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Case 7:15-cv-06850-VB Document 6 Filed 08/31/15 Page 1 of 12

Roger J. Bernstein (RB 9501)


Attorney for Plaintiff
535 Fifth Avenue, 35th Floor
New York, New York 10017
(212) 748-4800
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------------X
:
ELLIOTT GOLDBERG and
:
FABRICATION ENTERPRISES, INC.,
:
:
Plaintiffs,
:
:
- against :
:
HOWARD SILAGY and
:
ACCU-NET, LLC,
:
Defendants.
:
:
---------------------------------------------------------------X

Civ. No. 15-cvECF Case

COMPLAINT

JURY TRIAL
DEMANDED

Plaintiffs Elliott Goldberg and Fabrication Enterprises, Inc., by their attorney,


ROGER J. BERNSTEIN, for their complaint against defendants Howard Silagy and AccuNet LLC, allege as follows:
1.

This is an action for declaratory and injunctive relief (a) from defendants

announced plan to use a federally registered trademark owned by plaintiff, and (b)
from defendants false and misleading advertising which misrepresents the nature and
characteristics of defendants products.
Jurisdiction and Venue
2.

This action for trademark infringement, false designation of origin, and

false advertising arises under the Lanham Act, 15 U.S.C. 1051 et seq. and common
law. This Court has jurisdiction over the subject matter of this action pursuant to 28

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U.S.C. 1338(a) (actions arising under an Act of Congress relating to trademark) and
pursuant to 28 U.S.C. 1331 (federal question). This Court has supplemental
jurisdiction over plaintiffs state law claim pursuant to 28 U.S.C. 1367.
3.

This Court has general and specific in personam jurisdiction over both

defendants. The defendants are domiciled in New York State and have engaged in
conduct in this state which is the subject of this action. Defendant Accu-Net is a registered New York limited liability company with an address at 300 Ocean Avenue,
Northport, New York. Defendant Accu-Net does business in New York and derives
substantial revenue from customers in New York. On information and belief, defendant
Howard Silagy has carried out Accu-Net LLCs company registration transactions with
the State of New York from 300 Ocean Avenue, Northport, New York and has been
engaged in marketing Accu-Net products in the State of New York.
4.

For venue purposes, defendant Accu-Net is deemed to reside in this

district pursuant to 28 U.S.C. 1391(c)(2) and 28 U.S.C. 1391(d). Venue is properly


lodged in this district pursuant to 28 U.S.C. 1391(b)(1), (b)(2) and (b)(3).
Parties
5.

Plaintiff Elliott Goldberg (Goldberg) is an individual residing at 45

Franklin Road, Scarsdale, NY 10583. Goldberg is the owner of the federally registered
Digi-Flex trademark (United States Patent and Trademark Office Reg. No. 1738982) for
a therapeutic hand and finger exerciser.
6.

Plaintiff Fabrication Enterprises, Inc. (Fabrication) is a firm engaged in


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the business of manufacturing and selling products to distributors in the allied health
professions market. The allied health professions market includes without limitation
physical therapy, occupational therapy, hand therapy, sports medicine, adaptive
physical education, and home care. Fabrication is the exclusive licensee of the DigiFlex trademark and sells Digi-Flex hand and finger exercisers in interstate commerce
throughout the United States.
7.

Defendant Howard Silagy (Silagy) is a managing member of defendant

Accu-Net LLC. On information and belief Silagy is the sole owner of defendant AccuNet. At all times pertinent hereto Silagy has been engaged in marketing Accu-Net
products, including the products which are the subject of this action, to customers in
New York State and elsewhere.
8.

Defendant Accu-Net LLC (Accu-Net) is a New York limited liability

company. Beginning in and around 2013, defendant Accu-Net has competed with
plaintiff Fabrication by selling a hand and finger exerciser called Gripmaster Medical
in the allied health professions market.
Facts
The Digi-Flex Trademark
9.

The Digi-Flex trademark has been in continuous use since 1992 for the

sale of therapeutic hand and finger exercisers. The Digi-Flex trademark registration
was granted incontestible status in 1998. It has been continually renewed at all required
times and is a valid and subsisting trademark registration on the Principal Register of
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the United States Patent and Trademark Office. Plaintiff Goldberg has been the owner
of the Digi-Flex trademark since August 31, 2010.
10.

