Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA627158
`ESTTA Tracking number:
`09/15/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91216020
`Plaintiff
`AN USA Management Group, LLC
`BASSAM N IBRAHIM
`BUCHANAN INGERSOLL & ROONEY PC
`1737 KING STREET , SUITE 500
`ALEXANDRIA, VA 22314
`UNITED STATES
`bassam.ibrahim@bipc.com
`Motion to Suspend for Civil Action
`S. Lloyd Smith
`bas-
`sam.ibrahim@bipc.com,lloyd.smith@bipc.com,kathleen.hemmerdinger@bipc.co
`m
`/S. Lloyd Smith/
`09/15/2014
`91216020.pdf(2185413 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
`
`AN USA Management Group, LLC,
`Opposer,
`
`V.
`
`Fitness Publications, Inc.,
`
`Registrant
`
`Fitness Publication, Inc.,
`
`Petitioner,
`
`V.
`
`AN USA Management Group, LLC,
`Registrant.
`
`\é%§/§/\./§/§/\./\./\./§/
`
`Opposition No. 91216020
`
`Cancellation No. 92059129
`
`MOTION AND MEMORANDUM TO SUSPEND
`
`Pursuant to 37 C.F.R. § 2.117(a) and TBMP §510, Opposer/Registrant AN USA
`
`Management Group, LLC (“Registrant”), by and through its counsel, hereby moves to
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`suspend the above proceedings on the grounds that Petitioner Fitness Publications, Inc.
`
`(“Petitioner”) and Registrant are engaged in two civil cases that may be dispositive of
`
`these proceedings. This Motion is supported by the Memorandum in Support of Motion
`
`to Suspend Proceedings below.
`
`I.
`
`INTRODUCTION
`
`On April 18, 2014, Petitioner filed a Petition for Cancellation of Registrant's U.S.
`
`Registration No. 3,069,936 for ARNOLD NUTRITION for “nutritional dietary supplements.”
`
`On April 22, 2014, Registrant filed a Notice of Opposition to Petitioner’s U.S. Application Serial
`
`No. 86/026,727 for ARNOLD SCHWARZENEGGER for “dietary and nutritional supplements.”
`
`On July 1, 2014, the Board granted the parties’ request to consolidate these proceedings.
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`

`
`On May 12, 2014 Petitioner filed a Complaint in the Superior Court of the State of
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`California against Registrant and allegedly affiliated companies alleging Violation of Right of
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`Publicity and Unfair Competition arising in part out of Registrant’s “use of the name ‘Arnold” in
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`the Arnold Nutrition company name and as the name on multiple nutritional supplements and
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`other products” (“the California Action”). A true and correct copy of the complaint in the
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`California Action is attached hereto as Exhibit A.
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`On July 3, 2013, Registrant filed a Complaint against Petitioner alleging sole ownership
`
`of the ARNOLD NUTRITION Mark and that Petitioner’s ARNOLD SCHWARZENNEGER
`
`Mark infringes Registrant’s ARNOLD NUTRITION Mark. Registrant’s Complaint alleges
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`trademark infringement pursuant to 15 U.S.C. § 1114, Unfair Competition pursuant 15 U.S.C. §
`
`1125, and Unfair and Deceptive Trade Practices, Dilution, and Common Law Trademark
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`Infringement under Florida Law. The case is pending in the United States District Court for the
`
`Southern District of Florida (the "Florida Action"). A true and correct copy of the complaint in
`
`the Florida Action is attached hereto as Exhibit B.
`
`Registrant respectfully requests that this proceeding be suspended pending resolution of
`
`the California Action and the Florida Action (collectively, the “Civil Actions”), since the Civil
`
`Actions have a bearing on the issues in the current opposition, and at least the Florida Action is
`
`likely to be dispositive of these issues.
`
`II.
`
`THE MOTION TO SUSPEND SHOULD BE GRANTED
`
`Under 37 C.F.R. § 2.117(a), "[w]henever it shall come to the attention of the Board that
`
`parties to a pending case are engaged in a civil actions which may be dispositive of the case,
`
`proceedings before the Board may be suspended until termination of the civil actions." 37
`
`C.F.R. § 2.1l7(a); see also TBMP §5l0 ("Ordinarily, the Board will suspend proceedings in the
`
`case before it if the final determination of the other proceedings will have a bearing on the
`
`

