`
`TRADEMARK
`DOCKET NO. 24782
`
`Peter M. de Jonge
`Nathan S. Winesett
`
`THORPE NORTH & WESTERN, LLP
`8180 South 700 East, Suite 350
`Sandy, Utah 84070
`Telephone: (801) 566-6633
`Facsimile: (801) 566-0750
`
`Attomeys for Clearbra Franchising, LLC
`Opposed Mark: CLEARBRA
`U.S. Trademark Application Serial No.: 78/578,240
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Clearbra Franchising, LLC
`
`Opposer,
`
`v.
`
`Opposition No. 91/168,010
`
`Jonathan A. Tolson
`
`Applicant.
`
`
`
`PLAINTIFF’S SUBMISSION OF CIVIL PLEADINGS
`
`Opposer, Clearbra Franchising, LLC (hereinafter “Opposer”), by and through its
`
`counsel, hereby submits a copy of the Complaint filed in Case No. 2:06-CV-00439-TS-
`
`BCW in the United States District Court for the District of Utah, in connection with
`
`Opposer’s Motion to Suspend Proceedings, which was requested by the Board’s ruling of
`
`August 10, 2006 and due by August 30, 2006. Please note that no Answer to the
`
`Complaint has been filed.
`
`U.S. Pu."
`
`oa-25-zoos
`ta TMOfcI‘I'M Mail Flam D1. #72
`
`
`
`DATEDthis 99" dayof Q?“ i
`
`,2006.
`
`Respectfully submitted,
`
`eter M. de Jonge
`Nathan S. Winesett
`
`Attorneys for Opposer
`
`THORPE NORTH & WESTERN LLP
`
`8180 South 700 East, Suite 350
`Sandy, Utah 84070
`Telephone: (801)566-6633
`Facsimile: (801) 566-0750
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing
`
`was served upon Applicant by depositing a copy of the same with the United States Post
`
`Office as first class mail, postage prepaid, in an envelope addressed to:
`
`DONNA M.D. THOMAS
`
`ASTRACHAN, GUNST & THOMAS, PC.
`217 E. REDWOOD STREET, 21“ FL.
`BALTIMORE, MD 212202
`
`on this 23 day of/_’%g1§ Vi’
`
`, 2006.
`
`
`
`.59 in UNITED STATES DISTRICT
`CIVIL COVER SHEET
`W4 W ‘"04’
`I ti.
`l
`h
`d in 'iformation contained herein neither re lace nor su plement the filing and senjicc ofplea
`t"h
`J5; 44 ‘ "I
`§)fi$tli$q rgfiitfif
`aw. except as provide:
`wiocal rucli-\slol:'iiii‘L:ri1si Ti1iiirt|'orm'.:tilpproved by the Judicial Conference OIPIIIB United States in September 1974, is required or he use o tie
`cr
`0
`curt or the purpose ofinttiattnt
`lie Civil docket sheet.
`(SEE INSTRUCTIONS ON THE REVERSE OF THE FORM‘)
`__
`L(fi
`PLAHWHFFS
`" ' : ”“
`DEFENDANTS
`CLEARBRA FRANCHISING, LLC
`CLEARBRA, lNqA lB§E|MflEfipGLfiflKOBERT W.
`CROUCH.
`BY
`PU
`CL-ER
`.
`.
`.
`I I
`
`fiarford
`County ol'Restdencc ofFirst Ltstc
`efendant
`(IN U.S. PLAINTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`LAND INVOLVED.
`
`salt Lake COW“
`(b) County ofRcsidence of First Listed Plaintiff
`(EXCEPT IN U_S. PLAINTIFF CASES)
`
`NOTE:
`
`_
`
`(C) Attorney's (Firm Name, Address. and Telephone Number)
`See attached
`
`Attorneys (if K"°“11I
`
`ll. BASIS OF J URISDICTION (Place an “X" in One Box Only)
`J l
`U.S. Goveinnient
`E 3 Federal Question
`Plaintiff
`(US. Govemment Not a Party)
`
`J 2
`
`U_S. Gavennnent
`D“°'“"‘”'
`
`C] 4 Diversity
`(indicate Citizenship of Parties in llctn Ill)
`
`I". CITIZENSHIP OF PRINCIPAL PARTIES(Place an "X" in One Box for Plaintif
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF
`DEF
`A
`FTF
`DEF
`Citizen of This Slate
`I3 I
`Incorporated or Principal Place
`U 4 U 4
`U l
`of Business In This State
`Incorporated crm.t'Principal Place
`°fB”‘i“°“ 1" "”‘°"'" 5””
`
`Citizen ofAnother State
`
`CI 2
`
`D 2
`
`I3 5
`
`CI
`
`5
`
`Citizen or Subject ofa
`Forci
`:1 Country
`
`D 3
`
`Cl
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`3
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`Foreign Nation
`
`Cl
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`6
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`I3 6
`
`NATURE OF SUIT
` Place an “X" in One Box Onlv
`coxrtmcr
`
`
`
`I-'ORFEl'l‘URE.’PENALTY
`OTHER ST.«\TUTES
`
`
`Cl
`U 400 State Reapponionment
`PERSONAL l.'\'.lL'R\’
`tiI0 Agriculture
`PERSONAL INJURY
`'l
`I I0 lusuraiice
`
`Cl 4l0Antitrust
`362 Personal Injury -
`CI 620 Other Food & Drug
`CI
`CI 3l0 Airplane
`3 i120 Marine
`
`CI 430 Banks and Banking
`Med. Malpractice
`U 625 Drug Related Seizure
`U 315 Airplane Product
`3 I30 Miller Act
`Cl 450 Commerce
`0 365 Personal injury -
`of Property 2l USC 33!