Initially the Digi-Flex trademark was owned by IMC Products Corp.

(IMC), a New York corporation with a principal place of business in Hicksville, New
York. IMC was granted a federal trademark registration for the Digi-Flex trademark
for a therapeutic hand and finger exerciser on December 8, 1992. A copy of this
registration (United States Patent and Trademark Office Reg. No. 1738982) is attached
as Exhibit A. On May 16, 2003, IMC assigned all of its right, title and interest in the
Digi-Flex trademark to Jeff Silagy, Robert Silagy, and Stuart Seidenberg. The
assignment was signed on behalf of IMC by defendant Howard Silagy in his capacity
as president of IMC.1 On February 25, 2010, Jeff Silagy, Robert Silagy, and Stuart
Seidenberg assigned all of their right, title and interest in the Digi-Flex trademark, to
JRS Products, LLC JRS), a New York limited liability company. On August 31, 2010,
JRS assigned all of its right, title and interest in the Digi-Flex trademark, to plaintiff
Elliott Goldberg. Each of these assignments has been publicly filed in the United States
Patent and Trademark Office.
11.

Plaintiff Elliott Goldberg has thus been the owner of all right, title and

interest in the Digi-Flex trademark for a hand and finger exerciser since August 31,

The initial USPTO title abstract for this assignment incorrectly identified Howard
Silagy as one of the assignees of the Digi-Flex trademark; the title abstract was subsequently
corrected to conform to the actual assignment and to show that he was not an assignee of the
Digi-Flex trademark.

Case 7:15-cv-06850-VB Document 6 Filed 08/31/15 Page 5 of 12

2010. The Digi-Flex trademark has been in continuous use for sales of hand and finger
exercisers since that time by Goldbergs exclusive licensee, plaintiff Fabrication. The
Digi-Flex trademark has continued to accrue valuable goodwill and recognition in the
allied health profession marketplace as a result of Fabrications extensive nationwide
sales of Digi-Flex hand and finger exercisers.
The Grip-Master Trademark/Product
12.

The history of the Gripmaster hand and finger exerciser is as follows.

IMC was granted a federal registration for the trademark Grip-Master for a hand and
finger exerciser on December 4, 1990 (United States Patent & Trademark Office Reg.
No. 1625837). This federal trademark registration was cancelled on March 29, 2002 as a
result of failure to file a renewal application. On April 29, 2003, IMC was granted a
federal registration for the trademark Grip Master for a hand and finger exerciser for
therapeutic use (United States Patent & Trademark Office Reg. No. 2711152). This
federal trademark registration was cancelled on December 5, 2009, as a result of failure
to file a declaration of continued use.
13.

On or about May 16, 2003, IMC assigned all of its right, title and interest

in the then-registered Grip Master trademark to defendant Silagy. (Robert Silagy,


Stuart Seidenberg, and Jeff Silagy were co-assignees of this trademark.)
14.

Thereafter defendants Silagy and Accu-Net have used the name

Gripmaster to market a hand and finger exerciser in the sports and music markets.
The hand and finger exerciser they have sold in those markets differed in its physical
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resistance levels, its color code for these resistance levels, and its palm bar
configuration from the Digi-Flex hand and finger exerciser sold by plaintiffs.
15.

Starting in and around 2013, and continuing to the present, defendants

Silagy and Accu-Net have marketed a hand and finger exerciser called Gripmaster
Medical in the allied health professions field, in direct competition with plaintiffs
Digi-Flex hand and finger exerciser. Defendants have changed their Gripmaster
hand and finger exerciser so that their Gripmaster Medical exerciser utilizes the same
physical resistance levels, the same color code, and the same palm bar configuration as
plaintiffs Digi-Flex hand and finger exerciser.
16.

Defendants have made a sustained effort to palm off their Gripmaster

Medical hand and finger exerciser as being the Digi-Flex hand and finger exerciser so
as to take advantage of the reputation and goodwill that have accrued to the Digi-Flex
trademark. In pursuit of their effort to palm off their product, defendants have made
the following false statements in one or more publications delivered in interstate
commerce to thousands of companies and individuals in the allied health professions
market across the United States and on their website:
A.

