Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA220391
`ESTTA Tracking number:
`06/25/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91184413
`Defendant
`SponsorHouse, Inc.
`Plaintiff
`Loopt, Inc.
`
`Proceeding.
`Applicant
`
`Other Party
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly,
`SponsorHouse, Inc. hereby requests suspension of this proceeding pending a final determination of the civil
`action. Trademark Rule 2.117.
`SponsorHouse, Inc. has secured the express consent of all other parties to this proceeding for the
`suspension and resetting of dates requested herein.
`SponsorHouse, Inc. has provided an e-mail address herewith for itself and for the opposing party so that any
`order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by Facsimile or email (by agreement only) on this date.
`Respectfully submitted,
`/Gretchen R. Stroud/
`Gretchen R. Stroud
`trademarks@cooley.com
`trademarks@wsgr.com, jslafsky@wsgr.com
`06/25/2008
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of application Serial No. 77/268213
`For the Trademark LOOP’D NETWORK and Design
`Published in the Official Gazette on February 12, 2008
`
`Loopt, Inc., a Delaware corporation,
`
`Opposer,
`
`V.
`
`SponsorHOuse, Inc. a California corporation,
`
`Applicant.
`
`Opposition No. 91 184413
`
`STIPULATED MOTION FOR SUSPENSION PENDING OUTCOME OF ANOTHER PROCEEDING
`
`37 C.F.R §2.1 l7(a)
`
`Applicant SponsorHouse, Inc. (“Applicant”) respectfully moves this Board to suspend
`
`Opposition No. 91184413 pending the outcome of federal court litigation currently pending in
`
`the Northern District of California, Loopt, Inc, a Delaware corporation v. Sponsorhouse, Inc.
`
`dba Loop ’d Network, a California corporation, Case NO. CO8 02767 JW, formerly known as
`
`Case No. C08 02767 BZ (hereafter “Other Proceeding”). Attached as Exhibit 1 is a copy of the
`
`complaint filed in the Other Proceeding.
`
`As the Other Proceeding involves the same parties, same application (Serial No.
`
`77/268213), and similar issues as the pending Opposition, the final determination of the Other
`
`Proceeding will have a bearing on the issues before the Board in this proceeding.
`
`In particular, in the complaint in the Other Proceeding, Opposer alleges that Applicant’s
`
`Mark is likely to be confused with Opposer’s marks, and seeks an order refusing registration of
`
`

`
`Applicant’s Mark, the same issues raised in this Opposition proceeding. Accordingly, the federal
`
`court proceedings will be dispositive of the issues in this Opposition.
`
`For these reasons,
`
`Applicant respectfully seeks an order from the Board suspending these proceedings until
`
`termination of the Other Proceeding.
`
`See Trademark Trial and Appeal Board Manual of
`
`Procedure, §510.02(a).
`
`Opposer has consented to the suspension of the present opposition.
`
`Accordingly, Applicant respectfully requests that the Board enter an order suspending the
`
`present opposition, Opposition No.
`
`91184413, pursuant to 37 C.F.R §2.l17(a) and that all
`
`relevant deadlines and trial dates be tolled until
`
`the Other Proceeding has been finally
`
`determined.
`
`Date: June 25,2008
`
`COOLEY GODWARD KRONISH LLP
`
`By:
`
`
`P
`Gretchen R. Stroud, Esq.
`Attorneys for Applicant
`Five Palo Alto Square
`3000 El Camino Real
`
`Palo Alto, California 94306-2155
`(650) 843-5000
`
`

`
`Exhibit 1
`
`

`
`331844 (Rev, I2/07.)(eand Qgil-$<?0tt$5O8‘CV'O2767'JSWIVH9%VER SIIT!E3i1O6/03/ I O08
`The IS 44 civil cover sheet and the information containcxkein neitiicr replace nor supplement the filing and service of i,iifliilfil3\iALi
`
`by local rules of court This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court forthe purpose of initiating
`the civil docket sheet.
`(SEE INSTRUCTIONS ON PAGE TWO OF THE FOR_lyi_.)
`I.
`(a)
`PLAINTIFFS
`
`DEFENDANTS
`
`Loopt, Inc., a Delaware corporation
`
`Sponsoriiouse, Inc. dba Loop'd Network, a California corporation
`
`(1)) County of Residence of First Listed Plaintiff Santa Clara County
`(EXCEPT IN US‘ PLAINTIFF CASES)
`
`County of Residence of First Listed Defendant
`San Dieg0 County
`(IN U.S. PLAINTIFF CASES ONLY)
`NOTE:
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE
`LAND INVOLVED.
