Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA427477
`ESTTA Tracking number:
`08/29/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197150
`Defendant
`Backside Beverages, LLC
`DOUGLAS C HEUVEL
`THOMPSON & KNIGHT LLP
`1722 ROUTH STREET, SUITE 1500
`DALLAS, TX 75201
`UNITED STATES
`deborah.lively@tklaw.com, douglas.heuvel@tklaw.com
`Motion to Suspend for Civil Action
`Deborah L. Lively
`deborah.lively@tklaw.com
`/deborah l. lively/
`08/29/2011
`(8) Motion to Suspend 8-29-11.pdf ( 22 pages )(1092685 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 re Application of:
`Serial No.:
`
`Filed:
`Trademark:
`Int'l Class:
`
`Published:
`
`Backside Beverages, LLC
`77/895724
`
`December 17, 2009
`POMPIS
`32
`
`June 29, 2010
`
`Opposition No. 91197150
`
`§
`
`§ §
`
`§
`§
`§
`§
`
`POMWonderful LLC
`
`Opposer,
`
`v.
`
`Backside Beverages, LLC
`Applicant.
`
`MOTION TO SUSPEND
`
`Pursuant to 37 C.F.R. § 2.1 17(a), Backside Beverages, LLC files this Motion to Suspend
`
`requesting that the Trademark Trial and Appeal Board suspend the aboVe—referenced proceeding
`
`because the parties hereto are adverse parties in the pending civil action POMWondetful LLC v.
`
`Backside Beverages, LLC, Civil No. 2:11-cv-00760-BCW, filed in the United States District Court
`
`for the District of Utah, Central Division (the “Suit”), which may have a bearing on this proceeding.
`
`Pursuant to TBMP § 5l0.02(a), a copy of the complaint filed by POMWonderful LLC is attached
`
`hereto as Exhibit A. Applicant respectfully requests that the Motion be granted and that this
`
`opposition proceeding be suspended until the termination of the Suit.
`
`Respectfully submitted,
`
`
` D borahIL. Lively
`
`Douglas C. Heuvel
`
`Thompson & Knight LLP
`1722 Routh Street, Suite 1500
`
`Dallas, Texas 75201
`
`ATTORNEYS FOR APPLICANT
`
`516341 000()03 DALLAS 2779587.l
`
`

`
`Certificate of Service
`
`I hereby certify that a copy of the foregoing Motion to Suspend for Opposition No. 91 197150
`was served on Opposer POMWonderfu1 LLC’s attorney of record Danielle M. Criona, by email, per
`mutual agreement of the parties, and first class mail on this 29th day of August 2011 to:
`
`Danielle M. Criona
`
`Roll Law Group P.C.
`11444 West Olympic Blvd.
`Los Angeles, CA 90064
`dcriona@roll.com
`
`
`
`Deborah L. Lively
`
`516341 000003 DALLAS 2779587.l
`
`

`
`EXHIBIT A
`
`516341 000003 DALLAS 2779587.1
`
`

`
`
`
`Case 2:11—cv-00760-BCW Document 10
`
`‘W210/»
`Filed 08/23/11 Page 1 of 1
`
`2.:/rye:
`
`UNITEI3 STATES DISTRICT COURT
`hr the
`—
`
`§sffi1}t' ofUt‘ah, Central Division
`
`POMWGNDERFUL LaI:G,..*- a =Del'awafieZ1it}1it"ed"fi8235fi§y
`Finintifi’
`V.
`BACXSWE BEVERAGES LLC‘~'2dba-2P "M533,
`
`Defendant
`
`
`
`)
`)
`)
`)
`)
`
`Civil Aviion N0, 2:11—cv—O0760-BCW
`
`Summons in a CM} Action
`
`To: {Defizndam ‘s nameanzi address)
`
`Backside Beverages; LLC dba POMPIS
`c/o Gian A. Beflinger; Registered Agent
`10,000 North Centrai Expresswa3fi;=Suit3E9_130
`Dalias, Texas 75231
`
`A Lawsuit has bee‘nifi1éd.33ziga3nstI;y0i1..
