Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA500944
`ESTTA Tracking number:
`10/18/2012
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91204328
`Plaintiff
`Right Connection, Inc.
`DONALD HUGHES
`LIFESTYLES TOURS AND TRAVEL
`2375 EAST TROPICANA AVE #172
`LAS VEGAS, NV 89119
`UNITED STATES
`don@rightconnect.com
`Opposition/Response to Motion
`Gregory P. Goonan
`ggoonan@affinity-law.com
`/gregory p. goonan/
`10/18/2012
`Oct 18 12 Right Connection Opposition Motion Compel.pdf ( 4 pages )(14849
`bytes )
`EXHIBIT 1.pdf ( 28 pages )(293142 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
`
`Right Connection, Inc.
`
`Opposition No. 91/204328
`
`Opposer,
`
`Application Serial No. 85/367057
`
`v.
`
`DPP Enterprises, Inc.,
`
`Applicant.
`
`And Related Counterclaim
`
`OPPOSER’S OPPOSITION TO
`APPLICANT’S MOTION TO COMPEL
`OPPOSER TO PROVIDE ANSWERS TO
`APPLICANT’S FIRST SET OF
`INTERROGATORIES & DOCUMENTS IN
`RESPONSE TO APPLICANT’S FIRST SET
`OF REQUESTS FOR PRODUCTION
`
`[ELECTRONICALLY FILED]
`
`Opposer Right Connection, Inc. (“Opposer”) submits this memorandum in opposition to
`
`Applicant’s Motion to Compel Opposer to Provide Answers to Applicant’s First Set of
`
`Interrogatories and Documents in Response to Applicant’s First Set of Requests for Production
`
`(the “Motion to Compel”).
`
`Opposer regrets that the Board has had to be burdened with the Motion to Compel. As
`
`reflected in Applicant’s moving papers and the exhibits attached to the Motion to Compel,
`
`Opposer’s counsel made it clear to Applicant’s counsel that Opposer intended to file a civil action
`
`for trademark infringement in federal district court (which would raise the same issues as this
`
`proceeding) and then seek suspension of this action pursuant to Trademark Rule 2.117(a) and
`
`TBMP section 510.02(a).
`
`It obviously makes no sense to conduct discovery in this matter when this matter will be
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`suspended pending the outcome of the district court action. Counsel for Opposer tried to explain
`
`this notion to Applicant’s counsel but they forged ahead with written discovery anyway, thereby
`
`1
`
`Opposer’s Opposition to Motion to
`Compel
`
`

`
`forcing Opposer to provide written objections reiterating that discovery in this case is unduly
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`burdensome, oppressive and harassing because this matter will be suspended pending the outcome
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`of the district court action. Then, to make matters worse, Applicant and its counsel filed the
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`present Motion to Compel.
`
`As promised, Opposer has in fact filed an action for trademark infringement, unfair
`
`competition and declaratory relief in the United States District Court for the Southern District of
`
`California (the “District Court Action”). The District Court Action raises the same issues as this
`
`proceeding so suspension of this proceeding is warranted and appropriate pursuant to Trademark
`
`Rule 2.117(a) and TBMP section 510.02(a).
`
`Submitted herewith as Exhibit 1 is the motion to suspend (the “Motion to Suspend”) filed
`
`by Opposer by which Opposer seeks suspension of this matter pursuant to Trademark Rule
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`2.117(a) and TBMP section 510.02(a) based upon the filing of the District Court Action. The
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`complaint in the District Court Action is Exhibit A to the Motion to Suspend.
`
`Opposer respectfully submits that the Board should defer consideration and decision of the
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`present Motion to Compel until after a decision on the Motion to Suspend. If, as we believe is
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`likely, the Motion to Suspend is granted, this entire proceeding will be suspended until the District
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`Court Action is resolved, thereby rendering this Motion to Compel moot.
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`If, on the other hand, the Motion to Suspend is denied for some unforeseeable reason, the
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`Board then can consider and decide this Motion to Compel. Indeed, as counsel for Opposer
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`already has told counsel for Applicant, Opposer would provide the discovery sought by the subject
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`discovery requests if this matter is not suspended for some reason and instead goes forward.