`
`(C) Attorney’s (Firm Name, Address, and Telephone Number)
`
`Attorneys (If Known)
`
`Wilson Sonsini Goodrich & Rosati
`650 Page Mill Road
`Palo Alto, California 94304-1050
`Telephone: 650-493-9300
`
`g.\=\\.\I\5
`
`C08 027673zW
`
`II. BASIS OF
`
`(Place an
`
`in One Box Only)
`
`In.
`
`,
`
`(For Diversity Cases Only)
`PTF
`
`DEF
`
`PARTIES (Place an “X" in One Box for Plaintiff
`and One Box for Defendant)
`PTF
`DEF
`
`[:1 I
`
`U.S. Government
`Plaintiff
`
`B] 3 FcderalQiiesIion
`(US. Government Not a P
`
`)
`
`.
`
`Citizen ofThis State
`
`[3 I E] l
`
`incorporated or PrincipalPlace E] 4
`ofBusiness In This State
`
`2
`
`U.S. Government D 4 Diversity
`Defendant
`(Indicate Citizenship ofPartics in item ill)
`
`Citizen of Another State [:1 2 U 2
`
`Incorporated and PrincipalPlace E 5
`Qfausinggs in Anmimglm
`
`C] 4
`
`[:3 5
`
`Citizen or Subject ofa
`Foreign Country
`
`[3 3 C] 3
`
`Foreign Nation
`
`E] 6 D 6
`
`
`
`
`
`PROPERTY RIGHTS
`
`820 C
`,
`83 Popyngms
`843 135"‘
`k
`I
`elm"
`
`E
`‘
`
`(Place an "X“ in One Box Only)
`IV. NATURE
`FORFEITURE/PENALTY?
`TORTS
`CONTRACT
`PERSONAL INJURY
`i
`PERSONAL INJURY E610 Agriculture
`[3 HO Insurance
`310 Aimlane
`E362 Persona] injury...
`l[::]620 Other Food & Drug
`E] I20 Marine
`fl)
`,
`P
`315 A;
`Jane Produgl
`;
`M‘-,d_ Mal ractjcg
`'
`625 Drug Related Seizure
`I30 Miller Act
`Liability
`E3355 Pefsgngl injury ...
`ofProperty 21 USC 88!
`Z 140 Negotiable instrument
`1 I50 Recovery ofoverpayiiient C3330 Assault L,1,¢i&
`product inability
`630 Liquor laws
`& Enforcement ofludgmcnt
`slander
`353 Asbestos Persgnal
`640 R.R. &. Truck
`E] *5‘ Mwmale AC‘
`b33O Federal Employers’
`injury Product
`550 /’-lllllltf R¢l§5-
`D I52 Recovery ofDcfaulted
`Liability
`Liability
`660 Occupational
`Student Loans
`340 Maxine
`PERSONAL pR0])ERTy
`Safety/I-lealth
`(Excl. Veterans)
`345 Marlmi Product
`E370 other Fraud
`E3690 Other
`V
`~
`[:3 I53 Recovery ofOvtx*payment
`Liability
`-
`X
`SOCIAL SECURITY
`of Vetei'an’s Benefits
`50 Motor Vehicle
`g‘c;:':::Ing
`LABOR
`I
`861 HiA(1395i‘t)
`[:1 160 Stockholders‘ Suits
`55 Motor Vehicle
`M 3“ Damn 8
`i:_']7l0l7airLah0rStandaids
`53862 Black Lung (923)
`_
`l90 Ollwr Contract
`Product Liability
`E1335 ,,,05m’; Dam;
`12:]
`Act
`E3 '95 Ccnlrccl Product Liability
`E3360 Other Personal Injury
`Product Uabm,
`720 Labor./Mgrnt. Relations [3353 Diwc/oiww (405(g))
`{:3 l96 Franchise
`Y
`730 Laiior/Mgmiizeponing
`864 SSID riiie xvt
`.
`PRISONER
`KC Disclosure Act
`865 R81 (405(g))
`C“/XL RIGHTS
`PETITIONS
`D740 Railway Labor Act
`441 Voting
`510 Motions to Vacate
`II] 790 0"“‘~l W0’ L‘”8a“°“
`442 Employment
`Sentence
`'
`E379’ Ef“I"- _R"‘ ‘"9
`443 Housing’
`ilabcas Corpus:
`5’°c““‘Y AC‘
`Accommodations
`530 General
`444 Welfare
`535 Death Penalty
`445 Amer. w/Disabilities -
`5-10 Mandamus Kt Other
`Employment
`550 Civil Rights
`-
`~
`-
`I
`, _
`v
`-
`-
`G446 Amer. w/Dksabilities
`555 Prison Condition
`Om“
`.
