complaint us afip
TRANSCRIPT
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND
)
UNITED STATES OF AMERICA, )
United States Attorneys Office )
36 South Charles Street )
Fourth Floor )
Baltimore, Maryland 21201 )
)
Plaintiff, )
)
v. ) Civil Action No. 09-2908
)AFIP LABORATORIES, INC., d/b/a AIPL, )
8403 Colesville Road, Suite 1600 )
Silver Spring, Maryland 20910 )
Montgomery County )
)
DAVID G. BOSTWICK, )
4724 Lake Calabay Drive )
Orlando, Florida 32837 )
)
and )
)EVAN R. FARMER, )
580 Mowbray Arch )
Norfolk, Virginia 23507 )
)
Defendants. )
)
COMPLAINT FOR TRADEMARK INFRINGEMENT,
UNFAIR COMPETITION, AND
FALSE AND MISLEADING REPRESENTATIONS OF FACT
Plaintiff United States of America (United States), for its Complaint against AFIP
Laboratories, Inc. (AFIP Laboratories), David G. Bostwick, and Evan R. Farmer avers as
follows:
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NATURE OF THIS ACTION
1. This is an action for injunctive relief, damages, costs, and attorneys fees for
violations by Defendants to intellectual property rights owned by the United States. These
violations consist of trademark infringement, unfair competition, and false or misleading
descriptions and representations of fact in commercial advertising.
2. The Defendants have engaged in trademark infringement of the registered
trademark Ask AFIP, in violation of the Trademark Act, 15 U.S.C. 1051-1127, through the
uses of the confusingly similar tradenames AFIP Laboratories and AIPL, and the uses of the
domain name afiplaboratories.com and telephone number 1-877-AFIPLAB through which
Defendants market and provide consultative pathology services.
3. The Defendants have engaged in unfair competition and false or misleading
representations and descriptions of fact in violation of the Trademark Act, 15 U.S.C. 1125(a),
by falsely creating the impression that their AFIP Laboratories is associated with, or endorsed by,
the United States and in particular the Armed Forces Institute of Pathology, an agency of the
United States. Defendants uses of the tradenames AFIP Laboratories and AIPL which are
substantially similar to Armed Forces Institute of Pathology and AFIP, the name and
acronym continuously used by the United States since 1949 in connection with its pathology and
radiology laboratory. Defendants advertisement and press releases promoting their pathology
services repeatedly references AFIP and the Armed Forces Institute of Pathology, and states
characteristics relevant to the Institute, and not to Defendants services.
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4. For the foregoing reasons, the United States seeks, inter alia, damages, costs and
attorneys fees, impounding and disposition of infringing materials and means of infringement,
and to preliminarily and permanently enjoin the Defendants jointly and severally from
developing, promoting, distributing, providing, and selling pathology services in violation of
Plaintiffs rights under federal law.
THE PARTIES
5. The Armed Forces Institute of Pathology (the Institute) is an agency of the
United States Department of Defense with its headquarters in the District of Columbia. The
Institute is responsible for providing consultation, education, and research in the areas of
pathology and radiology.
6. Defendant AFIP Laboratories is a Maryland corporation engaged in providing
diagnostic consultative anatomic pathology services. AFIP Laboratories principal place of
business is located in Silver Spring, Maryland.
7. Upon information and belief, Defendant David G. Bostwick resides at 4724 Lake
Calabay Drive, Orlando, Florida. David G. Bostwick has been identified as the initial founder,
the initial director, and a principal of AFIP Laboratories.
8. Upon information and belief, Defendant David G. Bostwick is responsible for
governing the affairs and activities of AFIP Laboratories and is legally responsible for the
conduct of AFIP Laboratories.
9. Upon information and belief, Defendant Evan R. Farmer is a resident of the State
of Virginia. Defendant Evan R. Farmer has been identified as the Director of AFIP Laboratories.
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10. Upon information and belief, defendant Evan R. Farmer is responsible for
governing the affairs and activities of AFIP Laboratories and is legally responsible for the
conduct of AFIP Laboratories.
JURISDICTION AND VENUE
11. This Court has federal question and/or original subject matter jurisdiction over
this action pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1331, 1338 and 1345.
12. Personal jurisdiction exists over Defendant AFIP Laboratories because it resides
in Maryland; conducts business, sells, and advertises its products in Maryland; and has caused
injury to Plaintiff in Maryland. Md. Cts. & Jud. Proc. Code Ann. 6-103(b)(1).
