Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA472030
`ESTTA Tracking number:
`05/11/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197862
`Defendant
`Ultra Records, Inc.
`ROBERT B. GOLDEN
`LACKENBACH SIEGEL LLP
`1 CHASE RDLACKENBACH SIEGEL BUILDING
`SCARSDALE, NY 10583-4156
`UNITED STATES
`rgolden@LSLLP.com, nsaraco@LSLLP.com, tmefs@LSLLP.com
`Motion to Suspend for Civil Action
`Robert B. Golden
`rgolden@LSLLP.com, nsaraco@LSLLP.com
`/Robert B. Golden/
`05/11/2012
`Motion to Suspend - 91197862.pdf ( 2 pages )(123342 bytes )
`Exhibit 1.pdf ( 43 pages )(3031169 bytes )
`Exhibit 2.pdf ( 73 pages )(27390504 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA472030
`ESTTA Tracking number:
`05/11/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197862
`Defendant
`Ultra Records, Inc.
`ROBERT B. GOLDEN
`LACKENBACH SIEGEL LLP
`1 CHASE RDLACKENBACH SIEGEL BUILDING
`SCARSDALE, NY 10583-4156
`UNITED STATES
`rgolden@LSLLP.com, nsaraco@LSLLP.com, tmefs@LSLLP.com
`Motion to Suspend for Civil Action
`Robert B. Golden
`rgolden@LSLLP.com, nsaraco@LSLLP.com
`/Robert B. Golden/
`05/11/2012
`Motion to Suspend - 91197862.pdf ( 2 pages )(123342 bytes )
`Exhibit 1.pdf ( 43 pages )(3031169 bytes )
`Exhibit 2.pdf ( 73 pages )(27390504 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 Serial No.:
`
`77962354
`
`Trademark:
`Class:
`
`Date Filed:
`
`ULTRA ULTRAMUSIC & Design
`41
`
`3/18/2010
`
`8/17/2010
`Dated Published:
`_________________________________________________________________- X
`
`ULTRA ENTERPRISES, INC.
`
`'
`
`Opposer,
`
`v.
`
`ULTRA RECORDS, INC.,
`
`Opposition No.: 91197862
`
`:
`Applicant.
`__________________________________________________________________ X
`
`CONSENTED MOTION TO SUSPEND
`
`PENDING CIVIL ACTION DETERMATION
`
`Applicant Ultra Records, Inc. (“Applicant”) hereby requests suspension of the
`
`above-referenced proceeding pursuant to TBMP § 510.02. Opposer Ultra Enterprises, Inc.
`
`and Applicant are parties to a pair of consolidated pending civil actions in the United
`
`States District Court for the Southern District of New York, Case No. 10-cv-6370, and in
`
`the Southern District of Florida, Case No. 10-cV~23 126. The action is likely to affect the
`
`parties’ respective rights to the trademark which is the subject to the present proceeding.
`
`Applicant believes that the outcome of the Civil Actions might be determinative of some
`
`or all of the issues raised in this proceeding. The parties have pursued and attended
`
`mediation, but have been unable to reach a settlement of the actions. Accordingly, trial
`
`has been set in the United States District Court for the Southern District of New York for
`
`July 23, 2012. As such, it is respectfiilly requested that the request for suspension be
`
`granted pending the disposition of the civil action.
`
`P:\l Docu;ments\Ultra Records\20l2\Nicole\UEl\TTAB\Motion to Suspend for Civil Action - 91 197862.doc
`
`1
`
`
`
`Attached as Exhibits 1 to 2 are the Complaints pending in the United States
`
`District Court for the Southern District of New York, Case No. 10—cv—6370, and in the
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`Southern District of Florida, Case No. 10-cv-23126, respectively.
`
`Opposer has consented to the suspension.
`
`VVherefore, Applicant hereby requests suspension of the above-referenced
`
`proceedings.
`
`Dated: Scarsdale, New York
`May 11, 2012
`
`LACKENBACH SIEGEL, LLP
`
`By:
`
`5
`
`Robert B. Golden
`
`Jeffrey M. Rollings
`Lackenbach Siegel Building
`1 Chase Road
`
`Scarsdale, NY 10583
`
`(914) 723-4300
`(914) 723—4301 fax
`
`Attorneys for Applicant Ultra Records, Inc.
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and accurate copy of the enclosed CONSENTED
`MOTION TO SUSPEND PENDING CIVIL ACTION DETERMATION was served
`on Opposer on May 11, 2012, via U.S. 1st Class Mail, addressed to counsel for Opposer
`as follows:
`
`Michael Santucci, Esq.
