Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA694605
`ESTTA Tracking number:
`09/09/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214407
`Plaintiff
`Innovative Staffing, Inc.
`CASEY W JONES
`STRONG & HANNI
`102 S 200 E, STE 800
`SALT LAKE CITY, UT 84111
`UNITED STATES
`cjones@strongandhanni.com, awright@strongandhanni.com
`Other Motions/Papers
`Casey W. Jones
`cjones@strongandhanni.com, cbecerra@strongandhanni.com
`/Casey W. Jones/
`09/09/2015
`Mot to Suspend Proceedings.pdf(14356 bytes )
`Exhibit A.pdf(105400 bytes )
`Exhibit B.pdf(1002952 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`In the Matter of Trademark Application Serial No.: 85642675
`For the Trademark: ISHR
`Published in the Official Gazette on January 7, 2014
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`Proceeding No. 91214407
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`Innovative Staffing, Inc., a Utah corporation,
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`Opposer,
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`v.
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`ISHR LLC, a Utah limited liability company,
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`Applicant.
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`OPPOSER’S MOTION TO SUSPEND PROCEEDINGS
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`COMES NOW Opposer, Innovative Staffing, Inc., a Utah corporation (“Opposer”), by
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`and through its counsel, Strong & Hanni, and hereby files this Motion to Suspend this
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`proceeding until final determination of the federal district court proceeding between the parties.
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`The parties are engaged in a civil proceeding in United States District Court of Utah
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`which involves Applicant’s infringement of Opposer’s registered trademarks. It will have a
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`direct bearing on this proceeding because Applicant’s use of the ISHR mark (which is the subject
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`of this Proceeding) is the basis for Opposer’s infringement claim. A copy of the docket is
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`attached hereto as Exhibit A. Opposer filed the federal action against Applicant in the United
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`States District Court of Utah on December 29, 2014. A copy of the Complaint is attached hereto
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`as Exhibit B.
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`If Opposer is successful on its trademark infringement claim against Applicant, it will
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`directly affect the registrability of Applicant’s Trademark Application Serial No. 85642675.
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`Therefore, the federal district court action involves issues in common with those in this
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`Proceeding before the Board and the federal district court’s decision is binding upon the Board,
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`while the decision of the Board’s is not binding upon the federal district court. See Goya Foods
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`Inc. v. Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950, 1954 (2d Cir. 1988) (doctrine of
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`primary jurisdiction might be applicable if a district court action involved only the issue of
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`registrability, but would not be applicable where court action concerns infringement where the
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`interest in prompt adjudication far outweighs the value of having the views of the USPTO).
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`The Board’s decision will not affect the legal standard applied in the federal infringement
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`action or the scope of the required fact-finding. The federal court must independently determine
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`the validity and priority of the marks and the likelihood of consumer confusion as to the source
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`of the services which is to be resolved not by reference to a decision by the Board in this
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`Proceeding, but by application of the multi-factor balancing test applied by federal courts.
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`For these reasons, Opposer respectfully requests the Board to suspend this Proceeding
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`until final determination of the federal district court proceeding.
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`This Motion to Suspend Proceedings is being submitted electronically through ESTTA.
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`Dated: September 9, 2015
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`Respectfully submitted,
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`/Casey W. Jones/
`Andrew D. Wright
`Casey W. Jones
`Strong & Hanni
`102 South 200 East, Ste 800
`Salt Lake City, UT 84111-2007
`(801) 532-7080
`awright@strongandhanni.com
`cjones@strongandhanni.com
`Attorneys for Opposer,
`Innovative Staffing, Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that he is the attorney for Opposer, Innovative Staffing
`Inc., in the above-captioned Opposition proceeding and that on the date which appears below, he
`caused a copy of the foregoing OPPOSER’S MOTION TO SUSPEND PROCEEDINGS to be
`served on the following by first class mail service and email:
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`Counsel for Applicant:
`Steven L. Rinehart
`110 S. Regent Street, Suite 200
`Salt Lake City, UT 84111
`Attorney for Applicant ISHR, LLC
`steve@uspatentlaw.us
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`Dated: September 9, 2015
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`EXHIBIT A
`EXHIBIT A
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`

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`US District Court Electronic Case Filing System
`District of Utah (Central)
`CIVIL DOCKET FOR CASE #: 2:14-cv-00927-DB
`
`JURY,TRADEMARK
`
`Innovative Staffing v. ISHR LLC
`Assigned to: Judge Dee Benson
`Cause: 15:1051 Trademark Infringement
`
`Date Filed: 12/29/2014
`Jury Demand: Plaintiff
`Nature of Suit: 840 Trademark
`Jurisdiction: Federal Question
`
`Plaintiff
`
`Innovative Staffing
`a Utah corporation
`
`V.
