time's up v. actnow complaint

8/14/2019 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,



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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)


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)


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.



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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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Case 2:09-cv-00131-HDM-LRL Document 1-3 Filed 01/20/2009 Page 1 of 4


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time's up v. actnow complaint

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