`
`Within _g_j__ xéifays:-a_fte:vserviAt:g=,_;>iT?t_lz1ssummons on you (not counting the -day you received it), you must serve
`on me plaintiff an answuexto-=tke;a;taeh ‘ ggmpiaint ‘ow motion under Rule 12 of-the Federal Rules ofCivil Procedure. The
`answerer‘ motion must~bs=-serveii. an-the‘:piain1iffs—:anon2ey, whose. name and address are:
`
`siephen‘ K. Chris§an$§¥n.:V§§§.'C£-iiéfiagig T3-fcrriwail &.Mcc_-army. 36 3. State Street, Sums 1900. SLC, UT 84111
`and
`
`M!chaeF:M; Vas:§egmg.=R0H‘-Léw‘=TGmug>PK3gfi444-W. Oiympic: BM, 71?; Fioor. Los Angeies, CA 90064
`
`{fypu."fail”ffJ1.€§G scj,judgm¢nt:_l§y?&é:¥aaiEt*—:
`mustfile-your answer e“r_‘j::i6:ioii‘w5ftirt}gé
`
`Iiibe.a‘n‘tered against you for the relief demanded in the compiaint. You also
`_.!?§:»
`_
`'
`'
`
`
`
`DatIe:___98g23[20ll
`
`>
`
`1
`
` D. Mark Jones
`
`Nameofcourt
`
`Deyuty cferk’s signature
`
`(Use 60 days ifllm defenfiafii 1: Ike. Umtea"£3tarer~qr.~a.lj';xi24:a‘Staias agency, or is an ofliccr or employee of(he United States allowed 60 day: by
`Rule. 12('a){3).}
`
`

`
`Case 2:11—cv-00760-BCW Documentz
`
`Filed O8/22/11 Page1of16
`
`STEPHEN CHRISTIANSEN (SBN 6512)
`schristiansen@vancott.c0m
`VAN COTT, BAGLEY, CORNWALL & MCCARTHY
`36 South State Street, Suite 1900
`(Post Office Box 45340
`
`Salt Lake City, Utah 8411. 1-0340
`Telephone: (801) 532-3333
`Facsimile: (801)534-0058
`
`CHRISTOPHER VAN GUNDY (CA SBN 152359)
`(pro hac vice application pending)
`cvangundy@ro1l.com
`DANIELLE M. CRIONA (CA SBN 204074)
`(pro hac vice application pending)
`dcriona@r011.com
`
`MICHAEL M. VASSEGHI (CA SBN 210737)
`(pro hac vice application pending)
`mvasseghi@roll.com
`SAMARA WEINER (CA SBN 225318)
`(pro hac vice application pending)
`sweiner@roll.com
`
`_
`ROLL LAW GROUP P.C.
`11444 West Olympic Boulevard, 10"‘ Floor
`Los Angeles, California 90064-1557
`Telephone:
`310—966—8400
`Facsimile:
`310-966-8810
`
`Attorneys for Plaintiff
`POM WONDERFUL LLC
`
`IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
`
`CENTRAL DIVISION
`
`
`
`POMWONDERFUL LLC, a Delaware limited
`
`liability company,
`
`Plaintiff,
`
`V-
`
`BACKSIDE BEVERAGES, LLC, a Texas
`
`limited liability company dba POMPIS,
`
`COMPLAINT
`
`Civil N0. 2: I I-cv—0O760—BCW
`
`Magistrate Judge Brooke C. Wells
`
`
`
`Defendant.
`
`,|URY DEMANDED
`
`
`Plaintiff POMW0nd.erful LLC (“Plain.tiff” or “POM”), for its Complaint, alleges as
`
`follows:
`
`

`
`Case 2:11—cv—O0760~BCW Document 2
`
`Filed 08/22/11 Page 2 of 16
`
`NATURE OF ACTION
`
`1.
`
`This action is based on POM’s rights in its federally registered trademarks. Based
`
`on POM’s superior rights to its marks, POM seeks to enjoin Defendant Backside Beverages,
`
`LLC dba Pompis (“Defendant” or “Pompis”) from using Pompis as part of its tradem.ark on the
`
`grounds that such use constitutes, among other things, trademark infringement. POM also seeks
`
`recovery of its damages and attorneys’ fees, and Defendant’s profits.
`
`THE PARTIES
`
`2.
`
`POM is a Delaware limited liability company with its principal place of business
`
`located at 11444 West Olympic Boulevard in Los Angeles, California 90064. POM produces,
`
`markets, sells and distributes pomegranate and pomegranate extract products worldwide in
`
`connection with its highly distinctive POM® brand including, but not limited to, fresh fruit,
`
`juices, tea and coffee beverages, nutritional supplements and snack bars.
`
`3.