`
`Defendant
`
`ISHR LLC
`a Utah limited liability company
`
`represented by Andrew D. Wright
`STRONG & HANNI (SANDY)
`9350 S 150 E STE 820
`SANDY, UT 84070
`(801)532-7080
`Email: awright@strongandhanni.com
`LEAD ATTORNEY
`ATTORNEY TO BE NOTICED
`
`Casey W. Jones
`STRONG & HANNI
`102 S 200 E STE 800
`SALT LAKE CITY, UT 84111
`(801)532-7080
`Email: cjones@strongandhanni.com
`ATTORNEY TO BE NOTICED
`
`represented by Steven L. Rinehart
`ANDERSON CALL & WILKINSON
`110 S REGENT ST STE 200
`SALT LAKE CITY, UT 84111
`(801) 347-5173
`Email: stevenrinehart13@yahoo.com
`LEAD ATTORNEY
`ATTORNEY TO BE NOTICED
`
`Michael C. Van
`SHUMWAY VAN & HANSEN CHTD
`8 EAST BROADWAY STE 550
`SALT LAKE CITY, UT 84111
`(801) 478-8080
`Email: michael@shumwayvan.com
`
`

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`Counter Claimant
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`ISHR LLC
`a Utah limited liability company
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`V.
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`Counter Defendant
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`Innovative Staffing
`a Utah corporation
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`TERMINATED: 03/03/2015
`ATTORNEY TO BE NOTICED
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`represented by Steven L. Rinehart
`(See above for address)
`LEAD ATTORNEY
`ATTORNEY TO BE NOTICED
`
`Michael C. Van
`(See above for address)
`TERMINATED: 03/03/2015
`ATTORNEY TO BE NOTICED
`
`represented by Andrew D. Wright
`(See above for address)
`LEAD ATTORNEY
`ATTORNEY TO BE NOTICED
`
`Casey W. Jones
`(See above for address)
`ATTORNEY TO BE NOTICED
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`Date Filed
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`# Docket Text
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`12/29/2014
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`12/29/2014
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`12/30/2014
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`01/05/2015
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`1 Case has been indexed and assigned to Judge Dee Benson. Plaintiff Innovative
`Staffing is directed to E-File the Complaint and cover sheet (found under
`Complaints and Other Initiating Documents) and pay the filing fee of $400.00
`by the end of the business day.
`NOTE: The court will not have jurisdiction until the opening document is
`electronically filed and the filing fee paid in the CM/ECF system.
`Civil Summons may be issued electronically. Prepare the summons using the
`courts PDF version and email it to utdecf_clerk@utd.uscourts.gov for issuance.
`(bdr) (Entered: 12/29/2014)
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`2 COMPLAINT against ISHR LLC (Filing fee $ 400, receipt number 1088-
`2181568), filed by Innovative Staffing. (Attachments: # 1 Exhibit A - ISIhr
`Registration Certificate, # 2 Exhibit B - ISI Registration Certificate, # 3 Civil
`Cover Sheet Civil Cover Sheet) Assigned to Judge Dee Benson (Jones, Casey)
`(Entered: 12/29/2014)
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`3 Report on the Filing of an action sent to the Director of the U.S. Patent and
`Trademark Office. (bdr) (Entered: 12/30/2014)
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`4 **RESTRICTED DOCUMENT**Summons Issued Electronically as to ISHR
`LLC.
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`

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`01/12/2015
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`02/20/2015
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`02/27/2015
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`03/02/2015
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`03/03/2015
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`03/09/2015
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`03/31/2015
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`04/01/2015
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`04/01/2015
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`04/01/2015
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`04/08/2015
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`04/17/2015
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`Instructions to Counsel:
`1. Click on the document number.
`2. If you are prompted for an ECF login, enter your 'Attorney' login to CM/ECF.
