throbber
Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA730000
`
`Filing date:
`
`02/28/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91223944
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`VeriFone, Inc.
`
`TODD BRAVERMAN
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`1500 BROADWAY, 12TH FLOOR
`NEW YORK, NY 10036
`UNITED STATES
`tm-uspto@pearlcohen.com
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Motion to Suspend for Civil Action
`
`Todd Braverman
`
`tm-uspto@pearlcohen.com
`
`/tjbraverman/
`
`02/28/2016
`
`Motion to SUSPEND - VERIFONE - POYNT - February 28, 2016.pdf(36145
`bytes )
`Verifone v. Poynt - Complaint.pdf(91810 bytes )
`Verifone v Poynt - Exhibits A - G.pdf(4874576 bytes )
`Verifone v Poynt - Coversheet.pdf(71724 bytes )
`Verifone v Poynt - Report to PTO.pdf(17493 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`
`VERIFONE, INC.,
`
`
`
`Opposition No. 91223944
`Application Serial No. 86/424,322
`Mark: POYNT
`
`: : : : : : : : : :
`
`
`:
`:
`
`Opposer,
`
`v.
`
`Applicant.
`
`
`
`
`
`
`
`POYNT CO.,
`
`
`
`: :
`
`
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`
`
`OPPOSER’S MOTION TO SUSPEND OPPOSITION PROCEEDING
`WITHOUT CONSENT OF APPLICANT
`
`
`Opposer VERIFONE, INC. (“Opposer”) hereby respectfully requests the
`
`Trademark Trial & Appeal Board suspend proceedings against Applicant Poynt Co.
`
`(“Applicant”) in Opposition No. 91223944 pending the resolution of Civil Action No. 1:16-
`
`cv-00105-UNA (“Complaint”), filed and served by Opposer against Applicant in the U.S.
`
`District Court for the District of Delaware, on February 24, 2016, attached as Exhibit A.
`
`In the Complaint, Opposer asserts that Applicant’s POYNT mark, the subject of
`
`the present Opposition, U.S. Application Serial No. 86424322, for “computer hardware;
`
`computer software to allow users to accept financial payments through multiple means,”
`
`in International Class 09 infringes two of Opposer’s U.S. trademark registrations for the
`
`marks VERIFONE POINT, U.S. Registration No. 4844307 and POINT., U.S.
`
`

`
`Registration No. 4844308. The Complaint also asserts causes of action for false
`
`designation of origin, cybersquatting, and state law claims under Delaware state law.
`
`37 C.F.R. § 2.117 provides that: “Whenever 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 or the other Board
`
`proceeding.”
`
`TMEP Section 510.02(a) states that “most commonly, a request to suspend
`
`pending the outcome of another proceeding seeks suspension because of a civil action
`
`pending between the parties in a federal district court. To the extent that a civil action in
`
`a federal district court involves issues in common with those in a proceeding before the
`
`Board, the decision of the federal district court is often binding upon the Board, while the
`
`decision of the Board may not be binding upon the court.” See, e.g., Goya Foods Inc. v.
`
`Tropicana Products Inc., 846 F.2d 848, 6 USPQ2d 1950, 1954 (2d Cir. 1988) (doctrine
`
`of primary jurisdiction might be applicable if a district court action involved only the issue
`
`of registrability, but would not be applicable where court action concerns infringement
`
`where the interest in prompt adjudication far outweighs the value of having the views of
`
`the USPTO).
`
`Suspension of a Board proceeding pending the final determination of another
`
`proceeding is solely within the discretion of the Board; the court in which a civil action is
`
`pending has no power to suspend proceedings in a case before the Board. See
`
`Opticians Association of America v. Independent Opticians of America Inc., 734 F.
`
` - 2 -
`
`