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`But we are not at that point yet. First, a decision on the Motion to Suspend must be
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`rendered. Until such time, the discovery that Applicant seeks to compel by this Motion to Compel
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`2
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`Opposer’s Opposition to Motion to
`Compel
`
`

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`is unduly burdensome, oppressive and harassing as set forth in Opposer’s written objections to
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`Applicant’s discovery requests.
`
`Dated: October 18, 2012
`
`The Affinity Law Group APC
`
`By: /Gregory P. Goonan/
`Gregory P. Goonan
`The Affinity Law Group APC
`5755 Oberlin Drive, Suite 301
`San Diego, CA 92121
`Tel: 858-750-1615
`Fax: 619-243-0088
`E-Mail: ggoonan@affinity-law.com
`
`Attorneys for Opposer and
`Counterclaim Defendant
`
`3
`
`Opposer’s Opposition to Motion to
`Compel
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing “OPPOSER’S OPPOSITION TO
`APPLICANT’S MOTION TO COMPEL OPPOSER TO PROVIDE ANSWERS TO APPLICANT’S
`FIRST SET OF INTERROGATORIES & DOCUMENTS IN RESPONSE TO APPLICANT’S FIRST
`SET OF REQUESTS FOR PRODUCTION” was served via electronic mail pursuant to agreement
`of counsel on Philip Matthews (counsel for Applicant), Webb IP Law Group PLLC, 1204 W.
`South Jordan Parkway, Ste. B2, South Jordan, UT 84095 this 18th day of October 2012.
`
`/Gregory P. Goonan/
`Gregory P. Goonan
`
`4
`
`Opposer’s Opposition to Motion to
`Compel
`
`

`
`EXHIBIT 1
`EXHIBIT 1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Right Connection, Inc.
`
`Opposition No. 91/204328
`
`Opposer,
`
`Application Serial No. 85/367057
`
`v.
`
`DPP Enterprises, Inc.,
`
`Applicant.
`
`And Related Counterclaim
`
`OPPOSER’S MOTION TO SUSPEND
`OPPOSITION PROCEEDING PENDING
`OUTCOME OF PENDING CIVIL ACTION
`IN FEDERAL DISTRICT COURT
`
`[TRADEMARK RULE 2.117(a)/TBMP
`510.02(a)]
`
`[ELECTRONICALLY FILED]
`
`PRELIMINARY STATEMENT
`
`Opposer and counterclaim defendant Right Connection, Inc. (“Opposer”) submits this
`
`motion pursuant to Trademark Rule 2.117(a) and TBMP section 510.02(a) and asks the Board to
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`suspend this proceeding pending the outcome of a trademark infringement action that Opposer has
`
`filed against Applicant in the United States District Court for the Southern District of California.
`
`The present opposition proceeding is but one aspect of an ongoing and much broader
`
`dispute between Opposer and Applicant regarding certain trademarks owned by Opposer that
`
`feature the word “Lifestyles” for alternate adult travel services. The present proceeding simply
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`addresses Applicant’s ability to register the trademark “Dream Pleasure Tours Lifestyle
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`Specialists.” The broader and more significant dispute is whether Applicant can use formulations
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`of the word “Lifestyles” to market and sell its adult travel services given that Opposer owns
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`registered trademarks (one of which is incontestable) for the terms “Lifestyles Tours and Travel,”
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`Lifestyles Resorts,” and “Lifestyles Cruise.” These three referenced marks are sometimes referred
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`to herein as the “Lifestyles Trademarks.”
`
`1
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`Opposer’s Motion to Suspend
`
`

`
`On October 18, 2012, Opposer here filed an action for trademark infringement, unfair
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`competition and declaratory relief against Applicant and its principal in the United States District
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`Court for the Southern District of California (the “District Court Action”). A true and correct
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`copy of Opposer’s complaint and related pleadings in the District Court Action are submitted
`
`herewith as Exhibit A.