`3. Print the issued summons for service. (eat) (Entered: 01/05/2015)
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`5 ACKNOWLEDGMENT OF SERVICE Executed as to 2 Complaint, 4
`Summons Issued Electronically, Acknowledgment filed by Innovative
`Staffing.ISHR LLC served on 1/5/2015, answer due 1/26/2015. (Jones, Casey)
`(Entered: 01/12/2015)
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`6 ANSWER to Complaint , COUNTERCLAIM against Innovative Staffing filed
`by ISHR LLC. (Attachments: # 1 Exhibit A) Attorney Michael C. Van added to
`party ISHR LLC(pty:dft)(Van, Michael) (Entered: 02/20/2015)
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`7 MOTION to Withdraw as Attorney filed by Defendant ISHR LLC.
`(Attachments: # 1 Text of Proposed Order)(Van, Michael) (Entered:
`02/27/2015)
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`8 NOTICE of No Opposition to Motion for Withdrawal of Counsel by Innovative
`Staffing re 7 MOTION to Withdraw as Attorney (Jones, Casey) (Entered:
`03/02/2015)
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`10 ORDER granting 7 Motion to Withdraw as Attorney. Attorney Michael C. Van
`withdrawn from case for ISHR. Signed by Judge Dee Benson on 3/2/15. (jlw)
`(Entered: 03/11/2015)
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`9 ANSWER to 6 Counterclaim filed by Innovative Staffing.(Jones, Casey)
`(Entered: 03/09/2015)
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`11 MOTION for Entry of Default as to ISHR, LLC filed by Counter Defendant
`Innovative Staffing, Plaintiff Innovative Staffing. (Attachments: # 1 Text of
`Proposed Order Default Certificate)(Jones, Casey) (Entered: 03/31/2015)
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`12 NOTICE of Appearance by Steven L. Rinehart on behalf of ISHR LLC
`(Rinehart, Steven) (Entered: 04/01/2015)
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`13 MEMORANDUM in Opposition re 11 MOTION for Entry of Default as to
`ISHR, LLC filed by Defendant ISHR LLC, Counter Claimant ISHR LLC.
`(Attachments: # 1 Exhibit Exhibit A)(Rinehart, Steven) (Entered: 04/01/2015)
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`14 Clerk's ENTRY OF DEFAULT CERTIFICATE as to ISHR LLC (jlw) (Entered:
`04/07/2015)
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`15 RESPONSE to Motion re 11 MOTION for Entry of Default as to ISHR, LLC
`filed by Counter Defendant Innovative Staffing, Plaintiff Innovative Staffing.
`(Attachments: # 1 Exhibit A - Declaration of Casey W. Jones)(Jones, Casey)
`(Entered: 04/08/2015)
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`16 MOTION for Default Judgment as to defendant(s) ISHR, LLC and
`Memorandum in Support filed by Counter Defendant Innovative Staffing,
`Plaintiff Innovative Staffing. (Attachments: # 1 Exhibit A - Declaration of John
`Farnsworth, # 2 Exhibit B - Trademark Registration of ISIHR, # 3 Exhibit C -
`Trademark Registration of ISI, # 4 Exhibit D - Declaration of Casey W. Jones)
`(Jones, Casey) (Entered: 04/17/2015)
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`

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`04/19/2015
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`04/19/2015
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`04/27/2015
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`05/01/2015
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`05/08/2015
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`05/11/2015
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`05/11/2015
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`05/29/2015
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`17 MOTION to Set Aside Default and Memorandum in Support filed by Defendant
`ISHR LLC, Counter Claimant ISHR LLC. (Attachments: # 1 Exhibit
`Declaration of Steven Rinehart)(Rinehart, Steven) (Entered: 04/19/2015)
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`18 MEMORANDUM in Opposition re 16 MOTION for Default Judgment as to
`defendant(s) ISHR, LLC and Memorandum in Support filed by Defendant ISHR
`LLC, Counter Claimant ISHR LLC. (Attachments: # 1 Exhibit Declaration of
`Steven Rinehart)(Rinehart, Steven) (Entered: 04/19/2015)
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`19 REPLY to Response to Motion re 16 MOTION for Default Judgment as to
`defendant(s) ISHR, LLC and Memorandum in Support filed by Counter
`Defendant Innovative Staffing, Plaintiff Innovative Staffing. (Attachments: # 1
`Exhibit A - Email dated March 30, 2015, # 2 Exhibit B - Email dated March 24,
`2015, # 3 Exhibit C - Email dated April 1, 2015)(Jones, Casey) (Entered:
`04/27/2015)
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`20 MEMORANDUM in Opposition re 17 MOTION to Set Aside Default and
`Memorandum in Support filed by Counter Defendant Innovative Staffing,
`Plaintiff Innovative Staffing. (Attachments: # 1 Exhibit A - Email dated 3-30-
`15, # 2 Exhibit B - Email dated 3-24-15, # 3 Exhibit C - Declaration of Casey
`W. Jones, # 4 Exhibit D - Email dated 4-1-15, # 5 Exhibit E - Declaration of
`John Farnsworth)(Jones, Casey) (Entered: 05/01/2015)
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`21 REPLY to Response to Motion re 17 MOTION to Set Aside Default and
`Memorandum in Support filed by Defendant ISHR LLC, Counter Claimant
`ISHR LLC. (Rinehart, Steven) (Entered: 05/08/2015)
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`22 REQUEST to Submit for Decision re 16 MOTION for Default Judgment as to
`defendant(s) ISHR, LLC and Memorandum in Support filed by Plaintiff