`Santucci Priore, P.L.
`200 South Andrews Avenue, Suite 100
`Fort Lauderdale, Florida 33301
`
`Dated: Scarsdale, New York
`
`May 11, 2012
`
`
`
`Nicole Saraco
`
`P:\l Documents\Ultra Records\2012\Nicole\UEI\TTAB\Motion to Suspend for Civil Action - 91 l97862.doc
`
`2
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`
`
`EXHIBIT 1
`
`
`
`Case t:10—cv-lOo$70—AK'H Document 1
`
`Filed O8/25l1u Page 1 of 42
`
`Sandor Frankel (SF 8642)
`Stuart B. Abrams (SA 6957)
`M. Breeze McMennamin (MM 5141)
`FRANKEL & ABRAMS
`
`JUDGE SCHEINDLIN
`
`230 Park Avenue, Suite 660
`New York, NY 10169
`(212) 661-5000
`
`Attorneys for Plaintiff
`Ultra Records, Inc.
`
`
`
`SOUTHERN DISTRICT OF NEW YORK
`
`UNITED STATES DISTRICT COURT
`
`_ — _ . . _ _ . . . . _ _ . _ . _ _ _ _ . . _ _ _ _ _ _ _ _ ,. X
`
`0 ULTRA RECORDS, lNC., a New York
`corporation,
`'
`
`Plaintiff,
`
`—against-
`
`‘
`
`1 ULTRA ENTERPRISES, INC., a Florida
`. corporation, d/b/a Ultra Music Festival,
`
`Defendant.
`
`— . - — — _ — — — — — — — — — ~ — — _ — _ . . . . . _ . _ .. .. X
`
`VERIFIED
`
`COMPLAINT
`(Jury Trial Demanded)
`
`Plaintiff, by its undersigned attorneys, as and for its Complaint, alleges as
`
`follows:
`
`JURISDICTION AND VENUE
`
`I.
`
`This is an action for breach of contract, for violation of the Lanham Act,
`
`l5 U.S.C. § H14 and 1125, et seq., New York General Business Law §§ 349, 350, and
`
`350~e, unfair competition, and unjust enrichment. It seeks to enjoin and recover damages
`
`for defendanfs false and deceptive designation and advertisement ofcertain music
`
`festivals using the names ULTRA or ULTRA MUSIC FESTIVAL(the-t;‘FOfi‘ending-: .—
`
`V
`
`‘
`
`‘
`
`E " “
`
`Festivals”), or any confusingly similar variation thereof. Defendant‘has__ repeatedly"used-,5:
`
`IT:=- ~ '-
`
`
`
`Case 1:10—cv—t
`
`’0—AKH Document 1
`
`Filed 08/25?‘
`
`Page 2 of 42
`
`and threatens to use in the near future, plaintiff’ s name and trademark in connection with
`
`the Offending Festivals in a manner that breaches the explicit terms of the parties’ written
`
`agreement, is misleading to consumers, and misappropriates plaintiffs trademarks,
`
`tradename, and goodwill. Defendant’s conduct has resulted in a dilution of plaintiff’ s
`
`own trademarks and defendant’s unjust enrichment at plaintiff’s expense; and constitutes
`
`a breach of contract and unfair competition.
`
`2.
`
`This Court has jurisdiction of plaintiffs common law claims pursuant to
`
`28 U.S.C. § 1332, based on the complete diversity of the parties and because the amount
`
`in controversy substantially exceeds $75,000.
`
`3.
`
`This Court has jurisdiction ofplaintiff’ s Lanham Act claim pursuant to 28
`
`U.S.C. § 1331. This court also has supplemental jurisdiction of the state law claims
`
`pursuant to 28 U.S.C. § 1367.
`
`4.
`
`Venue is proper in this District under 28 U.S.C. § 1391 because a
`
`substantial part of the events or omissions giving rise to the claims occurred in this
`
`District, and based on the forum-selection clause included in the parties’ written
`
`agreement.
`
`H
`
`PARTIES
`
`5.
`
`PlaintiffUltra Records, Inc. (“URI”) is a corporation organized and
`
`existing under the laws ofthe State ofNew York, and has its principal place of business
`in New York, New York. URI is engaged in the productionrmanufacture, and
`
`distribution of phonograph records, compact discs, music videos; and other sound
`
`recordings in various forms and configurations, and from time‘ ‘to-rtirne alsoorganizes and
`
`sponsors live music festivals. in New York.
