Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA745816
`
`Filing date:
`
`05/11/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91227176
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Defendant
`Weber Luke Alliance
`
`JASON P. WEBB
`JP Webb
`1204 W South Jordan Pkwy Ste B2
`South Jordan, UT 84095-4641
`
`dok@jpwebb.us;mariella@jpwebb.us
`
`Motion to Suspend for Civil Action
`
`Jason P. Webb
`
`dok@jpwebb.us
`
`/Jason P. Webb/
`
`05/11/2016
`
`Attachments
`
`Motion to Suspend R.pdf(1220836 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`APPLICANT’S MOTION TO SUSPEND
`OPPOSITION PROCEEDING PENDING
`OUTCOME OF PENDING CIVIL
`ACTION IN FEDERAL DISTRICT
`COURT
`
`
`Opposition No.: 91227176
`Serial. No.: 86686620
`Mark: ROLLERBALL
`International Class: 016
`Filed : July 8, 2015
`
`
`
`
`
`Studio IC Inc.,
`
`Opposer,
`
`
`v.
`
`
`Weber Luke Alliance LLC,
`
`Applicant.
`
`
`
`
`
`
`MOTION TO SUSPEND
`
`Applicant, Weber Luke Alliance, LLC (“Applicant”), by and through its counsel, submits
`
`this motion pursuant to Trademark Rule 2.117(a) and TBMP section 510.02(a) and asks the
`
`Board to suspend this proceeding pending the outcome of a trademark infringement action that
`
`Applicant has filed against Studio IC Inc. (“Opposer”) in the United States District Court for the
`
`District of Utah, Central Division.
`
`
`
`The present opposition proceeding is but one aspect of an ongoing and much broader
`
`dispute between Opposer and Applicant regarding the “ROLLERBALL” trademark. The present
`
`proceeding simply addresses Applicant’s ability to register the trademark “ROLLERBALL.”
`
`On May 10, 2016, Applicant here filed an action for trademark infringement, unfair
`
`competition and declaratory relief, among other causes of action, against Opposer in the United
`
`States District Court for Utah (the “District Court Action”). A true and correct copy of
`
`Applicant’s complaint and related pleadings in the District Court Action are submitted herewith
`
`1
`
`
`
`

`
`as Exhibit A. As discussed below, Applicant’s complaint in the District Court Action asserts
`
`claims that raise the same issues as the present proceeding, specifically the Fifth Cause of Action
`
`requests the District Court to rule on this present opposition. Moreover, as the Board is aware,
`
`the decision on such issues in the District Court Action will be binding in – indeed likely
`
`dispositive of – the present proceeding. Accordingly, Applicant respectfully submits that this
`
`proceeding should be suspended pursuant to Trademark Rule 2.117(a) and TBMP section
`
`510.02(a) pending the outcome of the District Court Action.
`
`Trademark Rule 2.117(a), 37 C.F.R. § 2.117(a), and TBMP section 510.02(a) both
`
`provide that “[w]henever it shall come to the attention of the Trademark Trial and Appeal Board
`
`that a party or parties to a pending case are engaged in a civil action or another Board proceeding
`
`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.” As explained in TBMP section
`
`510.02(a): 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 is not binding upon the court.
`
`The situation addressed in Trademark Rule 2.117(a) and TBMP section 510.02(a) is the
`
`exact situation presented here. Applicant’s complaint in the District Court Action also will
`
`provide the Board with a detailed discussion of the conduct and issues addressed by the District
`
`Court Action. Where, as here, the parties to an opposition proceeding also are involved in a
`
`district court action involving the same mark or the opposed application, the Board will
`
`scrutinize the pleadings in the civil action to determine if the issues before the court may have a
`
`
`
`2
`
`

`
`bearing on the Board’s decision in the opposition proceeding. [New Orleans Saints LLC and
`
`NFL Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011).] This is so because a
`
`decision by the district court may be binding on the Board whereas a determination by the Board
`
`as to an applicant’s right to obtain a registration would not be binding or have any res judicata or
`
`collateral estoppel effect in the district court action. [Whopper-Burger, Inc. v. Burger King
`
`Corp., 171 USPQ 805 (TTAB 1971).] It is critical to understand and remember that the civil
`
`action does not have to be dispositive of the Board proceeding to warrant suspension, it need
`
`only have a bearing on the issues before the Board. [New Orleans Saints LLC and NFL
`
`Properties LLC v. Who Dat?, Inc., 99 USPQ2d 1550 (TTAB 2011).] Consequently, as explained
`
`by Professor McCarthy, “[i]t is standard procedure for the Trademark Board to stay
`
`administrative proceedings pending the outcome of court litigation between the same parties
`
`involving related issues.” [6 McCarthy on Trademarks and Unfair Competition, § 32:47 (4th Ed.
`
`2011).]