`.
`.
`E440 Other Civil Rights
`
`H
`OTHER STATUTES
`BANKRUFTCY
`
`422 Appeal 28 USC I58 D400 State Reapportionment
`423 Withdrawal
`-110 Antitrust
`28 USC 157
`430 Banks and Banking
`450 Commerce
`460 Deportatioii
`470 Racketeer influenced and
`Corrupt Organizations
`480 Consumer Credit
`490 Cab le/Sat TV
`{:]8l0 Selective Service
`850 Securities/Commodities}
`Exchange
`12875 Customer Challenge
`12 USC 3410
`890 Other Statutory Actions
`89l Agricultural Acts
`892 Economic Stabilization Act
`393 EllVll0lllll8lll?ll MEITCTS
`’;"‘:§Y ’”';’j“‘f'°" A?‘
`we om O
`n ormamn
`900 A“ V
`I {F
`A39“ 0.
`4 C.”
`"'°"“‘”“‘f°"
`Under Equd‘ Access
`950 (‘:° ""5.:‘u°"i’0na“Iy of
`ons I
`gum; glannes
`
`REAL PROPERTY
`{:1 210 Land Condemnation
`Z 220 Foreclosure
`D 230 Rent Lease& Ejectment
`D 240 Torts to Land
`[3 245 Tort Product Liability
`[:3 290 All Other Real Property
`
`C
`
`
`FEDERAL TAX SUITS ;
`_
`’
`,
`r.:]370T3X35 (U3 Pl3l“‘”T
`or Defendant)
`[MM[GRA’|‘[()N D3“ lR3‘“Tlllfd Plmfi’
`“ 3g{§*mmag;
`26 USC 7609
`463 Habeas Corpus —
`Alien Detainee
`5
`E1465 Omar ‘mmigmion
`E
`Actiom
`
`-
`
`E
`I
`I
`
`Transferred from
`V. ORIGIN (Place an “X“ iii one Box Only)
`[3] 1 Original
`1:] 2 Removed from
`[:3 3 Remanded from Z 4 Reinstated or E3 5 another district
`Proceeding
`State Court
`Appellate Court
`Reopened
`(specify)
`
`[:1 6 Multidistrict
`Litigation
`
`Appeal to District
`E] 7 Judge from
`Magistrate
`Judgment
`
`V1. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`Vin. RELATED CASE(S)
`1;: Am:
`
`Cite the US. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`I5 U.S.C.
`III4 &l I25
`Brief description of cause:
`
`Complaint for Trademark Infringement, Lanham Act Violations, Unlawful Business Practices and Related Claims
`[:3 CHECK IF THIS IS A CLASS ACTION
`DEMAND 3
`CHECK vrss only if demanded in complaint:
`UNDER F.RC.Pi 23
`JURY DEMAND:
`III YesE:l No
`PLEASE REFER TO CIVIL L.R. 3-12 CONCERNING REQUIREMENT TO FILE
`"NOTICE or RELATED CASE".
`
`IX. DIVISIONAL ASSIGNMENT (CIVIL L.R. 3-2)
`(PLACE AND
`IN ONE BOX ONLY)
`DATE
`June 3, 2008
`
`:3 SAN FRANCISCO/OAKLAN
`SIGNATURE OF ATTORNEY OF RECORD
`‘_
`
`:3 s N JOSE
`
`1 P am
`
`

`
`Page 2 of 15
`fax’?
`34
`
`Case 3:O8—cv—O21G;7—JSW Document 1
`
`Filed 06/03/3008
`
`JOHN L. SLAFSKY, State Bar No. 195513
`HOLLIS BETH HIRE, State Bar No. 203651
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 943044050
`Telephone: (650) 493~ 3
`Facsimile:
`(650) 493gafiUNG
`jslafsky@wsgr.com
`hhire@wsgr.corn
`
`.
`
`FILED
`
`was JUN ~3 P 2‘ 58
`
`Rmigan gmgtfifilflfi
`CL
`
`I‘
`
`'
`
`Attorneys for Plaintiff
`LOOPT, INC.
`
`ADE
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`
`Vb“
`
`LOOPT, INC., a Delaware corporation,
`
`Plaintiff,
`
`V.
`
`SPONSORHOUSE, INC., dba LOOP’D
`NETWORK, a California corporation,
`
`Defendant.
