Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA426039
`ESTTA Tracking number:
`08/19/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91196055
`Plaintiff
`BBY Solutions, Inc.
`MICHAEL S METTEAUER
`FULBRIGHT JAWORSKI LLP
`98 SAN JACINTO BOULEVARD, SUITE 1100
`AUSTIN, TX 78701
`UNITED STATES
`aotrademark@fulbright.com, mmetteauer@fulbright.com,
`csbaker@fulbright.com, kpfertner@fulbright.com
`Motion to Suspend for Civil Action
`Charles S. Baker
`aotrademark@fulbright.com, mmetteauer@fulbright.com,
`csbaker@fulbright.com, kpfertner@fulbright.com
`/Charles S. Baker/
`08/19/2011
`Motion to Suspend.pdf ( 32 pages )(1099554 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 TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No.: 77/841,065
`by Elephant Group, Inc. for the Mark: SUPPORTSQUAD
`Filed: October 5, 2009
`
`Published in the Official Gazette
`
`on April 20, 2010
`
`BBY SOLUTIONS, INC.
`Opposer,
`
`V.
`
`ELEPHANT GROUP, INC.,
`
`Applicant.
`
`Opposition No. 91196055
`
`MOTION TO SUSPEND PROCEEDINGS DUE TO PENDING CIVIL ACTION
`
`Pursuant to Trademark Rule 2.117(a), BBY Solutions, Inc. (“BBY Solutions”) hereby
`
`moves to suspend these proceedings due to the filing of a trademark infiingement and unfair
`
`competition lawsuit on August 2, 2011 by BBY Solutions against Applicant Elephant Group, Inc.
`
`(“Elephant Group”) in the District Court for Minnesota, and in support thereof would show as
`
`follows:
`
`1.
`
`On August 12, 2010 the above Opposition was commenced. Since that time the
`
`parties have conducted limited discovery, namely the exchange of documents and responding to
`
`Interrogatories as well as serving one third party subpoena.
`
`90522547.l
`
`

`
`2.
`
`On August 2, 2011, BBY Solutions, along with two other related entities, filed suit
`
`against Elephant Group and several other related entities, as well as the principal owner of these
`
`entities, in federal district court in Minnesota, entitled BBY Solutions, Inc., et al v. Elephant Group,
`
`Inc., et al, Case 0:11-cv-02195-DSD-JJK, in the United States District Court, District of Minnesota
`
`(the “Minnesota Infringement Action”). The Complaint that was filed in that action, a true and
`
`correct copy of which is attached hereto as Exhibit A, alleges a number of claims, including
`
`trademark infringement, dilution and unfair competition. See Complaint, pp.1-14. The Complaint
`
`also seeks, among other remedies, an injunction prohibiting the defendants, including Elephant
`
`Group, from (1) using the mark SUPPORTSQUAD anywhere in the United States; and (2)
`
`registering the mark SUPPORTSQUAD, as well as an order certified to the USPTO, directing that
`
`the current Application be refused with prejudice. See, Complaint at pp. 14-16.
`
`3.
`
`Under Trademark Rule 2.1l7(a), whenever the Board becomes aware that the parties
`
`in an opposition have become parties to a civil action that may be dispositive of the issues pending
`
`before the Board, the Board may suspend the opposition pending resolution of the civil action if the
`
`issues before the court have any bearing on the Board’s decision in the opposition due to the fact
`
`that a federal court’s decision is binding on the Board whereas the Board’s decision is not binding
`
`on the court. Forest Laboratories Inc. v. G. D. Searle & Co., 52 U.S.P.Q.2d 1058, 1061 T.T.A.B.
`
`1999). Thus, the civil action does not have to be dispositive of the Board proceeding to warrant
`
`suspension, it need only have a bearing on the issues before the Board. Trademark Rule 2.1l7(a);
`
`accord, 6 McCarthy on Trademarks and Unfair Competition _32:47 (4th Edition updated May,
`
`2011) (“It is standard procedure for the Trademark Board to stay administrative proceedings
`
`pending the outcome of court litigation between the same parties involving related issues.”)
`
`90522547.1
`
`-2-
`
`