13. Personal jurisdiction exists over Defendant David G. Bostwick because he is the
initial founder, the initial director, and a principal of Defendant AFIP Laboratories which resides
in Maryland; conducts business, sells, and advertises its products in Maryland; and has caused
injury to Plaintiff in Maryland. Md. Cts. & Jud. Proc. Code Ann. 6-103(b)(1).
14. Personal jurisdiction exists over Defendant Evan R. Farmer because he is the
director and a principal of Defendant AFIP Laboratories which resides in Maryland; conducts
business, sells, and advertises its products in Maryland; and has caused injury to Plaintiff in
Maryland. Md. Cts. & Jud. Proc. Code Ann. 6-103(b)(1).
15. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b)-(c) and
1400(a).
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STATEMENT OF FACTS
16. On February 6, 2007, the Department of Defenses (the DOD) trademark Ask
AFIP (DODs Registered Trademark) was duly registered on the Principal Register of the
United States Patent and Trademark Office under Registration No. 3,206,308. The DODs
Registered Trademark is valid and in full force and effect. A true and correct copy of the DODs
Registered Trademark has been attached to this Complaint as Exhibit 1.
17. For more than 55 years, the Institute has continuously and widely used its name
Armed Forces Institute of Pathology and its acronym AFIP (collectively, Institutes Marks)
to identify the Institute as the source of pathology diagnostic consultations, education, and
research. The Institute has used the Institutes Marks in providing hundreds of thousands of
surgical and autopsy consultation for pathologists in the military, the Department of Veterans
Affairs, and the civilian population. Since 1976, the medical and scientific staff at the Institute,
using the Institutes Marks, have published over 11,000 journal articles in a multitude of medical
publications. Further, over the past 60 years, the Institutes staff has given approximately 2,000
lectures and presentations at professional meetings and conferences throughout the world. The
Institute was original founded in 1862 as the Army Medical Museum and has been carrying out
the same mission for the last 147 years.
18. Each year, the Institute, using the Institutes Marks, publishes an in-depth annual
report which catalogues the accomplishments of each of the Institutes departments. The report
is distributed to over 2,000 members of the medical and scientific community worldwide. The
Institute also publishes a quarterly newsletter, entitled the AFIP Letter, with circulation of
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15,000, to provide timely information on policies, activities, and programs relevant to the
military and civilian pathology community.
19. On September 15, 2005, President George W. Bush sent to Congress a report
containing the recommendations from the Defense Base Closure and Realignment Commission
(BRAC), including the recommendation to disestablish the Institute by September 15, 2011.
20. In 2008, prior to the disestablishment of the Institute, Congress passed the
National Defense Authorization Act establishing a Joint Pathology Center to assume many of the
Institutes responsibilities in consultation, education, and research, as well as the modernization
of the Institutes tissue repository. Congress further mandated that the Institute remain
operational under the name Armed Forces Institute of Pathology at least until the DOD creates a
Joint Pathology Center. National Defense Authorization Act of 2008, Public L. No. 110-181,
Sec. 722.
21. The Institute, under the name Armed Forces Institute of Pathology and the
acronym AFIP, is currently operational and fulfilling its Congressionally mandated duties. The
Institute plans to remain operational throughout and after the transition into the Joint Pathology
Center.
22. On or around July 29, 2009, the DOD received information that Defendant David
G. Bostwick, as founder, initial director, and principal, had created Defendant AFIP Laboratories
and was engaged in the business of advertising and providing diagnostic anatomic pathology
services under the name AFIP Laboratories.
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23. On or around August 7, 2009, the DOD received information that Defendant Evan
R. Farmer had been named director of AFIP Laboratories.
24. On August 3, 2009, the DOD sent the first of two cease and desist letters. The
first letter was sent to Defendant David G. Bostwick. The second letter, sent on August 4, 2009,
was mailed to Defendant AFIP Laboratories.
25. On August 13, 2009, in response to the two cease and desist letters, counsel for
Defendant AFIP Laboratories e-mailed that by 5 p.m. of that day AFIP Laboratories will cease
all use in commerce of the AFIP mark, including the AFIP LABORATORIES mark, and will
disable its website located at the afiplaboratories.com URL.
