Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`91211397
`
`Defendant
`
`Motorola Trademark Holdings, LLC
`WILLIAM R. ANDERSON
`MOTOROLA TRADEMARK HOLDINGS, LLC
`600 N US HIGHWAY 45
`LIBERTYVILLE, IL 60048-5343
`
`mxg674@motoro|a.com
`
`Motion to Suspend for Civil Action
`Thomas M. Williams
`
`
`
`twi||iams@u|mer.com, kevans@u|mer.com, jnew@u|mer.com
`lsl Thomas M. Williams
`
`08/02/2013
`
`Applicants Motion to Suspend Proceeding.pdf(1166414 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA552012
`ESTTA Tracking number:
`08/02/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211397
`Defendant
`Motorola Trademark Holdings, LLC
`WILLIAM R. ANDERSON
`MOTOROLA TRADEMARK HOLDINGS, LLC
`600 N US HIGHWAY 45
`LIBERTYVILLE, IL 60048-5343
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`mxg674@motorola.com
`Motion to Suspend for Civil Action
`Thomas M. Williams
`twilliams@ulmer.com, kevans@ulmer.com, jnew@ulmer.com
`/s/ Thomas M. Williams
`08/02/2013
`Applicants Motion to Suspend Proceeding.pdf(1166414 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91/211,397
`
`)))))))))))))))
`
`Application Serial No. 85/792,653
`Filed: December 3, 2012
`Published: March 5, 2013, in the Official Gazette
`For: MAXXCHARGE
`
`Mag Instrument, Inc.
`
`Opposer,
`
`vs.
`
`Motorola Trademark Holdings, LLC
`
`Applicant.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, Virginia 22313-1451
`
`APPLICANT’S MOTION TO SUSPEND PROCEEDING
`PURSUANT TO CIVIL ACTION
`
`Pursuant to 37 C.F.R. § 2.117(a) and T.B.M.P. § 510.02(a), Applicant Motorola
`
`Trademark Holdings, LLC (“Applicant”) hereby notifies the Board that Applicant is engaged in a
`
`civil action that may have a bearing on the case. Applicant requests the Board to suspend this
`
`proceeding pending resolution of the civil action. In support, Applicant states as follows:
`
`1.
`
`On March 11, 2013, third parties Waves Audio Ltd. and Waves Inc. (collectively,
`
`“Waves”) filed a trademark infringement Complaint in the United States District Court for the
`
`Northern District of California against Applicant and its related entity Motorola Mobility LLC.
`
`See Waves Audio Ltd. and Waves Inc. v. Motorola Mobility LLC and Motorola Trademark
`
`

`
`Holdings, LLC, Case No. 13-CV-1091 (EMC)1 (N.D. Cal.) (the “Civil Action”). A copy of the
`
`Complaint is attached as Exhibit 1.
`
`2.
`
`The Complaint in the Civil Action alleges that Applicant’s use of “colorable
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`imitations” of Waves’ asserted trademarks MAXX, MAXXAUDIO, MAXXBASS, and
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`MAXXVOLUME is likely to cause confusion. (Ex. 1, Complaint at ¶ 50.) The Complaint
`
`expressly identifies Applicant’s co-pending MAXX trademark application covering “mobile
`
`phones, smartphones, and accessories therefor, namely, power adapters” (Ser. No. 85/792,643).
`
`(Ex. 1, Complaint at ¶ 43.) The Complaint alleges trademark infringement and unfair
`
`competition under the Lanham Act, as well as related state law claims. Among other relief,
`
`Waves seeks an injunction against Applicant’s use of the MAXX trademark. (Ex. 1, Complaint
`
`at pp. 13-14.)
`
`3.
`
`Upon Applicant’s motion, and based upon the Civil Action, the Board suspended
`
`a co-pending opposition proceeding filed by Waves against Applicant’s application to register
`
`the MAXX trademark for use in connection with “mobile phones, smartphones, and accessories
`
`therefor, namely, power adapters” (Ser. No. 85/792,643). See Waves Audio Ltd. v. Motorola
`
`Trademark Holdings, LLC, T.T.A.B. Case No. 91/209,701 at Dkt. #8 (Order suspending
`
`proceedings dated May 14, 2013).
`
`4.
`
`The applied-for trademark at issue in this proceeding (Case No. 91/211,397) is
`
`MAXXCHARGE covering “mobile phones, smartphones and accessories therefor, namely,
`
`power adapters” (Ser. No. 85/792,653). These goods are identical to the goods at issue in
`
`Waves’ Civil Action, in which Waves seeks an injunction against Applicant’s use of the MAXX
`
`1 The Civil Action was subsequently reassigned to a new judge. Consequently, the new case
`number is 13-CV-1091 (WHO).
`
`2
`
`

