Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA601435
`ESTTA Tracking number:
`04/30/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91209280
`Plaintiff
`Mad Dogg Athletics, Inc.
`KONRAD GATIEN
`RAINES FELDMAN LLP
`9720 WILSHIRE BOULEVARD, FIFTH FLOOR
`BEVERLY HILLS, CA 90212
`UNITED STATES
`uspto@stubbsalderton.com
`Motion to Suspend for Civil Action
`Konrad Gatien
`uspto@stubbsalderton.com, kgatien@stubbsalderton.com
`/s/
`04/30/2014
`91209280 Motion to Suspend - Civil Action.pdf(2749636 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application No. 85/620,810, Published on October 16, 2012
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`Opposition No. 91209280
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`Mad Dogg Athletics, Inc.
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`Opposer,
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`v.
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`Barry E. Coleman,
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`Applicant.
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` ________________________________)
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`MOTION TO STAY PROCEEDINGS PENDING RESOLUTION OF
`PENDING FEDERAL DISTRICT COURT LITIGATION
`AND
`TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF THIS MOTION
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`
`
`The parties are engaged in a civil action that may have a bearing on this proceeding,
`which has been filed in the United States District Court for the Central District of California,
`Western Division and assigned Civil Action No. CV14-2409 FMO (MRWx) (the “Civil
`Action”). A copy of the Complaint filed in the Civil Action is attached hereto as Exhibit A.
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`Accordingly, pursuant to 37 C.F.R. § 2.117 and Rule 510.02 of the Trademark Trial and
`Appeal Board Manual of Procedure, Opposer, Mad Dogg Athletics, Inc. (“Opposer”), hereby
`respectfully requests that the Trademark Trial and Appeal Board (the “Board”) stay the above-
`identified Opposition pending the final determination of the related parallel Civil Action. See
`also New Orleans Louisiana Saints LLC and NFL Properties LLC v. Who Dat?, Inc., 99
`U.S.P.Q.2d 1550 (T.T.A.B. 2011).
`
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`Procedural History
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`
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`This proceeding was filed on February 13, 2013. Although the parties have repeatedly
`attempted to reach an amicable settlement of their dispute, their efforts have recently reached an
`impasse, which forced Opposer to file the Civil Action.
`
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`In the Civil Action (as in this proceeding) Opposer seeks a declaration that Applicant’s
`use of its SPINSATIONAL mark in connection with providing indoor cycling instruction will
`result in a likelihood of confusion with Opposer’s use of its SPIN family of marks in connection
`with providing indoor cycling instruction in violation of the Lanham Act. In addition, Opposer
`seeks injunctive relief and damages in the Civil Action.
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`

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`Opposer respectfully submits that a change in venue will not result in prejudice to either
`party because, to date, the parties have not taken or served any discovery, and focused their
`efforts entirely on settlement in an effort to preserve their resources and those of the Board.
`Thus, notwithstanding the length of time that has passed since the filing of this Opposition, this
`proceeding is at its earliest stages of development.
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`Accordingly, because this proceeding has issues common to the parallel Civil Action, and
`because no prejudice will result from staying this proceeding, Opposer requests that the Opposition
`be suspended until a final determination of the Civil Action. Opposer’s request is made in the
`interest of judicial economy and is consistent with the Board’s prior practice and precedent.
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`
`Motion to Stay
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`
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`When parties to a case pending before the Board are involved in a civil action,
`proceedings before the Board may be stayed until final determination of the civil action. See
`Trademark Rule 2.117(a). See also General Motors Corp. v. Cadillac Club Fashions Inc., 22
`U.S.P.Q.2d 1933 (T.T.A.B. 1992). Suspension of a Board case is appropriate even if the civil
`case may not be dispositive of the Board case, so long as the ruling will have a bearing on the
`rights of the parties in the Board case. See Martin Beverage Co. Inc. v. Colita Beverage
`Company, 169 U.S.P.Q. 568 (T.T.A.B. 1971).
