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In the Matter of CERTAIN PURPLE PROTECTIVE Inv. No. 337-TA...
Transcript of In the Matter of CERTAIN PURPLE PROTECTIVE Inv. No. 337-TA...
PUBLIC VERSION UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C.
In the Matter of
CERTAIN PURPLE PROTECTIVE GLOVES
Inv. No. 337-TA-500
ORDER NO. 16: INITIAL DETERMINATION GRANTING JOINT MOTION TO TERMINATE INVESTIGATION AS TO THE “DELTA RESPONDENTS” BASED
ON A SETTLEMENT AGREEMENT AND CONSENT ORDER
(June 1,2004)
On May 14, 2004, COMPLAINANTS, Kimberly-Clark Corporation and
Safeskin Corporation (collectively “K-C/Safeskin”), and RESPONDENTS, The Delta Group,
Delta Hospital Supply, Inc., Delta Medical Systems, Inc., and Delta Medical Supply Group,
Inc. (collectively “the Delta Respondents”), jointly moved [500-0 131 pursuant to 19 C.F.R.
$8 210.21(b) and (c) to terminate this investigation by reason of a confidential settlement
agreement (“the Settlement Agreement”), consent order stipulation (“the Consent Order
Stipulation”), and proposed consent order (“the proposed Consent Order”).’ On May 26,
2004, COMMISSION INVESTIGATIVE STAFF (“Staff”) filed a response in support ofthe
joint motion. No other responses were received.
’ The joint motion specifically requests termination of this investigation as to the Delta Respondents based on &the Settlement Agreement and the proposed Consent Order. Joint Motion at 2.
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Settlement Agreement
As set forth in 19 C.F.R. 5 210.21(a)(2), “[alnypartymaymove at any time for
an order to terminate an investigation in whole or in part as to any or all respondents on the
basis of a settlement, a licensing or other agreement . . . .” 19 C.F.R. 8 210.21(a)(2); see also
Certain Organizer Racks And Products Containing Same, Inv. No. 337-TA-466, Order No.
7 at 2,2002 WL 389147 (U.S.I.T.C., February 19,2001) (“Organizer Racks”). In this matter,
the motion to terminate is based in part on the Settlement Agreement between K-C/Safeskin
and the Delta Respondents.
In accordance with the provisions of 19 C.F.R. 8 2 10.21(b), K-C/Safeskin and
the Delta Respondents filed confidential (Appendix A) and public (Appendix B) versions of
the Settlement Agreement. Furthermore, the joint motion avers that there are no other
agreements, written or oral, express or implied, between K-C/Safeskin and the Delta
Respondents concerning the subject matter of this investigation. Joint Motion at 2.
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* It appears that Safeskin Corporation is the final signatory to the Settlement Agreement. Although difficult to read, its signature is dated April 26, 2004.
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In support ofthe joint motion, Staff submits that the “motion appears to comply
with the Commission rule regarding termination based on settlement agreements.” Staff
Response at 1.
Proposed Consent Order
As set forth in 19 C.F.R. fj 210.21(c), “[alt any time prior to commencement
of the hearing, the motion [to terminate based on a consent order] may be filed by one or
more respondents, and may be filed jointly with other parties to the investigation.” 19 C.F.R.
§ 210.2 l(c)( l)(ii). The motion to terminate must contain a stipulation incorporating a
proposed consent order. Id. The required content of a consent order stipulation is governed
by 19 C.F.R. 8 210.21(~)(3). Thereby, the moving parties shall make an “admission of all
jurisdictional facts.” 19 C.F.R. §210.21(~)(3)(i)(A)( 1). There must be an “express waiver
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of all rights to seek judicial review or otherwise challenge or contest the validity of the
consent order.” 19 C.F.R. 8 210.21(~)(3)(i)(A)(2). There must be a “statement that the
signatories to the consent order stipulation will cooperate with and will not seek to impede
by litigation or other means the Commission’s efforts to gather information under subpart I
of this part.” 19 C.F.R. 8 2 10.2 l(c)(3)(i)(A)(3). There must also be a “statement that the
enforcement, modification, and revocation of the consent order will be carried out pursuant
to subpart I of this part, incorporating by reference the Commission’s Rules of Practice and
Procedure.” 19 C.F.R. 5 2 10.2 l(c)(3)(i)(A)(4).
In intellectual property-based investigations, the stipulation must include a
“statement that the consent order shall not apply with respect to any claim of any intellectual
property right that has expired or been found or adjudicated invalid or unenforceable by the
Commission or a court or agency of competent jurisdiction, provided that such finding or
judgment has become final and nonreviewable.” 19 C.F.R. 0 210.21(~)(3)(i)(B)( 1). In such
investigations, there must also be a “statement that each signatory to the stipulation who was
a respondent in the investigation will not seek to challenge the validity of the intellectual
property right(s), in any administrative or judicial proceeding to enforce the consent order.”
19 C.F.R. 5 210.21(~)(3)(i)(B)(2).
In the present case, it is hereby determined that the Consent Order Stipulation
submitted by K-C/Safeskin and the Delta Respondents, incorporating the proposed Consent
Order, complies with the requirements set forth above. First, K-C/Safeskin and the Delta
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Respondents make a full admission of all jurisdictional facts. Stipulation 7 1. Second, the
Consent Order Stipulation expressly waives all rights to seek judicial review or otherwise
challenge or contest the validity of the proposed Consent Order. Stipulation 7 2. Third, K-
C/Safeskin and the Delta Respondents state that they will cooperate with and will not seek
to impede by litigation or other means the Commission’s efforts to gather information under
subpart I of this part. Stipulation 7 15. Fourth, the Consent Order Stipulation provides that
the enforcement, modification, and revocation of the proposed Consent Order will be carried
out pursuant to subpart I of this part, incorporating by reference the Commission’s Rules of
Practice and Procedure. Stipulation 7 16.
As this investigation involves claims of registered trademark infringement, K-
Chafeskin and the Delta Respondents state that the proposed Consent Order shall not apply
with respect to any claim of any intellectual property right that has expired or been found or
adjudicated invalid or unenforceable by the Commission or a court or agency of competent
jurisdiction, provided that such finding or judgment has become final and nonreviewable,
Stipulation 7 2 1. Lastly, the Delta Respondents state that they will not seek to challenge the
validity of the registered trademarks at issue in any administrative or judicial proceeding to
enforce the proposed Consent Order. Stipulation 7 17.
The proposed Consent Order largely mirrors the provisions of the Consent
Order Stipulation. Consistent with the proposed Consent Order, the Delta Respondents will
not import into the United States, sell for importation, or sell within the United States after
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importation, protective gloves bearing the K-C/Safeskin Registered Marks or any confusingly
similar trademark. Consent Order 7 1. However, the Delta Respondents are permitted to
dispose of its remaining inventory of protective gloves bearing the “Color Purple” mark, or
another trademark that is likely to cause confbion with respect to or which constitutes a
colorable imitation of the “Color Purple” mark, not to exceed eight hundred (800) cases
through September 30,2004 in the United States. Consent Order T[ 2. The proposed Consent
Order also precludes K-C/Safeskin and the Delta Respondents from seeking judicial review
or otherwise challenging or contesting the validity of the proposed Consent Order. Consent
Order 74. Moreover, the proposed Consent Order provides that K-C/Sakskin and the Delta
Respondents shall cooperate with and shall not seek to impede by litigation or other means
the Commission’s efforts to gather information under Subpart I of Part 2 10 of Title 19 of the
Code of Federal Regulation. Consent Order 7 5. The proposed Consent Order provides that
it shall not apply with respect to any claim of any intellectual property right that has expired
or been found or adjudicated invalid or unenforceable by the Commission or a court or
agency of competent jurisdiction, provided that such finding or judgment has become final
and nonreviewable. Consent Order 7 6. Lastly, the proposed Consent Order terminates this
investigation with respect to the Delta Respondents. Consent Order 7 7.
In support ofthe joint motion, Staff submits that the “motion appears to comply
with . . . the Commission rule regarding termination based on consent orders.” Staff
Response at 1.
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Public Interest Considerations
As set forth in 19 C.F.R. 0 210.50(b)(2), where there is aproposed termination
by either settlement agreement or consent order, the parties may file statements regarding the
impact of the proposed termination on the public interest, and the Administrative Law Judge
may hear argument, although no discovery may be compelled, with respect to issues relating
solely to the public interest. 19 C.F.R. 0 2 10.50(b)(2); see Organizer Racks, supra, at 3. In
any initial determination terminating an investigation by settlement agreement or consent
order, the undersigned is directed to consider and make appropriate findings regarding the
effect of the proposed settlement on the public health and welfare, competitive conditions
in the U.S. economy, the production of like or directly competitive articles in the United
States, and U.S. consumers. 19 C.F.R. 0 210.50(b)(2).
In their joint motion, K-CISafeskin and the Delta Respondents assert that the
“termination of this Investigation as to the Delta Respondents is in the interest of the public
and administrative economy.” Joint Motion at 2. Staff maintains that it is “unaware of any
evidence that termination of this investigation as to the Delta Respondents on the basis of the
Settlement Agreement and the proposed Consent Order would be contrary to the public
health and welfare, competitive conditions in the U.S. economy, the production of like or
directly competitive articles in the United States, or U.S. consumers.” Staff Response at 7.
Staff observes that the Settlement Agreement does not prohibit the Delta Respondents from
manufacturing and selling protective gloves of any color other than purple in the United
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States, and there is no indication that the color purple has any particular public health or
welfare significance. Id, Also, Staff submits that the public interest favors settlement to
avoid needless litigation and to conserve public resources. Id,
Based on the pleadings filed in connection with the instant joint motion, the
undersigned finds that there is no indication that termination of this investigation as to the
Delta Respondents, based on the Settlement Agreement and proposed Consent Order, would
adversely impact the public interest. The termination of investigations in connection with
settlement agreements and consent orders, such as those proposed in the joint motion, is
generally in the public interest. See Administrative Procedure Act, 5 U.S.C. 0 501, et seq
Having carefully considered the pleadings of the parties, the undersigned concludes that no
party has provided “extraordinary circumstances” that would advise against terminating the
investigation as to the Delta Respondents.
Conclusion
For the reasons set forth above, the joint motion to terminate this investigation
as to the Delta Respondents on the basis of the Settlement Agreement and proposed Consent
Order is hereby GRANTED. Pursuant to 19 C.F.R. 0 210.21(b)(2) and (c)(l)(ii), this initial
determination is CERTIFIED to the Commission along with confidential (Appendix A) and
public (Appendix B) versions of the Settlement Agreement and a copy of the Consent Order
Stipulation incorporating the proposed Consent Order (Appendix C).
