United States District Court, W.D. Washington
K. Tellekson, Jeffrey A. Ware, Ewa M. Davison, Guinevere L.
Jobson (admitted pro hac vice) Jessica M. Kaempf, Attorneys
for Plaintiff National Products Inc.
A, Karish (admitted pro hac vice) A. Eric Bjorgum (admitted
pro hac vice), James E. Breitenbucher Attorneys for Defendant
AMENDED JOINT PRETRIAL ORDER JURY TRIAL
P. DONOHUE Chief United States Magistrate Judge
to Local Civil Rule 16(h), Plaintiff National Products Inc.
(“NPI”) and Defendant Arkon Resources, Inc.
(“Arkon”) respectfully submit the following
Court has original subject matter jurisdiction pursuant to 15
U.S.C. §§ 1114, 1121, and 1125, and 28 U.S.C
§§ 1331 and 1338(a) and (b). This Court also has
supplemental jurisdiction over the state law claims pursuant
to 28 U.S.C. § 1367(a) because these are so related to
the federal claims in this action that they form part of the
same case or controversy under Article III of the United
CLAIMS AND AFFIRMATIVE DEFENSES
states that it intends to pursue at trial the following
1. Federal Trademark Infringement under 15 U.S.C. §
1114, including willful trademark infringement, entitling NPI
to actual damages and defendant's profits, all of which
should be trebled, as well as attorneys' fees and
2. Unfair business practices in violation of the Washington
Consumer Protection Act (“CPA”), RCW 19.86 et
seq., entitling NPI to its actual damages, which should
be enhanced by an amount up to $25, 000, as well as
attorneys' fees and costs.
states that it intends to pursue the following affirmative
defenses at trial:
1. Defendant has not infringed any applicable trademarks or
trade dress under federal or state law.
2. Plaintiff's U.S. Trademark Reg. No. 4, 254, 086 is
invalid as functional.
3. Plaintiff's U.S. Trademark Reg. No. 4, 254, 086 is
invalid as lacking secondary meaning.
4. Plaintiff's U.S. Trademark Reg. No. 4, 254, 086 is
invalid as generic.
RELEVANT FACTS UPON WHICH THERE IS NO DISPUTE
following facts are admitted by the parties:
1. In 1992, NPI's Founder, President, and CEO, Jeffrey
Carnevali, devised a mounting system with two rubber balls
connected with interchangeable arms in a ball-and-socket
mechanism, which he called “RAM Mounts.”
2. NPI has displayed, sold and promoted its RAM Mounts at
hundreds of trade shows across the United States including
the Consumer Electronics Show held annually in Las Vegas,
3. On May 23, 2012, NPI filed a trademark application (serial
no. 85-632, 977).
4. On December 4, 2012, the PTO granted NPI U.S. Trademark
Registration No. 4, 254, 086.
5. NPI first became aware of the accused products at the
Consumer Electronics Show in January 2014, when Arkon
displayed exemplars of these products, which Arkon called
“Robust Mounts, ” at its booth.
6. Arkon was incorporated in 1988.
7. Arkon sells a variety of mounting products, some of which