ESTTA Tracking number: ESTTA703059 10/19/2015 IN THE...

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA703059Filing date: 10/19/2015

IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92061913

Party DefendantLovesurf Inc.

CorrespondenceAddress

KUSCHA HATAMIHP LEGAL GROUPPO BOX 644CUPERTINO, CA 95015UNITED [email protected]

Submission Motion to Suspend for Civil Action

Filer's Name Kuscha Hatami

Filer's e-mail [email protected], [email protected], [email protected]

Signature /Kuscha Hatami/

Date 10/19/2015

Attachments Love Surf Love Suspension.pdf(1082588 bytes )

http://estta.uspto.gov

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of Trademark Registration No. 2974608

)

Gine Champion-Cain, )

Petitioner, vs.

) ) ) )

Lovesurf Inc., ) Registrant. ) )

MOTION TO SUSPEND PENDING TERMINATION OF RELATED FEDERAL TRADEMARK LITIGATION

Registrant, Lovesurf, Inc., hereby moves, pursuant to 37 C.F.R. 2.117(a) & (c)

(“Rule 2.117”) and Trademark Trial and Appeal Board Manual of Procedure (“TBMP”)

§ 510.02, to suspend Cancellation proceeding No. 92061913 (the “Cancellation”)

pending the outcome of the related federal district court trademark litigation between

Petitioner Gina Champion-Cain (“Petitioner” or “Cain”) and Registrant Lovesurf, Inc.

(“Registrant” or “Lovesurf”) Gina Champion-Cain, Luv Surf LP; ANI Commercia CA I, LLC

and ANI Commercial CA II, LP v. Brian MacDonald and LOVESURF, Inc., No. 14-cv-2540-

GPC-BLM (S.D. Cal. Filed October 23, 2014 (the “Civil Action”). Because the Civil

Action has a direct bearing on the Cancellation Proceeding, a suspension of the

Cancellation Proceeding pending termination of the Civil Action is warranted.

Cancellation No. 92061913

Mark: Love Surf Love Cancellation No. 92061913

2

ARGUMENT

I. INTRODUCTION

Pursuant to Rule 2.117 and TBMP § 510.02, the Trademark Trials and Appeal

Board (“TTAB” or “Board”) may suspend a proceeding when one or more of the parties

is engaged in civil litigation that may have a bearing on the Board proceeding. In the

Cancellation, Petitioner seeks to cancel Registrant’s mark. The Cancellation is based, inter

alia, on Petitioner’s claims that Registrant has abandoned the mark. Petitioner makes this

claim because Registrant’s mark has blocked registration of Petitioner’s marks for a

likelihood of confusion. Specifically, Petitioner alleges in her Petition that, “Based on

likelihood of confusion, the ‘608 Registration has been cited as a bar to registration of

Petitioner’s ‘220 Application by the USPTO. The Examiner has stated that Registrant’s

mark is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,

connection or association of Registrant with Petitioner, or as to the origin, sponsorship, or

approval of Registrant’s goods or commercial activities with or by Petitioner. “See

Cancellation ¶ 5.

Registrant disputes these claims on numerous bases, including that Registrant has

a valid mark and priority of use in its mark; and that Petitioner lacks standing, is barred

by the doctrine of unclean hands, has no basis in law, fact or equity to cancel Registrant’s

mark, and that Petitioner has not and will not be damaged. See Registrant’s Answer to

the Petition for Cancellation submitted August 18, 2015 (the “Cancellation Answer”).

In the Civil Action, the central issue is whether Registrant’s LOVESURF heart

logo mark, LOVESURF word mark, and ownership of www.lovesurf.com are used in a


3

confusingly similar manner to Petitioner’s LUV SAN DIEGO SURF logo mark, LUF

SURF word mark, and HEART SURF logo mark, such that Registrant’s use of its marks

constitutes trademark infringement of Petitioner’s mark. This case will focus on the

nature and extent of Registrant’s rights in and to its respective marks, its uses of those

marks, and validity of its marks, including the at issue LOVE SURF LOVE mark by

virtue of its near identical nature to Petitioner’s disputed marks in the Civil Action.