Pursuant to 19 C.F.R. 0 2 10.42(h), this Initial Determination shall become the
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determination of the Commission unless a party files a petition for review of the Initial
Determination pursuant to 19 C.F.R. § 210.43(a), or the Commission, pursuant to 19 C.F.R.
2 10.44, orders, on its own motion, a review of the Initial F)ete&ation or certain issues
herein.
Within seven days ofthe date of this document, each party shall submit to the
Administrative Law Judge a statement as to whether or not it seeks to have my portion of
this document deleted from the public version to be issued shortly thereafter. The parties’
submissions may be made by facsimile and/or hard copy by the aforementioned date. Any
party seeking to have m y portion of this document deleted fiom the public version thereof
must submit to this ofice a copy of this document with red brackets indicating any portion
asserted to contain confidential business information. The parties’ submissions concerning
the public version of this document need not be filed with the Commission Secretsuy.
SO OWERED
Delbert R Tenill, Jr, Administrative Law Judge
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APPENDIX B
SETTLEMENT AGREEMENT (PUBLIC VERSION)
SETTLEMENT AGREEMENT
This Settlement Agreement (“Agreement”) is made and entered into by and among Delta
Group, DHS, DMS and DMSG (all as defined below in Section 1 and collectively referred to
herein as “Delta”), on the one hand, and K-C and Safeskin (as each are defined below in Section
1 and collectively referred to herein as “K-C/Safeskin”) on the other hand.
WHEREAS, there is currently pending in the Trademark Trial and Appeal Board
(“TTAJ3”) a cancellatjon proceeding between Safeskin and Delta that involves U.S. Trademark
Recgistration No. 2,596,539 for the COLOR PURPLE and is captioned as follows: The Delta
Group, an unincorporated joint venture composed of Delta Hospital Supply, Inc., Delta Medical
Systems, Inc. and Delta Medical Supply Group, Inc v. Safeskin Corporation, Cancellation
Proceeding No. 92041 91 3 (the “TTAB Litigation”); and
WHEREAS, there is currently pending in the United States District Court for the
Northern Distrkt o f Georgia [“Court”) a lawsuit betwee3 K-C/Safeskin and Delta, as well as
other third parties, that involves certain claims o f infringement and dilution o f U.S. Trademark
Registration No. 2,596,539 for the COLOR PURPLE and related word mark registrations, inter
alia, and is captioned as follows: Kimberly-Clark Corporation and Safeskin Corporation v. The
Delta Group, Delta Hospital Supply, Inc., Delta Medical Systems, Inc., Delta Medical Supply
Group, Inc., Medtexx Partners and Dash Medical Supply, lnc., Civil Action No. 1 :03-CV-3290
(the “Trademark Litigation”); and
WHEREAS, there is currently pending before the International Trade Commission
(“ITC”) a Section 337 hvestigation that involves certain claims of infringement o f U.S.
Trademark Re&ration No. 2,596,539 for the COLOR PURPLE and related word mark
registrations, inter alia, and is captioned as follows: In re Certain Purple Protective Gloves,,
hvestigation No. 337-T4-500 (the “ITC lnvestigation”); and
WHEREAS, the parties wish to enter into a worldwide settlement agreement in light of
the various international channels of trade throu& which their respective goods travel that bear
the COLOR PURPLE andor related word marks; and
WHEREAS, the parties have consulted with their respective counsel and desire to resolve ’
the TTAB Litigation, the Trademark Litigation and the ITC Investigation without further
litigation or proceedings on ihe terns set forth below.
NOW THEREFORE, in consideration of the foregoing recitals, which are herby
incorporated as part of this Agreement, and the terms hereinafter set forth, as well as other good
and valuable consideration the receipt of which each party separately acknowledges, Delta and
K-C/Safcskin agree as follows:
I . Definitions.
a. “K-C” as used herein means the Kimberly-Clark Corporation, a corporation organized and existing under the laws o f the state ofDelaware having a place of business at 1400 Holcomb Bridge Road, Roswell, Georgia 30076.
b. A corporate entity shall be regarded as “controlling,” “controlled by” or “under the control of’ a corporation or non-corporation if the corporation or non-corporation owns or directly or indirectly controls at least fifty percent (50%) of the voting stock of the corporate entity or, in the absence of the ownership of at least fifty percent (50%) of the voting stock of the corporate entity, has the power to direct or cause the direction o f the management and policies of such corporate entity, as applicable. For the purposes of this Agrecment, a non-corporate entity shall be regarded as being under the control of a corporation or non-corporation if the corporation or non-corporation has the power to direct or cause the direction of the management and policies of the non-corporate entity.
“Safeskin” means the Safeskin Corporation, a corporation organized and existing under the laws of the state of Florida and having a place of business at 1400 Holcomb Bridge Road, Roswell, Georgia.
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“Delta Group” means T h e Delta Group, an unincorporated joint venture with a place of business at 4250 River Green Parkway, N.W., Duluth, Georgia 30136; which is comprised ofDHS, DMS and DMSG.
“DHS” means Delta Hospital Supply, Inc., a Massachusetts corporation with a principal placc oibusinsss a; 3i Asior Avenue, Norwood, Massachusetts 02062.
‘‘DMS” means Delta Medical Systems, lnc., a Georgia corporation with a principal place o f business at 6865 Shiloh Road E., Suite 400, Alpharetta, Georgia 30005.
“DMSG” means Delta Medical Supply Group, Inc., a Delaware corporation with a principal place of business at 436 W. Gay Street, West Chester, Pennsylvania 19380.
“COLOR PURPLE” shall mean the trademark for the COLOR PURPLE that is the subject o f U.S. Trademark Registration No. 2,596,539 and/or which K-C/Safeskin has federal, state, common law trademark and/or other similar rights.
“Purple Trademarks” shall mean K-C/Safeskin’s federal, state, common law trademark and other similar rizhts in the color purple and word marks which contain the tern “purple,” including, but not limited to, those marks which are the subject o f United States Trademark Registration No. 2,596,539, United States Registration No. 2,470,932, United States Registration No. 2,533,260 and United States Registration No. 2,593,382.
“Purple Gloves” shall mean protective loves that feature the COLOR PURPLE or any other color confusingly similar to the COLOR PURPLE, including, without limitation, Delta’s purple nitrile glove attached as Exhibit A. The parties agree that Purple Gloves as defined herein are within the scope o f the injunctive and related relief set forth in Section A- C o f Exhibit “A” to the “Stipulation for Entry of Judgment, Including Permanent Injunction, Against Delta Defendants” which the parties have executed concurrently herewith for filing in connection With the Trademark Litigation and the provisions o f paragraphs 13 and 14 o f the Consent Order Stipulation executed concurrently herewith for filing in connection with the ITC Investigdon.
“Purple Boxes” shall mean any boxes bearing the current packaging for the Delta purple nitrile gloves as o f December 3 1,2003 as shown at Exhibit B (or any substantially similar packaging).
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. ’ 2. Represen rations and Warranties.
a. Delta and K-C/Safeskin each represent and warrant to each other that:
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iv.
V.
It has the legal capacity and authority to compromise and release all claims that have been or could have been raised or asserted by it with regard to the TTAB Litigation, the Trademark Litigation and the ITC Investigation;
,
It has the legal capacity and authority to enter into and perform all of the terms of this Agreement that bind it, which constitute the voluntary, legal, valid and binding obligations of said party;
There has not been an assignment or transfer by operation of law or otherwise of any claim or part thereof that it has or may have had against any other party with regard to the TTAB Litigation, the Trademark Litigation or the ITC Investigation;
It has read this Agreement, understands this Agreement, and intends to be lesally bound by this Agreement; and’ ’
Its signatory has the legal capacity and authority to execute and deliver this Agreement on its behalf and bind it.
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] 0. Dismissal of Litigations.
a. Within ten (1 0) days afier the Effective Date of this Agreement, Delta will
move for dismissal of the TTAB Litigation by filing with the TTAB the “Stipulated Dismissal
With Prejudice,’’ as attached as Exhibit D.
b. Wjthjn ten (1 0) days afier the Effective Date of this Agreement, K-
C/Safeskin and Delta will move for the dismissal ofthe Trademark Litigation with respect to
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Delta only by filing with the Court the ”Stipulatjon for Entry of Judgment, Including Permanent
Injunction, Against Delta Defendants” with :he attachment, as attached as Exhjbit E.
c. K-CiSajleskin ana Delta shall terminate the ITC lnvestigation with respect
to Delta only by filing with the ITC the “Joint Motion to Terminate Investigation as to
Respondents the Delta Group, Delta Hospital Supply, lnc., Delta Medical Systems, Inc., And
Delta Medical Supply Group, Inc. Based Upon Settlement Agreement and Consent Order,” with
attachments, as attached as Exhibit F.
d. Each party shall bear its own attorney’s fees and expenses in connection
with the Trademark Litigation, TTAB Litigation, and the ITC Investigation.
1 I . Press Release
a. K-CISafeskin and Delta may each issue the following public -
mouncemenl regarding the resolution o f the TTAB litigation, the Trademark Litigation and the
3TC Investigation:
“On November 20,2003, the U.S. lntemational Trade Commission (“ITC”) voted to institute an invesfigation of certain purple protective c gloves pursuant to a complaint filed by Kimberly-Clark Corporation and Safeskin Corporation (collectjvely referred to herein as ‘X-C/SafeskinYy) on October 24,2003. In the ITC complaint, K-CISafeskin alleged, among other things, trademark infringement o f its federally registered COLOR PURPLE trademark against various parties including The Delta Group, Deita Hospital Supply, Inc., Delta Medical Systems, lnc. and Delta Medical Supply Group, Inc. (“collectively referred to herein as “Delta”). Additionally, on October 30,2003, K-C/Safeskin filed a complaint in the Federal District Court for the Northern District of Gecrgia (“Court”) alleging, among other things, trademark and trade dress infringement, unfair competition, and dilution in connection with the COLOR PURPLE trademark against various parties including Delta, based upon their sale and distribution o f purple colored protective gloves. Delta has agreed to
cease selling, distributing and importing purple colored protective gloves on a worldwide basis.”
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14. Binding Effect. This Ageement shall become effective as of the Effective Date
and shall be binding on and inure to the benefit of the parties, including all parents, subsidiaries,
employees, officers, directors and other entities that control, are’controlled by OT under the
control of a party and any of the foregoing’s respective heirs, personal representatives,
Successors and permitted assigns and all those acting in concert with any o f the foregoing.