`
`Applicant respectfully submits that suspension of the present opposition proceeding
`
`pending completion of the District Court Action is warranted and appropriate under Trademark
`
`Rule 2.117(a) and TBMP section 510.02(a). Simply put, there cannot be any dispute that the
`
`issues described above, which are the issues in this proceeding, also are raised and will be
`
`decided in the District Court Action. There likewise cannot be any dispute that the determination
`
`of such issues in the District Court Action will be binding and have collateral estoppel and res
`
`judicata effect in this proceeding. Accordingly, in accordance with the authorities cited above,
`
`this proceeding should be suspended pending the outcome of the District Court Action.
`
`3
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Jason P. Webb/
`Jason P. Webb
`Philip A. Matthews
`Attorneys for Applicant
`JP Webb
`1204 W South Jordan Parkway, Ste. B2
`South Jordan, UT 84095
`
`
`
`4
`
`Date: May 11, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing APPLICANT’S MOTION TO
`SUSPEND OPPOSITION PROCEEDING PENDING OUTCOME OF PENDING CIVIL
`ACTION IN FEDERAL DISTRICT COURT has this 11th day of May, 2016, been mailed by
`prepaid first class mail to Ruth Carter, Venjuris PC, 1938 E. Osborn Rd, Phoenix, AZ 85016 and
`emailed to pto_rbc@venjuris.com.
`
`/Philip A. Matthews/______________
`Philip A. Matthews
`Webb IP Law Group, PLLC
`1204 W South Jordan Parkway, Ste. B2
`South Jordan, UT 84095
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Date: 5/11/2016______________
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

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

`
`mm (Rev. II/Is)
`
`Case 2:16~cv-00389-CW Document 2-1 Filed 05/10/16 Page 1 of 1
`CIVIL COVER SHEET
`
`pmvnded
`Ioml_ rulnx uf nqun. This form. Ippvmlcd by the Judncul Can came: of III: niled Sula in
`Iallhcr I974. is ncquned for um use of the
`The 15 44 civil cover shed and III: infnnmlion nzmninod |1cn'.iI!_lIgilIIcr
`not In
`Icmcxu IIIC min and stcrvica ofpladingx or mhar pupa: as
`Mimosa u iniunung the civfl docket sheet.
`(SEE rNSI'IIUL‘l10NSON NPLITPAUE DI-'TIlISI-‘OIZMI
`I. (I)
`l’LAIN'l'll~‘I-‘S
`DEFENDANTS
`
`WEBER LUKE ALLIANCE. LLC
`STUDIO IC INC. dba E0 USAGE. dba E0 TOOLS
`
`Iul nfcuun for the
`by law. excupc as
`
`_S_AL‘[ 5555
`Cmmly ofkesldance of ram Listed Dem-auu
`(IN!/.8 Pl.AIN7'II-'FCASKSONLI’)
`NOTE‘
`IN LAND CDNDFMNATION CASES. USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`Aworncys (lflfinmvl)
`
`
`
`SALT LAKE
`lb) Cumuy ofltesidonce offim Liswd Plaintiff
`ISXIZEPTIN US. I'LAlNl'IF7" I.'ASE3I
`
`(c) Anumeys (F1nn.'Vaue. Add!-nu. mu rd-yum Nmulurj
`
`Rick L Sorensen #7631 (801) 412-4127
`I IT I‘ I O H I
`Hawkins & Sorensen. 2035 S. Milestone Drive, suite B. Salt Lake City.
`
`
`
`
`II. SASIS OF JURISDICTION [mum “A“’iu unnux Only;
`
`Cl
`I
`L'.S Gtrvalmrm
`8 3 Fdcnl Olxatiun
`Plauntifl
`IUS I34-wnmmINa!ahIrm
`
`III. CITIZENSHII’ OF PRINCIPAL PARTIES man: an "X" In one Bun[or mm-n‘/I
`(I-‘or Drverslly (‘mes Only)
`wul Ont lien [or fhfivnfimll
`FIT
`DE!‘
`PTF
`DEI-'
`I."nn=nufThisEInIn
`l'.|
`|nnuI|IunkI|nrI'nurIqII|Plac:
`D 4
`I14
`I
`Fl
`nl Business In ‘nan sun:
`
`I
`
`31 U.S.GovemmcnI
`Defmdlnl
`
`D4 Dlvutnv
`llutlimtt (.'II:xutI:¢pq[I'nr-an an Inn: III!
`
`CilIunul'And21¢rSuI:
`
`D2
`
`3 '1
`
`D 5 D5
`
`
`
`
`
`
`
`
`
`
`
`
`lamrpmunlwdhhnrpflfhw
`of (insults: In Analhrrsmz
`liulunuvrsuhjvcmflu
`D J
`3 3
`FanngnNIImn
`D II 06
`‘_
`.
