Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA660491
`ESTTA Tracking number:
`03/11/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91211624
`Plaintiff
`Children's Miracle Network
`J ANDREW SJOBLOM
`HOLLAND & HART LLP
`222 S MAIN ST STE 2200
`SALT LAKE CITY, UT 84101
`UNITED STATES
`docket@hollandhart.com, rtjackson@hollandhart.com, mhorlach-
`er@hollandhart.com, phowell@hollandhart.com, jasjoblom@hollandhart.com
`Motion to Suspend for Civil Action
`J. Andrew Sjoblom
`jasjoblom@hollandhart.com, phowell@hollandhart.com
`/s/ J. Andrew Sjoblom
`03/11/2015
`2015-03-11 Opposer's Motion to Suspend for Civil Action.pdf(1294637 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`CHILDREN’S MIRACLE NETWORK,
`
`OPPOSER’S MOTION TO SUSPEND
`FOR CIVIL ACTION
`
`
`Opposition No. 91211624
`Serial No. 85/590,696
`
`
`
`
`
`
`
`
`
`
`
`Opposer,
`
`Applicant.
`
`
`
`
`
`v.
`
`
`
`
`
`
`MIRACLE BABIES,
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 2.117(a), Children’s Miracle Network (“CMN”), by and through
`
`its attorneys Holland & Hart LLP, hereby move the Trademark Trial and Appeal Board
`
`(“TTAB”) to suspend proceedings because the parties to this case are engaged in a civil action
`
`pending in federal court that will have a bearing on this case.
`
`PROCEDURAL HISTORY
`
`1.
`
`Applicant’s “Miracle Babies” mark was published for opposition on March 19,
`
`2013. CMN timely filed its Notice of Opposition on July 17, 2013, commencing these
`
`proceedings before the TTAB.
`
`2.
`
`CMN’s Notice of Opposition asserts, among other things, that Applicant’s
`
`“Miracle Babies” mark is confusingly similar to numerous registered and unregistered marks
`
`owned by CMN, including but not limited to:
`
`a.
`
` United States Trademark Registration No. 1,553,246 for CHILDREN’S
`
`MIRACLE NETWORK for charitable fundraising services;
`
`b.
`
` United States Trademark Registration No. 2,264,436 for CHILDREN’S
`
`MIRACLE NETWORK for radio and television programming and production of radio and
`
`television programs in the field of children and children’s issues;
`
`

`
`c.
`
` United States Trademark Registration No. 1,916,839 for CHILDREN’S
`
`MIRACLE NETWORK for radio and television broadcasting in the field of children and
`
`children’s issues;
`
`d.
`
` United States Trademark Registration No. 2,209,255 for CHILDREN’S
`
`MIRACLE NETWORK for providing health care information;
`
`e.
`
` United States Trademark Registration No. 1,356,563 for MIRACLES for
`
`a newsletter pertaining to charitable services;
`
`f.
`
` United States Trademark Registration No. 1,343,289 for CHILDREN’S
`
`MIRACLE NETWORK TELETHON for charitable fundraising services;
`
`g.
`
` United States Trademark Registration No. 1,698,499 for BOWLING FOR
`
`MIRACLES for charitable fundraising services;
`
`h.
`
` United States Trademark Registration No. 2,954,518 for CHILDREN’S
`
`MIRACLE NETWORK and design for charitable fundraising and eleemosynary services in the
`
`field of monetary donations;
`
`i.
`
` United States Trademark Registration No. 2,954,517 for CHILDREN’S
`
`MIRACLE NETWORK and design for radio and television broadcasting in the field of children
`
`and children’s issues;
`
`j.
`
`United States Trademark Registration No. 2,954,516 for CHILDREN’S
`
`MIRACLE NETWORK and design for radio and television programming and production of
`
`radio and television programs in the field of children and children’s issues;
`
`k.
`
`United States Trademark Registration No. 2,951,236 for CHILDREN’S
`
`MIRACLE NETWORK and design providing health care information;
`
`l.
`
`United States Trademark Registration No. 3,917,739 for CHILDREN’S
`
`MIRACLE NETWORK HOSPITALS for charitable fundraising services;
`
` 2
`
`

`
`m.