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`trademark and “colorable imitations” of Waves’ asserted trademarks.2 As a result, the Civil
`
`Action may have a bearing on the above-captioned proceeding.
`
`In light of the foregoing, suspension is proper. See 37 C.F.R. § 2.117(a), T.B.M.P. §
`
`510.02(a). As set forth in the Board Manual, “[P]ursuant to 37 C.F.R. § 2.117(a), the Board may
`
`also, in its discretion, suspend a proceeding pending the final determination of another Board
`
`proceeding … or even another proceeding in which only one of the parties is involved.”
`
`T.B.M.P. § 510.02(a). “Ordinarily, the Board will suspend proceedings in the case before it if
`
`the final determination of the other proceeding may have a bearing on the issues before the
`
`Board.” Id. The other proceeding need not be dispositive, but only needs to have a bearing on
`
`the issues. Id. (citing New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 U.S.P.Q.2d 1550,
`
`1552 (T.T.A.B. 2011)).
`
`Although the plaintiffs in the Civil Action, Waves Audio Ltd. and Waves Inc., are not
`
`parties to this opposition, suspension is still proper. See Argo & Co., Inc. v. Carpetsheen Mfg.,
`
`Inc., 187 U.S.P.Q. 366 (T.T.A.B. 1975). Applicant is a defendant in each of the pending
`
`proceedings described above, including the Civil Action. The district court’s ruling with respect
`
`to the “MAXX” trademark may be binding on the Board. See New Orleans Louisiana Saints, 99
`
`U.S.P.Q.2d at 1552. As a result, the Civil Action may have a bearing on these proceedings. If
`
`the Civil Action plaintiffs’ claims are ultimately successful—which Applicant will vigorously
`
`contest—Applicant may be enjoined from using a “MAXX”-formative trademark in connection
`
`with the applied-for goods. If that occurs, Applicant would be unable to perfect use of the
`
`applied-for MAXXCHARGE mark and the application at issue in this proceeding would
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`ultimately go abandoned.
`
`2 These goods are also identical to the goods at issue in Waves’ now-suspended MAXX
`trademark opposition proceeding (Case No. 91/209,701).
`
`3
`
`

`
`If the district court issues an injunction in the Civil Action, there may be no need to
`
`proceed with this opposition. Conversely, if the district court dismisses Waves’ claims, this
`
`opposition can proceed. Consequently, Applicant respectfully requests the Board to suspend
`
`proceedings pending the outcome of the Civil Action. See General Motors Corp. v. Cadillac
`
`Club Fashions Inc., 22 U.S.P.Q.2d 1933, 1937 (T.T.A.B. 1992) (granting motion to suspend). In
`
`the event the Board denies Applicant’s Motion to Suspend, Applicant respectfully requests the
`
`Board to reset Applicant’s deadline to file an Answer or otherwise plead.
`
`Dated: August 2, 2013
`
`BY:
`ULMER & BERNE, LLP
`
`BY:
`
`/s/ Thomas M. Williams
`Thomas M. Williams
`500 W. Madison St., Suite 3600
`Chicago, IL 60661
`Telephone: (312) 658-6500
`Facsimile: (312) 658-6501
`twilliams@ulmer.com
`Attorney for Applicant
`Motorola Trademark Holdings, LLC
`
`4
`
`

`
`CERTIFICATE OF SERVICE
`
`On August 2, 2013, I served the foregoing APPLICANT’S MOTION TO SUSPEND
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`PROCEEDING PURSUANT TO CIVIL ACTION on the parties in said action by depositing
`
`a true copy thereof with the United States Postal Service as first class mail, postage prepaid, at
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`Chicago, Illinois, enclosed in a sealed envelope addressed to counsel of record for Opposer as
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`follows:
`
`DICKSTEIN SHAPIRO LLP
`Robert W. Dickerson
`Charles A. Kertell
`2 Park Plaza, Suite 900
`Irvine, CA 92614
`Tel: (949) 623-7882
`dickersonr@discksteinshapiro.com
`kertellc@dicksteinshapiro.com
`
`Dated: August 2, 2013
`
`By:
`
`/s/ Thomas M. Williams
`Thomas M. Williams
`
`5
`
`