`
`As discussed below, Opposer’s complaint in the District Court Action asserts claims that
`
`raise the same issues as the present proceeding (for example, whether Opposer owns protectable
`
`trademark rights, whether there is a likelihood of confusion, whether the assignment addressed by
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`Applicant’s counterclaim is valid, etc.). Moreover, as the Board is aware, the decision on such
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`issues in the District Court Action will be binding in – indeed likely dispositive of – the present
`
`proceeding.
`
`Accordingly, Opposer respectfully submits that this proceeding should be suspended
`
`pursuant to Trademark Rule 2.117(a) and TBMP section 510.02(a) pending the outcome of the
`
`District Court Action.
`
`DISCUSSION
`
`Trademark Rule 2.117(a), 37 C.F.R. § 2.117(a), and TBMP section 510.02(a) both provide
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`that “[w]henever it shall come to the attention of the Trademark Trial and Appeal Board that a
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`party or parties to a pending case are engaged in a civil action or another Board proceeding which
`
`may have a bearing on the case, proceedings before the Board may be suspended until termination
`
`of the civil action or the other Board proceeding.” As explained in TBMP section 510.02(a):
`
`Most commonly, a request to suspend pending the outcome of
`another proceeding seeks suspension because of a civil action
`pending between the parties in a federal district court. To
`the extent that a civil action in a federal district court involves
`issues in common with those in a proceeding before the Board, the
`decision of the federal district court is often binding upon the
`Board, while the decision of the Board is not binding upon the
`court.
`
`2
`
`Opposer’s Motion to Suspend
`
`

`
`The situation addressed in Trademark Rule 2.117(a) and TBMP section 510.02(a) is the
`
`exact situation presented here. Here, Opposer was forced to file the present opposition proceeding
`
`to prevent Applicant from obtaining a registration for the purported trademark “Dream Pleasure
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`Tours Lifestyle Specialists” because such purported trademark is confusingly similar to the
`
`Lifestyles Trademarks. However, Applicant’s attempt to register the subject mark is but one
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`aspect of its broader infringement of the Lifestyles Trademarks.
`
`When settlement discussions between Opposer and Applicant were not successful, Opposer
`
`here was forced to file the District Court Action to address and remedy Applicant’s infringement
`
`of Opposer’s Lifestyles Trademarks. As the Board will see when it reviews Exhibit A, the District
`
`Court Action is a civil action between Opposer and Applicant (as well as Applicant’s principal)
`
`and involves the exact same trademarks as this proceeding, so it falls squarely within the
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`suspension procedure of Trademark Rule 2.117(a) and TBMP section 510.02(a). Opposer’s
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`complaint in the District Court Action also will provide the Board with a detailed discussion of the
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`conduct and issues addressed by the District Court Action.
`
`Where, as here, the parties to an opposition proceeding also are involved in a district court
`
`action involving the same mark or the opposed application, the Board will scrutinize the pleadings
`
`in the civil action to determine if the issues before the court may have a bearing on the Board’s
`
`decision in the opposition proceeding. [New Orleans Saints LLC and NFL Properties LLC v. Who
`
`Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011).] This is so because a decision by the district court
`
`may be binding on the Board whereas a determination by the Board as to an applicant’s right to
`
`obtain a registration would not be binding or have any res judicata or collateral estoppel effect in
`
`the district court action. [Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB
`
`1971).]
`
`It is critical to understand and remember that the civil action does not have to be dispositive
`
`3
`
`Opposer’s Motion to Suspend
`
`

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`of the Board proceeding to warrant suspension, it need only have a bearing on the issues before the
`
`Board. [New Orleans Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550
`
`(TTAB 2011).] Consequently, as explained by Professor McCarthy, “[i]t is standard procedure for
`
`the Trademark Board to stay administrative proceedings pending the outcome of court litigation
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`between the same parties involving related issues.” [6 McCarthy on Trademarks and Unfair
`
`Competition, § 32:47 (4th Ed. 2011).]
