Download - Time's Up v. ActNow Complaint
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GREENBERG
TRAURIG,LLP
3773HowardHu
ghesParkway,
Suite400North
LasVe
gas,
Nevada
89169
(
702)792-3773
(70
2)792-9002(fax)
Mark G. Tratos (Bar No. 1086)F. Christopher Austin (Bar No. 6559)GREENBERG TRAURIG, LLP
3773 Howard Hughes ParkwaySuite 500 NorthLas Vegas, Nevada 89169Telephone: (702) 792-3773Facsimile: (702) 792-9002
Counsel for Plaintiff
UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA
Times Up, Inc., a Nevada corporation,
Plaintiff,
v.
ActNow Media, Inc.
Defendant.
Case No.
COMPLAINT FOR DAMAGES AND
INJUNCTIVE RELIEF
(1) Trademark Infringement under15 U.S.C. 1115(c)
(2) Unfair Competition under15 U.S.C. 1125(a)
(3) Common Law Trademark
Infringement(4) Deceptive Trade Practices under
N.R.S. 598.0903, et seq.
For its complaint against Defendant, Plaintiff Times Up, Inc. (Times Up) complains
and alleges as follows:
NATURE OF ACTION
This is an action for trademark infringement and unfair competition under federal
statutes, with pendent claims for common law trademark infringement, state deceptive
trade practices, and intentional interference with prospective economic advantage. Plaintiff
seeks damages, attorneys fees, costs, and preliminary and permanent injunctive relief.
JURISDICTION
1. This Court has subject matter jurisdiction over this case pursuant to 28 U.S.C.
1331 and 1338(a). This Court has supplemental jurisdiction over Plaintiffs state law
claims pursuant to 28 U.S.C. 1367(a).
Case 2:09-cv-00131-HDM-LRL Document 1 Filed 01/20/2009 Page 1 of 7
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GREEN
BERG
TRAURIG,LLP
3773HowardHu
ghesParkway,
Suite400North
LasVe
gas,
Nevada
89169
(702)792-3773
(70
2)792-9002(fax)
2. This Court has personal jurisdiction over Defendant based upon the following:
(a) Defendant regularly conducts business in Las Vegas, Nevada; (b) Defendant operates a
web site on the Internet that is accessible to residents of the State of Nevada; and (c)
Defendant committed tortious acts that it knew or should have known would cause injury to
Plaintiff in the State of Nevada.
3. Venue is proper in the United States District Court for the District of Nevada
under 28 U.S.C. 1391(b) and (c). Venue lies in the unofficial Southern Division of this
Court.
PARTIES
4. Plaintiff Times Up is a Nevada corporation with its principal place of business
in Las Vegas, Nevada. Times Up manufactures mouse pads and related computer
accessories under its well-known DIGISPEC brand.
5. Upon information and belief, Defendant ActNow Media, Inc. (ActNow) is a
Georgia corporation with its principal place of business in Alpharetta, Georgia. Defendant
regularly conducts business in the State of Nevada via a web site on the World Wide Web,which is accessible to Nevada residents.
ALLEGATIONS COMMON TO ALL COUNTS
6. Plaintiff Times Up manufactures and sells mouse pad and related computer
accessories under the marks WHEN YOU THINK OF MOUSE PADSTHINK OF
DIGISPEC; WHEN YOU THINK OF MOUSE PADS DIGISPEC; and WHEN YOU THINK
OF MOUSE PADS (collectively, the WHEN YOU THINK OF MOUSE PADS Marks or
the Marks).
7. Plaintiff Times Up owns the Marks and owns pending trademark applications
before the United States Patent and Trademark Office for the marks WHEN YOU THINK
OF MOUSE PADSTHINK OF DIGISPEC; and WHEN YOU THINK OF MOUSE PADS
DIGISPEC in connection with the custom manufacturing of mouse pads, counter mats,
coasters, notepads, calendars, cups and containers, and for online retail sales, catalog
sales and wholesale distribution of mouse pads, counter mats, coasters, notepads,
Case 2:09-cv-00131-HDM-LRL Document 1 Filed 01/20/2009 Page 2 of 7
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GREEN
BERG
TRAURIG,LLP
3773HowardHu
ghesParkway,
Suite400North
LasVe
gas,
Nevada
89169
(702)792-3773
(70
2)792-9002(fax)
calendars, cups and containers. A copy of Plaintiffs federal trademark applications are
attached hereto as Exhibit A.