Because the Civil Action may determine the issue of rights in the parties’

respective marks including valid rights, continuous use, priority, and whether there is a

finding of likelihood of confusion, in addition to others, and the Board will be bound by

the district court’s decision on those issues, the Board should suspend the Consolidated

Opposition Proceedings pending the outcome of the Civil Action.

II. THE BOARD SHOULD SUSPEND THE INSTANT OPPOSITION PROCEEDINGS UNTIL THE CIVIL ACTION DETERMINES THE SUBSTANTIVE ISSUES PRESENTLY BEFORE THE BOARD

The Board’s policy, as embodied in Rule 2.117(a) and explained in TBMP §

510.02(a), is to suspend proceedings “whenever” there is a federal district court action

involving one or more parties to a TTAB proceeding that may have a bearing on the

Board case. As the TBMP makes clear, “To the extent that a civil action in a federal

district court involves issues in common with those in a proceeding before the Board, the

decision of the federal district court is often binding upon the Board, while the decision of

the Board is not binding upon the court.” TBMP § 510.02(a). Demonstrating the Board’s

deference to federal district court proceedings, TBMP § 510.02(a) continues, “Ordinarily,

the Board will suspend proceedings in the case before it if the final determination of the


4

other proceeding will have a bearing on the issues before the Board” (emphasis added).

Indeed, “Suspension of a Board case is appropriate even if the civil case may not be

dispositive of the Board case, so long as the ruling will have a bearing on the rights of the

parties in the Board case.” Soc. Mex. Am. Eng’rs. & Scientists v. GVR Pub. Relations

Agency, Inc., 2002 TTAB LEXIS 697 at *10 (TTAB 2002) (internal citations omitted).

A. The Board Should Defer To The Civil Action Because The Civil Action Will Determine Issues Before The Board

The Board should suspend the proceedings here because the resolution of the Civil

Action may be dispositive of issues before the Board in the Consolidated Opposition

Proceedings. See Argo & Co. v. Carpetsheen Manufacturing, Inc., 187 USPQ 366, 367 (TTAB

1995) (suspension granted because state court litigation which would decide applicant’s

ownership of mark “may have a bearing on the question of applicant’s right of

registration”); Whopper-Burger, Inc. v. Burger King, Inc., 171 USPQ 805, 807 (TTAB 1971)

(suspension granted where complaint sought to enjoin defendant from using mark and

requested cancellation of the mark). Here, there is identity of parties involved in both the

Consolidated Opposition Proceedings and the Civil Action, and the Civil Action may

dispose of issues before the Board.

Additionally, resolution of the Civil Action would also decide issues not before the

Board: the Civil Action involves Petitioner’s claims that Registrant is affirmatively

infringing Petitioner’s trademark rights in violation of 15 U.S.C.A. § 1125 et seq. Petitioner

also seeks preliminary and permanent injunctive relief, actual damages, general and

special damages, declaratory relief, attorney’s fees and costs, and punitive damages for


5

those offenses. The Cancellation cannot dispose of all the issues before the district court,

but the district court can dispose of the issues involved in the Cancellation.

B. Suspension Of The Instant Consolidated Opposition Proceedings Would Promote Judicial Economy

Recognizing the need for judicial economy, the Board found it proper to suspend

the proceedings in GVR because it would avoid duplicating the effort of the Court and

the possibility of reaching an inconsistent conclusion. See GVR, 2002 TTAB LEXIS 697 at

*11-12. The same conclusion should be reached here. If both proceedings move forward

simultaneously, two separate forums would face the expense and effort of dealing with

issues that could be better resolved in one forum—the district court—because of its more

comprehensive jurisdiction to consider all of the issues.

III. CONCLUSION

The interests of judicial economy and judicial consistency require that the Board

suspend the Cancellation until termination of the Civil Action. Accordingly, Registrant

respectfully requests that the Board enter an order suspending Cancellation No.

92061913 pending a final judgment in the Civil Action.

Dated: October 19, 2015 By: /Kuscha Hatami/ Kuscha Hatami HP Law Group PO Box 644 Cupertino, CA. 95015


6

CERTIFICATE OF SERVICE

I hereby certify that a true and complete copy of Registrant’s answer to:

MOTION TO SUSPEND PENDING TERMINATION OF

RELATED FEDERAL TRADEMARK LITIGATION

is being served by mailing a copy thereof, postage prepaid, by United States Postal Service

addressed to the following individual(s), identified in the Petition for Cancellation as the

attorney(s) of record and correspondent(s) on this 19th day of October 2015:

Charles Reidelbach Jr.