`
`United States Trademark Registration No. 1,851,682 for MIRACLE
`
`HOME for real estate brokerage services;
`
`n.
`
`United States Trademark Registration No. 3,209,006 for KIDS ALL-
`
`STAR MIRACLE HOME for charitable fundraising and eleemosynary services in the field of
`
`monetary donations;
`
`o.
`
`United States Trademark Registration No. 3,209,007 for KIDS ALL-
`
`STAR MIRACLE HOME and design for charitable fundraising and eleemosynary services in the
`
`field of monetary donations;
`
`p.
`
`United States Trademark Registration No. 3,209,009 for HOME OF
`
`MIRACLES and design for charitable fundraising and eleemosynary services in the field of
`
`monetary donations; and
`
`q.
`
`United States Trademark Registration No. 3,387,880 for MIRACLE
`
`SOUP for providing an interactive website for enabling communications and collaboration
`
`among a charitable foundation and its associates, sponsors and member hospitals in the field of
`
`charitable fundraising and eleemosynary services.
`
`(Notice of Opposition, ¶ 7(a) – (q).)
`
`3.
`
`In its Notice of Opposition, CMN also claims that Applicant’s “Miracle Babies”
`
`mark “is highly likely to cause consumer mistake, confusion or deception as to the affiliation,
`
`connection, sponsorship and/or relationship of Applicant with [CMN], or as to the origin,
`
`sponsorship, or approval of Applicant’s services by [CMN].” (Notice of Opposition, ¶ 15.)
`
`4.
`
`On March 4, 2015, CMN filed a Complaint in the United States District Court for
`
`the Southern District of California against Applicant (the “Federal Court Complaint”), entitled
`
`“Children’s Miracle Network v. Miracle Babies, United States District Court for the Southern
`
` 3
`
`

`
`District of California Case No. 3:15-cv-499-AJB-DHB. A copy of that Complaint is attached
`
`hereto as Exhibit A.
`
`5.
`
`In the Federal Court Complaint, CMN alleges that Applicant’s “Miracle Babies”
`
`mark infringes the same registered marks identified in CMN’s Notice of Opposition in this case.
`
`(Compare CMN’s Notice of Opposition, ¶ 7(a) – (q) and the Federal Court Complaint, ¶ 14(a) –
`
`(q).)
`
`6.
`
`In the Federal Court Complaint, CMN alleges that “Miracle Babies” is
`
`“confusingly similar to CMN’s various “Miracle”-based marks,” (Federal Court Complaint,
`
`¶ 20), and that Applicant’s use of “Miracle Babies is “likely to cause consumer confusion and a
`
`false association between CMN’s services and the services offered by Defendant, falsely leading
`
`consumers to believe that the services emanate from the same source or that CMN and Miracle
`
`Babies are affiliated.” (Id., ¶ 22.)
`
`7.
`
`In the Federal Court Complaint, CMN seeks permanent injunctive relief
`
`preventing Applicant from infringing its rights to its various “Miracle”-based marks. (Id., Prayer
`
`for Relief at ¶¶ (A) through (E).
`
`ARGUMENT
`
`37 C.F.R. § 2.117 provides that “[w]henever it shall come to the attention of the
`
`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil
`
`action . . . which may have a bearing on the case, proceedings before the Board may be
`
`suspended until termination of the civil action . . . .” 37 C.F.R. § 2.117(a).
`
`CMN and Applicant, the parties to this case, are now parties to a federal civil action
`
`concerning the same trademarks – CMN’s various “Miracle”-based marks listed above and
`
`Applicant’s “Miracle Babies” mark. (Compare CMN’s Notice of Opposition, ¶ 7(a) – (q) and
`
`the Federal Court Complaint, ¶ 14(a) – (q).) In both actions, CMN alleges that Applicant’s
`
` 4
`
`

`
`“Miracle Babies” mark is confusingly similar to its “Miracle”-based marks and is likely to cause
`
`consumer confusion. (Compare CMN’s Notice of Opposition, ¶ 15 and Federal Court
`
`Complaint, ¶¶ 20 and 22.)
