zoe marketing v. impressions - live love cheer trademark complaint

8/11/2019 Zoe Marketing v. Impressions - LIVE LOVE CHEER Trademark Complaint

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2FIRST AMENDED COMPLAINT

DOCS 120994-000005/2032029.1

interference with prospective economic relations.

2. This Court has subject matter jurisdiction over this action pursuant to

15 U.S.C. 1121(a), and 28 U.S.C. 1331, 1338(a) and (b). This Court ha

supplemental jurisdiction over Plaintiffs state law claims pursuant to 28 U.S.C

1367.

3.

This Court has personal jurisdiction over Defendant because i

conducts business in California. Defendant has purposely availed itself of th

opportunity to conduct commercial activities in this Judicial District by maintaining

an online retail store and sending out catalogs that target customers in the United

States and United States territories, including this Judicial District, and offering to

ship and shipping products to customers in the United States and United State

territories, including this Judicial District.

4.

Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and

(c), because a substantial part of the events giving rise to the claims occurred, and

continue to occur, in the Southern District of California. Further, Plaintiff ha

suffered damage within this District, and elsewhere.

PARTIES

5.

Plaintiff Zoe Marketing, Inc. is a Nevada corporation with its principa

place of business at 12375 World Trade Drive, San Diego, California 92128.

6.

Plaintiff is informed and thereon alleges that Defendant Impressons

LLC is a limited liability company organized and existing under the laws of the

state of Oregon with a principal place of business at 238 Lawrence Avenue, San

Francisco, California 94080.

FACTUAL BACKGROUND

7. Plaintiff is a company which designs, manufactures and sell

cheerleading uniforms and cheer related products. Plaintiff is the top source fo

dependable, high quality cheerleading uniforms, warm-ups, shoes and accessories

Plaintiff has been in business selling cheer products since August 2002.

Case 3:14-cv-01881-AJB-WVG Document 5 Filed 09/02/14 Page 2 of 14


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DOCS 120994-000005/2032029.1

8.

Plaintiff offers cheerleading apparel and supplies, including but no

limited to cheerleading uniforms, practice wear, t-shirts, pom-poms, shoes, socks

accessories, jackets, footwear, bags, makeup and other cheerleading accessorie

(Products). Plaintiff has offered cheerleading Products for over twelve years, an

targets individual consumers and groups of consumers, including cheerleadin

squads and sports teams, nationwide.

9.

Plaintiff has a diverse customer base which includes sales to th

general public; elementary, middle and high schools including grades kindergarten

through twelve; youth cheerleading leagues, recreational teams, Pop Warne

Football organizations; American Youth Football & Cheer organizations

universities; colleges; as well as all-star, club and team cheerleading organizations.

10.

Plaintiff commenced its business in 2002 selling both self

manufactured products and third party products.

11.

Plaintiffs sales are retail sales which are promoted mostly, although

not exclusively, through catalogs; websites, including Plaintiffs website

www.cheerleadingonline.com and www.omnicheer.com; social media sites; an

various trade shows throughout the United States and within this Judicial District.

12.

On November 26, 2009 Plaintiff filed an application for the trademark

LIVE LOVE CHEER for registration on the Principal Register. On July 13

2010 the United States Patent and Trademark Office issued Registration No

3,817,720 for LIVE LOVE CHEER. A true and correct copy of Registration No

3,817,720 is attached hereto as Exhibit A.

13.

Plaintiffs mark LIVE LOVE CHEER has been used in commerce

since at least February 1, 2006 to brand Plaintiffs Products.

14. Plaintiff offers for sale various t-shirts and socks bearing the mark

LIVE LOVE CHEER. A sampling of these Products is displayed below:



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DOCS 120994-000005/2032029.1

15.

In light of Plaintiffs valid and continuous use of the LIVE LOVE

CHEER trademark since February 1, 2006, Plaintiffs mark, already a strong an

distinctive mark, has acquired secondary meaning among the consuming public

The LIVE LOVE CHEER mark is symbolic of extensive goodwill and consume

recognition, built up by and through Plaintiffs substantial time, effort and money

dedicated to advertising, marketing and promotional activities. The LIVE LOVE

CHEER mark and the goodwill associated therewith are valuable assets o

Plaintiff.

16. In the mind of the consuming public, Plaintiff is the source or origin o

the Products bearing the LIVE LOVE CHEER trademark.

17. Plaintiff is informed and believes, and on that basis alleges, Defendan

has misappropriated Plaintiffs federally registered trademark LIVE LOVE

CHEER for use on Defendants websites and products, which are the same a

Plaintiffs Products, without permission or consent from Plaintiff.