`
`r
`
`
`
`Case1:1O~cv-LWTO-AKH Documentl
`
`Filed cs/25/._ Page3of42
`
`6.
`
`At all times relevant to this lawsuit, plaintiff URI has owned the ULTRA
`
`and ULTRA (Stylized) trademarks, attached as Exhibit 1 hereto, for use on and in
`
`connection with, inter alia, record label services and pre—recorded music (collectively, the
`
`“URI Trademarks”). URI i-s the owner of United States Trademark Registration Nos.
`
`2,308,129 and 3,009,876 (the “Registrations”) and numerous pending trademark
`
`applications for URI’s ULTRA Trademarks.
`
`7.
`
`URI is one of the leading independent record companies in the world, and
`
`is the dominant independent music label in the genre of so—called “dance music.” The
`
`strength of URI’s “Ultra” tradename and trademarks has made URI essentially
`
`synonymous with the word “Ultra” in the dance music community.
`
`8.
`
`Defendant Ultra Enterprises, lnc., d/b/a Ultra Music Festival (“UMF”) is,
`
`on information and belief, a corporation organized and existing under the laws of the
`
`State of Florida, and has its principal place of business in Miami, Florida.
`
`9.
`At all times relevant to this lawsuit, defendant UMF has done business as
`“Ultra Music Festival.” On information and belief, UMF used the marks ULTRA
`
`MUSIC FESTIVAL, ULTRA BEACH PARTY, and the marks set forth on Exhibit 2
`
`hereto, in connection with entertainment services, namely organizing and conducting
`
`music festivals and party events, and promoting dance music festivals for others
`
`(collectively, the “UMF Trademarks”).
`
`10.
`
`On information and belief, UMF is the owner of United States Trademark
`
`Registration No. 2,892,744 for the mark ULTRA MUSIC FESTIVAL and Design.
`
`11.
`
`In 2003, URI filed an action against UMF in this court, '-entitled Ultra z
`
`.5
`
`3:"
`
`Records, Inc. v. Ultra Enterprises, Inc. d/b/a Ultra Music Festivalsyet 211:, 03 Civ;=5383
`
`’
`
`
`
`Case 1310-CV-iJuJ70-AKH Document 1
`
`Filed O8/25l‘.o Page 4 of 42
`
`(S.D.N.Y.) (the “Prior Action,’.’), charging UMF, among other entities, with trademark
`
`infringement and unfair competition based on its use of the name “Ultra” in connection
`
`with goods and services offered by UMF.
`
`l2.
`
`URI settled the Prior Action with UMF pursuant to a written Settlement
`
`Agreement dated November 23, 2004, a copy of which is attached hereto as Exhibit 3
`
`(the “Settlement Agreement”).
`
`13.
`
`As part of the Settlement Agreement, UMF agreed to cease and desist
`
`from producing or marketing music CDs using the name “Ultra.” The Settlement
`
`Agreement (at ‘ll 2)*provides that UMF will not use any logo or other stylization that is
`
`confusingly similar to the URI Trademarks.
`
`l4.
`
`Pursuant to the Settlement Agreement (at if 3), UMF acknowledged “the
`
`validity, distinctiveness, and URI’s ownership of URI’s Trademarks for use in connection
`
`with record label services and prerecorded music. . ..”
`15.
`At the time the Settlement Agreement was negotiated and executed, UMF
`
`was operating only in Miami, Florida. UMF had historically organized an annual live
`
`dance-music festival,‘ in Florida, using the word “Ultra” in the promotion and marketing
`
`of that festival. It was apparent to both UMF and URI that UMF’s use of the term
`
`“Ultra” in connection with its Florida dance-music festivals was confusing to the public,
`
`who assumed URI was involved in those festivals. For example, every year around the
`
`time of UMF’s annual Florida festival, URl’s President, Patrick Moxey, and several of ‘
`
`:
`
`URl’s employees have been, and continue to be, approached for tickets, promotions, and
`
`other services and favors in connection with UMF’s Florida festival byipersons assuming ~
`
`A
`
`they and URI are associated with it.
`
`'-2;2:='
`
`:-.-':
`
`.::..--'
`
`’-.«'~.'s-.
`
`ta.
`
`
`
`Case 1:10-cv—t)o.57O—AKH Document 1
`
`Filed O8/25/to Page 5 of 42
`
`16.