26. Upon information and belief, at approximately 9 a.m. on the morning of August
14, 2009, Defendants domain name www.afiplaboratories.com was still operational and
displaying the name AFIP Laboratories and the phone number 1.877.AFIPLAB on the website
home page. Further, the phone number was answered automatically with a machine stating that
the caller had reached AFIP Laboratories.
27. Upon information and belief, at approximately 10 a.m. on the morning of
August 14, 2009, Defendants domain name www.afiplaboratories.com was operational, but
redirected users to www.aiplaboratories.com, which displayed the name AIPL at the top of the
home page as well the phone number 1.877.234.7522. Appearing near the top of Defendants
website home page, read the words American International Pathology Laboratories. Further,
the phone number was answered automatically with a machine stating that the caller had reached
AIP Laboratories.
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Defendants Actions Prior to 10 a.m. on August 14, 2009
28. On or around July 29, 2009, the DOD learned that Defendants had created a one-
page advertisement (Advertisement or Defendants Advertisement) to promote their
pathology services. Defendants placed the Advertisement in at least one medical journal. The
Advertisement used the name AFIP Laboratories and referenced the Armed Forces Institute of
Pathology furthering Defendants efforts to confuse consumers as to the source of their services.
29. Defendants Advertisement provided readers with contact information for AFIP
Laboratories through a provided website domain name and phone number. The domain name of
Defendants website provided in the Defendants Advertisement was www.afiplaboratories.com
and the provided phone number was 1.877.AFIPLAB.
30. Defendants Advertisement included at the top of the page the name, AFIP
Laboratories, and just below the name, the statement Heritage of Excellence. Near the bottom
of the Advertisement, a bullet point read, 150 Years of Experience, and in the text below the
bullet point appeared the statement, AFIP Laboratories is a premium provider of diagnostic
consultative anatomic pathology services, made up of many former civilian pathologists and staff
of the Armed Forces Institute of Pathology. Building on that organizations 150-year history,
AFIP Laboratories will continue the Institutes tradition of excellence and expertise . . . .
31. As of 10 a.m. on August 14, 2009, Defendants website home page was accessed
through the domain name www.afiplaboratories.com. The home page provided readers with
contact information for AFIP Laboratories through the phone number 1.877.AFIPLAB.
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32. As of 10 a.m. on August 14, 2009, Defendants website home page included at the
top of the page the name, AFIP Laboratories, and just below the name, the statement Heritage
of Excellence. A statement near the middle of the page read in part: AFIP Laboratories
proudly announces its formation and the appointment of Dr. Evan Farmer, M.D. as Director.
AFIP Laboratories will be led by former civilian pathologists, radiologists and professional staff
of the Armed Forces Institute of Pathology, who will continue to provide premium anatomic
pathology services for the government, physicians and patients, with emphasis on all anatomic
pathology specimens and related services.
Defendants Actions After 10 a.m. on August 14, 2009
33. On August 14, 2009 at approximately 10 a.m., Defendants changed the name of
their laboratory from AFIP Laboratories to AIPL, which Defendants state stands for
American International Pathology Laboratories.
34. As of August 18, 2009, Defendants website home page included a link to a press
release (Press Release) with the headline AFIP Laboratories Fills Critical Void Left by
Scheduled Closure of Walter Reed Army Medical Center. The Press Release repeatedly uses
the name AFIP Laboratories, further describes the Institute as soon-to-be-closed, and states,
AFIP Laboratories will continue the Institutes mission of providing pathology services to
government, physicians and patients . . . . A line of text at the top of the Press Release provided
that the Press Release occurred prior to the name change from AFIP Laboratories to AIPL.
35. As of August 21, 2009, Defendants website home page continued to be
accessible through both the domain name www.aiplaboratories.com and the domain name
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www.afiplaboratories.com, which redirects users to www.aiplaboratories.com. Defendants
website home page provided readers with contact information for AIPL through the phone
number 1.877.234.7522.
36. On September 8, 2009, Defendants issued a second press release (Second Press
Release) titled AIPL Opens Doors to World-Class Facility. The Second Press Release stated
that [t]he 150-year-old Institute will cease operations when Walter Reed closes under the
Federal Base Realignment and Closure Program and that under Defendant Farmers direction,
AIPL will continue the Institutes mission of providing premium anatomic pathology services to
governments, scientists, physicians and patients . . . .