I 5. Amendments. This Ageement may be amended only by a written instrument,
signed by all of the parties hereto.
16. Entire Agreement. This Agreement (including all exhibits) constitutes the entire
agreement between the p d e s regarding the TTAB Litigation, the Trademark Litigation and the
]TC investigation and supersedes all prior and C O I I ~ ~ ~ ~ O T Z S E G U S ageements, representations,
warranties, staiements, promises, and underslandjngs, whether oral or written regarding such
matters. None of the parties hereto shall be bound by or charged with any oral or written
agreements, representations, warranties, statements, promises OT understandings with respect to
the subject matter hereof, not specifically set forth or referred to in this Settlement Agreement.
17. SeverubiZity. K-C/Safeskin and D e h all agree that i f any provision of this
Agreement or application thereof is held to be void or voidable, illegal, unenforceable or invalid,
that, in the absence of total failure of consideration, the remaining provisions or applications of
this Agreement shall remain in force and unaffected. If any provision is held to be void or
voidable, illegal, unenforceable or invalid, by any court, administrative agency, arbitrator or 13
mediatory, the parties-agree to negotiate in good faith to amend such provision to conform as,
nearly as possible, in accordance with applicable law, to the intended purpose and intent of the
on &a1 provision.
18. Headings. The use of headinss in this Agreement is merely for convenience and
shall have no legal effect, and such headings shall not be referred to in construing any provisions
of this Agreement.
19. Separate Execution. This Agreement may be siged by each party separately, in
which case attachment o f all of the parties’ sigature pazes to this Agreement shall constitute a
fully-executed ageement. Facsimile signatures on such counterparts shall be sufficient to bind
the parties. The parties will follow with originals o f the completed signed Agreement.
20. Notices. All notices or other comunjcztions required or permitted to be given
hereunder shall be in writing and shall be properly given when sent by Federal Express OT
equivalent carrier, overnight delivery, postage prepaid, to the foilowing addresses or to such
other address given to the other parties, in writing, by proper notice hereunder. The date of
properly given notice shall be the earlier o f five (5) days afier the notice is sent or upon actual
receipt thereof which ever is earlier:
If to K-USafeskin:
Attention: Senior Trademark Counsel Kimberly-Clark CorpoTation 401 North Lake Street P.O. Box 349 Neenah,WI 54957
Raymond A. Kuz, Esq. Hogan & Hartson LLP 555 Thirteenth Street, NW
With a copy to:
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Washington, D.C. 20004
1E to Delta:
Attention: Robert W. Dillon Cdta Hospiizi Suppijj 31 Astor Avenue Nonvood, Massachusetts 02062
With a copy to: Munford Page Hall, I1 Dorsey & Whitney LLP 1003 Pennsylvania Avenue, N.W. Suite 400 South Washington, D.C. 20004
2 1 . Confidentiality.
a. The parties agree that all tenns of this Agreement shall remain
confidential except as specified herein. Notwithstanding any other term of this Agreement, each
party may: (i) acknowledge that the disputes relating tcfi the subject matter o f this Agreement
have been resolved; (ii) disclose any infomation which is otherwise public; (iii) dfsclose my
term and/or condition o f this Agreement as (A) required by law or (B) as it in good faith beiieves
is required in public filings or disclosures.
b. If a party is required to disclose any confidential information.of the other
party as described in Section 21: (a)(iji)(A-B), the required disclosing party shall promptly
provide the other party with written notice of the required disclosure and reasonably assist the
other party in its attempts to obtain confidential treatment of such information.
22. Waiver. No delay or failure on the part of either party hereto in exercising any
right, power or privilege under this Aymeement shall impair any such right, power or privilege or
be construed as a waiver or any acquiescence thereto; nor shall any single or partial exercise of
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any ngkt, power, or privilege preclude any other or further exercise thereof or the exercise of any
other right, c power, or privilege. No waiver shall be valid asainst any party, unless made in
uq-iljng a d si_eed by the party acgainst whom enforcement of such waiver is sought, and then . ”
only to the extent expressly specified therein.
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WlTNESS WHEREOF: the undersigned panies have executed this Agreement on the
dates identified below.
THE DELTA GROUP
By:
KIMBERLY-CLARK CORPORATlON
By:
Title: Title:
Date: Date:
DELTA HOSPITAL SUPPLY, INC. SAFESKIN CORPORATION
By: By:
TidZe: Title:
Date: Date:
DELTA MEDlCAL SYSTEMS, INC.
By:
Title:
Date:
DELTA MEDICAL SUPPLY GROUP, INC.
By:
Title:
Date:
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EXHIBIT A
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. IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In the matter of Mark: MISCELLANEOUS DESIGN Registration No.: 2,596,539 Filing Date: February 32,1999
THE DELTA GROUP, an unincorporated joint venture composed of Delta Hospital Supply, Inc. Delta Medical Systems, Inc., and Delta Medical Supply Group, Inc.,
Petitioner V.
SAFESKIN CORPORATION,
Respondent.
~
1 1 1 1 1 Cancellatjon No. 92041 9 13 1 Mark: Miscellaneous Design 1 Registration No. 2,596,539 1 Registration Date: July 23,2002 1
' 1 1 1 1 i
STIPULATED DISMISSAL WITH PREJUDICE
Pursuant to Rule 4l(a)(l)(ii) of the Federal Rules of Civil Procedure, as incorporated into
the Trademark Rules of Practice under 37 C.F.R. 9 2.1 16(a), petitioner The Delta Group and
respondent Safeskin Corporation hereby stipulate and agree that the captioned cancellation
proceeding be dismissed with prejudice, with each party to bear such party's own costs and legal
fees.
Respectfully submitted,
THE DELTA GROUP
PETER NILS BAYLOR NUTTER, MCCLENNAN & FISH LLP World Trade Center West 155 Seaport Boulevard Boston, MA 022 10-2604
Counsel to Petitioner
Dated: ,2004
SAFESKIN CORPORATION
RAYMOND A. KURZ HOGAN & HARTSON L.L.P. 555 Thirteenth Street, N.W. Washington, D.C. 20004-1 109 (202) 637-5600
Counsel to Respondent
Dated: ,2004
IN THE UNITED STATES DISTRICT COURT FOR THE
NORTHElPlV DISTRICT OF GEORGIA ATLANTA DIVISION
KIMBERLY-CLAW CORPORATION, ) SAFESKIN CORPORATION, 1
1 Plaintiffs, 1
1
)
SYSTEMS, INC., DELTA MEDICAL 1 SUPPLY GROUP, mC., MEDTEXX 1 PARTNERS, AND DASH MEDICAL ) GLOVES, INC., 1
I 1 Defendants, )
1
V. ) CNIL ACTION No.: 1 :03-CV-3290
THE DELTA GROUP, DELTA HOSPITAL SUPPLY, II\JC., DELTA MEDICAL
)
STIPULATION FOR ENTRY OF JUDGMENT. INCLUDING PERMANENT INJUNCTJON, AGAINST DELTA DEFENDANTS
The parties hereto stipulate as follows:
1. Final Judgment pursuant to this stipulation of the parties, in the form and content
as set forth in Exhibit A attached hereto, shall be entered forthwith.
2. This case arises under the Lanham Act of 1946, as amended, 15 U.S.C. $$ 1051 er
seq. and Georgia statutory and common law. This Court has jurisdiction over the claims arising
under the Lanham Act under 15 U.S.C. $ 1121 and 28 U.S.C.
the Georgia statutory and common law claims which are joined with substantial and related
claims brought under the trademark laws of the United States, 15 U.S.C. $9 1051 et seq. and
under 28 U.S.C. 3 1338(b).
133 1, and has jurisdiction over
3. Plaintiff Kimberly-Clark Corporation is a corporation organized and existing ’
under the laws of Delaware with its principal place of business at 353 Phelps Drive, Irving,
Texas 75038 (“K-Cy). K-C also maintains places of business at 1400 Holcomb Bridge Road,
Roswell, Georgia 30076 and 401 North Lake Street, Neenah, Wisconsin 54957-0349.
4. Plaintiff Safeskin Corporation is a corporation organized and existing under the
laws of Florida with a place of business at 1400 Holcomb Bridge Road, Roswell, Georgia 30076
(“Safeskin”). Safeskin is a wholly-owned subsidiary of K-C.
5. Defendant The Delta Group is an unincorporated joint venture, with a place of
business at 4250 River Green Parkway, N.W., Duluth, Georgia 30136. The Delta Group is
comprised of Defendant Delta Hospital Supply, Inc. (“DHS’), a Massachusetts corporation with
a principal place of business at 31 Astor Avenue, Norwood, Massachusetts 02062; Defendant
Delta Medical Systems, Inc. (“DMS”), a Georgia corporation with a principal place of business
at 6865 Shiloh Road E., Suite 400, Alpharetta, Georgia 30005; and Defendant Delta Medical
Supply Group, Jnc. (“DMSG”), a Delaware corporation with a principal place of business a! 436
W. Gay Street, West Chester, Pennsylvania 19380. The Delta Group and its constituents,
namely, DMS, DMS and DMSG, are collectively referred to herein as “DG”.
i
\
6. Safeskin is the owner of the COLOR PURPLE (as defined below), PURPLE
KNIGHT, PURPLE NITRILE and PURPLE NITRILE-XTRA marks. Specifically, Safeskin is
the owner of U.S. Trademark Reg. No. 2,596,539 for the design mark of the COLOR PURPLE
in connection with “protective gloves for industrial use, and disposable nitrile gloves for use in
laboratories and cleanroom environments in Class 9; and gloves for medical and surgical uses in
Class 10” (the “COLOR PURPLE”); U.S. Trademark Reg. No. 2,470,932 €or the word mark ’
PURPLE KNIGHT in comection with “latex and synthetic protective gloves for industrial and
scientific use in Class 9; and latex and synthetic gloves for medical, surgical, dental and
healthcare use in Class 10”; U.S. Trademark Reg. No. 2,533,260 for the word mark PURPLE
NITRILE in connection With “latex and synthetic protective gloves for industrial and scientific
use in Class 9; and latex and synthetic gloves for medical, surgical, dental and healthcare use in
-2-
3. Plaintiff Cmberly-Clark Corporation is a corporation organized and existing ’
under the laws of Delaware with its principal place of business at 351 Phelps Drive, Irving,
Texas 75038 (“K-C”). K-C also maintains places of business at 1400 Holcomb Bridge Road,
Roswell, Georgia 30076 and 401 North Lake Street, Neenah, Wisconsin 54957-0349.