`
`Supp. 1171, 14 USPQ2d 2021 (D.N.J. 1990) (district court has no control over Board
`
`docket and no power to stay Board proceedings), rev’d on other grounds, 920 F.2d 187,
`
`17 USPQ2d 1117 (3d Cir. 1990).
`
`Further, unless there are unusual circumstances, the Board will suspend
`
`proceedings in the case before it if the final determination of the other proceeding may
`
`have a bearing on the issues before the Board. See, e.g., New Orleans Louisiana
`
`Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (civil action need
`
`not be dispositive of Board proceeding, but only needs to have a bearing on issues
`
`before the Board);
`
`The present Opposition should be stayed, because, inter alia, the Complaint
`
`raises issues that are central to the pending Opposition. The trademark infringement
`
`issues before the U.S. District Court, District of Delaware are equivalent and overlap the
`
`issues before the TTAB, namely, that Applicant’s use and registration of the POYNT
`
`mark, U.S. Application Serial No. 86/424,322, creates a likelihood of confusion and
`
`infringes Opposer’s prior U.S. registrations for VERIFONE POINT and POINT., U.S.
`
`Registration Nos. 4844307 and 4844308. For example, the Complaint bears directly on
`
`the issue of registrability of Applicant’s POYNT mark, because a central element in the
`
`Complaint is whether there is likelihood of confusion between Applicant’s POYNT mark,
`
`and Opposer’s registered trademarks. That issue is common to the present Opposition,
`
`insofar as if Opposer prevails on the likelihood of confusion, Applicant’s POYNT mark is
`
`not entitled to registration.
`
` - 3 -
`
`

`
`For the above reasons, Opposer respectfully submits that the TTAB suspend
`
`Opposition No. 91223944 pending the disposition of Civil Action No. Civil Action No.
`
`1:16-cv-00105-UNA. Moreover, Opposer is filing this motion in good faith and submits
`
`that it did not delay unduly in filing this Motion to Suspend.
`
`Accordingly, based on the above, Opposer requests that its Motion to Suspend
`
`be GRANTED.
`
`Respectfully submitted,
`
`PEARL COHEN ZEDEK LATZER BARATZ LLP
`Attorneys for Opposer
`
`
`
`By: ________________________________
`
`Todd Braverman
` 1500 Broadway, 12th Floor
` New York, New York 10036
` (646) 878-0820
`
`Date: February 28, 2016
`
`
` - 4 -
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`
`VERIFONE, INC.,
`
`
`
`Opposition No. 91223944
`Application Serial No. 86/424,322
`Mark: POYNT
`
`: : : : : : : : : :
`
`
`:
`:
`
`Opposer,
`
`v.
`
`Applicant.
`
`
`
`
`
`
`
`POYNT CO.,
`
`
`
`: :
`
`
`
`- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - x
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that a copy of the foregoing “OPPOSER’S MOTION TO SUSPEND
`OPPOSITION PROCEEDING WITHOUT CONSENT OF APPLICANT” was e-mailed
`per stipulation between the parties to Julia Gard, Esq., Barnes & Thornburg, attorneys
`for Applicant, at BARNES & THORNBURG LLP, 11 South Meridian Street, Indianapolis,
`IN 46204-3535 at the following e-mail addresses: jgard@btlaw.com and
`TMINDocket@btlaw.com, on this 28th day of February 2016.
`
`
`Date: February 28, 2016
`
`
`
`
`By: ________________________________
`
`Todd Braverman Esq.
`
`
`
` - 5 -
`
`