`
`EXHIBIT 1
`
`EXHIBIT 1
`
`

`
`
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`wmaufisr«~.v;3%wtIa<aw:z¢«::M-r»:-::‘*\e<ra»xt2-:4:;v:~m~::»msx»;rm~sse~mm'aw»x;<%-3-xrxvmre;-mwxmvgtwwax-4<:«rs~m4wfi*m:Aaa-rI.A?-wme»-,rqa«'z:mvzmx1<=muwm=ew:um-Krzlre
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` ii
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`i I
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`
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`Case3:13—Cv—W91—EMC Documentl Fi|edO3/11% Page1of32
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`1
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`J. Scott Denko (Texas State Bar No. 00792457) (Pro Hac Vice Pending)
`Bradley D. Coburn (Texas State Bar No. 24036377) (Pro Hac Vice Pending)
`R. Floyd Walker (Texas State Bar No. 24044751) (Pro Hac Vice Pending)
`Sherri A. Wilson (Texas State Bar No. 24075291) (Pro Hac Vice Pending)
`DENKO COBURN LAUFF LLP
`
`1501 S. MoPac Expy., Suite A315
`Austin, TX 78746
`
`Telephone: (512) 906-2074
`Facsimile: (512) 906-2075
`Email: denko@dcllegal.com
`coburn@dcl1egal.com
`walker@dcllegal.com
`wilson@dcl1egal.com
`
`Perry R. Clark (California Bar No. 197101)
`LAW OFFICES OF PERRY R. CLARK
`
`RICHARD W WIEKING
`l
`.
`.
`T CO
`CLERK u s DlS'l'R|C
`CA
`NORTHERN DISTRICT op
`“RT
`SAN JOSE
`LIFORNI/1.
`
`.
`825 San Antonio Road .
`, Fé
`Palo Alto, CA 94303
`.1
`Telephone: (650) 248-5817
`Facsimile: (650) 618-8533
`Email: pe1;_ry@pe;ryclarklaw.com
`
`Counsel for PJainti£f;sg
`WAVES AUDIo”LTDffi,§CIl.JD
`WAVES INC.
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`
`
`-
`WAVES AUDIO LTD. AND WAVES INC.,) GMVV1: 3 —
`
`SAN JOSE DIVISION
`
`)
`
`_
`
`r:-
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`~
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`I
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`1 0 9 1
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`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`) )
`
`Plaintiffs
`
`vs.
`
`) )
`
`) )
`
`) DEMAND FOR JURY TRIAL
`MOTOROLA MOBILITY LLC AND
`MOTOROLA TRADEMARK HOLDINGS,)
`LLC,
`
`Defendants
`
`)
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
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`20
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`22
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`23
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`24
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`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page1 of 32
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`

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`an
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`1
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`2
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`Case3:13—cv—%91—EMC Documentl Fi|edO3/11/a Page2 of32
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`This is a lawsuit by Waves Audio Ltd. and Waves Inc. (collectively “Waves”) for relief
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`from trademark infringement, dilution and other unlawful acts of Motorola Mobility LLC and
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`3 Motorola Trademark Holdings, LLC (collectively “Motorola”). Motorola unlawfully, willfully
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`4
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`5
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`6
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`7
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`8
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`9
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`and without authorization has used and continues to use Waves’
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`registered trademark
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`“MAXX” on Motorola’s mobile phones. Motorola’s conduct has tarnished the mark MAXX
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`and its related trademark family and harmed the reputation of Waves.
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`PARTIES
`
`1.
`
`Waves Inc. is a corporation organized under the laws of Delaware. Its principal
`
`place of business is 2800 Merchants Drive, Knoxville, TN 37912.
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`10
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`2.
`
`Waves Audio Ltd.
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`is a company organized under the laws of Israel.
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`Its
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`11
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`principal place of business is Azrieli Center 3, The Triangle Tower, 32nd Floor, Tel-Aviv
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`12
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`67023 Israel.
`
`13
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`14
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`3.
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`4.
`
`Waves Inc. is a wholly owned subsidiary of Waves Audio Ltd.
`
`Upon information and belief, Motorola Mobility LLC is a limited liability
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`15
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`corporation organized under the laws of Delaware with its principal place of business at 600
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`16 North U.S. Highway 45, Libertyville, Illinois 60048.
`
`17
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`5.
`
`Upon Information and belief, Motorola Trademark Holdings, LLC is a limited
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`18
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`liability corporation organized under the laws of Delaware with its principal place of business
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`19
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`at 600 North U.S. Highway 45, Libertyville, Illinois 60048.
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`20
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`21
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`JURISDICTION AND VENUE
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`6.
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`This court possess subject matter jurisdiction under 15 U.S.C. § 1121 and 28
`
`22 U.S.C. §§ 1331, 1332, l338(a) and (b), and 1367.
`
`23
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`7.
`
`Personal jurisdiction is proper in this district because Motorola has solicited and
`
`24
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`conducted business within the State of California via its marketing and sales of infringing
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`
`
`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page2 of 32
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`