`Liability
`'_l 140 Negotiable lnstruincnt
`0 460 Deportation
`Product Liability
`CI 630 Liquor Laws
`CI
`320 Assault, Libel dc
`3 I50 Recovery ofOverpayment
`U 470 Racketeer Influenced and
`U 363 Asbestos Personal
`Cl 640 RR. Jr Truck
`Slander
`&. Enforcernent ofludgttient
`Corrupt Organizations
`injury Product
`0 650 Airline Regs.
`Cl
`330 Federal Employers‘
`‘J 15! Medicare Act
`D 480 Consumer Credit
`Liability
`U 660 Occupational
`Liability
`3 [52 Recovery ofDefaulted
`D 490 Cablei'Sat TV
`PERSONAL PROPERTY
`Saf'ctyr'Health
`[3 340 Marine
`Student Loans
`CI SID Selective Service
`CI 370 Other Fraud
`0 690 Other
`U 345 Marine Product
`(Excl. Veterans)
`U 850 Secttrt'tiesiCommodities’
`I3 3?] Truth in Lending
`Liability
`3 I53 Recovery ofOverpayment
`Exchange
`El Sol HIA ([3951?)
`D 380 Other Personal
`0 710 Fair Labor Standards
`CI 350 Motor Vehicle
`of Veteran's Bcnefrts
`U 875 Customer Challenge
`U 862 Black Lung (923)
`Property Damage
`Act
`355 Motor Vehicle
`CI
`','l 160 Stockholders‘ Suits
`12 USC 3410
`Cl 863 DIWC/DIWW (-105(3))
`CI 335 Property Damage
`0 720 Labor.’Mgmt. Relations
`Product Liability
`3 I90 Other Contract
`U 890 Other Statutory Actions
`Product Liability
`D 730 LaborI‘Mgmt.Repor1ing U 864 SSED Title XVI
`Cl 360 Other Personal
`3 I95 Contract Prcitluct Liability
`D 39! Agricultural Acts
`CI 865 RSI 405(
`8.: Disclosure Act
`lniu
`3 I96 Franclusc
`CI 592 Economic Stabilization Act
`REAL PROPERH‘ -i Ct 140 Railway Labor Act
`
`Cl 893 Environmental Matters
`I3 870 Taxes (U.S. Plaintiff
`3 N0 Land Condemnation
`U 441 Voting
`D 790 Other Labor Litigation
`CI 510 Motions to Vacate
`CI 894 Energy Allocation Act
`3 220 Foreclosure
`Cl 442 Employment
`Sentence
`[3 791 Empl. Rel, Inc.
`or Defendant)
`CI 895 Freedom oflnforrnation
`3 230 Rent Lease Jr Ejectmcnt
`CI 443 Housing]
`Habeus Corpus:
`Security Act
`CI 37] lRS—Thircl Pany
`Act
`'
`'0 Torts to Land
`Accommodations
`CI 530 General
`26 USC 7609
`CI 9OOAppeaI ofFee Detcnninalio
`5 Tort Product Liability
`13
`4-54 Welfare
`D 535 Death Penalty
`Under Equal Access
`3 1'90 All Other Real Property
`D 445 Amer. wlDisal:iilities - U 540 Mandamus & Other
`to Juslicg
`Employment
`CI 550 Civil Rights
`El 950 Constitutionality of
`CI 446 Amer. w.l‘Disabilities - D 555 Prison Condition
`
`State Statutes
`Olhflf
`CI 440 Other Civil Rights
`
`V. ORIGIN '
`(Placean"X"in OneBoxOnly]
`T
`r
`d f
`.J‘\};(iipea:_to District
`9'
`Original
`D 2 Removed from
`D 3 Remanded from
`another district
`06 Multidistrict U 7 Magistrate
`U 4 Reinstatcd or D 5
`u
`e rom
`rans erre
`Procecdtn
`State Court
`s
`cit‘
`Jud merit
`A ellate Court
`Reo ened
`Liti ation
`
`
`
`
`
`C11?