`
`EXHIBIT A
`EXHIBIT A
`
` - 6 -
`
`

`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`
`
`
`
`
`
`
`) ) ) ) ) ) ) ) )
`
`VERIFONE, INC.,
`
`Plaintiff,
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`POYNT CO.,
`
`
`
`
`
`Defendant.
`
`
`
`C.A. No.
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`COMPLAINT
`
`Plaintiff VeriFone, Inc. (“Plaintiff” or “Verifone”), by its undersigned attorneys, as and
`
`for its complaint against Defendant Poynt Co. (“Defendant” or “Poynt”) alleges as follows:
`
`INTRODUCTORY STATEMENT
`
`1.
`
`Verifone is a global leader in electronic payment technology, including credit card
`
`reader terminals, software for credit card reader payment terminals, electronic payment
`
`transaction processing systems, and associated services.
`
`2.
`
`In 2013, Verifone launched POINT., an electronic payment platform that
`
`integrates various complex payment technologies in addition to credit cards, including emerging
`
`payment technologies, mobile wallets, loyalty, rewards, and EMV (the payment standard created
`
`by Europay, MasterCard, and Visa), in the United States.
`
`3.
`
`Verifone invested a great deal of resources in creating, advertising, and marketing
`
`the POINT. brand, and building public goodwill associating the POINT. mark with Verifone’s
`
`high quality electronic payment products and services.
`
`4.
`
`VERIFONE POINT® and POINT.® are federally registered trademarks owned
`
`by Verifone.
`
`

`
`5.
`
`In 2015, well after Verifone launched POINT., Defendant Poynt launched its
`
`Poynt Smart Terminal, which is marketed as a “multipurpose device that combines the unlimited
`
`versatility of mobile with the latest in payments technology to create a future-proof terminal for
`
`the connected commerce era.”
`
`6.
`
`Defendant filed a U.S. trademark application for the POYNT name, which
`
`Verifone opposed.
`
`7.
`
`Defendant Poynt and the Poynt Smart Terminal compete directly with Verifone
`
`and Verifone’s POINT. products and services, and consumers are likely to be confused and
`
`incorrectly believe that Verifone is the source of Poynt’s products and services.
`
`8.
`
`Concerned about the high likelihood of confusion among consumers between
`
`Defendant’s Poynt Smart Terminal and Plaintiff’s VERIFONE POINT and POINT. marks for
`
`highly similar goods and services, Verifone made efforts to communicate with Poynt in an
`
`attempt to resolve the issue, but Poynt refused to discuss resolving this dispute amicably.
`
`Verifone is therefore left without redress and files this complaint to avoid confusion by
`
`consumers and for damages and an injunction to protect its investment and goodwill in its
`
`VERIFONE POINT and POINT. trademarks.
`
`NATURE OF THE ACTION
`
`9.
`
`This is an action for:
`
`(i)
`
`trademark infringement under 15 U.S.C. § 1114;
`
`(ii)
`
`false designation of origin under 15 U.S.C. § 1125(a);
`
`(iii)
`
`cybersquatting under 15 U.S.C. §1125(d);
`
`(iv)
`
`trademark dilution under 6 Del. C. § 3301 et seq.;
`
`(v)
`
`statutory unfair competition under 6 Del. C. § 2531 et seq.;
`
`2
`
`

`
`(vi)
`
`(vii)
`
`trademark infringement and unfair competition under Delaware common
`law; and
`
`unjust enrichment under Delaware common law.
`
`JURISDICTION AND VENUE
`
`10.
`
`The Court has subject matter jurisdiction in this action under 28 U.S.C. § 1331
`
`and 28 U.S.C. § 1338(a) because the action arises under the Federal Trademark Act, 15 U.S.C. §
`
`1051 et seq. The Court has supplemental jurisdiction over the state law claims asserted in this
`
`action under 28 U.S.C. § 1367 because those claims are so related to the claims arising under the
`
`Federal Trademark Act, 15 U.S.C. § 1051 et seq., that they form part of the same case and
`
`controversy under Article III of the United States Constitution. Jurisdiction over the state law
`
`causes of action is also proper under 28 U.S.C. § 1338(b) because claims of unfair competition
`
`are joined with substantial and related claims under the Federal Trademark laws.
`
`11.
`
`Personal jurisdiction is proper in this District because Defendant is incorporated
`
`in Delaware.
`
`12.
`
`Venue is proper in this District at least under 28 U.S.C. § 1391(b)(1) because
`
`Defendant is incorporated, and therefore resides, in Delaware.
`
`THE PARTIES
`
`13.
`
`Plaintiff, VeriFone, Inc., is a Delaware corporation with its principal place of
`
`business located at 88 West Plumeria Drive, San Jose, CA 95134.
`
`14.
`
`Upon information and belief, Defendant, Poynt Co., is a Delaware corporation
`
`with its principal place of business at 490 S. California Avenue, #200, Palo Alto, CA 94306.
`
`3
`
`