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`
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`Under such circumstances, suspension of a Board proceeding is solely within the
`discretion of the Board. Neither the parties nor their attorneys possess the power to stay
`proceedings in a case before the Board. Similarly, the court in which a civil action is pending
`has no power to suspend proceedings in a case before the Board. See Opticians Ass'n of America
`v. Independent Opticians of America Inc., 734 F. Supp. 1171, 14 U.S.P.Q.2d 2021 (D.N.J. 1990),
`rev'd on other grounds, 920 F.2d 187, 17 U.S.P.Q.2d 1117 (3d Cir. 1990), and Martin Beverage,
`supra.
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`
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`Here, the parties to the Opposition and the Civil Action are the same. Further, in its
`complaint in the Civil Action, Opposer seeks, among other things, a declaration that Applicant’s
`use and registration of its SPINSATIONAL mark will violate the Lanham Act. Such
`determination will necessarily involve the same issues that are present in this proceeding;
`namely, a determination by the District Court regarding priority of use of the parties’ respective
`marks, and a determination of whether the concurrent use of the parties’ marks will result in a
`likelihood of consumer confusion, mistake or deception as to the respective sources of the
`parties’ marks.
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`Thus, a determination of the issues by the Court in the Civil Action will either be
`dispositive of, or at least may have a bearing on, the issues before the Board in this proceeding.
`Moreover, 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 binding
`upon the Board, while the decision of the Board is not binding upon the court. See, e.g., Goya
`Foods Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 U.S.P.Q.2d 1950 (2d Cir.1988);
`American Bakeries Co. v. Pan-O-Gold Baking Co., 650 F. Supp. 563, 2 U.S.P.Q.2d 1208 (D.
`Minn. 1986).
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`Therefore, in the interest of judicial economy and consistent with the Board’s inherent
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`authority to regulate its own proceedings to avoid duplicating the effort of the court and the
`possibility of reaching an inconsistent conclusion, Opposer respectfully requests that the Board
`grant its Motion to Stay the Opposition pending a final disposition of the Civil Action between
`the parties.
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`Opposer also respectfully requests that this proceeding be suspended pending disposition
`of this motion.
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`Respectfully submitted,
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`By:
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`
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`Konrad Gatien
`STUBBS, ALDERTON & MARKILES, LLP
`Attorneys for Opposer
`Mad Dogg Athletics, Inc.
`1453 3rd Street Promenade, Suite 300
`Santa Monica, CA 90401
`(310) 746-9810 Tel.
`(310) 746-9820 Fax.
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`Dated: April 30, 2014
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`CERTIFICATE OF SERVICE
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`It is hereby certified that I served a true and correct copy of the foregoing Motion to Stay
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`Proceedings Pending Resolution of Pending Federal District Court Litigation and to Suspend
`Proceedings Pending Disposition of this Motion on Applicant’s counsel of record:
`
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`Matthew H. Swyers, Esq.
`The Trademark Company PLLC
`344 Maple Avenue West, Suite 151
`Vienna, VA 22180
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`by placing a true and correct copy thereof in a sealed envelope, postage prepaid, in First Class
`U.S. mail, for collection and mailing with the United States Postal Service on this 30th day of
`April 2014.
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`I declare under penalty of perjury under the laws of the United States of America that the
`foregoing is true and correct.
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`Executed on April 30, 2014, at Santa Monica, California.
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`_________/s/_________
` Darrell Orme Mann
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`EXHIBIT A
`EXHIBIT A
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`Konrad K. Gatien (Bar No. 221770)
`kgatien@stubbsalderton.com
`Anthon M. Keats (Bar No. 123672)
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`akeatséstubbsaldertoncorn
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`Vivian ee (Bar No. 273274)
`vlee a,s.tubbsa1derton.com
`ST
`B38 ALDERTON & MARKILES LLP
`1453 3r St: Promenade, Suite 300
`Santa Monica, California 90401
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`Telephone: E3 10% 746-9800
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`310 746-9820
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`F8.CS1II11l€Z
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`
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`Attorneys for Plaintiff
`MAD DOGG ATHLETICS, INC.