`
`Opposer respectfully submits that suspension of the present opposition proceeding pending
`
`completion of the District Court Action is warranted and appropriate under Trademark Rule
`
`2.117(a) and TBMP section 510.02(a). The pleadings in this proceeding are Opposer’s opposition
`
`petition and Applicant’s amended answer and counterclaim.
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`As the Board will recognize when it reviews such pleadings, the primary issues in this
`
`matter are (i) whether Opposer has valid and protectable trademark rights in the Lifestyles
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`Trademarks (which are the trademarks on which the opposition is based); (ii) whether the
`
`assignment by which Opposer acquired certain rights in and to the “Lifestyles Tours and Travel”
`
`and “Lifestyles Resorts” trademarks transferred the goodwill in such marks to Opposer; (iii)
`
`whether the “Lifestyles Tours and Travel” trademark is incontestable with respect to Opposer; and
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`(iv) whether there is a likelihood of confusion between the Lifestyles Trademarks and the mark
`
`that is the subject of this proceeding such that registration of the subject mark cannot be permitted.
`
`As noted, the complaint in the District Court Action is submitted herewith as Exhibit A.
`
`As the Board will see when it reviews Exhibit A, Opposer has asserted claims in the District Court
`
`Action for trademark infringement, unfair competition and declaratory relief. As is true here,
`
`Opposer’s claims in the District Court Action are based on its Lifestyles Trademarks and also
`
`address Applicant’s attempt to register the purported trademark that is the subject of this
`
`proceeding. Moreover, Opposer’s claim for declaratory relief addresses the exact same assignment
`
`4
`
`Opposer’s Motion to Suspend
`
`

`
`that is addressed by Applicant’s counterclaim here.
`
`Simply put, there cannot be any dispute that the issues described above, which are the
`
`issues in this proceeding, also are raised and will be decided in the District Court Action. There
`
`likewise cannot be any dispute that the determination of such issues in the District Court Action
`
`will be binding and have collateral estoppel and res judicata effect in this proceeding.
`
`Accordingly, in accordance with the authorities cited above, this proceeding should be
`
`suspended pending the outcome of the District Court Action.
`
`Dated: October 18, 2012
`
`The Affinity Law Group APC
`
`By: /Gregory P. Goonan/
`Gregory P. Goonan
`The Affinity Law Group APC
`5755 Oberlin Drive, Suite 301
`San Diego, CA 92121
`Tel: 858-750-1615
`Fax: 619-243-0088
`E-Mail: ggoonan@affinity-law.com
`
`Attorneys for Opposer and
`Counterclaim Defendant
`
`5
`
`Opposer’s Motion to Suspend
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing “OPPOSER’S MOTION TO SUSPEND
`OPPOSITION PROCEEDING PENDING OUTCOME OF PENDING CIVIL ACTION IN
`FEDERAL DISTRICT COURT” was served via electronic mail pursuant to agreement of counsel
`on Philip Matthews (counsel for Applicant), Webb IP Law Group PLLC, 1204 W. South Jordan
`Parkway, Ste. B2, South Jordan, UT 84095 this 18th day of October 2012.
`
`/Gregory P. Goonan/
`Gregory P. Goonan
`
`6
`
`Opposer’s Motion to Suspend
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`

`
`CM/ECF - casd
`
`Page 1 of 1
`
`File a New Civil Case - Attorney
`
`U.S. District Court
`
`Southern District of California
`
`Notice of Electronic Filing
`
`The following transaction was entered by Goonan, Gregory on 10/ 1 8/2012 at 12:12 PM PDT and filed
`on 10/18/2012
`
`Case Name:
`
`Plaintiffs v. Defendants
`
`Case Number:
`
`3:12-c\'-()99‘)‘)
`
`Filer:
`
`Document Number: 1470
`
`Docket Text:
`
`New Civil Case documents submitted ( Filing fee received: $ 350 receipt number 0974-
`5257062.) Plaintiff: Right Connection, Inc., Defendant: DPP Enterprises, Inc.