`In light of this manifest and ongoing public confusion, UMF agreed as
`part ofthe Settlement Agreement that it would not use the word “Ultra” in connection
`
`with live dance-music festivals that it might promote outside of Florida. On information
`
`and belief, UMF knew and understood that if it used the word “Ultra” outside of Florida
`
`in connection with such events, it would be unfairly benefiting from the strength and
`
`reputation of, and confusion with, URI’s “Ultra” name in the dance—music community — a
`
`name in which URI had invested millions of dollars over the years.
`
`17.
`
`Thus, UMF agreed (at Settlement Agreement it 8), that if it desired to
`
`promote or participate in a “commercial live event” outside the state of Florida, using the
`
`word “Ultra” as part of the title or branding of such event, UMF would “do so
`
`exclusively” through a “New Entity” that would be formed, co-owned, and operated by
`
`URI and UMF. The Settlement Agreement defines a “commercial live event” as “an
`
`event where the ‘Ultra’ entity (URI or UMP) receives income from the event itself, as
`
`opposed to a ‘promotional’ event which is held (from the point of View of the Ultra
`
`entity) solely to promote another product (e.g., a record) and where income is not derived
`
`by the Ultra entity from admission or similar charges to consumers.”
`
`l8.
`Pursuant to ii 8(b) of the Settlement Agreement, URI also agreed that if it
`promoted or participated in a commercial live event using the word “Ultra” as part ofthe
`
`title or branding of such event, URI would do so exclusively through the “New Entity.”
`
`19.
`
`Pursuant to q 8(c) of the Settlement Agreement, URI and UMF agreed “to
`
`form, co~own and operate an entity (the ‘New Entity’) whose initial business shall be the
`
`production and promotion of commercial live events and large ‘commercial live events” I -.
`
`The parties further agreed that “the form of the New Entity, antithe -t‘erms"of'the _
`
`=
`
`.
`
`
`
`Case 1:10-cv-Ub;370-AKH Document 1
`
`Filed O8/25/to Page 6 of 42
`
`operating agreement (or shareholder or partnership agreement, as applicable) will be
`
`negotiated in good faith by the parties, it being the parties’ intent that the costs to form
`
`and operate the New Entity, and the distributable proceeds derived from the New Entity,
`
`will be allocated equally between the parties.”
`
`’
`
`20.
`
`The parties agreed, in ‘ii 8(c) ofthe Settlement Agreement, that the “New
`
`Entity will design and co-own one or more designations, brands, trademarks, and/or logos
`
`to be used exclusively in connection with the business activities of the New Entity.”
`
`A21.
`
`URI and UMF agreed that the Settlement Agreement, and all ofthe terms
`
`and conditions thereof, would “applythroughout the World.” Settlement Agreement
`
`‘ll 12.
`
`22.
`
`Pursuant to the Settlement Agreement ‘if 22, URI and UMF agreed to
`
`“consent to exclusive personal jurisdiction in the Southern District of New York to
`
`enforce the terms of this agreemen .”
`
`23.
`
`Subsequent to the full execution of the Settlement Agreement, URI has
`
`repeatedly asked UMF to negotiate the terms of an operating agreement for the New
`
`Entity referred to in the Settlement Agreement, but UMF has been largely unresponsive
`
`to URI’s repeated requests in this regard.
`
`24.
`
`- URI prepared the first draft of such an operating agreement in May, 2005,
`
`and repeatedly requested that UMF provide comments on said draft and otherwise take
`
`steps to finalize the operating agreement. After a conference call between the parties in
`
`June, 2008, URI sent UMF a revised operating agreement on June 26, 2008, but never
`
`received any further communication from UMF on the revised‘ agreement, despite
`
`.-
`
`A
`
`repeated requests for comments" by URI.
`
`
`
`Case 1:10-cv4bw7O—AKH Document 1
`
`Filed O8/2%/ilv Page 7 of 42
`
`25.
`
`On information and belief, subsequent to the full execution of the
`
`Settlement Agreement, UMP has promoted and/or participated in at least four (4)
`
`commercial live events, that were held outside of Florida, using the word “Ultra” as part
`
`of the title or branding of such events, but did not do so through the “New Entity,” as
`
`required by the Settlement Agreement.
`
`26.
`
`In addition, on information and belief, UMF is currently in the process of
`
`promoting, marketing, and soliciting talent for at least three additional commercial live
`
`_ events, scheduled to be held in Spain and Brazil in August, October, and November of
`
`2010. UMF has repeatedly used the word “Ultra” as part of the title and/or branding of
`
`these events, and has made no effort to form the New Entity or involve the New Entity in
`
`these upcoming music festivals.
`
`27.
