THE ARGUMENTS IN FULL
Updated April 16, 1999

 TrialGraphix vs. The Graphic Witness

ROUND 1, Original Filings (9/9 to 10/2/98)

INTERLUDE: TrialGraphix Fails to Get Restraining Order
to Have Those Terrible Two Words Yanked from This Web Site


ROUND 2, TrialGraphix Gets Two Affirmative Defenses
and One Counterclaim Tossed Out
(10/28- 3/17/99)

TRIALGRAPHIX INC.

Attorney:

Eric D. Isicoff, Esq.
Isicoff & Ragatz, P.A.
1101 Brickell Avenue
Suite 800 - South Tower
Miami, Florida 33131
(305) 373-3232

THE GRAPHIC WITNESS INC.

Attorney

Kevin P. Crosby
Malin, Haley, DiMaggio & Crosby, P.A.
One East Broward Boulevard
Suite 1609
Fort Lauderdale, Florida 33301
(954) 763-3303
patents954@aol.com

 ROUND 1 (TOP)

Cover page

VERIFIED COMPLAINT
(12 pages, not counting exhibits.
Filed Sept. 9, 1998)

COUNT I

COUNT II

COUNT III

COUNT IV

COUNT V

COUNT VI

COUNT VII

 

Claim for Punitive Damages
and for Attorneys' Fees and Costs

 

Exhibit A

Exhibit B

Exhibit C

Exhibit D, E & F

Attorney Isicoff's letters:

 

MOTION FOR
TEMPORARY RESTRAINING ORDER
AND ORDER TO SHOW CAUSE
WHY A PRELIMINARY INJUNCTION
SHOULD NOT BE ENTERED

(3 pages)

 

Exhibit A:

 

PLAINTIFF'S MEMORANDUM OF LAW IN SUPPORT OF INJUNCTIVE RELIEF
(14 pages)

PRELIMINARY STATEMENT

STATEMENT OF FACTS

ARGUMENT

A. Standard of Review

B. TrialGraphix is Likely to Succeed on the Merits of its Claims

a. Trademark Infringement and Unfair Competition
  • 1. TrialGraphix's Marks are Protected
  • 2. Consumers are Likely to be Confused
  • (i) The Type of Mark
    (ii) The Similarity Between the Marks
    (iii) Similarity of Services
    (iv) Identity of Retail Outlets and Purchasers
    (v) Identity of Advertising Media
    (vi) Defendants' Intent
    (vii) Actual Consumer Confusion

    b. Trademark Dilution

    C. TrialGraphix Will be Irreparably Harmed Unless Defendants are Enjoined

    D. Balancing the Hardships Favors TrialGraphix

    E. The Issuance of an Injunction is in the Public Interest

    CONCLUSION

    Exhibit 1

    (TOP)

     

    DEFENDANTS ANSWER,
    AFFIRMATIVE DEFENSES,
    AND COUNTERCLAIMS
    (9 pages. Filed Oct. 5, 1998)

     

    AFFIRMATIVE DEFENSES
    3 and 9 Stricken, 3/17/99
    Go to Order

    COUNTERCLAIM ONE
    Dismissed, 3/17/99
    Go to Order

    COUNTERCLAIM TWO

    COUNTERCLAIM THREE

     

    RETURN TO MAIN LAWSUIT PAGE

    GO TO ROUND 2

    Oct. 19, 1998

    JUDGE DENIES TEMPORARY RESTRAINING ORDER

    Nov. 2, 1998

    PLAINTIFF'S MOTION FOR RECONSIDERATION OF ORDER DENYING MOTION FOR TEMPORARY RESTRAINING ORDER AND REQUEST FOR HEARING
    (7 pages)

    Factual Background

    Applicable Legal Principles

    Conclusion

     Nov. 19, 1998

    DEFENDANT'S OPPOSITION TO PLAINTIFF'S MOTION FOR RECONSIDERATION AND FOR HEARING
    (9 pages)

    I. PLAINTIFF HAS NOT SHOWN THAT IT ENJOYS A SUBSTANTIAL LIKELIHOOD OF SUCCEEDING ON THE MERITS.

    A. Defendants' use of phrase "Trial graphics" is a "Fair Use."

    B. Plaintiff is Not Entitled to Temporary or Preliminary Injunctive Relief Due to Plaintiff's Delay in Bringing Suit.

    C. Plaintiff has Failed to Comply With Rule 7.1(B) of the Local Rules

     Dec. 1, 1998

    JUDGE AGAIN DENIES
    TEMPORARY RESTRAINING ORDER

    Dec. 4, 1998

    Judge corrects order to say "trademark," not copyright

    ROUND 2 (TOP)

     Oct. 28, 1998
    TrialGraphix

    MOTION TO DISMISS COUNTERCLAIM ONE AND TO STRIKE AFFIRMATIVE DEFENSES WITH SUPPORTING MEMORADUM OF LAW
    (3 pages)

    BACKGROUND

    ARGUMENT

     

    REPLY AND AFFIRMATIVE DEFENSES TO DEFENDANTS' COUNTERCLAIMS TWO AND THREE
    (2 pages)

    COUNTERCLAIM TWO
    Registration Invalid for Genericness

    COUNTERCLAIM THREE
    Registration and Service Mark
    are Invalid for Abandonment

    AFFIRMATIVE DEFENSES

     Nov. 10, 1998
    The Graphic Witness

    RESPONSE TO MOTION TO DISMISS COUNTERCLAIM ONE AND TO STRIKE AFFIRMATIVE DEFENSES THREE AND NINE
    (4 pages)

     

    COUNTERCLAIM ONE SEEKS DECLARATION OF INVALIDITY, NOT OUTRIGHT CANCELLATION OF REGISTRATION.

     

    DEFENDANT'S THIRD AND NINTH AFFIRMATIVE DEFENSES ARE LEGALLY SUFFICIENT.

     

    EXHIBIT A

    Publications, Court Decisions and Web Sites Using the Phrase "Trial Graphics,"
    1984 to 1998 (Chart)


    (Lists the printouts that were
    filed with these arguments.)

    Nov. 25, 1998
    TrialGraphix

    PLAINTIFF'S REPLY
    TO DEFENDANTS' RESPONSE
    TO PLAINTIFF'S MOTION
    TO DISMISS COUNTERCLAIM ONE AND TO STRIKE AFFIRMATIVE DEFENSES THREE AND NINE

    (6 pages)

    I. COUNTERCLAIM ONE SHOULD BE DISMISSED

    II. THE COURT SHOULD STRIKE DEFENDANTS' THIRD AND NINTH AFFIRMATIVE DEFENSES

    Conclusion

     

     March 17, 1999

    RULING

    Judge says court can't cancel a trademark based on a
    failure to disclaim unregisterable aspects of the trademark

    Count I of Counterclaim is DISMISSED

    Affirmative Defenses Three and Nine are STRICKEN

    GO BACK TO ROUND 1 ABOVE

    GO TO TOP

       

     RETURN TO MAIN LAWSUIT PAGE