37. As of October 4, 2009, Defendants website home page included the following
statement: In 2005, as part of the Base Realignment and Closure (BRAC) Program, the
Department of Defense decided to close the Armed Forces Institute of Pathology (AFIP). As the
deadline for closure is drawing near a group of AFIP pathologists have formed a new
organization - American Pathology Laboratories (AIPL) - aimed at continuing the AFIP tradition
of the highest quality consultation, education and research in anatomic pathology.
38. Defendants website home page continues to include the name, AIPL, near the
top of the page. Immediately below the name appears the statement, Heritage of Excellence,
and just below that statement, reads the phrase, American International Pathology
Laboratories.
39. Defendants activities are likely to confuse consumers or deceive them into
believing that Defendants pathology services are products of the Plaintiff or that Defendant
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and/or its services are endorsed or associated with the Plaintiff. Based upon information and
belief, an unlawful purpose of Defendants activities is to obtain the benefit of the valuable
goodwill and reputation associated with the Institutes Marks.
FIRST CLAIM FOR RELIEF
(Trademark Infringement)
40. Defendants uses of the names AFIP Laboratories and AIPL as trademarks,
Defendants uses of the phone number 1.877.AFIPLAB, and Defendants uses of
www.afiplaboratories.com as a domain name on the internet and in advertising are likely to and
have caused actual confusion, mistake, and deception as to the source, sponsorship, or affiliation
of Defendants services in violation of the Trademark Act, 15 U.S.C. 1114.
41. Defendants statements contained in the Press Release and the Second Press
Release are likely to and have caused actual confusion, mistake, and deception as to the source,
sponsorship, or affiliation of Defendants services in violation of the Trademark Act, 15 U.S.C.
1114.
42. AFIP Laboratories is not affiliated with the Institute, an agency of the DOD (and
thereby the United States), which owns the DODs Registered Trademark.
43. Both Defendants and the Institute provide pathology consultation services under
their respective tradenames.
44. The name AFIP Laboratories, the name AIPL, the website domain name
www.afiplaboratories.com, and phone number 1.877.AFIPLAB closely resemble the DODs
Registered Trademark.
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45. Defendants activities have caused the DOD to sustain damage to its business, and
to the value of the DODs Registered Trademark and the goodwill associated with the DODs
Registered Trademark.
SECOND CLAIM FOR RELIEF
(False Designation of Origin)
46. Defendants uses of the names AFIP Laboratories and AIPL, the website
domain name www.afiplaboratories.com, and the phone number 1.877.AFIPLAB constitute false
designations of origin in violation of the Trademark Act, 15 U.S.C. 1125(a).
47. For over 50 years, the Institute has continuously used in commerce the name
Armed Forces Institute of Pathology and the acronym AFIP in connection with the Institutes
services.
48. The name Armed Forces Institute of Pathology and the acronym AFIP act to
designate the source of origin for the Institutes services.
49. The Department of Defense owns common law trademark rights in the name
Armed Forces Institute of Pathology and the acronym AFIP for use in connection with its
services.
50. The name AFIP Laboratories used in connection with providing pathology
services is confusingly similar to the Institutes trademarks - Armed Forces Institute of
Pathology and AFIP - and is likely to cause, and already has caused, confusion, mistake, or
deception as to the origin of Defendants services.
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51. The name AIPL used in connection with providing pathology services is
confusingly similar to the Institutes trademarks - Armed Forces Institute of Pathology and
AFIP - and is likely to cause, and already has caused, confusion, mistake, or deception as to the
origin of Defendants services.
52. The website domain name, www.afiplaboratories.com, used to promote Defendant
AFIP Laboratories pathology services, is confusingly similar to the Institutes Marks and is likely
to cause, and already has caused, confusion, mistake, or deception as to the origin of Defendants
services.
53. The phone number, 1.877.AFIPLAB, used as a means to contact Defendant AFIP
Laboratories to avail oneself of its pathology services, is likely to cause, and already has caused,
confusion, mistake, or deception as to the origin of Defendants services.
54. In promoting their pathology services, Defendants Advertisement, Press Release,
Second Press Release, and statements appearing on their website individually and collectively
constitute false designation of origin in violation of the Trademark Act, 15 U.S.C. 1125(a).
55. Defendants Advertisement includes the name AFIP Laboratories, the website
domain name www.afiplaboratories.com, and the phone number 1.877.AFIPLAB which
individually and collectively are confusingly similar to the Institutes Marks and are likely to
cause, and already have caused, confusion, mistake, or deception as to the origin of Defendants
services.