`
`A decision by the district court in the federal court action between these same parties,
`
`involving the same trademarks and the same claims, will be dispositive of the issues before the
`
`TTAB in this case. See General Motors Corp. v. Cadillac Club Fashions, Inc., 22 U.S.P.Q. 2d
`
`1933, 1936-37 (TTAB 1992). “A decision by the district court may be binding on the Board
`
`whereas a determination by the Board as to a defendant's right to obtain or retain a registration
`
`would not be binding or res judicata in respect to the proceeding pending before the court.” New
`
`Orleans Louisiana Saints LLC v. Who Dat?, Inc., 99 U.S.P.Q. 2d 1550, 1552 (TTAB 2011)
`
`(citations omitted). However, “the civil action does not have to be dispositive of the Board
`
`proceeding to warrant suspension, it need only have a bearing on the issues before the Board.”
`
`Id. (citations omitted).
`
`Because CMN has alleged that “Miracle Babies” infringes its “Miracle”-based marks and
`
`seeks to enjoin Applicant’s use of the “Miracle Babies” in the federal civil action, there is no
`
`question that the federal civil action between these parties will have a bearing on the issues
`
`before the Board. As a result, this proceeding should be suspended pending the outcome of the
`
`federal civil case.
`
`If the Board should deny the motion to suspend the above-captioned proceedings,
`
`Opposer hereby moves, pursuant to TBMP § 502.04, to extend the deadline for all discovery,
`
`testimony, and trial dates by ninety (90) days, based on the date the TTAB makes its
`
`determination on this motion.
`
` 5
`
`

`
`CONCLUSION
`
`Because the federal court proceeding commenced by CMN’s filing of the Federal Court
`
`Complaint will likely be dispositive of the issues before the TTAB in this case, or at a minimum
`
`will have a bearing on them, CMN respectfully requests that this case be suspended pending the
`
`outcome of the pending federal court action. Alternatively, CMN respectfully requests that the
`
`TTAB extend by ninety (90) days the deadline for all discovery, testimony, and trial dates, based
`
`on the date the TTAB makes its determination on this Motion.
`
`DATED this 11th day of March, 2015.
`
`
`
`
`
`
`
`
`
`
`
`/s/ J. Andrew Sjoblom
`J. Andrew Sjoblom
`HOLLAND & HART LLP
`222 South Main Street, Suite 2200
`Salt Lake City, UT 84101
`Telephone: 801-799-5800
`Facsimile: 801-799-5700
`
`Attorneys For Opposer
`Children’s Miracle Network
`
`
`
` 6
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 11th day of March, 2015, I caused a true and correct copy of
`
`the foregoing to be served in the following manner upon the addressee(s) listed below:
`
`U.S. Mail, postage prepaid
`Hand Delivery
`Facsimile
`Overnight courier
`E-mail and/or CM/ECF
`
`
`
`
`
`
`
`
`
`Julianne Henley
`Perkins Coie LLP
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`JHenley@perkinscoie.com
`D. +1.206.359.8385
`F. +1.206.359.9385
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Tish Howell
`
`
`
`
`
`
`
`
`
`
`7628098_1
`
` 7
`
`

`
`c.
`
` United States Trademark Registration No. 1,916,839 for CHILDREN’S
`
`MIRACLE NETWORK for radio and television broadcasting in the field of children and
`
`children’s issues;
`
`d.
`
` United States Trademark Registration No. 2,209,255 for CHILDREN’S
`
`MIRACLE NETWORK for providing health care information;
`
`e.
`
` United States Trademark Registration No. 1,356,563 for MIRACLES for
`
`a newsletter pertaining to charitable services;
`
`f.
`
` United States Trademark Registration No. 1,343,289 for CHILDREN’S
`
`MIRACLE NETWORK TELETHON for charitable fundraising services;
`
`g.
`
` United States Trademark Registration No. 1,698,499 for BOWLING FOR
`
`MIRACLES for charitable fundraising services;
`
`h.
`
` United States Trademark Registration No. 2,954,518 for CHILDREN’S
`
`MIRACLE NETWORK and design for charitable fundraising and eleemosynary services in the
`
`field of monetary donations;
`
`i.