`
`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`WESTERN DIVISION
`
`cv14-2409 W /ll/i’«'«*’t
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`MAD DOGG ATHLETICS, INC., 21
`California corporation,
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`Case No.
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`COMPLAINT FOR:
`
`Plaintiff,
`
`V-
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`SPINSATIONAL LLC, a New York
`limited liability company, and BARRY
`E. COLEMAN d/b/a SPINSATIONAL
`FITNESS STUDIO, an mdwldual,
`
`Defendants.
`
`1. FEDERAL TRADEMARK
`INFRINGEMENT (15 U.S.C. § 1114);
`2 FEDERAL UNFAIR COMPETITION
`'
`AND FALSE DESIGNATION OF
`ORIGIN (15 U.S.C. § 1125(a));
`3. FEDERAL TRADEMARK DILUTION
`(15 U.S.C. § 1125(c));
`4. STATE STATUTORY UNFAIR
`COMPETITION (Cal. Bus. & Prof.
`Code §§ 17200 et seq.); and
`5. CYBERPIRACY (15 U.S.C. § 1125(d)).
`
`COMPLAINT
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`

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`In this lawsuit, Mad Dogg Athletics, Inc. (“Mad Dogg” or “Plaintiff’), seeks to
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`protect its exclusive right to use its SPIN family of trademarks in connection with
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`providing goods and services for indoor cycling. Accordingly, Mad Dogg seeks an
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`injunction against the unauthorized use by defendants, Spinsational LLC and Barry E.
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`Coleman dba Spinsational Fitness Studio (“Defendants”), of Mad Dogg’s valuable
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`trademark rights, monetary damages, and such other relief as the Court deems just and
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`proper.
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`Jurisdiction and Venue
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`1.
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`This is a Complaint for trademark infringement under 15 U.S.C. § 1114;
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`unfair competition and false designation of origin under 15 U.S.C. § 1125(a);
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`trademark dilution under 15 U.S.C. § 1l25(c); California State statutory unfair
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`competition under Cal. Bus. & Prof. Code §§ 17200 et seq., and Cyberpiracy under 15
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`U.S.C. § l125(d). This Court has jurisdiction over this matter pursuant to 15 U.S.C.
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`§§ 1116(a) and 1121; 28 U.S.C. §§ 1331, 1332(a), §§ 1338(a) and (b), and § 1367.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b).
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`Parties
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`2.
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`Mad Dogg is a corporation duly organized and existing under the laws of
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`the State of California, located and doing business at 2111 Narcissus Court, Venice,
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`California 90291 .
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`3.
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`On information and belief, defendant, Spinsational LLC, is a New York
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`limited liability company with a principle place of business located at 450 N. State
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`Rd., Briarcliff Manor, New York 10510, and a website located at
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`<http://www.spinsational.net> (the “Spinsational Website”). On information and
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`belief, this defendant is subject to the jurisdiction of this Court by using trademarks
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`that are confusingly similar to Mad Dogg’s SPIN family of trademarks, and each of
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`them, in connection with advertising, offering for sale and selling of group exercise
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`classes conducted on Mad Dogg’s SPIN-branded stationary exercise bicycles and
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`using instruction methods that are not approved by Mad Dogg. In addition, this
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`- 1 -
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`COMPLAINT
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`

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`defendant is subject to the jurisdiction of this Court by purchasing tens of thousands
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`of dollars of Plaintiff’ s SPIN-branded stationary exercise bicycles and related goods
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`from Plaintiff and Plaintiff’ s distributors located in this judicial district.
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`4.
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`On information and belief, defendant, Barry E. Coleman, is a citizen of
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`New York with a principle place of business located at 450 N. State Rd., Briarcliff
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`Manor, New York 10510. On information and belief, defendant Coleman is the sole
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`principle and the active, conscious, moving force behind defendant Spinsational LLC.