`
`Counsel for URI wrote to UMF on January 4, 2010 (the “January 4, 2010
`
`Letter”) notifying UMF that it had breached the Settlement Agreement by repeatedly
`
`using the word “Ultra” in connection with the marketing and promotion of commercial
`
`live events outside of Florida subsequent to the execution of the Settlement Agreement
`without involving the New Entity. That letter stated that “UMF has promoted one or
`
`more commercial live events outside of Florida using the word ‘Ultra’ as part of the
`
`branding of such events. As these activities were not undertaken with URI through the
`
`New Entity,the same constitute a material breach of UMF’s obligations under the
`
`[Settlement] Agreement.” See Exhibit 4 hereto.
`
`28.
`
`The January 4, 2010 Letter also notified UMF that it had further breached
`
`the Settlement Agreement by failing to “finalize the operatingfagreernent for the Newexi ‘
`
`Entity and to work with UMF to build the live events business" contemplated .by.the'i..'.*.=
`
`7"?‘
`
`:
`
`= *
`
`
`
`’ Case 1:10'CVibvJ70'AKH Document 1
`
`Filed O8/25/it iv Page 8 of 42
`
`[Settlement] Agreement. UMF never responded to the January 4, 2010 Letter, has been
`
`unresponsive to URl’s efforts to form the New Entity, and, based on UMF’s recent
`
`activities, URI suspects that UMF intends to ignore its obligations under the Agreement.
`
`URI remains ready and willing to work with UMF, but will vigorously enforce its rights
`
`if UMP continues to violate the terms of the Agreement.”
`
`29.
`
`At the same time that UMF has continued to use the word “Ultra” in
`
`connection with its music festivals in breach of the Settlement Agreement, it has
`
`simultaneously used its stylized logos that do not explicitly use the term “Ultra,” in an
`
`appareht effort to establish a link in the public’s mind between UMF’s stylized logos that
`
`do not use the term “Ultra” with URI’s trademarked “Ultra” name and logo so that, as
`
`time goes by, the public will automatically associate UMF’s stylized logos with URl’s
`
`“Ultra” name and reputation.
`
`30.
`
`To the extent the public equates UMF’s stylized logo with URl’s “Ultra”
`
`name and reputation ~~ which phenomenon has been accomplished by UMF’s blatant and
`
`continuing violations of the Agreement -- UlVlF’s brand will have further benefited from
`
`UMF’s wrongful misappropriation of the “Ultra” name by having transferred the strength
`
`of the “Ultra” name to UMF’s stylized logo, with the result that UMF will no longer need
`
`to market its music festivals using the word “Ultra,” but only its stylized logo, Thus,
`
`UMF is positioning itself to be able to successfully promote its commercial live events in
`
`a manner that arguably would not be in technical breach of the Settlement Agreement,
`
`but without involving the New Entity as required by the Settlement Agreement.
`
`
`
`Case lilo-CV-iJuo70-AKH Document 1
`
`Filed O8!25./1}- Page 9 of 42
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`31.
`
`In so doing, UMF has systematically misappropriated the goodwill and
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`reputation that URI has established for its name and trademarks,» without compensating
`
`URI.
`
`32.
`
`Thus, while URI has continuously adhered to the terms of the Settlement
`
`Agreement since its execution, UMF has flagrantly continued to breach the Settlement
`
`Agreement by promoting its music festivals and commercial live events using the word
`
`“Ultra” but not involving the New Entity, in breach of the Agreement and in violation of
`
`the Lanham Act and common law.
`
`FIRST CLAIM FOR RELIEF
`
`(Breach of Contract)
`
`33.
`
`Plaintiff URI repeats and realleges all allegations of paragraphs 1 through
`
`32, above, as if explicitly incorporated herein.
`
`34.
`
`Defendant UMF ’s conduct, as described above, in failing to work with
`
`URI to create the New Entity constitutes a material breach of the Settlement Agreement.
`
`35.
`
`Defendant UMF’s conduct in continuing, after execution of the Settlement
`
`Agreement, to market, promote, and participate in the Offending Festivals outside the
`
`State ofFlorida using the word “Ultra” as part of the title, marketing, and branding of
`
`such events, without involving the “New Entity” (as defined in the Settlement
`Agreement), constitutes a material breach by UMP ofthe Settlement Agreement.
`
`36.
`
`37.
`
`URI has performed all of its obligations under the Settlement Agreement.
`
`Defendant UMF’s actions in breach of the Operating Agreement have
`
`caused substantial damages to URI, in an amount to be determined at the trial of this
`
`action, but believed to be in excess of $75,000, exclusive of interest and costs.