`
`\../‘--/\./\_/%\§\§\/%(\§*~./
`
`008 02767
`BZ
`
`CASE NO.:
`
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, LANHAM ACT
`VIOLATIONS, UNLAWFUL
`BUSINESS PRACTICES AND
`
`RELATED CLAIMS
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff Loopt Inc. (“Loopt” or “Plaintiff ’) alleges as follows:
`
`THE PARTIES
`
`1.
`
`Loopt is a Delaware corporation with its principal place of business at 590 W. El
`
`Camino Real, Mountain View, California 94040.
`
`2.
`
`Loopt is informed and believes, and therefore alleges, that Defendant
`
`SponsorHouse, Inc. is a California corporation doing business as Loop’d Network (“Loop’d” or
`
`“Defendant”) with its principal place of business at 3560 Dunhill Street, Suite 100, San Diego,
`
`California 92121.
`
`COMPLAINT
`
`

`
`Case 3:O8—cv-027.67,-JSW Document 1
`D
`
`Filed O6/O3/ . 008
`J
`
`Pa e 3 of 15
`9
`
`JURISDICTION AND VENUE
`
`3.
`
`This action for trademark infringement, Lanharn Act violations, unlawful business
`
`practices, false and misleading statements and unfair competition arises under 15 U.S.C. § 1114,
`
`15 U.S.C. § 1125(a), California statutes and the common law.
`
`4.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331, 1332
`
`and 1338. This Court has supplemental jurisdiction under 28 U.S.C. § 1367 for related state-law
`
`claims as well as original jurisdiction under 28 U.S.C. § l338(b) because the state—law claims are
`
`joined to a substantial and related trademark claim.
`
`5.
`
`This Court has personal jurisdiction over Loop’d by virtue of its transacting and
`
`doing business in this judicial district and also by virtue of its committing a tort in or directed at
`
`this judicial district. Loop’d, among other things, offers its services via an interactive
`
`commercial website available within this judicial district, and, on information and belief, attends
`
`conferences and advertises its services for use in this judicial district.
`
`6.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. §139l(b) because a
`
`substantial portion of the events giving rise to this Complaint occurred within this judicial
`
`district.
`
`INTRADISTRICT ASSIGNMENT
`
`7.
`
`Pursuant to Civil Local Rule 3—2(c), because this action falls within one of the
`
`excepted categories, it will be assigned on a district-wide basis.
`
`BACKGROUND
`
`Loopt’s Trademark Rights
`
`8.
`
`Loopt is the leading social networking service that allows users to connect and
`
`interact with each other and with their local communities using location—based technology on
`
`their computers and mobile devices, such as cell phones.
`
`9.
`
`Once a user has registered with Loopt, he or she can view on his mobile device or
`
`computer a map of the local area which displays his own location and the location of his network
`
`of friends (those friends who have also subscribed to the Loopt service and who have chosen to
`
`be a part of this network). The user can then communicate with these friends via instant
`
`COMPLAINT
`
`-2 -
`
`\OOO\JO\
`
`10
`
`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`23
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`25
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`26
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`27
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`28
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`

`
`Case 3:08-cv—O2767-JSW Document 1
`D
`
`Filed O6/O3/ 008
`
`Page 4 of 15
`
`messaging or text messaging, and can view his or her friends’ photographs and comments. The
`
`Loopt service also provides information about local restaurants, attractions, and other points of
`
`interest to the user, including the user’s friends’ favorite local attractions.
`
`10.
`
`Loopt has partnered with various wireless carriers, including Boost Mobile, Sprint
`
`Nextel, and Verizon Wireless to offer its service to users on these mobile networks.
`
`11.
`
`12.
`
`Loopt is also available to any user of the Facebook social networking service.
`
`Loopt has been promoting its products and services under the LOOPT® mark and
`
`trade name in the United States since at least as early as September 11, 2006. Loopt’s use of the
`
`LOOPT mark and trade name has been valid and continuous since the date of first use and has
`
`not been abandoned.
`
`13.
`
`Loopt owns two federal registrations for the mark LOOPT (the LOOPT
`
`Registrations), with priority based on a filing date of July 25, 2006.
`
`14.
`
`Loopt is the owner of Registration No. 3,354,370 for the mark LOOPT, filed July
`
`25, 2006 and registered December 11, 2007, for the following goods and services:
`
`software for locating persons via global positioning or other location
`
`technology; downloadable software for use in wireless telecommunications
`
`devices, namely, software for electronic map display, travel planning and event
`
`planning; downloadable software, namely, software for displaying location and
`
`physical presence information in wireless telecommunications devices, in
`
`International Class 9;
`
`business networking services conducted via wireless telecommunications
`
`networks and via electronic and optical communications networks, in
`
`International Class 35;
`
`text and numeric digital wireless messaging services, in International
`
`Class 38;
`
`online social networking services conducted via wireless
`
`telecommunications networks and via electronic and optical communications
`
`networks, in International Class 45.
