W.M. Barr & Company, Inc. v. Dumond, Inc.
| W.M. Barr & Company, Inc. |
| Dumond, Inc. |
| 2:2022cv04916 |
| December 9, 2022 |
| US District Court for the Eastern District of Pennsylvania |
| Philadelphia Office |
| GENE EK PRATTER |
| Property Rights: Trademark |
| 15 U.S.C. § 1127 Trademark Infringement |
| Both |
Docket Report
RSS Track this Docket
This docket was last retrieved on February 3, 2023. A more recent docket listing may be available from PACER.
| Document Text |
|---|
PAPER #47, #48 MAILED TO COUNSEL (JL)
|
|
Filing 48
ORDER THAT THE MOTION FOR PRO HAC VICE ADMISSION OF TOM BENGERA IS GRANTED AND TOM BENGERA IS ADMITTED IN THIS CASE PRO HAC VICE FOR PLAINTIFF W.M. BARR. SIGNED BY HONORABLE GENE E.K. PRATTER ON 2/1/23.2/2/23 ENTERED AND COPIES NOT MAILED TO PRO SE AND E-MAILED.(mbh)
|
|
Filing 47
ORDER THAT THE CONSENT MOTION FOR W.M. BARR & COMPANY INC TO FILE A FIRST AMENDED COMPLAINT IS GRANTED. SIGNED BY HONORABLE GENE E.K. PRATTER ON 2/1/23. 2/2/23 ENTERED AND COPIES NOT MAILED TO COUNSEL AND E-MAILED.(mbh)
|
|
Filing 46
MOTION for Pro Hac Vice Admission of Tom BenGera ( Filing fee $ 40 receipt number APAEDC-16461876.) filed by W.M. Barr & Company, Inc..Proposed Order, Declarations, Certificate of Service.(GRANEK, ELIEZER)
|
|
Filing 45
Memorandum (Supplemental) re #7 MOTION for Preliminary Injunction filed by W.M. Barr & Company, Inc.. (Attachments: #1 Exhibit A. Citristrip Amazon webpage capture, #2 Exhibit B. Amazon website reviews)(Trimmer, Christina)
|
|
Filing 44
RESPONSE in Opposition re #7 MOTION for Preliminary Injunction First Supplement filed by Dumond, Inc.. (Attachments: #1 Exhibit A eBay Listings for Red Citristrip)(Merritt, David)
|
|
Filing 43
Consent MOTION for Leave to File First Amended Complaint filed by W.M. Barr & Company, Inc..Certificate of Counsel and Certificate of Service. (Attachments: #1 Exhibit A. Redline Comparison of Initial Complaint to First Amended Complaint, #2 Exhibit B. First Amended Complaint, #3 Text of Proposed Order)(Trimmer, Christina)
|
|
Filing 42
ORDER RE: STATUS REPORT due by 1/23/2023; SUPPLEMENTAL BRIEFING ON THE MOTION FOR PRELIMINARY INJUNCTION #7 DUE 1/23/2023; JOINT REPORT PURUSANT TO FEDERAL RULE OF CIVIL PROCEDURE 26(F) IS DUE ON 1/27/2023; AND AN INITIAL PRETRIAL CONFERENCE SHALL BE HELD FOLLOWING THE ORAL ARGUMENT ON 2/9/2023 AT 2:00 IN COURTROOM 10B). SIGNED BY HONORABLE GENE E.K. PRATTER ON 1/6/2023. 1/9/2023 ENTERED AND COPIES E-MAILED.(sfl)
|
|
Filing 41
ORDER granting #38 MOTION FOR PRO HAC VICE. SIGNED BY HONORABLE GENE E.K. PRATTER ON 1/6/2023.1/9/2023 ENTERED AND COPIES E-MAILED.(sfl)
|
|
Filing 40
ORDER granting #37 MOTION FOR PRO HAC VICE. SIGNED BY HONORABLE GENE E.K. PRATTER ON 1/6/2023.1/9/2023 ENTERED AND COPIES E-MAILED.(sfl)
|
|
Filing 39
ORDER granting #36 MOTION FOR PRO HAC VICE. SIGNED BY HONORABLE GENE E.K. PRATTER ON 1/6/2023.1/9/2023 ENTERED AND COPIES E-MAILED.(sfl)
|
|
Remark Document Nos. #39 , #40 , #41 , and #42 were mailed to counsel by Chambers on 1/9/2023. (sfl)
|
|
PRETRIAL CONFERENCE SET FOR 2/9/2023 02:00 PM IN Courtroom 10B BEFORE HONORABLE GENE E.K. PRATTER. (sfl)
|
|
Filing 38
MOTION for Pro Hac Vice Admission of Jared B. Briant ( Filing fee $ 40 receipt number APAEDC-16407690.) filed by Dumond, Inc..Affidavit and Certificate of Service.(JOHNSON, THOMAS)
|
|
Filing 37
MOTION for Pro Hac Vice of David R. Merritt ( Filing fee $ 40 receipt number APAEDC-16407428.) filed by Dumond, Inc..Affidavit and Certificate of Service.(JOHNSON, THOMAS)
|
|
Filing 36
MOTION for Pro Hac Vice CHRISTINA DAVIDSON TRIMMER ( Filing fee $ 40 receipt number APAEDC-16396541.) filed by W.M. Barr & Company, Inc..Declaration, Certificate of Service. (Attachments: #1 Text of Proposed Order, #2 Exhibit A- DECLARATION OF CHRISTINA DAVIDSON TRIMMER, ESQUIRE, #3 Exhibit B- SPONSOR DECLARATION)(GRANEK, ELIEZER)
|
|
Filing 35
ANSWER to #1 Complaint, together with AFFIRMATIVE DEFENSES , COUNTERCLAIM against W.M. Barr & Company, Inc. by Dumond, Inc..(JOHNSON, THOMAS)