56. Defendants Advertisement includes in the header the statement Heritage of
Excellence, near the bottom of the page a bullet point reading 150 Years of Experience, and
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in the text below the bullet point the statement, [b]uilding on that organizations [the Institutes]
150-year history, AFIP Laboratories will continue the Institutes tradition of excellence and
expertise, . . . .
57. The name AFIP Laboratories repeatedly appears in Defendants Press Release
and is confusingly similar to the Institutes Marks and is likely to cause, and already has caused,
confusion, mistake, or deception as to the origin of Defendants services.
58. Defendants Press Release is titled, AFIP Laboratories Fills Critical Void Left by
Scheduled Closure of Walter Reed Army Medical Center, describes the Institute as soon-to-be-
closed, and states, AFIP Laboratories will continue the Institutes mission of providing
pathology services to government, physicians and patients . . . .
59. Defendants Second Press Release stated that [t]he 150-year-old Institute will
cease operations when Walter Reed closes under the Federal Base Realignment and Closure
Program and that under Defendant Farmers direction, AIPL will continue the Institutes
mission of providing premium anatomic pathology services to governments, scientists,
physicians and patients . . . .
60. Defendants website stated that the Department of Defense decided to close the
Armed Forces Institute of Pathology (AFIP), and that AIPL is aimed at continuing the AFIP
tradition of the highest quality consultation, education and research in anatomic pathology.
61. Through the statements set forth in paragraphs 55 to 60, Defendants create a false
suggestion of association with the Institute that is likely to cause, and already has caused,
confusion, mistake, or deception as to the origin of Defendants services.
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THIRD CLAIM FOR RELIEF
(Unfair Competition)
62. Defendants uses of the names AFIP Laboratories and AIPL, the website
domain name www.afiplaboratories.com, and the phone number 1.877.AFIPLAB constitute
unfair competition in violation of the Trademark Act, 15 U.S.C. 1125(a).
63. The name AFIP Laboratories used in connection with providing pathology
services is confusingly similar to the Institutes Marks and is likely to cause, and already has
caused, confusion, mistake, or deception as to affiliation, connection, or association of Defendant
AFIP Laboratories with the Institute.
64. The website domain name, www.afiplaboratories.com, used to promote Defendant
AFIP Laboratories pathology services, is confusingly similar to the Institutes Marks and is likely
to cause, and already has caused, confusion, mistake, or deception as to affiliation, connection, or
association of Defendant AFIP Laboratories with the Institute.
65. The phone number, 1.877.AFIPLAB, used as a means to contact Defendant AFIP
Laboratories to avail oneself of their pathology services, is likely to cause, and already has
caused, confusion, mistake, or deception as to affiliation, connection, or association of Defendant
AFIP Laboratories with the Institute.
66. In promoting their pathology services, Defendants Advertisement, Press Release,
Second Press Release, and statements appearing on their website individually and collectively
constitute false designation of origin in violation of the Trademark Act, 15 U.S.C. 1125(a).
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67. Defendants Advertisement includes the name AFIP Laboratories, the website
domain name www.afiplaboratories.com, and the phone number 1.877.AFIPLAB which
individually and collectively are confusingly similar to the Institutes Marks and are likely to
cause, and already have caused, confusion, mistake, or deception as to the origin of Defendants
services.
68. Defendants Advertisement includes in the header the statement Heritage of
Excellence, near the bottom of the page a bullet point reading 150 Years of Experience, and
in the text below the bullet point the statement, [b]uilding on that organizations [the Institutes]
150-year history, AFIP Laboratories will continue the Institutes tradition of excellence and
expertise, . . . .
69. The name AFIP Laboratories repeatedly appears in Defendants Press Release
and is confusingly similar to the Institutes Marks and is likely to cause, and already has caused,
confusion, mistake, or deception as to the origin of Defendants services.
70. Defendants Press Release is titled, AFIP Laboratories Fills Critical Void Left by
Scheduled Closure of Walter Reed Army Medical Center, describes the Institute as soon-to-be-
closed, and states, AFIP Laboratories will continue the Institutes mission of providing
pathology services to government, physicians and patients . . . .
71. Defendants Second Press Release stated that [t]he 150-year-old Institute will
cease operations when Walter Reed closes under the Federal Base Realignment and Closure
Program and that under Defendant Farmers direction, AIPL will continue the Institutes
mission of providing premium anatomic pathology services to governments, scientists,
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physicians and patients . . . .