4. Plaintiff Safeskin Corporation is a corporation organized and existing under the
laws of Florida with a place of business at 1400 Holcomb Bridge Road, Roswell, Georgia 30076
(“Safeskin”). Safeskin is a wholly-owned subsidiary of K-C.
5. Defendant The Delta Group is an unincorporated joint venture, with a place of
business at 4250 River Green Parkway, N.W., Duluth, Georgia 30136. ?“ne Delta Group is
comprised of Defendant Delta Hospital Supply, Inc. (“DHS”), a Massachusetts corporation with
a principal place of business at 3 1 Astor Avenue, Nonvood, Massachusetts 02062; Defendant
Delta Medical Systems, Inc. (“DMS”), a Georgia corporation with a principal place of business
at 6865 Shiloh Road E., Suite 400, Alpharetta, Georgia 30005; and Defendant Delta Medical
Supply Group, Inc. (“DMSG”), a Delaware corporation with a principal place ofbusiness at 436
W. Gay Street, West Chester, Pennsylvania 19380. The Delta Group and its constitbents,
namely, DHS, DMS and DMSG, are collectively referred to herein as “DG”.
6. Safeskin is the owner of the COLOR PURPLE (as defined below), PURPLE
KNIGHT, PURPLE NITRILE and PURPLE NITRILE-XTRA marks. Specifically, Safeskin is
the owner of U.S. Trademark Reg. No. 2,596,539 for the design mark of the COLOR PURPLE
in connection with “protective gloves for industrial use, and disposable nitrile gloves for use in
laboratories and cleanroom environments in Class 9; and gloves for medical and surgical uses in
Class IO” (the “COLOR PURPLE”); U.S. Trademark Reg. No. 2,470,932 for the word mark ’
PURPLE KNIGHT in eonr,ection with “latex and synthetic protective gloves for industrial and
scientific use in Class 9; and latex and synthetic gloves for medical, surgical, dental and
healthcare use in Class 10”; U.S. Trademark Reg. No. 2,533,260 for the word mark PURPLE
NITRlLE in connection with “latex and synthetic protective gloves for industrial and scientific
use in Class 9; and latex and synthetic gloves for medical, surgical, dental and healthcare use in
-2-
Class 10”; and U.S. Trademark Reg. No. 2,593,382 for the word mark PURPLE NITRILE- ’
XTRA in cormection with “latex and synthetic gloves for protective use in medical, surgical,
veterinary and dental fields in Class 10’’ (the registered marks listed above are collectively
referred to herein as “K-C/Safeskin Registered Marks”).
7. The COLOR PURPLE trademark and related word marks, all state, federal and
common law rights therein, including the K-C/Safeskin Registered Marks are referenced to
herein as the “K-C/Safeskin Marks”.
8. The K-C/Safeskin Registered Marks, including the COLOR PURPLE trademark,
have been registered on the Principal Regisier by the United States Patent and Trademark Office
(“USPTO”). In issuing the certificate of registration upon the Principal Register for the COLOR
PURPLE trademark, the USPTO accepted K-C/Safeskin’s claim of acquired distinctiveness with
respect to the COLOR PURPLE trademark as applied to “protective gloves for industrial use and
disposable nitrile gloves for use in laboratories and cleanroom environments; gloves for medical
and surgical uses.” The registration of the K-C/Safeskin Registered Marks, including the
COLOR PURPLE trademark, is prima facie evidence of the validity of the K-C/Safeskin
Registered Marks, including the COLOR PURPLE trademark; the registration thereof; K-
C/Safeskin’s ownership of the K-C/Safeskin Registered Marks, including the COLOR PURPLE
trademark; and of K-C/Safeskin’s exclusive right to use the K-C/Safeskin Registered Marks,
including the COLOR PURPLE trademark, in commerce on or in connection with the goods
identified in the certificates of regstration.
‘
9. DG acknowledges K-C/Safeskin’s worldwide exclusive rights in the distinctive
and famous K-C/Safeskin Marks.
10. DG has agreed not to sell, manufacture, package, advertise, promote, distribute,
import, resell or otherwise deal in any protective gloves featuring the K-CISafeskin Marks or any
confusingly similar variations thereof, or to use in any fashion or for any purpose the K-
C/Safeskin Marks or any confusingly similar variations thereof, and has agreed to enter into m d
-3-
be bound by the terms of an injunction prohibiting such conduct, and to otherwise refrain fiom
inknzement of, or interference with K-C/Safeskin’s rights in the K-C/Safeskin Marks.
1 1. K-USafeskin has no adequate remedy at law - injury to its reputation and
u goodwill cannot be quantified and such injury cannot be compensated by monetary amounts.
12. The parties prefer to avoid the cost, time and expense of proceeding with this case
and desire to resolve all claims that the parties have, had or may have had that were or could
have been raised or asserted by one or more of the parties with regard to this case through the
entry of Judgment, including Permanent Injunction, in the form attached hereto as Exhibit A;
each party to bear its or his OWE fees and costs.
13. This Stipulation is not intended to and shall not be interpreted to vary or
contradict any other agreement between the parties.
I.
-4-
IT IS SO STIPULATED.
Dated: : 2004
Dated: : 2004
Dated: , 2004
Dated: , 2004
Dated: , 2004
Dated: ,2004
KIMBERLY-CLARK COW ORA TI ON
SAFESKIN CORPORATION
Rv
Its
* THE DELTA GROUP
Its
DELTA HOSPITAL SUPPLY, INC.
BY
Its
DELTA MEDICAL SYSTEMS, I”.
Its
DELTA MEDICAL SUPPLY GROUP, INC.
R V
Its
APPROVED AS TO FORM:
Daled: 2004
Dated: , 2004
___-- --__- By F W K C. REDINGER, IIJ Georgia Bar No. 046675 Attorneys for Plaintiffs Kimberly-Clark Corporation Safeskin Corporation
THOMAS KAYDEN HORSTEMEYER & RISLEY, LLP
BY TODD DEVEAU Georgia Bar No. 219725 DAN R. GRESHAM Georgia Bar No. 31 0280 Attorneys for Defendants The Delta Group Delta Hospital Supply, Inc. Delta Medical Systems, Inc. Delta Medical Supply Group, Inc..
-6-
JN THE UNITED STATES DISTRICT COURT FOR THE
NORTHEIW DISTRICT OF GEORGlA ATLAZVTA DJVlSl ON
KIMBERLY-CLARK CORPORATION, SAFESKIN CORPORATION,
Plaintiffs,
V.
THE DELTA GROUP, DELTA HOSPITAL SUPPLY, INC., DELTA MEDICAL SYSTEMS, INC., DELTA MEDICAL SUPPLY GROUP, INC., MEDTEXX PARTNERS, AND DASH MEDICAL GLOVES, INC.,
Defendants,
1 1
1
1
) ) )
1 1 1 j 1 1 1
) CNIL ACTION No.: 1 :03-CV-3290
JUDGMENT. INCLUDING PERMANENT TIUJ’UNCTION. AGAINST DELTA DEFENDANTS
The Court, pursuant to the stipulation of the parties, hereby ORDERS, ADJUDICATES
and DECREES that final judgment, including a permanent injunction, shall be and hereby is
entered on the first amended complaint in the within action as follows:
A. Permanent hiunction. The Delta Group, Delta Hospital Supply, h c . (“DHS”),
Delta Medical Systems, Inc. (“DMS”), Delta Medical Supply Group, Inc. (“DMSG”) (The Delta
Group and its constituents, namely, DHS, DMS and DMSG, are collectively referred to herein as
- 1-
“DG”), and each of their assignees, transferees, employees, agents and representatives, and’all
other persons. firms. or entities actin2 in concert or participating with them are enjoined from:
using, displaying, advertising, and promoting the K-USafeskin (i)
Marks (as defined in the Stipulation), including, the design mark COLOR
PURPLE and word marks PURPLE KNIGHT, PURPLE hqTRJLE and PURPLE
NITRILE-XTRA, or any confusingly similar trademarks, including on or in
connection with any products, services or websites;
(ii) performing or allowing any act or thing calculated or likely to
cause confusion or mistake in the minds of members of the public or the trade or
prospective purchasers or consumers as to the source of DG’s goods, or likely to
deceive members of the public or prospective purchasers or consumers of DG’s
goods and services into believing that there is some association, connection or
affiliation with and/or sponsorship or approval by K-C/Safeskin;
(iii) performing or allowing any act or thing which is likely to dilute the
distinctive quality of the K-USafeskin Marks or otherwise injure K-C/Safeskin’s
business reputation or goodwili;
(iv) engaging in acts of federal, state or common law trademafk
infringement, dilution or unfair competition that would damage or injure K-
C/Safeskin and/or the K-C/Safeskin Marks; and
(v) registering, assigning or transfening the K-C/Safeskin Marks or
any confusingly similar trademarks.
Destruction of Materials. DG, pursuant 10 15 U.S.C. B. I 1 1 8, is ordered to deliver
up for destruction all goods, labels, signs, prints, packages, wrappers, receptacles, containers,
advertisements, and other materials in the possession of DG bearing the K-C/Safeskin Marks, or
any confusingly similar trademark, trade dress, trade name, or domain name, or any colordAe
-2-
8. .,
imitation thereof, and all plates, molds, matrices and other means of making these items in the
possession of DG.
~ C. Phaseout Period. Notwithstanding the provisions of paragraphs A and B
contained herein, DG will be permitted to (i) sell its remaining inventory of protective gloves
bearing the COLOR PURPLE or any other trademark or trade dress that is likely to cause
confusion with respect to or which constitutes a colorable imitation of the COLOR PURPLE, not
to exceed eight hundred (800) cases, through September 30,2004; and (ii) distribute its
remaining inventory of boxes bearing the current packaging for the Delta purple nitrile slove. not
to exceed forty-two thousand (42,000) cases, thoueh September 30,2004.
D. No Appeals and Continuinq Jurisdiction. No appeals shall be taken from this
Judpent , and the parties waive all rights to appeal. This Court expressly retains jurisdiction
over this matter to enforce any violation of the terms of this Judrment, including the within
Perm anent Injunct i on, by either party.
D. No Fees or Costs: Each party shall bear its own fees and costs.
IT IS SO ORDERED, ADJUDICATED AND DECREED.
Dated: , 2004 U.S. District Court Judge
- 3-
4 .,
UNITED STATES INTERNATlONAL TRADE COMR‘ISSSION WASHINGTON, D.C.