`
`issues before the Board.") (emphasis added).
`
`Here, the Civil Actions may be dispositive of these proceedings, and will undoubtedly
`
`have a bearing on the issues before the Board, as the issues to be determined in the Opposition
`
`are substantially identical to the issues to be decided in the Civil Actions. Although the Civil
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`Actions also include separate issues, this does not mean that the Board should not suspend these
`
`proceedings. Indeed, the Civil Actions need only have a bgafi_ng on the Board's decisions with
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`respect to the consolidated proceedings to justify a suspension. TBMP § 510(a). Among other
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`issues, the District Court will decide the issues of priority and likelihood of confusion, which are
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`also at issue in these proceedings.
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`First, and most importantly, if the Board suspends these proceedings and allows the
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`District Court in the Florida Action to rule first, the District Court's decision would be binding
`
`on the Board under the doctrines of res judicata and collateral estoppel. Mother's Restaurant
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`Inc. v. Mama's Pizza, Inc., 723 F.2d 1566, 1569-73 (Fed. Cir. 1983) (collateral estoppel);
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`Midland Cooperatives, Inc. v. Midland International Corp, 421 F.2d 754, 758-59 (C.C.P.A.
`
`1970) (res judicata).
`
`By contrast, if the Board decides these proceedings before the District Court adjudicates
`
`the Florida Action, the Board's findings could be challenged in the Civil Actions or in another
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`civil action in another federal district court. 15 U.S.C. § 1071(b). Similarly, whereas federal
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`district courts may rule on issues related to both use and registration of trademarks, the Board
`
`may only decide issues relating to the registration of trademarks. 15 U.S.C. § 1119; PHC, Inc. v.
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`Pioneer Healthcare, Inc., 75 F.3d 75, 79 (1st Cir. 1996). A ruling by the District Court in the
`
`Florida Action will thus control the outcome of the Opposition, but not vice versa. TBMP §
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`5 l0.02(a). Therefore, in the interest ofjudicial economy, the Board should suspend these
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`proceedings.
`
`

`
`Second, allowing these matters to be resolved by the Civil Actions promotes judicial
`
`efficiency and encourages the parties themselves to resolve this dispute in the most efficient
`
`matter possible. The fundamental issues in these proceedings are indisputably encompassed
`
`within the issues in the Civil Actions, as described above. If these proceedings are suspended
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`pending the disposition of the Civil Actions, the parties will avoid unnecessarily expending
`
`resources fighting the proverbial "battle" on two "fronts" instead ofjust one. Thus, suspending
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`these proceedings will not prejudice either party, as it will allow the parties to resolve their entire
`
`dispute while expending the least amount of resources.
`
`Third, the proceedings should be suspended to avoid inconsistent rulings between the
`
`Board and the District Court in the Florida Action, especially since the District Court's decision
`
`will ultimately be binding on the Board.
`
`III.
`
`CONCLUSION
`
`For the reasons stated herein, the Board should suspend these combined proceedings
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`pending the outcome of the Civil Actions. Should the Board deny its motion to suspend,
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`Registrant respectfully requests the Board to reset all pending deadlines to run from the Board's
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`decision on this motion. 37 C.F.R. § 2.l2l(a)(l).
`
`Respectfully submitted,
`
`AN ‘ A ANAGEMENT GROUP, LLC
`
`
`
`Attorneys for Registrant
`Buchanan Ingersoll & Rooney PC
`1737 King Street, Suite 500
`Alexandria, Virginia 22314-2727
`Telephone: 703-836-6620
`
`Date: September 15, 2014
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing MOTION AND MEMORANDUM TO
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`SUSPEND PURSUANT TO 37 C.F.R. § 2.117(a) was served this 15”‘ day of September, 2014
`
`via e—mail and U.S. first class mail on:
`
`David W. Grace
`
`Melanie Howard
`
`Loeb & Loeb LLP
`
`10100 Santa Monica Blvd, Suite 2200
`
`Los Angeles, CA 90067
`dgrace@1oeb.com
`
`