Higgs Fletcher & Mack LLP

401 West A Street, Suite 2600

San Diego, CA. 92101

Attorneys for Petitioner

Kuscha Hatami, Esq.

PO Box 644

Cupertino, CA. 95015

Tel. 858.342.9621

[email protected]

EXHIBIT A

Case 3:14-cv-02540-GPC-BLM Document 1 Filed 10/23/14 Page 1 of 13

1 STEVEN J. COLOGNE, ESQ.(Bar No. 118534?2 scCazrahs.wErD.EcLornBACH JR., ESQ.

3 (Bar No.167482)reidelbachghi.ggslaw.com

4 CHRISTINA G. BOBB, ESQ.(Bar No. 259430)

5 [email protected] FLETCHER & MACK LLP

6 401 West "A" Street, Suite 2600San Diego, CA 92101-7913

7 TEL: 619.236.1551FAX: 619.696.1410

8

Attorneys for Plaintiffs9 GINA CHAMPION-CAIN, an individual;

LUV SURF, LP, a California limited10 partnership; ANI COMMERCIAL CA I,

LLC, a California limited liability company;11 and ANI COMMERCIAL CA II, LP, a

California limited partnership12

13 UNITED STATES DISTRICT COURT

14 SOUTHERN DISTRICT OF CALIFORNIA

15 GINA CHAMPION-CAIN, an CASE NO. 14CV2540 GPC BLMindividual; LUV SURF, LP, a

16 California limited partnership; ANI COMPLAINT FOR DAMAGES ANDCOMMERCIAL CA L LLC, a INJUNCTIVE RELIEF FOR:

17 California limited liability company;ANI COMMERCIAL CA II, LP, a (1) TRADEMARK

18 California limited partnership, INFRINGEMENT, UNFAIRCOMPETITION, AND FALSE

19 Plaintiffs, DESIGNATION OF ORIGIN

rj4 jSLANDER

20 v. 3 DEFAMATIONINTERFERENCE WITH A

21 BRIAN MACDONALD, an SINESS ADVANTAGEindividual; LOVESURF, INC., a (5) ALTER EGO

22 Delaware corporation, and DOES 1-10, inclusive,

23 DEMAND FOR JURY TRIALDefendants.

24

25 Plaintiffs Gina Champion-Cain, Luv Surf, LP, ANI Commercial CA I, LLC,

26 and ANI Commercial CA II, LP (collectively "Plaintiffs") complain and allege as

27follows against Defendants Brian MacDonald, LoveSurf, Inc. and Does 1-10

28 inclusive.

HIGGS FUTCHRR

MACK LLP Case No.1220776.1


1 DEMAND FOR A JURY TRIAL

2 Plaintiffs hereby request a trial by jury in this case, pursuant to Rule 38,

3 Federal Rules of Civil Procedure.

4 THE NATURE OF THE ACTION

5 1. Plaintiffs bring this civil action to redress Defendants'

6 misappropriation ofPlaintiffs' intellectual property and brand in a manner that is

7 confusing to the public and tarnishes Plaintiffs' reputation. Accordingly, Plaintiffs

8 bring this action at law and equity for trademark infringement, arising under the

9 Trademark Act of 1946, 15 U.S.C. 1051, et seq., as amended by the Trademark

10 Counterfeiting Act of 1984, and the Anticybersquatting Consumer Protection Act

11 of 1999 ("ACPA") (collectively, the "Lanham Act"), and unfair trade practices12 under the California Business and Professions Code Section 17200 et seq.

13 Plaintiffs also bring causes of action for Slander, Defamation, Interference with a

14 Business Advantage, Declaratory Relief, Injunctive Relief and Punitive Damages.

15 THE PARTIES

16 2. Gina Champion-Cain ("Champion-Cain") is an individual who, at all

17 relevant times, resided in San Diego, California.

18 3. Luv Surf, LP, a California limited partnership, whose principal place19 of business is 4439 Lamont Street, San Diego, CA 92109.