`
`4‘.
`
`In the present case, the Board should suspend these proceedings pending resolution
`
`of the Minnesota Infringement Action because a decision by the Minnesota district court could have
`
`bearing on the exact
`
`issues in this proceeding. For example, if BBY Solutions is successful in its
`
`case, it could obtain an injunction prohibiting any use of the mark SUPPORTSQUAD, which is the
`
`mark at issue in this proceeding. Moreover, BBY Solutions has also sought to enjoin any attempts
`
`to register the SUPPORTSQUAD mark, and has also asked for the issuance of an order directed to
`
`the USPTO to refuse registration of this mark. Therefore, because such relief if granted would not
`
`allow Elephant Group to proceed with unrestricted registration, and because Elephant Group’s
`
`entitlement to such registration is the issue before this Board, the district court’s decision clearly has
`
`a bearing on the issues before the Board and thus the Board should suspend these proceedings until
`
`resolution of the Minnesota Infringement Action.
`
`5.
`
`Finally, if this proceeding is suspended no prejudice will occur to Elephant Group.
`
`As noted previously, little discovery was been conducted to date and in fact that parties have not
`
`taken one deposition to date. This is not the case where these proceedings are so far along that it
`
`would be unfair and prejudicial to suspend the matter. See, Boyds Collection Ltd. V. Herrington &
`
`Company, 65 U.P.S.Q. 2d 2017, 2003 WL 152427 (T.T.A.B. 2003) (where the parties engage in
`
`discovery, take testimony, offer evidence and file briefs, it would be unfair and prejudicial to
`
`suspend the opposition).
`
`6.
`
`BBY requested Elephant Group to consent to this Motion but as of the filing of this
`
`Motion, Elephant Group has not granted its consent.
`
`For all of the forgoing reasons, BBY Solutions, Inc. prays that the Board suspend these
`
`proceedings until resolution of the Minnesota Infringement Action.
`
`90522547.l
`
`-3-
`
`

`
`Date: August 19, 2011
`
`Respectfully submitted,
`
`FULBRIGHT & JAWORSKI L.L.P.
`
`M/l
`Charles S. Baker
`1301 McKinney, Suite 5100 mg;
`Houston, TX 77010
`‘>2
`aotrademark@fulbright.com,
`mmetteauer@fu1bright.com,
`csbaker@fu1bright.com, kpfertner@fu1bright.com
`Tel: 512.474.5201
`
`Fax: 512.536.4598
`
`ATTORNEYS FOR BBY SOLUTIONS, INC.
`
`905225411
`
`-4-
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing MOTION TO SUSPEND
`PROCEEDINGS DUE TO PENDING CIVIL ACTION has been served on Timothy L. Skelton
`by mailing said copy on August 19, 2011 Via First Class Mail, postage prepaid to:
`
`TIMOTHY L SKELTON
`
`ROBERS MAJESKI KOHN & BENTLEY
`
`515 SOUTH FLOWER STREET, SUITE 1100
`
`LOS ANGELES, CA 90071-2213
`UNITED STATES
`
`tske1tor1@1mkb.com, rfeing1ass@saVeo1ogy.corn
`
` Q_
`
`90522547.1
`
`

`
`EXHIBIT A
`
`

`
`CASE 0:11-cv—O2195-DSD -JJK Document 1
`
`Filed 08/02/11 Page 1 of 17
`
`IN THE UNITED STATES DISTRICT COURT
`
`DISTRICT OF MINNESOTA
`
`Civil Action No.
`
`COMPLAINT
`
`(Jury Trial Demanded)
`
`)
`)
`)
`)
`)
`)
`)
`
`) ) ) ) ) )
`
`BBY SOLUTIONS, INC.,
`BEST BUY STORES, L.P.
`AND BESTBUY.COM, L.L.C.
`Plaintiffs,
`
`V.
`
`ELEPHANT GROUP, INC.,
`SAVEOLOGY.COM , LLC,
`SUPPORTSQUADCOM LLC and
`BENZION ABOUD
`
`Defendants.
`
`ORIGINAL COMPLAINT FOR TRADEMARK INFRINGEMENT, DILUTION,
`UNFAIR COMPETITION, DECEPTIVE TRADE PRACTICES,
`CYBERSQUATTING, AND UNJUST ENRICHMENT
`
`Plaintiffs, BBY Solutions, Inc., Best Buy Stores, L.P. and BestBuy.com, L.L.C.,
`
`by Way of complaint against the Defendants, state and allege as follows:
`
`PARTIES
`
`1.
`
`BBY Solutions, Inc. (“BBY Solutions”) is a Minnesota corporation having
`
`its principal place of business in Richfield, Minnesota. BBY Solutions, a wholly-owned
`
`subsidiary of Best Buy Enterprise Solutions, Inc., which is a wholly-owned subsidiary of
`
`Best Buy C0,, Inc., owns the GEEK SQUAD® mark at issue herein.
`
`2.
`
`Best Buy Stores, L.P. (“Best Buy Stores”) is a Virginia limited partnership
`
`with its principal place of business located at 7601 Penn Avenue South, Richfield, MN
`
`55423-3645.
`
`90512563.1
`
`— 1 —
`
`