`
`POM is informed and believes that Defendant Pompis is a Texas corporation,
`
`doing business in California and with its principal place of business located at 100 N. Central
`
`Expressway, Suite 9, Dallas, Texas, 75201—4312. POM is informed and believes that Pompis is
`
`involved in the manufacture and sale of energy drink beverages.
`
`,| QRISDICTION AND VENUE
`
`4.
`
`This action arises, in part, under the Lanham Act, as amended, 15 U.S.C. §§ 1114
`
`and 1125. This Court has subject matter jurisdiction over this action pursuant to 1.5 U.S.C. §
`
`1121 (trademark infringement claims under the Lanham Act); 28 U.S.C. § 1331 (federal
`
`question), 28 U.S.C. § 1338 (original jurisdiction of trademark claims, or unfair competition
`
`claims related to same) and 28 U.S.C. § 1367 (supplementaljurisdiction).
`
`5.
`
`POM is informed and believes, and based thereon alleges, that venue is proper in
`
`this District pursuant to 28 U.S.C. §§ 1391(1)) and 139l(c) because a substantial part. of the
`
`events giving rise to the claims occurred in this District. Additionally, POM is informed and
`
`believes, and based thereon alleges,
`
`that the Court has personal jurisdiction over Defendant
`
`4849-6597-6586, v.
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`

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`Case 2:11-cv-00760—BCW Document 2
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`Filed 08/22/11 Page 3 of 16
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`because Defendant conducts business activities in this District, and has focused a substantial
`
`portion of its unlawful Conduct in this District.
`
`FACTUAL ALLEGATIONS
`
`I.
`
`The POM® Brand
`
`6.
`
`POM began" producing, selling and marketing its pomegranate products in 2001
`
`and essentially created the existing market in the United States for products made from or
`
`containing pomegranates.
`
`7.
`
`Since 2001, POM has extensively marketed its products in interstate commerce in
`
`connection with a family of highly distinctive trademarks which is comprised of, or includes,
`
`POM (collectively, the “POM® brand”).
`
`8.
`
`The POM® brand has been used in connection with fresh fruit since 2001, with
`
`beverages since 2002, and with concentrated juice extract and related products since 2009.
`
`Attached as Exhibit A are examples of the products sold by POM in connection with its POM®
`
`brand.
`
`9.
`
`POM has invested over 300 million. dollars in the creation, development,
`
`production, marketing and sales of the POM® brand and its products. The POM® brand of juice
`
`has become the best—selling brand of pomegranate juice in the United States, having sold over
`
`150 million. bottles since 2002.
`
`10.
`
`The POM® brand is a unique food and beverage brand whose name is associated
`
`with health and with caring about the health of its consumers.
`
`11.
`
`A significant element of POM’s marketing campaign has been POM’s own focus
`
`on the health benefits of its pomegranate products and the company’s substantial investment in
`
`scientific research that is focused on the health benefits of its products.
`
`12.
`
`POM has invested millions of doll.ars in scientific research to study the health
`
`benefits of pomegranates and advertises this investment to consumers. Much of the research
`
`underwritten by POM has been published in well-known, peer—reviewed joumals.
`
`4849-6597-6586, v.
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`3
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`

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`Case 2:11—cv—00760—BCW Document 2
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`Filed 08/22/11 Page 4 of 16
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`13.
`
`Through the marketing and advertising of the health benefits of its products, the
`
`advertising of its investment in its research program and the publication of POM sponsored
`
`research,
`
`POM has effectively conveyed the message to the public and its consumers that POM is a
`
`company and brand that is focused on, and cares about, the health of its consumers.
`
`H.
`
`The POM® Brand Intellectual Property
`
`14.
`
`POM owns numerous trademark registrations and pending applications in the
`
`United States and around the world for the trademarks it uses in connection with the marketing,
`
`distribution and sale of its POM® brand products in interstate commerce. The POM® brand
`
`trademarks are used in connection with various goods including, but not limited to, fresh
`
`pomegranate fruit and pomegranate juice as well as products which contain fruit juice or fruit
`
`'
`
`juice extracts such as tea beverages, dietary and nutritional supplements, and snack bars.
`
`15.
`
`POM uses unique artwork on its products and with many of its trademarks.
`
`POM’s artwork includes a design in place of the “o” in “pom” and the design is in color which is
`
`unique to POM an.d makes POM’s products recognizable to consumers (the “POM Design”).
`
`16.
`
`POM has numerous trademarks registered with the United States Patent and
`
`Trademark Office, many of which include the distinctive and well known POM Design. The
`
`POM registered trademarks include: POM (Reg. Nos. 2637053); POM & Design (Reg. No.
