Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA200036
`ESTTA Tracking number:
`03/21/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91183102
`Plaintiff
`Bridgepoint Education, Inc.
`Jon E. Maki
`Sheppard, Mullin, Richter & Hampton LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`UNITED STATES
`jmaki@sheppardmullin.com, nlee@sheppardmullin.com,
`jchernila@sheppardmullin.com
`Motion to Suspend for Civil Action
`Jon E. Maki
`jmaki@sheppardmullin.com, nlee@sheppardmullin.com,
`jchernila@sheppardmullin.com
`/jem/
`03/21/2008
`91183102 Req to Suspend.pdf ( 4 pages )(188702 bytes )
`91183102 Exh A to Req to Suspend.pdf ( 21 pages )(1106905 bytes )
`91183102 Exh B to Req to Suspend.pdf ( 22 pages )(1224694 bytes )
`91183102 Certs of Service.pdf ( 2 pages )(60742 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADELMARK TRIAL AND APPEAL BOARD
`
`Bridgepoint Education, Inc,
`21 Delaware Corporation,
`
`Opposer,
`
`I
`
`"~
`
`Professional Career Development Institute,
`LLC, a Georgia Corporation,
`
`Applicant.
`
`OPPOSITION NO; 91183102
`
`REQUEST TO SUSPEND OPPOSITION
`
`PROCEEDINGS
`
`In re Application of Professional Career Development Institute, LLC
`
`Serial No:
`Filed:
`Trademark:
`
`78/862,130
`April 14, 2006
`ASHWORTH UNIVERSITY
`
`Filing Basis:
`Published:
`International Class:
`
`1B [Intent to use]
`January 22, 2008
`41
`
`Goods:
`
`Educational services, namely, providing distance learning instruction,
`curriculum and courses at the college and graduate levels.
`
`Bridgepoint Education, Inc. (“0ppo5er”) files this Request to Suspend the above-
`
`eaptioned Opposition Proceedings pending disposition of court litigation, concurrently with the
`
`filing of its Notice of Opposition to the application of Professional Career Development Institute,
`
`LLC, a Georgia corporation (“AppZz'ccmz”), for the mark ASHWURTH IVERSITY.
`
`Opposer tiled its Notice of Opposition so that no registration be issued thereon to
`
`Applicant because Opposer believes that it will be damaged by registration ofApplicant’s mark
`
`Wfll-\?»’EfifS'l‘:-f)?\‘E\2ll,,l \4(){3'?46559.3
`
`‘1 '
`
`

`
`Bridgepoint Education. hie.
`l<’.eqt:est to Suspend 'I‘rademarl< Opposition Proceetliiigs
`ASH\‘%’()RTH UNI\’ERSlTY; Serial No. fiifgfill 30.
`
`ASHWORTH UNIVERSITY in connection with “educational services, namely, providing
`
`distance teaming instruction, ctirriculum and courses at the college and graduate levels.”
`
`Opposer, however, files this Request for Suspension of the Opposition Proceedings as there is
`
`currently pending civil litigation between the same parties involving related issues with the same
`
`marks in the Federal courts.
`
`On November 20, 2007, Opposer filed a Complaint in the United States District Court,
`
`Southern District of California, Case No. 07-cv—0222 IEG (BLM), seeking monetary damages
`
`and inj unctive relief for the infringement of Bridgepoint’s federally-registered trademark,
`
`ASHFORD UNIVERSITY®, by Applicant through Applicant’s unfairly competitive and
`
`infringing use of the confusingly similar name, ASHWORTH UNIVERSITY (hereinafter
`
`referred to as the “Civil Action”). In the Civil Action, Opposer brought the following three
`
`claims against Applicant: (1) Federal trademark infringement; (2) Federal unfair competition
`
`and false designation of origin; and (3) Unfair competition and false designation of origin
`
`pursuant to California Business and Professions Code sections l720O and 17500. Attached
`
`hereto as Exhibit A is a true and correct copy of the Complaint filed by Opposer in the Civil
`
`Action.
`
`On January 10, 2008, Applicant filed an Answer to Opposer’s Complaint and additionally
`
`filed a Counter-Claim against Opposer. Applicants Counter-claim involved a similar set of facts
`
`and contained four claims against Applicant: ( l) Federal trademark infringement; (2) Federal
`
`unfair competition and false designation of origin; (3) Unfair competition and false designation
`
`of origin pursuant to California Business and Professions Code sections l720O and l7S00; and
`
`WCWZ-¥’v'l,ES’l”:(>:’\33\«Il,lé4Of§7465§‘3.3
`
`1-
`
`