`
`CASE 0:11-cv-02195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 2 of 17
`
`3.
`
`BestBuy.com, L.L.C., (“BestBuy.Com”) is a Delaware limited liability
`
`company with its principal place of business located at 7601 Penn Avenue South,
`
`Richfield, MN 55423-3645. Best Buy Stores and BestBuy.Com use the GEEK SQUAD
`
`mark under license from BBY Solutions. Best Buy Stores, BestBuy.Com and BBY
`
`Solutions and their predecessors-in—interest are collectively or individually referred to
`
`herein as “Best Buy.”
`
`4.
`
`On information and belief, Defendant Elephant Group, Inc. is a Delaware
`
`corporation that owns and operates a computer technical support service, which it
`
`advertises under the name “SupportSquad.” On information and belief, Defendant has its
`
`principal place of business at 3303 West Commercial Boulevard, Fort Lauderdale,
`
`Florida 33309.
`
`5.
`
`On information and belief, Defendant Saveology.com LLC is a Florida
`
`limited liability company that owned and operated a computer technical support service,
`
`which it advertised under the name “SupportSquad” for a period of time prior to or
`
`concurrently with Defendant Elephant Group LLC’s ownership and operation of that
`
`same service. On information and belief, Defendant’s manager is Defendant Elephant
`
`Group LLC and it too has its principal place of business at 3303 West Commercial
`
`Boulevard, Fort Lauderdale, Florida 33309.
`
`6.
`
`On information and belief, Defendant SupportSquad.com LLC is a Florida
`
`limited liability company that owns and operates a computer technical support service,
`
`which it advertises under the name “SupportSquad.” On information and belief,
`
`90512563.1
`
`— 2 -
`
`

`
`CASE 0:11—cv—02195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 3 of 17
`
`Defendant SupportSquad.com LLC’s manager is Defendant Elephant Group LLC and has
`
`its principal place of business at 3303 West Commercial Boulevard, Fort Lauderdale,
`
`Florida 33309.
`
`7.
`
`On information and belief, Defendant Benzion Aboud is an individual that
`
`is the principal owner and operator of Defendants Elephant Group, Inc., Saveology LLC
`
`and SupportSquad.com LLC (collectively, the “SupportSquad Entities) that in turn own
`
`and operate a computer technical support service, which they advertise under the name
`
`“SupportSquad.” On information and belief, Defendant Aboud is the founder and
`
`President of Defendant Elephant Group LLC as Well as the founder and CEO of
`
`Defendant Saveology.com LLC. On information and belief, Defendant Aboud resides in
`
`Florida and may be served at his principal place of business at 3303 West Commercial
`
`Boulevard, Fort Lauderdale, Florida 33309.
`
`NATURE OF THIS ACTION; JURISDICTION OF THE COURT; VENUE
`
`8.
`
`This is an action for trademark infringement, dilution, cybersquatting, and
`
`unfair competition under the Trademark Act of 1946, as amended, 15 U.S.C. § 1051 gt
`
`_s_e_g_. (“Lanham Act”), for trademark dilution under the Minnesota Anti-Dilution Statute,
`
`Minn. Stat. Ann. § 333.285 and the dilution laws of other states where Defendants are
`
`conducting their activities, for deceptive trade practices under Minnesota’s Deceptive
`
`Trade Practices Act, Minn. Stat. §325D.44 g §eg_., and for trademark infringement,
`
`unfair competition, and unjust enrichment under the common law of Minnesota and other
`
`states where Defendants are conducting their activities.
`
`90512563.l
`
`- 3 -
`
`

`
`CASE O:11—cv-O2195—DSD —JJK Document 1
`
`Filed 08/02/11 Page 4 of 17
`
`9.
`
`This Court has jurisdiction over the subject matter of this action under 15
`
`U.S.C. § 1121 and 28 U.S.C. § 1331 and 1338 (a) and (b), and has supplemental
`
`jurisdiction under 28 U.S.C. § l367(a) over Best Buy’s claims under state law. This
`
`Court also has jurisdiction under 28 U.S.C. § 1332 because this is a civil action where the
`
`matter in controversy exceeds the sum or value of $75,000, exclusive of interest and
`
`costs, and is between citizens of different States.
`
`10.
`
`Venue is proper in this District pursuant to 28 U.S.C. § 139l(b).
`
`BEST BUY AND ITS “GEEK SQUAD” MARK
`
`11.
`
`Best Buy, a multi-national consumer electronics retailer, offers technical
`
`support services throughout the country under the GEEK SQUAD® mark, and is North
`
`America’s largest
`
`technology support organization. Best Buy is the owner of the
`
`following U.S. Trademark Registrations for its GEEK SQUAD trademark:
`
`REG. NO. MARK
`
`
`GOODS/SERVICES
`FIRST USE IN
`
`COMMERCE
`
`(at least as early
`
`
`
`
`
`International Class 37: computer
`installation and repair
`
`May 20, 1994
` International Class 42: design of
`
`
`
`
`
`
`namely, T-shirts September, 1994
`International Class 25: clothing,
`
`
`
`computers, computer software
`and computer networks
`
`905125631
`
`- 4 -
`
`I
`
`1,
`
`943,643
`
`2,023,380
`
`