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`On information and belief, defendant Coleman is subject to the jurisdiction of this
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`Court by using trademarks that are confusingly similar to Mad Dogg’s SPIN family of
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`trademarks, and each of them, in connection with advertising, offering for sale and
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`selling group exercise classes conducted via Mad Dogg’s SPIN-branded stationary
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`exercise bicycles. Defendant Coleman is the principle fitness instructor for
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`Spinsational LLC, the owner of the SPINSATIONAL trademark application, the
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`registrant and developer of the Spinsational Website, and the agent of defendant
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`Spinsational LLC that was responsible for purchasing tens of thousands of dollars of
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`Plaintiffs SPIN-branded stationary exercise bicycles and related goods from Plaintiff
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`and Plaintiffs distributors located in this judicial district. Spinsational LLC and
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`defendant Coleman are hereinafter referred to collectively as “Defendants.”
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`Plaintiff’ s Rights
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`5.
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`Mad Dogg was founded in 1994 and is a leader in offering fitness
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`instruction via stationary exercise bicycles and a leader in the sale of stationary
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`exercise bicycles in the United States and worldwide (collectively, the “SPIN brand
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`goods and services”). Mad Dogg’s SPIN brand goods and services are offered under
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`its federally registered SPIN family of marks, which includes without limitation:
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`Mark
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`Reg. No.
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`Goods/Services
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`SPIN
`
`2173202 Stationary exercise bicycles in
`International Class 028; Physical
`fitness instruction in International
`
`Class 041.
`
`Reg. Date
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`July 14, 1998
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`COMPLAINT
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`
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`May 15,
`2012
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`Prerecorded video tapes featuring
`exercise and general physical
`fitness instruction in International
`
`Class 009; Exercise equipment,
`namely, stationary exercise
`bicycles in International Class
`028; Physical fitness instruction in
`International Class 041.
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`SPINCIRCUIT 4140957"
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`Prerecorded video cassettes
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`featuring exercise and general
`physical fitness instruction in
`International Class 009.
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`March 28,
`2000
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`SPINERVALS
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`2336564
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`SPIN’/S-737935
`"--__-/'
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`SPIN
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`FITNESS
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`3994201
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`3978382
`
`
`Providing instruction and
`consultation in the fields of
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`physical fitness and exercise in
`International Class 041
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`Providing physical fitness
`instruction and consultation in the
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`
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`July 12, 2011
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`2011
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`
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`November
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`13, 2007
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`fields of health and exercise;
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`health club services, namely
`providing instruction and
`equipment in the fields of health
`and exercise in International Class
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`04 1 .
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`SPINGYM
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`3334266
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`Prerecorded video cassettes,
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`
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`DVDs, audio cassettes, and
`compact discs featuring exercise
`and general fitness instruction in
`International Class 009; Physical
`fitness instruction in International
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`Class 041.
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`SPINNING
`
`1780650
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`SPINNING
`
`3286726
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` July 6, 1993
`Providing training and instruction
`to others by simulating an outdoor
`bicycle workout completed
`indoors on a stationary bicycle in
`International Class 041.
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`Providing information in the field
`of exercise and fitness via the
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`August 28,
`2007
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`Internet in International Class 041
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`
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`COMPLAINT
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`SPIN
`PILATES
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`3528187 Providing physical fitness
`instruction and consultation in the
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`November 4,
`2008
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`fields of health and exercise;
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`health club services, namely,
`providing instruction and
`equipment in the field of physical
`exercise” in International Class 41
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`SPIN YOGA
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`3981791
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`providing physical fitness
`instruction and consultation in the
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`June 21,
`2011
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`fields of health and exercise;
`health club services, namely,
`providing instruction and
`equipment in the fields of health
`and exercise” in International
`Class 041.
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`True and correct printouts from the USPTO Web site evidencing the above-
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`referenced trademark registrations are attached hereto as Exhibit 1.
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`6.
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`The registrations for the SPIN family of trademarks are in full force and
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`effect and certain registrations including SPIN®, SPINNING®, SPINERVALS®,
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`SPINGYM® and SPIN PILATES® have become incontestable pursuant to 15 U.S.C.