`
`
`IV. NATURE OF SUIT lfluuan ~.\'~ In Om-ltnflulvl
`um. : ‘7«T:‘F:1‘-f:T.Ff'.“Z?,fl j?m‘r*'«';T-‘maij
`jxfisiaxt-7T
`
`0 1'75 I':I5cCImInslIcl
`PEISJNAI. INJURY
`PERSONAL INJURY
`O 471 Appm|28 USC I53
`D II!) Insllllwr
`
`fl J'lAOuII%n(JI UB1
`U IZOMAIIAII:
`(‘I IIOAilpInIc
`CI K5 I’c1'wlIa|IniI:ry -
`U 1111 Withdrawal
`
`5730:»
`0 I141 Miller Act
`.‘I JI5 Awflunhwhfl
`Pmlufl Lilbilily
`28 USC I51
`D 400 Sun: Rappomnnman
`I.MhvIAly
`1'‘! I67 Ilulfln Carl
`ID no Nngmnhlc hstmnanl
`(‘I 120 Axnull. Land II
`Plvumncculizl
`1 A 11 (EYE? E1 M0 /minus:
`Fl I50 Rc1:ovuyuI‘0vcq.nynIuu
`
`R Eulinancnc vflulgman
`Sllmkr
`Pvnooul Injury
`0 U0 fits and amusing
`- KN Copyviglus
`I1 ISI Mcnuunlu.-I
`.'1 no Fadenl Empk»ym'
`Producl l.iabiIny
`3 no Patent
`0 A50 consume
`0 I52 Recovay of Deliulhd
`Udlillly
`F1 MR Amman Pammll
`0 MI! 'II-ukxniri
`D W) Dcponuvcli
`Shxknx Lnans
`D 340 Marine
`lnjuly Fmfivul
`O 470 Radnnnr lnfiumca! um
`(fixcludm Vmrnns)
`6 315 Main: Pu-duct
`ummy
`-737?-1 :_ 2 {IN 7.‘ K35 $1131? IPi
`Comm Orgnianonl
`Lnmmy
`IFJISONAI. HIOIIIRTV D 7Io Fan Lnhn Slmduds
`CI I51 Rznvmy ofuvup-ymcnt
`D W Consmufiudil
`r1 Kl-I HM I mm
`
`
`D 1570 Mmm Vclucln
`U 370 OIIIH Fraud
`III Vacnlfs &::I'm
`CI W Black Lun3(92J)
`D 690 L‘.I.hIeISM TV
`
`(‘I 155 MuvmVc|Iiclc
`D WI Truth in Lmdivu
`'3 I60 Slmkhoidus‘ Sun:
`D SQ DIWC/DIWW (405131)
`0 I150 Secunueslcomuloduliisl
`I‘! I90 Om:-1 Pouuxl
`Fromm I.nIIfIIIy
`VI N00111:! Petlonll
`0 WI 55“) Title XVI
`Bxfllntf
`CI I‘)5 Comm: Pmducl Lmbllily
`Cl 160 Ulbet Pusonll
`Fmplfly Danna
`9 kbi RSI I-405(5))
`I3 390 Udrrsmnlory Actions
`I71 740 Railway labor Au
`
`'3 I'll: Frlnchlic
`lnfiuy
`F1 311‘: Pays.-ny Dung:
`0 IIOI Ayiaumunl Ann
`D 75! Fululy uud Medical
`.1 162 Paw-ul Injury -
`Pmdnu I.I-birkily
`D H91 Envlnnuncnul Mum;
`Luv: Au
`Modieul M11
`-
`D 790 Olher Lnhoc Lmgnlon
`F! 895 I-‘reuiom of lufarnulmn
`
`:T!'§!_"__‘;..<_""1iL—-iu1_;_£Efi}"*jg.§:r_sm.4 ,K:1l£!l1L. I If! ‘Ml Brqiaycr Ildirunal
`An
`
`
`
`lnduma Sawfly Ad
`0 870 Tana (US. |’|mm'fl'
`O 440 DIM: CIVII Rights
`D 896 Allmmnun
`D ll!) Lud Condtnmnuon
`lichen Canaan:
`
`fl -HI Vmmg
`ITI 461 Minn Duarincr
`nt Dricndann
`D 220 Foteclosmr
`D IN) Amnnisuzuve Pmculurt
`
`O 442 Enploymeul
`D 510 Mama to Vnau
`Fl I67) IR5—Yh'm1 Puu
`0 I10 Rlfll Law & Eimnut
`MIIRI-View 0| Appul of
`
`CI 14.1 Housing’
`36 USC 7609
`I"! 140 Tum In I And
`Apmy Drunnn
`Anculmnudaliaus
`1') 10! Tu! Pmllwil Iimbfllly
`|'.| Nfl (‘nnutilulionullly of
`-3 M5 Avmr. wIDisahiIiu'n:s-
`-‘I 290 All can Real I‘mpa1y
`sun: sun-Ice
`(‘J 461 Nnvurnlintion IIppIII:ahtm
`Ilthuz
`Enqwloymml
`C7 446 Ame: w/Dlubilhin - U 540 Muulanm & Olhct
`Cl MS Olin’ lmmgralsm
`
`Amnm
`Otha
`Cl 5YH'.‘1vv'I Righls
`
`cl uxuuzm
`n 155 Mm Comthim
`Fl 5&0 Civil Ddnkncv ~
`
`Cmdicimu ul’
`
`Canrmanavl
`
`V. ORIGIN muuu '.\"‘mOneBo.v0flly)
`D 4 Rctnsmwdm El 5 Tmmfcrmdlium ‘I 6 Mullidnstriu
`Cl 3 Ramndcdfrocn
`.‘lI Original
`X2 Rcmovudflvm
`Reopened
`;\notjIwr District
`Liugumn
`Appcllatc Cuun
`Proceeding
`Sum: Cour!