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`-1
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`Case3:13—cv—%91—EMC Documentl Fi|edO3/11% Page3 of32
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`devices and acts of dilution. Motorola Mobility LLC also maintains an office at 1000
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`Enterprise Way, Sunnyvale, CA 94089. Motorola Mobility LLC regularly conducts business
`
`within the State of California. Motorola’s products have been inserted into the stream of
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`commerce and directed towards California, amongst other places. Defendants’ wrongful
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`actions have damaged Waves within the State of California.
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`8.
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`Venue is proper in this district under 28 U.S.C. § l39l(b)(2), (c)(2), and(d)
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`because a substantial part of the acts giving rise to this cause of action occurred within this
`
`judicial district, and Motorola’s contacts are sufficient to subject it to personal jurisdiction in
`
`this district.
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`INTRADISTRICT ASSIGNMENT
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`9.
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`Per Civil L.R. 3—2(c), this intellectual property action shall be assigned on a
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`11
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`12
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`district-wide basis.
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`BACKGROUND
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`10. Waves is the world’s leading developer and supplier of software-based audio
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`signal processing tools and hardware-based products. Waves itself has become synonymous
`
`with top-of-the-line audio processing, and the company’s products are used where superior
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`sound quality is a prerequisite, such as hit records, major motion pictures, and top-selling
`
`games worldwide.
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`11.
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`In consumer electronics applications, Waves provides various goods and
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`services that compensate for the acoustic quality limitations of small, power efficient speakers
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`systems found in today’s most popular consumer products such as LCD TVs, notebook PCs,
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`portable speaker systems, mobile phones, and smart phones.
`
`12.
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`In addition to its own goods and services, Waves’ technologies provide custom
`
`semiconductor and digital signal processing solutions to some of the most important audio and
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`
`
`'$1.£\\f&J«:_»iv‘y»'«t-»£"..b~e~s4‘1‘m,.;.a
`
`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page3 of 32
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`

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`“V
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`Case3:13—cv—Ow1—EMC Documentl Fi|edO3/11/Q Page4 of32
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`consumer electronics firms in the world including Altec Lansing, Audio Products International,
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`Clarion, JVC, Microsoft, Samsung, Sanyo, and Sony.
`
`13. Waves owns the following trademarks registered in International Class 9 on the
`
`Principal Register of the Federal Trademark Register of the United States: MAXX,
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`MAXXBASS, MAXXAUDIO, MAXXVOLUME (“Waves’- Registered Marks”).
`
`14. Waves filed U.S. Trademark Application Serial No. 85/656,250 seeking to
`
`register its MAXXVOICE mark (“Waves’ Application Mark”) in International Class 9 for
`
`“software and hardware for voice enhancement in mobile phones, computers, smart phones and
`
`VoIP.”
`
`15.
`
`In addition to the goodwill resulting from Waves’ use of its registered marks,
`
`Waves owns common law trademark rights and associated good will
`
`in its MAXX,
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`MAXXBASS, MAXXAUDIO, MAXXVOLUME, and MAXXVOICE marks based on
`
`widespread use of those marks on consumer electronics and other sound-generating products
`
`(“Waves’ Common-Law Marks”).
`
`.
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`16.
`
`Waves’ Registered Marks, Application Mark, and Common-Law Marks
`
`(collectively, “Waves’ Marks” or “the Waves Marks”) are composed and used in such a way
`
`that the public associates not only those marks, but the common characteristic “MAXX” of the
`
`family, with Waves. Because Waves’ Marks form a group of marks having a recognizable
`
`common characteristic MAXX, they constitute a protectable family of marks (“Waves’ MAXX
`
`Family of Marks”).
`
`17.
`
`The “MAXX” trademark was registered on Mar. 21, 2006 under Reg. No.
`
`3,070,047 and was first used in commerce at least as early as November 12, 1997. This mark
`
`is incontestable, which, pursuant to Lanham Act, 15 U.S.C. § 1115, conclusively establishes
`
`both Waves’ exclusive right to use this mark in commerce and its validity. A copy of this
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page4 of 32
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`