`
`3047447); POM WONDERFUL (Reg. Nos. 2640835 and 3687491); POM WONDERFUL
`
`Design (Reg. Nos. 2864641, 2780314 and 3687492); POM TEA (Reg. No. 3411595); LIGHT
`
`POM TEA (Reg. No. 3391707); LIGHT POM TEA & Design (Reg. No. 3411596); POM IN A
`
`PILL (Reg. No. 3337435); POM IN A PILL & Design (Reg. No. 3332875); POMEBERRY
`
`(Reg. No. 3382338); POM PASSION (Reg. No. 2944482); POM POWER (Reg. No. 2944481);
`
`POMX (Reg. Nos. 3562516 and 3674405); POMX & Design (Reg. No. 3562517 and 3791124);
`
`POMX SHOTS (Reg. No. 3667882); POMX SHOTS (Reg. No. 3667882); POWERED BY
`
`POMX (Reg. No. 3208934); and POMEGRANATE & Design (Reg. No. 3436526) (collectively,
`
`the “POM Marks”).
`
`4849-6597-6586, v.
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`Case 2:11-cv-00760-BCW Document 2
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`Filed 08/22/11 Page 5 of 16
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`17.
`
`POM’s registrations are valid and subsisting, and POM owns all right, title and
`
`interest to the POM Marks. Registration Nos. 2637053, 2640835, 2780314, 2864641 and
`
`3047447 are incontestable pursuant to 15 U.S.C. Section 1065. Attached hereto as Exhibit B are
`
`printouts of the registration certificates for the POM Marks.
`
`18.
`
`Defendant had constructive notice of POM’s rights in its federally registered
`
`trademarks under 15 U.S.C. Section 1072, which states: “Registration of a mark on the principal
`
`register provided by this Act or under the Act of March 3, 1981, or the Act of February 20, 1905,
`
`shall be constructive notice of the registrant’s claim. of ownership thereof.” POM’s registered,
`
`pending, and common law trademarks constitute a family of marks.
`
`19.
`
`Defendant also had actual notice of POM’s rights no later than the date that it
`
`received notice from POM advising it of POM’s rights.
`
`20.
`
`POM, together with its affiliates, has devoted a great deal of time, money and
`
`resources to develop and extensively market its products in connection with its inherently
`
`distinctive POM® brand to establish and maintain substantial goodwill which has come to be
`
`associated with the POM Marks. The POM Design, in particular, is an extremely valuable and.
`
`highly protected component of its business.
`
`21.
`
`The POM Marks are used uniformly and consistently in every product,
`
`advertisement, and promotion in connection with POM® brand products. POM, its distributors,
`
`and its distributor customers, both nationally and internationally, have continuously and
`
`exclusively used the POM Marks to distinguish themselves as the source of goods and services
`
`in connection therewith.
`
`22.
`
`The POM Marks were custom designed to be distinctive,
`
`innovative and
`
`recognizable to consumers so that the POM Marks would act as a source-identifier. Because of
`
`this, the POM Marks are inherently distinctive.
`
`In the alternative, because of POM’s exclusive
`
`and extensive use,
`
`the POM Marks have acquired secondary meaning and distinctiveness,
`
`becoming extremely well known to the consuming public as identifying and distinguishing POM
`
`exclusively and uniquely as the source of products to which the POM® brand is applied.
`
`4849-6597-(>586. v.
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`I
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`5
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`

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`Case 2:11—cv—00760—BCW Document 2
`
`Filed 08/22/11 Page 6 of 16
`
`23.
`
`POM’s substantial
`
`investment has paid off, as the POM Marks are widely
`
`recognized as a source-—identifier for POM® brand products. By virtue of the popularity of goods
`
`sold in connection with the POM® brand, POM’s advertising and promotion of the POM®
`
`brand, and POM’s diligence in maintaining high standards of quality, POM has built and owns
`
`extremely valuable goodwill which is symbolized by, and associated with,
`
`its POM® brand.
`
`Consequently, the highly distinctive POM® brand h.as become famous.
`
`III.
`
`Extensive Marketing and Promotion of the POM® Brand
`
`24.
`
`POM has pursued direct marketing efforts to grocery, gourmet food, health food,
`
`and other specialty stores, restaurants, health clubs, and health professionals throughout the
`
`world.
`
`25.