20 4. ANI Commercial CA I, LLC, a California limited liability company,

21 whose principal place of business is 4445 Lamont Street, San Diego, CA 92109.

22 5. ANI Commercial CA II, LP, a California limited partnership, whose

23 principal place of business is 4439 Lamont Street, San Diego, CA 92109.

24 6. Plaintiffs' primary business involves a vacation rental business which

25 includes the operation of a retail store. The retail store profits through the sale of

26 merchandise and beachwear attire including, but not limited to, t-shirts, sweatshirts,

27 robes, hoodies, hats, bags and towels. Plaintiffs' internet retail sales are conducted

28 through at least the following websites: www.luv-surf.com;HIGGS FLETCHER &

MACK LLP 2 Case No.ATTORNFTS AT LAW

SAN Dikc.o 1220776 1


1 www.luvsurfclothing.com, www.luvsurfapparel.com and vvww.luvsurfretail.corn.

2 7. Upon information and belief, Defendant Brian MacDonald

3 ("MacDonald") is an individual residing in San Clemente, California. At all

4 relevant times, Defendant MacDonald wholly or partially owned, operated,5 managed, supervised or was otherwise responsible for the daily operations and

6 decisions of Co-Defendant LoveSurf, Inc.

7 8. Upon information and belief, Defendant LoveSurf, Inc. ("LoveSurf")

8 is a Delaware Corporation with its principal place of business at 107 Avenida De

9 La Estrella, Suite 102, San Clemente, California 92672. Upon information and

10 belief, Defendant LoveSurf conducts business via the internet on websites included,

11 but not limited to: www.lovesurf.com and www.luvsurf.com. Upon information

12 and belief, Defendant LoveSurf is controlled in part or in whole by Defendant

13 MacDonald, and the obligations of Defendant MacDonald are also the obligations14 of Defendant LoveSurf.

15 9. Upon information and belief, Defendant MacDonald organized

16 LoveSurf in order to conduct business confusingly similar to Plaintiffs' trademarks,

17 including but not limited to "Luv Surf."

18 10. Upon information and belief, there is no separateness between

19 Defendants MacDonald and LoveSurf, and it would be inequitable if LoveSurf or

20 MacDonald were not a party to this action. Upon information and belief, LoveSurf

21 is a device by which MacDonald misappropriates Plaintiffs' trademarks as well as

22 engages in slanderous and defamatory conduct and interferes with Plaintiffs'

23 business advantage.

24 11. Defendants MacDonald and LoveSurf when referred to collectively,25 shall be referred to as "Defendants."

26 12. Plaintiffs are informed and believe and on that basis allege that, at all

27 times mentioned in this Complaint, each of the Defendants was the agent and/or

28 alter ego of each of the other Defendants and, in doing the things alleged in thisHIGGS FLE1C1HER &

MACK LLP 3 Case No,A T TO RN EYS AT LAW

1220776 1SAN DJ EC


1 Complaint, were acting within the course and scope of any such agency.

2 JURISDICTION

3 13. This Court has original jurisdiction over this action pursuant to 28

4 U.S.C. 1331 and 1338, and 15 U.S.C. §§1116 and 1121. This Court has

5 supplemental jurisdiction over Plaintiffs' claims brought under the laws of the State

6 of California pursuant to 28 U.S.C. §1367, because those claims form part ofall the

7 same case or controversy as Plaintiffs' claims brought under federal law.

8 14. The Court has personal jurisdiction over Defendants because all causes

9 of action asserted herein arise out of conduct undertaken by Defendants in San

10 Diego County, California. The events asserted herein occurred in San Diego11 County, California, including, but not limited to, trade shows in San Diego County,

12 California.

13 VENUE

14 15. Venue is proper in this District pursuant to 28 U.S.C. §1391(b)(2), in

15 that a substantial part of the events or omissions giving rise to the claim occurred in

16 this district.