72. Defendants website stated that the Department of Defense decided to close the
Armed Forces Institute of Pathology (AFIP), and that AIPL is aimed at continuing the AFIP
tradition of the highest quality consultation, education and research in anatomic pathology.
73. Through the statements set forth in paragraphs 67 to 72, Defendants create a false
suggestion of association with the Institute that is likely to cause, and already has caused,
confusion, mistake, or deception as to the origin of Defendants services.
FOURTH CLAIM FOR RELIEF
(False or Misleading Descriptions and Representations of Fact)
74. Defendants Advertisement promoting Defendant AFIP Laboratories and their
pathology services contained false or misleading descriptions of fact and false or misleading
representations of fact in violation of the Trademark Act, 15 U.S.C. 1125(a).
75. Defendants Advertisement includes in the header the statement Heritage of
Excellence, near the bottom of the page a bullet point reading 150 Years of Experience, and
in the text below the bullet point the statement, [b]uilding on that organizations [the Institutes]
150-year history, AFIP Laboratories will continue the Institutes tradition of excellence and
expertise . . . .
76. Through the statements set forth in paragraph 75, Defendants misrepresent their
affiliation with the Institute by falsely implying that the Defendant AFIP Laboratories is affiliated
with or the successor to the Institute, when in fact no such association exists.
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77. Defendants Press Release, Second Press Release, and statements on their website
promoting Defendant AFIP Laboratories and their pathology services contained false or
misleading descriptions of fact and false or misleading representations of fact in violation of the
Trademark Act, 15 U.S.C. 1125(a).
78. Defendants Press Release is titled, AFIP Laboratories Fills Critical Void Left by
Scheduled Closure of Walter Reed Army Medical Center, describes the Institute as soon-to-be-
closed, and states, AFIP Laboratories will continue the Institutes mission of providing
pathology services to government, physicians and patients . . . .
79. Defendants Second Press Release stated that [t]he 150-year-old Institute will
cease operations when Walter Reed closes under the Federal Base Realignment and Closure
Program and that under Defendant Farmers direction, AIPL will continue the Institutes
mission of providing premium anatomic pathology services to governments, scientists,
physicians and patients . . . .
80. Defendants website stated that the Department of Defense decided to close the
Armed Forces Institute of Pathology (AFIP), and that AIPL is aimed at continuing the AFIP
tradition of the highest quality consultation, education and research in anatomic pathology.
81. Through the statements set forth in paragraphs 78 to 80, Defendants misrepresent
their affiliation with the Institute by falsely implying that the Institute will be imminently closing
and that Defendant AFIP Laboratories is the successor to the Institute, when in fact the Institute
remains operational and no such association exists.
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82. Defendants uses of the confusingly similar names AFIP Laboratories and
AIPL, the website domain name www.afiplaboratories.com, and the phone number
1.877.AFIPLAB individually and collectively mislead the relevant consumers as to the
affiliation, connection, or association of Defendant AFIP Laboratories with the Institute in
violation of the Trademark Act, 15 U.S.C.
1125(a).
83. Defendants conduct and acts have caused or are likely to cause damage to the
Plaintiff in that such acts have deceived the relevant consumers about the nature, quality, and
source of Defendants goods and products and have caused harm to the Plaintiffs reputation and
to the reputation and perceived quality of Plaintiffs products. Such damage has caused
irreparable injury to Plaintiff and unless preliminary and permanently enjoined, will continue to
cause irreparable injury and damage to the Plaintiff for which there is no adequate remedy at
law.
FIFTH CLAIM FOR RELIEF
(Wrongful Registration of Domain Name)
84. Defendants registration of the domain name, www.afiplaboratories.com, was in
bad faith with the intent to profit from the good will associated with the Institutes name and
acronym in violation of the Trademark Act, 15 U.S.C. 1125(d).
85. Upon information and belief, since February of 1998, the Institute has used the
domain name, www.afip.org, to provide information regarding its services.
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86. For over 55 years, the Institute has continuously used in commerce the name
Armed Forces Institute of Pathology and the acronym AFIP in connection with the Institutes
services.
87. The domain name, www.afiplaboratories.com, is confusingly similar to the
Institutes domain name, www.afip.org, as well as the Institutes name and acronym.