`
`Bridgepoint Eidecation, Inc.
`Request to Susperid Trademarlt Opposition Proceedings
`ASHWORTH {%;‘\‘IVERSITY; Serial Twin. 7S5So2,l3(}.
`
`{4} Cancellation of Opposer’s federally-registered trademark, ASHFORD UNIiV'ERSITY’5§?.
`
`Attached hereto as Exhibit B is a true and correct copy of Applicants Answer and Cross-Claim
`
`filed in the Civil Litigation- On March E8, 2008, the parties conducted an Earl}; Neutral
`
`Evaluation Conference before the Magistrate Judge assigned to the Civil Action, however, no
`
`settlement was reached. Accordingly, discovery will commence and the case will move forward
`
`immediately.
`
`As evidenced by the Complaint and Cross~Clairn, the Civil Action involves the identical
`
`parties and issues and, therefore, will have a bearing upon the rights of the parties in this
`
`administrative case. Pursuant to The Trademark Board Manual, the Board has the discretion to
`
`“suspend proceedings in the case before it if the final determination of the other proceeding will
`
`have a bearing on the issues before the Board.” See T.B.M.P. 5 l0.02(a); T.M.R.P. 2.117(3); see
`
`also Wh0pper~Burger, Inc. v. Burger King Corp, 171 U.S.P.Q. 805 (T.T.A.B. 1971); General
`
`Motors Corp. v. Cadillac Club Fashions Inc, 22 U.S.P.Q.2d 1933 (TTAB 1992).
`
`In this case, the parties to the instant opposition (i.e., Bridgepoint Education, Inc. and
`
`Professional Career Development Institute, LLC) are the identical parties to the Civil Action.
`
`Further, because the issues under consideration in the Civil Action include trademark
`
`infringement; false designation of origin; and dilution, all with regard to Opposer’s asserted
`
`ASHVVORTH UNIVERSITY mark, the decision in the Civil Action may include a
`
`determination of Opposer’s rights thereto. Any such determination of Opposefs rights to its
`
`asserted mark in the Civil Action will have a bearing on the issues before the Board. Moreover,
`
`to the extent that a civil action in a Federal district court involves issues in common with those in
`
`\‘v"(}2-\VIiSil‘:6NM Ll ‘:~‘1(}{}74ti5§‘).3
`
`-3*
`
`

`
`Bridgepoint Iiclocaticin, inc.
`Request to Suspend 'l‘radcin:3r§< Opposition Proceedings
`ASHWORTH I,?NI\-‘KRSITY; Serial No. 78§8tjs2,13{}i
`
`a proceeding before the Board, the decision of the Federai district court is binding upon the
`
`parties before the Board, while the decision of the Board with respect thereto is not binding upon
`
`the court. See, e.g., Goya Foods Inc. 13. Tropicwza Pf‘0(-3’l£Cf.S‘ Inc, 846 F.2d 848, 6 U.S.P.Q.2d
`
`1950 (2d Cir. I988); xltnericczn Bakeries Co. 1?. Pan-O-Gold Baking Co, 650 F Supp. 563, 2
`
`U.S.P.Q.2d 1208(1). Minn. 1986).
`
`In the interest ofj udicial economy and consistent with the Board’s inherent authority to
`
`regulate its own proceedings to avoid duplicating the effort of the court and the possibility of
`
`reaching an inconsistent conclusion, Opposer, therefore respectfully requests the Board to
`
`suspend the Opposition Proceedings for the foregoing reasons.
`
`DATED: March 20, 2008
`
`Respectfully submitted,
`
`By
`
`/Ion E. Maki/
`JON E. MAKI
`
`jrnaki@sheppardrnullin.corn
`
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`
`12275 El Camino Real, Suite 200
`
`San Diego, California 92130
`Main Teiephone: 858-720-8900
`Main Facsimile: 858-509-3690
`
`Direct Telephone: 858-720-8962
`
`Attorneys for Opposer
`BRIDGEPOINT EDUCATION, INC.
`
`\3¢'02-WEiS'I‘:(>N?VII,,l3400746559.}
`
`‘4"
`
`

`
`EXHIBIT A
`
`Bridgepoinfs Request to Suspend Opposition Proceedings
`Bridgepoint Education, Inc. V. Professional Career Deveiopment, LLC
`Serial No. 78f862/.130
`Sheppard Mullin Richter & Hampton LLP for Opposer, Bfidgepoint
`
`