Before the Honorable Delbert R. Terrill, Jr.
In the Matter o f
CERTAIN PURPLE PROTECTIVE GLOVES
lnvestjgation No. 337-TA-500
JOINT MOTION TO TERMINATE INVESTIGATION AS TQ RESPONDENTS THE DELTA GROUP, DELTA HOSPITAL SUPPLY, INC., DELTA MEDICAL SYSTEMS,
JNC., AND DELTA MEDICAL SUPPLY GROUP, INC. BASED UPON SETTLEMENT AGREEMENT AND CONSENT ORDER
Pursuant to Commission Rule of Practice and Procedure 21 0.2 1 (b) and (c) (I 9
C.F.R. 0 5 2 10.2 1 (b) 2nd (c)), Cornplainafits Kimberly-Clark C.=rporation and Safeskin
Corporation (collectjvely, “Complainants”) and Respondents The Delta Group, Delta Hospital
Supply, Inc., Delta Medical Systems, Inc., and Delta Medical Supply Group, Inc. (collectively,
“Delta Respondents“) hereby Jointly move to terminate this Investigation as to the Delta
Respondents based upon the Confidential Settlement Ageement (the “Agreement”), Consent
Order Stipulation and Proposed Consent Order submitted concurrently herewith.
The Agreement includes Confidential Business Infoxmation within the meaning of
19 C.F.R. 6 201.6. The parties, therefore, request that the Agreement (attached as Confidential
Exhibit A) be treated as Confidential Business Information under the Protective Order in this
Investigation. There are no other agreements, written or oral, express or implied, between I
Complainants and the Delta Respondents concerning the subject matter of this Investigation.
The Consent Order Stipulation contains the admissions, waivers, statements, and
other requirements pursuant to Commission Rule 210.21 (c)(3). The parties submit that entry of
the Proposed Consent Order will simplify and streamline the factual issues in this Investigation
without causing any prejudice IO the remaining Respondents. Further, termination of this
Investigation as to the Delta Respondents is in the interest of the public and administrative
economy.
The Commission has consistently terminated investisations based upon a
combination of a settlement agreement and consent order. See Certain Recordable Compact
Discs and Rewritable Conipacr Discs, hv. No. 337-TA-474, Notice of Commission Decision
Not to Review arid Initial Determination (April 24,2003); see also Certain Garage Dooi
Opemon Inchding Components Thereof, hv . No. 337-TA-459, Notice of Commission
Determination Not to Review Two Initial Determinations (June 25, 2002). EntG into a consent
order is an integral part of the Settlement Agreement between the Complainants and the Delta
Respondents. Accordingly, termination of this Investigation as to the Delta Respondents should
be based both on the Settlement Agreement and the entry of the Consent Order. Complainants
have consulted with the Commission Investigative Attorney regarding this Motion. The
Commission Investigative Attorney will provide the position of the Office of Unfair Import
Investigations after reviewing the papers in more detail.
Accordingly, Complainants and the Delta Respondents respectfully request that
the Administrative Law Judge issue an initial determination terminating this Investigation as to
2
the Delta Respondents on the basis of the Confidential Settlement Agreement, Consent Ord,er
Stipulation and Proposed Consent Order.
3
Respectfully submitted,
Raymond A. Kurz Lewis E. Leibowitz Celine J . Crowson HOGAN & HARTSON L.L.P. Columbia Square 555 Thirteenth Street, N.W. Washington, D.C. 20004-1 109 Telephone: 202-637-5600
Counsel for Complainants
SAFESKIN CORPORATION KIMBERLY-CLARK CORPORATION
Dated: , 2004
Munford Page Hall, T1 DORSEY & WHITNEY LLP 1001 Pennsylvania Avenue, N.W Suite 400 South Washingon, D.C. 20004-2533 Telephone: 202-442-3000
Counsel for Respondents THE DELTA GROUP DELTA HOSPITAL SUPPLY, INC. DELTA MEDICAL SYSTEMS, INC. DELTA MEDICAL SUPPLY GROUP, INC.
4
UNJTED STATES INTERIVATIONAL TRADE COR.IR!TISSION M~ASHTNGTON9 D.C.
Before tbe Honorable Delbert R. Terrill, Jr.
In the Matter of
CERTAIN PURPLE PROTECTIVE GLOVES
Investigation No. 337-TA-500
CONSENT ORDER STIPULATION
In accordance with 19 C.F.R. 4 2 10.2 1 (c)(3)(i), Complainants Kimberly-Clark
Corporation and Safeskin Corporation (collectively, “Complainants”) and Respondents The
Delta Group, Delta Hospital Supply, Inc., Delta Medical Systems, Inc., and Delta Medical Supply
Group, h c . (collectively, “Delta Respondents”), through their respec?ive duly authorized
officers, HEREBY AGREE that:
I . Complainants and Delta Respondents acknowledge that the Commission has in
rem jurisdiction, subject matter jurisdiction, personal jurisdiction over the parties and/or due
process notice and hearing jurisdiction.
2. Complainants and Delta Respondents expressly waive all rights to seek judicial
review or otherwise challenge or contest the validity of the Consent Order.
3. Kimberly-Clark Corporation is a corporation organized and existing under the
laws of Delaware with its principal place of business at 35 1 Phelps Drive, Irving, Texas 75038
1
(“K-c”). K-C also maintains places of business at 1400 Holcomb Bridge Road, Roswell,
Georsia 30076 and 401 North Lake Street, Weenah, Wisconsin 54957-0349. K-C refers to
Complainant Kimberly-Clark Corporation, each of its predecessors, successors, divisions,
subsidiaries, and affiliates, each other entity directly or indirectly, wholly or in part, owned or
controlled by it, and each pafinership or joint venture to which any of them is a party, and all
directors, officers, employees, and agents: or other persons acting for or on behalf of any of them.
4. Complainant Safeskin Corporation is a corporation organized and existing under
the laws of Florida with a place of business at 1400 Holcomb Bridge Road, Roswell, Georgia
30076 (“Safeskin”). Safeskin is a wholly-owned subsidiary of K-C. Safeskin refers to
Complainant Safeskin Corporation, each of its predecessors, successors, divisions, subsidiaries,
and affiliates, each other entity directly or indirectly, wholly or in part, owned or controlled by it,
and each partnership or joint venture to which any of them is a party, .and all directors, officers,
employees, and agents, or other persons acting for or on behalf of any of them.
5. Respondent The Delta Group is an unincorporated joint venture, with a place of
business at 4250 River Green Parkway, N.W., Duluth, Georgia 301 36. The Delta Group is
comprised of Respondent Delta Hospital Supply, Inc. (“DHS”), a Massachusetts corporation with
a principal place of business at 31 Astor Avenue, Norwood, Massachusetts 02062; Respondent
Delta Medical Systems, h c . (“DMS”), a Georgia corporation with a principal place of business at
6865 Shiloh Road E., Suite 400, Alpharetta, Georgia 30005; and Respondent Delta Medical
Supply Group, Inc. (“DMSG”), a Delaware corporation with a principal place of business at 436
W. Gay Street, West Chester, Pennsylvania 19380. The Delta Group and its constituents,
namely, DHS, DMS and DMSG, are collectively referred to herein as “Delta Respondents”.
2
Delta Respondents refers to The Delta Group and its constituents, namely, DHS, DMS and
DMSG, and each of their respective predecessors, successors, divisions, subsidiaries, and
affiliates, each other entity directly or indirectly, wholly or in part, owned or controlled by it, and
each partnership or joint venture to which any of them is a party, and all directors, officers,
employees, and agents, or other persons acting for or on behalf of any of them.
6. Complainants submitted its Complaint to the United States International Trade
Commission (“Commission”) in the above-captioned investigation on October 24, 2003. In its
Complaint, Cornplainants assert that the Delta Respondents have uniawfully imported into the
United States, sold for importation, and/or sold within the United States after importation certain
purple protective gloves that jnhnge Compiainants’ registered trademarks, in violation of
Section 337(a)(l)(C), 19 U.S.C. 8 1337(a)(l)(C).
7 . LT3 its response to the Complaint, the Delta Respondents denied that they had
unlawfully impofled into the United States, sold for imporlation, and/or sold within the United
States after importation certain purple protective gioves that infringe Complainants’ registered
trademarks, in violation of Section 337(a)( l)(C), 19 U.S.C. 8 1337(a)(l)(C).
8. On November 26,2003, the Commission instituted this investigation to
determine, inter alia: whether the Delta Respondents violated Section 337(a)(l)(C) in the
importation and sale of certain purple protective gloves by reason of infringement of
Complainants’ U.S. Trademark Reg. No. 2,596,539 for the COLOR PURPLE design mark.
9. This Consent Order Stipulation is made to avoid the expense and inconvenience
of ljtjgation and does not constitute an admission that an unfair act under Section 337 has been
committed, or that Section 337 or any other law has been violated. This Consent Order
3
Stipulation is made independently by Complainants and the Delta Respondents, and is not
intended to affect the rights or liabilities of other Respondents.
.
.IO. Complainants and Delta Respondents agree to the proposed Consent Order
attached hereto as Exhibit A and incorporated herein by reference.
1 1. Complainants are the owner of the COLOR PURPLE design mark, which is the
subject of U.S. Trademark Reg. No. 2,596,539 (“COLOR PURPLE”) and related word marks,
including US. Reg. No. 2,533,260 for the PURPLE NITRILE mark and U.S. Reg. No. 2,593,382
for the PURPLE NITRILE-XTRA mark. The Delta Respondents acknowledge K-C Safeskin’s
rights in US . Reg. No. 2,596,539 for the COLOR PURPLE d e s i p mark; US. Reg. No.
2,533,260 for the PURPLE NITRILE mark; and U.S. Reg. No. 2,593,382 for the PURPLE
NITRILE-XTRA mark (“K-C/Safeskin Registered Marks”).
12. The Delta Respondents will not challenge, contest, oppose, seek to cancel 4-r
otherwise object to Complainants’ use or regstration of the K-C/Safeskin Registered Marks.
13. The Delta Respondents will not sell for importation into the United States, import
into the United States, sell within the United States afier importation, or offer to sell, distribute,
or market in the United States imported protective gloves featuring the K-C/Safeskin Registered
Marks or any mark that is likely to cause confusion or mistake as to source, sponsorshjp or
affiliation with Complainants and/or the K-C/Safeskin Registered Marks.