88. Defendants had bad faith intent to profit by including their domain name on
Defendants Advertisement which attempts to create a false suggestion of association between
Defendants and the Institute.
89. Defendants had bad faith intent to profit by creating a website at the domain
name, www.afiplaboratories.com, which included a confusingly similar tradename and phone
number, as well as a links to a misleading and false press release.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays for:
1. A preliminary and permanent injunction:
(a) Restraining AFIP Laboratories, Inc., its officers, agents, directors,
employees, servants, partners, shareholders, and all persons in active concert or
participation with them, including David G. Bostwick and Evan R. Farmer, from using
the tradename AFIP Laboratories, the domain name afiplaboratories.com, the phone
number 1.877.AFIPLAB, the acronym AFIP, the name Armed Forces Institute of
Pathology or any other indicia of the Armed Forces Institute of Pathology or any other
indicia of Government affiliation in any manner likely to cause confusion, or to cause
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mistake, or to deceive, or from otherwise representing to the public in any way that the
Defendants or any product produced or service provided by them is in any way sponsored,
endorsed, approved, authorized by, or affiliated or connected with, the United States of
America, the United States Department of Defense, the Armed Forces Institute of
Pathology, the United States Government or any product or service thereof.
(b) directing AFIP Laboratories and its officers, agents, employees, servants,
partners, shareholders, and all persons in active concert or participation with them:
(1) to collect and surrender up to counsel for the Plaintiff all works,
products, packaging, and advertising and any derivative works of the same
containing the trademark Armed Forces Institute of Pathology, AFIP, or any
other indicia of any Armed Forces Institute of Pathology trademark, tradename or
any other indicia of Government affiliation;
(2) to transfer the registration for the domain name
www.afiplaboratories.com to the Plaintiff, as represented by the Secretary of the
Army;
(3) to place the following disclaimer, in 12-point font, or font
commensurate with the largest font used on the website or materials, on all uses of
the marks AIPL or AIP Laboratories: AIP Laboratories is a private
corporation and is not sponsored, endorsed, or affiliated in any way with the
Armed Forces Institute of Pathology;
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(4) from using in any way any mark, indicia, designation or name
similar to the Armed Forces Institute of Pathology or AFIP as to be in any manner
likely to cause confusion, or to cause mistake, or to deceive;
(5) from representing to the public in any way that the Defendants or
any product produced by them is in any way sponsored, endorsed, approved,
authorized by, affiliated or connected in any way with, the United States of
America, the United States Department of Defense, the Armed Forces Institute of
Pathology, or any government entity or any product or service thereof; and
(6) from making false or misleading statements to the public regarding
the Armed Forces Institute of Pathology.
2. An award against AFIP Laboratories, David G. Bostwick, and Evan R. Farmer of
all forms of monetary relief authorized by Section 1117 of the Trademark Act, including but not
limited to (1) a sum to be spent on corrective advertising and other expenses required to
overcome the confusion which has been created by the Defendants infringement and other
unlawful acts; (2) a sum measured by Plaintiffs actual damages or by the amount of profits
earned by the Defendants, whichever is greater; or where an intentional infringement is found by
the Court, three times the amount of the Defendants profits attributable to the Defendants
infringement or three times the Plaintiffs actual damages, whichever is greater; and (3) the costs
of this action along with reasonable attorney fees and interest, as applicable, and for each, in an
amount to be determined at trial.
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3. An awardof compensatory damages against Defendants and each of them.4. An accounting and disgorgement of each and all of the Defendants' profits
derived as a result of its wrongful acts or such other amount as the court shall find to be justaccording to the circumstances of the case.
5. Any other and/or further reliefas this Court may deem just, fairand equitable.Respectfully submitted,ROD J. ROSENSTEDSfUnited States Attorney
By: Michael P.GradyAssistantUnited States AttorneyBar No. 28845United States Attorney's Office3 6 S ou th Charles StreetFour th FloorBaltimore, Maryland 21201-2692Telephone: (410) 209-4800Facsimile: (410) [email protected]
O f Counsel: TONY WE STAssistant Attorney GeneralSTEVEN O. FORTNEYTrial AttorneyCommercial Litigation BranchCiv il Div is ionDepartment of JusticeWashington, DC 20530Telephone: (202) 307-0343Facsimile: (202) 307-0343Steven.O.Fortney@usdoj .govAttorneys for PlaintiffUnited States
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