`
`CASE 0:11-cv-O2195—DSD -JJK Document 1
`
`Filed 08/02/11 Page 5 of 17
`
`
`
`FIRST USE IN
`GOODSISERVICES
`COMMERCE
`
`
`
`(at least as early
`
`June 16, 1994
`
`International Class 37: computer
`installation and repair
`
`
`
`
`International Class 42: design of
`computers, computer software
`and computer networks
`
`
`
`International Class 37: computer May 20, 1994
`installation and repair services
`
`
`
`
`
`October 24, 2004
`
`REG.NO.
`
`2,744,658
`
`GEEK SQUAD
`
`
`
`2,834,408
`
`GEEK SQUAD 24
`HOUR
`
`COMPUTER
`
`SUPPORT TASK
`
`FORCE
`
`
`
`
`
` 3,065,904
`International Class 9: Computer
`(53973
`Squad
`peripherals and accessories,
`
`namely, cables and connectors,
`
`surge protectors, universal power
`supplies and flash drives
`
`
`
`
`3,462,060
`
`
`
`squa‘u
`
`
`
`International Class 37: Home
`theater and car electronics
`
`July 15, 2007
`
`installation and repair
`
`3,457,884
`
`
` International Class 37: Home
`GEEK SQUAD
`theater and car electronics
`
`installation and repair
`
`
`July 15, 2007
`
`U.S. Trademark Registration Nos. 1,943,643, 2,023,380, and 2,744,658 are valid,
`
`subsisting, enforceable, and incontestable pursuant to 15 U.S.C. § 1065. U.S. Trademark
`
`Registration Nos. 2,834,408, 3,065,904, 3,462,060, and 3,457,884 are valid, subsisting
`
`and enforceable. Copies of these registrations are attached as Exhibit A. The marks
`
`covered by these registrations are collectively referred to herein as the “GEEK SQUAD
`
`Marks.”
`
`90512563.]
`
`- 5 -
`
`

`
`CASE 0:11-cv-02195-DSD -JJK Document 1
`
`Filed 08/02/11 Page 6 of 17
`
`12.
`
`Best Buy and its predecessors-in-interest have continuously used the GEEK
`
`SQUAD Marks in interstate commerce for technical support services since 1994. The
`
`GEEK SQUAD Marks are distinctive, and generate a strong following and recognition
`
`among consumers.
`
`13.
`
`Best Buy’s services offered under the GEEK SQUAD Marks include a
`
`range of information technology installation, repair, maintenance and consulting services
`
`offered to consumers and small businesses, such as network set-up and support, data
`
`backup and recovery, security audits, virus and spyware protection, and remote and on-
`
`site support for computers and other consumer electronics products.
`
`14.
`
`Best Buy and its GEEK SQUAD services and employees are referred to as
`
`“the Squad” in some competitor advertising.
`
`15.
`
`Since 1994, Best Buy and its predecessors-in-interest have given notice of
`
`its rights in the GEEK SQUAD Marks by using the appropriate registration symbol.
`
`16.
`
`Best Buy and its predecessors-in-interest,
`
`through continuous
`
`and
`
`uninterrupted use of the GEEK SQUAD Marks, have earned a reputation for
`
`knowledgeable, professional, and courteous customer service, as well as quality products.
`
`This reputation, goodwill, and name recognition have been derived, in part, from its
`
`commitment to service, satisfaction, and quality.
`
`Its reputation, goodwill, trademarks,
`
`and name recognition are valuable assets to Best Buy.
`
`Indeed, Best Buy was recently
`
`named one of Fortune magazine’s fifty most admired companies.
`
`90512563.1
`
`- 6 —
`
`