8. Plaintiff Times Up has invested significant time and money in developing the
WHEN YOU THINK OF MOUSE PADS Marks and substantially more resources in
promoting its products and services in the United States and throughout the world, for more
than 11 years. The result of these efforts has been the establishment of a name and
trademark that represents a business known as a provider of high quality goods and
exceptional customer service.
9. Times Up began using the WHEN YOU THINK OF MOUSE PADS Marks in
connection with its mouse pad and related computer accessories in 1998 and since that
time has continuously used the Marks in connection with the advertising and promotion of
its products and services in the United States and around the world.
10. Based on its extensive use, Times Up owns the exclusive right to use the
WHEN YOU THINK OF MOUSE PADS Marks in connection with mouse pads and related
computer accessories.11. On or about January 6, 2009, Defendant began using a confusingly similar
variation of Plaintiffs WHEN YOU THINK OF MOUSE PADS Marks to advertise its line of
mouse pads and computer accessories. Specifically, Defendants commenced sending out
widely distributed flyers via email to advertise their competing products. See Defendant
Flyer, attached hereto as Exhibit B.
12. The title of the flyer reads in large bold type: When You Think of
Mouse Pads and Counter Mats, exactly copying Plaintiffs Marks. (See
Exhibit B). Directly beneath this title, Defendant has placed its own MOUSE MESSAGES,
and MAT MESSAGES name together with a collage of images showing Defendants
products.
13. The title of the flyer is confusingly similar if not identical to Plaintiffs WHEN
YOU THINK OF MOUSE PADS Marks.
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GREEN
BERG
TRAURIG,LLP
3773HowardHu
ghesParkway,
Suite400North
LasVe
gas,
Nevada
89169
(702)792-3773
(70
2)792-9002(fax)
14. By using a title on this flyer that is confusingly similar to Plaintiffs Marks,
Defendant is attempting to intentionally trade on Plaintiffs trade identity and goodwill to
confuse consumers, to use Plaintiffs goodwill to cause potential consumers to examine
Defendants flyer and products and/or to cause consumers to wrongfully believe that
Defendant or its products are somehow affiliated with Plaintiff when such is not the case, or
at the very least, to cause initial interest confusion in order to entice the consumer to read
Defendants advertisement, by making the consumer initially believe the advertisement is
associated with Plaintiff.
15. Plaintiffs Marks were distinctive at the time Defendant began its use of a
confusingly similar mark.
16. Upon information and belief, Defendant did not believe or have reasonable
grounds to believe that the use of a confusingly similar variation of Plaintiffs protected
Marks was a fair use or otherwise lawful.
17. Defendant is not entitled use Plaintiffs WHEN YOU THINK OF MOUSE
PADS Marks to compare Defendants products to Plaintiff. Plaintiffs WHEN YOU THINKOF MOUSE PADS Marks are unnecessary to identify Plaintiff or its products, and Plaintiffs
products can be readily identified without using Plaintiffs WHEN YOU THINK OF MOUSE
PADS Marks.
18. Further, Defendants use of large, bolded text to set off its infringing use of
Plaintiffs Marks from the rest of the flyer, and Defendants prominent, indeed primary,
placement of Plaintiffs WHEN YOU THINK OF MOUSE PADS Marks as the fist line and
title of the flyer, together with the bold and large text of Plaintiffs DIGISPEC mark
wrongfully suggest Plaintiffs sponsorship or endorsement of Defendant or the Defendants
products.
FIRST CLAIM FOR RELIEF
(Trademark Infringement under the Lanham Act, 15 U.S.C. 1125(c))
19. Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
forth herein.
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GREEN
BERG
TRAURIG,LLP
3773HowardHu
ghesParkway,
Suite400North
LasVe
gas,
Nevada
89169
(702)792-3773
(70
2)792-9002(fax)
20. Defendants use in commerce of a mark identical and/or confusingly similar to
Plaintiffs Marks in connection with Defendants web site, mouse pads and computer-
related goods and services, constitutes a reproduction, copying, counterfeiting, and
colorable imitation of Plaintiffs name in a manner that is likely to cause confusion or
mistake or is likely to deceive consumers.