`
`Cine Ihc U.S. Civil Smnueurulcr which you nmfiling lflnutdkhrblkianlrcflnunkndiuriql;
`17 use Secmns 101 at
`Bdcfnluscripuon ofcalm:
`"gm Imrhgemem
`CI CHECK II’ THIS IS ACLASS ACFION
`DEMAND 3
`VII. REQUESTED IN
`CHECK YES unly vf damn-led in com:-Iv-nr
`
`COMPLAINT:
`UNDER RULE 13. F-R-Cv-P»
`mnv mmuwn:
`D Yes Xno
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v1. muss or ACTION
`
`5°“
`
`VIII. RELATED CASE(S)
`IF ANY
`DATE
`
`b
`'5“ """'°"°'"'
`
`JUDGE
`
`,
`
`l)0(‘KI-IT NUMBER
`
`May 10.2015
`
`RIICEIPT I
`
`AMOUNT
`
`M'I’I.YING IFP
`
`JUDGE
`
`MAIL JUDGE
`
`
`
`7
`
`
`
`

`
`Case 2:16<:v-00389-CW Document 2 Filed 05/10/16 Page 1 of 19
`
`Rick L. Sorensen, #7631
`Michael C. Anderson #13975
`Hawkins & Sorensen
`2035 8. Milestone Drive, Suite 8
`Salt Lake City, Utah 84014
`Telephone: (801) 412-4127
`Facsimile: (801) 412-4189
`Email: sorensenlaw@msn.com
`Attorneys for Plaintiff
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF UTAH, CENTRAL DIVISION
`
`WEBER LUKE ALLIANCE. LLC,
`
`COMPLAINT
`
`Defendant.
`
`Plaintiff,
`
`V.
`
`STUDIO 1C INC dba E0 USAGE
`GUIDE dba E0 TOOLS; and DOES
`1 -20.
`
`Plaintiff Weber Luke Alliance, LLC, by and through counsel, complains and
`
`alleges against Defendant Studio 1C, LLC as follows.
`
`PARTIES
`
`1.
`
`Plaintiff Weber Luke Alliance. LLC (hereinafter "\lVLA") is a Utah limited
`
`liability company duly authorized to transact business in the State of Utah and has its
`
`principal place of business in the State of Utah.
`
`2.
`
`Defendant Studio 1C, LLC is a Utah limited liability company duly
`
`authorized to transact business in the State of Utah and has its principal place of
`
`
`
`8
`
`

`
`Case 2:16-cv—00389-CW Document 2 Filed 05/10/16 Page 2 of 19
`
`business in the State of Utah and is doing business as E0 Usage Guide a Utah
`
`registered DBA and as E0 Tools, a Utah registered DBA (hereinalter“Studio 1C")l
`
`3.
`
`Does 1-20 are additional individuals and/or entities who have committed
`
`wrongs alleged herein. but whose identities are currently unknown to WLA. WLA will
`
`amend this complaint to properly identify additional parties as they become known.
`
`4.
`
`This action is brought under the Trademark Laws of the United States. 15
`
`U.S.C. §§ 1111, et seq.. and the Copyright Laws ofthe United States. 17 U.S.C. §§
`
`101. et seq. Jurisdiction is conferred in accordance with 15 U.S.C. § 1121 and 28
`
`U.S.C. 1331 and 1338. This Court has supplemental jurisdiction over the state and
`
`common law claims pursuant to 28 U.S.C. § 1367.
`
`5.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b).
`
`GENERAL ALLEGATIONS
`
`6.
`
`Since May 2014, WLA has continuously engaged in the commercial
`
`promotion, distribution, and sale of Rollerball Make & Take Workshop kits (hereinafter
`
`"WLA's Goods") throughout the United States and internationally.
`
`7.
`
`WLA is: (i) the owner of existing common-law trademark rights through
`
`use of the brand in commerce and (ii) has an allowed application for registration for
`
`"Rollerball" as serial number 86686620 that has passed review by the US Trademark
`
`Oifice (sometimes referred to hereafter as WLA's Mark). A copy of the Trademark
`
`Official Gazette “Rollerball" is attached hereto as Exhibit 1.
`
`8.
`
`WLA has informed Studio 10 that \/VLA has trademark rights to the
`
`name "Rollerball."
`
`
`
`9
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed 05/10/15 Page 3 of 19
`
`9.