`
`FACTS
`
`Introduction
`
`15.
`
`Verifone is a publicly traded company and a global leader in the fields of
`
`electronic payments, financial transaction services and electronic credit card reader payment
`
`terminals, computer software for credit card reader payment terminals, payment transaction
`
`processing systems and consulting and support services related thereto.
`
`16.
`
`Verifone is widely recognized as one of the largest companies in the field of
`
`payment transaction processing systems, with total revenues of approximately $8.7 billion during
`
`the five years ending October 31, 2015, including $2.0 billion in its last fiscal year alone.
`
`17.
`
`In January 2012, Verifone acquired Point, Northern Europe’s largest provider of
`
`payment and gateway services and solutions for retailers. Verifone announced that it intended to
`
`extend the Point platform throughout the region and beyond, with the aim of creating the world's
`
`largest infrastructure for rapid deployment of alternative payments.
`
`18.
`
`In mid-2013, Verifone launched Point., a payment-as-a-service solution that
`
`simplifies the complexities of payment, in the United States.
`
`19.
`
`Verifone continues to develop, manufacture, distribute, and market a wide variety
`
`of technologies under the names VERIFONE, VERIFONE POINT, and POINT. throughout the
`
`United States, including electronic payment systems and services, such as computer hardware
`
`and software for use in connection with electronic credit card readers and payment services.
`
`The VERIFONE POINT Mark Is Protected by Federal Registration
`
`20.
`
`On or about May 28, 2013, Verifone commenced use of the mark VERIFONE
`
`POINT in U.S. commerce in connection with Payments as a Service, namely, providing:
`
`electronic processing of credit card transactions and electronic payments via a
`global computer network;
`
`4
`
`

`
`consulting services in the fields of electronic processing of credit card
`transactions, electronic payments and financial management of electronic
`processing of credit card transactions and electronic payments via a global
`computer network and consulting services in the field of information
`technology that enables electronic processing of credit card transactions
`and electronic payments via a global computer network; and
`
`
`consulting services in the field of computer system security in relation to
`electronic processing of credit card transactions and electronic payments
`via a global computer network.
`
`
`On December 31, 2014, Verifone filed a use-based trademark application for the
`
`21.
`
`mark VERIFONE POINT with the United States Patent and Trademark Office (“USPTO”),
`
`claiming a date of first use and first use in commerce at least as early as May 28, 2013, in
`
`connection with the listed services.
`
`22.
`
`The trademark application for the mark VERIFONE POINT was assigned U.S.
`
`Application Serial No. 86493167, and published for opposition on August 18, 2015.
`
`23.
`
`On November 3, 2015, the USPTO issued Verifone U.S. Registration No.
`
`4844307 for the mark VERIFONE POINT for the goods and services listed in the certificate of
`
`registration, attached as Exhibit A, the contents of which are incorporated by reference herein.
`
`The POINT. Mark Is Protected by Federal Registration
`
`24.
`
`On or about May 28, 2013, Verifone commenced use of the mark POINT. in U.S.
`
`commerce in connection with:
`
`computer programs for use in transaction processing and financial applications;
`
`computer programs for use with printers, scanners, card readers, data capture
`devices, electronic and magnetic data sensors and computer peripherals;
`computer software for use in financial transactions retrieving data from
`and communications with electronic cash registers, point of sale terminals,
`computer peripherals and data entry and inquiry terminals for operations
`management and for processing and transferring credit and debit card
`transactions, payments and financial data and other data presented thereto,
`for retail, wholesale and service industry applications, for retail chains and
`outlets,
`superstores, department
`stores, hospitality and general
`
`5
`
`