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`Case3:13—cv—%91—EMC Documentl Fi|edO3/111% Page5 of32
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`registration is attached hereto as Exhibit A.
`
`18.
`
`The “MAXX” trademark has been registered for use with, among other things,
`
`software for control, conditioning and modification of sound for use in audio applications and
`
`technologies to improve sound quality and audio system design and computer and electronics
`
`hardware.
`
`19.
`
`The “MAXXAUDIO” trademark was registered on April 5, 2011 under Reg.
`
`No. 3,941,010 and was first used in commerce at least as early as August 31, 2007. This mark
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`is incontestable, which, pursuant to Lanham Act, 15 U.S.C. § 1115, conclusively establishes
`
`both Waves’ exclusive right to use this mark in commerce and its validity. A copy of this
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`registration is attached hereto as Exhibit B.
`
`20.
`
`The “MAXXAUDIO” mark has been registered for use with, amongst other
`
`things, portable audio appliances including mp3 players.
`
`21.
`
`The “MAXXBASS” trademark was registered on June 1, 2004 under Reg. No.
`
`2,847,596 and was first used in commerce at least as early as April 17, 1998. The mark is
`
`incontestable, which, pursuant to Lanham Act, 15 U.S.C. § 1115, conclusively establishes both
`
`Waves’ exclusive right to use this mark in commerce and its validity. A copy of this
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`registration is attached hereto as Exhibit C.
`
`22.
`The “MAXXBASS” mark has been registered for use with, amongst other
`things, portable audio appliances including mp3 players.
`
`23.
`
`The “MAXXVOLUME” trademark was registered on Apr. 28, 2009 under Reg.
`
`No. 3,612,855 and was first used in commerce at least as early as April 30, 2007 . This mark is
`
`incontestable, which, pursuant to Lanham Act, 15 U.S.C. § 1115, conclusively establishes both
`
`Waves’ exclusive right to use this mark in commerce and its validity. A copy of this
`
`registration is attached hereto as Exhibit D. I
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page5 of 32
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`

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` Case3:13—cv—%91—EMC Documentl Fi|edO3/11/é Page6 of32
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`24.
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`The “MAXXVOLUME” mark has been registered for use with, amongst other
`
`things, portable audio appliances including mp3 players.
`
`25.
`
`Waves’ Marks and MAXX Family of Marks are associated with the high quality
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`audio functionality provided by Waves.
`
`26. Waves has won many awards for its products, including, but not limited to, a
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`prestigious 2011 Technical GRAMMY® Award for
`
`its
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`innovative professional music
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`production software.
`
`27.
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`Millions of laptop computers and other sound producing consumer electronic
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`devices have been distributed across the United States (including in California) bearing one or
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`more of Waves’ Marks.
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`28. Waves’ mark MAXX and Waves’ MAXX Family of Marks are famous in
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`California.
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`29.
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`Motorola markets and has marketed mobile phone products under the names
`
`“DROID RAZR MAXX” and “DROID RAZR MAXX HD.”
`
`30.
`
`The DROID RAZR MAXX and DROID RAZR MAXX HD have the capability
`
`and are regularly used by consumers to produce sound from mp3 files.
`
`31.
`
`The capability to play mp3 files as well as other audio formats is advertised by
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`Motorola as a feature of the DROID RAZR MAXX and DROID RAZR MAXX HD.
`
`32.
`
`The DROID RAZR MAXX and DROID RAZR MAXX HD have become
`
`associated with poor audio quality.
`
`33.
`
`The poor quality of the sound reproduction in the DROID RAZR MAXX and
`
`DROID RAZR MAXX HD mobile phones has tarnished and will continue to tarnish the value
`
`of the Waves’ Marks and Waves’ reputation with respect to high quality audio reproduction.
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page6 of 32
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`