21. Defendants use of Plaintiffs Marks has created a likelihood of confusion
among consumers who may falsely believe that Defendants business and/or goods and
services are associated with Plaintiffs or that Plaintiff sponsors or approves of Defendants
products or commercial activities.
22. As a direct and proximate result of Defendants infringement, Plaintiff has
suffered, and will continue to suffer, monetary loss and irreparable injury to its business,
reputation, and goodwill.
SECOND CLAIM FOR RELIEF
(Unfair Competition under Lanham Act 1125(a))
23. Plaintiff incorporates the allegations in the preceding paragraphs as if fully setforth herein.
24. Defendants use in commerce of a mark identical and/or confusingly similar to
Plaintiffs Marks in connection with Defendants goods and services constitutes a false
designation of origin and/or a false or misleading description or representation of fact,
which is likely to cause confusion, cause mistake, or deceive as to affiliation, connection, or
association with Plaintiff, or as to the origin, sponsorship, or approval of Defendants
products or commercial activities by Plaintiff.
25. By using Plaintiffs Marks with the knowledge that Plaintiff owns and has
used, and continues to use, its Marks in Las Vegas, across the United States, and around
the world, Defendant has intended to cause confusion, cause mistake, or deceive
consumers.
26. As a direct and proximate result of such unfair competition, Plaintiff has
suffered, and will continue to suffer, monetary loss and irreparable injury to its business,
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GREEN
BERG
TRAURIG,LLP
3773HowardHu
ghesParkway,
Suite400North
LasVe
gas,
Nevada
89169
(702)792-3773
(70
2)792-9002(fax)
reputation, and goodwill.
THIRD CLAIM FOR RELIEF
(Common Law Trademark Infringement)
27. Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
forth herein.
28. By virtue of having used and continuing to use its Marks, Plaintiff has
acquired common law rights in that mark.
29. Defendants use of a mark identical and/or confusingly similar to Plaintiffs
Marks infringes Plaintiffs common law rights in its trademark, and this use is likely to cause
confusion, mistake, or deception among consumers, who will believe that Defendants
mouse pads and/or computer accessories originate from, or are affiliated with, or endorsed
by Plaintiff when, in fact, they are not.
30. As a direct and proximate result of Defendants infringement of Plaintiffs
common law trademark rights under Nevada and other common law, Plaintiff has suffered,
and will continue to suffer, monetary damages and irreparable injury to its business,reputation, and goodwill.
FOURTH CLAIM FOR RELIEF
(Deceptive Trade Practices
under N.R.S. 598.0915)
31. Plaintiff incorporates the allegations in the preceding paragraphs as if fully set
forth herein.
32. Upon information and belief, in the course of operating its business,
Defendant knowingly made false representations as to affiliation, connection and/or
association with Plaintiff by using a mark confusingly similar to Plaintiffs Marks and
otherwise engaged in deceptive trade practices.
33. As the direct and proximate result of Defendants conduct, Plaintiff has
suffered, and will continue to suffer, monetary damages and irreparable injury to its
business, reputation, and goodwill.
Case 2:09-cv-00131-HDM-LRL Document 1 Filed 01/20/2009 Page 6 of 7
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GREEN
BERG
TRAURIG,LLP
3773HowardHu
ghesParkway,
Suite400North
LasVe
gas,
Nevada
89169
(702)792-3773
(70
2)792-9002(fax)
PRAYER FOR RELIEF
WHEREFORE, Plaintiff respectfully prays that the Court grant the following relief:
A. A preliminary and permanent injunction prohibiting Defendant, its respective
officers, agents, servants, employees and/or all persons acting in concert or participation
with them, or any of them, from using Plaintiffs Marks or confusingly similar variations
thereof, alone or in combination with any other letters, words, letter strings, phrases or
designs, in commerce or in connection with any business or for any other purpose
(including, but not limited to, on email flyers, web sites and in domain names);
B. An award of compensatory, consequential, statutory, and punitive damages to
Plaintiff in an amount to be determined at trial;
D. An award of interest, costs and attorneys fees incurred by Plaintiff in
prosecuting this action; and
E. All other relief to which Plaintiff is entitled.
DATED: January 20, 2009.
GREENBERG TRAURIG, LLP
/s/ F. Christopher AustinMark G. Tratos (Bar No. 1086)F. Christopher Austin (Bar No. 6559)3773 Howard Hughes Parkway, Suite 400 NLas Vegas, Nevada 89169Counsel for Plaintiff
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