`
`COMPLAINT
`
`-3-
`
`10
`
`ll
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`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
`
`27
`
`28
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`

`
`Case 3:O8—cv—O2767—JSW Document 1
`U
`
`Filed 06/O3/_ 008
`
`Page 5 of 15
`
`15.
`
`Loopt is the owner of Registration No. 3,372,654 for a stylized version of the
`
`LOOPT mark:
`
`lcopt
`
`The application for this mark was filed June 6, 2007 and registered January 22, 2008 for the
`
`following goods and services:
`
`software for searching, locating, navigating to, and messaging to or about
`certain persons, events, places, and other points of interests and to display
`
`relevant, location—informed advertisements and promotions via global positioning
`
`or other location information—based technology; downloadable software for use in
`wireless telecommunications devices, namely, software for electronic map display
`that includes display of certain individuals and points of interest, travel planning
`and event planning and to display relevant, location—informed advertisements and
`
`promotions and that allows users to synchronize the same with a web or intemet—
`
`based application; downloadable software, namely, software for displaying
`location and physical presence information in wireless telecommunications
`devices that allows persons to synchronize the same with a web or internet—based
`application, in International Class 9;
`
`business networking services conducted via wireless telecommunications
`
`networks and via electronic and optical communications networks; promoting and
`
`advertising the goods and services of others, in International Class 35;
`
`text and numeric digital wireless messaging services, in International
`Class 38
`
`online and mobile social networking services conducted via wireless
`
`telecommunications networks and via electronic and optical communications
`networks; social mapping services, namely, providing social networking services
`
`with location-based functions, in International Class 45.
`
`COMPLAINT
`
`-4-
`
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`
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`
`1
`
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`
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`
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`
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`
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`
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`
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`
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`
`26
`
`27
`
`28
`
`

`
`Case 3:08-cv-027$-JSW Document 1
`
`Filed O6/O3/ 008
`
`Page 6 of 15
`
`l6.
`
`The LOOPT Registrations are valid and constitute prima facie evidence of
`
`Loopt’s exclusive right to use the LOOPT mark in commerce in connection with the goods and
`
`services specified in the registrations.
`
`17.
`
`Loopt promotes and offers its products and services, in part, through a website at
`
`the domain name www.loopt.com.
`
`I)efendant’s Use of the LOOP’D and LOOP’D NETWORK Marks and the “loopd.com”
`
`Domain Name
`
`18.
`
`Loopt is informed and believes, and therefore alleges, that Loop’d uses the marks
`
`LOOP’D and LOOP’D NETWORK in connection with online social networking services.
`
`19.
`
`On information and belief, Defendant’s social networking service allows its users
`
`to communicate about common areas of interest, send messages to each other, and review and
`
`discuss various products, attractions, or events.
`
`20.
`
`On information and belief, Loop’d did not use the LOOP’D or LOOP’D
`
`NETWORK marks in commerce before February 2007 at the earliest, after Loopt first filed an
`
`application for the LOOPT trademark in the United States and after Loopt began use of its
`
`LOOPT trademark in commerce in the United States.
`
`21.
`
`On information and belief, Loop’d provides its online social networking service at
`
`the domain name www.loopd.com.
`
`22.
`
`On information and belief, Loop’d filed a trademark application at the U.S. Patent
`
`and Trademark Office for the mark LOOP’D NETWORK and Design (Application Ser. No.
`
`77/268213) (the “Loop’d Application”). The mark in the application includes a stylized version
`
`of the LOOP’D NETWORK mark in red, white, and beige with the “LOOP’D” portion of the
`
`mark in much larger type, along with a depiction of a “white man figure outlined in brown,
`
`wearing a red cap.” The application claims a first use date of February 1, 2007 for the goods in
`
`International Class 9, and July 1, 2007 for the services listed in class 42. This application was
`
`2%
`
`24
`
`25
`
`26
`
`published on February 12, 2008 with the following listing of goods and services:
`
`Downloadable software for the development of websites, in International
`
`Class 9;
`
`COMPLAINT
`
`-5-
`
`

`
`Case 3:O8—cv-O27.67p—JSW Document 1
`V
`
`Filed oe/os/ 008
`
`Page 7 of 15
`
`Computer services, namely, hosting an online community network
`
`featuring individual websites in the field of sports, athletes, apparel, sporting
`
`goods and equipment, in International Class 42.