`
`fase 3:O7~cv~O222 — ~BLM Documenfl
`
`Filed 11/2800?’
`
`Page 1 of 20
`
`AMAR L. THAKUR, CAL. BAR NO. 194025
`ION E. MAKI, CAL. BAR NO. 199958
`C
`CRYSTINA COATS, CAL BAR NO. 234301
`cmax. U.S.D!ST§.%CT
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP soumsava ossmci or Cfi.L$?f.‘«%‘.N§.%
`A Limited Liability Partnership
`Inciudin Professional Corporations
`12275 E Camino Real, Suite 200
`San Diego, California 92130
`Telephone:
`858-720-8900
`Facsimile:
`858-509-3691
`Email: athal(ur@sheggardmullin.com
`'mal<i
`she
`ardmullincom
`ccoats
`she
`ardmullincom
`
`5.“ W {351Pl31’v
`
`Attorneys for Plaintiffs
`Bridgepoint Education, Inc.’
`
`.
`
`1..-A
`
`S\OOO-~}C3‘\<Jt-I12-bétx)
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF C15? 1
`BRIDGEPOINT EDUCATION, INC.,
`CASE NO.
`
`‘
`
`r
`
`Plaintiff,
`
`v.
`
`PROFESSIONAL CAREER
`DEVELOPMENT INSTITUTE, LLC, and
`DOES 1-10, inclusive,
`
`Defendants.
`
`COMPLAINT FOR DAMAGES AND
`INJUNCTIVE RELIEF FOR:
`.
`A
`
`(1) FEDERAL TRADEMARK
`INFRINGEMENT [15 U.S.C. § 1114(1)];
`
`(2) FEDERAL UNFAIR COMPETITION
`AND FALSE DESIGNATION OF ORIGIN
`[15 U.S.C. § 1125]; and
`»
`'
`
`(3) UNFAIR COMPETITION AND
`FALSE DESIGNATION OF ORIGIN '
`{California Business & Professions Code §§
`17200 and 17500].
`
`REQUEST FOR JURY TRIAL.
`
`ORIGINAL
`
`OF»
`
`
`W02-W'EST:6JEM1\t30OS14l 18.3
`
`COMPLAINT
`__..._..._.......__....__..._._........._.J
`
`

`
`'
`
`'
`
`[Ease 3:07-cv-02226-BLM Document 1
`
`Filed 11/2%O{)7
`
`Page 2 of20
`
`I.
`
`INTRODUCTION
`
`This Complaint seeks monetary damages and injunctive relief for the
`1.
`infringement of Bridgepoint Education 1nc.'s ("Plaintifi" or "Bridgepoint") federally
`registered trademark, "Ashford University," by Professional Career Development
`
`Institute, LLC ("Defendant“ or "PCDI") through its unfairly competitive use of the
`
`confusingly similar name "Ashworth University." The purpose of this Complaint is to
`
`prevent Defendant from continuing to infringe and wrongfully profit from its use of its
`
`1
`
`2
`
`3 4
`
`S
`6
`
`7
`
`8
`
`9
`
`101
`
`confusingly similar name in connection with the sale of related goods andservices, as
`
`11 well as Defendant's intentional and unfairly competitive association between itself and
`12
`Plaintiff.
`
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`19
`
`20
`
`21
`
`22
`
`23
`24
`
`25
`
`II.
`
`JURISDICTION AND ‘VENUE
`
`C
`
`2.
`
`This Southern District of California has subject matter jurisdiction
`
`over this matter pursuant to: (1) 28 U.S.C. § 1331, as this action arises out of the laws of
`the United States of America; (2) 15 U.S.C. § 1121, as this action involves claims under
`
`the Lanham Act of 1946, as amended, 15 U.S.C. § 1051 et seq.; and (3) 28 U.S.C.
`
`§ 1338(a) and (b), as this action arises in part under an Act of Congress relating to
`
`trademarks and involves a substantial and related claim of unfair competitionruncler
`
`federal law. This Court has supplemental jurisdiction over the third claim pursuant to
`28 U.S.C. § 1367 because they are so related to the first and second claims for relief that
`
`they form part of the same case or controversy under Article 111 of the United States
`
`26 Constitution. The matter in controversy exceeds, exclusive of interest and costs, the sum
`
`of seventy-five thousand dollars.
`
`27
`
`28
`
`W02-WEST:6IEMl\4()G514l 18.3
`
`-1-
`
`V
`
`»
`
`COMPLAINT
`
`l
`
`I
`
`