`Innovative Staffing. (Wright, Andrew) (Entered: 05/11/2015)
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`23 REQUEST to Submit for Decision re 17 MOTION to Set Aside Default and
`Memorandum in Support filed by Plaintiff Innovative Staffing. (Wright,
`Andrew) (Entered: 05/11/2015)
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`24 ORDER denying 16 Motion for Default Judgment; granting 17 Motion to Set
`Aside Default. Signed by Judge Dee Benson on 5/28/15. (jlw) (Entered:
`05/29/2015)
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`09/04/2015
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`25 REPORT OF ATTORNEY PLANNING MEETING. (Jones, Casey) (Entered:
`09/04/2015)
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`PACER Service Center
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`Transaction Receipt
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`09/09/2015 11:14:22
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`PACER
`Login:
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`sh0061:2634099:0 Client Code:
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`Description: Docket Report
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`Billable Pages: 3
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`Search
`Criteria:
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`Cost:
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`2:14-cv-00927-
`DB
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`EXHIBIT B
`EXHIBIT B
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`

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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 1 of 15
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`Andrew D. Wright, #8857
`Casey W. Jones, #12133
`STRONG & HANNI
`102 South 200 East, Suite 800
`Salt Lake City, UT 84111
`Phone: 801-532-7080
`Fax: 801-596-1508
`awright@strongandhanni.com
`cjones@strongandhanni.com
`Attorneys for Plaintiff
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`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF UTAH, CENTRAL DIVISION
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`INNOVATIVE STAFFING, INC., a Utah
`corporation,
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`Plaintiff,
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`v.
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`ISHR, LLC, a Utah limited liability company,
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`Defendant.
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`COMPLAINT
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`(Jury Demanded)
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`Case No. 2:14-cv-00927-DB
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`Judge Dee Benson
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`Plaintiff Innovative Staffing, Inc. (“Plaintiff”) hereby complains against Defendant ISHR,
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`LLC (“Defendant”) and alleges as follows:
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`NATURE OF ACTION, JURISDICTION AND VENUE
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`1.
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`This is a civil action for trademark infringement and unfair competition in
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`violation of the Lanham Act, 15 U.S.C. §§ 1051 et seq, as well as violations of state laws as set
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`forth herein. Plaintiff began doing business in 1999. Defendant, with full knowledge of
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`Plaintiff’s ISI® and ISIHR® marks, is using the ISHR designation, with the intent to confuse
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`and deceive the public, and to trade on Plaintiff’s goodwill.
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`

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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 2 of 15
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`2.
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`This Court has original jurisdiction over the subject matter of this action under
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`Section 39 of the Lanham Act, 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331 and 1338. This Court
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`has supplemental jurisdiction over Plaintiff’s claims under 28 U.S.C. §§ 1338(b) and 1367(a).
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`3.
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`Upon information and belief, Defendant resides, has transacted business, has
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`contracted to supply goods or services, and/or has caused injury within the State of Utah, and has
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`otherwise purposely availed itself of the privileges and benefits of the laws of the State of Utah,
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`and therefore is subject to the jurisdiction of this Court pursuant to Rule 4(k)(1)(A) of the
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`Federal Rules of Civil Procedure and Utah Code Ann. § 78B-3-205 (2008).
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`4.
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`Venue is proper in this judicial District pursuant to 28 U.S.C. §1391.
