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Plaintiff FACSAC3.23.2016
GEN. BUS. Law 360-1; unfair and deceptive trade practices under the laws of several states,
including New York, N.Y. GEN. BUS. Law 349; tortious interference with contract, tortious
interference with business relations and unfair competition under the common law of the State of
New York. Plaintiff seeks permanent injunctive relief, an accounting, statutory damages,
compensatory damages, Defendant's profits, recovery of its costs and attorneys' fees, and other
relief authorized by the Lanham Act, and applicable state statutory and common law.
JURISDICTION AND VENUE
2. This action arises under the Lanham Act, 15 U.S.C. 1051 et seq. This Court has
jurisdiction under 28 U.S.C. 1331, 1338(b), and 1367 and under principles of pendent
jurisdiction. This Court also has jurisdiction pursuant to 28 U.S.C. 1332 as there is diversity
between the parties and the matter in controversy exceeds, exclusive of interest and costs, the
sum of seventy-five thousand dollars.
3. Venue is proper pursuant to 28 U.S.C. 1391 (a), (b), and (c).
4. This Court has personal jurisdiction over the Defendant pursuant to New York Civil
Practice Law and Rules 301 and 302.
THE PARTIES
5. Plaintiff is a corporation organized and existing under the laws of Delaware having
offices at 221 West Philadelphia Street, York, Pennsylvania 17405; it is the owner of numerous
U.S. trademark registrations related to dental products.
6. Upon information and belief, Defendant Dental Brands For Less, LLC is a Florida
limited liability company that does business as Dental Wholesale Direct and with offices at 9621
NW 28th Street, Cooper City, FL 33024.
SUBSTANTIVE ALLEGATIONS
7. Plaintiff produces, markets, and sells a highly successful line of dental materials and
related products (collectively the "DENTSPLY Products") to retailers and distributors in the
United States under various trademarks, including its famous DENTSPLY mark, which has
been registered as a trademark with the United States Patent and Trademark Office ("PTO")
since 1904.
8. All of Plaintiff's dental products bear the DENTSPLY mark.
9. Plaintiff owns, inter alia, the following US trademark registrations: AQUASIL,
AUTOMATRIX, CALIBRA, CAULK, CAULK ZOE B & T, COMPULES,
DENTSPLY, DISPERSALLOY, DYCAL, ENHANCE, ESTHET-X, FYNAL,
INTEGRITY, IRM, JELTRATE, LYNAL, POLYJEL, PRIME & BOND,
PRISMA, REPROSIL, SANI-TIP, SPECTRUM, SUREFIL, TPH and TPH
SPECTRA ("the DENTSPLY Marks"). The DENTSPLY Marks are all valid and in full
force and effect. True and correct copies of DENTSPLY Marks are attached hereto as Exhibit
1.
10. Plaintiff exercises strict quality control over the production and storage of its
DENTSPLY Products, their completed packaging, and their distribution by its authorized
distributors ("Distributors") in the United States and abroad.
11. Plaintiff has over 100 wholly owned subsidiaries outside the United States ("the
Subsidiary").
12. Each Subsidiary is authorized to enter into distribution agreements with local
distributors subject to restrictions with respect to customers, territory and channels of distribution
and sale, including a prohibition against such distributor selling DENTSPLY Products to any
person if it knows, or has reason to know, that such person intends to sell, offer to sell, market,
promote, distribute, use, transfer or otherwise dispose of the DENTSPLY Products outside of
such distributor's particular territory.
13. Upon information and belief, Defendant is in the business of purchasing, and reselling
dental products, including Plaintiff's, in territories outside the territories in which the distributors,
from whom it receives such goods, are authorized to sell and market them ("gray market"
products).
14. Defendant imports, sells, markets and distributes "gray market" DENTSPLY
Products which are not authorized by Plaintiff for sale in the United States and are materially
different from Plaintiff's authorized goods, including differences in warranty protection, quality
control in storage and shipping, in reliability stemming therefrom, differences in sale of product
after the expiration date thereof, sale of products sold abroad but no longer sold domestically and
other differences stemming from Defendant's handling of such infringing products ("Infringing
Products").
15. Upon information and belief, Defendant's unlawful actions commenced many years
after Plaintiff began using the DENTSPLY mark, many years after the DENTSPLY mark
had achieved worldwide fame, and many years after the DENTSPLY mark was registered in
the PTO.