`
`ase 3:07—cv—02222‘BLM Document 1
`
`D Filed it/2%OO7
`
`Page 3 of 20
`
`3.
`
`This Court has personal jurisdiction over Defendant in this action and
`
`venue is proper in this judicial district because, as alleged below: (a) Defendant engages
`
`in substantial business within this forum amounting to sufficient minimum contacts,
`
`including, but not limited to, offering its offending goods and services in California and in
`
`this judicial district; (b) the harm caused to Plaintiff by the acts and omissions of
`
`Defendant were targeted at Plaintiff and designed to impact Plaintiff; and (c) a substantial
`
`part of the acts or omissions giving rise to the asserted claims occurred or had effects in
`
`this judicial district. Defendant has infringed Plaintiffs trademark and unfairly competed
`
`with Plaintiff via advertisements, containing the confusingly similar name "Ashworth
`
`University," on television and the Internet as well as through Defendants web’ sites,
`
`2
`including www.ashworthuniVersity.tv, www.ashworthuniversity.edu,
`www.ashworthuniversity.com, www.ashworthuni\tersity.net, www.ashwo1thuniversity.us,
`
`www.ashworthuniversity.info, and www.ashworthuniversity.biz, and otherwise, in this
`
`2 judicial district and, on information and belief, in every‘jurisdiction of the United States.
`
`111.
`
`PARTY ALLEGATIONS
`
`4.
`
`Plaintiff Bridgepoint is a corporation duly organized and existing
`
`under the laws of the State of Delaware, and has its principal place of business at 13500
`
`Evening Creek Drive, Suite 600, San Diego, CA 92128.
`
`5.
`
`On information and belief, Defendant PCDI is a limited liability
`
`corporationtduly organized and existing under the laws of the State of Georgia, and has its
`
`principal place of business located at 430 Technology Parkway, Norcross, Georgia 30092.
`
`7...:
`
`S\.DOO\}O\Llt-$>-Uétx)
`
`ll
`
`12
`
`l3
`
`14
`
`15
`
`16
`
`17
`
`18
`
`s19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`W02-WESTHSJEM l\-4605 MI 18.3
`
`-2-
`
`
`
`COMPLAINT
`
`
`

`
`ase 3:07-cv-0222 - -BLM Document 1
`
`Filed 11/2800?
`
`Page 4 of 20
`
`6.
`
`Plaintiff does not know the true names and capacities, whether
`
`individuals, corporations, partnerships, joint ventures, or otherwise of defendant DOES P
`
`1 1-10, inclusive. Plaintiff is informed and believes, and on that basis alleges, that each
`
`fictitious defendant was in some way responsible for, participated in, or contributed to the
`niattersand things ofwhich Plaintiff complains, and in some fashion, has legal
`responsibility. When the exact nature and identity of such fictitious defendants or
`
`Defendant's responsibility for participation and contribution to the matters and things
`alleged in this Complaint is ascertained, Plaintiff will seek leave to amend this Complaint.
`
`IV.
`
`GENERAL ALLEGATIONS
`
`7.
`
`Plaintiff is the owner of the federally registered trademark
`
`ASHFORD UNIVERSITY having federal trademark Registration No. 3,220,625. A true
`
`and correct copy of said registration is attached as Exhibit 1 and incorporated by
`
`p--t
`
`.-O-‘\C>OO*~JC3\L4!\.£>sbJb«)
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`reference.
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`Plaintiff and its wholly owned subsidiary Ashford University, LLC
`8.
`(“Ashford University"), a limited liability corporation duly organized and existing under
`the laws of the Stateof Iowa, have been and are now extensively engaged in the business
`of marketing in interstate commerce and providing a wide variety of educational goods
`and services, and since 2005 has marketed such educational goods and services under the
`
`trademark ASHFORD UNIVERSITY. Plaintiff uses the registration symbol ® under 15
`
`U.S.C. §l 1 11 on its goods and in advertising associated with its trademark.
`
`9.
`
`Ashford University, which was founded in 1918, maintains a
`
`physical university campus in Clinton, Iowa where students receive affordable,
`
`innovative, high-quality learning opportunities and degree programs in subjects such as
`
`W02-WEST:6JEMl\4005l4l 13.3
`
`_3_
`
`.
`
`COMPLAINT
`
`
`

`
`‘Case 3:O7—cv-0222%~BLM Document 1
`
`Filed 11/2300?
`
`Page 5 of 20
`
`l--.4
`
`business administration, health care administration, psychology, organizational
`
`8\DO0--JO\Lh-F»-bJb».>
`
`;_a
`
`y...A
`
`>-u {VJ
`
`4--I DJ
`
`>——- -b
`
`>—-- ‘J!
`
`>-—- C?\
`
`a—-\ ‘J
`
`l--4 00
`
`v---\ \D
`
`b.) C
`
`f\)l\-)1‘-JDJIN-)‘\--*
`
`l\)-83%
`
`(‘Q U1
`
`t\.>'l‘-)NICK
`
`28
`
`management, criminal justice, social science, education, accounting, computer graphics
`
`design, marketing management, visual arts, computer science and mathematics, and
`
`biology.
`
`10.
`
`Ashford University also offers distance learning programs for
`
`individuals to receive associates, bachelor's and master‘s degrees by correspondence and
`online through its web site at vvww.ashford.edu without physically attending classes on
`
`campus. Students can earn these degrees in subjects such as business administration,
`health care administration, psychology, organizational management, criminal justice,
`
`social science and education.
`
`Plaintiff has spent significant time and effort and substantial sums of
`11.
`money widely advertising and extensively offering educational and distance learning
`
`programs under its registered ASHFORD UNIVERSITY mark to potential distance and
`online learners throughout the United States (including the Southern District of
`California) and abroad, and the trademark ASHFORD UNIVERSITY has become,
`
`through widespread and favorable public acceptance and recognition, an asset of
`substantial value as a symbol of Plaintiff, its quality goods and services and its good will,
`
`as evidenced in part bythe significant revenues derived from these goods and services.
`Plaintiffs extensive marketing plans include widely offering its distance learning goods
`
`V and services in connection with its mark online (eg, through its web site located at
`
`www.ashford.edu) and through various other media.
`
`12.
`
`Defendant offers distance learning programs under the name V
`
`Ashworth University, both by correspondence and online, for students to receive
`
`associates, bachelors and master's degrees in subjects, including business management,
`
`criminal justice, education, health care management and psychology. Defendant
`
`W02-WEST:6JEMi\-4905141 l8.3
`
`-4-
`
`«
`
`COMPLAINT
`
`