`
`merchandise industry applications and computer software for such
`terminals;
`
`
`computer software for controlling a point of sale (POS) terminal configuration
`and parameters, and for collecting and managing data from the point of
`sale;
`
`
`computer software for use in debit card, credit card, smart card, loyalty card and
`secure payment
`transaction processing, financial applications, and
`electronic transfer of financial data;
`
`
`computer software for use in financial, credit card, smart card, debit card, and
`electronic transaction security;
`
`
`computer software for use in connecting a store computer to internet websites for
`credit card processing and e-commerce;
`
`
`computer software for use in secured transmission of information, including credit
`card details;
`
`
`computer program use for management and processing of secured transaction
`over the internet;
`
`
`computer program for management of invoices and debit notes;
`
`computer program for management of crediting and cancellation of financial
`transactions;
`
`
`communication software used to enable users to exchange and transfer data
`between two different handheld computers, portable computers or
`computer stations;
`
`
`communication software used to enable users to exchange and transfer data
`between two different handheld computers, portable computers or
`computer stations;
`
`
`computer software for use
`transactions;
`
`in multichannel electronic payment financial
`
`
`computer software for use in secure payment transaction; and
`
`computer software for use in secure electronic commerce, Payments as a Service,
`(PaaS) namely, providing electronic processing of credit card transactions
`and electronic payments via a global computer network and related
`consulting services in the fields of electronic processing of credit card
`transactions, electronic payments and financial management of electronic
`
`6
`
`

`
`processing of credit card transactions and electronic payments via a global
`computer network.
`
`
`On December 31, 2014, Verifone filed a use-based trademark application for the
`
`25.
`
`mark POINT. with the USPTO, claiming a date of first use and first use in commerce at least as
`
`early as May 28, 2013, in connection with the listed goods and services.
`
`26.
`
`The trademark application for the mark POINT. was assigned U.S. Application
`
`Serial No. 86493174, and published for opposition on August 18, 2015.
`
`27.
`
`On November 3, 2015, the USPTO issued Verifone U.S. Registration No.
`
`4844308 for the mark POINT. for the goods and services listed in the certificate of registration,
`
`attached as Exhibit B, the contents of which are incorporated by reference herein.
`
`Verifone’s Continuous Use of the VERIFONE POINT and POINT. Marks
`
`28.
`
`Since at least as early as May 28, 2013, Verifone has continuously advertised,
`
`marketed, distributed, and sold a payment management solution featuring computer software,
`
`consultation services, and Verifone terminal devices in the field of payment transaction
`
`processing systems throughout the United States under the VERIFONE POINT and POINT.
`
`marks. Attached as Exhibit C are excerpts from Verifone’s marketing and advertising material.
`
`29.
`
`Verifone’s POINT. mark appears prominently on display screens generated by
`
`Verifone’s electronic payment terminals. Attached as Exhibit D are photographs of the POINT.
`
`mark appearing on screens of Verifone’s electronic payment terminals.
`
`30.
`
`The VERIFONE POINT and POINT. marks appear prominently on Verifone’s
`
`web pages, advertisements, and marketing material.
`
`31.
`
`Verifone has prominently displayed the VERIFONE POINT and POINT. marks
`
`at various trade shows throughout the United States.
`
`7
`
`

`
`32.
`
`Since at least as early as October 2013, Verifone’s web site has featured the
`
`VERIFONE POINT and POINT. marks.
`
`The VERIFONE POINT and POINT. Marks Are
`Strong and Have Acquired Distinctiveness
`
`The VERIFONE POINT and POINT. marks are strong and entitled to a broad
`
`33.
`
`scope of protection for payment transaction processing systems and related computer software
`
`and consultation services.
`
`34.
`
`Verifone has continuously used the VERIFONE POINT and POINT. marks
`
`throughout the United States for almost three years.
`
`35.
`
`Verifone has devoted and currently devotes significant resources to its
`
`promotional efforts of the VERIFONE POINT and POINT. marks throughout the United States.
`
`36.
`
`Verifone has conducted and currently conducts substantial national and local
`
`advertising and promotion featuring the VERIFONE POINT and POINT. marks.
`
`37.
`
`Through Verifone’s substantially exclusive and continuous use and promotion,
`
`the VERIFONE POINT and POINT. marks have further become distinctive and uniquely
`
`associated with Verifone for payment transaction processing systems and related computer
`
`software and consultation services, and has acquired distinctiveness based upon extensive sales
`
`and advertising and continuous use for almost three years.
`
`38.
`
`Based upon Verifone’s exclusive and continuous use of the VERIFONE POINT
`
`and POINT. marks for almost three years, Verifone’s extensive sales of payment transaction
`
`processing systems and related computer software and consultation services, and Verifone’s
`
`substantial resources allocated to marketing, advertising and promoting the VERIFONE POINT
`
`and POINT. marks, Plaintiff’s VERIFONE POINT and POINT. marks have acquired
`
`8
`
`