`
`‘
`
`
`
`Case t:10—ev-C
`
`O—AKH Document 1
`
`Filed 08/25}:
`
`4 3age 10 of 42
`
`38.
`
`In addition, UMF’s continuing breaches of contract are causing, and are
`
`likely to continue to cause substantial injury and damage to plaintiff for which there is no
`
`adequate remedy at law, and plaintiff is entitled to injunctive relief under common law.
`
`SECOND CLAIM FOR RELIEF
`(Registered Trademark Infringement — Violation of
`Section 32 of the Lanham Act)
`
`39.
`
`Plaintiff repeats and re-alleges all allegations of paragraphs 1 through 38,
`
`above, as if explicitly incorporated herein.
`
`40.
`
`Plaintiff has used the trademarks as shown in the Registrations in
`
`interstate commerce continuously since the dates of first use set forth in the Registrations.
`
`41.
`
`Plaintiffs use of the Trademarks has been open, notorious, and
`
`continuous.
`
`42.
`
`The Trademarks, as applied to the goods identified in the Registrations,
`
`are inherently distinctive and strong trademarks.
`
`43.
`
`Because of Plaintiffs long, exclusive and extensive use and promotions of
`
`the Trademarks, the Trademarks have become distinctive and famous, and indicate a
`
`single source of origin of Plaintiffs goods and services.
`
`44.
`
`45.
`
`The Registrations are valid and subsisting.
`
`Upon information and belief, Defendant has used Plaintiffs Trademarks
`
`and or marks confusing similar thereto in a manner not specifically permitted under the
`
`Settlement Agreement and thus, such use has been without Plaintiffs permission or
`
`consent.
`
`46.
`
`Upon information and belief, the aforementioned acts ofDefendant have .
`
`caused and are likely to cause confusion, mistake, and deception.
`
`5
`
`l0
`
`
`
`Case 1:.10—cv—C,
`
`,.O—AKH Documentt
`
`Filed O8/25/‘ii
`
`Page it ot42
`
`47.
`
`The foregoing acts of Defendant constitute infringement of Plaintiffs
`
`Trademarks and Registrations.
`
`48.
`
`Upon information and belief, Defendant’s acts of trademark infringement
`
`have been willful, deliberate, and intentional.
`
`49.
`
`Upon information and belief, Defendant used Plaintiffs Trademarks
`
`without Plaintiff s authorization or consent with the intent to deceive consumers and to
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`cause confusion among purchasers, for the purpose of benefiting from the good will and
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`public recognition associated with Plaintiffs Trademarks and diverting sales from
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`Plaintiff to Defendant.
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`50.
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`Upon information and belief, the aforementioned acts of Defendant have
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`caused and will continue to cause actual confusion and a likelihood of confusion in the
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`minds of the trade and the public, and will damage Plaintiffs reputation for exclusivity in
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`connection with the Trademarks.
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`51.
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`Upon information and belief, by virtue of Defendant’s conduct, Defendant
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`has used and intends to continue to use spurious marks in connection with trafficking in
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`the sale and distribution of the goods and services in interstate commerce, which marks
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`are identified with Plaintiffs Trademarks, which are federally registered trademarks in
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`the United States Patent and Trademark Office.
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`52.
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`Upon information and belief, Defendant’s conduct has been willful and
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`malicious and Defendant will continue its acts of willful infringement unless enjoined by
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`this Court.
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`53.
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`Upon information and belief, by virtue of Defendant’s conduct, Defendant‘
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`1
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`a
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`has engaged in infringement of Plaintiff’ s federally registered trader‘narks,’in?violation of
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`.5 .
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`-
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`ll
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`Case1:tO-cvatit
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`.O—AKH Documentt
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`Filed O8/25iI'l
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`the Lanham Act, 15 U.S.C. § ll 14(1), by using a mark wherein such use is likely to
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`cause confusion, or to cause mistake, or to deceive. Upon information and belief,
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`Defendant’s infringing acts taking place outside of the U.S. have had a significant impact
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`on US. commerce.
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`54.
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`Upon information and belief, Defendant has made unlawful gains and
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`profits from such unlawful infringements and, by reason thereof, Plaintiff has been
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`deprived of rights and profits which otherwise would have come to Plaintiff, but for such
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`infringements.
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`A
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`55.
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`Plaintiff has no adequate remedy at law for the injury alleged in this
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`Count. The injury is intangible in nature and not capable of being fully measured or
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`valued in terms of monetary damages. Further, the injury is of a continuing nature and
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`i will continue to be suffered so long as Defendant continues its wrongful conduct.