17 FACTUAL BACKGROUND

18 Plaintiffs' Use and Ownership of the Luv San Diego Surf Logo, the Luv Surf

19 Word Mark, and the Heart Surf Logo

20 16. Plaintiff Champion-Cain is the owner of United States Trademark

21 Registration No. 4390537, registered on August 27, 2013, for LUV SAN DIEGO

22 SURF and Design, for beachwear, hooded sweatshirts, t-shirts, and tank tops in

23 International Class 25. Plaintiff Champion-Cain is also the owner ofUnited States

24 Trademark Application Serial No. 86430225, filed on October 21, 2014, for LUV

25 SAN DIEGO SURF and Design, for various goods and services, including clothing

26 apparel in International Class 25 and retail store services in International Class 35,

27 and is the owner of all related common law rights. (Collectively, the "Luv San

28 Diego Surf Logo"). True and correct copies of the registration certificate andHIGGS Pi ETCHER &

MACK LLP 4 Case No,ATTORIYEYS AT LAW

1220776.1SAN DIPC:0


1 application are attached hereto as Exhibit A. The registration and application have

2 not been abandoned, canceled or revoked.


4 Registration No. 4578570, registered on August 5, 2014, for the Heart Surf and

5 Design, for bathing suits and hats in International Class 25. Plaintiff Champion-6 Cain is also the owner of United States Trademark Application Serial Nos.

7 86430191 and 86430195, filed on October 21, 2014, for the Heart Surf and Design,8 for various goods and services, including clothing apparel in International Class 25

9 and retail store services in International Class 35, and is the owner of all related

10 common law rights. (Collectively, the "Heart Surf Logo"). True and correct copies11 of the registration certificate and applications are attached hereto as Exhibit B. The

12 registration and applications have not been abandoned, canceled or revoked.


14 Application Serial No. 86430220, filed on October 21, 2014, for the terms LUV

15 SURF, for various goods and services, including clothing apparel in International

16 Class 25 and retail store services in International Class 35, and is the owner of all

17 related common law rights (the "Luv Surf Word Mark"). A true and correct copy

18 of the application is attached hereto as Exhibit C. The application has not been

19 abandoned or revoked.

20 19. The Luv San Diego Surf Logo, the Heart Surf Logo, and the LUV

21 SURF Word Mark are collectively referred to as "Plaintiffs' Trademarks."

22 20. Plaintiffs have operated a real estate rental business in San Diego23 under the name "Luv Surf" at least since August of 2011 when it created the Luv

24 San Diego Surf Logo and filed a fictitious business name statement for "Luv San

25 Diego Surf."

26 21. In October 2011, Plaintiffs obtained a Transient Occupancy

27 Registration Certificate for its rental business under the name "Luv San Diego

28 Surf"HIGGS FLETCIIER &

MACK LLP 5 Case No.ATTDRNEYS AT LAW

SAN DIEGO 1220776.1


1 22. In January 2012, Plaintiffs began providing merchandise to its renters

2 with the monogrammed logo which included the Luv San Diego Surf Logo and Luv

3 Surf Word Mark. Due to the popularity of its merchandise, Plaintiff decided to

4 open a retail store to sell its merchandise.

5 23. Plaintiffs were the first to use the Luv Surf Word Mark in connection

6 with the sale of apparel and related products.

7 24. Plaintiff ANI Commercial CA II, LP has operated a retail store in

8 San Diego, California at least since July 2012. Plaintiff sells merchandise under

9 Plaintiffs' Trademarks at its retail store in San Diego, California. The retail store

10 profits from sales of trendy surf merchandise to include, but not limited to, t-shirts,

11 tank tops, sweatshirts, robes, hats, towels, board shorts, pet accessories, and other

12 accessories, all branded with one of the Luv Surf Word Mark, Luv San Diego Surf

13 Logo, and/or Heart Surf Logo. The brand appeals widely to individuals with a

14 surfer-type style and markets its merchandise at surfing competitions and similar

15 type events throughout Southern California,

16 25. Plaintiff ANI Commercial CA II, LP, through its predecessor-in-

17 interest ANI Commercial CA II, LLC filed for a sellers permit for its clothing for

18 ecommerce and retail store on February 22, 2012 and obtained the permit on

19 March 1, 2012.

20 26. In March 2012, Plaintiffs created, through a freelance designer, its

21 Heart Surf Logo.

22 27. Since at least mid-2012, Plaintiffs have consistently used the Luv Surf

23 Word Mark, the Luv San Diego Surf Logo, and the Heart Surf Logo marks in

24 commerce to designate its distinctive merchandise, which is easily identifiable by a