`
` United States Trademark Registration No. 2,954,517 for CHILDREN’S
`
`MIRACLE NETWORK and design for radio and television broadcasting in the field of children
`
`and children’s issues;
`
`j.
`
`United States Trademark Registration No. 2,954,516 for CHILDREN’S
`
`MIRACLE NETWORK and design for radio and television programming and production of
`
`radio and television programs in the field of children and children’s issues;
`
`k.
`
`United States Trademark Registration No. 2,951,236 for CHILDREN’S
`
`MIRACLE NETWORK and design providing health care information;
`
`l.
`
`United States Trademark Registration No. 3,917,739 for CHILDREN’S
`
`MIRACLE NETWORK HOSPITALS for charitable fundraising services;
`
` 2
`
`

`
`m.
`
`United States Trademark Registration No. 1,851,682 for MIRACLE
`
`HOME for real estate brokerage services;
`
`n.
`
`United States Trademark Registration No. 3,209,006 for KIDS ALL-
`
`STAR MIRACLE HOME for charitable fundraising and eleemosynary services in the field of
`
`monetary donations;
`
`o.
`
`United States Trademark Registration No. 3,209,007 for KIDS ALL-
`
`STAR MIRACLE HOME and design for charitable fundraising and eleemosynary services in the
`
`field of monetary donations;
`
`p.
`
`United States Trademark Registration No. 3,209,009 for HOME OF
`
`MIRACLES and design for charitable fundraising and eleemosynary services in the field of
`
`monetary donations; and
`
`q.
`
`United States Trademark Registration No. 3,387,880 for MIRACLE
`
`SOUP for providing an interactive website for enabling communications and collaboration
`
`among a charitable foundation and its associates, sponsors and member hospitals in the field of
`
`charitable fundraising and eleemosynary services.
`
`(Notice of Opposition, ¶ 7(a) – (q).)
`
`3.
`
`In its Notice of Opposition, CMN also claims that Applicant’s “Miracle Babies”
`
`mark “is highly likely to cause consumer mistake, confusion or deception as to the affiliation,
`
`connection, sponsorship and/or relationship of Applicant with [CMN], or as to the origin,
`
`sponsorship, or approval of Applicant’s services by [CMN].” (Notice of Opposition, ¶ 15.)
`
`4.
`
`On March 4, 2015, CMN filed a Complaint in the United States District Court for
`
`the Southern District of California against Applicant (the “Federal Court Complaint”), entitled
`
`“Children’s Miracle Network v. Miracle Babies, United States District Court for the Southern
`
` 3
`
`

`
`District of California Case No. 3:15-cv-499-AJB-DHB. A copy of that Complaint is attached
`
`hereto as Exhibit A.
`
`5.
`
`In the Federal Court Complaint, CMN alleges that Applicant’s “Miracle Babies”
`
`mark infringes the same registered marks identified in CMN’s Notice of Opposition in this case.
`
`(Compare CMN’s Notice of Opposition, ¶ 7(a) – (q) and the Federal Court Complaint, ¶ 14(a) –
`
`(q).)
`
`6.
`
`In the Federal Court Complaint, CMN alleges that “Miracle Babies” is
`
`“confusingly similar to CMN’s various “Miracle”-based marks,” (Federal Court Complaint,
`
`¶ 20), and that Applicant’s use of “Miracle Babies is “likely to cause consumer confusion and a
`
`false association between CMN’s services and the services offered by Defendant, falsely leading
`
`consumers to believe that the services emanate from the same source or that CMN and Miracle
`
`Babies are affiliated.” (Id., ¶ 22.)
`
`7.
`
`In the Federal Court Complaint, CMN seeks permanent injunctive relief
`
`preventing Applicant from infringing its rights to its various “Miracle”-based marks. (Id., Prayer
`
`for Relief at ¶¶ (A) through (E).
`
`ARGUMENT
`
`37 C.F.R. § 2.117 provides that “[w]henever it shall come to the attention of the
`
`Trademark Trial and Appeal Board that a party or parties to a pending case are engaged in a civil
`
`action . . . which may have a bearing on the case, proceedings before the Board may be
`
`suspended until termination of the civil action . . . .” 37 C.F.R. § 2.117(a).