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`Case3:13—cv—%91—EMC Documentl Fi|edO3/11/ra Page? of32
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`34. Motorola’s use of the terms “DROID RAZR” and “DROID RAZR MAXX” is
`
`likely to give the false impression that a distinguishing feature between these products is
`
`endorsement by Waves. The relevant public is likely to believe that the “DROID RAZR
`
`MAXX” is endorsed by Waves while the “DROID RAZR” has no such endorsement.
`
`35. Waves has no involvement with the audio or sound problems of the DROID
`
`RAZR MAXX or DROID RAZR MAXX HD
`
`36.
`
`Waves’ MAXXAUDIO product is used by cellular telephone manufacturers
`
`other than Motorola to improve the audio quality of their phones.
`
`37.
`
`Motorola’s use of the “MAXX” mark in connection with its products is likely to
`
`impede Waves’ ability to market its MAXX products to other cellular telephone manufactures.
`
`38.
`
`Motorola’s use of Waves’ Marks in connection with inferior products will
`
`discourage other mobile telephone manufacturers and sellers from adopting and advertising the
`
`use of Waves’ products as a feature of their mobile telephones and electronic products.
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`MOTOROLA’S WILLFUL CONDUCT
`
`39. Waves
`
`informed Motorola of its trademark infringement of the Waves’
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`16
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`17
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`18
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`22
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`23
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`24
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`trademark MAXX on March 29, 2012.
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`40.
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`Motorola became aware of the likelihood of confusion caused by its use of the
`
`“MAXX” mark in relation to its products no later than March 29, 2012.
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`41.
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`Despite being made aware of the likelihood of confusion, in a letter dated April
`
`20, 2012 and signed by David C. Carroll, Motorola stated that it would continue to use the
`
`“MAXX” mark in conjunction with its mobile phones and alleged that its use of the term
`
`“MAXX” was merely descriptive.
`
`42.
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`After being informed of the likelihood of confusion and despite contending to
`
`Waves that its use of the mark MAXX was merely descriptive, Motorola went on to file an
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`
`
`
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`Case3:13—cv—%91—EMC Documentl Fi|edO3/11/gé Page8 of32
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`application for registration of the mark “MAXX” on the Principal Trademark Register of the
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`United States. That application was signed by David C. Carroll and filed on December 3,
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`2012.
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`43.
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`Motorola’s trademark application for the mark “MAXX” was assigned serial
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`number 85/792,643. A copy of this application is attached hereto as Exhibit E.
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`44. Motorola filed its trademark application with full knowledge and in flagrant
`
`disregard of Waves’ trademark rights. Despite that knowledge, Motorola declared to the U.S.
`
`Patent and Trademark Office that, to the best of itsknowledge and belief, “no other person,
`
`firm, corporation, or association has the right to use the mark in commerce, either in the
`
`identical form thereof or in such near resemblance thereto as to be likely, when used on or in
`
`connection with the goods/services of such other person,
`
`to cause confusion, or to cause
`
`mistake, or to deceive.” And despite claiming to Waves that its use of the term MAXX is
`
`descriptive, the application filing demonstrates Motorola’s belief that the mark is registrable to
`
`Motorola on the principal register in International Class 9, the same class to which the Waves’
`
`Marks are registered.
`
`45.
`
`On January 7, 2013, Waves again notified Motorola by letter of its unlawful
`
`conduct
`
`regarding Waves’
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`trademark rights,
`
`including but not
`
`limited to,
`
`trademark
`
`infringement.
`
`46.
`
`On January 14, 2013, Motorola affirmed by response letter its intention to
`
`continue to use the “MAXX” mark without regard to Waves’ trademark rights while also
`
`omitting to mention that following Waves’ March 2012 notification Motorola applied to
`
`register the mark “MAXX” for its own purposes.
`
`COUNT 1 — FEDERAL TRADEMARK INFRINGEMENT
`
`47.
`
`Plaintiffs
`
`incorporate by reference herein the
`
`allegations
`
`contained in
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`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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`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page8 of 32
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`