`(Attachments: # (1) Civil Cover Sheet)(Goonan, Gregory)
`
`No public notice (electronic or otherwise) sent because the entry is private
`The following document(s) are associated with this transaction:
`Document description:Main Document
`Original filename:n/a
`Electronic document Stamp:
`[STAMP dcecf‘Stamp_ID=1 106146653 [Date=lO/ 18/2012] [FileNumber=6639638-
`0] [243892bde9a9c1a51a67cbaaede7240db34161 1 1dc8408ab0874e60a61 1 1fa5d4d
`64668948597688a016S95f1 6101 f549a18f4b3407c8706741 949c736a0132d]]
`Document description: Civil Cover Sheet
`Original filename:n/a
`Electronic document Stamp:
`[STAMP dcecfStamp_ID=1106146653 [Date=10/ 18/2012] [FileNumber=6639638-
`1] [20efa3d7bf618dbd4el888d0afa2560ff6fb455f6t34dfdab6f477l 5bec628b6ce
`946e3cbc7280dbde3e773bcf2aa5b3989c53f5cleb9elc4b5094400956aa2b]]
`
`https://ecf.casd.uscourts.gov/cgi-bin/Dispatch.pl?3 1 841 74071 85029
`
`10/18/2012
`
`

`
`Gregory P. Goonan (Cal. Bar #119821)
`The Affinity Law Group APC
`5755 Oberlin Drive, Suite 301
`San Diego, CA 92121
`Tel: 858-750-1615
`Fax: 619-243-0088
`E-Mail: ggoonan@affinity-law.com
`
`Attorneys for Plaintiff
`Right Connection, Inc.
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`Right Connection, Inc., a Nevada corporation,
`
`Case No. ______________
`
`Plaintiff,
`
`vs.
`
`DPP Enterprises, Inc., a California
`corporation; and Michael Manahan, an
`individual,
`
`Defendants.
`
`COMPLAINT FOR (1) TRADEMARK
`INFRINGEMENT; (2) VIOLATION OF
`LANHAM ACT SECTION 43(a); (3)
`VIOLATION OF CALIFORNIA
`BUSINESS & PROFESSIONS CODE
`SECTION 17200; (4) COMMON LAW
`UNFAIR COMPETITION; (5) COMMON
`LAW TRADEMARK INFRINGEMENT;
`AND (6) DECLARATORY RELIEF
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff Right Connection, Inc. (“Right Connection”) alleges as follows for its complaint:
`
`INTRODUCTION
`
`1.
`
`This is an action for damages, injunctive relief, declaratory relief and other relief
`
`arising out of the infringement by defendant DPP Enterprises, Inc. (“DPP”) of Right Connection’s
`
`trademark rights as well as a violation by DPP of Lanham Act section 43(a) and state and common
`
`law unfair competition and trademark laws. Defendant Michael Manahan (“Manahan”) is the
`
`principal of DPP and has actively directed, induced, participated in, contributed to, and conspired
`
`with DPP’s wrongful acts.
`
`____________________________________________________________________________________________
`COMPLAINT
`- 1 -
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`2.
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`Right Connection is a company that specializes in the marketing and sale of tours,
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`travel, cruises and related services and products for and between individuals interested in
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`alternative adult travel.
`
`3.
`
`An essential part of Right Connection’s business is the trademarks and trade names
`
`that it uses to market and sell its services and products. Right Connection markets and sells its
`
`services and products using a number of trademarks centered around the term “Lifestyles.” As
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`alleged herein, the term “Lifestyles” has come to be known and understood by consumers and
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`Right Connection’s competitors to designate the high-quality services and products marketed and
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`sold by Right Connection.
`
`4.
`
`Right Connection is the owner of United States Trademark Registration No.
`
`2,008,780 for the trademark “Lifestyles Tours and Travel.” Right Connection also owns United
`
`States Trademark Registration No. 3,467,869 for the trademark “Lifestyles Resorts” and United
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`States Trademark Registration No. 4,034,177 for the trademark “Lifestyles Cruises.” These
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`trademarks are sometimes referred to herein as Right Connection’s “Lifestyles Trademarks.”