`
`Case 3:07-cv-0222 - -BLM Document 1
`
`Filed 11/ZWOO7
`
`Page 6 of 20
`
`._;
`
`S\OOO\]C\U3«$>-tritx)
`
`p...\
`
`;._.x
`
`>——a I\)
`
`v--- D)
`
`‘E
`
`v—-4 {/1
`
`>-t ON
`
`—A \)
`
`>--s 00
`
`>--—\ \D
`
`represents itself as a provider of associate's, bachelors and master's degree programs and
`
`high school diploma programs to distance and online learners in the United States and
`
`more than 100 countries worldwide.
`
`13.
`
`Defendant offers its distance learning~related goods and services in
`
`interstate commerce, including within and without California and including this judicial
`
`district, through television advertisements, Internet banner advertisements, and web sites,
`
`including those with domain names that are confusingly similar to Plaintiffs ASHFORD
`
`UNIVERSITY trademark, such domain names including www.ashwoithuniversity.tv,
`
`www.ashworthuniversity.edu, www.ashworthuniversitycom,
`
`www.ashworthuniversity.net, www.ashworthuniversity.us, www.ashworthuniversity_.fl,
`
`and www.ashworthuniversity.biz. On information and belief, Defendant does not have a
`
`federally registered trademark for "Ashworth University."
`
`14.
`Defendant's use in commerce of the Ashworth University name and
`domain names constitute infringement of Plaintiffs registered trademark, ASHFORD
`
`UNIVERSITY, has caused actual confusion, deception and/or mistake, and is likely to
`
`continue to cause confusion, deception, and/or mistake. Defendant's use of the name
`
`Ashworth University is immediately reminiscent of and strikingly similar to Plaintiffs
`
`19 o
`
`registered trademark ASHFORD UNIVERSITY. Substantial similarity exists in sight and
`
`sound between Defendant's disputed name and domain names and Plaintiffs registered
`
`mark. Indeed, each begins with "Ash," contains "or" in text and sound, and utilizes the
`
`second word "University." The small differences between the letters in Plaintiffs mark
`
`and those in Defendant's disputed name and domain names do not significantly change the
`sound of the university names when pronounced. Defendant's disputed name and domain
`
`names are thus confusingly similar to Plaintiffs trademark and constitute direct
`
`infringement.
`
`N) 9-4
`
`K) t\.)
`
`K) L»)
`
`t\) -33
`
`Ix) {)1
`
`l\) ON
`
`Ix) \)
`
`t\) 00
`
`W'02—WEST:6JEMl\4005J4l18.3
`
`-5-
`
`COMPLAINT
`
`