|
|
Filing 34
NOTICE of Hearing on Motion for Preliminary Injunction #7 MOTION HEARING SET FOR 2/6/2023 at 2:00 PM IN Courtroom 10B BEFORE HONORABLE GENE E.K. PRATTER.(sfl)
|
|
Filing 33
NOTICE of Hearing: STATUS CONFERENCE SET FOR 1/6/2023 AT 2:00 PM VIA Telephone Conference BEFORE HONORABLE GENE E.K. PRATTER.(sfl)
|
|
Remark: Docket Nos. #33 and #34 were mailed by Chambers to the following: Tom Bengera, Samuel Alexander Long, Jr, Lucas D. Garber, Christina Davidson Trimmer, Christian Hart Staples, Jared B. Briant, David R. Merritt, Seth Lee Hudson, and Sarah Ashley Barnett on 12/22/2023. (sfl)
|
|
Filing 32
NOTICE of Appearance by THOMAS K. JOHNSON, II on behalf of Dumond, Inc. (JOHNSON, THOMAS)
|
|
Filing 31
NOTICE of Appearance by ELIEZER GRANEK on behalf of W.M. Barr & Company, Inc. with Certificate of Service(GRANEK, ELIEZER)
|
|
Filing 30
Case transferred in from District of North Carolina Western; Case Number 3:22-cv-00447. Original file certified copy of transfer order and docket sheet received.
|
|
Filing 29
ORDER granting in part and denying in part #14 Motion to Dismiss for Lack of Jurisdiction. This case shall be transferred to the Eastern District of Pennsylvania pursuant to 28 U.S.C. 1404 for such further proceedings as that court may deem appropriate. In so ruling, the Court declines to rule on the pending Motion for Preliminary Injunction and directs the Clerk of Court to terminate the hearing scheduled for Monday, December 12, 2022. Signed by District Judge Frank D. Whitney on 12/9/22. (clc) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 28
NOTICE of Appearance by Samuel Alexander Long, Jr on behalf of W.M. Barr & Company, Inc. (Long, Samuel) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 27
RESPONSE in Support re #14 MOTION to Dismiss for Lack of Jurisdiction or, in the Alternative, to Transfer to the Eastern District of Pennsylvania by Dumond, Inc.. (Barnett, Sarah) (Additional attachment(s) added on 11/18/2022: #1 Certificate of Compliance) (clc). [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 26
RESPONSE in Opposition re #14 MOTION to Dismiss for Lack of Jurisdiction or, in the Alternative, to Transfer to the Eastern District of Pennsylvania by W.M. Barr & Company, Inc.. Replies due by 11/17/2022 (Attachments: #1 Affidavit Declaration of Lelan Clinton Byrd, Jr., #2 Affidavit Declaration of Christina Davidson Trimmer, #3 Exhibit A. Dumond's product page on ContractorsWholesaleSupplies.com, #4 Exhibit B. Screenshot of Dumond's "Find Our Stores" webpage, #5 Exhibit C. Seller Profile page for Fulfillment 123 on Amazon.com, #6 Exhibit D. Screenshot of Dumond's Storefront on Amazon.com, #7 Exhibit E. Copy of NC Gen. Stat. Sec.105-164.8, #8 Exhibit F. Copy of webpage on NC Department of Revenue, #9 Exhibit G. List of Defendant's stores, #10 Exhibit H. Copy of Potts Hardware Inc.'s webpage, #11 Exhibit I. Copy of Eastway Paint's webpage, #12 Exhibit J. Copy of C&S Paint Center's webpage, #13 Exhibit K. Copy of Garris Evans Lumber Co. webpage, #14 Exhibit L. Copy of Boone Paint 7 Interiors webpage, #15 Exhibit M. Copy of Buffalo Shoals' webpage, #16 Exhibit N. Copy of Pfaff's' webpage, #17 Exhibit O. Copy of Prism Paint + Design webpage, #18 Exhibit P. Copy of Lester's Hardware's webpage, #19 Exhibit Q. Copy of Lanier Hardware's webpage, #20 Exhibit R. Copies of pages from "US District Courts-Federal Management Statistics-Profiles" report)(Trimmer, Christina) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 25
Corporate Disclosure Statement by Dumond, Inc. (Barnett, Sarah) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 24
ORDER Setting Hearing on Motion #7 MOTION for Preliminary Injunction , #14 MOTION to Dismiss for Lack of Jurisdiction or, in the Alternative, to Transfer to the Eastern District of Pennsylvania : Motion Hearing set for 12/12/2022 02:00 PM in Courtroom #5B, 401 W Trade St, Charlotte, NC 28202 before District Judge Frank D. Whitney.. Signed by District Judge Frank D. Whitney on 11/7/22. (clc) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 23