`
`5.
`
`Defendant DPP is one of Right Connection’s competitors. DPP recently began
`
`using the terms “Lifestyles” and “Lifestyle” to market and sell its own services. DPP also is
`
`attempting to register the purported trademark “Dream Pleasure Tours Lifestyle Specialists.”
`
`6.
`
`As alleged herein, DPP’s conduct constitutes trademark infringement under federal,
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`California and common law, violates Lanham Act section 43(a), and constitutes unfair
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`competition under California and common law. Right Connection accordingly brings this action
`
`to secure relief under federal, California and the common law to redress and remedy DPP’s
`
`wrongful acts. By this action, Right Connection seeks injunctive relief, money damages and all
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`other appropriate relief.
`
`7.
`
`Right Connection acquired certain rights in its Lifestyles Tours and Travel and its
`
`____________________________________________________________________________________________
`COMPLAINT
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`Lifestyles Resorts trademarks by way of assignment. In a proceeding currently pending before the
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`Trademark Trial and Appeal Board (which Right Connection will seek to have suspended
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`following the filing of this complaint), DPP contends that such assignment did not transfer the
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`goodwill for the Lifestyles Tours and Travel and the Lifestyles Resorts trademark to Right
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`Connection. DPP also has accused Right Connection of infringing DPP’s purported Dream
`
`Pleasure Tours trademark.
`
`8.
`
`By this action, Right Connection also seeks a declaratory judgment that (i) DPP’s
`
`challenge(s) to the referenced assignment has/have no merit; and (ii) Right Connection has not
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`infringed DPP’s purported Dream Pleasure Tours trademark in the manner alleged by DPP.
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`JURISDICTION AND VENUE
`
`9.
`
`This Court has jurisdiction over this matter pursuant to (i) 28 U.S.C. § 1331 (action
`
`arising under the laws of the United States); (ii) 28 U.S.C. § 1338(a) (action arising under
`
`trademark law); (iii) 28 U.S.C. §1338(b) (claims for unfair competition joined with claims under
`
`the trademark law); (iv) 15 U.S.C. § 1121(a) (action arising under the Lanham Act); (v) and
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`principles of pendant jurisdiction.
`
`10.
`
`Venue is proper in this district pursuant to 28 U.S.C. § 1391 (b,c,d).
`
`THE PARTIES
`
`11.
`
`Plaintiff Right Connection is a corporation organized and existing under the laws of
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`the State of Nevada with its principal place of business at 2375 East Tropicana, Suite 172, Las
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`Vegas, Nevada 89119. Right Connection is the owner of all right, title and interest in and to the
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`Lifestyles Trademarks.
`
`12.
`
`Right Connection is informed and believes and on that basis alleges that defendant
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`DPP is a corporation organized and existing under the laws of the State of California with its
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`principal place of business at 65 Pine Avenue, Suite 328, Long Beach, California 90802.
`
`____________________________________________________________________________________________
`COMPLAINT
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`13.
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`Defendant Manahan is an individual whose residence address is unknown. Right
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`Connection is informed and believes and on that basis alleges that Manahan is the principal of
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`DPP and actively directed and induced the wrongful acts of DPP as alleged herein. Right
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`Connection is further informed and believes and on that basis alleges that Manahan participated in
`
`and contributed to DPP’s wrongful acts, and conspired with DPP to commit such wrongful acts.
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`Manahan therefore is responsible for and liable for DPP’s wrongful acts.
`
`14.
`
`DPP and Manahan are sometimes collectively referred to herein as “Defendants.”
`
`GENERAL ALLEGATIONS
`
`Right Connection’s Business And Trademark Rights
`
`For many years, Right Connection has been in the business of arranging and selling
`
`A.
`
`15.
`
`travel and tours, as well as other products and services, for individuals interested in alternative
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`adult travel and adults-only vacations.
`
`16.