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DOCS 120994-000005/2032029.1

18.

Defendant is using in commerce a Live Love Cheer mark identica

in sight, sound and meaning to Plaintiffs LIVE LOVE CHEER mark.

19. Defendants products, bearing Plaintiffs misappropriated LIVE

LOVE CHEER mark, are exactly the same products as those sold by Plaintiff

namely, hoodies and t-shirts. An example of one of Defendants infringin

products, found on the website http://www.activewearapparel.com/browse-by

sport/cheer-clothing/cheer-hooded-sweatshirts.html, is pasted herein below:

20.

Upon information and belief, Defendant advertises, markets and sell

its infringing products bearing Plaintiffs LIVE LOVE CHEER mark on at leas

the following websites: Amazon.com, Zazzle.com, and Activewearapparel.com

Screenshots of Defendants infringing activities on each of these websites ar

attached hereto as Exhibit B.

21.

Defendants products, bearing Plaintiffs misappropriated LIVE

LOVE CHEER mark, are sold in close proximity to Plaintiffs Products on the

worldwide internet. This causes confusion to the consuming public as to th

source, origin and affiliation of Defendants products.

22. On July 3, 2014, Plaintiff sent a cease and desist letter to Defendan

requesting Defendant immediately cease and desist its use of LIVE LOVE

CHEER based on Plaintiffs ownership of U.S. Trademark Registration No

3,817,720 for the mark LIVE LOVE CHEER. Plaintiff informed Defendant tha

Defendants unlicensed and unpermitted use of Live Love Cheer dilutes an



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DOCS 120994-000005/2032029.1

tarnishes Plaintiffs mark and causes confusion among consumers in th

marketplace as to the source, origin, sponsorship or approval of Defendant

infringing products. Plaintiff also advised Defendant that its acts cause Plaintif

irreparable harm for which Defendant is subject to serious legal consequences

Plaintiffs July 3, 2014 letter is attached hereto as Exhibit C.

23.

On July 16, 2014 Defendant responded to Plaintiffs July 3rd letter

and refused to cease and desist its use of LIVE LOVE CHEER.

24.

On July 18, 2014 Plaintiff reiterated its request to Defendant to

immediately cease and desist all use of LIVE LOVE CHEER. Plaintiffs July 18

2014 letter is attached hereto as Exhibit D.

25. On July 22, 2014 Defendant replied to Plaintiffs July 18, 2014 lette

and repeated its refusal to stop using Plaintiffs mark.

26.

Plaintiff is informed and believes, and on that basis alleges, tha

Defendant sells and markets to the same customer base that Plaintiff targets.

27.


Defendant was aware of Plaintiffs LIVE LOVE CHEER mark prior to it

misappropriation of the same and Defendant intentionally copied Plaintiffs mark

to trade on Plaintiffs goodwill and favorable reputation among the consuming

public and, in particular, within the cheerleading community nationwide.

FIRST CLAIM FOR RELIEF

(Trademark Infringement Pursuant to 15 U.S.C. 1114)

28.

Plaintiff hereby repeats, realleges and incorporates by referenc

Paragraphs 1 through 27 of this Complaint as if fully set forth herein.

29. Plaintiff has the rights to enforce federally registered trademark LIVE

LOVE CHEER (Registration No. 3,817,720).

30. This is an action for trademark infringement arising under 15 U.S.C

1114.

31.

Defendant has used in commerce, without the permission or consent o



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DOCS 120994-000005/2032029.1

Plaintiff, t-shirts and hoodies that are identical to and/or confusingly similar t

Plaintiffs Products bearing Plaintiffs federally registered LIVE LOVE CHEER.

32. Defendant has infringed Plaintiffs federally registered LIVE LOVE

CHEER mark and created a false designation of origin by using said mark and/o

similar marks in connection with the manufacture, offer for sale, sale, distribution

promotion and/or marketing of Defendants products without the permission o

consent of Plaintiff.

33.

Defendants acts are designed to trade upon Plaintiffs reputation and

goodwill by causing confusion and mistake among consumers and the public

Defendants acts are also designed to deceive the public into believing tha

Defendants products are associated with, sponsored by, approved by and/o

condoned by Plaintiff.

34.


Defendant had actual knowledge of Plaintiffs right to enforce and use in

commerce Plaintiffs federally registered trademark LIVE LOVE CHEER, and

without the permission or consent of Plaintiff, has willfully and intentionally

violated 15 U.S.C. 1114.