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`§ 1065.
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`7.
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`Mad Dogg has set the standard in the fitness world for exercise via
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`stationary exercise bicycles. For example, Mad Dogg is famous for being one of the
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`world’s largest fitness education companies with over 200,000 certified SPINNING®
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`indoor cycling instructors teaching in 35,000 facilities in 80 countries worldwide. In
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`addition, Mad Dogg is the leader in the United States in the sale of stationary exercise
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`bicycles offered and branded under its SPIN family of trademarks.
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`8.
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`Mad Dogg has expended substantial time, effort and financial resources
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`in connection with its development, promotion and sale of its SPIN brand goods and
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`services bearing or being offered for sale under the SPIN family of trademarks.
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`COMPLAINT
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`

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`9.
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`Mad Dogg has earned substantial revenues from its licensed SPIN brand
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`goods and services bearing or being offered for sale under its SPIN family of
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`trademarks.
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`10. Mad Dogg has successfully enforced its trademark rights in and to its
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`SPIN family of trademarks against infringers in the past.
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`1 1.
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`As a business policy, Mad Dogg has established and maintains high
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`standards of quality for its licensed SPIN brand goods and services bearing or being
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`offered for sale under its SPIN family of trademarks. Mad Dogg maintains stringent
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`quality control over its trademark licensees with respect to the quality of the licensed
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`SPIN brand goods and servigegeaggggbging offered for sale under its SPIN family
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`of trademarks and the manner of use of said marks in connection with Mad Dogg’s
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`SPIN brand goods and services in order to preserve and protect Mad Dogg’s valuable
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`trademark rights. The foregoing quality control procedures ensure that all goods and
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`services bearing, being offered or advertised under, or that are associated with its
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`SPIN family of trademarks, will be identified by purchasers as high quality goods and
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`services that emanate from, or are licensed, sponsored, approved or authorized by
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`Mad Dogg.
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`12. Mad Dogg’s SPIN brand goods and services bearing or being offered for
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`sale under its SPIN family of trademarks are widely distributed throughout the United
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`States and worldwide. There is a substantial public demand for such goods and
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`services, and because of said public demand, the right to manufacture, sell, distribute
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`and/or license such goods and services is a valuable commercial property right.
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`13. Mad Dogg’s authorized SPIN brand goods and services have been
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`advertised by Mad Dogg and its licensees to the purchasing public and to the trade
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`throughout the United States and internationally on an extensive and frequent basis in
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`a variety of media including without limitation newspapers, magazines, television,
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`radio, the Internet, trade publications and trade shows.
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`COMPLAINT
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`14.
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`The SPIN brand goods and services, bearing or being offered for sale
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`under the SPIN family of trademarks, by reason of their style, excellence, and quality,
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`have come to be known to the purchasing public throughout the United States and
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`worldwide as representing goods and services of the highest quality. As a result, the
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`SPIN family of trademarks and the goodwill associated therewith are of inestimable
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`value to Mad Dogg.
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`15.
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`By virtue of the wide renown of its SPIN family of trademarks and wide
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`geographic distribution and extensive sale of the goods and services bearing the
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`trademarks, its SPIN family of trademarks, and each of them, has developed
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`secondary meaning and significance in the minds of the purchasing public. In
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`particular, Mad Dogg’s SPIN®, SPINNER® and SPINNING® marks have become
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`and are famous and distinctive. As such, Mad Dogg’s SPIN brand goods and services
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`bearing or being offered for sale under its SPIN family of trademarks are immediately
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`identified by the purchasing public with Mad Dogg.
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`Defendants’ Infringing Activity
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`16.
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`Long after Mad Dogg’s adoption and/or use of its SPIN family of
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`trademarks in connection with the sale of Mad Dogg’s SPIN brand goods and
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`services, long after Mad Dogg obtained its federal trademark registrations for its
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`SPIN®, SPINNER® and SPINNING® trademarks for indoor cycling, and long after
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`said marks became famous, Defendants, on information and belief began to advertise,
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`offer for sale and sell, under their infringing brand name SPINSATIONAL, fitness
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`instruction conducted on Mad Dogg’s SPIN-branded stationary exercise bicycles.
