademark and trade dressinfringement. Copy of Amended (current) Complaint annexed hereto as Exhibit “7”.22.On September 27, 2013, the Defendants, including FOAMER, filed their AnswerTo Amended Complaint [DE #43], in this lawsuit, and asserted by way of Affirmative Defense,that:8
Fifth DefenseFailure to State a Claim Against Mr. Foamer for Trademark Infringement, TradeDress Infringement and Unfair CompetitionContrary to New Wave’s allegations, Mr. Foamer does not use in commerce the allegedtrademarks or trade dress of New Wave in connection with the sale of its products.Accordingly, New Wave cannot demonstrate any trademark infringement, trade dressinfringement or unfair competition on the part of Mr. Foamer.23.FOAMER’s attorney, who filed the trademark application before the Board, andwho represents FOAMER in this above Opposition, is the same attorney who has and continues torepresent FOAMER in the lawsuit filed by NEW WAVE against the FOAMER pending in theFederal District Court in the Southern District of Florida.24.On or about October 29, 2013, the Federal District Court conducted an evidentiaryhearing on a NEW WAVE Motion for Preliminary Injunction. The Defendants (including Mr.Foamer, Inc.) put on a classic “fair use” defense – e.g. the NEW WAVE Mr. Foamer mark wasmerely descriptive, lacked any secondary meaning within the trade and had never been used byany of the Defendants, including Mr. Foamer, Inc. in association with any of the products orservices of his company.25.In support of this “fair use” defense, the Jim McClimond, the founder and corporaterepresentative of Mr. Foamer, Inc.,a. filed an affidavit in Opposition to the Plaintiff’s Motion for Preliminary Injunction inwhich he stated under oath that Mr. Foamer, Inc. has not used the terms “Mr.Foamer”, in connection with the sale of a product (Affidavit of McClimond, DE [email protected] 13 – annexed hereto as Exhibit “8”Paragraph 13 of the McClimond Affidavit states in unequivocal terms13. Mr. Foamer does not use a trademark containing the terms MR. FOAMERin connection with the sale of any product9
b. testified, under oath, that that Mr. Foamer, Inc. has not used the terms “Mr. Foamer”,in connection with the sale of products, Hearing on October 29, 2013, Tx @ page [email protected] line 5-8; & page 219, lines 5-7, - annexed hereto as Exhibit “926.Notwithstanding the prior representations, under oath, in the pending FederalDistrict Court litigation involving the parties, FOAMER filed a Federal application (Serial No.86/108,666) with the US Trademark Office seeking Federal Registration of the terms “Mr.Foamer” for “car wash cleaning & polishing preparations” and for “sale of car wash equipmentand parts thereof, including sale of equipment to others”, in direct contradiction of theMcClimond Affidavit and testimony before the Federal District Court.27.Notwithstanding the NEW WAVE requests for production of documents to Mr.Foamer, Inc. in the pending Federal District Court litigation involving the parties, Mr. Foamer,Inc. did not produce any document manifesting any trademark usage of the MR. FOAMER mark.28.Only now in the FOAMER attempted registration of the MR FOAMER mark, hasFOAMER now produced an exemplar in support of registration illustrating, Mr. Foamer, Inc. useof the MR FOAMER mark in commerce.29.This FOAMER exemplar depicts the MR FOAMER mark (its “house mark”) witha “tm” superscript.30.Upon information and belief, this MR FOAMER exemplar was either withheldduring discovery and thereby concealed from the Court at the time of the hearing on the NEWWAVE Motion for Preliminary Injunction, because of its obvious conflict with the “fair use”defense to trademark infringement; and alternatively, was created after the October 29, 2013, forsole purpose of support the subject registration.10