`
`CASE 0:11-cv-02195-DSD -JJK Document 1
`
`Filed 08/02/11 Page 7 of 17
`
`17.
`
`Best Buy and its predecessors—in—interest have invested a substantial
`
`amount of money and effort in advertising and promoting the GEEK SQUAD Marks.
`
`Best Buy’s substantial promotional, advertising, publicity, and public relations activities
`
`further promote the recognition and goodwill associated with its GEEK SQUAD Marks.
`
`These activities include television, print media, billboard, online, radio and newspaper
`
`advertisements, promotional
`
`items, outdoor mobile advertising, such as on GEEK
`
`SQUAD® vehicles, and any and all other advertising media.
`
`18.
`
`Best Buy launched a website at GeekSquad.com in 1997. Best Buy uses
`
`the GEEK SQUAD Marks extensively on this website and on Best Buy’s website,
`
`BestBuy.com, to market its technical support services.
`
`19.
`
`Since 1994, Best Buy and its predecessors—in-interest have prominently
`
`featured the color orange in the GEEK SQUAD logo, on the GeekSquad.com website and
`
`other advertising of the GEEK SQUAD services, and in other presentations of the GEEK
`
`SQUAD Marks. As a result, the color orange has become associated with Best Buy’s
`
`GEEK SQUAD services.
`
`20.
`
`As a result of the above efforts, Best Buy’s GEEK SQUAD Marks have
`
`become famous in Minnesota and throughout the country
`
`DEFENDANTS AND THEIR ACTIVITIES
`
`21.
`
`On information and belief, one or more of the Defendants registered the
`
`domain name supportsquad.com through GoDaddy.corn on June 18, 2009, launched a
`
`website at ‘www.supp,o‘rtsqL1ad.co’ni., and subsequently began to advertise remote technical
`
`90512563.1
`
`- 7 —
`
`

`
`CASE 0:11—cv—O2195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 8 of 17
`
`support services for computers and other consumer electronics products under the
`
`SUPPORTSQUAD mark.
`
`22.
`
`Defendants have marketed and market their technical support services on
`
`their www.supportsguaclcom website and through telemarketing calls.
`
`23.
`
`Defendants also operate several online social networking profiles for
`
`SupportSquad
`
`at
`
`www.facebook.com/Su'_ ortS _uad
`
`
`
`littp://wwwtwitter.com/supportsquad,
`
`and
`
`http://www.voutube.com/supportsguad.
`
`Defendants prominently feature the color orange in their SUPPORTSQUAD logo and on
`
`their SupportSquad.com website and other advertising of their technical support services.
`
`24.
`
`Defendant Elephant Group LLC filed an application with the United States
`
`Patent and Trademark Office on October 5, 2009 to register the mark SUPPORTSQUAD
`
`on the Principal Register for “Technical support services, namely, troubleshooting in the
`
`nature of the repair of computer hardware” in International Class 37. The services
`
`covered by Defendant’s application are identical and directly competitive with the
`
`services offered by Best Buy under the GEEK SQUAD Marks. The application was filed
`
`on a use basis, claiming a date of first use of October 1, 2009.
`
`In contrast, Best Buy has
`
`continuously used the GEEK SQUAD Marks in commerce since 1994 and such marks
`
`became famous in Minnesota and throughout the country prior to Defendants’ first use of
`
`the SUPPORTSQUAD mark.
`
`25.
`
`On
`
`information
`
`and
`
`belief, Defendants
`
`adopted
`
`the mark
`
`SUPPORTSQUAD with knowledge of Best Buy’s use of the GEEK SQUAD Marks.
`
`905125631
`
`— 8 -
`
`

`
`CASE 0:11-cv-02195—DSD -JJK Document 1
`
`Filed 08/02/11 Page 9 of 17
`
`26.
`
`On August 12, 2010, BBY Solutions filed a Notice of Opposition, recorded
`
`as Opposition No. 91196055, with the Trademark Trial and Appeal Board of the United
`
`States Patent and Trademark Office, opposing Defendant Elephant Group Inc.’s
`
`trademark application for the mark SUPPORTSQUAD. That opposition is still pending.
`
`27.
`
`These activities have caused, and are continuing to cause, actual confusion
`
`in the marketplace. This actual confusion has damaged the reputation and goodwill
`
`embodied in Best Buy’s GEEK SQUAD Marks. On information and belief, Defendants
`
`are aware of such actual confusion and have used such confusion for financial gain.
`
`28.
`
`As a result of Defendants above-described conduct, Best Buy has suffered
`
`and continues to suffer damages including, without limitation, the loss of revenue it
`
`would have made but for Defendants’ acts, in an amount to be proven at trial.
`
`EFFECT OF DEFENDANTS’ ACTIVITIES ON THE
`CONSUMING PUBLIC AND BEST BUY
`
`29.
`
`Defendants’ unauthorized use of the SUPPORTSQUAD mark in the
`
`manner described above is likely to cause confusion, to cause mistake, and/or to deceive
`
`consumers as to some affiliation, connection or association of Defendants with Best Buy
`
`and its GEEK SQUAD Marks, or as to the origin, sponsorship, or approval of
`
`Defendants’ services.
`
`30.
`
`Defendants’ unauthorized use of the SUPPORTSQUAD mark in the
`
`manner described above falsely indicates to Best Buy’s existing and prospective
`
`customers that Defendants’ services, originate with Best Buy, or are affiliated, connected
`
`or associated with Best Buy, or are sponsored, endorsed, or approved by Best Buy, or are
`
`905125611
`
`- 9 -
`
`