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`Defendants’ indoor cycling classes, which do not originate from and are not sponsored
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`by or affiliated with Mad Dogg, are hereinafter referred to as “Defendants’ Infringing
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`Services.”
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`17.
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`Specifically, in or about September 2007, defendant Coleman
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`participated in Mad Dogg’s SPINNING® indoor cycling instructor course and became
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`a certified SPINNING® indoor cycling instructor.
`
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`-6-
`
`COMPLAINT
`
`

`
`18.
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`Thereafter, defendant Coleman participated in continuing SPINNING®
`
`indoor cycling instruction courses in 2008, 2009, 2010, 2012 and 2013. Defendant
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`Coleman is currently certified as a STAR level 3 SPINNING® indoor cycling
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`instructor.
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`19. As a certified SPINNING® indoor cycling instructor, defendant Coleman
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`is aware that he is only permitted to teach indoor cycling classes under the
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`SPINNING® brand name that conform to Mad Dogg’s approved fitness techniques.
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`20. As fitness facility that offers indoor cycling instruction, defendant
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`Spinsational LLC is aware that it is only permitted to offer indoor cycling classes
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`under the SPINNING® brand name that use certified SPINNING® indoor cycling
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`instructors who teach according to Mad Dogg’s approved fitness techniques.
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`21. Nevertheless, defendant Coleman registered the Spinsational Website in
`
`his name on March 31, 2011. True and correct copies of printouts evidencing certain
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`details in connection with defendant Coleman’s registration of the Spinsational
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`Website are attached hereto as Exhibit 2.
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`22. Defendant Coleman claims to have first used the SPINSATIONAL mark
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`(Ser. No. 85/620,810) in connection with group fitness classes conducted via indoor
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`cycles anywhere at least as early as April 1, 2011, and in interstate commerce at least
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`as early as September 27, 2011. This information is contained in defendant
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`Coleman’s trademark application for the SPINSATIONAL mark, which he caused to
`
`be filed with the United States Patent and Trademark Office (“USPTO”) on May 9,
`
`2012. True and correct copies of printouts from the USPTO website evidencing the
`
`above-referenced information are attached hereto as Exhibit 3.
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`23. On April 7, 2011, shortly after defendant Coleman claims to have first
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`used the SPINSATIONAL mark in connection with teaching indoor cycling classes,
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`he adopted and registered the business name Spinsational LLC. A true and correct
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`copy of a printout from the New York Secretary of State website evidencing the
`
`above-referenced information is attached hereto as Exhibit 4.
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`-7-
`
`COMPLAINT
`
`

`
`24.
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`On February 10, 2012, Mad Dogg sent a cease-and-desist letter to
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`Defendants demanding that they cease use of the SPINSATIONAL mark.
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`25.
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`Thereafter, Mad Dogg’s counsel and Defendants’ counsel exchanged
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`correspondence in an effort to amicably resolve this dispute, to no avail.
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`26.
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`On May 9, 2012, defendant Coleman caused to be filed with the USPTO
`
`his trademark application for the SPINSATIONAL mark.
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`27.
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`On information and belief, the teaching methods of defendant Coleman
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`do not conform to the fitness techniques approved and taught by Mad Dogg for use in
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`connection with its SPINNING® indoor cycling program.
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`28. On information and belief, the SPINNING® indoor cycling instructor
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`certifications for several of the instructors that teach at defendant Spinsational LLC
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`have expired. In addition, at least one instructor teaching indoor cycling at defendant
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`Spinsational LLC has never been certified by Mad Dogg to be a SPINNING® indoor
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`cycling instructor.
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`29. Defendants use the SPINSATIONAL mark on the Spinsational Website
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`to offer Defendants’ Infringing Services. True and correct copies of printouts from
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`Defendants’ Spinsational Website are attached hereto as Exhibit 5.