`
`
`
`EXHIBIT AEXHIBIT A
`
`

`
`MARTIN D. SINGER (BAR NO. 78166)
`TODD S. EAGAN (BAR NO. 207426)
`LAVELY & SINGER
`PROFESSIONAL CORPORATION
`2049 Century Park East, Suite 2400
`Los Angeles, California 90067-2906
`Telephone No.2 (310) 556~3501
`Facsimile No.:
`(310) 556-3615
`Email: mdsinger@lavelysingenconi
`teagan@lavelysinger.com
`
`
`
`'
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`JUNE GERALD R?S$_I.‘?.3__,
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`
`20
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`21
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`22
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`23
`
`Attorneys for ARNOLD SCHWARZENEGGER um.-=:«--«—«=~«-~'4--~"-='~'"°’.b‘_rjj_*.:‘
`and FITNESS PUBLICATIONS, INC.
`
`SUPERIOR COURT OF THE STATE OF CALIFORNIA
`
`FOR THE COUNTY OF LOS ANGELES - WEST DISTRICT
`
`CASE NO. SC122539
`
`COMPLAINT FOR:
`
`1.
`
`2.
`
`VIOLATION OF RIGHT OF
`PUBLICITY; AND
`
`UNFAIR COMPETITION
`
`JURY TRL4L DEMANDED
`
`) ) ) ) ) 3 D 3
`
`% ) ) ) ) J %
`
`ARNOLD SCHWARZENEGGER; an
`individual, and FITNESS PUBLICATIONS,
`INC., a California corporation,
`
`Plaintiffs,
`
`V.
`
`AN USA MANAGEMENT GROUP, LLC,
`a Nevada limited liability company;
`ARNOLD NUTRITION GROUP, a
`business entity, form unknown; ARNOLD
`NUTRITION GROUP, USA, a business
`entity, form unknown; ARNOLD
`NUTRITION BRASIL, a business entity,
`form unknown; and DOES 1 through 50,
`inclusive,
`
`Defendants.
`
`
`) )
`
`Plaintiffs ARNOLD SCI-IWARZENEGGER (“Schwarzenegger”) and FITNESS
`
`PUBLICATIONS, INC. (“Fit_ness Publications”) (collectively, “Plaintiffs”) allege and state:
`
`24
`
`///
`
`25
`
`26
`
`27
`
`28
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`\\\\K\‘\‘§§
`
`472-ZZRCOMPLAINT 050914
`
`I
`
`‘ COMPLAINT
`
`

`
`1
`
`2
`
`3
`
`INTRODUCTION
`
`1.
`
`Schwarzenegger is universally known as one of the world’s pre-eminent
`
`bodybuilders and as a motion picture star who has appeared in films that have been viewed by
`
`4 millions of people throughout the United States and the world. He also served as Governor of the
`
`S
`
`6
`
`State of California. Schwarzenegger’s name, image, likeness and voice are recognized instantly
`
`by the public and have substantial commercial value. He is known and identified throughout the
`
`7 world by the name “Arnold.” Schwarzenegger receives substantial compensation for products and
`
`8
`9
`
`10
`
`11
`
`12
`
`13
`
`companies he chooses to endorse and promote, and is very selective in the type of products that he
`endorses or is affiliated with in any capacity. Schwarzenegger has been deeply involved in
`
`bodybuilding since the 19605 as a fierce competitor and an ambassador of the sport.
`
`Schwarzenegger’s worldwide reputation and unparalleled career in the entertainment industry and
`
`politics have as their foundation his accomplishments as a champion athlete. Given his lifelong
`
`commitment to the sport of bodybuilding, Schwarzenegger would never endorse or affiliate
`
`14 himself with any fitness or nutritional product without first undertaking rigorous independent
`
`15
`16
`17
`
`research, testing and due diligence to ensure that the product is healthy and helpful to athletes and
`the general public.
`.
`2.
`Nevertheless, Defendants AN USA Management Group, LLC, Arnold Nutrition
`
`18 Group, Arnold Nutrition Group, USA and Arnold Nutrition Brasil (collectively “Arnold
`
`19 Nutrition” or “Defendants”) have brazenly stolen and exploited Schwarzenegger’s name, image,
`
`20
`
`21
`22
`
`23
`
`likeness and reputation‘ to promote Arnold Nutrition and Arnold Nutrition products without his
`
`consent and without ever having contacted him. Schwarzenegger would never endorse or affiliate
`himselfwith Amold Nutrition and its products, which have never been subjected to the rigorous
`
`quality testing that Schwarzenegger demands of products associated with his name and reputation.
`
`24 Arnold Nutrition is committing a fraud on the public and will be held fully accountable.
`
`25
`
`26 A
`
`3.
`
`Schwarzenegger’s name and image are iconic in the sport of bodybuilding. In
`
`BACKGROUND
`
`27
`
`1967, at age 20, Schwarzenegger won the “Mr. Universe” title; he went on to win the “Mr.
`
`28 Universe” competition four more times. Schwarzenegger also held the title of “Mr. Olympia”
`
`472.221\coMPLAINI 050914
`
`
`
`2
`
`COMPLAINT
`
`