Initially Gripmaster was known in the medical market as DigiFlex. Recently, due to changes in the company, the Digi-Flex
trademark was sold. We now operate under Prohands Medical for
the medical market. Our Gripmaster medical is made with the
same quality that made it the No. 1 hand exerciser in the world.
(Published in ADVANCE for Physical Therapy and Rehab
Medicine, June 15, 2015, at p. 27)

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These statements, taken singly and together, are false and misleading in multiple
respects. First, defendants falsely state that Gripmaster was known . . . as Digi-Flex
and imply that Gripmaster and Digi-Flex are the same product with a different name.
In fact the Digi-Flex hand and finger exerciser and the Grip-Master hand and finger
exerciser were different products from the outset and Gripmaster was never known in
the medical market as Digi-Flex . Next, defendants falsely imply that it was
Gripmaster that sold the Digi-Flex trademark, when in fact Gripmaster never owned
the Digi-Flex trademark. Furthermore, by falsely stating that Gripmaster sold the DigiFlex trademark recently, defendants imply that Gripmaster has owned and sold the
Digi-Flex hand and finger exerciser until recently. In fact, Gripmaster has never
owned the Digi-Flex trademark and has never sold the Digi-Flex hand and finger
exerciser. In addition, defendants statement attempts to equate the two trademarks by
failing to identify Digi-Flex as a federally registered trademark.
B.

From the original inventors of Digi-Flex


(Published in ADVANCE for Physical Therapy and Rehab
Medicine, June 1, 2015, at p. 19)

This statement is false because Accu-Net and Gripmaster were not the inventors of the
Digi-Flex product. Indeed, at the time the Digi-Flex hand and finger exerciser was
developed in 1992, defendant Accu-Net did not even exist. If the term inventors is
intended to refer to defendant Silagy, it is still misleading. In 1991 Silagy held a patent
for a hand and finger exerciser but that patent did not disclose the resistance levels, the
color code for those resistance levels, or the palm bar configuration used in the Digi7

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Flex hand and finger exerciser. The Digi-Flex product was not the product disclosed
in Silagys patent. The statement is also misleading, as noted above, in not correctly
identifying Digi-Flex as a federally registered trademark.
C.

From the inventors of Digi-Flex. . . .Gripmaster is equal to DigiFlex. Its the original spring-loaded finger piston system and has
become the industry standard at doctors offices and rehab clinics.
(Accu-Net website, screen shot on August 26, 2015)

Defendants claim to be the inventors of Digi-Flex is false for the reasons stated above
in Paragraph 16-B. Their claim that Gripmaster has become the industry standard at
doctors offices and rehab clinics is false, as defendants have just begun selling their
hand and finger exerciser in the allied health professions market. Defendants website
is also misleading, as noted above, in not correctly identifying Digi-Flex as a federally
registered trademark.
D.

Patented
(Used on Accu-Net website and on Gripmaster Medical
product, as shown in screenshots on August 28, 2015)

This statement is literally false because the Gripmaster Medical hand and finger
exerciser is not now patented and is in the public domain.
17.

In August of 2015 plaintiff demanded that defendants cease advertising

their Gripmaster Medical product by means of false statements, including those in


Paragraph 16-A through 16-C above. Defendants have declined to cease their use of the
aforesaid false statements.
18.

On August 26, 2015, defendant Howard Silagy claimed in a telephone


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conference with plaintiff that he has rights in the Digi-Flex trademark and advised
plaintiff that defendants will continue their use of the Digi-Flex trademark in selling
their hand and finger exerciser.
FIRST CAUSE OF ACTION TRADEMARK INFRINGEMENT
(15 U.S.C. 1114)
19.

Plaintiffs repeat and make a part hereof each and every allegation set

forth in paragraphs 1 through 18 above.


20.

Defendants use and intended use of the Digi-Flex trademark owned by

and federally registered to plaintiff Goldberg causes and will cause confusion as to
source among actual and potential customers in violation of Goldbergs right to
exclusive use of the Digi-Flex trademark and violates Section 32(a)(1) of the Lanham
Act, 15 U.S.C. 1114(l)(a).
21.