`§3r]elt'£l'gt&)(Do not citejurisdictiunal statutes unless diversity):
`
`
`
`VI. CAUSE OF ACTION
`
`
`‘
`_
`_
`Briefdescriptiort o_f_cause:
`_
`_
`_
`_
`_
`trademark lntrtngement, Untatr Lompetttton, trademark Dilution
`
`CHECK YES only itdemanded in complaint:
`[3 CHECK IF THIS IS A cuss ACTION
`DEMAND 5
`UNDER F.R.C.P. 23
`n o t
`l e s s
`t h a n $500 , 0 O 0 JURY DEMAND:
`Qt Yes
`CINO
`(See instructions):
`
`
`
`BANKRUPTCY
`0 422 Appeal 28 USC 138
`
`
`U 423 Withdrawal
`
`28 USC 157
`
`
`
`
`
`Cl 820 Copyrights
`CI 830 Patent
`E 840 Trademark
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`rom
`
`
`
`
`
`
`
`
`
`VII. REQUESTED IN
`COMPLAINT:
`l/lll. RELATED CASE(S)
`IF ANY
`
`JUDGE
` %
`SIGNATURE or ATT
`or REC
`
`DOCKET NUMBER
`
`
`
`JATE
`O6/0 I/2006
`
`ton OFFICE use o.\'r.i'
`
`
`
`RI-ZCElPT#
`
`
`AMOUNT
`APPLYINGIFP
`
`Jud e Ted Stewart
`DEG? TYPE: civil
`DAIE STAHP: 06l01l2006 e 13:32:51
`cass uuuasn:
`2:o6cvoo439
`TS
`
`
`
`FILED lN UNHED STATES
`couar. DISTRICT or t[ll'illF”CT
`
`JUN"? 1. 2505
`EIIARKUS B. ZIMMER, CLERK
`_-_‘D?W17éE=R"'-
`
`Peter M. de Jonge, Utah Bar No. 7185
`Jed Hansen, Utah Bar No. 10,679
`
`THORPE NORTH & WESTERN, L.L.P.
`8180 South 700 East, Suite 350
`
`Sandy, Utah 84070-0562
`Telephone: (801) 566-6633
`Facsimile: (801) 566-0750
`
`Attorneys for Plaintiff, Clearbra Franchising, LLC.
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF UTAH, CENTRAL DIVISION
`
`
`CLEARBRA FRANCHISING, LLC, a Utah
`Limited Liability Corporation,
`Case No.
`
`COMPLAINT VVITH JURY DEMAND
`
`
`
`Plaintiff,
`
`vs.
`
`CLEARBRA, INC, a Maryland Corporation;
`JONATHAN A.TOLSON, President of
`Clearbra, Inc.; and ROBERT W. CROUCH,
`Officer of Clearbra, Inc.
`
`
` Defendants.
`
`Plaintiff Clearbra Franchising, LLC (hereinafter “Clearbra Franchising”), by and through
`
`its counsel of record, hereby files this Complaint with Jury Demand against Defendants.
`
`COMPLAINT
`
`Clearbra Franchising complains and alleges as follows:
`
`
`
`PARTIES, JURISDICTION AND VENUE
`
`1.
`
`Clearbra Franchising is a Utah limited liability corporation with its principal place
`
`ofbusiness at 452 East 500 South, Salt Lake City, Utah 84111.
`
`2.
`
`Upon information and belief, Defendant Clearbra, Inc. (hereinafter “Clearbra”) is
`
`a Maryland corporation having a principal place of business at 306 Forest Valley Drive,
`
`Forest Hill, Maryland, 21050.
`
`3.
`
`Upon information and belief, Defendant Jonathan Tolson (hereinafter “Tolson”) is
`
`president of Clearbra.
`
`4.
`
`Upon information and belief, Defendant Robert W. Crouch (hereinafter “Crouch”)
`
`is an officer ofC1earbra.
`
`5.
`
`Clearbra Franchising brings this action under the Lanham Trademark Act, Title
`
`15, United States Code §l05I, et seq, and various other Utah State and common law
`
`provisions.
`
`6.
`
`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
`
`§§1331, 1338, and 1367.
`
`7.
`
`8.
`
`Venue is proper in thisjudicial district pursuant to 28 U.S.C. §139l.
`
`Upon information and belief, this Court has specific personaljurisdiction over
`
`Defendants as they have had sufficient minimum contacts with the state of Utah and have
`
`purposefully availed themselves ofthe laws ofUtah.
`
`
`
`GENERAL ALLEGATIONS
`
`9.
`
`In June 1994, Mr. Glenn Rogers (hereinafter “Rogers”) pioneered the trademark
`
`CLEARBRA for use in connection with optically clear plastic protective coatings.
`
`10.
`
`Rogers has made continuous use of the CLEARBRA mark from 1994 until
`
`approximately August, 2005.
`
`l I.