REPLY to Response to Motion re #7 MOTION for Preliminary Injunction by W.M. Barr & Company, Inc.. (Attachments: #1 Affidavit Declaration of Christina Davidson Trimmer, #2 Exhibit A. Copy of Dumond's Paint Removers webpage, #3 Exhibit B. Copy of Dumond's Safety Data Sheet, #4 Exhibit C. Copy of screenshot of Amazon customer review, #5 Exhibit D. Copy of screenshot of Amazon customer review, #6 Exhibit E. Copy of The Youngstown Sheet and Tube Co. v. Tallman Conduit Co., 149 U.S.P.Q. 656 (TTAB 1966))(Trimmer, Christina) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 22
NOTICE of Appearance by Tom Bengera on behalf of W.M. Barr & Company, Inc. (Bengera, Tom) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 21
ORDER granting #18 Motion for Leave to Appear Pro Hac Vice added Jared B. Briant for Dumond, Inc.. Signed by Magistrate Judge David Keesler on 11/2/22. (mga) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 20
ORDER granting #19 Motion for Leave to Appear Pro Hac Vice added David R. Merritt for Dumond, Inc. (Pro Hac Vice Attorney served via NEF). Signed by Magistrate Judge David Keesler on 11/2/22. (mga) (Main Document 20 replaced on 11/2/2022) (mga). [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 19
MOTION for Leave to Appear Pro Hac Vice as to David R Merritt Filing fee $ 288, receipt number ANCWDC-5813882. by Dumond, Inc.. (Hudson, Seth). Motions referred to David Keesler. [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 18
MOTION for Leave to Appear Pro Hac Vice as to Jared B. Briant Filing fee $ 288, receipt number ANCWDC-5813879. by Dumond, Inc.. (Hudson, Seth). Motions referred to David Keesler. [Transferred from North Carolina Western on 12/9/2022.]
|
|
Notice to David R. Merritt: Pursuant to Local Rule 83.1 you are required to Register for E-Filing Access or Link Existing Account #Link. (Attorney served via NEF) Deadline by 11/9/2022. (mga) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 17
MEMORANDUM in Opposition re #7 MOTION for Preliminary Injunction by Dumond, Inc.. Replies due by 11/3/2022 (Attachments: #1 Affidavit Declaration of Rick Grear, #2 Exhibit A, #3 Exhibit B, #4 Exhibit C, #5 Affidavit Declaration of Jared Briant, #6 Exhibit A, #7 Exhibit B, #8 Exhibit C, #9 Exhibit D, #10 Exhibit E, #11 Exhibit F, #12 Exhibit G, #13 Exhibit H, #14 Exhibit I, #15 Exhibit J, #16 Exhibit K, #17 Exhibit L, #18 Exhibit M)(Barnett, Sarah) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 16
AFFIDAVIT in Support re #14 MOTION to Dismiss for Lack of Jurisdiction or, in the Alternative, to Transfer to the Eastern District of Pennsylvania (Rick Grear) by Dumond, Inc.. (Barnett, Sarah) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 15
MEMORANDUM in Support re #14 MOTION to Dismiss for Lack of Jurisdiction or, in the Alternative, to Transfer to the Eastern District of Pennsylvania by Dumond, Inc.. (Barnett, Sarah) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 14
MOTION to Dismiss for Lack of Jurisdiction or, in the Alternative, to Transfer to the Eastern District of Pennsylvania by Dumond, Inc.. Responses due by 11/10/2022 (Barnett, Sarah) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 13
NOTICE of Appearance by Lucas D. Garber on behalf of All Plaintiffs (Garber, Lucas) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 12
ORDER granting with modification #11 Defendant's Consent Motion for Extension of Time to Answer re #1 Complaint. Dumond, Inc. answer due 11/17/2022. Signed by Magistrate Judge David Keesler on 10/25/22. (mga) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 11
Consent MOTION for Extension of Time to Answer re: #1 Complaint, by Dumond, Inc.. (Barnett, Sarah). Motions referred to David Keesler. [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 10