`
`ase 3:07-cv-0222 - -BLM Document 1
`
`Filed 11/2%OO7'
`
`Page 7 of 20
`
`15.
`
`The confusion is enhanced by the fact that, not only is Defendant's
`
`name strikingly similar in an aesthetic sense to Plaintiffs registered trademark, but both
`
`Plaintiffs and Defendant's names are being used to brand and market goods and services
`
`in the exact area in which Plaintiffs ASHFORD UNIVERSITY trademark is registered:
`
`"educational services, namely, providing distance learning instruction, curriculum and
`
`courses at the college and graduate levels."
`
`16.
`
`Furthermore, Plaintiffs and Defendant's goods and services are
`
`offered throughout the United States. Both Plaintiff and Defendant use the Internet and
`
`various other similar media channels to market and promote their goods and services to
`
`the same potential customers.
`
`17;.
`
`Defendant's national advertising campaign reflects an expansion into
`
`the national market at the same tirnethat Plaintiff has been marketing its goods and
`
`services in the national market.
`
`18.
`
`On information and belief, Defendant’s use of the infringing name is
`
`an attempt by Defendants to associate and connect its goods and services with the
`
`\O0O*-.lC¥‘\U1-I=~bJl“~.)
`
`10
`
`ll
`
`l2
`
`l3
`
`l4
`
`l5
`
`16
`
`17
`
`18
`
`19
`
`a renowned, high quality distance learning goods and services designed and offered by
`
`Plaintiff. On information and belief, Defendants created unlawful and unfair connections
`
`to Plaintiffs established, successful, and popular distance, learning goods and services in
`
`order to persuade potential customers to obtain Defendants distance learning goods and
`
`services instead of Plaintiffs. Potential students have indeed actually confused
`
`Defendant's distance learning goods and services with Plaintiffs. As such, by infringing
`
`Plaintiffs registered trademark, Defendant creates an unfairly competitive association
`
`with Plaintiff and trades upon Plaintiffs business goodwill in order to sell Defendant's
`
`own goods and services by falsely designating their origin.
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`W02~WES'l';6JEM l\4005l4l l8.3
`
`-5-
`
`COMPLAINT
`
`

`
`Case 3:0“/'—cv—O2222‘BLM Document 1
`
`Filed 11/EWO7
`
`Page 8 of 20
`
`I9.
`
`Defendant has notice of Plaintiffs trademark by virtue of its
`
`pubiication and registration on the Principai Registry and Plaintiffs trademark marking
`
`pursuant to 35 U.S.C. §111l.
`
`3
`
`. 20.
`
`On information and belief, Defendant has earned and continues to
`
`earn substantial revenues and profits from the distance learning servicesiusing the
`
`infringing name and domain names that are confusingly similar to Plaintiffs federally-
`registered trademark. Plaintiff has been damaged by the conduct of Defendant in an
`
`amount not yet known, and is entitled to restitution in the form of all revenues and profits
`
`generated by Defendants sales of distance learning goods and services using a
`
`confusingly similar name and domain name. Plaintiff will continue to be damaged until
`
`Defendant's use of its infringing name and domain names is enjoined.
`
`FIRST CLAIM FOR RELIEF
`
`[Federal Trademark Infringement Against Defendants (15 U.S.C. § 1114 et seg.)|
`
`'
`
`21.
`
`Plaintiff realleges and incorporates herein by reference the allegations
`
`contained in Paragraphs 1 through 20 of this Complaint, as set forth above.
`
`22. Defendants conduct constitutes trademark infringement under 15
`
`U.S.C. § 1114 et seq. Defendanfs use of its confusingly similar name and domain names
`
`in interstate commerce constitutes trademark infringement, and engenders a mistaken
`
`belief by the consuming public that Defendant's goods and services are offered,
`
`\OOO'~!C'1‘y(.!i-¥>l.»)f-.)
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20’
`
`21
`
`22
`
`23
`
`24
`
`sponsored, authorized, licensed by, or otherwise connected with Plaintiff or come from
`
`25
`
`the same source as Plaintiffs goods and services, or are of the same quality as that assured
`
`261
`
`by Plaintiffs trademark.
`
`27
`
`28
`
`W02-WEST:6JEMi‘\4Bi)514l18.3
`—
`—
`
`
`COMPLAINT
`
`

`
`{Case 3:07’-cv-.O222 —- ~BLM Document 1
`
`Filed 11/2%0O7’
`
`Page 9 of20
`
`23. Defendant's commercial activities using its confusingly similar name
`
`and domain names in connection with the advertising and saie of its distance learning-
`
`related goods and services through the Internet and other media similar to Plaintiff have,
`
`on information and belief, caused actual confusion and are likely to continue causing
`confusion, mistake, and/or deception, and are likely to cause the public to believe that
`
`Plaintiff has produced, sponsored, authorized, licensed, or is otherwise connected or
`
`affiliated with Defendants commercial and business activities, all to the detriment and
`
`damage of Plaintiff.
`
`l
`
`\DOO-lC7\U“x-$>.UJl*~J
`
`10 i
`
`24.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`ll Defendant has willfully committed these acts of infringement to the injury and detriment
`12
`of Plaintiff.
`P
`A
`
`1 3
`
`14
`25. On information and belief, Defendant has derived substantial financial
`15 V benefit from its unlawful and infringing conduct with respect to Plaintiffs registered
`16
`trademark. As a direct and proximate result of Defendant's unlawful acts as set forth
`
`17
`
`18
`
`19
`
`above, including the unauthorized use of a name and domain names confusingly similar to l
`
`Plaintiffs ASHFORD UNIVERSITY trademark, Plaintiff has suffered and will continue
`
`to suffer injury to its business, goodwill, and property. Plaintiff is entitled to recover from
`
`20 Defendant the damages it has sustained and will sustain as a result of Defendant's
`
`21 wrongful conduct as alleged herein. Plaintiff is further entitled to recover from Defendant
`
`22
`
`23
`
`24
`
`the gains, profits and advantages obtained as a result of the wrongful conduct alleged
`
`herein. Plaintiff at present is unable to ascertain the full extent of its damages, or the
`
`gains, profits, and advantages that Defendant has obtained by reason of the wrongful
`
`25
`
`conduct described herein.
`
`26
`
`27
`
`28
`
`i
`
`26.
`
`Plaintiff has no adequate remedy at law to compel Defendant to cease
`
`their wrongful acts. Unless Defendant is permanently enjoined from committing these
`
`W02-WEST:6JEMI\AG0514l 12.3
`
`‘ ‘
`
`COMPLAINT
`
`
`
`