3 4. Notwithstanding Paragraph 13 of this Consent Order Stipulation, Delta
Respondents shall be entitled to sell for importation into the United States, import into the United
States, sell within the United States after importatjon, and offer to sell, distribute, or market in
the United States purple protective gloves through September 30, 2004 so long as such
4
.. ./
importation, sale, and distribution does not exceed eight hundred (800) total cases of purple
protective gloves.
15. Complainants and Delta Respondents will cooperate with and will not seek to
impede by litigation or other means the Commission‘s efforts to gather information under
Subpart I of Parr 21 0 of Title 19 of the Code of Federal Regulations.
16. Complainants and Delta Respondents hereby expressly recognize and apee that
enforcement, modification, and revocation of the Consent Order will be carried out pursuant to
Subpart 1 of Part 2 I 0 of Title 19, incorporating by reference the Commission’s Rules of Practice
and Procedure.
17. Delta Respondents shall not challenge the validity of the K-C/Safeskin Registered
Marks in any administrative or judicial proceeding to enforce the Consent Order.
18. As between the Consent Order Stipulation and the Confidential Settlement I S
Agreement, the Consent Order Stjpulation is not intended to and shall not be interpreted to vary
or contradict any term of the Confidential Settlement Agreement between the parties.
19. Complainants hereby release and forever discharge the Delta Respondents, their
successors, their current and future affiliates, parents, subsidiaries successors, officers, heirs,
ass ips and any entity that controls, is controlled by or under the control of any of the foregoing
(“Delta Entities”) along with all persons under the control of any Delta Entity, including without
limitation, all agents, attorneys, independent contractors, partners, employees, principals, owners,
shareholders, officers, directors, executors and administrators from any and all claims, demands,
damages and liability ansing out of or based on the acts described in the Complaint, and agrees to
hold Delta Respondents harmless for any importation or sales permitted by the terms of the
Consent Order.
.20. The Delta Respondents hereby release and forever discharge the Coniplainants,
their successors, their current and future affiliates, parents, subsidiaries successors, officers,
heirs, assigns and any entity that controls, is controlled by or under the control of any of the
foregoing (“Complainant Entity”) along with all persons under the control of any Complainant
Entity, including without limitation, all agents, attorneys, independent contractors, partners,
employees, principals, owners, shareholders, officers, directors, executors and administrators
from any and all claims, demands, damages and liability arising out of or based on the acts
described in the Complaint, and agrees to hold Complainants harmless for any importation or
sales permitted by the terns of the Consent Order.
21. This Consent Order Stipulation shall not apply with respect to any claim of any
intellectual property right that has expired or been found or adjudicated invalid or unenforceable
by the Coinmission or 2 cour! or agency of competent jurisdiction, provided that such finding or
judgment has become final and non-reviewable.
6
IN MTlNESS WHEREOF Complainants and Delta Respondents have caused their duly
authorized representative to execute this document on their behalf as an instrument under seal as
of the-date indicated, and request entry o f the CONSENT ORDER in the form attached hereto as
Exhibit A.
Dated: , 2004
Dated: ,2004
Dated: 2004
Dated: 2eo4
Dated: , 2004
Dated: 2004
KJMB ERLY -CLARK C O W ORAT1 ON
Its
SAFESKIN CORPORATION BY
Its
THE DELTA GROUP By
Its
DELTA HOSPITAL SUPPLY, INC. BY
DELTA MEDICAL SYSTEMS, INC. BY
Its
DELTA MEDICAL SUPPLY GROUP, INC.
Its
7
Respectfully submitted,
Raymond A. Kurz Lewis E. Leibowitz Celine J. Crowson HOGAN 8: HARTSON L.L.P. Columbia Square Washington, D.C. 20004-2533 555 Thirteenth Street, N.W. Washington, D.C. 20004-1 109 Telephone: 202-637-5600
Munford Page Hall, Il DORSEY & WHITNEY LLP 1001 Pennsylvania Avenue, N.W. Suite 400 Soutkj
Telephone: 202-442-3000
Counsel for Complainants KIMBERLY-CLARK CORPORATION THE DELTA GROUP SAFESKIN CORPORATION
Counsel for Respondents
DELTA HOSPITAL SUPPLY, INC. DELTA MEDICAL SYSTEMS, INC. DELTA MEDICAL SUPPLY GROUP, INC.
Dated: ,2004
8
I. .,
EXHlBIT A TO CONSENT ORDER STPULATION
USITED STATES 1IVTE:RIUATI ON& TRADE COMM1 SS3QN M’ASHINGTON, D.C.
Before the Honorable Delbert R. Terrill, Jr.
In the Matter of
CERTAIN PURPLE PROTECTIVE GLOVES
Investigation No. 33 7-TA-5 00
JPROPOSEDl CONSENT ORDER
The United States The hternational Trade Commission (“Commission”) on November
26,2003 instituted the above-captioned Investigation under Section 337 of the Tariff Act of
1930, as amended, 19 U.S.C. $ 1337) naming several Respondents, including, The Delta Group,
Delta Hospital Supply, Inc. (“DHS”), Delta Medical Systems, Inc. (“DMS“), Delta Medical
Supply Group, Inc. (“DMSG”) (The Delta Group and its constituents, namely, DHS, DMS and
DMSG, are collectively referred to herein as “Delta Respondents”), based upon the allegations
contained in the Complaint filed by Complainants Kimberly-Clark Corporation and Safeskin
Corporation (collectively, “Complainants”), which allege unfair acts in the importation into the
United States: the sale for importation and the sale within the United States afier importation of
purple protective gloves.
Complainants and Delta Respondents have executed a Consent Order Stipulation in
which they agee to the entry of thjs Consent Order and to all waivers and other provisions as
required by Commission Rule ofpractice and Procedure 210.21 (c) (1 9 C.F.R. 0 210.21 (c)).
1
Complainants and Delta Respondents have filed a Joint Motion to Terminate the Investigation as
IO the Delta Respondents based on a Settlement Agreement and Consent Order.
-JT IS HEREBY ORDERED THAT:
1. Upon entry of this Consent Order, the Delta Respondents, shall cease:
(a) importing into the United States, selling for importation, or selling
within the United States after importation, protective gloves bearing the K-C/Safeskin Registered
Marks (as defined in the Consent Order Stipulation) or any confusingly similar trademark; and
(b) engaging in the unauthorized use o f the K-C/Safeskin Registered
Marks or confusingly similar marks.
2. Notwithstanding the provjsions of paragraph 1 contained herein, Delta
Respondents will be permitted to dispose o f its remaining inventory of protective gloves bearing
the COLOR PURPLE (as defined in the Consent Order Stipulation), or any other trademark that
is likely to cause confusion with respect to or which constitutes a colorable imitativi of the
COLOR PURPLE mark, not to exceed eight hundred (800) cases through September 30,2004, in
the United States.
3. The Consent Order shall be applicable to and binding upon each Delta
Respondent, and each of their officers, directors, agents servants, employees, and all persons,
firms, corporations or entities acting or claiming to act on their behalf or under their direction or
authority.
4. Complainants and Delta Respondents shall be precluded from seeking judicial
review or otherwise challenging or contesting the validity of this Consent Order.
5. Complainants and Delta Respondents shall cooperate with and shali not seek to
impede by litigation or other means the Commission’s efforts to gather information under
Subpart 1 of Part 2 10 of Title 19 of the Code of Federal Regulation.
2
.. .
6. This Consent Order shall not apply with respect to any claim of any intellectt~al
property right that has expired or been found or adjudicated invalid or unenforceable 3y the
Commission or a court or agency of competent jurisdiction, provided that such finding or
j u d p e n t has become final and non-reviewable.
7. This Investigation is hereby terminated with respect to the Delta Respondents.
8. The Delta Respondents are hereby dismissed as named Respondents in this
Investigation; provided, however: that enforcement, modification, or revocation of this Consent
Order shall be camed out pursuant to Subpart I of Part 21 0 of Title 19 of the Code of Federal
Regulation. In determining whether any Delta Respondents js in violation of this Consent Order,
the Commission may infer facts adverse to a Delta Respondent if such a Delta Respondent fails
to provide adequate or timely infohation. The Commission may impose upon any person who
violates this Consent Order a penalty of not more than the greater of $1 00,000 of twice the
domestic value of any articles entered or sold for each day on which the Consent Order is
violated. The Commission’s assessment of any such penalty shall accrue upon the Administrative
zssessment by the Commission.
3
Dated : ,2004 BY ORDER OF THE COMMISSION
4
EXHJBJT G TO S
FOR IMMEDIATE RELEASE FOR MORE mTFORMAT1ON 1
February 2004 Judith Webb 404-266-0899
KIR'lBERLY-CLARJUSAFESKIN REACH AGREEMENT WITH THE DELTA CORlPANlES ON TRADERlARK INFRIIVGERlEIVT
(ROSWELL, GA) -- The Delta Group, Delta Hospital Supply, lnc., Delta Medical
Systems, lnc. and Delta Medical Supply Group, Inc. (the "Delta Companies") have
reached an agreement with Kimberly-Clark Corporation and its wholly owned subsidiary,
Safeskin Corporation, in connection with an International Trade Commission (ITC)
investigation and a complaint filed in Federal District Court in Georgia late last year.
In both proceedings, Kimberly-ClarWSafeskin alleged that the Delta Companies were
infringing their federally registered COLOR PURPLE" trademark, which relates to
KIMBERLY-CLARK* SAFESKIN* PURPLE NITRILE* protective gloves. Under a
consent agreement entered into by the parties, the Delta Companies cannot make, sell,
import, distribute or advertise any purple gloves or use the COLOR PURPLE* trademark
afier Sepicmber 30,2004. Further, the Del% Compmks have achow!eJged Kimberly-
ClarWSafeskin's trademark rights in the COLOR PURPLE* trademark.
The original complaints filed with the ITC and the Federal District Court naming other
companies, including Medtexx Partners, Latexx Partners Berhad and Dash Medical
Gloves, lnc., are still pending.
Kimberly-Clark in the Healthcare Environment
Healthcare providers turn to Kimberly-Clark for a wide portfolio of quality products that
improve the health, hygiene and well-being of their patients and staff. The company
-more-
manufactures and markets TECNOL* face masks, SAFESKIN* medical gloves, and a 8
wide variety of infection control and surgical apparel, providing head-to-toe protection
solutions for healthcare staff. And throughout the care continuum, patients and staff alike
depend cn ,"LL-UI -,-A t;sszeL. K~Y$EERLY-CLARK* professional skin care products,
and SCOTT" towels for day-to-day protection. For more information on protection
solutions for healthcare fiom Kimberly-Clark, visit ~ ~ ~ ~ ~ ~ ~ . k c l ~ e a l t h c a ~ e . c o i n .