`
`1
`
`seven times, most recently in 1980. He has been depicted on the cover of more than 1,000
`
`2 magazines, many of which were associated with bodybuilding, sports, and fitness.
`
`3 Schwarzenegger has also authored and distributed numerous publications on bodybuilding, and
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`released numerous videos in the field of fitness and bodybuilding, under his “Arnold” name and
`
`brand.
`
`4.
`
`Schwarzenegger exercises careful consideration prior to permitting commercial
`
`uses of his name, photograph, image, likeness, Voice and reputation for any purpose in order to
`
`ensure that he is associated with products, entertainment, services and/or companies in which he
`
`believes, to ensure that the value of his persona is not diminished either by association with
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`products, entertainment, services and/or companies which he does not personally desire to support
`
`and/or by over—saturation of his image. Schwarzenegger will not allow himself to be associated
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`12 with any product unless he carefully selects and believes in the product, and unless the
`
`13
`
`compensation that he receives is commensurate with both the value of the exploitation of his
`
`14
`
`persona, and is sufficient to compensate him for any potential diminution in value resulting from
`
`15
`
`16
`
`the commercial use of his persona. Schwarzenegger would never agree to allow himself to be
`
`associated with Arnold Nutrition or its products, nor any fitness or nutritional product which has
`
`17
`
`not been rigorously tested by him to ensure its health benefits.
`
`18
`
`19
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`DEFENDANTS’ SHAMEFUL CONDUCT
`
`5.
`
`Defendants have made use of numerous prominent and conspicuous photographs
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`20 of Schwarzenegger, as well as multiple uses of Schwarzeneggefs name and references to his
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`21
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`activities, on the Arnold Nutrition Facebook Pages in a manner that is misleading to consumers
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`22
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`and which makes it appear that Schwarzenegger sponsors, endorses and uses Arnold Nutrition
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`23
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`products when that is not true. Schwarzenegger does not sponsor, endorse or use Arnold
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`24 Nutrition products. The Arnold Nutrition Facebook Pages have created an association with
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`25 Schwarzenegger, by making use of a prominent cover photograph of Schwarzenegger in his
`
`26
`
`bodybuilding prime, along with numerous photographs of Schwarzenegger working out and
`
`27
`
`striking bodybuilding poses, in addition to posting multiple references to the Arnold Classic
`
`28
`
`Sports Festival and other events. This similarly has made it appear as if Schwarzenegger is
`
`472-2z1\coMPLArNr 050914
`
`3
`
`CONIPLAINT
`
`

`
`involved with Arnold Nutrition and that he uses and endorses Defendants’ products. The
`
`photographs of Arnold Nutrition products have also appeared adjacent to and surrounded by
`
`numerous photographs of and references to Schwarzenegger. All of this is compounded by
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`Defendants’ use of the name “Arnold” in the Arnold Nutrition company name and -as the name on
`
`multiple nutritional supplements and other products, thereby evoking Schwarzenegger’s persona.
`
`Added to the fact that the Arnold Nutrition Facebook Pages have included prominent posts of
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`Schwa:rzenegger’s name, photograph, image, likeness and events that he attends and endorses, this
`
`all misleads the public and trades on Schwarzenegger’s valuable name, photograph, image,
`
`likeness and reputation without his consent. Moreover, Schwarzenegger, who has dedicated his
`
`life to the fitness and nutrition industry, would never stand behind a nutrition product without
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`having first confirmed its health benefits and other important qualities. In no way does
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`Schwarzenegger endorse the quality of any Arnold Nutrition products, although Arnold Nutrition,
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`through its actions, would fraudulently mislead the public to believe otherwise. Defendants’
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`misappropriation of Schwarzenegger’s Valuable publicity rights for exploitation in the fitness and
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`nutrition industry cuts to the very core of his reputation as one of the world’s preeminent
`
`bodybuilders and a lifelong ambassador of the sport.
`
`THE PARTIES
`
`‘ 6.
`
`Plaintiff Arnold Schwarzenegger is, and at all times relevant hereto was, a resident
`
`of Los Angeles County, California.
`
`7.
`
`Plaintiff Fitness Publications, Inc. is, and at all times relevant hereto was, a
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`corporation organized and existing under the laws of the State of California, and doing business in
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`Los Angeles County, California, and furnishes the services of Schwarzenegger in the fitness
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`industry.
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`8.
`
`Plaintiffs are informed and believe and based thereon allege that Defendant AN
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`USA Management, LLC is, and at all times relevant hereto was, a limited liability company
`
`organized and existing under the laws of the State of Nevada.
`
`9.
`
`Plaintiffs are informed and believe and based thereon allege that Defendant Arnold
`
`Nutrition Group is, and at all times relevant hereto was, a business entity, form unknown.
`
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`472-22]\COIvfl’LAl‘N'l' 050914
`
`4
`
`COIVIPLAINT
`
`