`
`The United States Copyright Offioe issued to WLA a Certificate of
`
`Registration No. VA 1-977-467. dated July 8. 2015. with respect to WLA's Goods. A
`
`copy of WLA's Certificate of Registration is attached hereto as Exhibit 2.
`
`10.
`
`Upon infonnation and belief, Studio 1C first publicly began selling its make
`
`and take kits in or about June 2015.
`
`11 . MA is the owner of the entire right. title. and interest in WLA's Goods.
`
`12. WLA's Goods are promoted. sold or offered for sale under VVi.A's Mark
`
`and Copyright and have been commercially advertised, promoted. sold or offered
`
`throughout the United States and internationally by WLA with skill and care. WLA
`
`has expended large sums of money to maintain the uniformly high quality and
`
`reputation of its Goods in commercial promotion and sale of WLA's Goods. As a
`
`result, the sales of WLA's Goods have increased.
`
`13. WLA's Goods are related to the essential oils industry.
`
`14.
`
`VVl.A's Rollerball Make and Take kits are a collection of printed materials
`
`that include recipes for mixing oils, labels for marking oil roller bottle applicators.
`
`marketing materials for distributors, and instructions on how to use the kits.
`
`15.
`
`Roller bottle applicators are glass or plastic bottles with a ball at the top
`
`that controls the flow of the oil when applied. Roller bottles have been used in the
`
`essential oil industry for many years. WLA coined the term "Rollerball" to describe and
`
`distinguish its make and take kits for use with roller bottles. As provided on its
`
`Copyright Certificate of Registration, WLA first published "RoiIerbaii" on August 16,
`
`2014. (See Exhibit 2.)
`
`
`
`10
`10
`
`

`
`Case 2:16-cv—00389-CW Document 2 Filed 05/10/15 Page 4 of 19
`
`16. MA applied for a trademark of the term "Rollerball” on July 8, 2015. (See
`
`Exhibit 1.)
`
`17.
`
`The trademark application was made for “Printed pamphlets, brochures,
`
`manuals, books. booklets. leaflets, informational flyers. recipe sheets. recipe card,
`
`tabletents, informational sheets and newsletters. adhesive backed labels. and kits
`
`comprised solely of one or more of the foregoing materials in the field of health,
`
`wellness, and essential oils.“ (See Exhibit 1.)
`
`18. WLA's Mark and Copyright have been and are continuously being
`
`applied by WLA to the Goods sold by WLA.
`
`19. WLA's Goods are sold by WLA’s vendors on the vendors’ websites
`
`and in the vendors’ brick and mortar stores. WLA also sells its Goods at its website
`
`at www.roI|erbalImakeandtake.com.
`
`20.
`
`By reason of WLA's extensive advertising. promotion and sale of its
`
`Goods, V\/LA's Mark and Copyright have acquired and now enjoys adisfinctiveness
`
`and secondary meaning signifying WLA's Goods and WLA now owns a valuable
`
`goodwill. which is symbolized by WLA's Mark and Copyright.
`
`21.
`
`Studio 1C has used WLA's Mark “Rol|erball“ in marketing Studio 1C's
`
`goods (hereinafter "Studio 1C's Goods").
`
`22. WLA's Goods distributed under WLA's Mark and Copyright are sold
`
`and offered for sale to the same class of purchasers Studio 1C offers and sells its
`
`goods.
`
`'23.
`
`In connection with the promotion and marketing of its Goods. WLA has
`
`
`
`11
`11
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed 05/10/15 Page 5 of 19
`
`produced artwork, designs, and lnstmctional Materials. The Instructional Materials
`
`inform the public. WLA’s customers and WLA's potential customers, as to how to
`
`use WLA's Goods.
`
`24. WLA holds the copyright to the artwork, designs, and Instructional
`
`Materials.
`
`25.
`
`Studio 1C has copied and distributed WLA's copyrighted artwork,
`
`designs, and Instructional Materials without the permi$ion or license of WLA.
`
`26.
`
`Studio 1C‘s website at www..eo.tools.com as well as various social
`
`media cites use WLA's Mark and Copyrighted materials to describe Studio 1C‘s
`
`Goods.
`
`27.
`
`Studio 1C also markets and sells its goods to the same vendors as
`
`WLA.
`
`28.
`
`In connection with the marketing and sale of their goods. Studio 1C
`
`has done so in a manner so as to create a likelihood that a potential buyer would
`
`confuse or misunderstand that the source of Studio 1C‘s Goods is WLA.
`
`29. WLA's Rollerball Remedies Make & Take Workshop kit's "What's
`
`lncluded" sheet prominently uses a shade of purple/mauve as a part of the color
`
`scheme, the top ‘/4 ofthe sheet is a title bar.