`
`distinctiveness and secondary meaning in the trade and among relevant consumers throughout
`
`the United States.
`
`39.
`
`The goodwill in connection with Plaintiff's VERIFONE POINT and POINT.
`
`marks is strong and well developed and the reputation of Plaintiff’s VERIFONE POINT and
`
`POINT. marks is excellent and well recognized throughout the payment transaction processing
`
`systems trade and by the general public.
`
`40.
`
`Plaintiff’s VERIFONE POINT and POINT. marks are well known throughout the
`
`United States as a source of origin for Verifone’s payment transaction processing systems
`
`products and services.
`
`41.
`
`Verifone’s payment transaction processing systems products and services bearing
`
`the VERIFONE POINT and POINT. marks are advertised and marketed extensively throughout
`
`the United States. Verifone has and continues to expend substantial resources establishing the
`
`VERIFONE POINT and POINT. marks in the minds of consumers as a source of payment
`
`transaction processing systems products and services.
`
`42.
`
`Today, the VERIFONE POINT and POINT. marks have become associated in the
`
`minds of purchasers as designations for Verifone’s high quality payment transaction processing
`
`systems products and services.
`
`Poynt’s Recent Founding and Acquisition of the Previously Unrelated POYNT Website
`
`43.
`
`Upon information and belief, Defendant Poynt Co. was very recently founded to
`
`operate in the field of payment transaction processing products and services. Attached as
`
`Exhibit E are excerpts from Defendant’s website and Apple iTunes App Store dated February
`
`19, 2016.
`
`9
`
`

`
`44.
`
`Upon information and belief, sometime in mid-2015, Defendant Poynt acquired
`
`the domain name www.poynt.com from Poynt, Inc., a Canadian company located at 64 Jardin
`
`Drive, Unit 2/A Concord, Ontario, Canada L4K3P3.
`
`45.
`
`Upon information and belief, Poynt, Inc. provided technology for mobile local
`
`search and advertising.
`
`46.
`
`Upon information and belief, Poynt, Inc. used the domain name www.poynt.com
`
`in connection with a local mobile search computer application that allow users to request text,
`
`graphics, mapping, audio, video and audio-video content from, and receive such content to,
`
`Internet enabled devices.
`
`47.
`
`Upon information and belief, as of May 2015, the domain name www.poynt.com
`
`was still being used in connection with Poynt, Inc.’s mobile search product. Attached as Exhibit
`
`F is an excerpt from the Internet Archive entry for the web site www.poynt.com dated May 6,
`
`2015.
`
`48.
`
`Upon information and belief, in late 2015, the domain name www.poynt.com
`
`began to be used by Defendant Poynt to market and advertise the goods and services associated
`
`with Poynt Smart Terminal, described further below. Attached as Exhibit G is an excerpt from
`
`the Internet Archive entry for the web site www.poynt.com dated September 6, 2015.
`
`49.
`
`Upon information and belief, at the time Defendant Poynt acquired the domain
`
`name www.poynt.com, it knew or should have known that Verifone was already using the marks
`
`VERIFONE POINT and POINT. in connection with substantially the same goods and services
`
`that Defendant Poynt intended to market on the website.
`
`10
`
`