31.NEW WAVE has, since the discovery of the Mr. Foamer, Inc. trademarkapplication, filed a Motion to Strike its pleadings in the litigation before the Federal District Court,based upon the apparent misconduct before the Federal District Court.32.The representations by FOAMER in its trademark application for registration of theMR FOAMER mark are irreconcilable with the foregoing assertions and conduct in the litigationbetween the parties in the Federal District Court33.The representation by FOAMER in its trademark application for registration of theMR FOAMER mark manifest a disregard for the duty of candor imposed upon all applicants andtheir counsel who practice before the United States Trademark Office.34.The representation by FOAMER in its trademark application for registration of theMR FOAMER are deserving of the most draconian of sanctions, including without limitation thestriking of the FOAMER trademark application for registration of the MR FOAMER markWHEREFORE NEW WAVE respectfully requests the Board grant this Opposition bystriking the FOAMER application for registration of the MR FOAMER mark for fraud upon theTrademark Office.Respectfully,/John H. Faro/Reg. No, 25,859FARO & ASSOCIATES1395 Brickell Avenue – Suite 800Miami, Florida 33131phone 305, 761-6921email: [email protected]
CERTIFICATE OF SERVICEI hereby certify that the foregoing pleading entitled:AMENDED OPPOSITION(First)was forwarded, via email, to Counsel for Plaintiff, as per the attached Distribution List this 12thday of November, 2014./John H. Faro/DISTRIBUTION LIST:Isabel Jung, Esq.CARY, RODRIGUEZ, GREENBERG & O’KEEFE7900 Glades Road, Suite 520Boca Raton, FL 33434Email: [email protected]
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Case 1:13-cv-22541-MGC Document 136 Entered on FLSD Docket 04/22/2014 Page 1 of 17IN THE UNITED STATES DISTRICT COURTFOR THE SOUTHERN DISTRICT OF FLORIDA(Miami Division)Case No. 13-CV-22541-COOKE/TURNOFFNEW WAVE INNOVATIONS, INC.))Plaintiff)vs.))JAMES (JIM) MCCLIMOND (AN INDIVIDUAL),)MR. FOAMER, INC. (A FLORIDA CORPORATION) & )CAR WASH EXPERTS, INC. (A FLORIDA)CORPORATION)))Defendants)/AMENDED COMPAINT(Second)The Plaintiff, New Wave Innovations, Inc. (hereinafter also "NEW WAVE"), by counsel,alleges for its Complaint, upon knowledge, with respect to its own acts, and upon informationand belief as to all other matters, as follows:Nature of the Action1.New Wave Innovations, Inc., a California Corporation, based in Lodi, California,brings this action against the Defendants, James (Jim) McClimond, Car Wash Experts, Inc., andMr. Foamer, Inc., (herein also collectively “MCCLIMOND”) fora. False Designation Of Origin under the Lanham Act, 15 U.S.C. § 1125(a);b. Trade Dress Infringement under the Lanham Act, 15 U.S.C. § 1125(a);c. Breach of Confidential Business Relationship, State Law;d. Trademark Infringement, State Lawe. Florida Unfair and Deceptive Trade Practices Act, §§ 501.201, et seq., Fla.Stat.1
Case 1:13-cv-22541-MGC Document 136 Entered on FLSD Docket 04/22/2014 Page 2 of 17Jurisdiction and Venue2.This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.§1121 (original jurisdiction over Lanham Act claims), 28 U.S.C. §1331 (federal question), 28U.S.C. §1332 (diversity of citizenship); 28 U.S.C. §1338 (original jurisdiction over trademarkclaims), 28 U.S.C. §1367 (supplemental jurisdiction), and principals of ancillary and pendentjurisdiction.3.Defendant, Car Wash Experts, Inc., is a Florida corporation, (founded in March2011), which operates, conducts, engages in, and/or carries on a business in this district (Jupiter,Florida), and is therefore subject to personal jurisdiction in this district.4.Defendant, Mr. Foamer, Inc., is a Florida corporation (founded in July 2012),which operates, conducts, engages in, and/or carries on a business in this district (Jupiter,Florida), and is therefore subject to personal jurisdiction in this district.5.Defendant, James (Jim) McClimond, (hereinalso “MCCLIMOND”) is the founderand officer of the each of the Defendants Mr. Foamer, Inc., and Car Wash Experts, Inc., andcontrols