`
`Immediately below the title bar is a
`
`prominent dividing bar. Below the dividing bar is an explanation of what is included in
`
`the kit:
`
`- 20 Postcard Invitations
`
`-
`-
`-
`
`10 Recipe Sheets
`10 Station Recipe Card Tabletents
`10 Waterproof Rollerball Label Sets for 10ml bottles
`
`
`
`12
`12
`
`

`
`Case 2:16<:v-00389-CW Document 2 Filed 05/10/16 Page 6 of 19
`
`- Extra Sheet of Waterproof Labels with 5 each
`- Workshop Tip Sheet
`
`(See WLA's “What's lnc|uded" sheet attached hereto as Exhibit 3.)
`
`30.
`
`Studio 1C's Rollerball Mentality Make 8. Take Workshop Kit's "Materials
`
`included" sheet prominently uses the same shade of purple/mauve as a part of the color
`
`scheme, the top ‘A ofthe sheet is a title bar.
`
`immediately below the title bar is a
`
`prominent dividing bar. Below the dividing bar is an explanation of what is included in
`
`the kit:
`
`20 Invitations
`
`11 Waterproof Rollerball Label Sets
`10 Table Tent Recipe Cards
`10 Roller Ball Recipe Sheets
`Flyer with instructions & Tips sheet
`
`(See Studio 1C‘s "Materials lncluded" sheet attached hereto as Exhibit 4.)
`
`31.
`
`A comparison of WLA’s instruction sheet and Studio 1C‘s instruction sheet
`
`reveals that Studio 1C copied WLA’s instruction sheet almost verbatim. although not in
`
`the same order.
`
`
`
`studio 1 C’s Instruction Sheet
`WLA’s Instruction Sheet
`
`For a successful event. be sure to hand
`For a successful event, be sure to
`
`out the Postcard Invitations one to two
`personally hand out the invitations 1-2
`weeks riorto our event.
`weeks nor to our event.
`
`
`
`
`Be sure to have additional materials on
`hand for your workshop. (see "Materials
`Not Included" below
`Be sure to have extra rollerball bottles and
`labels available for uests to urchase.
`Educate guests, especially newcomers, on
`the basics, benefits and properties of the
`
`essential oils at the beginning of your
`workshop.
`
`Setup [sic] each station prior to guests
`Setup [sic] your 10 Station Recipe Card
`
`arrivin. You'll want to rovide enou h
`Table Tents. Be sure to rovide enouh
`
`
`
`
`Be sure to have all additional supplies on
`hand for your workshop. (See SUPPLIES
`NEEDED
`Be sure to have extra roller bottles
`available for our uests to urchase.
`Make sure to educate your guests on the
`basics. benefits and uses of essential oils
`at the beginning of your workshop .
`.
`.
`
`
`
`
`
`
`
`
`
`
`13
`13
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed 05/10/16 Page 7 of 19
`
`room at each station for your guests.
`
`Hand out One Recipe Sheet to each
`uest.
`
`Provide Roller bottles to your guests. (See
`CLASS OPTIONS)
`
`Those who are already Wellness
`Advocates and wish to make additional
`rollerball remedies, ask them to bring their
`own oils with to class! lfthere are oils they
`don't have to complete certain recipe they
`want to try. do a little ‘'oil trading" amongst
`other Wellness Advocates.
`
`room each station lor your guests to
`measure, pour and adhere their labels.
`Give each guest a Rollerball Mentality
`Recie Sheet .
`.
`.
`
`Provide rollerball bottles and one label
`sheet to your guests. (see "Workshop
`0 tions" below).
`Existing Wellness Advocates who wish to
`make any rollerball blends. should have
`brought their own oils to the class. If there
`are olls they don‘t have to complete a
`certain recipe they want to try, they can
`trade with other Wellness Advocates.
`
`CLASS OPTION #1: Charge a flat fee of Workshop Option #1 Charge $5 per
`$5.00 per person (prospective customers,
`person (prospective customers and
`new and current members.) With that $5
`current Wellness Advocates). The $5 gives
`fee, each attendee will make ONE Sml
`each guest ONE 10 ml rollerball to make
`‘e of their choice.
`ONE reci e of their choice.
`
`CLASS OPTION #2: each attendee that Workshop Option #2 Each guest that is
`is NEW to essential oils, as a FREE take NEW to essential oils, gets to make
`away, will make ONE 5mI sample recipe ONE 10 ml rollerball recipe of their
`of their choice.
`choice FREE . . .
`The Wellness Advocate who invited them.
`The Wellness Advocate who invited them
`supplies the oils for their free rollerball.
`supplies the oils for their free rollerball
`bottle,
`
`SUPPLIES NEEDED (not included in kit): - MATERIALS NOT INCLUDED - Essential
`All oils needed to make Rollerball Recipes Oils listed on recipe sheet - Fractionated
`on recipe sheet - Don't forget your
`Coconut Oil - Guest Supplies — 10 ml
`Fractionated Coconut Oil! 10 ml (1/3oz)
`rollerball bottles (smooth sided. any color)
`Rollerbottles (these must have smooth
`sides for labels to be a - lied.
`
`Thank you for purchasing the Rollerball
`Remedies Make 8. Take Worksho Kit!