`
`Right Connection is a leader in the alternative adult travel industry. Although there
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`are numerous individuals and businesses who are involved in the adult travel industry, many of
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`them are shady operators who are unreliable, offer poor quality services, and in a number of cases
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`have defrauded consumers. In sharp contrast to many of its competitors, Right Connection is well
`
`known both by consumers and by its competitors for the high quality, honest, reliable travel
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`services, and related products and services, that it has provided to its customers over its many
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`years of business.
`
`17.
`
`Right Connection has used the term “Lifestyles” in various forms as its trademark
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`for many years to identify the high quality alternative adult travel services, and related products
`
`and services, it offers to its customers. As a result, both consumers and Right Connection’s
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`competitors have come to recognize and understand that the term “Lifestyles” is a trademark
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`owned by Right Connection that designates the high quality, reliable alternative adult travel
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`____________________________________________________________________________________________
`COMPLAINT
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`services, and other products and services, marketed and sold by Right Connection.
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`18.
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`Right Connection has used the Lifestyles Trademarks to advertise its alternative
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`adult travel services, and related products and services, throughout the United States and the
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`world. A significant portion of Right Connection’s marketing and sales is done over the Internet
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`through the use of the Lifestyles Trademarks. In particular, the principal website used by Right
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`Connection to market and sell its services and products, and book travel for its customers, is
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`www.lifestyles-tours.com. Right Connection prominently displays and uses its Lifestyles
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`Trademarks on its websites and in its other marketing and promotional materials.
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`19.
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`As a result of the substantial amount of sales that Right Connection has generated
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`using the Lifestyles Trademarks, the length of use of such trademarks, the advertising and
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`promotion of such trademarks by Right Connection, and the public recognition of such
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`trademarks, as well as the high quality, honest and reliable services offered and sold by Right
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`Connection using the Lifestyles Trademarks, the Lifestyles Trademarks are widely understood and
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`recognized in the alternative adult travel industry as being Right Connection’s trademarks, and the
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`Lifestyles Trademarks distinguish Right Connection’s superior services from the services of
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`others.
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`20.
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`For the reasons alleged herein, the Lifestyles Trademarks are valuable assets owned
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`by Right Connection and have come to represent significant and valuable goodwill belonging
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`exclusively to Right Connection.
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`21.
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`As alleged herein, Right Connection is the owner of United States Trademark
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`Registration No. 2,008,780 for the trademark “Lifestyles Tours and Travel.” A combined Section
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`8 and 15 affidavit has been filed and accepted for the “Lifestyles Tours and Travel” trademark and
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`the “Lifestyles Tours and Travel” trademark accordingly is incontestable.
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`22.
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`As alleged herein, Right Connection also owns United States Trademark
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`____________________________________________________________________________________________
`COMPLAINT
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`Registration No. 3,467,869 for the trademark “Lifestyles Resorts.”
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`23.
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`As alleged herein, Right Connection also owns United States Trademark
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`Registration No. 4,034,177 for the trademark “Lifestyles Cruises.”
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`24.
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`Each of the Lifestyles Trademarks as described herein have been valid and
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`subsisting at all relevant times.
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`B.
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`25.
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`Defendants’ Wrongful Acts
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`Defendant DPP is a competitor of Right Connection and also offers alternative
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`adult travel services over the Internet. DPP does business using the name “Dream Pleasure Tours”
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`and operates a website at www.DreamPleasureTours.com. DPP also has a trademark registration
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`for the mark “Dream Pleasure Tours.”
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`26.
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`In early 2011, Right Connection discovered that DPP had begun using the
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`Lifestyles Trademarks to market and sell its own services. Specifically, and without limitation,
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`DPP began using the phrases “Lifestyles Travel,” “Lifestyles Tours,” and “Lifestyles Vacations,”
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`as well as other terms and phrases that feature the word “lifestyles” in a manner that was and is
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`confusingly similar, to the Lifestyles Trademarks, on its website and in its advertising and
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`promotional materials.
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`27.