`
`Defendant’s Trademark Application for the POYNT Name
`
`50.
`
`Upon information and belief, Defendant Poynt commenced use of the POYNT
`
`name in connection with computer hardware, namely credit card readers and computer software
`
`used for payment transaction services, no earlier than September 2015.
`
`51.
`
`On or about October 15, 2014, Defendant filed an intent-to-use (“ITU”)
`
`trademark application with the USPTO for the name POYNT in connection with “computer
`
`hardware; computer software to allow users to accept financial payments through multiple
`
`means,” in International Class 09.
`
`52.
`
`The application was assigned U.S. Application Serial No. 86424322 and
`
`subsequently published for opposition on August 25, 2015.
`
`53.
`
`On September 22, 2015, Verifone filed a Notice of Opposition against POYNT’s
`
`U.S. Application Serial No. 86424322 with the Trademark Trial & Appeal Board (“TTAB”),
`
`which assigned the matter Opposition No. 91223944. Poynt answered the Notice of Opposition
`
`on October 28, 2015 and the Opposition is pending.
`
`Defendant’s Use of the Confusingly Similar POYNT Mark in Commerce
`
`54.
`
`Upon information and belief, Defendant commercially released an electronic
`
`credit card payment reader and associated computer software under the POYNT name in or
`
`about as September or October 2015 and currently sells, distributes and markets products and
`
`services under the POYNT name throughout the United States.
`
`55.
`
`Defendant’s POYNT name is and/or incorporates a substantially identical and
`
`confusingly similar variation of Plaintiff’s VERIFONE POINT and POINT. marks.
`
`56.
`
`Upon information and belief, Defendant’s marketing materials and product
`
`packaging associated with the Poynt Smart Terminal, which are distributed throughout the
`
`11
`
`

`
`United States, prominently feature the POYNT name in connection with credit card payment
`
`reader and associated computer software.
`
`57.
`
`Upon information and belief, Defendant adopted the POYNT name after
`
`Verifone’s date of first use and first use in commerce of the VERIFONE POINT and POINT.
`
`marks, i.e., May 28, 2013.
`
`58.
`
`Defendant’s web site www.poynt.com prominently features the POYNT name in
`
`connection with credit card payment reader and associated computer software.
`
`59.
`
`Defendant’s Apple App Store listing prominently features the POYNT name in
`
`connection with credit card payment reader computer software applications.
`
`60.
`
`Defendant’s products and services bearing the POYNT name are highly similar to
`
`products and services sold by Plaintiff under the VERIFONE POINT and POINT. marks. Such
`
`products and services are marketed to the same or similar consumers, retail merchants, and
`
`professionals through similar channels of trade.
`
`61.
`
`Defendant’s use, distribution and sale of products and services bearing the
`
`POYNT name create the false and deceptive commercial impression that Verifone sponsors, is
`
`affiliated with, or in some manner endorses Defendant’s products and services.
`
`62.
`
`Defendant’s use of the POYNT name, which is substantially similar to Plaintiff’s
`
`VERIFONE POINT and POINT. marks, is likely to cause confusion, initial interest confusion,
`
`mistake, and/or deception of purchasers as to the source, sponsorship and affiliation of
`
`Defendant’s products and services.
`
`63.
`
`Consumers, retail merchants, and industry professionals are likely to believe that
`
`Verifone is sponsoring, approving of, and/or affiliated with Defendant, thereby resulting in the
`
`possibility that Verifone will lose actual and/or potential sales to Defendant, damaging Plaintiff’s
`
`12
`
`