`
`Clearbra Franchising executed an agreement with Rogers whereby Rogers
`
`conveyed any and all trademark rights he had in the mark CLEARBRA to Clearbra
`
`Franchising. A copy of said agreement is attached to this complaint as Exhibit A.
`
`12.
`
`Additionally, Mr. Dan Mahfood (hereinafter “Mahl'ood") began using the
`
`CLEARBRA mark in connection with optically clear plastic protective coatings by way
`
`of an agreement with Rogers in 1999 and has made continuous use of the CLEARBRA
`
`mark from 1999 until the present time.
`
`13.
`
`As part of Mahfood's activities he registered the domain name www.clearbra.net
`
`on September 15, 1999. Additionally, Mahfood has operated a website in connection
`
`with that domain name.
`
`14.
`
`As part ofMahfood’s website, he promoted the CLEARBRA mark using a
`
`stylized image ofthe CLEARBRA mark. An example of said image is attached to this
`
`complaint as Exhibit B.
`
`15.
`
`Mahfood also promoted the CLEARBRA mark through various television, radio,
`
`and printed advertisements.
`
`
`
`16.
`
`Clearbra Franchising executed an agreement with Mr. Dan Mahfood whereby
`
`Mahfood conveyed any and all trademark rights he had in the mark CLEARBRA to
`
`C learbra Franchising. A copy of said agreement is attached to this complaint as
`
`Exhibit C.
`
`17.
`
`Accordingly, Clearbra Franchising is the owner of all right, title, and interest in
`
`the mark CLEARBRA for use in connection with optically clear plastic protective
`
`coatings. Said right dates back to at least as early as June, 1994.
`
`18.
`
`Clearbra Franchising is presently in the business of distributing and selling
`
`optically clear plastic protective coatings, for a wide variety of uses, including protection
`
`of automobile surfaces.
`
`l9.
`
`Clearbra Franchising’s methods of product distribution are accomplished
`
`primarily through a network of distributors and dealers that promote and sell
`
`CLEARBRA brand products directly to the consumer. Clearbra Franchising’s marketing
`
`efforts include traditional print advertising, including magazines, handouts, brochures,
`
`other promotionals, and intemet—based advertising.
`
`20.
`
`On or about the summer of 2004, Mr. Brian Alexander (hereinafter “Alexander”)
`
`approached Mahfood regarding an agreement to license the mark CLEARBRA in
`
`connection with optically clear plastic protective coatings. Alexander traveled to Utah
`
`and visited Mahfood’s facility wherein he was given instruction regarding product
`
`specifications and installation procedures and protocols.
`
`
`
`21.
`
`Thereafter, Alexander agreed to license the mark CLEARBRA from Mahfood.
`
`Alexander gave Mahfood a good faith down payment as evidence of said agreement.
`
`22.
`
`Upon information and belief, Alexander was an authorized representative and/or
`
`agent of Defendants Clearbra, Tolson, and Crouch.
`
`23.
`
`Upon information and belief, Alexander, Clearbra, Tolson, and Crouch thereafter
`
`began preparing to operate as licensees of Mahfood.
`
`24.
`
`As part of those activities, Defendants registered domain names and began
`
`developing websites for use in connection with the CLEARBRA mark and associated
`
`products. Specifically Defendants registered the domain name clearbracaliforniacom on
`
`December 8, 2004 and the domain name clearbraonline.com on March 21, 2005.
`
`25.
`
`Upon information and belief, at least as early as February 28, 2005, Defendant
`
`Crouch began operating the website, www.cIearbracalifomia.com wherein he utilized the
`
`CLEARBRA mark in connection with optically clear plastic protective coatings.
`
`26.
`
`Additionally, Defendant Crouch sent e-mail correspondence to Mahfood on
`
`February 28, 2005 regarding how the website, wwwclearbracalifomia.com would
`
`perform.
`
`In that e-mail correspondence, Crouch represented himself as an account
`
`executive for Clearbra. Crouch utilized an exact copy of Mahfood’s CLEARBRA mark
`
`and accompanying logo as part of that correspondence. See e-mail to Mahfood from
`
`Crouch attached to this complaint as Exhibit D.
`
`27.
`
`Alexander also sent e-mail correspondence to Mahfood on February 28, 2005
`
`regarding proposed cost sheets associated with use of the CLEARBRA mark and resell of
`
`5
`
`
`
`the products used in connection with the mark. See e-mail and proposed cost sheet to
`
`Mahfood from Alexander attached as Exhibit E.
`
`28.
`
`Upon infomiation and belief, Tolson and Crouch thereafter chose to disregard
`
`their license agreement with Mahfood. As a result of Tolson and Crouch’s activities,
`
`Alexander disassociated himself with Defendants.
`
`29.
`
`On March 2, 2005, Defendant Tolson filed an intent-to-use application with the
`
`United States Patent and Trademark Office for the mark CLEARBRA for use in
`
`connection with automotive paint protective urethane film.