`
`10.
`
`Plaintiffs are informed and believe and based thereon allege that Defendant Arnold
`
`Nutrition Group USA is, and at all times relevant hereto was, a business entity, form unknown.
`
`11.
`
`Plaintiffs are informed and believe and based thereon allege that Defendant Arnold
`
`Nutrition Brasil is, and at all times relevant hereto was, a business entity, form unknown.
`
`12.
`
`Plaintiffs are presently unaware of the true names and capacities of the Defendants
`
`sued herein as Does 1 through 50, inclusive, and therefore sues said Defendants by such fictitious
`
`names. Plaintiffs will amend this Complaint to allege the true names and capacities of such
`
`fictitiously named defendants when the same have been ascertained. Plaintiffs are informed and
`
`believe and based thereon allege that each of the f1ctitiously~named defendants is responsible in
`
`some manner for the occurrences, acts and omissions alleged herein and that the damages about
`
`which Plaintiffs complain were proximately caused by their conduct. Hereinafter, all defendants
`
`(including the Doc defendants) will sometimes be referred to collectively as “Defendants.”
`
`13.
`
`Plaintiffs are informed and believe and based thereon allege that at all material
`
`times each Defendant was and is the agent, employee, partner, joint venturer, co-conspirator,
`
`owner, principal and employer of each of the remaining Defendants and at all times herein
`
`mentioned was acting within the course and scope of that agency, employment, partnership,
`
`conspiracy, ownership or joint venture. Plaintiffs are further informed and believe and based
`
`thereon allege that the acts and conduct of each Defendant alleged herein were known to, and
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`authorized or ratified by, the officers, directors and managing agents of each other Defendant.
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`l4.
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`Plaintiffs allege on the basis of information and belief that Arnold Nutrition, and
`
`each of them, and Does 1 through 50, intermingled their assets and identities to such an extent that
`
`they are alter egos of one another, and/or that Arnold Nutrition and Does 1 through 50, inclusive,
`
`are a mere shell by which said Defendants conduct business. Plaintiffs further allege on the basis
`
`of information and belief that each of the Defendants failed to maintain identities separate and
`
`distinct from one another such that the adherence to the function of the separate existence of each
`
`of those Defendants would promote injustice and sanction fraud upon Plaintiffs. Plaintiffs are
`
`further informed and believe and based thereon alleges that Does 1 through 50, inclusive, were
`
`and are completely owned, controlled, dominated, used, managed and operated by and on behalf
`
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`472-22l\COM]'LAlNT 050914
`
`5
`
`COMPLAINT
`
`

`
`of one or more of the other Defendants and intermingled their assets and identities to such an
`
`extent that Does 1 through 50, inclusive, are the alter egos of said Defendants, and are one and the
`
`same.
`
`FIRST CAUSE OF ACTION
`
`(Violation of Right of Publicity Against All Defendants)
`
`l5.
`
`Plaintiffs repeat, reallege, adopt and incorporate each and every allegation
`
`contained in Paragraphs 1 through 14, inclusive, as though fully set forth herein.
`
`16.
`
`Schwarzenegger is an internationally recognized actor, politician, businessman,
`
`and former professional bodybuilder. He has won the highest honors as a bodybuilder and starred
`
`in numerous, hugely successful, internationally—known motion pictures. Schwarzenegger’s name,
`
`photograph, image, likeness, voice and persona have become, and are, very valuable worldwide
`
`and were, and are, invested with substantial goodwill in the eyes of the public. Accordingly,
`
`Schwarzenegger has a valuable right of publicity, a property right with substantial commercial
`
`value, which he has not agreed to transfer, in whole or in part, to Defendants for any purpose
`
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`
`27
`
`17.
`
`The wrongful acts of Defendants, and-each of them, as alleged hereinabove,
`
`constitute a violation and misappropriation of Schwarzcnegger’s right of publicity in that
`
`Defendants, and each of them, misappropriated Schwarzenegger’s name, photograph, image and
`
`likeness, and used them for a commercial purpose to advertise, market, promote, sell and/or
`
`distribute their products and to advertise and promote Defendants themselves.
`
`18.
`
`As a direct and proximate result of the aforesaid wrongful acts of Defendants, and
`
`each of them, Plaintiffs have been damaged in an amount that is not yet fully ascertainable, but
`
`which is believed to be in excess of Ten Million Dollars ($10,000,000). When Plaintiffs have
`
`ascertained the full amount of damages, they will seek leave of Court to amend this Complaint
`
`accordingly.
`
`19.
`
`Plaintiffs are infonned and believe, and based thereon allege, that Defendants, and
`
`each of them, in doing the things herein alleged, acted. willfully, maliciously, oppressively and
`
`28
`
`despicably, and with full knowledge of the adverse effect of their actions on Plaintiffs and with
`
`472-22l\CDMPLAl'N'I‘ 050914
`
`6
`
`(TOMPY .ATNT
`
`