`
`CASE 0:11-CV-02195-DSD -JJK Document 1
`
`Filed 08/02/11 Page 10 of 17
`
`in some manner related to Best Buy and/or its GEEK SQUAD Marks, services or
`
`products.
`
`31.
`
`Defendants’ unauthorized use of the SUPPORTSQUAD mark in the
`
`manner described above falsely designates the origin of Defendants’ services and falsely
`
`and misleadingly describes and represents facts with respect to Defendants and their
`
`services.
`
`32.
`
`Defendants’ unauthorized use of the SUPPORTSQUAD mark in the
`
`manner described above enables Defendants to trade on and receive the benefit of
`
`goodwill in those marks, which Best Buy has built up in the GEEK SQUAD Marks at
`
`great labor and expense over many years. Defendants’ unauthorized use also enables
`
`them to gain acceptance for their own services not solely on their own merits, but on the
`
`reputation and goodwill of Best Buy and the GEEK SQUAD Marks.
`
`33.
`
`Defendants’ unauthorized use of the SUPPORTSQUAD mark is likely to
`
`cause dilution and is causing dilution of the distinctiveness the GEEK SQUAD Marks by
`
`blurring the distinctiveness of these famous marks.
`
`34.
`
`Defendants’ unauthorized use of the SUPPORTSQUAD mark dilutes the
`
`GEEK SQUAD Mark by tarnishing the goodwill and reputation established by Best Buy
`
`and associated with the GEEK SQUAD Marks.
`
`35.
`
`Defendants’ use of the SUPPORTSQUAD mark in the manner described
`
`above unjustly enriches Defendants at Best Buy’s expense.
`
`905l2563.1
`
`- 10 —
`
`

`
`CASE 0:11-Cv—O2195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 11 of 17
`
`36.
`
`Defendants’ unauthorized use of the SUPPORTSQUAD Mark in the
`
`manner described above removes from Best Buy the ability to control the nature and
`
`quality of services provided under the GEEK SQUAD Mark and places the valuable
`
`reputation and goodwill of Best Buy in the hands of Defendants, over whom Best Buy
`
`has no control.
`
`37.
`
`Defendants’ activities have caused irreparable injury to Best Buy,
`
`its
`
`goodwill and its customer relationships and, unless restrained by this Court, will continue
`
`to cause irreparable injury to Best Buy and to the public. There is no adequate remedy at
`
`law for this injury.
`
`38.
`
`On information and belief, with respect to all acts by the SupportSquad
`
`Entities
`
`in connection with the previously described unauthorized use of
`
`the
`
`SUPPORTSQUAD mark, Defendant Aboud had the right and ability to supervise and
`
`control
`
`such acts, and had a financial
`
`interest
`
`in the unauthorized use of the
`
`SUPPORTSQUAD mark.
`
`In addition, upon information and belief, Defendant Aboud
`
`was involved in the selection of the SUPPORTSQUAD Mark and made the decision for
`
`the SupportSquad Entities to begin improperly using the SUPPORTSQUAD mark.
`
`39.
`
`On information and belief, with respect to each of the previously-described
`
`unauthorized uses of the SUPPORTSQUAD mark, Defendant Aboud also actively
`
`encouraged, facilitated, caused, materially assisted, materially contributed to, and induced
`
`such uses by others, and at such time had actual knowledge of Best Buy’s GEEK
`
`905125631
`
`- ll -
`
`

`
`CASE 0:11—cv—02195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 12 of 17
`
`SQUAD Marks and the lack of authorization by Best Buy to use the SUPPORTSQUAD
`
`mark.
`
`40.
`
`Defendants’ actions complained of herein have been deliberate, willful,
`
`malicious and in bad faith, with the intent to mislead consumers and inflict injury on Best
`
`Buy. This is an exceptional case under 15 U.S.C. § lll7(a).
`
`COUNT I: FEDERAL TRADEMARK INFRINGEMENT
`
`41.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`42.
`
`The acts of Defendants complained of herein constitute infringement of
`
`Best Buy’s federally registered GEEK SQUAD Marks in Violation of 15 U.S.C.
`
`§ 1114(1).
`
`COUNT II: FEDERAL UNFAIR COMPETITION
`
`43.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`44.
`
`The acts of Defendants complained of herein constitute unfair competition
`
`in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § ll25(a).
`
`COUNT III: FEDERAL DILUTION
`
`45.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`46.
`
`The acts of Defendants complained of herein constitute dilution of Best
`
`Buy’s GEEK SQUAD Marks, in violation of the Federal Trademark Dilution Act, 15
`
`U.S.C. § l125(c).
`
`905125611
`
`- 12 -
`
`