`
`30.
`
`Upon information and belief, on March 18, 2005 Defendant Tolson caused
`
`Defendant Clearbra to be registered as a corporation in Maryland. Thereafter, Defendant
`
`Crouch also registered Defendant Clearbra in the state of California as a Maryland
`
`corporation on June 20, 2005.
`
`31.
`
`Defendants are presently in the business of distributing, and/or selling optically
`
`clear plastic protective coatings. As such, Defendants are in direct competition with
`
`Clearbra Franchising.
`
`32.
`
`Defendants are presently making use of the mark CLEARBRA in connection with
`
`their goods and services. A copy of the home page from Defendants’ website
`
`www.clearbraonline.com is attached to this complaint as Exhibit F.
`
`33.
`
`Defendants’ use ofthe CLEARBRA mark is almost an exact duplication of
`
`Plaintiff’s use ofthe CLEARBRA mark.
`
`
`
`34.
`
`In Plaintiff’s intemet advertisements utilizing the mark CLEARBRA, the word
`
`“clear” is colored blue and the word “bra” is colored black. See Plaintiff's webpage
`
`attached as Exhibit B.
`
`35.
`
`Defendants’ intemet advertisements similarly utilize the mark CLEARBRA,
`
`wherein the word “clear" is colored blue and the word “bra” is colored black. See
`
`advertisement from Defendants’ webpage attached to this complaint as Exhibit F.
`
`36.
`
`Moreover, Defendants use a font for the mark CLEARBRA that is identical to
`
`Plaintiffs font in its use ofthe mark CLEARBRA. See Exhibit B and Exhibit F.
`
`37.
`
`Plainti ff’ s use of the mark is underscored by a line which begins black and
`
`gradually becomes clear. See Exhibit B.
`
`38.
`
`Defendants’ use ofthe CLEARBRA mark is similarly underscored by a line
`
`which begins clear and gradually becomes dark blue. See Exhibit F.
`
`39.
`
`Plaintiffs use of the mark is accompanied by the trademark “Clearly The Best
`
`Protection” located directed below and centered below the underscoring noted above.
`
`See Exhibit B.
`
`40.
`
`Defendants’ use of the mark is accompanied by the trademark “It’s Ultimate Paint
`
`Protection” which is located directed below and centered below the underscoring noted
`
`above. See Exhibit F.
`
`41.
`
`Plaintiffs use ofthe CLEARBRA mark utilizes a rock like object bouncing offof
`
`the letter “C” ofthe mark. See Exhibit B.
`
`
`
`42.
`
`Defendants similarly use the CLEARBRA mark wherein a rock like object is
`
`bouncing off ofthe letter “a" ofthe mark. See Exhibit F.
`
`43.
`
`Upon infonnation and belief, Defendant's Tolson and Crouch authorized and
`
`approved use of the trademarks noted in the preceding paragraphs for use in connection
`
`with Defendants’ goods and services.
`
`44.
`
`Defendants’ use of marks identical to and confusingly similar to Clearbra
`
`Franchising’s trademarks, as described herein, is likely to cause significant confusion in
`
`the marketplace.
`
`45.
`
`Defendants’ use ofa mark identical to and confusingly similar to Clearbra
`
`Franchising’s trademark occurred with full and complete knowledge of Clearbra
`
`Franchising’s trademark rights. Accordingly, their infringements are willful and
`
`intentional.
`
`46.
`
`Defendants’ business operations have centered on parroting Clearbra
`
`Franchising’s intellectual property rights in an effort to misappropriate and unfairly
`
`capitalize on Clearbra Franchising’s goodwill in the marketplace.
`
`47.
`
`So long as Defendants continue their unlawful use of Clearbra Franchising’s
`
`trademark, Plaintiffwill continue to suffer irreparable hann that will not be fully
`
`compensable by money damages.
`
`
`
`FIRST CAUSE OF‘ ACTION
`
`[CLEARBRA Trademark Infringement, 15 U.S.C. §]1l4§1 )1
`
`48.
`
`C learbra Franchising hereby incorporates by this reference each and every
`
`allegation contained in paragraphs 1 through 47 as if set forth fully herein.
`
`49.
`
`The goods and services manufactured, offered, and sold by the Defendants are
`
`virtually identical to Clearbra Franchising’s goods and services. The mark used by the
`
`Defendants is identical to or a colorable imitation of Clearbra Franchising’s mark.
`
`In
`
`light of Clearbra Franchising’s CLEARBRA trademark, Defendants’ use of the mark
`
`CLEARBRA in connection with its goods and services is likely to cause confusion, or to
`
`cause mistake, or to deceive consumers.
`
`50.
`
`Through the above-referenced activities, Defendants have infringed Clearbra
`
`Franchising’s CLEARBRA mark under the Lanham Act, 15 U.S.C. §l 114(1), and under
`
`the common law.