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`56.
`Notwithstanding the inadequacy of and the difficulty of presently fully
`ascertaining Plaintiffs monetary damages caused by Defendant’s wrongful conduct,
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`Plaintiff is informed and believes and, based upon such information and belief, alleges
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`that said conduct has resulted in irreparable, direct and proximate damages to flaintiff. '
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`57.
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`Plaintiff seeks leave ofthis Court to amend the complaint to allege the full
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`nature and extent of said monetary damages if, when and to the extent the damages are
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`ascertained.
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`THIRD CLAIM FOR RELIEF
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`(Common Law Infringement and Unfair Competition — Violation of Section 43 (a)
`of the Lanham Act)
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`58.
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`Plaintiff repeats and realleges all allegations of paragraphs 1 through 5.7,:
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`.
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`i
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`above, as if explicitly incorporated herein.
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`l2
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`Casetzto-ov—oc .0-AKH Document?
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`Filed 08/25/O;
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`Page13 of 42
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`59.
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`UMF’s actions described above constitute common law trademark
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`infringement, false designation, and a false description of URI’s involvement in and
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`relationship with the Offending Festivals, and unfair competition in violation of the
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`Lanham Act, 15 U.S.C. § 1125. UMF has misappropriated URI’s name and trademarks
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`in connection with the Offending Festivals without authorization or license from plaintiff.
`_ As a result ofUMP’s unlawful conduct, described herein, plaintiffhas sustained, and if
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`UMF is not enjoined, will continue to sustain irreparable injury.
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`60.
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`UMF’s false and misleading representation in its marketing, promotional,
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`and branding materials for the Offending Festivals has deceived, and will continue to
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`deceive consumers.
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`61.
`UMF’s music festivals, including the Offending Festivals, are advertised
`and tickets to them are available for sale in several states, including through internet
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`sales, and are therefore in interstate commerce.
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`62.
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`UMF’s conduct, as described above, is causing, and is likely to cause,
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`substantial injury and damage to plaintiff for which there is no adequate remedy at law,
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`— and plaintiff is entitled to injunctive relief.
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`FOURTH CLAIM FOR RELIEF
`(Violation of New York’s Deceptive Trade Practices Act)
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`63.
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`Plaintiff repeats and realleges all allegations of paragraphs 1 through 62,
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`above, as if explicitly incorporated herein.
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`64.
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`UMF’s promotion, marketing, and advertising of the Offending Festivals
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`is false and misleading with respect to URI’s involvement thereon, and is directed at the
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`general public and consumers, including those within the State ofNew York.
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`13
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`Case 1:10—cv—:{lc,,rO-AKH Document 1
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`Filed 08/2525, Page 14 of 42
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`65.
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`On information and belief, tickets to the Offending Festivals have been,
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`and continue to be sold and marketed within the State of New York, via the Internet and
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`through other channels.
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`66.
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`UMF’s repeated use of the word “Ultra” in connection with its promotion,
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`marketing, and branding of the Offending Festivals, without involving URI or the New
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`Entity, intentionally, deliberately, willfully, or knowingly deceives the public and
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`consumers, confuses and or is likely to confuse the public and consumers, and materially
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`misleads consumers as to the quality, source, and sponsorship of the Offending Festivals.
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`* "67.
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`Consumers have reasonably relied and/or are likely to reasonably rely on
`
`the improper references to URI’s “Ultra” name in connection with the Offending
`Festivals in making ticket-purchase decisions, and have been injured and damaged and
`
`are likely to be further injured and damaged by UMF’s statements and actions described
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`hereinabove in Violation ofNew York General Business Law §§ 349(a).
`
`68.
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`» UMF’s statements and actions with respect to the Oifencling Festivals as
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`described hereinabove have injured and damaged, and will likely further injure and
`
`damage plaintiff in violation ofNew York General Business Law §§ 349(a).
`
`69.
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`UMF’s statements and actions with respect to the'Offending Festivals as
`
`described hereinabove entitle ‘plaintiff to the damages, reasonable attorneys’ fees, and
`
`injunctive relief available under New York General Business Law § 34901).
`
`FIFTH CLAIM FOR RELIEF
`(Violation of New York’s False Advertising Statute)
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`70.
`
`Plaintiff repeats and realleges all allegations of paragraphs 1 through 69,
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`above, as if explicitly incorporated herein.
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`l4
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`Case 1:’lO—ov-(fie-/G-AKH Document t
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`Filed O8/25/it - Page 15 of 42
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`71.