`
`23.
`
`On November 6, 2007, Loopt sent a cease and desist letter to Loop’d, demanding
`
`that Loop’d cease use of the LOOP’D trademark for Defendant’s social networking service.
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`24.
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`In a November 15, 2007 e-mail message to Loopt’s counsel, Loop’d
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`acknowledged receipt of the November 6, 2007 letter, but declined to comply with Loopt’s
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`demands.
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`25.
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`On information and belief, since its acknowledged receipt of Loopt’s letter,
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`Loop’d has willfully continued to use the LOOP’D and LOOP’D NETWORK trademarks in
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`connection with its online social networking service.
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`26.
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`On information and belief, Loop’d redesigned its website and its logo in May
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`2008. In connection with this redesign, Loop’d began use of a logo that incorporates the stylized
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`type of LOOP’D NETWORK mark in the Loop’d Application, but does not include the design
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`element of the logo, namely, the figure of a man in a red cap.
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`27.
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`In view of the near identity of Defendant’s marks LOOP’D NETWORK and
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`LOOP’D with the LOOPT mark of Loopt, for use in connection with highly similar goods and
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`services, among other factors, Defendant’s use of the LOOP’D and LOOP’D NETWORK marks
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`is likely to cause confusion in the marketplace. The resulting confusion will cause damage to
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`Loopt, and will injure its reputation in the trade and with the public.
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`FIRST CAUSE OF ACTION
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`(Infringement of Registered Trademarks, l5 U.S.C. § 1114)
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`28.
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`Plaintiff realleges and incorporates by reference paragraphs 1 though 27 above as
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`though fully set forth herein.
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`29.
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`30.
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`Plaintiff is the owner of the LOOPT Registrations.
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`Defendant has used in commerce, without Plaintiff’ s consent, marks that are
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`highly similar to Plaintiffs federally registered trademarks. Taking into account the extremely
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`COMPLAINT
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`Case 3:08-cv-02767-JSW Document 1
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`Filed 06/03/ 008
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`Page 8 of 15
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`similar commercial activities of the parties, among other factors, Defendant’s use of such
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`trademarks is likely to cause confusion, deception, or mistake among consumers.
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`31.
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`As a consequence of Defendant’s infringement of the marks in the Loopt
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`Registrations, Plaintiff is entitled to an injunction as set forth below, an order of destruction of all
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`of Defendant’s infringing materials, Defendant’s profits, Plaintiffs damages, and Plaintiffs
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`costs of action.
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`32.
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`Defendant’s willful and unauthorized use of the LOOP’D and LOOP’D
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`NETWORK marks has damaged Plaintiff in an amount to be proved at trial. As a consequence
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`of Defendant’s willful conduct, Plaintiff has suffered irreparable harm and will continue to do so
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`unless Defendant’s unlawful conduct is enjoined.
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`33.
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`As a consequence of Defendant’s willful infringement, Plaintiff is entitled to
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`recover from Defendant treble damages, treble profits, and Plaintiffs costs and attorneys’ fees
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`incurred in connection with this action.
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`SECOND CAUSE OF ACTION
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`(False Representation and False Designation of Origin, l5 U.S.C. § ll25(a))
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`34.
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`Plaintiff realleges and incorporates by reference paragraphs 1 through 33 above as
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`though fully set forth herein.
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`35.
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`Defendant’s acts described above, including its use in commerce of marks that are
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`highly similar to the LOOPT trademark, are likely to cause confusion, mistake, or deception as to
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`the source, sponsorship, affiliation or approval of Defendant’s services. Further, Defendant’s
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`acts described above constitute false representations of fact that are likely to cause confusion,
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`mistake, or deception as to the source, sponsorship, affiliation, or approval of Defendant’s
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`services.
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`36.
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`As a consequence of Defendant’s violation, Plaintiff is entitled to an injunction as
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`set forth below, an order of destruction of all of Defendant’s infringing materials, Defendant’s
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`profits, Plaintiff’ s damages and Plaintiffs costs of action.
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`COMPLAINT
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`Document 1
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`Filed O6/O3/ 008
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`Page 9 of 15
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`37.
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`As a consequence of Defendant’s willful infringement, Plaintiff is entitled to
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`recover from Defendant treble damages, treble profits, and Plaintiffs costs and attorneys’ fees
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`incurred in connection with this action.
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`THIRD CAUSE OF ACTION
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`(Refusal of Trademark Application)
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`38.