`
`POM’s philosophy is
`
`to support worthwhile local community efforts and
`
`simultaneously share advice about healthful foods and beverages such as pomegranates and
`
`pomegranate juice. POM does so as part of an overall goal to promote and contribute to the
`
`health of consumers, including the sale of i.ts own products.
`
`26.
`
`POM also sponsors many high profile charity and health related events such as
`
`the LA Marathon; Nike Women’s Marathon; DC Triathlon; the NYC Triathlon; Cart for a Cause
`
`(benefiting Meals on Wheels); Best Buddies Challenge (benefiting Best Buddies); GLAAD
`
`Media Awards (benefiting Gay and Lesbian Alliance Against Defamation); and the New York
`
`City Wine and Food Festival (benefiting Share Our Strength). Attached as Exhibit C are
`
`photographs which illustrate some of POM’s charitable efforts.
`
`27.
`
`POM has invested substantially in the POM® brand, spending millions of dollars
`
`worldwide in the marketing, advertising, sales and promotion of the POM® brand products.
`
`Attached as Exhibit D are examples of POM’s advertising in the United States.
`
`28.
`
`Most recently, in the fall of 2010, POM began its first television advertisement
`
`campaign for the POM® brand. POM’s television commercials have aired in the United States,
`
`Canada, France, the United Kingdom and the Netherlands thus far. POM spent over $13 million
`
`on advertising and marketing in 2010, including its television advertisement campaign. Of that
`
`48496597-6586, v.
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`Case 2:11-cv-00760—BCW Document 2
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`Filed 08/22/11 Page 7 of 16
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`$13 million, nearly $8 million of that investment was spent on marketing and advertising in the
`
`United States alone.
`
`29.
`
`In the United States, POM’s television commercials were featured on such
`
`popular networks as ABC, NBC, CBS, CNN, MSNBC, El, Bravo, A&E, Discovery Channel,
`
`Comedy Central, Food Network, FX, National Geographic, Style, and many others.
`
`30.
`
`POM’s television commercials aired during such highly popular shows as CSI
`
`Miami, Criminal Minds, Grey’s Anatomy, Top Chef, Real Housewives, Survivor, the Amazing
`
`Race, Larry King, Anderson Cooper 360, The Daily Show, The Stephen Colbert Report, Myth
`
`Busters, Chelsea Lately, E! News, Barefoot Contessa, Modern Marvels, MS Morning Joe,
`
`Biggest Loser, 30 Rock, and many others.
`
`31.
`
`POM’s television commercials prominently feature the POM Marks and, in the
`
`United States alone, have resulted in over 600,000,000 consumer impressions thus far.
`
`32.
`
`POM believes that its success is due to the quality, purity and taste of its products
`
`and to the highly distinctive, innovative and recognizable POM Marks. The POM® Marks have
`
`become famous and are now recogn.ized as an indicator of POM’s high—quality products and as a
`
`source~identifier of those products.
`
`DEFENDANT’S INFRINGING ACTIVITIES
`
`33.
`
`Notwithstanding POM’s prior and superior rights in the POM Marks, and with
`
`constructive and actual notice of POM’s rights, Defendant
`is intentionally and willfully
`advertising, distributing, and selling its 'Pompis energy drink beverages that infringe and dilute
`
`the POM Marks.
`
`34.
`
`Defendant has sold and continues to sell Pompis energy drinks in interstate
`
`commerce. Attached as Exhibit E is a printout of a photograph of the Pompis beverage products.
`
`35.
`
`Defendant infringes and dilutes the POM Marks by causing a likelihood of
`
`confusion with the POM Marks and by causing a likelihood of dilution by blurring and
`
`tarnishing the POM Marks.
`
`4849-6597-6586, V.
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`
`Case 2:11-ev—00760—BCW Document 2
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`Filed 08/22/11 Page 8 of 16
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`36.
`
`Defendant tarnishes the POM Marks because “pompis” is a slang Spanish term
`
`for “backside,” that is, the “backside” of a person.
`
`In English, “pompis” is equally derogatory, —
`
`combining the term POM and the term “pis” which phonetically sounds like “piss”.
`
`37.
`
`By copying and using the POM Marks in such a derogatory manner, Defendant is
`
`intentionally trading on the substantial goodwill created by POM while at
`
`the same time
`
`tarnishing the POM brand. Moreover, Defendant’s use of POM, in combination with a design in
`
`lieu of the letter “o” in “pom,” as POM does, creates a likelihood of confusion, mistake, and
`
`deception as to Defendant’s affiliation, connection, and/or association with POM among
`
`consumers and the trade.