`
`i
`
`'
`
`'
`
`1
`
`ase 3:O7-cv~O2222- -BLM Document 1
`
`Filed 11/2060?
`
`Page “I0 of 20
`
`1
`
`unlawful acts as set forth above, including the unauthorized use of a name and domain
`
`names in commerce that are confusingly similar to Plaintiffs ASHFORD UNIVERSITY
`
`trademark, Plaintiff will continue to suffer irreparable harm. Plaintiff is entitled, pursuant
`
`to 15 U.S.C. § 1116, to an injunction restraining Defendant, its officers, agents and
`
`employees, and all persons acting in concert with Defendant, from engaging in any further
`
`such acts of infringement in violation of the Lanham Act.
`
`SECOND CLAIM FOR RELIEF
`
`[Unfair Competition And False Designation Of Origin (15 U.S.C. §1125}|
`
`27.
`
`Plaintiff realleges and incorporates herein by reference the
`
`allegations contained in Paragraphs 1 through 26 of this Complaint, as set forth above.
`A
`1
`2
`
`\DOO--.)O\€J1-l=sb~Jt‘~J
`
`110
`
`ll
`
`12
`13
`
`14 ‘
`
`28. Defendant's conduct constitutes federal unfair competition and false
`
`15 ’ designation oforigin under 15 U.S.C. § 1125.
`
`16
`
`17
`
`18
`
`19
`
`'
`
`V
`
`29.
`
`Defendant's unauthorized marketing and distribution of distance
`
`learning goods and services under the name Ashworth University and in connection with
`
`domain names, including www.ashworthuniversigg.tv, www.ashworthuniversity.edu,
`
`20 www.ashworthuniversig.com, www.ashworthuniversity,net, www.ashworthuniversity.us,
`
`21 www.ashworthuniversig,:.info, and w'ww.ashworthuniversity.biz, which infringe and/or
`
`are confusingly similar to Plaintiffs Ashford University trademark has and/or is likely to
`
`cause confusion, mistake, and/or deception as to an affiliation, connection, or association
`
`of Defendant's goods and services with Plaintiffs and their associated goodwill or as to
`
`the origin, sponsorship, or approval of Defendant's goods, services, or commercial
`
`activities by Plaintiff in violation of IS U.S.C. § 1125.
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`W02-WEST:6JEM1\4005i4I 13.3
`
`-9-
`
`V
`
`1
`COMPLAINT
`
`
`
`

`
`ase 3:0‘/~cv—O2222~ —BLM
`
`Document 1
`
`Filed 11/2080?
`
`Page 11 of 20
`
`30. Defendant's use of its infringing name and domain names creates a
`
`false and confusing connection between its distance learning—related goods, services and
`
`web site to the premium quality distance learning—related goods, services and web site
`
`provided by Plaintiff under its registered trademark. Such confusion as to the origin of
`
`goods and services is likely to continue unless enjoined and, on information and belief,
`
`has caused actual confusion among consumers as to the source of Defendant's goods and
`
`services.
`
`31. L Plaintiff is informed and believes, and on that basis alleges, that
`Defendant, in engaging in the conduct described herein, willfully intended to trade on
`
`Plaintiffs reputation, to misappropriate the Ashford University mark and to cause injury
`
`to Plaintiff.
`
`32. As a direct and proximate result of Defendant's unlawful acts as set
`
`forth above, including the unauthorized reproduction, distribution and use in commerce of
`
`a name and domain names that are confusingly similar to the Ashford University
`
`trademark, Plaintiff has suffered and will continue to suffer injury to their business,
`
`goodwill, and property in an amount not presently known.
`
`33.
`
`Plaintiff has no adequate remedy at law. Unless Defendant is
`
`permanently enjoined from committing these unlawful acts as set forth above, including
`
`the unauthorized use of the Ashford University trademark in commerce, and the
`
`unauthorized reproduction and/or distribution of the Ashford University trademark,
`
`Plaintiff will continue to suffer irreparable harm.
`
`34.
`
`Plaintiff is entitled, pursuant to 35 U.S.C. § 1116, to an injunction
`
`restraining Defendant, their officers, agents and employees, and all persons acting in
`
`W02-WEST‘6JEMl\4U0514l 18.3
`
`-11).-
`
`COMPLAINT
`
`n--4
`
`‘S\D0O\lO\U’v<I>-L«2!‘~J
`
`pg j—d
`
`p—-\ l\}
`
`o-—- U-3
`
`b--d -5
`
`--4 LII
`
`>-4 C\
`
`—o \l
`
`--I 00
`
`—A \O
`
`IN)G
`
`[9 v-—-
`
`IN.)Ix)
`
`Ix) Lad
`
`IN)43>-
`
`N) LI!
`
`t\-I Ch
`
`(*4 -~J
`
`(*0 O0
`
`