`
`CMN and Applicant, the parties to this case, are now parties to a federal civil action
`
`concerning the same trademarks – CMN’s various “Miracle”-based marks listed above and
`
`Applicant’s “Miracle Babies” mark. (Compare CMN’s Notice of Opposition, ¶ 7(a) – (q) and
`
`the Federal Court Complaint, ¶ 14(a) – (q).) In both actions, CMN alleges that Applicant’s
`
` 4
`
`

`
`“Miracle Babies” mark is confusingly similar to its “Miracle”-based marks and is likely to cause
`
`consumer confusion. (Compare CMN’s Notice of Opposition, ¶ 15 and Federal Court
`
`Complaint, ¶¶ 20 and 22.)
`
`A decision by the district court in the federal court action between these same parties,
`
`involving the same trademarks and the same claims, will be dispositive of the issues before the
`
`TTAB in this case. See General Motors Corp. v. Cadillac Club Fashions, Inc., 22 U.S.P.Q. 2d
`
`1933, 1936-37 (TTAB 1992). “A decision by the district court may be binding on the Board
`
`whereas a determination by the Board as to a defendant's right to obtain or retain a registration
`
`would not be binding or res judicata in respect to the proceeding pending before the court.” New
`
`Orleans Louisiana Saints LLC v. Who Dat?, Inc., 99 U.S.P.Q. 2d 1550, 1552 (TTAB 2011)
`
`(citations omitted). However, “the civil action does not have to be dispositive of the Board
`
`proceeding to warrant suspension, it need only have a bearing on the issues before the Board.”
`
`Id. (citations omitted).
`
`Because CMN has alleged that “Miracle Babies” infringes its “Miracle”-based marks and
`
`seeks to enjoin Applicant’s use of the “Miracle Babies” in the federal civil action, there is no
`
`question that the federal civil action between these parties will have a bearing on the issues
`
`before the Board. As a result, this proceeding should be suspended pending the outcome of the
`
`federal civil case.
`
`If the Board should deny the motion to suspend the above-captioned proceedings,
`
`Opposer hereby moves, pursuant to TBMP § 502.04, to extend the deadline for all discovery,
`
`testimony, and trial dates by ninety (90) days, based on the date the TTAB makes its
`
`determination on this motion.
`
` 5
`
`

`
`CONCLUSION
`
`Because the federal court proceeding commenced by CMN’s filing of the Federal Court
`
`Complaint will likely be dispositive of the issues before the TTAB in this case, or at a minimum
`
`will have a bearing on them, CMN respectfully requests that this case be suspended pending the
`
`outcome of the pending federal court action. Alternatively, CMN respectfully requests that the
`
`TTAB extend by ninety (90) days the deadline for all discovery, testimony, and trial dates, based
`
`on the date the TTAB makes its determination on this Motion.
`
`DATED this 11th day of March, 2015.
`
`
`
`
`
`
`
`
`
`
`
`/s/ J. Andrew Sjoblom
`J. Andrew Sjoblom
`HOLLAND & HART LLP
`222 South Main Street, Suite 2200
`Salt Lake City, UT 84101
`Telephone: 801-799-5800
`Facsimile: 801-799-5700
`
`Attorneys For Opposer
`Children’s Miracle Network
`
`
`
` 6
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on the 11th day of March, 2015, I caused a true and correct copy of
`
`the foregoing to be served in the following manner upon the addressee(s) listed below:
`
`U.S. Mail, postage prepaid
`Hand Delivery
`Facsimile
`Overnight courier
`E-mail and/or CM/ECF
`
`
`
`
`
`
`
`
`
`Julianne Henley
`Perkins Coie LLP
`1201 Third Avenue Suite 4900
`Seattle, WA 98101-3099
`JHenley@perkinscoie.com
`D. +1.206.359.8385
`F. +1.206.359.9385
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Tish Howell
`
`
`
`
`
`
`
`
`
`
`7628098_1
`
` 7
`
`

`
`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 1 of 16
`
`
`
`J. Andrew Sjoblom (199369)
`jasjoblom@hollandhart.com
`HOLLAND & HART LLP
`222 South Main Street, Suite 2200
`Salt Lake City, UT 84101
`Telephone: (801) 799-5800
`Facsimile: (877) 665-1699
`
`
`
`Attorneys for Plaintiff
`CHILDREN’S MIRACLE NETWORK
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
`
`
`)
`CHILDREN’S MIRACLE
`)
`NETWORK, a Utah non-profit
`) CASE NO.