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`THE PARTIES
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`5.
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`Plaintiff is a corporation duly organized and existing under the laws of the State
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`of Utah, with its principal place of business located at 869 W. South Jordan Parkway #77, South
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`Jordan, Utah 84095.
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`6.
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`On information and belief, Defendant is a limited liability company organized
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`under the laws of the State of Utah, with its principal place of business in Salt Lake County,
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`Utah.
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`FACTUAL BACKGROUND
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`7.
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`Plaintiff is now and for many years has been engaged in providing human
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`resource management and payroll processing, and related services under the ISI and ISIHR
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`marks.
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`8.
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`Plaintiff first started selling its services under the ISI and ISIHR marks in
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`interstate commerce long prior to Defendant’s use of the ISHR designation.
`2
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 3 of 15
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`A.
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`Plaintiff’s Trademark Rights and Registrations
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`9.
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`Plaintiff owns the following trademark registrations:
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`(a)
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` U.S. Trademark Registration No. 4,288,774 for the word mark “ISIHR”
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`in standard characters (“ISIHR Mark”), based on actual use of the mark in interstate commerce at
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`least as early as December 28, 1999, which registered on February 12, 2013, for use with
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`“Administration of business payroll for others; Human resource analysis and consulting
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`services; Human resources management; Payroll administration and management services;
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`Payroll preparation; Payroll processing services; Wage payroll preparation,” in International
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`Class 035. A true and correct copy of the registration certificate is attached as Exhibit A.
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`(b)
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` U.S. Trademark Registration No. 4,282,891 for the word mark “ISI” in
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`standard characters (“ISI Mark”), based on actual use of the mark in interstate commerce from at
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`least as early as December 28, 1999, which registered on January 29, 2013, for use with
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`“Administration of business payroll for others; Human resource analysis and consulting
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`services; Human resources management; Payroll administration and management services;
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`Payroll preparation; Payroll processing services; Wage payroll preparation,” in International
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`Class 035. A true and correct copy of the registration certificate is attached as Exhibit B.
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`The ISIHR Mark and ISI Mark are hereinafter referred to as “Plaintiff’s Marks.”
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`10.
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`Pursuant to Section 22 of the Lanham Act, 15 U.S.C. § 1072, Plaintiff’s
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`registrations constitute constructive notice of Plaintiff’s ownership rights in its trademarks.
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`11.
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`Plaintiff has developed extensive recognition and goodwill for the services sold
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`under Plaintiff’s Marks, among both Plaintiff’s immediate customers and the consuming public,
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`generally.
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 4 of 15
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`12.
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`Plaintiff has spent a substantial amount of money on advertising for its services
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`for the past nearly fifteen years.
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`13.
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`As a result of, inter alia, Plaintiff’s substantial investment in Plaintiff’s Marks and
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`services marketed under those trademarks, the consuming public recognizes Plaintiff’s Marks
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`and associates products with those marks with a single source, namely Plaintiff.
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`B.
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`Defendant’s Deceptive Actions
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`14.
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`In about 2002, Defendant’s co-owner, Rick Bolinder, met with Plaintiff for lunch.
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`At lunch, Mr. Bolinder said that he wanted to partner with Plaintiff. Nothing was agreed to but
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`Plaintiff’s representative gave Mr. Bolinder his business card which had the ISI mark on it.
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`15. On October 1, 2007, Defendant filed Articles of Organization with the Utah
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`Division of Corporations and formed a limited liability company under the name InfiniSource,
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`LLC in 2007.
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`16.
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`On December 5, 2007, Defendant registered the domain name InfiniSourcehr.com
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`to advertise its services.
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`17.
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`On July 16, 2009, Defendant received a cease and desist letter from a third party
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`business named InfiniSource, Inc. demanding
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`that Applicant cease using
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`the name
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`“InfiniSource.”
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`18.
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`On August 24, 2009, InfiniSource, Inc. filed a lawsuit (Case No. 2:09-cv-00744)
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`against Defendant, alleging federal trademark infringement against Defendant for using the
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`“InfiniSource” mark.
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`19.
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`On December 2, 2010, Applicant filed for a U.S. Trademark Application for
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`“InfiniSource Insurance Group.”
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 5 of 15
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`20.
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`On December 9, 2010, InfiniSource, Inc. filed a second lawsuit (Case No. 2:10-
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`cv-1223) against Defendant alleging, among other things, trademark infringement.