16. Purchasers and prospective purchasers viewing Defendant's unlicensed and
unauthorized gray goods are likely to mistakenly assume that they are sponsored, licensed,
approved, or authorized by Plaintiff for sale in the United States.
17. Defendant has sold SPECTRUM TPH3 and TPH3 composite restorative products,
whose sale in the United States was discontinued by Plaintiff in 2013, which are physically and
materially different in formulation and packaging from the composite restorative products that
Plaintiff offers for sale in the United States.
18. Since 2013, Plaintiff sells its universal composite restorative under the registered
mark TPH SPECTRA (above) and this restorative is physically and materially different from
the TPH3 and SPECTRUM TPH3 products that Defendant sells.
19. By causing such a likelihood of confusion, mistake, deception, and potential public
health risk, Defendant has infringed and is infringing Plaintiff's trademarks and inflicting
irreparable harm to Plaintiff's goodwill.
20. Furthermore, Defendant's sale of Infringing Products is likely to deceive, confuse,
and mislead purchasers and prospective purchasers into believing that these unlicensed and
unauthorized products were authorized for sale and by Plaintiff. The likelihood of confusion,
mistake, and deception caused by Defendant's unlicensed and unauthorized products has caused
and is causing irreparable harm to Plaintiff.
21. .Upon information and belief, Defendant has used and knowingly and willfully
continues to use Plaintiff's marks and sells the gray goods with the deliberate intent to exploit the
fame and goodwill that Plaintiff has established in its DENTSPLY brand and with the deliberate
intent to create a false impression as to the source and sponsorship of Defendant's products and
to dilute the distinctiveness of Plaintiff's marks. If Defendant's conduct is not enjoined, it will
continue to greatly injure the value of Plaintiff's marks and Plaintiff's ability to distinguish its
goods.
22. Defendant is aware that each Distributor from whom it purchases DENTSPLY
Products is contractually obligated only to sell DENTSPLY Products inside its defined territory
and not outside the defined territory or into the territory knowing, or reasonably aware, that the
product will be contemporaneously moved outside the defined territory for sale outside the
territory.
23. Upon information and belief, Defendant maliciously induces Distributors to sell to it
DENTSPLY Products so that Defendant can sell the DENTSPLY Products in the United States
in full knowledge that its purchases are illegal and cause such Distributors to violate the express
terms of their agreements with the Subsidiary or Plaintiff.
24. Defendant is aware that each Distributor from whom it purchases DENTSPLY
Products is violating a material term of its contract with its local Subsidiary by virtue of such
sale.
25. Upon ascertaining the identity of the Distributors who act as sources of Defendant's
supply of the aforementioned goods and the contracts breached, Plaintiff will obtain an
assignment of the claims of its Subsidiaries relating to those breached contracts and seek leave to
amend the complaint to encompass those specific claims.
26. Plaintiff does not warrant any DENTSPLY Products sold outside of a Distributor's
authorized territory.
27. Upon information and belief, Defendant is aware that there is no warranty by Plaintiff
of the Dentsply gray goods that it sells.
(the
with knowledge that Defendant's actions are intentional, deliberate and willful infringement of
the DENTSPLY Marks. These commercial activities are, at a minimum, in reckless disregard
of Plaintiff's rights under the DENTSPLY Marks.
COUNT I
TRADEMARK INFRINGEMENT (15 U.S.C. 1114)
33. Plaintiff repeats and re-alleges each and every allegation set forth in paragraphs 1
through 32 above, as if each were fully set forth herein.
34. Defendant's unauthorized sale in the United States of the Infringing Products is likely
to cause confusion, mistake, or deception as to the source or sponsorship of such products by
Plaintiff. As a result of Defendant's unauthorized use of Plaintiff's Marks, the public is likely to
be confused as to whether the Defendant's goods are authentic and/or have been approved,
warrantied or sponsored by Plaintiff.
35. Defendant's unauthorized sale in the United States of Infringing Products constitutes a
false designation of origin and a false description or representation that Defendant's sale of such
products is authorized by Plaintiff.
36. Upon information and belief, Defendant's infringement of Plaintiff's registered mark
is willful, intended to reap the benefit of the goodwill of Plaintiff, and violates Section 32 (1) of
the Lanham Act, 15 U.S.C. 1114(1).
37. The aforesaid conduct of Defendant is causing immediate and irreparable injury to
Plaintiff and to its goodwill and reputation, and will continue both to damage Plaintiff and to
deceive the public unless enjoined by this Court.