`
`willful and deliberate disregard for the consequences to Plaintiffs. By reason thereof, Plaintiffs
`
`are entitled to recover punitive and exemplary damages from Defendants in an amount to be
`
`determined at the time of trial.
`
`SECOND CAUSE OF ACTION
`
`(Unfair Competition Against All Defendants)
`
`20.
`
`Plaintiffs repeat, reallege, adopt and incorporate each and every allegation
`
`contained in Paragraphs 1 through 19, inclusive, as though fully set forth herein.
`
`21.
`
`The wrongful exploitation of Schwarzenegger’s name, photo graph, image,
`
`likeness, reputation and/or other publicity rights, as herein alleged, by Defendants, and each of
`
`them, constitutes unfair competition, unfair business practices and false advertising in violation
`
`of, among other things, California Business and Professions Code sections 17200 through 17204
`
`and 17500.
`
`22.
`
`Plaintiffs are informed and believe, and based thereon allege, that Defendants’
`
`conduct as alleged herein is such that Defendants falsely, unfairly, deceptively, unlawfiilly and/or
`
`misleadingly stated, suggested or implied that Schwarzenegger endorsed Defendants’ products,
`
`and Defendants themselves, and consented to the advertisements of those products, all in a
`
`manner likely to mislead the general public. Plaintiffs further allege, on the basis of information
`
`and belief, that Defendants’ use of Schwarzenegger’s name, photograph, image, likeness and/or
`
`reputation in this context unfairly, unlawfully and falsely misled, deceived, substantially confused
`
`and/or misinformed the general public. Plaintiffs further allege, on the basis of information and
`
`belief, that at all material times Defendants, and each of them, knew that their conduct alleged
`
`herein would mislead, deceive, substantially confuse and/or misinform the general public, all for
`
`the Defendants’ pecuniary gain.
`
`23.
`
`Plaintiffs are informed and believe and thereon allege that as a direct and
`
`proximate result of the conduct of Defendants, and each of them, Defendants have earned profits
`
`in an amount which has yet to be ascertained, and which amount Plaintiffs are entitled to receive
`
`as a result of Defendants’ conduct herein alleged.
`
`¢\900\’lO\Ul-BUJIQV-i
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`28
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`///
`
`472-221\COMPl.AINT 050914
`
`7
`
`COMPLAINT
`
`

`
`WHEREFORE, Plaintiffs pray forj udgment against Defendants, and each ofthem, as follows:
`
`AS TO THE FIRST CAUSE OF ACTION:
`
`1.
`
`General and special damages against Defendants, and each of them, in an amount not
`
`less than Ten Million Dollars ($10,000,000), in accordance with proof at trial, together with interest
`
`thereon at the legal rate;
`
`2.
`
`For punitive or exemplary damages pursuant to California Civil Code, Section
`
`3294(c);
`
`AS TO THE SECOND CAUSE OF ACTION:
`
`3.
`
`For restitution in an amount to be determined at trial together with interest thereon at
`
`1
`
`2 3 4 5 6 7
`
`8 9
`
`10
`
`the legal rate;
`
`11 AS TO ALL CAUSES OF ACTION:
`
`For all costs of suit incurred herein;
`
`For reasonable attorney’s fees as may be provided by law; and
`
`For such other and further relief as the Court may deem to be just and proper.
`
`4.
`
`S.
`
`6.
`
`12
`
`13
`
`14
`
`15
`
`16
`
`LAVELY & SINGE
`PROFESSIONAL O 1
`MARTIN
`TODD '.
`
`By:
`
`
`
`CI; WARZENEGGER
`Attorneys for ARNOIL
`and FITNESS PUBLICATI NS, INC.
`V
`
`17 DATED: May ‘:23, 2014
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`472-1Zl\COMPLAJNT 050914
`
`8
`
`COMPLAINT
`
`

`
`REQ QUEST FOR JURY TRIAL
`
`Plaintiffs hereby demand trial by jury.
`
`DATED: May j_’l_/, 2014
`
`LAVELY & SINGER
`
`
` Attomeys for ARNOLD SCH
`ENEGGER
`and FITNESS PUBLICATION , INC.
`
`\D®\I<7«LI'I-D~UJl\)
`
`10
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`
`15
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`472-221\COMPLAINT 050914
`
`
`
`9
`
`COIVIPLAINT
`
`