`Worksho ‘lis & Directions
`
`Thank you for purchasing the Rollerball
`Mentali Make & Take Worksho Kitl
`Make & Take Worksho Tis.
`
`(See WLA instruction sheet and Studio 1C instruction sheet attached hereto as Exhibit
`
`5).
`
`32.
`
`As part of its Rollerball Make & Take kit. WLA came up with a unique idea
`
`of using a table tent to display the recipe for each station at the workshop. WLA's kits
`
`
`
`14
`14
`
`

`
`Case 2:15-cv-00389-CW Document 2 Filedlos/10/1.6 Page 8 of 19
`
`provide ten table tents with each kit. Studio 1C copied WLA's unique idea and also
`
`provides ten table tents the same size and shape and similar color scheme as VVLA’s
`
`table tents. (See Table Tents attached hereto as Exhibit 6.)
`
`33.
`
`\NLA‘s Rollerball Make 8. Take kits have twenty invitation cards. Studio
`
`1C's kits also have twenty invitation cards the exact same shape and size as WLA's
`
`invitation cards. Notably. WLA's invitation cards have a roller bottle graphic on the right
`
`hand side of the invitation. Studio 1C's invitation cards also have the exact same roller
`
`bottle graphic in the exact same place as WLA's invitation cards. (See WLA and Studio
`
`1C invitation cards attached hereto as Exhibit 7.)
`
`34.
`
`Both WLA's and Studio 1C's kits have ten recipe sheets. The only
`
`difference between the two kits is Studio 1C's kit has "11 Waterproof Rollerball Label
`
`Sets" and V\/LA's kit has "10 Waterproof Rollerball Label Sets" and one "Extra Sheet of
`
`Waterproof Labels with 5 each."
`
`35. WLA packages its kits in a generic plastic bag and Studio 1C packages its
`
`kits in the same size and type of plastic bag. (See photographs of packaging attached
`
`hereto as Exhibit 8).
`
`FIRST CAUSE OF ACTION
`
`(Infringement of Trademark)
`
`36.
`
`VVl_A repeats and realleges the allegations set forth in paragraphs 1
`
`through 35 above.
`
`37. WLA's claim arises under Sections 32 and 43 of the Lanham Act, 15
`
`U.S.C. § § 1114 and 1125, for infringement of registered and unregistered
`
`trademarks
`
`
`
`15
`15
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed~05/10/1‘6 Page 9 of 19
`
`38.
`
`Studio 1C has intentionally and knowingly used WLA‘s Mark and
`
`V\/l_A's Trade Dress by the manufacture. distribution and sale of make and take
`
`kits, which conduct is likely to cause confusion. cause mistake. or to deceive as to
`
`the source and origin of the goods manufactured. distributed, and sold by Studio
`
`1C.
`
`39.
`
`Studio 1C‘s activities have had and will continue to have a substantial
`
`adverse effect on WLA‘s existing and projected future interstate business of
`
`marketing goods identified by its trademark and the goodwill of V\/l_A's business
`
`connected with the use of, and symbolized by. WLA‘s Mark.
`
`40.
`
`Studio 1C's activities and conduct constitute infringement of W|_A's
`
`Mark and Trade Dress in violation of sections 32 and 43 of the Lanham Act. 15
`
`USC. §§ 1114 and 1125.
`
`41. NA has been and continues to be damaged by Studio 1C's activities
`
`and conduct and unless Studio 10 is enjoined. VVl.A and its goodwill and
`
`reputation will continue to suffer irreparable injury which cannot be compensated
`
`solely by money damages. Accordingly. VVl.A may seek lnjunctive relief pursuant
`
`to 15 U.S.C. § 1116.
`
`42.
`
`Studio 1C hasintentionally and knowingly used WLA‘s Mark and.
`
`accordingly, WLA is entitled to a judgment of three times its damages. as measured
`
`by Studio 1C's profits, together with reasonable attorney fees pursuant to 15 U_S.C.
`
`§ 1117.
`
`WHEREFORE WLA demands judgment as hereafter set forth.
`
`
`
`16
`16
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed 05/10/16 Page 10 of 19
`
`SECOND CAUSE OF ACTION
`
`(False Designation of Origin/Unfair Compefition)
`
`43. WLA repeats and realleges the allegations set forth in paragraphs 1
`
`through 42 above.
`
`44. WLA’s claim arises under Section 43(a) of the Lanham Act, 15 U.S.C. §
`
`1125(a), for false designation of origin and false description and representations in
`
`interstate commerce.
`
`45. WLA has expended large sums of money to maintain the uniformly
`
`high quality of its goods and to maintain the reputation of the goods promoted. sold
`
`or offered for sale under WLA’s Mark.
`
`46. WLA’s Goods are recognized as distinctive and have developed
`
`secondary trademark meaning to consumers and potential consumers of WLA’s
`
`Goods.
`
`47.
`
`Studio 1C's use of WLA‘s Mark and use of WLA design, artwork.