`
`
`
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`Case3:13—cv—%91—EMC Documentl Fi|edO3/11% Page9 of32
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`paragraphs 1 through 46 of this Complaint.
`
`48.
`
`Defendant's aforementioned acts constitute trademark infringement in violation
`
`ofsection 32(1) ofthe Lanham Act, 15 U.S.C. § 1114(1).
`
`49.
`
`Waves’ federal registrations on the Principal Register for the marks MAXX,
`
`MAXXAUDIO, MAXXBASS, and MAXXVOLUME are incontestable pursuant
`
`to the
`
`Lanham Act, 15 U.S.C. § 1115. Incontestability is conclusive evidence of their validity,
`
`Waves’ ownership of the marks and of Waves’ exclusive right to use the marks in commerce in
`
`connection with the goods and services specified in the certificates of registration under 15
`
`U.S.C. § 1115(b).
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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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`50.
`
`Defendants are intentionally and wrongfully using in commerce unauthorized
`
`reproductions, counterfeits, copies, and colorable imitations of Waves’ Registered Marks in
`
`connection with the sale, offering for sale, distribution, and advertising of Defendants’ mobile
`
`phone products, with full knowledge that such marks and designations are counterfeit marks.
`
`Such uses are likely to cause confusion, or to cause mistake, or to deceive, including, without
`
`limitation, by being likely to cause confusion as to sponsorship or authorization by Waves, or
`
`alternatively, by destroying the origin-identifying function of MAXX and other of the Waves
`
`Marks. Defendants’ actions constitute trademark infringement in violation of section 32( 1) of
`
`the Lanham Act, 15 U.S.C. § 1114(1).
`
`51.
`
`Defendants became aware of Waves’ ownership of the Waves Marks including
`
`MAXX no later than March 29, 2012.
`
`52.
`
`Defendants have made extensive use of the mark MAXX in the promotion of
`
`their products.
`
`53.
`
`The foregoing acts of infringement have been and‘continue to be deliberate,
`
`willful, and wanton, making this an exceptional case within the meaning of 15 U.S.C. § 1117.
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page9 of 32
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`

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`
`
`
`
`
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`Case3:13—cv—OQf31—EMC Documentl Fi|edO3/11/® Page10of32
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`54.
`
`Defendants’ sales and marketing of the DROID RAZR MAXX and DROID
`
`RAZR MAXX HD will likely continue unless enjoined by this Court.
`
`55.
`
`As a proximate result of Motorola’s actions, Waves has suffered and will
`
`continue to suffer substantial damage to its business, goodwill, reputation, profits, and the
`
`strength of its trademarks. The injury to Waves is ongoing and irreparable.
`
`56.
`
`An award of monetary damages alone cannot fully compensate Waves for its
`
`injuries, and Waves lacks an adequate remedy at law.
`
`57. Waves is entitled to a permanent injunction against Defendants, as well as all
`
`other remedies available under the Lanham Act,
`
`including, but not
`
`limited to, damages
`
`sustained by the Plaintiffs, treble damages, disgorgement of Defendants’ profits, and costs and
`
`attorneys’ fees.
`
`
`
`COUNT 2 — FEDERAL UNFAIR COMPETITION FALSE DESIGNATION OF ORIGIN
`PASSING OFF AND FALSE ADVERTISING
`
`58.
`
`Plaintiffs
`
`incorporate by reference herein the
`
`allegations contained in
`
`10
`
`ll
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`12
`
`13
`
`14
`
`15
`
`paragraphs 1 through 57 of this Complaint.
`
`16
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`17
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`18
`
`19
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`59.
`
`The Waves’ Marks are used by Waves in connection with providing high
`
`quality goods and services and are distinctive marks that have become associated with Waves
`
`and thus exclusively identify Wave’s business, products, and services.
`
`60.
`
`Defendants are intentionally and wrongfully using unauthorized reproductions,
`
`20
`
`counterfeits, copies, and colorable imitations of Waves’ Marks in commerce on and in
`
`21
`
`connection with Defendants’ mobile phone products, resulting in false designations of origin,
`
`22
`
`false and misleading descriptions of fact, and false and misleading representations of fact that
`
`23
`
`are likely to cause confusion, to cause mistake, and to deceive as to the affiliation, connection,
`
`24
`
`or association of Defendants with Waves and as to the origin, sponsorship, or approval of
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page10 of 32
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`