`corporation
`
`______________________________ )
`
`
`)
`
`
`)
`
`Plaintiff,
`)
`vs.
`
`)
`
`
`)
`) (Demand for Jury Trial)
`
`
`MIRACLE BABIES, a California
`)
`)
`non-profit corporation,
`
`
`)
`
`Defendants.
`)
`_____________________________
`)
`
`'15CV0499
`
`AJB
`
`DHB
`
` COMPLAINT
`
`
`
`Plaintiff Children’s Miracle Network (“CMN” or “Plaintiff”) hereby claims
`
`against defendant Miracle Babies as follows:
`NATURE OF THE ACTION
`
`1.
`
`This is an action for trademark infringement, false designation of
`
`origin, unfair competition and related claims against Miracle Babies based on its
`
`infringement of Plaintiff’s “Miracle”-based trademarks that CMN uses in
`
`
`
`1
`COMPLAINT
`
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`

`
`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 2 of 16
`
`
`
`connection with raising money for children’s hospitals throughout the United
`
`States and Canada.
`
`THE PARTIES
`
`2.
`
`CMN is a Utah non-profit corporation with its principal place of
`
`business in Salt Lake City, Utah. CMN is a charitable organization that raises
`
`money for children’s hospitals throughout the United States and Canada. CMN
`
`also creates awareness and educates the public about children’s health care issues,
`
`the shortage of available resources, and good health care practices to prevent
`
`accidents and disease, and the hospitals, institutions and people who provide
`
`children’s health care.
`3.
`
`Upon information and belief, Miracle Babies is a California non-profit
`
`corporation with its principal place of business in San Diego, California. Miracle
`
`Babies raises money to support the families of infants requiring health care.
`
`Miracle Babies also operates the “Miracle Babies Family Network” to provide
`
`support to the families of ill newborns, and “Raising Miracles” to provide support
`
`to families once they leave the hospital.
`JURISDICTION AND VENUE
`
`4.
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`This is an action for trademark infringement and unfair competition
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`under the Lanham Act (15 U.S.C. §§ 1051-1127), common law trademark
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`infringement and related state law claims.
`5.
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`This Court has subject matter jurisdiction over this action under 28
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`U.S.C. § 1331 (federal question), 28 U.S.C. § 1338(a) (trademarks), and 15 U.S.C.
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`§ 1121 (trademarks). This Court has supplemental jurisdiction over CMN’s state
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`law claims under 28 U.S.C. § 1367(a) because those claims arise from a common
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`nucleus of operative facts alleged in CMN’s federal claims.
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`2
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 3 of 16
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`6.
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`This Court has personal jurisdiction over Miracle Babies because it is
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`a California non-profit corporation with its principal place of business in San
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`Diego, California.
`7.
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`Venue is also proper in this District pursuant to 28 U.S.C. §
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`1391(b)(1) because Miracle Babies resides in this District.
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`GENERAL ALLEGATIONS
`CMN is a charitable organization that raises money for children’s
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`8.
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`hospitals throughout the United States and Canada. CMN also creates awareness
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`and educates the public about children’s health care issues, the shortage of
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`available resources, and good health care practices to prevent accidents and
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`disease, and the hospitals, institutions and people who provide children’s health
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`care.
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`9.
`Over 170 hospitals and related institutions are members of CMN.
`10. CMN has relationships with about 200 television stations, 250 radio
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`stations, 100 corporate sponsors, and a number of celebrities and sports figures.
`11. CMN engages in a wide range of year-round activities to raise funds
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`and promote the awareness and educational mission of CMN.