and directs the actions of each of the Defendants Mr. Foamer, Inc., and Car WashExperts, Inc., including the unlawful conduct of the Defendants Mr. Foamer, Inc., and Car WashExperts, Inc., in this district. MCCLIMOND also resides in this judicial district and is thereforesubject to personal jurisdiction in this district.6.Venue is proper in this district pursuant to 28 U.S.C. § 1391(b), § 1391(c), andotherwise because, among other things, MCCLIMOND personally resides in this district and thecorporate Defendants which he directs and controls, have a principal place of business in thisdistrict and a substantial part of the events or omissions giving rise to this action occurred in thisdistrict.2
Case 1:13-cv-22541-MGC Document 136 Entered on FLSD Docket 04/22/2014 Page 3 of 17Parties7.The Plaintiff, NEW WAVE is a California corporation, with its principle place ofbusiness in Lodi, California. NEW WAVE designs, engineers, and manufactures innovative andproprietary products for automatic commercial car washes.NEW WAVES markets anddistributes its proprietary products, including products incorporating it proprietary “Turbo FoamTechnology”, directly to customers and through a distributor network.8.The Defendant, James (Jim) McClimond (also “MCCLIMOND”), is anindividual, and a former distributor of NEW WAVE automatic commercial car wash productsand accessories incorporating the NEW WAVE proprietary “Turbo Foam Technology”.9.The Defendant, Car Wash Experts, Inc., is a Florida corporation, organized andexisting under the laws of the State of Florida; and, upon information and belief, was founded byMCCLIMOND to manufacture, market and/or distribute automatic commercial car washproducts, including products incorporating the NEW WAVE proprietary “Turbo FoamTechnology” and NEW WAVE product designs.10.The Defendant, Mr. Foamer, Inc., is a Florida corporation, organized and existingunder the laws of the State of Florida; and, upon information and belief, was founded byMCCLIMOND to manufacture, market and/or distribute automatic commercial car washproducts, including products incorporating the NEW WAVE proprietary “Turbo FoamTechnology” and NEW WAVE product designs.Parties Confidential Business Relationship & History11.In late October and/or early November 2011, MCCLIMOND contacted NEWWAVE and solicited information relative to the MCCLIMOND distribution of automatic3
Case 1:13-cv-22541-MGC Document 136 Entered on FLSD Docket 04/22/2014 Page 4 of 17commercial car wash products incorporating the NEW WAVE proprietary “Turbo FoamTechnology”.12.Incident to this contact in October-November 2011, between MCCLIMOND andNEW WAVE, MCCLIMOND requested and was provided with NEW WAVE confidentialtechnical, marketing and competive sales information, relative to automatic commercial car washproducts incorporating the NEW WAVE proprietary “Turbo Foam Technology”.13.The NEW WAVE confidential technical, marketing and competive salesinformation, relative to automatic commercial car wash products incorporating the NEW WAVEproprietary “Turbo Foam Technology”, referenced hereinabove in Paragraph (12), was providedand entrusted to MCCLIMOND for his use exclusively with the sales, marketing and distributionof unique and distinctive automatic commercial car wash products available from NEW WAVE.14.The NEW WAVE confidential technical, marketing and competive salesinformation, relative to automatic commercial car wash products incorporating the NEW WAVEproprietary “Turbo Foam Technology”, referenced hereinabove in Paragraph (12), was providedand entrusted to MCCLIMOND, with the agreement, in fact, that such information was to beused for the exclusive benefit of NEW WAVE.15.The NEW WAVE confidential technical, marketing and competive salesinformation, relative to automatic commercial car wash products incorporating the NEW WAVEproprietary “Turbo Foam Technology”, referenced hereinabove in Paragraph (12), was providedand entrusted to MCCLIMOND, with the agreement, in fact, that such information would not beused and/or disclosed to third party, including specifically an entity competing with NEWWAVE.16.From about November 2011, through March 2012, MCCLIMOND, orderedapproximately 7,000, in automatic commercial car wash products incorporating the NEW4