`
`Case3:13—cv—Ow1—EMC Documentl Fi|edO3/11/a Pagell of 32
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`Defendants’ mobile phone products and commercial activities by Waves,
`
`and that
`
`misrepresents the nature, characteristics, and qualities Defendants’ mobile phone products and
`
`commercial activities, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`For example, consumers are deceptively led to believe that the DROID RAZR MAXX and
`
`DROID RAZR MAXX HD are sponsored by or otherwise approved by Waves, or
`
`alternatively,
`
`that
`
`the Waves Marks are associated with poor audio functionality,
`
`thus
`
`destroying the goodwill and value of Waves and the Waves Marks.
`
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`
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`
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`
`61.
`
`The foregoing acts and conduct by Defendants constitute false designation of
`
`origin and false advertising in connection with products and services distributed in interstate
`
`commerce, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1 125(a).
`
`62.
`
`Defendants’ acts, as set forth above, have caused irreparable injury to Waves’
`
`10
`
`11
`
`goodwill and reputation. The injury to Waves is ongoing and irreparable.
`
`63.
`
`Defendants’ sales and marketing of the DROID RAZR MAXX and DROID
`
`RAZR MAXX HD will likely continue unless enjoined by this Court.
`
`64. Waves is entitled to a permanent injunction against Defendants, as well as all
`
`other remedies available under the Lanham Act, including, but not limited to, compensatory
`
`damages, treble damages, disgorgement of profits, and costs and attorney's fees.
`
`65.
`
`An award of monetary damages alone cannot fully compensate Waves for its
`
`injuries and Waves lacks an adequate remedy at law.
`
`COUNT 3 — INJUNCTION AGAINST USE OF FAMOUS MARK UNDER CAL.
`BUS. & PROFESSIONS CODE 14427
`
`22
`
`66.
`
`Plaintiffs
`
`incorporate by reference herein the allegations contained in
`
`23
`
`paragraphs 1 through 65 of this Complaint.
`
`24
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`
`
`
`
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`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page11 of 32
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`

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`Case3:13—cv—Ow1—EMC Documentl Fi|edO3/11/g Page12 of32
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`67.
`
`The Waves Marks are famous and protectable marks in California and, on
`
`information and belief, Plaintiffs’ protected interest in those marks arose before Defendants’
`
`use of those marks.
`
`68. Waves has no control over the qualities, or lack thereof, of Defendants’ DROID
`
`RAZR MAXX and DROID RAZR MAXX HD products, its advertising and other promotional
`
`materials related thereto, or is unauthorized use of the Waves Marks. As a result of such use by
`
`Motorola, the business reputation of Waves as well as its MAXX Family of Marks is being
`
`tarnished, and such tarnishing will continue unless stopped by this Court.
`
`69.
`
`Defendants’ sales and marketing of the DROID RAZR MAXX and DROID
`
`RAZR MAXX HD and its use of and dissemination of materials bearing the Waves’ Marks is
`
`and will continue to result in the dilution of the distinctive nature of the Waves’ Marks through
`
`blurring.
`
`70.
`
`Defendants’ wrongful
`
`conduct
`
`constitutes
`
`an
`
`extreme
`
`threat
`
`to
`
`the
`
`distinctiveness of the Waves Marks that Waves has expended great efforts to develop and
`
`maintain through its strict control over the usage of the Waves Marks.
`
`71.
`
`The Waves Marks are distinctive and of high value and they and the business
`
`reputation of Waves with which they are associated has suffered and will continue to suffer
`
`irreparable harm by such blurring and tarnishing if Defendants’ wrongful conduct is allowed to
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
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`continue.
`
`20
`
`21
`
`22
`
`23
`
`24
`
`72.
`
`Defendants’ acts, as set forth above, have caused irreparable injury to the
`
`distinctive quality of Waves’ Marks and the MAXX Family of Marks as well as Waves’
`
`business reputation. This injury is ongoing and irreparable.
`
`73.
`
`Defendants’ sales and marketing of the DROID RAZR MAXX and DROID
`
`RAZR MAXX HD will likely continue unless enjoined by this Court.
`
`PLAINTIFFS’ ORIGINAL COMPLAINT
`
`1 1
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`Case3:13-cv-01091-EMC Document1 Filed03/11/13 Page12 of 32
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`Case3:13—cv—Ow1—EMC Documentl Fi|edO3/11/3 Page13 of32
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`
`74. Waves is entitled to a permanent injunction against Defendants consistent with
`
`2
`
`California Business and Professions Code Section 14247.
`
`COUNT 4 —- UNFAIR COMPETITION UNDER CAL. BUS. & PROFESSIONS
`
`CODE § 17200 ET SEQ.
`
`75.
`
`Plaintiffs
`
`incorporate by reference herein the allegations contained in
`
`paragraphs 1 through ‘74 of this Complaint.
`
`76.
`
`Defendants have committed trademark infringement and other unlawful acts as
`
`set forth above in violation of plaintiffs’ proprietary rights in the