T 1 T F T h T V t .
About Smberly-Clark
Kimberly-Clark and its well-known global brands are an indispensable part of life for
people in more than 150 countries. Every day, one in four people around the world trust
K-C's brands to enhance their health, hyrgiene and well being. With brands such as
Kleenex, Scott, Huggies: Pull-Ups, Kotex and Depend, Kimberly-Clark holds the No. 1
or No. 2 brand position in more than 80 countries. To keep up with the latest K-C news
and to leam more about the company's 132-year history of innovatjon, visit
www .k i mberlv-cl ark. c.om . I
APPENDIX C
CONSENT ORDER STIPULATION ANSIP PROPOSED CONSENT ORDER
UNITED STATES 1NTE)WATIONA.L TRADE COMMISSIOS WASRINGTON, D.C.
Before the Honorable Delbert R. Terrill, Jr.
In the Matter of
CERTAIN PURPLE PROTECTIVE GLOVES
Investigation No. 337-TA-500
CONSENT ORDER STIPULATION
In accordance with 19 C.F.R. 9 21 0.21 (c)(3)(i), Complainants Kimberly-Clark
Corporation and Safeskin Corporation (collectively, “Complainants”) and Re&ondents The
Delta Group, Delta Hospital Supply, Inc., Delta Medical Systems, Jnc., and Delta Medical Supply
Group, hc . (collectively, “Delta Respondents”), through their respective duly authorized
officers, HEREBY AGREE that:
1. Complainants and Delta Respondents acknowledge that the Commission has in
rem jurisdiction, subject matter jurisdiction, personal jurisdiction over the parties and/or due
process notice and hearing jurisdiction.
2. Complainants and Delta Respondents expressly waive all rights to seek judicial
review or otherwise challenge or contest the validity of the Consent Order.
3, Kimberly-Clark Corporation is a corporation organized and existing under the
laws of Delaware with its principal place of business at 351 Phelps Drive, Irving, Texas 75038
(“K-Cy’). K-C also maintains places of business at 1400 Holcomb Bridge Road, Roswell,
1
Georga 30076 and 401 fiorth Lake Street, Neenah, Wisconsin 54957-0349. K-C refers to
Complainant Kimberly-Clark Corporation, each of its predecessors. successors, divisions,
subsidiaries, and affiliates, each other entity directly or indirectly, wholly or in part, owned or
controlled by it, and each partnership or joint venture to which any of them is a party- and all
directors, officers, employees, and agents, or other persons acting for or on behalf of any of them.
4. Complainant Safeskin Corporation is a corporation organized and existing under
the laws of Florida with a place of business at 1400 Holcomb Bridge Road, Roswell, Georgia
30076 (“Safeskin”). Safeskin is a wholly-owned subsidiary of K-C. Safeskin refers to
Complainant Safeskin Corporation, each of its predecessors, successors, divisions, subsidiaries,
and affiliates, each other entity directly or indirectly, wholly or in part, owned or controlled by it,
and each partnership or joint venture to which any of them is a party, and all directors, officers,
employees, and agents, or other persons acting for or on behalf of any of thc.n.
5. Respondent The Delta Group is an unincorporated joint venture, with a place of
business zt 4250 PGver Green Parkway, N.M7., Dulcth, Gemgi2 30136. The De!?a Group is
comprised of Respondent Delta Hospital Supply, Inc. (“DHS”), a Massachusetts corporation with
a principal place o f business at 3 1 Astor Avenue, Norwood, Massachusetts 02062; Respondent
Delta Medical Systems, Inc. (“DMS”), a Georgia corporation with a principal place of business at
6865 Shiloh Road E., Suite 400, Alpharetta, Georgia 30005; and Respondent Delta Medical
Supply Group, Inc. (“DMSG”), a Delaware corporation with a principal place of business at 436
W. Gay Street, West Chester, Pennsylvania 19380. The Delta Group and its constituents,
namely, DHS, DMS and DMSG, are colIectively referred to herein as “Delta Respondents”
Delta Respondents refers to The Delta Group and its constituents, namely, DHS, DMS and
DMSG, and each of their respective predecessors, successors, divisions, subsidiaries, and
2
affiliates, each other entity directly or indirectly, wholly or in part, owned or controlled by it, and
each partnership or joint venture to w-hich any of them is a party, and all directors, officers:
employees, and agents, or other persons acting for or on behalf of any of them.
6. Complainants submitted its Complaint to the United States International Trade
Commission (“Commission”) in the above-captioned investigation on October 24,2003. In its
Complaint, Complainants assert that the Delta Respondents have unlawfully imported into the
United States, sold for importation, and/or sold within the United States after importation certain
purple protective gloves that infringe Complainants’ registered trademarks, in violation of
Section 337(a)(l)(C), 19 U.S.C. 9 1337(a)( l)(C).
7 . In its response to the Complaint, the Delta Respondents denied that they had
unlawfully imported into the United States, sold for importation, and/or sold within the United
States after importatic, 1 certain purple protective gloves that infringe Complainants’ registered
trademarks, in violation of Section 337(a)(l)(C), 19 U.S.C. 9 1337(a)(l)(C).
8. On November 26, 2003, the Commission instituted this investigation to
determine, inter alia, whether the Delta Respondents violated Section 337(a)( 1)fC) in the
importation and sale of certain purple protective gloves by reason of infringement of
Complainants’ U.S. Trademark Reg. No. 2,596,539 for the COLOR PURPLE design mark.
9. This Consent Order Stipulation is made to avoid the expense and inconvenience
of litigation and does not constitute an admission that an unfair act under Section 337 has been
committed, or that Section 337 or any other law has been violated. This Consent Order
Stipulation is made independently by Complainants and the Delta Respondents, and is not
intended to affect the rights or liabilities of other Respondents.
3
IO. Complainants and Delta Respondents agee to the proposed Consent Order
attached hereto as Exhibit A and incorporated herein by reference.
1 I . Complainants are the owner of the COLOR PURPLE design mark, which is the
subject of U.S. Trademark Reg. No. 2,596,539 (“COLOR PURPLE”) and related word marks:
including U.S. Reg. No. 2,533,260 for the PURPLE NTTRJLE mark and U.S. Reg. No. 2,593,382
for the PURPLE NITRILE-XTRA mark. The Delta Respondents acknowledge K-C Safeskin’s
rights jn U.S. Reg. No. 2,596,539 for the COLOR PURPLE design mark; US. Reg. No.
2,533,260 for the PURPLE NITRILE mark; and U.S. Reg. No. 2,593,382 for the PURPLE
NITRILE-XTRA mark (“K-C/Safeskin Registered Marks”).
12. The Delta Respondents will not challenge, contest, oppose, seek to cancel or
otherwise object to Complainants’ use or registration o f the K-CISafeskin Registered Marks.
13. The Dr~lta Respondents will not sell for importation into the United States, import
into the United States, sell within the United States after importation, or offer to sell, distribute,
or market in the United States imported protective gloves featuring the K-C/Safeskin Registered
Marks or any mark that is likely to cause confusion or mistake as to source, sponsorship or
affiliation with Complainants and/or the K-C/Safeskin Registered Marks.
14. Notwithstanding Paragraph 13 o f this Consent Order Stipulation, Oelta
Respondents shall be entitled to sell for importation into the United States, import into the United
States, sell within the United States after importation, and offer to sell, distribute, or market in
the United States purple protective gloves through September 30,2004 so long as such
importation, sale, and distribution does not exceed eight hundred (800) total cases ofpurple
protective gloves.
4
15. Complainants and Delta Respondents will cooperate with and will not seek to
impede by litigation or other means the Commission’s efforts to gather information under
Subpart I of Part 2 10 of Title 19 of the Code of Federal Regulations.
16. Complainants and Delta Respondents hereby expressly recognize and agree that
enforcement, modification, and revocation of the Consent Order will be camed out pursuant to
Subpart I of Part 210 of Title 19. incorporating by reference the Commission’s Rules of Practice
and Procedure.
17. Delta Respondents shall not challenge the vaIidity of the K-C/Safeskin Registered
Marks in any administrative or judicial proceeding to enforce the Consent Order.
18. As between the Consent Order Stipulation and the Confidential Settlement
Agreement, the Consent Order Stipulation is not intended to and shall not be interpreted to vary
or contradict any term of the Confidential Settlement Agreement between the parties.
19. Complainants hereby release and forever discharge the Delta Respondents, their
successcrs, tlleir curre~t a d fctue affihtes, pumts, sgbsidiaies successors, officers, heirs,
assigns and any entity that controls, is controlled by or under the control of any of the foregoing
(“Delta Entities”) along with all persons under the control of any Delta Entity, including without
limitation, all agents, attorneys, independent contractors, partners, employees, principals, owners,
shareholders, officers, directors, executors and administrators from any and all claims, demands,
damages and liability arising out of or based on the acts described in the Complaint, and agrees to
hold Delta Respondents harmless for any importation or sales permitted by the terms of the
Consent Order.
20. The Delta Respondents hereby release and forever discharge the Complainants,
their successors, their current and future affiliates, parents, subsidiaries successors, officers,
5
heirs, assigns and any entity that controls, is controlled by or under the control of any of the
foregoing (“Complainant Entity”) along with all persons under the controI of any Complainant
Entity, including without limitation, all agents, attorneys, independent contractors, partners,
employees, principals, owners, shareholders, officers, directors, executors and administrators
from any and all claims, demands, damages and liability arising out of or based on the acts
described in the Complaint, and agrees to hold Complainants harmless for any importation or
sales permitted by the terms of the Consent Order.
2 1. This Consent Order Stipulation shall not apply with respect to any claim of any
intellectual property right that has expired or been found or adjudicated invalid or unenforceable
by the Commission or a court or agency o f competent jurisdiction, provided that such finding or
judgment has become final and non-reviewable.
6
IN WITNESS WHEREOF Complainants and Delta Respondents have caused their duly
authorized representative to execute his document on their behalf as an instrument under seal as
of the date indicated, and request entry of the CONSENT ORDER in the foim attached hereto as
Exhibit A.
Dated: 4 -19 ,2004
Dated: q/Zb ,2004
Dated: , 2004
Dated: , 2004
Dated: ,2004
KIMBERLY-CLARK CORPORATION
THE DELTA GROUP
Its
DELTA HOSPITAL SUPPLY, mic.