`12. CMN has engaged in fundraising and promotion of its awareness and
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`education mission for more than 30 years through, among other things, fundraising
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`campaigns with the customers and employees of major companies, including
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`Walmart, Marriott, Delta Airlines, Costco, Dairy Queen, RE/MAX, Ace Hardware,
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`Food Lion, Coca-Cola, and Microsoft, awareness and education programs
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`broadcast as part of the regular news programming on Fox television stations, a
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`televised annual telethon, multi-day radiothon programs across the country,
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`celebrity appearances promoting CMN and its mission on major national television
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`news and talk shows, fundraising through a national network of credit unions,
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`3
`COMPLAINT
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`cause marketing campaigns for consumer products of major companies,
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`advertising and recognition in national media and publications, and student-
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`organized dance marathon campaigns conducted at universities across the country.
`13. CMN also operates a website furthering its charitable mission,
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`including awareness and education, located at
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`www.childrensmiraclenetworkhospitals.org.
`14. CMN is the owner of numerous U.S. Trademark Registrations
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`involving the word “MIRACLE” that are used in connection with charitable
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`fundraising and related advertising. Specifically, CMN is the owner of the
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`following U.S. Trademark Registrations that cover the mark “MIRACLE”:
`a.
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`United States Trademark Registration No. 1,553,246 for
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`CHILDREN’S MIRACLE NETWORK for charitable fundraising services;
`b.
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`United States Trademark Registration No. 2,264,436 for
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`CHILDREN’S MIRACLE NETWORK for radio and television programming and
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`production of radio and television programs in the field of children and children’s
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`issues;
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`c.
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`United States Trademark Registration No. 1,916,839 for
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`CHILDREN’S MIRACLE NETWORK for radio and television broadcasting in the
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`field of children and children’s issues;
`d.
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`United States Trademark Registration No. 2,209,255 for
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`CHILDREN’S MIRACLE NETWORK for providing health care information;
`e.
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`United States Trademark Registration No. 1,356,563 for
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`MIRACLES for a newsletter pertaining to charitable services;
`f.
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`United States Trademark Registration No. 1,343,289 for
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`CHILDREN’S MIRACLE NETWORK TELETHON for charitable fundraising
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`services;
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`4
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 5 of 16
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`g.
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`United States Trademark Registration No. 1,698,499 for
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`BOWLING FOR MIRACLES for charitable fundraising services;
`h.
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`United States Trademark Registration No. 2,954,518 for
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`CHILDREN’S MIRACLE NETWORK and design for charitable fundraising and
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`eleemosynary services in the field of monetary donations;
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`United States Trademark Registration No. 2,954,517 for
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`CHILDREN’S MIRACLE NETWORK and design for radio and television
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`broadcasting in the field of children and children’s issues;
`j.
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`United States Trademark Registration No. 2,954,516 for
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`CHILDREN’S MIRACLE NETWORK and design for radio and television
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`programming and production of radio and television programs in the field of
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`children and children’s issues;
`k.
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`United States Trademark Registration No. 2,951,236 for
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`CHILDREN’S MIRACLE NETWORK and design providing health care
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`information;
`l.
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`United States Trademark Registration No. 3,917,739 for
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`CHILDREN’S MIRACLE NETWORK HOSPITALS for charitable fundraising
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`services;
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`m. United States Trademark Registration No. 1,851,682 for
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`MIRACLE HOME for real estate brokerage services;
`n.
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`United States Trademark Registration No. 3,209,006 for KIDS
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`ALL-STAR MIRACLE HOME for charitable fundraising and eleemosynary
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`services in the field of monetary donations;
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`United States Trademark Registration No. 3,209,007 for KIDS
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`ALL-STAR MIRACLE HOME and design for charitable fundraising and
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`eleemosynary services in the field of monetary donations;
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`5
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 6 of 16
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`p.
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`United States Trademark Registration No. 3,209,009 for
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`HOME OF MIRACLES and design for charitable fundraising and eleemosynary
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`services in the field of monetary donations; and
`q.
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`United States Trademark Registration No. 3,387,880 for
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`MIRACLE SOUP for providing an interactive website for enabling
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`communications and collaboration among a charitable foundation and its
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`associates, sponsors and member hospitals in the field of charitable fundraising and
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`eleemosynary services.