`
`38.
`
`These unauthorized uses by Defendant dilute the POM Marks by blurring the
`
`distinction between POM and Defendant and tarnishing the POM® brand by connecting the
`
`health-focused POM® brand to a brand that conveys the opposite message. To the contrary,
`
`studies have shown that energy drinks are not healthful because of their high sugar and caffeine
`
`content.
`
`39.
`
`Defen.dan.t’s unauthorized actions and blatant use of the POM Marks constitutes
`
`trademark infringement, false designation of origin, trademark dilution, and unfair competition
`
`under Utah’s Unfair Competition Act.
`
`IV.
`
`Defendant’s Actions Are Intentional And Willful
`
`40.
`
`POM is informed and believes, and based thereon alleges,
`
`that Defendant
`
`intentionally designed its Pompis energy drink product to copy the inherently distinctive POM
`
`Marks, used and made famous by POM.
`
`41.
`
`POM is also informed and believes, and based. thereon alleges, that Defendant
`
`used the inherently distinctive POM Marks in commerce to intentionally cause a likelihood of
`
`confusion between Defendant’s infringing product and POM’s product, or to cause mistake, or to
`
`deceive the relevant public that Defendant’s goods or services are authorized, sponsored or
`
`approved by or are affiliated with POM.
`
`4849-659743586, v.
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`Case 2:11~cv—O0760~BCW Document 2
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`Filed 08/22/11 Page 9 of 16
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`42.
`
`POM is further informed and believes, and based thereon alleges,
`
`that by
`
`intentionally misappropriating the POM Marks, Defendant is causing customer confusion in the
`
`marketplace.
`
`43.
`
`POM is informed. and believes, and based thereon alleges, that Defendant has
`
`willfully and knowingly infringed the inherently distinctive POM with knowledge of .POM’s
`
`rights and in an intentional attempt to target consumers who are familiar with the POM® brand
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`by creating the impression of an association between Defendant and POM or an endorsement by
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`POM of Def.endant’s goods.
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`44.
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`POM is infomied and believes, and based thereon alleges, that Defendant has
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`willfully and knowingly diluted the POM Marks by, among other things, blurring the distinction
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`between POM and Defendant and tarnishing the POM® brand.
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`45.
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`The natural, probable and foreseeable result of the intentional, willful and
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`wrongful conduct of Defendant has been to deprive POM of business and goodwill, and to injure
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`POM’s goodwill, reputation and relationships with existing and prospective customers by
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`infringing the POM Marks, and diluting the POM Marks by causing customers to associate the
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`POM® brand with an energy drink beverage product rather than POM’s products.
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`46.
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`POM is further informed and believes, and based thereon alleges, that it has lost
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`or will lose revenues from the sale of the inherently distinctive POM® products, and has
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`sustained and will sustain damages as a result of Defen.dant’s wrongful conduct in selling,
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`marketing and distributing Pompis energy drink beverage product.
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`47.
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`POM is further infomted and believes, and based thereon alleges, that Defendant
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`has been unjustly enriched by its sale and marketing of the infringing product.
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`48.
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`Defendant’s conduct is the result of willful and wanton disregard of POM’s
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`established and superior rights. Defendant adopted, used, and continues to use, the POM Marks
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`without authorization and with full knowledge of POM’s superior rights and despite having been
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`put on notice. POM has suffered, and will continue to suffer, irreparable injury as a result of
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`4849-6597-6586, v.
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`Defendant’s unlawful actions and has no adequate remedy at law. POM is therefore entitled to
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`injunctive relief.
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`FIRST CLAIM FOR RELIEF
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`(Trademark Infringement Pursuant to 15 U.S.C. § 1114)
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`49.
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`POM incorporates by reference Paragraphs 1 through 48 above as though fully set
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`forth herein.
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`50.
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`Defendant’s Pornpis product infringes and dilutes the POM Marks because like
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`the POM Marks, this product uses POM, and a design in place of the “o” in “pom,” which is
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`likely to cause confusion, mistake, and deception with respect to the POM Marks.
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`51.
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`Defendanfs imitation, copying, and unauthorized use in commerce of POM’s
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`federally registered trademarks is likely to cause confusion, mistake, or to deceive the consuming
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`public and trade by creating the erroneous impression that Defendant’s products have been
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`manufactured, approved, sponsored, endorsed, or guaranteed by, or are in some way affiliated
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`with POM.
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`52.