25 trademark instantly recognized in the beachwear merchandise community.26 28. In marketing its products, Plaintiffs spend substantial sums of money

27 to develop its marketing materials, such as its website, for the sale of clothing and

28 accessories branded with Plaintiffs' Trademarks. Plaintiffs have also madeHIGGS FLETCHER gz

MACK LLP 6 Case No.ATTORNEYS AT LAW

1220776 1SAN DIEGO

This was after Chris Kramer had worked for Brian MacDonald and was aware of the LuvSurf/LoveSurf business plan. Chris Kramer's last day working for Brian MacDonald was January 3, 2012. The retail store didn't open until July 2012. This is after it was clear that this conflicted with the LoveSurf business.


1 substantial financial investments in the marketing, promotion and advertising of its

2 merchandise as well as the maintenance and operations of its retail store.

3 29. As a result of its unique branding, designs and appeal of its apparel,

4 Plaintiffs have developed a successful retail business both through its store and

5 online through its website.

6 Defendants' Use of Plaintiffs' Trademarks

7 30. Defendants incorporated LoveSurf, Inc. on April 5, 2013.

8 31, At some point after Plaintiffs first began to use the Luv Surf Word

9 Mark, the Luv San Diego Surf Logo, and the Heart Surf Logo marks, but no early

10 than July 5, 2013, Defendants began selling merchandise with the words

11 "LoveSurf" and a heart logo. Defendants began selling leggings on Facebook

12 branded with the brand "LoveSurf" with a heart logo, which is confusingly similar

13 to Plaintiffs' Trademarks.

14 32. The brand "LoveSurf" is confusingly similar to the Luv Surf Word

15 Mark, the Luv San Diego Surf Logo, and the Heart Surf Logo (Exhibit D),

16 33. Defendant LoveSurf, Inc. filed a trademark application for LoveSurf

17 with a heart logo, but the trademark was rejected on May 27, 2014. In the rejected

18 "LoveSurf' trademark application, Defendant Brian MacDonald admits that the

19 first use date in commerce was July 5, 2013, which is over a year after Plaintiffs'

20 first use and registration of Plaintiffs' Trademarks.

21 34. Defendants filed an "intent to use" trademark application for

22 "Luvsurf" in November 2012, which was abandoned in 2013.

23 35. Defendants appeared at the SuperGirl Pro surf competition, an event at

24 which Plaintiffs were selling their merchandise, and Defendant began to sell

25 merchandise labeled with the mark LoveSurf, or similar marks. When coming into

26 contact with customers wearing Plaintiffs' merchandise, Defendants would cover

27 Plaintiffs' merchandise with their own logo and explain to the customer that

28 Defendants were the true owners of the brand.HIGGS FLETCHER Sz

MACK LLP 7 Case No.ATTolUnYS AT LAW

5AN DIEGO 1220776 .1


1 36. On multiple occasions, when speaking with customers and other

2 members of the public, Defendants made defamatory and slanderous statements

3 about Plaintiffs.

4 37. On multiple occasions, Defendants made defamatory statements via

5 the internet, including but not limited to, statements made via email and social

6 media posts, including but not limited to posts on Instagram and Linkedin, and well

7 as on Defendants' own website.

8 38. Defendants sent multiple emails to Plaintiffs' employees and vendors,

9 the nature of which was defamatory and soliciting Plaintiffs' employees to come

10 work for "the real LoveSurf."

11 39. On July 1, 2014, Plaintiffs sent a cease and desist letter to Defendants

12 addressing the trademark infringement and defamatory and slanderous comments

13 made by Defendants. (Exhibit E).

14 40. On July 18, 2014, Defendants changed the color ofDefendants'

15 infringing logo of LoveSurf to match the same exact color as Plaintiffs' logo for

16 Luv Surf (see Exhibit D).

17 41. Multiple correspondences have ensued between Plaintiffs and

18 Defendants. Defendants have refused to stop their infringing and defamatory

19 behavior.

