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) Jurisdiction and Venue The Parties General Allegations COUNT I Federal Trademark Infringement COUNT II False Designation of Origin and False Description of Goods COUNT III Federal Trademark Dilution COUNT IV Trademark Dilution COUNT V Common Law Trademark Infringement COUNT VI Common Law Unfair Competition COUNT VII Florida's Deceptive and Unfair Trade Practices Act   Claim for Punitive Damages and for Attorneys' Fees and Costs   Exhibit A Service Mark Registration Exhibit B TrialGraphix brochure (1 page only) Exhibit C The Services page of this web site A Graphic Witness Sampler (updated since filing) Exhibit D, E & F Attorney Isicoff's letters: March 10, 1998 March 25, 1998 May 1, 1998   MOTION FOR TEMPORARY RESTRAINING ORDER AND ORDER TO SHOW CAUSE WHY A PRELIMINARY INJUNCTION SHOULD NOT BE ENTERED (3 pages)   Exhibit A: [Proposed] Temporary Restraining Order and Order to Show Cause Why a Preliminary Injunction Should Not Be Entered (3 pages)   PLAINTIFF'S MEMORANDUM OF LAW IN SUPPORT OF INJUNCTIVE RELIEF (14 pages) PRELIMINARY STATEMENT STATEMENT OF FACTS A. TrialGraphix: its Business, its Mark B. Defendants' Activities 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 About Cal Deal (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 Registration Invalid for Failure to Include Disclaimer of Descriptive Matter COUNTERCLAIM TWO Registration Invalid for Genericness COUNTERCLAIM THREE Registration and Service Mark are Invalid for Abandonment   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." (i) Scope of Plaintiff's Mark (ii) Elements of Fair Use Defense (iii) No Actual Confusion 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
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