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`The imitation, copying, and unauthorized use of the POM Marks cause irreparable
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`injury to POM, including injury to its business reputation and the goodwill associated with the
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`POM Marks.
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`53.
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`By reason of the foregoing, Defendant has infringed POM’s trademarks and has
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`violated, and is continuing to violate, 15 U.S.C. Section 1114.
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`54.
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`POM has no adequate remedy at
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`law for these injuries. Moreover, unless
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`Defendant is restrained by this Court from continuing this imitation, copying and unauthorized
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`use of the POM Marks, these injuries will continue to occur. POM is entitled to an injunction
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`restraining Defendant, its officers, agents, distributors and employees, and all persons acting in
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`concert with it, from engaging in such further acts in violation of 15 U.S.C. Section lll6.
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`55.
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`By reason of Defendant’s willful acts of trademark infringement, POM is entitled
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`to damages it has sustained and will sustain, and to have those damages trebled pursuant to 15
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`U.S.C. Section 1117.
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`56.
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`This is an exceptional case making POM eligible for an award of attorneys’ fees
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`under l5 U.S.C. Section 1117.
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`57.
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`POM is further entitled to recover from Defendant any gains, profits and
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`advantages unfairly obtained by Defendant as a result of its acts of infringement alleged herein.
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`At present, the amount of any gains, profits and advantages cannot be fully ascertained by POM.
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`POM is unable to ascertain the full extent of the monetary damages suffered by reason of
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`Defendant’s acts at this time.
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`SECOND CLAIM FOR RELIEF
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`(Trademark Infringement and False Designation of Origin
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`Pursuant to 15 U.S.C. § 1125(3))
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`58.
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`POM incorporates by reference Paragraphs 1 through 57 above as though fully set
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`forth herein.
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`59.
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`Defendant’s Pompis product infringes and dilutes the POM Marks and Defendant
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`is falsely designating the origin of its brand because, like the POM Marks, this product uses
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`POM and a design in place of the “o” in “pom,” which is likely to cause confusion, mistake, and
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`deception with respect to the POM Marks.
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`60.
`
`Defendant’s use of the infringing trademarks has confused and is likely to
`
`continue to cause confusion or to cause mistake, or to deceive the consuming public into
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`believing that Defendant’s goods or services are authorized, sponsored or approved by or are
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`affiliated with POM.
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`61.
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`These acts constitute trademark infringement of the POM Marks and false
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`designation of origin in violation of 15 U.S.C. Section l125(a), entitling POM to relief.
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`62.
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`By reason of Defen.dant’s acts, POM is, and will continue to be, irreparably
`
`harmed if Defendant’s conduct is not enjoined. POM’s remedy at law is not adequate to
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`compensate it for the injuries inflicted, and POM is therefore entitled to injunctive relief pursuant
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`to 15 U.S.C. Section 1116.
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`63.
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`The above—described acts of Defendant have irreparably harmed and,
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`if not
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`enjoined, will continue to irreparably harm the general public, which has an interest in being free
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`from confusion, mistake and deception.
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`64.
`
`Defendant has unfairly profited from the actions alleged and POM is therefore
`
`entitled to recover from Defendant the damages sustained as a result of Defendant’s acts in
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`violation of 15 U.S.C. Section l125(a). At ‘present, POM is unable to ascertain the full extent of
`
`the monetary damages suffered by reason of Defendant’s acts.
`
`65.
`
`Further, because of the willful nature of Defendant’s acts, POM is entitled to
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`damages and to have those damages trebled pursuant to 15 U.S.C. Section 1117.
`
`66.
`
`This i.s an exceptional case making POM eligible for an award of attorneys’ fees
`
`pursuant to 15 U.S.C. Section 1117.
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`THIRD CLAIM FOR RELIEF
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`(Federal Trademark Dilution Pursuant to 15 U.S.C. § 1125(c))
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`POM incorporates Paragraphs 1 through 66 above as though set forth fully herein.
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`The POM Marks are inherently distinctive and famous under 15 U.S.C. Section
`
`67.
`
`68.
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`Il25(c).
`
`69.
`
`Defendant's use of POM’s inherently distinctive and famous POM Marks in
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`commerce began long after the POM Marks became famous.
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`70.
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`Defendant’s Pompis product is likely to dilute and/or cause dilution of the famous
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`POM Marks because, like POM’s products, Defendant use POM and a design in place of the “o”
`
`in “pom,” which is likely to cause dilution of the POM Marks by blurring the distinction between
`
`POM and Defendant and tarnishing the POM Marks.