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`21.
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`On January 26, 2011, Defendant changed its name to ISHR, LLC with the Utah
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`Division of Corporations.
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`22.
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`Defendant owns the U.S. Trademark Application (Serial No. 85642675) for ISHR
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`and seeks to register the designation ISHR as a trademark in International Class 035 for:
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`“Administration of business payroll for others; Business management consultation and services,
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`namely, managing and administering non-core functions, namely, mailing and shipping, records
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`management, information services, administration, payroll and accounting, and telemarketing
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`services; Human resource and analysis and consulting services; Human resources management;
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`Payroll administration and management services; Payroll preparation; Payroll processing
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`services; Wage payroll preparation” and in International Class 036 for: “Payroll tax debiting
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`services.”
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`23.
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`Defendant now uses the designation ISHR on services that are, or will be,
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`marketed, advertised, promoted, and sold through identical or similar channels of trade, and
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`ultimately to the same kinds of customers as Plaintiff’s services are marketed, promoted, and
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`sold under its ISIHR and ISI marks.
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`24.
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`Plaintiff and Defendant are competitors in that they offer mostly identical services
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`to similar customers and are physically located less than 8 miles from each other (approximately
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`an 8 mile drive according to Mapquest.com).
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`5
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 6 of 15
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`25.
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`Defendant’s designation ISHR is confusingly similar to the marks owned by
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`Plaintiff, therefore, denying to Plaintiff the benefits of its mark in excluding confusingly similar
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`uses.
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`26.
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`Thus, when applied to Defendant’s services, the designation ISHR is likely to
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`cause confusion, to cause mistake, and to deceive consumers as to the origin, sponsorship and
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`approval of Defendant’s services with consequent injury to Plaintiff, to the public and to the
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`trade.
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`27.
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`Defendant’s ISHR mark is confusingly similar to Plaintiff’s Marks.
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`28.
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`Defendant’s use of its ISHR mark is likely to cause confusion, mistake, or
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`deception in the minds of the public as to the source of Defendant’s services and/or its affiliation
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`with Plaintiff.
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`29.
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`Defendant knowingly chose a mark nearly identical to Plaintiff’s Marks.
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`FIRST CAUSE OF ACTION
`(Federal Trademark Infringement, 15 U.S.C. § 1114)
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`30.
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`By this reference Plaintiff realleges and incorporates the above allegations as
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`though fully set forth herein.
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`31.
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`Plaintiff has not granted Defendant permission to use or register any trademark,
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`design, or logo.
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`32.
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`Defendant’s use of the ISHR mark is likely to cause confusion, mistake or
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`deception as to the sponsorship, affiliation, endorsement, connection, association, source or
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`origin of Defendant’s products, or as to the approval of Defendant’s products or services by
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`Plaintiff, and thus constitutes infringement of Plaintiff’s Marks.
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 7 of 15
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`33.
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`Defendant’s activities and the use of the ISHR mark, were undertaken with the
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`full knowledge of Plaintiff’s rights, with the intent to confuse and deceive the public, to trade on
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`Plaintiff’s goodwill, and therefore, has been intentional, deliberate, and willful.
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`34.
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`Defendant will, if not enjoined by this Court, continue its acts of trademark
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`infringement set forth above, which have caused and will continue to cause Plaintiff immediate
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`and irreparable harm.
`
`35.
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`Plaintiff has no adequate remedy at law for the damage to its reputation and
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`goodwill and will continue to be irreparably damaged unless Defendant is permanently enjoined
`
`pursuant to Section 34 of the Lanham Act, 15 U.S.C. § 1116, from its infringing and improper
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`conduct.
`
`36.
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`Defendant’s violation of 15 U.S.C. § 1114 has caused, and is causing Plaintiff
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`damage in an amount to be established at trial, including Defendant’s profits and Plaintiff’s lost
`
`profits.
`
`37.
`
`Pursuant to Section 35 of the Lanham Act, 15 U.S.C. § 1117, Plaintiff is entitled
`
`to a judgment for damages not to exceed three times the amount of its actual damages, together
`
`with interest thereon, in an amount to be determined at trial.
`
`SECOND CAUSE OF ACTION
` (Federal Unfair Competition / False Designation of Origin, 15 U.S.C. § 1125(a))
`
`
`
`38.