20 42. Defendants have purchased Google advertising words for Luv Surf

21 Apparel and have called Plaintiffs' wholesale retailers and vendors making22 defamatory statements.

23 43. On October 7, 2014, Defendants called Plaintiffs' public relations and

24 consulting company making defamatory and slanderous statements, stating the

25 brand is "a complete rip off" and demanding the company take action against

26 Plaintiffs.

27 44. On October 15, 2014, Defendants called the San Diego Union Tribune

28 and made defamatory and slanderous statements about Plaintiffs and Plaintiffs'HI= FLETCHER &


SAN DIEGO 1220776.1


1 Trademarks.

2 FIRST CAUSE OF ACTION: VIOLATION OF THE LANHAM ACT

3 (As to All Defendants)

4 45. Plaintiffs repeat and re-allege the allegations of paragraphs 1 through

5 43 of the Complaint as if fully set forth herein.

6 46. Defendants' unauthorized use ofPlaintiffs' Trademarks and related

7 activities as alleged above, and in connection with the domain names

8 www.luvsurf.com and www.lovesurf.com infringe upon Plaintiffs' rights under the

9 Lanham Act in such marks by showing a bad-faith intent to profit from Plaintiffs'

10 Trademarks by using its LoveSurf word mark and heart logo in a confusingly

11 similar manner to Plaintiffs' Trademarks and/or in a manner dilutive of Plaintiffs'

12 Trademarks. Defendants' acts therefore violate 15 U.S.C. §1125(a). As set forth

13 above, Plaintiffs have previously notified Defendants of their obligation to cease

14 use of Plaintiffs' Trademarks and to discontinue all infringement. Defendants have

15 failed to do so. Accordingly, Defendants' infringement is intentional and willful, or

16 if not intentional and willful, then reckless, or, at the very least negligent. Further,

17 Defendants' wrongful acts, described herein, in connection with the ongoing

18 infringement, are causing irreparable harm to Plaintiffs for which Plaintiffs have no

19 adequate remedy at law.

20 47. As a result of Defendants' intentional and willful, or reckless and/or

21 negligent, trademark infringement, Plaintiffs have suffered and are entitled to

22 damages in an amount to be proven at trial, including, but not limited to, actual

23 monetary damages or statutory damages, preliminary and permanent injunctive

24 relief, costs and attorneys' fees.

25 48. Plaintiffs have no adequate remedy at law, and ifDefendants'

26 activities are not enjoined, Plaintiffs will continue to suffer irreparable harm and

27 injury to its goodwill and reputation. Plaintiffs have suffered and continue to suffer

28 immediate and irreparable harm due to Defendants' continuance actions.

HIGGS FLETCIIER


SAN 1220776.1DIEGO


1 SECOND CAUSE OF ACTION: SLANDER


3 49. Plaintiffs repeat and re-allege the allegations of paragraphs 1 through4 47 of the Complaint as if fully set forth herein.

5 50. Defendants' false and unprivileged publication made to (1) the

6 San Diego Union Tribute, (2) at trade shows, (3) to Plaintiffs' employees and

7 public relations team, and (4) to members of the public regarding Plaintiffs and

8 their trademarks directly injured Plaintiffs in respect to Plaintiffs' trade and

9 business. Defendants' remarks, which involved disparaging Plaintiffs' brand and

10 business, had a natural tendency to lessen Plaintiffs' profits.

11 51. Defendants intentionally, recklessly, or at the very least, negligently,12 disparaged Plaintiffs' business, brand and trademark.

13 52. Plaintiffs have suffered and continue to suffer immediate and

14 irreparable harm due to Defendants' continuance actions and slanderous remarks.

15 THIRD CAUSE OF ACTION: DEFAMATION



19 54. Defendants posted false, defamatory and unprivileged information

20 about Plaintiffs and their trademarks on multiple media websites including, but not

21 limited to, Defendants' website, Facebook and LinkedIn. The posts had a natural

22 tendency to injure Plaintiffs in that the comments falsely painted Plaintiffs'

23 Trademarks in a negative light which negatively affects Plaintiffs' business and

24 reputation.

25 55. The defamatory comments made by Defendants were made

26 intentionally, recklessly, or at the very least, negligently. Additionally, Defendants

27 knew, should have known, or acted with reckless indifference or negligently that

28 such comments would injure Plaintiffs in their business and reputation.HICG5 FLErCHER

MACK LLP 10 Case No.ATTORNTY; AT LAW

1220776.1SAN DIEC:0



2 irreparable harm due to Defendants' continuance actions.