38. Plaintiff has no adequate remedy at law.
COUNT II
FEDERAL UNFAIR COMPETITION, FALSE DESCRIPTION AND FALSE
DESIGNATION OF ORIGIN (15 U.S.C. 1125(a))
39. Plaintiff repeats and re-alleges each and every allegation set forth in paragraphs 1
through 38 above, as if each were fully set forth herein.
40. Defendant's unauthorized sale of the Infringing Products constitutes a false
designation of origin and a false description or representation that Defendant's sale of such
products is authorized, approved or sponsored by Plaintiff, and is thereby likely to confuse
customers.
41. Defendant's advertising the Infringing Products for sale on the Website using the
DENTSPLY Logo constitutes a false designation of origin and a false description or
representation that Defendant's sale of such products is authorized, approved or sponsored by
Plaintiff, thereby deceiving a substantial segment of visitors to the Website.
42. Defendant's advertising of expiring and expired Infringing Products for sale using the
DENTSPLY Logo further constitutes false advertising in that it falsely suggests that Plaintiff
authorizes sale of products beyond their expiration date.
43. The foregoing constitutes false advertising, in violation of 15 U.S.C. 1125(a).
44. Upon information and belief, Defendant is using the DENTSPLY mark with full
knowledge that it is associated exclusively with Plaintiff.
45. Upon information and belief, Defendant's acts of unfair competition are willful and
deliberate and with an intent to reap the benefit of the goodwill and reputation associated with
Plaintiff.
46. Defendant's sale and distribution of the gray goods are in violation of Section
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61. Defendant is causing and will continue to cause irreparable injury to Plaintiff's
goodwill and business reputation, and dilution of the distinctiveness and value of the famous and
distinctive DENTSPLY mark in violation of the New York anti-dilution act, N.Y. GEN. BUS.
Law 360-1.
62. Plaintiff has no adequate remedy at law.
COUNT V
TORTIOUS INTERFERENCE WITH CONTRACTS
63. Plaintiff repeats and re-alleges each and every allegation set forth in paragraphs 1
through 62 above as if each were fully set forth herein.
64. Plaintiff markets its products through Distributors who are licensed to sell
DENTSPLY Products only in specified territories.
65. Plaintiff's Distributors enter into contracts with Plaintiff or its local Subsidiaries
which prohibit them from directly or indirectly selling DENTSPLY Products outside that
Distributor's authorized territory or altering the labeling or packaging of such products without
Plaintiff's or the Subsidiary's written consent (the "Restrictions").
66. Upon information and belief, Defendant knew about the Restrictions when it
purchased DENTSPLY Products from Distributors.
67. Upon information and belief, Defendant wrongfully and illegally caused Distributors
to breach their contracts by inducing Distributors to sell to Defendant DENTSPLY Products in
violation of the Restrictions.
68. Defendant's interference with the contracts of Distributors has
damaged Plaintiff by reducing Plaintiff's sales of its products and harming its goodwill.
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69. The aforesaid conduct of Defendant is causing immediate and irreparable injury to
Plaintiff and to its goodwill and reputation, and will continue both to damage Plaintiff and to
deceive the public unless enjoined by this Court.
70. Plaintiff has no adequate remedy at law.
COUNT VI
TORTIOUS INTERFERENCE WITH BUSINESS RELATIONS
71. Plaintiff repeats and re-alleges each and every allegation set forth in paragraphs 1
through 70 above as if each were fully set forth herein.
72. Defendants actions as set forth above have interfered wrongfully with Plaintiff's
business relations with its customers.
73. The aforesaid intentional and wrongful conduct of Defendant is causing immediate
and irreparable injury to Plaintiff and to its goodwill and reputation, and will continue both to
damage Plaintiff and to deceive the public unless enjoined by this Court.
74. Plaintiff has no adequate remedy at law.
COUNT VII
UNFAIR COMPETITION
75. Plaintiff repeats and re-alleges each and every allegation set forth in paragraphs 1
through 74 above as if each were fully set forth herein.
76. Upon information and belief, Defendant is using the DENTSPLY mark with full
knowledge that it is associated exclusively with Plaintiff and exclusively designates DENTSPLY
Products.
77. Upon information and belief, Defendant's inducement of Distributors to violate the
Restrictions has damaged Plaintiff's goodwill and relations with its customers.
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78. Defendant's acts as set forth above constitute unfair competition under the common
law of the State of New York.