Case 1:13-cv-22541-MGC Document 136 Entered on FLSD Docket 04/22/2014 Page 5 of 17WAVE proprietary “Turbo Foam Technology”, including products having a distinctive “turbofoam generator” and distinctive “elephant ears” design and appearance, New Wave InnovationsInvoice Nos. 156, 166, 179 & 213, annexed hereto as Composite Exhibit “1”.Defendant's Wrongful Acts17.Upon information and belief, MCCLIMOND used the NEW WAVE information,without authorization or license, to reverse engineer NEW WAVE products, to producecompeting automatic commercial car wash products incorporating the NEW WAVE proprietary“Turbo Foam Technology”, including the slavishly copying the NEW WAVE proprietary anddistinctive “Turbo Foam Technology”, and the proprietary and distinctive designs for the “TurboFoam Generator” and the “Elephant Ears” foam applicator, the NEW WAVE distinctive productdesigns being depicted in the NEW WAVE product literature annexed hereto as Exhibit “2”;and, the MCCLIMOND “knock off” of the NEW WAVE distinctive products being depicted tothe MR. FOAMER product literarture annexed hereto as Exhibit “3”.18.The commercial environment, and circumstances relative to the qualification ofMCCLIMOND as a NEW WAVE distributor, as set forth in Paragraphs 12-15, inclusive, createda confidential business relationship between NEW WAVE and MCCLIMOND, and anagreement, in fact, imposing rights and obligations relative to the use and restraint upondisclosure of NEW WAVE information, which are enforceable under the law, including state andfederal law.19.Notwithstanding the confidential business relationship between NEW WAVE andMCCLIMOND, MCCLIMOND, from and after April 2012, undertook preparations to “knockoff” automatic commercial car wash products incorporating the NEW WAVE proprietary “TurboFoam Technology”, including the slavish copying of the distinctive and proprietary NEW5
Case 1:13-cv-22541-MGC Document 136 Entered on FLSD Docket 04/22/2014 Page 6 of 17WAVE Turbo Foam Generator and the distinctive and proprietary NEW WAVE designs for theTurbo Foam Generator and the Elephant Ears Foam Applicator.20.From and after April 2012, MCCLIMOND undertook to manufacture, market anddistribute automatic commercial car wash products, in competition with NEW WAVE,incorporating the NEW WAVE proprietary “Turbo Foam Technology”, and to manufacture,market and distribute automatic commercial car wash products incorporating the NEW WAVEproprietary trade dress, specifically, a “Twist ‘n Kleen” (Foam) Generator, and Elephant Earsfoam applicators, having the same distinctive design and appearance as the NEW WAVE “turbofoam generator” and “elephant ears”.21.The MCCLIMOND “Twist ‘n Kleen” (Foam) Generator, and Elephant Ears foamapplicators, are marketed to the same customers and through the same channels of trade, to thesame customers, as are automatic commercial car wash products incorporating the NEW WAVEproprietary “Turbo Foam Technology”.NEW WAVE Trademarks & Trade Dress22.NEW WAVE actively promotes its business, its products and its proprietary“Turbo Foam Technology”, under a number of registered and unregistered marks and productdesignations, which are prominently displayed on its marketing and promotional materials,including the unregistered trademarks M
[email protected] Submission Motion to Amend Pleading/Amended Pleading Filer's Name John H. Faro, Esq. Filer's e-mail [email protected] Signature /John H. Faro/ Date 11/13/2014 Attachments MotionAmend2.pdf(88046 bytes ) AmendedOppositionNov12.pdf(136018 bytes ) CombineExh1.pdf(2121212 bytes ) CombineExh2.pdf(497556 bytes ) CombineExh4.pdf .