`
`51.
`
`Clearbra Franchising has suffered actual damages as a result of Defendants’
`
`trademark infringement in an amount to be proven at trial. Additionally, the harm to
`
`Clearbra Franchising arising from the acts of Defendants is not fully compensable by
`
`money damages. Clearbra Franchising has suffered, and continues to suffer, irreparable
`
`harm which has no adequate remedy at law and which will continue unless Defendants’
`
`conduct is preliminarily and permanently enjoined under 15 U.S. C. §I 116. Under 15
`
`U.S.C. §l 1 17, Clearbra Franchising is entitled to Defendants’ profits, any damages
`
`sustained by Clearbra Franchising, and the costs of this action.
`
`
`
`52.
`
`Since Defendants had specific knowledge of Clearbra Franchising’s trademark
`
`rights, their continued unauthorized use of Clearbra Franchising’s trademark is willful
`
`and intentional. As a result, Clearbra Franchising is further entitled to treble damages and
`
`an award of attorneys’ fees.
`
`SECOND CAUSE OF ACTION
`[IT’S ULTIMATE VEHICLE PROTECTION Trademark Infringement, 15 U.S.C.
`§l I 1411 [1
`
`53.
`
`Clearbra Franchising hereby incorporates by this reference each and every
`
`allegation contained in paragraphs 1 through 52 as if set forth fully herein.
`
`54.
`
`The goods and services manufactured, offered, and sold by the Defendants are
`
`virtually identical to Clearbra Franchising’s goods and services. The mark used by the
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`Defendants is identical to or a colorable imitation of Clearbra Franchising’s mark.
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`In
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`light of Clearbra Franchising’s trademark, IT’S ULTIMATE VEHICLE PROTECTION,
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`Defendants’ use of the mark IT’S ULTIMATE PAINT PROTECTION in connection with
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`its goods and services is likely to cause confusion, or to cause mistake, or to deceive
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`consumers.
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`55.
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`Through the above-referenced activities, Defendants have infringed Clearbra
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`Franchising’s mark under the Lanham Act, 15 U.S.C. §l114(1), and under the common
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`law.
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`56.
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`Clearbra Franchising has suffered actual damages as a result of Defendants’
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`trademark infringement in an amount to be proven at trial. Additionally, the harm to
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`10
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`
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`Clearbra Franchising arising from the acts of Defendants is not fully compensable by
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`money damages. Clearbra Franchising has suffered, and continues to suffer, irreparable
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`harm which has no adequate remedy at law and which will continue unless Defendants’
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`conduct is preliminarily and permanently enjoined under 15 U.S. C. §l1l6. Under 15
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`U.S.C. §l117, Clearbra Franchising is entitled to Defendants’ profits, any damages
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`sustained by Clearbra Franchising, and the costs of this action.
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`57.
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`Since Defendants had specific knowledge of C learbra Franchising’s trademark
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`rights, their continued unauthorized use of Clearbra Franchising’s trademark is willful
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`and intentional. As a result, Clearbra Franchising is further entitled to treble damages and
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`an award of attorneys’ fees.
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`THIRD CAUSE OF ACTION
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`(Unfair Competition, 15 U.S.C. §1 125(a)(1)(A))
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`58.
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`Clearbra Franchising hereby incorporates by this reference each and every
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`allegation contained in paragraphs 1 through 52 as if set forth fully herein.
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`59.
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`Defendants have used in interstate commerce the word marks CLEARBRA, IT’S
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`ULTIMATE VEHICLE PROTECTION and other similar terms in connection with
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`optically clear plastic protective coatings. These uses are likely to cause confusion, to
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`cause mistake, or to deceive as to the affiliation, connection, association, origin,
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`sponsorship, or approval of their goods, services, and commercial activities in light of
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`Clearbra Franchising’s trademark.
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`ll
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`
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`60.
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`By engaging in the activities described in this Complaint, Defendants have
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`engaged in unfair competition under 15 U.S.C. §l l25(a)(l)(A) and under the common
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`law.
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`6].
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`Clearbra Franchising has suffered actual damages as a result ofDefendants’ unfair
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`competition in an amount to be proven at trial. Additionally, the harm to Clearbra
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`Franchising arising from Defendants’ acts is not fully eompensable by money damages.
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`Clearbra Franchising has suffered, and continues to suffer, irreparable harm which has no
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`adequate remedy at law and which will continue unless Defendants’ conduct is enjoined.
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`Under 15 U.S.C. §l 1 16, Clearbra Franchising is entitled to a preliminary and permanent
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`injunction enjoining Defendants’ use ofthe marks CLEARBRA and IT’S ULTIMATE
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`VEHICLE PROTECTION and confusingly similar variations thereof. Additionally,
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`Clearbra Franchising is entitled to an award of its damages, the Defendants’ profits, and
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`the costs ofthe action under 15 U.S.C. §l l 17.