`
`By this reference Plaintiff realleges and incorporates the above allegations as
`
`though fully set forth herein.
`
`
`
`39.
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`Defendant designed its products targeted toward customers of Plaintiff.
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`40.
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`Plaintiff’s Marks have become uniquely associated with its payroll and human
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 8 of 15
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`resource services and hence identify Plaintiff as the source of services bearing the Plaintiff
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`Marks. Defendant’s interstate use of the ISHR mark, as described above, is confusingly similar
`
`to Plaintiff’s Marks. Defendant’s commercial advertising, promotion, and sales in interstate
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`commerce of the ISHR mark, constitutes passing off, unfair competition, a false designation of
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`origin, a false and misleading representation, and wrongfully and falsely designates Defendant’s
`
`services as originating from, or being sponsored by, affiliated with, endorsed by, or being
`
`connected with Plaintiff. Such usage of the designation the ISHR mark, by Defendant in
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`connection with the advertising and sale of payroll and human resource services in particular, is
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`likely to cause confusion, mistake or deception of the purchasing public, as to the nature, source
`
`or origin of Defendant’s services, or is likely to cause the purchasing public to wrongly believe
`
`that Defendant’s services are sponsored by, affiliated with, endorsed by, or otherwise associated
`
`or connected with Plaintiff.
`
`41.
`
`Defendant’s registration and use in commerce of the Defendant’s website domain
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`name www.ishrplus.com (hereinafter “Defendant’s Website”), has a tendency to deceive or
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`confuse consumers into believing that Defendant, and/or Defendant’s Website, is a source for
`
`Plaintiff’s payroll and human resource services, and that services sold at Defendant’s Website
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`have their origin with Plaintiff, or that such services are sponsored by, affiliated with, endorsed
`
`by, or otherwise connected with Plaintiff.
`
`42.
`
`Defendant’s acts described above have caused and are causing irreparable injury
`
`to Plaintiff and Plaintiff’s Marks, and to the business and goodwill represented thereby, and
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`unless enjoined, will cause further irreparable injury, whereby Plaintiff has no adequate remedy
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`at law.
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 9 of 15
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`43.
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`By engaging in the activities described above, Defendant has made and is making
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`false, deceptive, and misleading statements constituting false representations and false
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`advertising in connection with services distributed in interstate commerce in violation of Section
`
`43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`44.
`
`Defendant’s violation of 15 U.S.C. § 1125(a) has caused Plaintiff to suffer
`
`damages in an amount to be established at trial, including Defendant’s profits and Plaintiff’s lost
`
`profits.
`
`45.
`
`Pursuant to Section 15 U.S.C. § 1117, Plaintiff is entitled to a judgment for
`
`damages not to exceed three times the amount of its actual damages, together with interest
`
`thereon, in an amount to be determined at trial.
`
`THIRD CAUSE OF ACTION
`(Infringement and Unfair Competition)
`
`46.
`
`By this reference Plaintiff realleges and incorporates the above allegations as
`
`though fully set forth herein.
`
`47.
`
`Defendant, by its actions set forth hereinabove, has engaged in intentional
`
`business acts or practices that are unlawful, unfair, and/or fraudulent, including the infringement
`
`of Plaintiff’s Marks, and that have caused a material diminution in the value of the trademarks,
`
`tradenames, and other intellectual property held by Plaintiff, in violation of, inter alia, Utah
`
`Code Ann. § 13-5a-101 et seq.
`
`48.
`
`By reason of the foregoing, Plaintiff has suffered damages and irreparable harm.
`
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 10 of 15
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`49.
`
`By reason of the foregoing, Plaintiff is entitled to actual and punitive damages
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`from Defendant, along with its attorneys’ fees and costs pursuant to at least Utah Code Ann. §
`
`13-5a-103(1)(b) as more fully set forth herein.
`
`50.
`
`Defendant’s acts, as set forth above, also constitute common law trademark
`
`infringement, unfair competition, false representation and false designation of origin under 15
`
`U.S.C. § 1125(a).
`
`FOURTH CAUSE OF ACTION
`(Federal Trademark Dilution – 15 U.S.C. § 1125(c))
`
`51.
`
`By this reference Plaintiff realleges and incorporates the above allegations as
`
`though fully set forth herein.
`
`52.
`
`Plaintiff is the owner and senior user of its Plaintiff Marks as described above.
`
`53.