`15. The foregoing registrations are valid and subsisting and constitute
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`prima facie evidence of the validity of the foregoing marks and registrations, and
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`of CMN’s ownership of and exclusive right to use these marks in connection with
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`the services set forth in the registrations. Moreover, most of the above
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`registrations are incontestable and therefore constitute conclusive evidence of the
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`validity of the marks and the registrations and of CMN’s ownership of and
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`exclusive right to use the marks in connection with the services set forth in the
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`registrations. The registrations also provide constructive notice of CMN’s
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`ownership of the marks.
`16.
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`In addition to CMN’s registered marks identified above, CMN has
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`used and is currently using numerous other marks, both registered and
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`unregistered, containing the word “Miracle” in connection with the above
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`described services.
`17. CMN has expended considerable expense and resources in advertising
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`and promoting its goods and services under its registered and non-registered marks
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`and as a result, CMN has acquired substantial good will and consumer recognition.
`18. Defendant Miracle Babies promotes services similar to CMN’s
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`services, including raising funds for and providing financial assistance to the
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`families of critically-ill newborns and providing other support to families of
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`6
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 7 of 16
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`critically-ill newborns using the names Miracle Babies, Miracle Babies Family
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`Network and Raising Miracles.
`19. Miracle Babies operates a website furthering its charitable mission,
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`including awareness and education, located at www.miraclebabies.org.
`20. Defendant’s Miracle Babies, Miracle Babies Family Network and
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`Raising Miracles marks (the “Infringing Marks”) are confusingly similar to CMN’s
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`various “Miracle”-based marks. In particular, the name “Miracle Babies” uses a
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`word that is identical to a word used in CMN’s marks – “Miracle” – coupled with a
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`synonym (“Babies”) of another word in CMN’s marks – “children.”
`21. The Miracle Babies Family Network uses “Miracle,” “Network” and a
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`synonym for “children.”
`22. Defendant’s use of the Infringing Marks is likely to cause consumer
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`confusion and a false association between CMN’s services and the services offered
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`by Defendant, falsely leading consumers to believe that the services emanate from
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`the same source or that CMN and Miracle Babies are affiliated.
`23. Upon information and belief, this likelihood of confusion has resulted
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`in and will continue to result in substantial and irreparable harm to CMN and to
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`consumers.
`24. Defendant’s use of the Infringing Marks has been and is without
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`permission or authority of Plaintiff and without any legitimate license to use
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`CMN’s marks.
`25. Miracle Babies’ acts have caused damage to CMN in an amount to be
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`determined at trial. These acts will result in further damage and irreparable injury
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`if Miracle Babies is not restrained by this Court from further violation of CMN’s
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`rights in its “Miracle”-based marks.
`26. Miracle Babies’ unlawful activity results in irreparable harm and
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`injury to CMN. Among other harms, it:
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`7
`COMPLAINT
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`Case 3:15-cv-00499-AJB-DHB Document 1 Filed 03/04/15 Page 8 of 16
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`a.
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`deprives CMN of its absolute right to determine the manner in
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`which its goods and services are presented to the general public;
`b.
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`deceives the public as to the origin and sponsorship of such
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`goods and services; and
`c.
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`wrongfully trades upon and cashes in on CMN’s reputation,
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`goodwill, and exclusive rights in its “Miracle”-based marks.
`27. CMN is entitled to an injunction restraining Miracle Babies, its
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`officers, agents, servants, employees, attorneys, and all persons acting in concert
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`with them, from engaging in any further acts in violation of CMN’s rights.
`28. CMN is further entitled to recover damages, including treble damages,
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`interest, and attorneys’ fees and costs CMN has sustained and will sustain as a
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`result of Miracle Babies’ acts as alleged herein. At present, the amount of such
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`damages cannot be fully ascertained by CMN.
`CAUSES OF ACTION
`COUNT I
`(TRADEMARK INFRINGEMENT UNDER SECTION 43(a)(1)(A)
`OF THE LANHAM ACT)
`29. CMN realleg