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`62.
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`Since Defendants had specific knowledge of Clearbra Franchising’s trademark
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`rights, their continued use of Clearbra Franchising’s trademarks is willful and intentional.
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`As a result, Clearbra Franchising is further entitled to treble damages and attorneys’ fees.
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`FOURTH CAUSE OF ACTION
`(Unfair Competition, Utah Code Ann. §13-5a-103 and/or §13-5-14 and Utah Common Law)
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`63.
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`Clearbra Franchising hereby incorporates by this reference each and every
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`allegation contained in paragraphs 1 through 57 as if set forth fully herein.
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`l2
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`
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`64.
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`Defendants have engaged in unfair methods of competition by intentionally using
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`C learbra Franchising’s mark, and other terms confusingly similar thereto, in connection
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`with optically clear plastic protective coatings and related materials and services in a
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`manner that is likely to cause confusion, to cause mistake, or to deceive as to the
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`affiliation, connection, association, origin, sponsorship, or approval of their goods,
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`services, and commercial activities in light of Clearbra Franchising’s trademark.
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`65.
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`Particularly, Defendants have purposely used Clearbra Franchising’s trademarks
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`in advertising their goods and services in order to confuse and/or deceive consumers as to
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`the source of the goods and unfairly benefit from Clearbra Franchising’s goodwill.
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`Defendants have specifically targeted the goodwill associated with Clearbra Franchising’s
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`trademark and expressly copied its trademark. Clearbra Franchising has been
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`significantly damaged by these activities in an amount to be proven at trial.
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`66.
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`Through these activities, Defendants have engaged in unfair competition under
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`Utah Code Ann. §l3-53-103 and/or §l 3-5-14 and under Utah common law. Under §13-
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`5a-103, Clearbra Franchising is entitled to its actual damages, costs and attorneys fees,
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`and punitive damages.
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`67.
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`Under §l3-5-14, Clearbra Franchising is entitled to injunctive relief and the
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`greater of $2,000 or three times the amount of actual damages sustained plus court costs.
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`13
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`
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`FIFTH CAUSE OF ACTION
`(Trademark Dilution, 15 U.S.C. §l ]25(c))
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`68.
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`Plaintiff hereby incorporates by this reference each and every allegation contained
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`in paragraphs 1 through 62 as if set forth fully herein.
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`69.
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`Due to its long, extensive, and exclusive use by Plaintiff and its wide recognition
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`in the industry, the CLEARBRA mark has become famous, as that term is used in the
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`Lanham Trademark Act.
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`70.
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`Through the above referenced activities, Defendants have lessened the capacity
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`of Plaintiff to distinguish it’s products and services from those of others and has diluted
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`the distinctive quality ofPlaintiff’s marks under the Lanham Act, 15 U.S.C. §l l25(c).
`71.
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`Plaintiff has suffered, and continues to suffer irreparable harm which will
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`continue unless Defendants’ trademark dilution is enjoined as provided pursuant to 15
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`U.S.C. §l 125(c)(1).
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`72.
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`Despite the fact that Defendants had specific knowledge of Plaintiff’s trademark
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`rights, they willfully intended to trade on Plaintiffs reputation and cause dilution of
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`Plaintiff’s famous trademarks. Therefore, Plaintiff is further entitled to an award of its
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`damages, the Defendants’ profits, and the costs of the action as provided under 15 U.S.C.
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`§1125(c)(2) and §l 117. Plaintiff has suffered actual damages as a result of Defendant’s
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`trademark dilution in an amount to be proven at trial. Plaintiff is also entitled to an award
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`of enhanced damages and attorneys’ fees due to the exceptional nature of the
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`infringements.
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`14
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`
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`SIXTH CAUSE OF ACTION
`(Utah Truth in Advertising, Utah Code Ann. §l3-lla-4)
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`73.
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`Plaintiff hereby incorporates by this reference each and every allegation
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`contained in paragraphs 1 through 67 as ifset fonh fully herein.
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`74.
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`In the course of Defendants’ business, Defendants have caused a likelihood of
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`confusion or of misunderstanding as to affiliation, connection, association with, or
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`certification by Plaintiffs.
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`75.
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`Plaintiff has suffered significant harm as a result of Defendants’ business
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`practices.
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`76.
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`Accordingly, Plaintiff is entitled to an injunction against Defendants for their
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`deceptive trade practices.
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`77.
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`In addition to injunctive relief, Plaintiff is entitled to recover from Defendants
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`the amount of actual damages sustained or $2,000 whichever is greater.
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`78.
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`Moreover, Plaintiff is entitled to recovery of its attomey’s fees.
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`WHEREFORE, it is respectfully requested that the court enterjudgment in favor of
`Clearbra Franchising as follows:
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`15
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`
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`B. That the Court enter judgment that Defendants have infringed Clearbra Franchising’s
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`CLEARBRA trademark under 15 U.S.C. §1 125(a)(1)(A) and the common law.