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`Plaintiff realleges and incorporates by reference paragraphs 1 through 37 as
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`though fully set forth herein.
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`39.
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`Plaintiff's use of and application for the LOOPT mark is prior to Defendant’s use
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`of and application for the mark in the Loop’d Application.
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`40.
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`The Loop’d Application is likely to be confused with Plaintiffs LOOPT
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`trademark, because the marks are confusingly similar in appearance, sound, and meaning, and
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`convey a confusingly similar commercial impression.
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`41.
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`The goods and services in the Loop’d Application are identical or highly related
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`to Plaintiffs goods and services offered in connection with the LOOPT mark, and use of
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`LOOP’D NETWORK mark on such goods and services would so nearly resemble Plaintiffs use
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`as to be likely to cause confusion, mistake, or deception
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`42.
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`On information and belief, Defendant has ceased use of the mark in the Loop’d
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`Application.
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`43.
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`On information and belief, Defendant has ceased use of the mark in the Loop’d
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`Application, without an intention to resume use.
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`44.
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`On information and belief, Defendant has abandoned the mark in the Loop’d
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`Application.
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`45.
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`Plaintiff has been damaged and will likely continue to be damaged by the Loop’d
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`Application, as the mark in the Loop’d Application is highly similar to Plaintiffs LOOPT mark
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`and the marks in the Loopt Registrations, for use in connection with highly similar products and
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`services. As such, confusion in the trade and in the public is likely to result, injuring Plaintiffs
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`reputation in the trade and with the public.
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`COMPLAINT
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`2 Case 3:08-cv-027E’/':JSW Documentt
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`Filed O6/O3/ O8
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`Page10oft5
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`3
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`46.
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`Accordingly, Plaintiff is entitled to an order from this Court refusing registration
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`of the Loop’d Application. With respect to this order, Plaintiff requests certification to the
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`Director of the U.S. Patent and Trademark Office instructing the Director to make the
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`appropriate entries upon the U.S. Patent and Trademark Office’s records.
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`FOURTH CAUSE OF ACTION
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`(Violation of Anticybersquatting Consumer Protection Act, 15 U.S.C. § ll25(d))
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`47.
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`Plaintiff realleges and incorporates by reference paragraphs 1 through 46 as
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`though fully set forth herein.
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`48.
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`Defendant registered the domain name www.loopd.com and uses the domain
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`name as the site of its online social networking service.
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`49.
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`Defendant has registered and used a domain name that is confusingly similar to
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`Plaintiffs LOOPT trademark.
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`50.
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`Defendant did not use the domain name www.loopd.com in connection with the
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`bona fide offering of any goods or services before Plaintiff developed enforceable rights in the
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`LOOPT trademark.
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`51.
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`Defendant does not make bona fide noncommercial or fair use of the LOOPT
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`trademark at www.loopd.com.
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`52.
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`Defendant intends to divert consumers seeking Plaintiff’ s products and services to
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`its own social networking website at www.loopd.com by creating a likelihood of confusion as to
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`the source, sponsorship, affiliation or endorsement of the website at www.loopd.com.
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`Defendant’s acts are for commercial gain and harm the goodwill Plaintiff has earned in its
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`LOOPT trademarks.
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`53.
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`Defendant’s acts described above demonstrate bad faith intent to profit from
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`25
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`Plaintiffs LOOPT mark.
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`54.
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`As a consequence, Plaintiff is entitled to an injunction as set forth below,
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`Defendant’s profits, Plaintiffs damages, statutory damages, and costs of action.
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`26
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`27
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`COMPLAINT
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`Filed O6/O3¢2})O8
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`Page 11 of15
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`55.
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`Because this is an exceptional case, involving calculated and willful misconduct
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`by Defendant, Plaintiff is entitled to recover treble damages, treble profits and attorneys’ fees
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`against Defendant.
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`FIFTH CAUSE OF ACTION
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`(Unlawful Business Practices — Cal. Bus. & Prof. Code § 17200 et seq.)
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`56.
`
`Plaintiff realleges and incorporates by reference paragraphs 1 through 55 as
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`though fully set forth herein.
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`57.
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`Defendant’s use of a trademark and domain name that is confusingly similar to
`
`those used by Plaintiff constitutes unfair, deceptive, untrue and misleading advertising.
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`58.
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`Defendant’s actions complained of herein are unlawful, unfair, or fraudulent
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`business acts or practices, constituting unfair competition in violation of California Business and
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`Professions Code §l7200 et seq.
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`59.