3 FOURTH CAUSE OF ACTION: INTERFERENCE WITH A BUSINESS

4 ADVANTAGE



8 58. Plaintiffs have an economic relationship with the public at large as

9 well as groups including, but not limited to, their customers, potential customers,

10 target market and the Southern California surfing community. The nature of the

11 economic relationship exists, because Plaintiffs' business depends on purchases and

12 sales from these groups of people as well as the goodwill ofPlaintiffs' Trademarks.

13 Additionally, Plaintiffs spend time, money and resources to advertise the goodwill

14 of their trademarks.

15 59. At all relevant times, Defendants are, and have been, aware of the

16 economic relationship between Plaintiffs and the public at large, because

17 Defendants are aware that Plaintiffs operate a retail store, as well as other business

18 endeavors, using the Luv Surf Word Mark, the Luv San Diego Surf Logo, the Heart

19 Surf Logo, and other common variations ofPlaintiffs' Trademarks. Defendants

20 have also been aware, at all relevant times, the Plaintiffs' intent has been to make a

21 profit and benefit from the goodwill of Plaintiffs' Trademarks.

22 60. Defendants intentionally acted to disrupt the relationship between

23 Plaintiffs and their customers by (1) disparaging Plaintiffs and their brand, (2)24 telling Plaintiffs' customers and vendors that Defendants actually owned the brand,

25 and (3) indicating to customers that if they purchase Plaintiffs' goods, they are

26 purchasing inferior merchandise.

27 61. Defendants also intentionally acted to disrupt the relationship between

28 Plaintiffs and their customers by using a confusingly similar mark to Plaintiffs'HIGGS FLETCHER &


1220776.1SAN DEFC0


1 Trademarks, selling substantially similar goods, and holding themselves out to be

2 the true owner of Plaintiffs' Trademarks. Defendants appeared at the same

3 tradeshows as Plaintiffs, set up a similar vendor tent and intentionally deprived4 Plaintiffs of sales of their goods by selling substantially similar goods to the public5 and telling the public that Defendants were the true owner of the brand.

6 62. As a result of Defendants' actions, Plaintiffs have been injured in their

7 relationship with their customers, because some customers have not purchased

8 Plaintiffs' goods as a result of the efforts ofDefendants. Plaintiffs were harmed

9 economically by Defendants' actions, because they lost sales revenue as a result of

10 Defendants' actions. The harm to Plaintiffs was proximately caused by the acts of

11 Defendants.


13 irreparable harm due to Defendants' continuance actions

14 PRAYER FOR RELIEF

15 64. Wherefore, Plaintiffs pray for judgment against Defendants as follows:

16 65. For an order preliminarily and permanently enjoining Defendants from

17 further infringing on Plaintiffs' Trademarks;

18 66. For actual damages suffered by Plaintiffs and Defendants' profits or,

19 alternatively, for statutory damages pursuant to 15 U.S.C. §§1116 and 1117;

20 67. Injunctive Relief pursuant to 15 U.S.C. §1116;

21 68. For actual damages suffered by Plaintiffs as a result of Defendants'

22 tortious conduct;

23 69. General and special damages according to proof;24 70. Injunctive Relief;

25 71. Declaratory Relief;

26 72. For attorney's fees and costs pursuant to 15 U.S.C. §1117;

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HIGGS FLE1CHER

MACK LLP 12 Case No.ATTORNFYS AT LAW

sAN DILG1220776.1(7


1 73. For an award of costs incurred in bringing this action pursuant to 28

2 U.S.C. §1920;

3 74. Punitive Damages.

4

5 DATED: October 23, 2014 Respectfully submitted,

6 HIGGS FLETCHER & MACK LLP

7

8 By: s/ Steven I CologneSTEVEN J. COLOGNE, ESQ.9 CHARLES F. REIDELBACH, ESQ.CHRISTINA G. BOBB, ESQ.10 Attorneys for PlaintiffsGINA CHM/MON-CAIN;

11 LUV SURF, LP; ANICOMMERCIAL CA I, LLC; and

12 ANI COMMERCIAL CA II, LPEmail: scologneghigslaw.com13 [email protected]

14 [email protected]

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HIGGS PLETCHER ezMACK LLP 13 Case No.

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