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.

C.

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d.

e.

f.

g-

li.

1.

k.

“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).

EEDACTED]

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. ’ 2. Represen rations and Warranties.

a. Delta and K-C/Safeskin each represent and warrant to each other that:

I.

.. 11.

... 111.

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.

[REDACTED]

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[REDACTED]

I. ..

[REDACTED]

6

[REDACTED]

7

[REDACTED]

8

WEDACTED1

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[REDACTED]

] 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.”

BEDACTED1

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[REDACTED]

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:

37

I. .. .... ..,

EXHIBIT A

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.. ., .. ., L .

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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


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


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


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


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


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,


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


Its

7


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.


In the Matter of


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


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.


In the Matter of


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


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:


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.


In the Matter of


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


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


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


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


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


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

in the matter of certain purple protective inv. no. 337-ta...

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