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`30. Defendants’ Spinsational Website prominently features Mad Dogg’s
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`SPIN-branded indoor cycles on Defendants’ homepage, and other pages. See id.
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`31. Defendants’ SPINSATIONAL brand indoor cycling classes are
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`conducted on Mad Dogg’s SPIN-branded indoor cycles. See id.
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`32. Defendants were well aware of Mad Dogg’s trademark rights in and to its
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`SPIN family of trademarks before Defendants adopted their SPINSATIONAL
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`trademark to identify Defendants’ Infiinging Services and well before defendant
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`Coleman filed his trademark application for the SPINSATIONAL mark.
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`33. Notwithstanding Mad Dogg’s repeated requests for Defendants to cease
`
`their unauthorized use of infiingements of Mad Dogg’s trademarks, Defendants have
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`refused to do so.
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`COMPLAINT
`
`

`
`34.
`
`Because Defendants did not comply with Mad Dogg’s demands, on
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`February 12, 2013, Mad Dogg filed an opposition proceeding against the registration
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`of the SPINSATIONAL mark before the Trademark Trial and Appeal Board of the
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`United States Patent and Trademark Office, which was assigned Proceeding No.
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`91209280 (the “Opposition Proceeding”).
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`35.
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`Following Plaintiffs filing of the Opposition Proceeding, Mad Dogg and
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`Defendants engaged in settlement discussions. Unfortunately, the parties were not
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`able to reach an amicable settlement. Therefore, Plaintiff was forced to file this action
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`to secure the injunctive relief and damages to which Plaintiff is entitled.
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`36.
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`Following the filing of this Complaint, Plaintiff shall imminently file a
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`motion to stay the Opposition Proceeding, which, based on prevailing authority,
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`should be granted.
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`37.
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`Upon information and belief, the activities of Defendants complained of
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`herein constitute willful and intentional infringement of Mad Dogg’s SPIN family of
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`trademarks, and each of them; are in total disregard of Mad Dogg’s rights; and were
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`commenced and have continued despite Defendants’ knowledge that the use of Mad
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`Dogg’s SPIN family of trademarks, or a copy or colorable imitation thereof, in
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`connection with the advertisement, offering or sale and sale of Defendants’ Infiinging
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`Services, was and is in direct contravention of Mad Dogg’s rights.
`
`38.
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`The use by Defendants of a mark that is confusingly similar to Mad
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`Dogg’s SPIN family of trademarks in connection with Defendants’ offering for sale
`
`and sale of Defendants’ Infringing Services was and is without Mad Dogg’s consent,
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`is likely to cause confusion and mistake in the minds of the purchasing public, is
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`likely to damage, tarnish and dilute Mad Dogg’s SPIN®, SPINNER® and
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`SPINNING® trademarks, and tends to and does falsely create the impression that
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`Defendants, Defendants’ Spinsational Website, and/or the fitness instruction offered
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`under Defendants’ SPINSATIONAL mark and conducted on Mad Dogg’s SPIN-
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`10
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`11
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`12
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`14
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`15
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`16
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`17
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`COMPLAINT
`
`

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`branded stationary exercise bicycles, originate from or are authorized, sponsored, or
`
`approved by Mad Dogg when they are not.
`
`COUNT I
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`(Federal Trademark Infringement)
`
`[15 U.S.C. § 1114]
`
`39. Mad Dogg repeats and realleges all preceding paragraphs as if fully
`
`stated herein.
`
`40.
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`The use by Defendants of infringements of Mad Dogg’s SPIN family of
`
`trademarks in connection with Defendants’ Infringing Services is likely to cause
`
`confusion, mistake or deception of consumers as to the source of origin or sponsorship
`
`of the services, in violation of § 32 of the Lanham Act, 15 U.S.C. § 1114.