`
`fiase 3207-CV-G2222fl.M Document 1
`
`Fiied ‘l‘l!2{}@O7
`
`Page 12 of 20 7
`
`haw‘
`
`concert with Defendant, from engaging in any further such acts of unfair competition and
`
`false designation of origin in violation of 35 USC. § 1125.
`
`Exoooxxmwtxiwm
`
`put
`
`y-us
`
`—-
`
`'PJ
`
`u—- an)
`
`out -Iii
`
`1--A (J!
`
`r—--\ O‘\
`
`v-s ‘N3
`
`u--A 00
`
`D-- \D
`
`i THIRD CLAIM FOR RELIEF
`
`
`
`35.
`
`Plaintiff realleges and incorporates herein by reference the allegations
`
`contained in Paragraphs 1 through 34 of this Complaint, as set forth above.
`
`, 36.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendant's unlawful acts as set forth above, including the infringement of Plaintiffs
`
`Ashford University trademark, have a substantial effect on commerce, and constitute
`
`unlawful, unfair, and fraudulent business practices and unfair, deceptive, untrue, and
`
`misleading advertising in violation of Sections 17200 and 17500, et seq., of the California »
`
`Business and Professions Code.
`
`37.
`
`, Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants, in engaging in the conduct describediherein, willfully intended to trade on
`
`Plaintiffs reputation, to misappropriate the Ashford University trademark and to cause
`
`M Q
`
`injury to Plaintiff.
`
`(‘Q o--
`
`ix.) !\-3
`
`(NJ U3
`
`Ix)«$3-
`
`ix) U1
`
`1‘), ON
`
`
`
`,Ix) \J
`28
`
`38. As a direct and proximate result of Defendants unlawful acts as set
`
`forth above, including the infringing reproduction, distribution and use of the name
`
`Ashworth University in commerce, Plaintiff has suffered and will continue to suffer injury
`
`to their business, goodwill, and property in an amount not presently known.
`
`W02«WEST:6JEMl‘h40(}5l4I 18.3
`
`A
`
`_H_
`
`,
`
`COMPLAINT
`
`

`
`(liaise 3:07'—cv~O2222- -BLl\/l Document 1
`
`Filed 11/20@O7
`
`Page 13 of 20
`
`39.
`Plaintiff has no adequate remedy at law. Unless Defendant is
`preliminarily and permanently-enjoined from committing these unlawful acts as set forth a
`above, Plaintiff will continue to suffer irreparable harm.
`
`40.
`
`Plaintiff is entitled, pursuant to California Business and Professions
`
`Code §§ 17203 and 17535, to an injunction restraining Defendant, its officers, agents and
`employees, and all persons acting in concert with Defendant, from engaging in any further
`
`such acts of unfair competition and false designation of origin in violation of the
`
`California Business and Professions Code.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff BRIDGEPOIINT prays for judgment against Defendant as
`
`‘~OOO-JC7\\.h-8-‘=»£»Jt\3
`
`10
`
`11
`
`12
`
`13
`
`14
`
`follows:
`
`V15
`
`16
`
`17
`
`18
`
`19
`
`(1)
`
`That Defendant(s) be held’ liable for
`
`infringement of Plaintiffs‘
`
`registeredtrademark as set forth herein in violation of the federal Lanham Act, 15 U.S.C.
`
`§ 1125 ex seq., as alleged herein;
`
`(2)
`
`‘That Defendant(s) be held liable for trademark infringement, false
`
`20
`
`designation of origin, and unfair and unlawful competition and business practices in
`
`21
`
`Violation of the federal Lanham Act, 15 U.S.C. § 1125 et seq., as alleged herein;
`
`22
`
`23
`
`24
`
`(3)
`That Defendant(s) be held liable for trademark infringement, false
`designation of origin, and unfair and unlawful competition and business practices in
`
`25
`
`violation of the California Business and Professions Code, as alleged herein.
`
`26
`
`2