`
`Plaintiff’s Marks are federally registered, distinctive, well known, and famous
`
`among persons who purchase payroll and human resource services sold by Plaintiff and
`
`Defendant.
`
`54.
`
`Defendant’s conduct and adoption and use of its ISHR mark and Defendant’s
`
`Website as described above with its services has diluted the distinctive quality, fame and value
`
`associated with Plaintiff’s Marks.
`
`55.
`
`Defendant willfully intended to trade on Plaintiff’s reputation and to cause
`
`dilution of Plaintiff’s Marks as set forth herein.
`
`56.
`
`Plaintiff has been and continues to be damaged by Defendant’s unlawful conduct.
`
`Accordingly, Defendant’s said acts are unlawful and in violation of 15 U.S.C. 1125(c).
`
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 11 of 15
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`FIFTH CAUSE OF ACTION
`(Accounting)
`
`57.
`
`By this reference Plaintiff realleges and incorporates the above allegations as
`
`though fully set forth herein.
`
`58.
`
`By wrongly continuing to use the confusing and infringing ISHR mark, and thus
`
`representing to their customers and the public that they are entitled to use the marks and domain
`
`names www.ishrplus.com, Defendant acted in conflict with Plaintiff’s rights in and to the
`
`registered Plaintiff Marks.
`
`59.
`
`Plaintiff is entitled to an order that Defendant account to Plaintiff for all
`
`Defendant’s profits realized by virtue of Defendant’s unlawful acts as set forth herein, including
`
`for all services sold, and all other products sold, through Defendant’s Website, bearing the mark
`
`“ISHR.”
`
`60.
`
`Plaintiff is entitled to review all of Defendant’s business records to determine the
`
`extent to which Defendant wrongfully profited from use of Defendant’s confusing and infringing
`
`ISHR designation.
`
`SIXTH CAUSE OF ACTION
`(Deceptive Trade Practices under Utah Code Ann. § 13-11a-1, et seq.)
`
`61.
`
`By this reference Plaintiff realleges and incorporates the above allegations as
`
`though fully set forth herein.
`
`62.
`
`Defendant, by its actions as set forth hereinabove, has caused, is causing, and will
`
`continue to cause a likelihood of confusion or of misunderstanding as to the source, sponsorship,
`
`approval, or certification of its services; has caused, is causing, and will continue to cause a
`
`likelihood of confusion or misunderstanding as to the affiliation, connection, association with, or
`
`11
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 12 of 15
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`certification by another of its products; represented, represent, and will continue to represent that
`
`its goods have sponsorship, approval, characteristics, ingredients, uses, benefits, or qualities that
`
`they do not have; and have thereby engaged in deceptive trade practices, pursuant to, inter alia,
`
`Utah Code Ann. §§ 13-11a-3(1)(b), (c), and (e).
`
`63.
`
`Defendant's conduct as set forth hereinabove gives rise to a cause of action for
`
`deceptive trade practices and related wrongs under the statutory and common law of the State of
`
`Utah and other states, including at least Utah Code Ann. § 13-lla-l, et seq.
`
`64. On information and belief, Defendant has engaged in deceptive trade practices
`
`against Plaintiff in willful and deliberate disregard of the rights of Plaintiff and the consuming
`
`public.
`
`65. By reason of Defendant's deceptive trade practices, Plaintiff has suffered damages
`
`and irreparable harm.
`
`66. By reason of the foregoing, Plaintiff is entitled to injunctive and monetary relief
`
`against Defendant, along with its attorneys’ fees and costs, pursuant to at least Utah Code Ann.
`
`§§ 13-1Ia-4(2)(a), (b), and (c).
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff respectfully prays for judgment in its favor and against
`
`Defendant as follows:
`
`1.
`
`For judgment that Defendant’s conduct infringes Plaintiff’s rights in Plaintiff’s
`
`Marks;
`
`12
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`Case 2:14-cv-00927-DB Document 2 Filed 12/29/14 Page 13 of 15
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`2.
`
`For a permanent injunction, enjoining and restraining Defendant, its agents,
`
`servants, representatives, successors, assigns, and others in active concert or participation with
`
`them:
`
`(a)
`
`from using the ISHR designation, or any variations thereof, or any other
`
`mark confusingly similar thereto or likely to cause injury to Plaintiff’s business reputation, in
`
`connection with any service or products;
`
`(b)
`
`from