`
`Specifically, consumers are likely to seek out and to purchase Defendants’ Infiinging
`
`Services falsely believing that Defendants and/or Defendants’ Infiinging Services are
`
`affiliated, connected, or associated with Mad Dogg, or falsely believing that
`
`Defendants and/or Defendants’ Infringing Services originate from, or are sponsored or
`
`approved by Mad Dogg when they are not.
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`41. Mad Dogg has no control over the quality of the indoor cycling
`
`instruction offered by Defendants. Thus, Mad Dogg’s reputation as the world leader
`
`in fitness instruction via indoor cycles, and the value of Mad Dogg’s SPIN family of
`
`trademarks is subject to damage and dilution by Defendants, whose methods of
`
`instruction are not complaint with, or certified by, Mad Dogg. This is a serious issue
`
`for Mad Dogg, as improper fitness techniques taught by uncertified instructors can
`
`lead to physical injury.
`
`42. Upon information and belief, Defendants have willfully infringed Mad
`
`Dogg’s trademark rights in a deliberate attempt to trade upon and cash in on the wide
`
`renown of Mad Dogg’s SPIN brand goods and services, which Mad Dogg has
`
`developed for over 20 years.
`
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`COMPLAINT
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`43.
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`The goodwill of Mad Dogg’s business embodied in its SPIN family of
`
`trademarks is of great value.
`
`44. Mad Dogg has suffered and will continue to suffer irreparable harm to its
`
`trademark rights, reputation and goodwill from the acts complained of herein unless
`
`Defendants’ infringement is not enjoined by order of this Court.
`
`45. Defendants’ continued acts of infringement, as complained of herein,
`
`entitle Mad Dogg to an award of Defendants’ profits, up to three times Mad Dogg’s
`
`actual damages, and Mad Dogg’s attorneys’ fees in bringing and maintaining this
`
`action pursuant to 15 U.S.C. § 1ll7(a).
`
`COUNT II
`
`(Federal Unfair Competition and False Designation of Origin)
`
`[15 U.S.C. § 1125(a) and Lanham Act § 43(a)]
`
`46. Mad Dogg repeats and realleges all preceding paragraphs as if fully
`
`stated herein.
`
`47. Defendants’ use of Mad Dogg’s SPIN family of trademarks, including on
`
`the World Wide Web, constitutes unfair competition and a false designation of origin
`
`that is likely to cause confusion, mistake or deception of consumers as to the source of
`
`origin or sponsorship of Defendants and/or Defendants’ Infringing Services in
`
`violation of § 43(a) of the Lanham Act. Specifically, consumers are likely to purchase
`
`Defendants’ Infringing Services falsely believing that Defendants and/or Defendants’
`
`Infringing Services are affiliated, connected, or associated with Mad Dogg, or falsely
`
`believing that Defendants and/or Defendants’ Infringing Services originate from, or
`
`are sponsored or approved by Mad Dogg when they are not.
`
`48. Mad Dogg has no control over the nature and quality of Defendants’
`
`Infringing Services. Any failure, neglect or default by Defendants in providing high
`
`quality indoor cycling instruction strictly according to Mad Dogg’s approved teaching
`
`methods will reflect adversely on Mad Dogg as the believed source of origin or
`
`certification thereof. Defendants’ activity creates the false and misleading
`
`-l 1-
`
`COMPLAINT
`
`

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`representation that Defendants and Defendants’ unauthorized indoor cycling
`
`instruction, which does not conform to Mad Dogg’s certification standards, are
`
`associated with and/or sponsored or approved by Mad Dogg and impairs efforts by
`
`Mad Dogg to continue to protect its outstanding reputation for high quality fitness
`
`instruction via stationary exercise bicycles, and will result in a loss of sales and
`
`goodwill by Mad Dogg, all to the irreparable harm of Mad Dogg.
`
`49. Unless enjoined by this Court, Defendants will continue to engage in the
`
`acts of false representation and designation complained of herein, to the irreparable
`
`damage and injury of Mad Dogg.
`
`50. Defendants’ continued false representation and designation is with full
`
`knowledge of Mad