NOTICE of Appearance by Seth Lee Hudson on behalf of Dumond, Inc. (Hudson, Seth) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 9
NOTICE of Appearance by Sarah Ashley Barnett on behalf of Dumond, Inc. (Barnett, Sarah) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 8
MEMORANDUM in Support re #7 MOTION for Preliminary Injunction by W.M. Barr & Company, Inc.. (Attachments: #1 Affidavit Declaration of Dennis Earl Shireman, #2 Affidavit Declaration of Christina Davidson Trimmer, #3 Exhibit A. Company History Page from Barr's website, #4 Exhibit B. Prosecution History of US Trademark Application No. 76/639,123, #5 Exhibit C. Section 8 Acceptance and Section 15 Acknowledgement of U.S. TM Reg. No. 3,278,295, #6 Exhibit D. CITRISTRIP website, #7 Exhibit E. Dumond's webpage for "Safe 'n Easy Citrus Paint & Varnish Remove Gel", #8 Exhibit F. Product listing page on retail site Zoro, #9 Exhibit G. Dumond's Store Locator webpage, #10 Exhibit H. Dumond's "Paint Removers" webpage, #11 Exhibit I. Google shopping results for "paint and varnish remover" search, #12 Exhibit J. Centsational Style article by Kate Riley, #13 Exhibit K. CITRISTRIP Label, #14 Exhibit L. Amazon Customer Review for Smart 'n Easy Citrus, #15 Exhibit M. Amazon Customer Review for Smart 'n Easy Citrus)(Trimmer, Christina) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 7
MOTION for Preliminary Injunction by W.M. Barr & Company, Inc.. Responses due by 10/27/2022 (Trimmer, Christina) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 6
AFFIDAVIT of Service filed by W.M. Barr & Company, Inc.. Dumond, Inc. served on 10/7/2022, answer due 10/28/2022. (Trimmer, Christina) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 5
NOTICE of Appearance by Christian Hart Staples on behalf of W.M. Barr & Company, Inc. (Staples, Christian) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 4
REPORT on the Filing of an action regarding patent and/or trademark numbers contained in complaint. (Attachments: #1 Complaint) (tlj) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 3
Summons Issued Electronically as to Dumond, Inc.. NOTICE: Counsel shall print the summons and serve with other case opening documents in accordance with Fed.R.Civ.P.4 . (tlj) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Case assigned to District Judge Frank D. Whitney and Magistrate Judge David Keesler. Notice: You must click this link to retrieve the #Case Assignment Packet. This is your only notice - you will not receive a separate document.(tlj) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Clerk's Entry and Service of #Initial Scheduling Order and #Certificate of Initial Attorney FRCP 26(f) Conference Form pursuant to the Standing Order Governing Civil Case Management before the Honorable Frank D. Whitney (3:07-mc-47 (Doc. No. 2)). The parties are directed to click on the link above to retrieve the Order. (tlj) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 2
Corporate Disclosure Statement by W.M. Barr & Company, Inc. (Trimmer, Christina) [Transferred from North Carolina Western on 12/9/2022.]
|
|
Filing 1
COMPLAINT against Dumond, Inc. with Jury Demand ( Filing fee $ 402 receipt number ANCWDC-5717649), filed by W.M. Barr & Company, Inc.. (Attachments: #1 Exhibit 1. US Reg. No. 3278395, #2 Exhibit 2. US Reg. No. 5493483, #3 Exhibit 3. Infringement Examples)(Trimmer, Christina) [Transferred from North Carolina Western on 12/9/2022.]
|
Access additional case information on PACER
Use the links below to access additional information about this case on the US Court's PACER system. A subscription to PACER is required.
Access this case on the Pennsylvania Eastern District Court's Electronic Court Filings (ECF) System
- Search for Party Aliases
- Associated Cases
- Attorneys
- Case File Location
- Case Summary
- Docket Report
- History/Documents
- Parties
- Related Transactions
- Check Status
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