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`C. That the Court enter judgment that Defendants have infringed Clearbra Franchising’s
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`IT’S ULTHVIATE PAINT PROTECTION trademark under 15 U.S.C. §1125(a)(I)(A) and the
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`common law.
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`D. That the Court enterjudgment that Defendants have competed unfairly pursuant to 15
`
`U.S.C. §1125(a) and the common law.
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`E. That the Court enter judgment that Defendants have competed unfairly under Utah
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`Code Ann. §13~5a-103 and §l3-5-I4 and Utah common law.
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`F. That the Court enter judgment that Defendants have diluted Clearbra Frai1chising’s
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`CLEARBRA trademark under 15 U.S.C. §l l25(c).
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`G. That the Court enter judgment that Defendants have conducted deceptive trade
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`practices under Utah Code Ann. §13-I la-3.
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`H. That the Court preliminarily and permanently enjoin Defendants from using Clearbra
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`Franchising’s marks identified herein and any other marks, word, term, name, symbol, or device
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`that is confusingly similar to the mark in connection with its goods and services.
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`I. That Defendants be ordered to file with this Court and serve on Clearbra Franchising
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`within thirty (30) days after service on Defendants of the injunction granted herein, or such
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`extended period as the Court may direct, a report in writing, under oath, setting forth in detail the
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`manner and form in which Defendants have complied with the injunction and order of the Court.
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`16
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`
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`J. That Defendants jointly and severally be ordered to pay damages to Clearbra
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`Franchising in an amount to be determined by this Court, but not less than $500,000.
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`K. That Defendants be ordered to pay their profits to Clearbra Franchising in an amount
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`to be determined by this Court.
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`L. That Defendants jointly and severally be ordered to pay the costs of this action
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`pursuant to the Lanham Act.
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`M. That Defendants jointly and severally be ordered to pay Clearbra Franchising’s
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`attomeys’ fees for this action pursuant to the Lanham Act.
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`N. That Defendants jointly and severally be required to pay prejudgment and post-
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`judgment interest until such awards are paid.
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`0. That Clearbra Franchising has such other and further relief as shall seem just and
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`proper to the Court.
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`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Clearbra Franchising
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`hereby demands a jury trial on all claims and issues so triable.
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`DATED this
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`[
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`day of.Iune, 2006.
`
`eter M. de Jonge
`Jed H. Hansen
`
`THORPE NORTH & WESTERN LLP
`8180 South 700 East, Suite 350
`Sandy, Utah 84070-0562
`Telephone: (801) 566-6633
`Facsimile: (801) 566-0750
`
`17
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`
`
`EXHIBIT A
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`
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`ACKNOWLEDGEMENT OF TRADEMARK AGREEMENT
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`THIS AGREEMENT is entered into by and between Glen Rogers, individually and
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`Ricochet Protective Films,
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`Inc.
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`(hereinafier collectively referred to as ASSIGNOR), a
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`corporation existing under the laws Canada, having a former principal place of business in 109
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`Fisher Street Okotoks, Alberta, Canada, and Clearbra Franchising, LLC., (hereinafier referred
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`to as “ASSIGNEE”), a limited liability company duly organized and existing under the laws of
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`the State of Utah, having a principal business office at 452 East 500 South, Salt Lake City, Utah
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`WHEREAS, ASSIGNOR acknowledges that it has all domestic and international right,
`title and interest under common law, any state, federal and international law, in and to the mark
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`CLEARBRA (hereinafter referred to as the “Mark”).
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`WHEREAS, ASSIGNOR desires to transfer all domestic and international right, title and
`interest under common law, any state,
`federal and international
`law,
`in and to the mark
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`CLEARBRA to ASSIGNEE.
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`WHEREAS, ASSIGNEE desires to acquire any right, title and interest in and to the
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`Mark ASSIGNOR may hold in and to the Mark.
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`IT IS THEREFORE AGREED as follows:
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`1. . In consideration of fifleen thousand dollars ($15,000) and other
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`good and valuable consideration paid to the ASSIGNOR by the ASSIGNEE, the receipt and
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`sufficiency of which is hereby acknowledged, THE ASSIGNOR HEREBY ASSIGNS TO THE
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`ASSIGNEE any and all right, title and interest which it may hold in and to the Mark, including,
`
`but not limited to, any existing or future registrations, any rights acquired through common law,
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`statutory law,
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`international
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`law, and/or treaty together with any goodwill of the business
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`symbolized by and associated with the Mark.
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`ATTORNEY DOCKET NO. 24783
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`
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`2. ENTIRE AGREEMENT: This Agreement constitutes the entire understanding and
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`agreement between the Parties and supersedes all prior agreements,
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`representations or
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`understandings between the Parties relating to the ownership of the Mark. All preceding
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`agreements relating to the ownership of the Mark, whether written or oral, are hereb