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`UMF’s promotion, marketing, and advertising of the Offending Festivals
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`using the “Ultra” name in violation of the Settlement Agreement is misleading and
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`deceptive insofar as it describes the Offending Festivals as being affiliated and organized
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`by URI, and is directed at thegeneral public and consumers, including those within the
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`State of New York.
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`72.
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`UMF’s Offending Festivals have been, and continue to be, advertised and
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`marketed within the State of New York.
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`73.
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`UMF’s references to “Ultra” in connection with the Offending Festivals,
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`in breach of the Settlement Agreement, intentionally, deliberately, willfiilly, or '
`knowingly deceives the public and consumers, confuses and or is likely to confuse the
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`public and consumers, and materially misleads consumers as to the nature,
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`characteristics, and/or content of the Offending Festivals.
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`74.
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`Consumers have reasonably relied and/or are likely to reasonably rely on
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`UMF’s misrepresentations regarding URI’s affiliation with the Offending Festivals in
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`making ticket purchasing decisions, and have been injured and damaged and are likely to
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`be further injured and damaged by UMF’s statements and actions described hereinabove
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`in violation of New York General Business Law §§ 350 and 350-a.
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`75.
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`UMF’s statements and actions with respect to the Offending Festivals as
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`described hereinabove have injured and damaged and will likely further injure and
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`damage plaintiff in violation of New York General Business Law 350 and 350—a.
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`76.
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`V UMF’s statements and actions with respect to the Offending Festivals as
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`described hereinabove entitle plaintiff to increased damages, reasonable attorneys’ fees,
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`and injunctive relief under New York General Business Law § 350-e.
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`15
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`case1:ro—cv-(;,¢o-AKH Documentl
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`Filed 08/25“/‘L
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`Page16of42
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`SIXTH CLAIM FOR RELIEF
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`(Violation of Common Law)
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`77.
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`Plaintiff repeats and realleges all allegations of paragraphs 1 through 76,
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`above, as if explicitly incorporated herein.
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`78.
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`UMF’s conduct as described herein constitutes false advertising, unfair
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`competition, and unfair business practices under the common law.
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`» 79.
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`UMF’s actions demonstrate an intentional, willful, and bad—faith intent to
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`harm plaintiff’ s business, the goodwill and reputation of plaintifi’s business franchise.
`80.
`UMF is causing, and is likely to cause, substantial injury and damage to
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`plaintiff for which there is no adequate remedy at law, and plaintiff is entitled to
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`injunctive reliefunder common law.
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`81.
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`Plaintiff is also entitled to recover UMF’s profits, and plaintiffs actual
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`damages, costs, and attorneys’ fees under common law.
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`WHEREFORE, plaintiff demands judgment against defendant as follows:
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`1.
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`A preliminary injunction directing UMF to:
`
`(a)
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`cease and desist from the marketing, promotion, advertising, and branding
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`of the Offending Festivals using the word “Ultra” without involving the New Entity, in
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`violation ofthe Settlement Agreement and plaintiffs rights thereunder, as described
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`above;
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`I
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`(b)
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`cease and desist from using any of the marks included in Exhibit 2 to the
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`Complaint in its marketing, promotion, advertising, and branding of the Offending
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`Festivals without involving the New Entity, pursuant to the “safe -distance rule;”
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`16
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`Case 1:10-cv~Cie
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`.O—AKH Document 1
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`Filed O8/25/it Page 17 of 42
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`(c)
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`immediately destroy or cause to be destroyed all copies of marketing and
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`promotional materials for the Offending Festivals that are violative of plaintiff’ s rights as
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`described above, and provide proofofsuch destruction to plaintiff‘; and
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`(cl)
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`to account to plaintiff with respect to UMF’s revenues and profits from the
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`Offending Festivals and from the sale of any and all CD3 or other ancillary products
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`'
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`related to the Offending Festivals.
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`2.
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`Judgment awarding plaintiff the damages recoverable under 15 U.S.C.
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`§ lll7, including the actual damages suffered by plaintiff as a result of the above-
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`described violations of the Lanham Act, N.Y. General Business Law §§ 34:9, 350, and
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`350-a, together with any additional profits of defendant, and treble damages;
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`3.
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`Judgment awarding plaintiff exemplary damages as appropriate to punish
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`for past willful conduct and to deter future willful conduct;
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`4.
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`5
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`Judgment awarding plaintiff its attorneys fees;
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`A mandatory injunction, perpetually restraining and enjoining the
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`defendant, its officers, deputies, agents, employees, representatives, and other persons in
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`concert or participation, from using U
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