79. Upon information and belief, Defendant's acts of unfair competition are willful and
deliberate and with an intent to reap the benefit of the goodwill and reputation associated with
the DENTSPLY mark.
80. The aforesaid conduct of Defendant is causing immediate and irreparable injury to
Plaintiff and to its goodwill and reputation, and will continue both to damage Plaintiff and to
deceive the public unless enjoined by this Court.
81. Plaintiff has no adequate remedy at law.
COUNT VIII
UNFAIR AND DECEPTIVE TRADE PRACTICES
82. Plaintiff repeats and re-alleges each and every allegation set forth in paragraphs 1
through 81 above as if each were fully set forth herein.
83. By reason of the acts set forth above, Defendant has been and is engaged in deceptive
acts or practices in the conduct of business, trade or commerce in violation of New York statute
N.Y. GEN. BUS. Law 349.
84. The public is likely to be damaged as a result of Defendant's deceptive trade practices
or acts.
85. The aforesaid conduct of Defendant is causing immediate and irreparable injury to
Plaintiff and to its goodwill and reputation, and will continue both to damage Plaintiff and to
deceive the public unless enjoined by this Court.
86. Plaintiff has no adequate remedy at law.
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a.
b.
c.
d.
using any false designation of origin or false description, or performing any act which is
likely to lead members of the trade or the public to believe that any infringing product
manufactured, distributed, or sold by Defendant is in any manner associated or connected
with Plaintiff, or is sold, manufactured, licensed, sponsored, approved, or authorized by
Plaintiff;
e.
f.
taking any action, including through the use of the DENTSPLY Marks or any
simulation, reproduction, copy, or colorable imitation thereof, that dilutes the unique
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association between the DENTSPLY Marks and Plaintiff, or that tarnishes the
reputation or image of Plaintiff;
g.
h.
i.
j.
2.
Directing that Defendant make available to Plaintiff for review, inspection, and copying
all books, records (including but not limited to all hard drives on computers used for
business purposes, including but not limited to servers, as well as all computer disks and
back-up media) and all other documents concerning all transactions relating to the
purchase, sale, or unauthorized use of products or packaging incorporating the
DENTSPLY Marks and provide Plaintiff the names, addresses, and all other contact
information in its possession for the source(s) of such products and packaging, including
all manufacturers, distributors, and suppliers.
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3.
Directing that Defendant recall from distributors, retailers, and all other recipients any
and all products and packaging sold or distributed by Defendant under or in connection
with the DENTSPLY Marks and, upon recall, to deliver such goods to Plaintiff.
4.
Directing that Defendant cancel any advertising, regardless of the medium, using the
DENTSPLY Marks.
5.
Directing that Defendant deliver to Plaintiff's counsel for destruction at Defendant's costs
all signs, promotional materials, advertising material, catalogs, and any other item that
bears, contains, or incorporates the DENTSPLY Marks.
6.
Requiring Defendant to account for and pay over to Plaintiff three times the profits
realized by Defendant from its infringement of Plaintiff's marks and its unfair
competition with Plaintiff.
7.
Awarding Plaintiff its actual damages, trebled pursuant to 15 U.S.C. 1117(a), arising
out of Defendant's acts of willful unfair competition and trademark dilution.
8.
9.
10.
Awarding Plaintiff its costs in this action, including reasonable attorneys' fees and
expenses, pursuant to 15 U.S.C. 1117(a).
11.
Awarding Plaintiff exemplary and punitive damages to deter any future willful
infringement as the Court finds appropriate.
12.
Directing such other action as the Court may deem appropriate to prevent the trade and
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public from deriving the erroneous impression that any goods or services offered,
advertised, or promoted by or on behalf of Defendant are authorized by Plaintiff.
13.
Directing that Defendant file with the Court and serve upon Plaintiff's counsel within
thirty (30) days after entry of judgment a report in writing under oath setting forth in
detail the manner and form in which Defendant has complied with the above.
14.
Awarding Plaintiff such other and further relief as the Court may deem just and proper.
Jury Demand
Respectfully submitted,
FEDER KASZOVITZ LLP
By:
/s
Larry Miller
/
Murray L. Skala (MS-9354)
Larry B. Miller (LM-8323)
Jonathan Honig (JH-7577)
845 Third Avenue, 11th Floor
New York, NY 10022
Tel: (212) 888-8200
Fax: (212) 888-7776
Attorneys for Plaintiff
DENTSPLY International Inc.
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