`
`
`
`EXHIBIT BEXHIBIT B
`
`

`
`Case 1:14-cv—22477-RNS Document 1 Entered on FLSD Docket 07/03/2014 Page 1 of 14
`
`IN THE UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`
`MIAMI DIVISION
`
`AN USA MANAGEMENT GROUP, LLC
`
`Plaintiff,
`
`V.
`
`FITNESS PUBLICATIONS, INC.
`
`Defendant.
`
`/
`
`COMPLAINT
`
`Civil Action No.
`
`Plaintiff AN USA Management Group, LLC (“Plaintiff), by and through its
`
`undersigned counsel, for its complaint against.Defendant Fitness Publications, Inc.
`
`("Defendant"), hereby alleges and states the following:
`
`PARTIES
`
`1.
`
`Plaintiff is a limited liability company organized under the laws of the
`
`State of Nevada, and is located at P.O. Box 223361, Hollywood, Florida 33022. Plaintiff
`
`is registered to do business in Florida and maintains a principal place of business in
`
`Miami, Florida.
`
`2.
`
`Defendant is a California corporation located and doing business at 3110
`
`Main Street, Suite 300, Santa Monica, California 90405.
`
`JURISDICTION AND VENUE
`
`3.
`
`This action arises out of Defendant’s use and attempted registration of the
`
`mark ARNOLD SCHWARZENEGGER in connection with dietary and nutritional
`
`supplements, which infringes and dilutes Plaintiffs prior rights in the mark ARNOLD
`
`BUCHANAN INGEIISOLL 84 ROONEY PC :1 Miami Tower :2 I00 S.E. Second Street, Suite 3500 2: lvliami, Fl 33131-2148 2: T 305 347 4080 2: F 305 347 4089
`
`

`
`Case l:14—cv—22477-RNS Document 1 Entered on FLSD Docket 07/03/2014 Page 2 of 14
`
`NUTRITION.
`
`Plaintiff is seeking injunctive relief and damages for
`
`trademark
`
`infringement, false designation of origin, and unfair competition under the Lanham Act,
`
`15 U.S.C. § 1125 et seq.; trademark dilution under Fla. Stat. § 495.151, violation of the
`
`Florida Unfair and Deceptive Trade Practices Act; and unfair competition under Florida
`
`common law.
`
`4,
`
`The Cauit has subject matter jurisdiction over this action pursuant to the
`
`Lanham Act, 15 U.S.C. § 1121, and 28 U,S.C. §§ 1331 and 1338. This court has pendant
`
`jurisdiction over Plaintiffs state law claims pursuant to 28 U.S.C. § 1338(b).
`
`5.
`
`Venue is proper in this judicial district under 28 U.S.C. § 1391(b) because
`
`Defendant transacts business within this district and because the acts complained of
`
`herein that have caused and are continuing to cause injury to Plaintiff have occurred and
`
`are continuing to occur within this district.
`
`PLAINTIFF ’S ARNOLD NUTRITION MARK
`
`6.
`
`Plaintiff is the sole owner of trademark rights in the mark ARNOLD
`
`NUTRITION (“Plaintiffs ARNOLD NUTRITION Mark”
`
`or
`
`“the ARNOLD
`
`NUTRITION Mar ”) in connection with nutritional dietary supplements.
`
`7.
`
`Plaintiffs rights in the ARNOLD NUTRITION Mark are embodied in
`
`U.S. Trademark Registration No. 3,069,936, which covers
`
`“nutritional dietary
`
`supplements” in International Class 5.
`
`This registration is Valid, subsisting, and
`
`incontestable pursuant to 15 U.S.C. §1065. A copy of the Certificate of Registration for
`
`this mark is attached as Exhibit 1 and by this reference is incorporated herein.
`
`BUCHANAN INGERSOLL & ROONEY PC :: Miami Tower :: I00 S.E. Second Street, Suite 3500 2: Miami, Fl, 33131-2148 :: T 305 3tl7 4080 :: F 305 347 11089
`
`2
`
`