`
`CASE 0:11-cv-02195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 13 of 17
`
`COUNT IV: COMMON LAW TRADEMARK INFRINGEMENT
`
`47.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`48.
`
`The acts of Defendants complained of herein constitute trademark
`
`infringement
`
`in violation of the common law of Minnesota and other states where
`
`Defendants are conducting their activities.
`
`COUNT V: DILUTION UNDER STATE LAW
`
`49.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`50.
`
`The acts of Defendants complained of herein constitute dilution of Best
`
`Buy’s GEEK SQUAD Marks in violation of the Minnesota Anti-Dilution Statute, Minn.
`
`Stat. Ann. §333.285, and the dilution laws of other states where Defendants are
`
`conducting their activities.
`
`COUNT VI: DECEPTIVE TRADE PRACTICES ACT
`
`51.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`52.
`
`Defendants’ activities complained of herein constitute violations of the
`
`Minnesota Deceptive Trade Practices Act, Minn. Stat. § 325D.44 Q &1.
`
`COUNT VII: VIOLATION OF ANTI-CYBERS UATTING
`
`CONSUMER PROTECTION ACT 15 U.S.C.
`
`1125 d
`
`53.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`54. Defendants’ activities complained of herein constitute violation of under the
`
`Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § ll25(d).
`
`90512563.1
`
`— 13 -
`
`

`
`CASE 0:11—cv—O2195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 14 of 17
`
`COUNT VIII: UNJUST ENRICHMENT
`
`5 5.
`
`Best Buy repeats the allegations above as if fully set forth herein.
`
`56.
`
`Defendants’ activities complained of herein constitute unjust enrichment of
`
`Defendants at Best Buy’s expense.
`
`JOINT AND SEVERAL LIABILITY AS TO DEFENDANT ABOUD
`
`57.
`
`Defendant Aboud is also jointly and severally liable as a contributory
`
`infringer, insofar as, at a time when he had actual notice of Best Buy’s GEEK SQUAD
`
`Marks and that the SUPPORTSQUAD Mark could not be used without Best Buy’s
`
`permission, he nevertheless
`
`encouraged,
`
`facilitated,
`
`caused, materially assisted,
`
`materially contributed to, and induced the infringement of Best Buy’s trademarks.
`
`58.
`
`Defendant Aboud is also vicariously liable for the SupportSquad Entities’
`
`infringement of Best Buy’s trademarks, and as such is jointly and severally liable for all
`
`amounts which these Defendants may be found liable.
`
`PRAYER
`
`WHEREFORE, BBY Solutions, Inc., Best Buy Stores L.P. and BestBuy.com, L.L.C.
`
`pray that:
`
`A.
`
`Defendants,
`
`their
`
`respective officers,
`
`agents,
`
`servants,
`
`employees,
`
`attorneys, and all those persons in active concert or participation with, through, or under
`
`Defendants, be preliminarily and permanently enjoined and restrained, at first during the
`
`pendency of this action and thereafter perpetually, from:
`
`90512563.!
`
`- 14 —
`
`

`
`CASE O:11—cv-02195-DSD -JJK Document 1
`
`Filed 08/02/11 Page 15 of 17
`
`using or advertising the name and mark “SupportSquad” and the domain
`
`name “supportsquadcorn” or any variation thereof, and any other mark,
`
`trade name or domain name that is confusingly similar to Best Buy’s GEEK
`
`SQUAD Marks or likely to dilute their distinctive quality, including any
`
`other mark or name incorporating a “SQUAD” component;
`
`committing any acts of deceptive or unlawful trade practices calculated to
`
`cause members of the trade or purchasing public to believe that Defendants’
`
`goods or services are the goods or services of Best Buy or sponsored by or
`
`associated with, or related to, or connected with, or in some way endorsed
`
`or promoted by Best Buy under the supervision or control of Best Buy.
`
`committing any acts of unfair competition and from implying a false
`
`designation of origin or a false description or representation with respect to
`
`Best Buy’s GEEK SQUAD Marks;
`
`attempting to register, or assisting or inducing a third party to seek to
`
`register, the mark “SUPPORTSQUAD” or any other mark, trade name or
`
`corporate name confusingly similar to Best Buy’s GEEK SQUAD Marks or
`
`likely to dilute their distinctive quality; and
`
`registering, or assisting or inducing a third party to register, any domain
`
`names incorporating,
`
`in any way, “Support Squad,” or any variation
`
`thereof, or which contain phrases confusingly similar to Best Buy’s GEEK
`
`SQUAD Marks or likely to dilute their distinctive quality.
`
`90512563.l
`
`-15-
`
`