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`Defendant’s acts described above have greatly and irreparably damaged Plaintiff
`
`and will continue to damage Plaintiff unless enjoined by this Court. Accordingly, Plaintiff is
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`entitled to an injunction under California Business and Professions Code §17203, as well as
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`restitution and disgorgement of Defendant’s profits.
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`SIXTH CAUSE OF ACTION
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`(False Advertising ~ California Business & Professions Code §l7500 et seq.)
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`60.
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`Plaintiff realleges and incorporates by reference paragraphs 1 through 59 as
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`though fully set forth herein.
`
`61.
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`Defendant’s ongoing offers of services under the marks LOOP’D and LOOP’D
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`NETWORK are disseminated to and received by the public in California. Defendant has
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`engaged in these actions with the intent to provide its services, and/or to induce the public to
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`enter into an obligation relating to such services. Such actions (which are likely to deceive the
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`public as to the source, sponsorship, affiliation, or approval of Defendant’s products) constitute
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`unfair, deceptive, untrue or misleading advertising under California Business and Professions
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`Code §17500, and also amount to a separate and further violation of California Business and
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`12
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`13
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`14
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`1%
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`16
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`17
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`18
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`19
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`in
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`22
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`2%
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`24
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`25
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`26
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`Professions Code §l7200 et seq.
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`COMPLAINT
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`Case 3:O8—cv—O27{’;JSW Document 1
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`Filed O6/OC12j)O8
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`Page 12 of 15
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`62.
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`Defendant’s acts described above have greatly and irreparably damaged Plaintiff
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`and will continue to damage Plaintiff unless enjoined by this Court. Accordingly, Plaintiff is
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`entitled to an injunction under California Business and Professions Code §17535, as well as
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`restitution and disgorgement of Defendant’s profits.
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`SEVENTH CAUSE OF ACTION
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`(Common Law Unfair Competition)
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`63.
`
`Plaintiff realleges and incorporates by reference paragraphs 1 through 62 as
`
`though fully set forth herein.
`
`64.
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`Defendant’s acts described above constitute unfair competition in violation of the
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`common law of the State of California.
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`EIGHTH CAUSE OF ACTION
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`(Common Law Trademark Infringement)
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`65.
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`Plaintiff realleges and incorporates by reference paragraphs 1 through 64 as
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`though fully set forth herein.
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`66.
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`Defendant’s acts described above constitute willful trademark infringement under
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`the common law of the State of California.
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`67.
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`Defendant’s acts described above have greatly and irreparably damaged Plaintiff
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`and will continue to damage Plaintiff unless enjoined by this Court. Plaintiff is entitled to an
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`injunction as set forth below, as well as damages to be proved at trial.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays for judgment in its favor and against Defendant as
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`follows:
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`a.
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`That the Court preliminarily and permanently enjoin Defendant, its subsidiaries,
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`parent and affiliated companies, successors, assigns, officers, directors, agents,
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`partners, servants, employees, and attorneys of those companies or individuals,
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`and all others in active concert or participation with Defendant, from using the
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`LOOP’D and LOOP’D NETWORK marks, the www.loopd.com domain name,
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`COMPLAINT
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`-1 1-
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`Case 3:08-cv—O27€7;JSW
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`Document 1
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`Filed O6/O3/
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`P 08
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`Page 13 of 15
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`and any other mark, word, name or domain name that is likely to cause confusion
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`with Plaintiffs trademarks;
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`That the Court require Defendant and all others holding by, through or under
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`them, to deliver up for destruction all products, labels, signs, prints, packages,
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`wrappers, receptacles, advertisements, website content, television advertisements
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`and other electronic forms of data in its possession or control bearing the
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`LOOP’D mark, the LOOP’D NETWORK mark and related trademarks, the
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`www.loopd.com domain name, and any other variation of Plaintiff’ s marks;
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`That the Court order the Director of the U.S. Patent and Trademark Office to
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`refuse registration of the Loop’d Application;
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`That the Court order Defendant to take all actions necessary to transfer to Plaintiff
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`all domain names registered by Defendant containing Plaintiffs trademarks or
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`marks confusingly similar thereto, including the www.loopd.com domain name;
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`That the Court order Defendant to pay the maximum statutory damages available
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`for the registration and/or use of the www.loopd.com domain name;
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`That the Court order Defendant, and all others enjoined in this action, jointly and
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`severally, to file with the Court and serve on Plaintiff an affidavit setting forth in
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`detail the manner and form in which they have complied with the terms of the
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`injunction;
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`That the Court require Defendant to account for and pay to Plaintiff treble the
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`amount of all profits derived by Defendant as