`
`71.
`
`Defendant’s conduct is the result of willful and wanton disregard of POM’s
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`established and superior rights. Defendant adopted, used and continue to use the POM Marks
`
`without authorization and with full knowledge of POM’s superior rights, and despite having been
`
`put on notice. POM has suffered, and will continue to suffer, irreparable injury as a result of
`
`Defendant’s unlawful actions and has no adequate remedy at law.
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`72.
`
`By reason of Defendant’s acts, POM is, and will continue to be, irreparably
`
`harmed if Defendant is not enjoined. POM’s remedy at law is not adequate to compensate it for
`
`the injuries inflicted, and POM is therefore entitled to entry of injunctive relief pursuant to 15
`
`U.S.C. Sections 1l25(c).
`
`73.
`
`Defendant has unfairly profited. from its actions alleged herein, and POM is
`
`therefore entitled to recover from Defendant the damages sustained as a result of its acts in
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`violation of 15 U.S.C. Section ll25(c). At present, POM is unable to ascertain the full extent of
`
`the monetary damages suffered by reason of Defendant's acts.
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`74.
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`Further, because of the willful nature of Defendant’s acts, POM is entitled to
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`damages and to have those damages trebled pursuant to 15 U.S.C. Sections 1125(0) and 1117.
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`75.
`
`This is an exceptional case making POM eligible for an award of attorneys’ fees
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`pursuant to 15 U.S.C. Sections 1.125(0) an.d I117.
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`FOURTH CLAIM FOR RELIEF
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`(Violation of Utah’s Unfair Competition Act)
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`76.
`
`POM incorporates by reference Paragraphs 1. through 75 above as though fully set
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`forth herein.
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`77.
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`Defendant’s acts as described above constitute unfair competition in violation of
`
`the Utah Unfair Competition Act.
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`78.
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`Defendant’s acts constitute intentional business acts and practices that are
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`unlawful, unfair, or fraudulent, and have led and will lead to a material diminution in value of
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`POM’s intellectual property.
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`79.
`
`80.
`
`81.
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`Defendant’s actions constitute infringement of POM’s trademark.
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`POM has suffered substantial damages as a result of Defendant’s actions.
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`Defendant’s acts are willful and malicious or intentionally fraudulent or manifest
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`a knowing and reckless indifference toward and disregard of the Plaintiffs rights.
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`82.
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`Pursuant to Utah Code Ann. § l3—5a—103, POM is entitled to actual damages
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`caused b Defendan.t’s actions, as well as costs, reasonable attome fees, and unitive dama es.
`Y
`Y
`P
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`DEMAND FOR JQRY TRIAL
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`Plaintiff POMWONDERFUL LLC hereby demands a jury trial in connection with this
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`action.
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`PRAYER FOR RELIEF
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`WHEREFORE, POM prays for judgment against Defendant as follows:
`
`I.
`
`That the Court enter judgment against Defendant that:
`
`a.
`
`Defendant
`
`infringed the rights of POM in their federally registered
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`trademarks in violation of 15 U.S.C. Section 1114;
`
`b.
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`Defendant infringed the rights of POM in the POM Marks in violation of
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`15 U.S.C. Section 1125;
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`c.
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`Defendant diluted the trademarks of POM“ in violation of 15 U.S.C.
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`Section 1125;
`
`(1.
`
`Defendant engaged in unfair competition in Violation of Utah’s Unfair
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`Competition Act; and
`
`2.
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`That the Court enter judgment against Defendant that the above acts, 1(a)-(d),
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`were willful and intentional, making this an exceptional case.
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`3.
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`That
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`the Court
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`issue a preliminary and permanent
`
`injunction enjoining and
`
`restraining Defendant and its agents, servants, employees, successors, assigns and all other
`
`persons acting in concert or in conspiracy with or affiliated with Defendant from:
`
`Engaging in any infringing activity including advertising, promoting, marketing,
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`franchising, distributing, selling, and offering for sale any goods or services in connection with
`the infringing product identified herein or any product or mark similar to the POM Marks in any
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`media, whether in person,
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`in print or by electronic means including but not
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`limited to
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`newspapers, magazines, bus shelters, billboards as well as via the Internet, including but not
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`limited to, company websites, promotional websites, social media websites, YouTube or other
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`video—related websites, energy drink reviewing websites, blogs, email, SMS and the like.
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`4849-6597-6586, v.
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`4.
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`That the Court issue an Order at the conclusion of the present matter that all
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`i