35.

Defendants actions have injured Plaintiff and damaged Plaintiff in an

amount to be determined at trial.

36.

By its actions, Defendant has irreparably harmed and injured Plaintiff

Such irreparable injury will continue unless this Court preliminarily and

permanently enjoins Defendant from further violation of Plaintiffs rights, fo

which Plaintiff has no adequate remedy at law.

SECOND CLAIM FOR RELIEF

(Unfair Competition and False Designation of Origin Pursuant to 15 U.S.C.

1125(a))

37. Plaintiff hereby repeats, realleges and incorporates by referenc




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DOCS 120994-000005/2032029.1

38.

Defendant has created a false designation of origin by its multipl

unauthorized acts, namely, using in commerce, without Plaintiffs permission o

consent, the mark LIVE LOVE CHEER in connection with the manufacture

offer for sale, sale, distribution, advertisement, promotion and/or marketing o

Defendants products.

39.

Defendant committed such acts with the intent to trade upon Plaintiff

reputation and goodwill by causing confusion and mistake amongst customers and

the public, and deceiving the public into believing Defendants products ar

associated with, sponsored by, approved by and/or condoned by Plaintiff.

40. Defendant has further committed such acts with the intent to cause

confusion and mistake amongst customers and the public, deceiving the public int

believing that Defendants use of the phrase Live Love Cheer on its t-shirts an

hoodies is associated with, sponsored by, approved by and/or condoned by

Plaintiff. These acts constitute false designation of origin in violation of 15 U.S.C

1125(a).

41. Plaintiff is informed and believes, and on that basis alleges, tha

Defendant had actual knowledge of Plaintiffs ownership and prior use of it

LIVE LOVE CHEER mark, and without the permission or consent of Plaintiff

Defendant has willfully violated 15 U.S.C. 1125(a).

42.



43.







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DOCS 120994-000005/2032029.1

THIRD CLAIM FOR RELIEF

(California Statutory Trademark Infringement Pursuant to California

Business & Professions Code 14245)



45.

Plaintiff is the owner federally registered trademark LIVE LOVE

CHEER (Registration No. 3,817,720).

46.

This is an action for trademark infringement arising under Californi

Business & Professions Code 14245.

47. Defendant has used in commerce, without the permission or consent o

Plaintiff, t-shirts and hoodies bearing the logo Live Love Cheer that are identica

to and/or confusingly similar to the federally registered mark LIVE LOVE

CHEER. Defendant has infringed Plaintiffs federally registered LIVE LOVE

CHEER mark and created a false designation of origin by using said mark and/o

similar marks in connection with the manufacture, offer for sale, sale, distribution

promotion and/or marketing of Defendants products without the permission o

consent of Plaintiff. Defendants acts are designed to trade upon Plaintiff

reputation and goodwill by causing confusion and mistake among consumers and

the public. Defendants acts are also designed to deceive the public into believin

that Defendants products are associated with, sponsored by, approved by and/o

condoned by Plaintiff.

48.



49. By its actions, Defendant has irreparably harmed and injured Plaintiff




50.

Pursuant to California Business & Professions Code 14247, et seq



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DOCS 120994-000005/2032029.1

Plaintiff is entitled to injunctive relief throughout the State of California.

51. Pursuant to California Business & Professions Code 14247, et seq

Defendant may be required to pay Plaintiff up to three times its profits from, and up

to three times all damages suffered by reason of, Defendants wrongful sale, offe

for sale, or display of its t-shirts bearing the phrase Live Love Cheer.

FOURTH CLAIM FOR RELIEF

(Unfair Competition Pursuant to California Business & Professions Code

17200, et seq.)



53. The acts of Defendant described herein constitute unlawful, unfair and

fraudulent business acts and practices, in violation of California Business &

Professions Code 17200, et seq. Defendants unauthorized use of Plaintiff

Trademark, as set forth above, has caused and will continue to cause confusion

mistake and deception in that customers are likely to believe that Defendant

goods and services are associated with, connected to, affiliated with, authorized by

and endorsed and/or sponsored by Plaintiff.

54.

As a result of these acts, Defendant has received and will continue t

receive sales and profits generated from the strength of Plaintiffs success, goodwil

and consumer recognition.

55.

Plaintiff has suffered and will continue to suffer damages as a direc

result of Defendants conduct as described herein, and such damages will continu

unless the Court enjoins Defendants use of the Plaintiffs Trademark and force

Defendant to cease its copying practices.