`
`VERIFONE POINT and POINT. marks and the goodwill associated with Plaintiff’s VERIFONE
`
`POINT and POINT. marks.
`
`64.
`
`Defendant’s use of the POYNT name on the Poynt Smart Terminal and other
`
`branded products and services will dilute and tarnish the distinctive quality of Plaintiff’s
`
`VERIFONE POINT and POINT. marks and brands, thereby damaging Plaintiff’s VERIFONE
`
`POINT and POINT. marks and the goodwill associated with such marks.
`
`65.
`
`Defendant’s use of the www.poynt.com domain name infringes Plaintiff’s
`
`VERIFONE POINT and POINT. marks and brands, thereby damaging Plaintiff’s VERIFONE
`
`POINT and POINT. marks.
`
`66.
`
`Upon information and belief, Defendant’s first use in commerce of the POYNT
`
`name was long after the date of Verifone’s first use of the VERIFONE POINT and POINT.
`
`marks, and Defendant has been and is fully aware of Plaintiff’s continuous use of the
`
`VERIFONE POINT and POINT. marks prior to Defendant’s first use in commerce of the
`
`POYNT name.
`
`67.
`
`Verifone requests that this Court prevent Defendant from continuing its damaging
`
`conduct by creating and continuing to create confusion, public deception, domain name
`
`infringement, and dilution of the VERIFONE POINT and POINT. marks.
`
`COUNT I
`(Infringement of a Registered Trademark in Violation of 15 U.S.C. § 1114(1)(a))
`
`Plaintiff repeats and realleges the allegations contained in paragraphs 1 through
`
`68.
`
`67 of this Complaint.
`
`69.
`
`As noted above, Plaintiff owns U.S. Registration No. 4844307 for the mark
`
`VERIFONE POINT and U.S. Registration No. 4844308 for the mark POINT. for the listed
`
`goods and services.
`
`13
`
`

`
`70.
`
`Defendant’s prominent use of its POYNT name, which is nearly identical to
`
`Plaintiff’s VERIFONE POINT and POINT. marks, is likely to cause and/or has caused
`
`confusion, mistake, and deception of purchasers as to the source of origin of Defendant’s goods
`
`and services.
`
`71.
`
`The infringement of these marks by Defendant has been willful and deliberate,
`
`designed specifically to trade upon the goodwill of Plaintiff’s VERIFONE POINT and POINT.
`
`marks, all associated with Plaintiff's excellent reputation.
`
`72.
`
`The goodwill of Verifone’s business under Plaintiff’s VERIFONE POINT and
`
`POINT. marks is of significant value, and Plaintiff has suffered and will continue to suffer
`
`irreparable harm and injury should infringement be allowed to continue to the detriment of
`
`Plaintiff's trade reputation and goodwill.
`
`73.
`
`Defendant’s infringement, if continued, will cause Verifone irreparable harm
`
`unless enjoined by this Court.
`
`COUNT II
`(False Designation of Origin in Violation of 15 U.S.C. § 1125(a))
`
`Plaintiff repeats and realleges the allegations contained in Paragraphs 1 through
`
`74.
`
`73 of this Complaint.
`
`75.
`
`Defendant’s prominent use of the POYNT name in connection with the same
`
`products and services as Verifone’s constitutes a false designation of origin or false or
`
`misleading representation of fact which is likely to cause confusion, or to cause mistake, or to
`
`deceive as to the affiliation, connection or association of Defendant with Plaintiff’s VERIFONE
`
`POINT and POINT. marks, and/or as to the origin, sponsorship or approval of Defendant’s
`
`commercial activities by Verifone, and as a consequence are likely to divert customers away
`
`from Verifone.
`
`14
`
`

`
`76.
`
`Verifone has no control over the nature and quality of Defendant’s goods and
`
`services. Any failure, neglect or default by Defendant in providing such goods or services will
`
`reflect adversely on Verifone as the believed source of origin thereof, hampering efforts by
`
`Verifone to continue to protect its outstanding reputation for high quality goods and services,
`
`resulting in loss of sales thereof and the considerable expenditure to promote its products and
`
`services under the VERIFONE POINT and POINT. marks, all to the irreparable harm of
`
`Plaintiff.
`
`77.
`
`Defendant’s’ use of the POYNT name has caused and is likely to cause confusion
`
`and false designation of origin in the trade and among the public. This confusion constitutes
`
`irreparable harm and injury to Plaintiff, which will continue unless Defendant is enjoined by this
`
`Cour

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