`
`Case l:14—cv-22477-RNS Document 1 Entered on FLSD Docket 07/03/2014 Page 3 of 14
`
`8.
`
`Plaintiff has used the ARNOLD NUTRITION Mark in commerce since at
`
`least as early as May 13, 2004. Plaintiff’s ARNOLD NUTRITION‘ Mark was registered
`
`on March 21, 2006.
`
`9.
`
`Plaintiffs ARNOLD NUTRITION Mark is inherently distinctive, aside
`
`from the term NUTRITION, which is merely generic or descriptive.
`
`Plaintiff has
`
`disclaime,dany1ightsJn_the_terml§LUIRUIIQhLinl.I.S_Reg_NQ. 3,Q69,2?;Q
`
`10.
`
`Plaintiffs ARNOLD NUTRITION Mark has acquired secondary meaning
`
`among consumers in the United States, who identify the ARNOLD NUTRITION Mark
`
`and the products produced thereunder solely with Plaintiff.
`
`11.
`
`Plaintiff enjoys a fine reputation and a high level of goodwill among
`
`consumers throughout the United States in connection with the products sold under
`
`Plaintiffs ARNOLD NUTRITION Mark.
`
`DEFEN_DANT’S INFRINGING ARNOLD SCHWARZENEGGER MARK
`
`12.
`
`On August 1, 2013, Defendant filed an application to register the mark
`
`ARNOLD
`
`SCHWARZENEGGER
`
`(hereinafter
`
`“Defendant’s
`
`ARNOLD
`
`SCHWARZENEGGER Mar ” or “the ARNOLD SCHWARZENEGGER Mark”) with
`
`the U.S. Patent and Trademark Office in connection with “dietary and nutritional
`
`supplements.” A copy of a printout of the details of this application from the U.S. Patent
`
`and Trademark Office is attached as Exhibit 2 and by this reference is incorporated
`
`herein.
`
`13.
`
`Defendant claims to have an agreement with the bodybuilder and former
`
`California
`
`governor
`
`‘Arnold Schwarzenegger
`
`allowing Defendant
`
`to
`
`use Mr.
`
`mm IANAN INGL-‘RSOLL 8. RODNEY PC :: Miami Tower ::
`
`loo s,E. Second Street, suite 3500 2: Miami, FL 33131-2148 1: T 305 347 40130 :: F 305 347 4089
`
`3
`
`

`
`Case 1:14-cv—22477-RNS Document 1 Entered on FLSD Docket 07/03/2014 Page 4 of 14
`
`Schwarzenegger’s name and likeness in connection with various goods and services,
`
`including dietary and nutritional supplements.
`
`14.
`
`Defendant’s Application Serial No. 86/026,727 was based on Defendant’s
`
`intent to use the ARNOLD SCHWARZENEGGER Mark in connection with dietary and
`
`nutritional supplements. Defendant has not yet used the mark in connection with these
`
`p1:oducts-aLthe_time.im.1ed,the.app1ication.
`
`15.
`
`Defendant subsequently filed an Amendment to Allege Use in connection
`
`with Application Serial No. 86/026,727, claiming that it began using the ARNOLD
`
`SCHWARZENEGGER Mark in commerce on October 2, 2013.
`
`16.
`
`Upon information and belief, Defendant
`
`is continuing to use the
`
`ARNOLD SCHWARZENEGGER Mark in commerce, including within the Southern
`
`District of Florida.
`
`17.
`
`Defendant’s ARNOLD SCHWARZENEGGER Mark is highly similar to
`
`Plaintiffs previously registered ARNOLD NUTRITION Mark in appearance,
`
`pronunciation, and commercial
`
`impression.
`
`The additional
`
`term NUTRITION in
`
`Plaintiffs ARNOLD NUTRITION Mark does not serve to distinguish the marks, as this
`
`term is merely descriptive or generic.
`
`18.
`
`The
`
`goods
`
`sold
`
`by Defendant
`
`under Defendant’s ARNOLD
`
`SCHWARZENEGGER Mark are identical to the goods sold by Plaintiff under Plaintiff’ s
`
`ARNOLD NUTRITION Mark.
`
`19.
`
`The
`
`goods
`
`sold
`
`by Defendant
`
`under Defendant’s ARNOLD
`
`SCI-IWARZENEGGER Mark are marketed and sold to the same types of consumers as
`
`the goods sold by Plaintiff under Plaintiffs ARNOLD NUTRITION Mark.
`
`UUCHANAN INGEIISOLL 8: RODNEY PC :: Miami rower 2: 100 5.15. Second Slmol, Suite 3500 :2 Miami. FL 33131-2148 1: T 305 347 11080 :2 F 305 347 11089
`
`

`
`Case 1:14-cv—22477-RNS Document 1 Entered on FLSD Docket 07/03/2014 Page 5 of 14
`
`20.
`
`The
`
`goods
`
`sold
`
`by Def