56. As a proximate and legal result of Defendants unlawful conduct

Plaintiff has been damaged in its business relationships with its current and

prospective customers and has suffered damages in the form of lost profits, loss o

promotion and loss of goodwill.



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DOCS 120994-000005/2032029.1

57.

Defendant should be required to restore Plaintiff with any and al

profits earned as a result of its unlawful and unfair actions. Defendant should b

held accountable for all profits wrongfully obtained and provide Plaintif

appropriate restitution.

FIFTH CLAIM FOR RELIEF

(Negligent Interference With Prospective Economic Relations)

58.

Plaintiff hereby repeats, realleges and incorporates by referenc


59. This is an action for negligent interference with prospective economi

relations.

60. Plaintiff is informed and believes, and on that basis alleges, tha

Defendant has sold, offered for sale, manufactured and/or distributed products, an

advertised, marketed and promoted products that infringe Plaintiffs federally

registered trademark LIVE LOVE CHEER without the permission or consent o

Plaintiff.

61. Defendants unlawful conduct has deceived, or is likely to deceive

purchasers into believing that Plaintiffs Products and Defendants products ar

affiliated with, associated with, condoned and/or sold by Plaintiff. Defendant ha

negligently represented that its products are affiliated with Plaintiff, thereby

wrongfully and unfairly disrupting Plaintiffs business and diverting customer

from Plaintiff to Defendant.

62.

Defendants aforementioned actions constitute unfair busines

practices in violation of California Business & Professions Code 17200, et seq.

63. Defendants aforementioned actions constitute unlawful, unfair

malicious and/or fraudulent practices. As a result of Defendants actions o

negligent interference with prospective economic relations, Plaintiff has been

injured and lost money in an amount to be determined at trial.

64.




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DOCS 120994-000005/2032029.1

Plaintiff and used a false designation of origin, false or misleading description o

fact and/or false or misleading representation of fact in violation of federal and

California state law;

g. That Defendant be adjudged to have deliberately, intentionally

and willfully competed unfairly with Plaintiff and to have used a false designation

of origin, false or misleading description of fact and/or false or misleading

representation of fact in violation of federal and California state law;

h.

That Defendant and its officers, agents, employees and al

persons acting or claiming to act on its behalf under its direction or authority, b

permanently enjoined and restrained from or engaging in acts of unfair competition

with Plaintiff relating to the sale of products that display Plaintiffs federally

registered LIVE LOVE CHEER mark in any manner in the sale, promotion

advertising, manufacture, purchase and/or distribution of Defendants products;

i.

That Defendant and its officers, agents, employees and al


permanently enjoined and restrained from engaging in acts of false designatio

related to the sale of products that display Plaintiffs federally registered LIVE

LOVE CHEER mark in any manner in the sale, promotion, advertising, purchas

and/or distribution of Defendants products;

As to the Fifth Claim for Relief:

j.

That Defendant be adjudged to have intentionally and/o

negligently interfered with Plaintiffs prospective economic relations;

k. That Defendant and its officers, agents, employees and al


permanently enjoined and restrained from or engaging in acts of intentiona

interference of prospective economic relations related to the sale of products tha

display Plaintiffs federally registered LIVE LOVE CHEER mark in any manne

in the sale, promotion, advertising, manufacture, purchase and/or distribution o



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Defendants products;

l. That Defendant and its officers, agents, employees and al


permanently enjoined and restrained from or engaging in acts of negligen

interference of prospective economic relations related to the sale of products tha

display Plaintiffs federally registered LIVE LOVE CHEER mark in any manne

in the sale, promotion, advertising, manufacture, purchase and/or distribution o

Defendants products;

m. That Defendant be ordered to pay damages for intentional an

negligent interference with prospective economic relations, in an amount to b

proven at trial;

As to all Claims for Relief:

n.

For an award of costs and reasonable attorneys fees; and

o.

For all other relief the Court deems just and proper.

JURY DEMAND

Plaintiff requests a trial by jury on all issues so triable.

DATED: September 2, 2014 PROCOPIO, CORY, HARGREAVES &

SAVITCH LLP

By: s L se M. FergusonL se M. FergusonHeather A. CameronPROCOPIO, CORY, HARGREAVES& SAVITCH LLP525 B Street, Suite 2200San Diego, California 92101Telephone: 619.238.1900Facsimile: 619.235.0398

Attorneys for Plaintiff,

ZOE MARKETING,INC.


zoe marketing v. impressions - live love cheer trademark complaint

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