`
`CASE 0:11—cv—02195-DSD —JJK Document 1
`
`Filed 08/02/11 Page 16 of 17
`
`B.
`
`Defendants be ordered to deliver to Plaintiffs any and all signage, invoices,
`
`business cards and other advertising or promotional materials in the possession of
`
`Defendants or under their control bearing the SUPPORTSQUAD mark.
`
`C.
`
`Defendants be ordered to transfer the domain name supportsquad.com to
`
`Plaintiffs.
`
`D.
`
`The Court enter an order pursuant to 15 U.S.C. § 1119, certified to the
`
`United States Patent and Trademark Office, directing that U.S. Application Serial No.
`
`77/841,065 for the mark SUPPORTSQUAD be refused with prejudice.
`
`E.
`
`Defendants be ordered to file with the Court and serve upon Plaintiffs’
`
`counsel within thirty (30) days after the entry and service upon Defendants of an
`
`injunction, a written report under oath setting forth details of the matter in which
`
`Defendants have undertaken to comply and are complying with the Court’s order
`
`pursuant to paragraphs A-C above.
`
`F.
`
`Plaintiffs recover all damages they have sustained as a result of Defendants’
`
`activities and that said damages be trebled.
`
`G.
`
`Plaintiffs, at their election, recover statutory damages permitted under 15
`
`U.S.C.
`
`§
`
`1117(d)
`
`for Defendants’
`
`registration and use of
`
`the domain name
`
`supportsquad.com.
`
`H.
`
`An accounting be directed to determine Defendants’ profits resulting from
`
`Defendants’ illegal activities, and that such profits be paid over to Plaintiff and increased
`
`as the Court finds to be just under the circumstances of this case.
`
`90512563.:
`
`— 16 -
`
`

`
`CASE 0:11—cv-O2195—DSD -JJK Document 1
`
`Filed 08/02/11 Page 17 of 17
`
`I.
`
`J.
`
`Plaintiffs recover their reasonable attorney fees.
`
`Plaintiffs recover their costs of this action and prejudgment and post-
`
`judgment interest.
`
`K.
`
`Plaintiffs recover such other relief as the Court may deem appropriate in the
`
`circumstances.
`
`Dated: August 2, 2011
`
`Respectfully submitted,
`
`/s/Laura J. Borst
`Laura J. Borst, #32548X
`FULBRIGHT & JAWORSKI L.L.P.
`
`2100 IDS Center
`
`80 South Eighth Street
`Minneapolis, Minnesota 55402-2212
`Telephone: (612) 321-2800
`Facsimile: (612) 321-2288
`
`Charles S. Baker, TX #01566200
`(Pro hac vice to befiled)
`FULBRIGHT & JAWORSKI L.L.P.
`
`Fulbright Tower
`1301 McKinney, Suite 5100
`Houston, TX 77010-3095
`Telephone: (713) 651-5151
`Facsimile: (713) 651-5246
`
`ATTORNEYS FOR PLAINTIFFS
`
`BBY SOLUTIONS, INC., BEST BUY
`STORES, L.P., AND BESTBUY.COM, LLC
`
`90512563.1
`
`- 17 -
`
`

`
`CASE 0:11-cv-02195—DSD —JJK Document 1-1
`
`Filed 08/02/11 Page 1 of8
`
`..__....._..................
`
`Exhibit A
`
`
`
`
`
`_._...--11..._.....-.__..._?.__.__-...._.......\..i......
`
`

`
`CASE 0:11-cv-02195-DSD -JJK Document 1-1
`
`Filed 08/02/11 Page 2 of 8
`
`Int. Cls.: 37 and 42
`
`Prior U.S. Cls.: 100, 101, 193 and 106
`
`Reg. No. 1,943,643
`United States Patent and, Trademark Office Registered Dec.26,1995
`
`' SERVICE MARK
`PRINCIPAL REGISTER
`
`
`
`GEEK SQUAD, INC. (MINNESOTA CORPORA-
`- TION)
`A
`' 411 N. WASHINGTON AVENUE, SUITE 108
`MINNEAPOLIS, MN 5540!
`
`FOR: DESIGN OF COMPUTERS, COMPUTER
`SOFTWARE AND COMPUTER NETWORKS ,
`IN CLASS 42 (U.S. CLS. I00 AND 101).
`FIRST USE 5-20-1994;
`IN COMMERCE
`5-20-1994.
`-
`
`FOR: COMPUTER INSTALLATION AND.
`REPAIR, IN CLASS 37 (US. CLS. 100, 103 AND
`106).
`FIRST use
`5.20.1994.
`
`IN COMMERCE
`
`5-20-1994;
`
`SER. N0. 74—545,054, FILED 6-30--1994.
`ZHALEH DELANEY. EXAMINING ATTOR-
`NEY
`‘
`
`

`
`CASE 0:11-cv-02195-DSD -JJK Document 1-1
`
`Filed 08/02/11 Page 3 of 8
`
`Int. CL: 25
`
`Prior U.S