Its
DELTA MEDICAL SYSTEMS, INC. BY
Dated: ,2004 DELTA MEDICAL SUPPLY GROUP, N C . BY
7
Dl WITNESS MWEREOF Complainanrs and Delta Respondents have caused their duly
authorized representative to execute this document on their behalf as an instrument under seal as
of the date indicated, and request entry of the CONSENT ORDER in the form attached hereto as
Exhibit A.
Dated: , 2004 KIMBERLY-CLARK CORPORATION
Dated: ,2004 SAFESKIN CORPORATION BY
Dated: ?- 26 ,2004
Dated: y.- &6 ,2004
Dated: fc .? ,2004
7
Lewis E. Leibo Celine J . Crowson HOGAN & HARTSON L.L.P. Columbia Square 555 Thirteenth Street, N.W. Washington, D.C. 20004-1 109 Telephone: 202-637-5600
@
Counsel for Complainants
SAFESKIN CORPORATION KIMBERLY-CLARK CORPORATION
Respectfully submitted, /:
DOKSEY & WHITNEY LLP 1001 Pennsylvania Avenue, N.W. Suite 400 South Washington, D.C. 20004-2533 Telephone: 202-442-3000
Counsel for Respondents THE DELTA GROUP DELTA HOSPITAL SUPPLY, INC. DELTA MEDICAL SYSTEMS, INC. DELTA MEDICAL SUPPLY GROLTP, INC.
EXHIBIT A TO CONSENT ORDER STIPULATION
UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.
Before the Honorable Delbert R. Terrill, Jr.
In the Matter of
CERTAIN PURPLE PROTECTIVE GLOVES
1 Investigation No. 337-T-4-500 I
JPROPOSED] CONSENT ORDER
The United States The International Trade Commission (“Commission”) on November
26, 2003 instituted the above-captioned Investigation under Section 337 o f the Tariff Act o f
1930: as amended, 19 U.S.C. 9 1337) naming several Respondents, hcluding: The Delta Group,
Delta Hospital Supply, hc . (“DHS”), Delta Medical Systems, Inc. (“DMS”), Delta Medical
Supply Group, Inc. (“DMSG”) (The Delta Group and its constituents, namely, DHS, DMS and
DMSG, are collectively referred to herein as “Delta Respondents”), based upon the allegations
contained in the Complaint filed by Complainants Kimberly-Clark Corporation and Safeskin
Corporation (collectively, “Complainants”), which allege unfair acts in the importation into the
United States, the sale for importation and the sale within the United States after importation of
purple protective gloves.
I, .,
Complainants and Delta Respondents have executed a Consent Order Stipulation in
which they agree to the entry of this Consent Order and to all waivers and other provisions as
required by Commission Rule of Practice and Procedure 210.21(c) (19 C.F.R. 0 210.21 (c)).
1
Complainants and Delta Respondents have filed a Joint Motion to Terminate the Investigation as
to the Delta Respondents based on a Settlement Agreement and Consent Order
IT IS HEREBY ORDERED THAT:
I . Upon entry of this Consent Order, the Delta Respondents, shall cease:
(a) importing into the United States, selling for importation, or selling
within the United States after importation, protective gloves bearing the K-C/Safeskin Registered
Marks (as defined in the Consent Order Stipulation) or any confusingly similar trademark; and
(b) engaging in the unauthorized use of the K-CISafeskin Registered
Marks or confusingly similar marks.
2. Notwithstanding the provisions of paragraph 1 contained herein, Delta
Respondents will be permitted to dispose o f its remaining inventory of protective gloves bearing
the COLOR PURPLE (as defined in the Consent Order Stipulation), or any other trademark that
is likely to cause confusion with respec' to or whxh constitutes a colorable imitation of the
COLOR PURPLE mark, not to exceed eight hundred (800) cases through September 30,2004, in
the United States.
3. The Consent Order shall be applicable to and binding upon each Delta
Respondent, and each of their officers, directors, agents servants, employees, and a13 persons,
firms, corporatjons or entities acting or claiming to act on their behalf or under their direction or
authority.
4. Complainants and Delta Respondents shall be precluded from seeking judicial
review or otherwise challenging or contesting the validity of this Consent Order.
5. Complainants and Delta Respondents shall cooperate with and shall not seek to
impede by litigation or other means the Commission's efforts to gather information under
Subpart I o f Part 2 10 of Title 19 o f the Code of Federal Regulation.
6. This Consent Order shall not apply with respect to any claim of any intellectual
property right that has expired or been found or adjudicated invalid or unenforceable by the
2
Commission or a court or agency of competent jurisdiction, provided that such finding or
judbent has become final and non-reviewable.
7 . This lnvestigatjon is hereby terminated with respect to the Delta Respondents.
8. The Delta Respondents are hereby dismissed as named Respondents in this
Investigation; provided, however, that enforcement, modification, or revocation of this Consent
Order shall be camed out pursuant to Subpart I of Part 21 0 of Title 19 of the Code of Federal
Regulation. In determining whether any Delta Respondents is in violation of this Consent Order,
the Commission may infer facts adverse to a Delta Respondent if such a Delta Respondent fails
to provide adequate or timely information. The Commission may impose upon any person who
violates this Consent Order a penalty of not more than the greater of $100,000 or twice the
domestic value of any articles entered or sold for each day on which the Consent Order is
violated. The Commission’s assessment of any such penalty shall accrue upon the administrative
assessment by the Commission.
3
Dated: ,2004 BY ORDER OF TEE, CQR!IMISSION
4
CERTAIN PURPLE PROTECTIVE GLOVES INV. NO. 337-TA-500
CERTIFICATE OF SERVICE
I, Marilyn R. Abbott, hereby certify that the attached CONFIDENTIAL ORDER was served upon, Thomas S. Fusco, Esq., Commission Investigative Attorney, and the following parties via first class mail and air mail where necessary on JUN I 2004
c
Marilyn R. d b o t t , Secretary U.S. International Trade Commission 500 E Street, S.W., Room 112A Washington, D.C. 20436
FOR COMPLAINANTS KIMBERLY-CLARK COW. AND SAFESKIN COW. :
Raymond A. Kurz, Esq. Lewis E. Leibowitz, Esq. Celine J. Crowson, Esq. HOGAN & HARTSON L.L.P. Columbia Square 555 Thirteenth Street, N.-w. Washington, D.C. 2004-1 109
FOR RESPONDENTS THE DELTA GROUP, DELTA HOSPITAL SUPPLY, INC., DELTA MEDICAL SUPPLY GROUP, INC. AND DELTA MEDICAL SYSTEMS, INC.:
Munford Page Hall, 11, Esq. Kevin B. Bedell, Esq. Victor S. Mi-oczka, Esq. DORSEY & WHITNEY LLP 100 1 Pennsylvania Ave., NW Suite 400 South Washington, D.C. 20004
CERTAIN PURPLE PROTECTIVE GLOVES INV. NO. 337-TA-500
Peter Nils Baylor, Esq. Thomas W. Aylesworth, Esq. Erik P. Bartenhagen, Esq. NUTTER, MCCLENNEN & FISH LLP World Trade Center West 155 Seaport Blvd. Boston, MA 02210-2604
FOR RESPONDENTS MEDTEXX PARTNERS AND LATEXX PARTNERS BERHAD:
V. James Adduci, 11, Esq. Louis S. Mastriani, Esq. Barbara A. Murphy, Esq. Rodney R. Sweetland, 111, Esq. ADDUCI, MASTNANI & SCHAUMBERG, LLP 1200 Seventeenth Street, N.W. Fifth Floor Washington, D.C. 20036
Leonard D. DuBoff, Esq. James C. Loy, Esq. THE DUBOFF LAW GXOUP, LLC 6655 S.W. E a ~ p t o n Street Suite 200 Portland, Oregon 97223
CERTAIN PURPLE PROTECTIVE GLOVES INV. NO. 337-TA-500
CERTIFICATE OF SERVICE
I, Marilyn R. Abbott, hereby certify that the attached ORDER was served upon, Thomas S. FUSCO, Esq., Commission Invest and air mail where necessary on
500 E Street, S.W., Room 112A Washington, D.C. 20436
FOR COMPLAINANTS KIMBERLY-CLARK CORP. AND SAFESKIN CORP. :
Raymond A. Kurz, Esq. Lewis E. Leibowitz, Esq. Celine J. Crowson, Esq. HOGAN & HARTSON L.L.P. Columbia Square 555 Thirteenth Street, N.W. Washington, D.C. 2004-1 109
FOR RESPONDENTS THE DELTA GROUP, DELTA HOSPITAL SUPPLY, INC., DELTA MEDICAL SUPPLY GROUP, INC. AND DELTA MEDICAL SYSTEMS, INC.:
Munford Page Hall, 11, Esq. Kevin B. Bedell, Esq. Victor S. Mroczka, Esq. DORSEY & WHITNEY LLP 100 1 Pennsylvania Ave., NW Suite 400 South Washington, D.C. 20004
CERTAIN PURPLE PROTECTIVE GLOVES INV. NO. 337-TA-500
Peter Nils Baylor, Esq. Thomas W. Aylesworth, Esq. Erik P. Bartenhagen, Esq. NUTTER, MCCLENNEN & FISH LLP World Trade Center West 155 Seaport Blvd. Boston, MA 022 10-2604
FOR RESPONDENTS MEDTEXX PARTNERS AND LATEXX PARTNERS BERHAD:
V. James Adduci, 11, Esq. Louis S. Mastriani, Esq. Barbara A. Murphy, Esq. Rodney R. Sweetland, 111, Esq. ADDUCI, MASTRIANI & SCHAUMBERG, LLP 1200 Seventeenth Street, N.W. Fifth Floor Washington, D.C. 20036
Leonard D. DuBoff, Esq. James C. Loy, Esq. THE DUBOFF LAW GROUP, LLC 6665 S.W. Hampton Street Suite 200 Portland, Oregon 97223
FOR RESPONDENT DASH MEDICAL GLOVES, INC. :
Eric C. Cohen, Esq. Kara E. F. Cenar, Esq. WELSH & KATZ, LTD. 120 South Riverside Plaza - 22nd Floor Chicago, Illinois 60606
CERTAIN PURPLE PROTECTIVE GLOVES
PUBLIC MAILING LIST
Sherry Robinson
8891 Gander Creek Drive Miamisburg, OH 45342
LEXIS - NEXIS
Ronnita Green West Group Suite 230 901 Fifteenth Street, N.W. Washington, D.C. 20005
INV. NO. 337-TA-500