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`Right Connection is informed and believes, and on that basis alleges, that DPP also
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`buys the foregoing terms and other variations of the term “lifestyles” that are confusingly similar
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`to the Lifestyles Trademarks, without limitation, as “key words” in various Internet search engines
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`(such as Google) so that customers who use such terms in Internet search engines will be directed
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`to DPP’s website instead of Right Connection’s website
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`28.
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`In this way, DPP is able to divert customers to its own website using Right
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`Connection’s Lifestyles Trademarks.
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`29.
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`Right Connection is informed and believes and on that basis alleges that DPP is the
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`____________________________________________________________________________________________
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`only competitor of Right Connection that has engaged in such wrongful, improper and infringing
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`conduct.
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`30.
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`Right Connection is informed and believes, and on that basis alleges, that DPP has
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`falsely represented to the consumers that DPP, not Right Connection, owns trademark rights in the
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`Lifestyles Trademarks.
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`31.
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`In or about May 2011, after learning about Defendants’ wrongful acts as described
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`herein, Right Connection sent DPP a cease and desist letter.
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`32.
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`DPP did not stop its infringement of Right Connection’s Lifestyles Trademarks in
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`response to Right Connection’s cease and desist letter. Instead, almost immediately after
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`receiving Right Connection’s cease and desist letter, DPP filed a new application with the United
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`States Patent and Trademark Office by which it sought to register a purported trademark identified
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`as “Dream Pleasure Tours Lifestyle Specialists.” Such application remains pending at present and
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`Right Connection has filed an opposition (the “TTAB Opposition Proceeding”) to DPP’s improper
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`attempt to register the referenced term as its trademark. As alleged herein, Right Connection will
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`seek to have the TTAB Opposition Proceeding suspended pending the outcome of this matter
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`following the filing of this complaint.
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`33.
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`Moreover, on or about November 1, 2011, DPP also filed an application with the
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`United States Patent and Trademark Office by which it attempted to register the term “Lifestyles
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`Vacations.”
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`34.
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`On February 25, 2012, the examining attorney who examined such application
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`issued an office action which stated a refusal to register on the ground, inter alia, that there was a
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`likelihood of confusion between DPP’s purported “Lifestyles Vacations” mark and the Lifestyles
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`Trademarks owned by Right Connection.
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`35.
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`DPP never responded to the referenced February 25, 2012 office action. Instead,
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`____________________________________________________________________________________________
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`DPP abandoned the referenced application on or about August 28, 2012.
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`FIRST CLAIM FOR RELIEF
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`(Federal Trademark Infringement)
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`36.
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`Right Connection realleges and incorporates by this reference each and every
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`allegation contained in paragraphs 1 through 35 of this complaint as though set forth in full herein.
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`37.
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`This claim for relief is an action for federal trademark infringement pursuant to the
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`Federal Trademark Act, 15 U.S.C. § 1114 et seq.
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`38.
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`As alleged herein, Right Connection has three valid and subsisting federal
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`registrations for Right Connection’s Lifestyles Trademarks and Right Connection has marketed,
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`advertised and sold alternative adult travel services to the public using its Lifestyles Trademarks
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`for a number of years.
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`39.
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`As alleged herein, Right Connection is informed and believes and on that basis
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`alleges that the DPP has marketed, advertised and sold, and continues to market, advertise and
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`sell, its own alternative adult travel services to the public using Right Connection’s Lifestyles
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`Trademarks and other terms and formulations that are confusingly similar to Right Connection’s
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`Lifestyles Trademarks.
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`40.
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`DPP’s wrongful acts as alleged herein have caused, and are likely to continue to
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`cause, confusion in the minds of consumers to the detriment of Right Connection.
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`41.
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`DPP’s wrongful acts as alleged herein were done without the knowledge, consent
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`or permission of Right Connection and continue without the consent or permission of Right
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`Connection.
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`42.
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`In doing the things alleged herein, DPP has violated the trademark rights of Right
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`Connection under the Federal Trademark Act, thereby giving rise to a cause of action under 15
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`U.S.C. § 1114.
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`____________________________________________________________________________________________
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`43.
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`Right Connection will be irreparably harmed unless Defendants are immediately
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`and permanently enjoined from any further in