Any infringement of plaintiffs Digi-Flex trademark will cause

irreparable harm to plaintiffs goodwill and to the value of the Digi-Flex trademark.
Plaintiffs have no adequate remedy at law with respect to this injury.
SECOND CAUSE OF ACTION FALSE DESIGNATION OF ORIGIN
(15 U.S.C. 1125(a))
22.

Plaintiffs repeat and makes a part hereof each and every allegation set

forth in Paragraphs 1 through 21 above.


23.

Defendants use of the Digi-Flex trademark owned by plaintiff Goldberg

to sell their product constitutes a false designation of origin, will cause confusion,
mistake and deception as to the affiliation, connection, and association of defendants
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with plaintiffs, and will cause confusion as to the origin, sponsorship, and approval of
the hand and finger exerciser being sold by defendants, in violation of Section 43(a) of
the Lanham Act, 15 U.S.C. 1125(a).
24.

Defendants false and misleading statements that conflate their

Gripmaster Medical hand and finger exerciser with plaintiffs hand and finger exerciser
are intended to cause and will cause confusion, mistake and deception as to the
affiliation, connection, and association of defendants with plaintiffs and confusion as to
the origin, sponsorship, and approval of the Gripmaster Medical hand and finger
exerciser being sold by defendants, in violation of Section 43(a) of the Lanham Act, 15
U.S.C. 1125(a).
25.

If defendants are permitted to palm off their hand and finger exerciser as

if it is the Digi-Flex hand and finger exerciser, plaintiffs Goldberg and Fabrication will
suffer irreparable harm and will not have an adequate remedy at law with respect to
this injury.
THIRD CAUSE OF ACTION FALSE ADVERTISING
(15 U.S.C. 1125(a))
26.

Plaintiffs repeat and make a part hereof each and every allegation set

forth in Paragraphs 1 through 25 above.


27.

Defendants false statements, such as their false claim to sell a patented

product, and their false claim that their product is from the inventors of the Digi-Flex
hand and finger exerciser, constitute false and misleading advertising as to the nature

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and characteristics of their Gripmaster Medical product, in violation of 15 U.S.C.


1125(a)(1)(B). Defendants false statements are being made in commerce for the purpose
of advertising and promoting their product. Defendants false statements are causing
and will cause irreparable damage to plaintiffs by diverting purchasers of hand and
finger exercisers from Digi-Flex to defendants product.
FOURTH CAUSE OF ACTION UNFAIR COMPETITION
(New York Common Law)
28.

Plaintiffs repeat and make a part hereof each and every allegation set

forth in Paragraphs 1 through 27 above.


29.

Defendants are making false statements concerning plaintiffs Digi-Flex

product for the purpose of competing against plaintiff and/or for the purpose of
palming off their hand and finger exerciser as if it were one and the same as plaintiffs
hand and finger exerciser. Said use of plaintiffs property and/or palming off
constitutes an unfair practice tending to cause injury to the public by reason of its
potential for customer confusion.
30.

Defendants conduct as alleged herein will, unless restrained, cause

irreparable harm to plaintiffs, including serious impairment of the value of the DigiFlex trademark owned by plaintiff Goldberg and used by plaintiff Fabrication under
its license from Goldberg.
WHEREFORE, plaintiff prays that this Court enter a judgment:
(A) Declaring that plaintiff Elliott Goldberg is the sole owner of the Digi-

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Flex trademark and has the exclusive right to use and or license same;

(B) Enjoining defendants from using plaintiffs' Digi-Flex trademark;


(C) Enjoining defendants from making the false and misleading
statements identified herein;

(D) Awarding plaintiffs the defendants' profits from the sale of


defendants' Gripmaster Medical product using false statements, pursuant to 15 U.S.C.
1117(a);

(E) awarding plaintiffs costs and reasonable attorney's fees pursuant to 15


USC
.

1117; and

(E) Granting such other and additional relief as to the Court appears just
and equitable.
Dated: New York, New York

August 28, 2015

iogef J. Bernstein, Esq. (RB 1228)


Attorney for Plaintiffs Elliott Goldberg and
Fabrication Enterprises, Inc.
535 Fifth Avenue, 35,h Floor
New York, NY 10017
Tel: 212 748-4800

rbernstein@rjblaw.com

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