`
`identical number of items, identical packaging. and Instructional Materials in
`
`connection with the manufacture. distribution, and sale of Studio 1C's goods
`
`constitute false designations of origin. false description and representation. and
`
`occurred in the course of Studio 1C's commercial and advertising activities. The
`
`acts of Studio 1C are likely to cause mistake or to deceive as to the affiliation.
`
`connection or association of Studio 1C with V\/LA as to the origin, sponsorship or
`
`approval of its goods in violation of 15 U.S.C. § 1125(a)(|)(A).
`
`48. WLA has been and continues to be damaged by Studio 1C's activities
`
`and is entitled to recover Studio 1C's profits received as a result of the infringement
`
`
`
`17
`17
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed 05/110/16 Page 11 of 19
`
`as a measure of its actual damages pursuant to 15 U S.C. § 1117(a). In addition.
`
`unless Studio 1C's conduct is enjoined. WLA will suffer irreparable injury which
`
`cannot be adequately compensated by money damages and. accordingly, WLA is
`
`entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
`
`WHEREFORE WLA demands judgment as hereafter set forth.
`
`THIRD CAUSE OF ACTION
`
`(Lanham Act - False Advertising)
`
`49. WLA repeats and realleges the allegations set forth in paragraphs 1
`
`through 48 above.
`
`50. WLA's claim arises under section 43(a) of the Lanham Act, 15 US 0 §
`
`1125(a)(i)(B) for false representations in interstate commerce.
`
`51.
`
`In the process of marketing their goods. Studio 10 has made material
`
`misrepresentations about the nature, characteristics, qualities or geographic origin
`
`of Studio 1C's Goods or of WLA's Goods.
`
`52.
`
`By publishing or causing to be published false or misleading statements of
`
`fact regarding WLA and WLA's Goods. Studio 10 has deceived or may deceive WLA's
`
`existing and potential customers regarding the nature, characteristics and quality of
`
`WLA's Goods.
`
`53.
`
`Such false statements have caused WLA to lose business
`
`opportunities and have reduced WLA’s income and earnings.
`
`54.
`
`Studio 1 C is liable to VVLAforviolation of section 43(a) of the Lanham Act
`
`and WLA is entitled to injunctive relief pursuant to 15 U.S.C. § 1116.
`
`55.
`
`Studio 1C's use of WLA's Marks and Trade Dress in commercial
`
`
`
`18
`18
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed 05/10/16 Page 12 of 19
`
`advertising or promotion misrepresents the nature. characteristics. qualities or
`
`geographic origin of the goods, services or commercial activities in violation of 15
`
`U.S.C. § 1125(a)(l)(B).
`
`WHEREFORE WLA demands judgment as hereafter set forth.
`
`FOURIH CAUSE OF ACT_i_®
`(Copyright Infringement)
`
`56. WLA repeats and realleges the allegations set forth in paragraphs 1
`
`through 55 above.
`
`57. WLA owns the copyright in and to the artwork, designs. and Instructional
`
`Materials displayed in WLA's kits and has properly registered the copyright with the
`
`United States Copyright Office. (See Exhibit 2.)
`
`58.
`
`At ail relevant times herein. Studio 1C had access to the artwork.
`
`designs, and Instructional Materials displayed in WLA's kits.
`
`59.
`
`Studio 1 C infringed WLA's copyright by its unauthorized copying of WLA's
`
`artwork, designs. and Instructional Materials and use of WLA's artwork. designs. and
`
`lnstrucfional Materials in Studio 1C‘s kits.
`
`60.
`
`Upon information and belief, Studio 1C in this Judicial District and in
`
`other places without the permission or license of WLA has willfully infringed the
`
`copyrights of WLA within the meaning of 17 U.S_C. § 504.
`
`61.
`
`As a proximate result of the infringement by Studio 1C, WLA has
`
`suffered and will continue to suffer injury to its business. name. goodwill as well as
`
`monetary damages in an amount not yet determined.
`
`WHEREFORE WLA demands judgment as hereafter set forth.
`
`
`
`19
`19
`
`

`
`Case 2:16-cv-00389-CW Document 2 Filed 05/10/16 Page 13 0t 19
`
`FIFTH CAUSE OF ACTION
`
`(Declaratory Judgment)
`
`62.
`
`WLA repeats and realleges the allegations set forth in paragraphs 1
`
`through 61 above.
`
`63.
`
`Studio 1C has filed a Notice of Opposition (“Opposition”) with the United
`
`States Patent and Trademark Office. Trademark Trial and Appeal Board ("Tl'AB").
`
`opposing the registration of WLA's "ROLLERBALL" trademark. A copy of Studio 1C‘s
`
`Notice of Opposition is attached hereto as Exhibit 9. The TTAB has not yet ruled on
`
`Studio 1C‘s Opposition. An actual controversy exists between WLA and Studio 1C
`
`regarding the respective rights of WLA and Studio 1 C in the "ROLLERBALL" mark