Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA806573
`
`Filing date:
`
`03/10/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91232716
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Peter Denbigh
`
`JARED BURDEN
`JARED BURDEN PLLC
`PO BOX 862
`HARRISONBURG, VA 22803
`UNITED STATES
`jburden@jaredburdenlaw.com
`
`Motion to Suspend for Civil Action
`
`Jared Burden
`
`jburden@jaredburdenlaw.com
`
`//Jared Burden//
`
`03/10/2017
`
`031016__Opposition No. 91232716__Applicants_Motion to Suspend Opposi-
`tion.pdf(206753 bytes )
`Complaint__Watch Yo Mouth vs Denbigh.pdf(2774229 bytes )
`Exhibits A to D of Complaint__Watch Yo Mouth vs Denbigh.pdf(5317342 bytes )
`Exhibits E to J of Complaint__Watch Yo Mouth vs Denbigh.pdf(5781492 bytes )
`Complaint__Warch Yo Mouth Vs. Denbigh__Memorandum of Law.pdf(5044031
`bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA806573
`
`Filing date:
`
`03/10/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91232716
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Peter Denbigh
`
`JARED BURDEN
`JARED BURDEN PLLC
`PO BOX 862
`HARRISONBURG, VA 22803
`UNITED STATES
`jburden@jaredburdenlaw.com
`
`Motion to Suspend for Civil Action
`
`Jared Burden
`
`jburden@jaredburdenlaw.com
`
`//Jared Burden//
`
`03/10/2017
`
`031016__Opposition No. 91232716__Applicants_Motion to Suspend Opposi-
`tion.pdf(206753 bytes )
`Complaint__Watch Yo Mouth vs Denbigh.pdf(2774229 bytes )
`Exhibits A to D of Complaint__Watch Yo Mouth vs Denbigh.pdf(5317342 bytes )
`Exhibits E to J of Complaint__Watch Yo Mouth vs Denbigh.pdf(5781492 bytes )
`Complaint__Warch Yo Mouth Vs. Denbigh__Memorandum of Law.pdf(5044031
`bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`JOSEPH CAIOLA III
`
`
`In re Application Serial No. 87/044,623
`
`Mark: WATCH YA’ MOUTH
`
`Published: OCTOBER 11, 2016
`
`Opposition No.: 91232716
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`
`
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`
`
`v.
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`
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`Opposer,
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`
`
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`
`
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`
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`
`
`
`
`PETER DENBIGH
`
`
`
`
`
`Applicant.
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`
`
`
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`APPLICANT’S MOTION TO SUSPEND PROCEEDING IN VIEW OF PENDING CIVIL
`
`ACTION PURSUANT TO 37 C.F.R. 2.117
`
`Applicant, Peter Denbigh, (“Applicant”) hereby moves for suspension of these
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`proceedings pursuant to 37 C.F.R. § 2.117(a). A copy of a Complaint filed on February 2, 2017
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`by Watch Yo Mouth, LLC against Denbigh and Associates, LLC and Applicant is attached here
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`as Exhibit A (the “Civil Action”). Opposer, Joseph Caiola III (“Opposer”), is the majority owner
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`and CEO of Watch Yo Mouth, LLC, and Watch Yo Mouth, LLC is the owner of U.S. Trademark
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`Application Serial No. 87/058,618. The Civil Action is currently pending in the United States
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`District Court for the District of New Jersey.
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`The Complaint sets forth a cause of action under the Lanham Act, 15 U.S.C. § 1125(a),
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`including claims of unfair competition and trademark infringement based on Applicant’s use of
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`the mark (“Applicant’s Mark”) in the subject application, Serial No. 87/044,623 (the “Subject
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`Application”), and Opposer’s use of the mark in U.S. Trademark Application Serial No.
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`87/058,618 (“Opposer’s Mark”). The Complaint further requests a declaratory judgment that the
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`Subject Application is terminated and cancelled.
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`
`
`
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`“Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a
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`party or parties to a pending case are engaged in a civil action or another Board proceeding
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`which may have a bearing on the case, proceedings before the Board may be suspended until
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`termination of the civil action or the other Board proceeding.” 37 C.F.R. § 2.117(a). “A civil
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`action may involve other matters outside Board jurisdiction and may consider broader issues
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`beyond right to registration and, therefore, judicial economy is usually served by suspension.”
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`TBMP § 510.02(a). A civil action need not be dispositive of Board proceeding, but only needs
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`to have a bearing on issues before the Board in order to warrant suspension of the Board
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`proceeding. Id. (citing New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550,
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`1552 (TTAB 2011)).
`
`Because the Complaint alleges that Applicant’s Mark and Opposer’s Mark are
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`confusingly similar as applied to the goods named in Applicant’s and Opposer’s respective
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`trademark applications, and requests the cancellation of the Subject Application, the Civil Action
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`undoubtedly will have a bearing on the issues involved in the instant proceeding.
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`
`
`CONCLUSION
`
`In view of the fact that a determination of the issues pending in the Civil Action will have
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`a bearing on the issues currently pending before the Board, Applicant respectfully requests
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`suspension of these proceedings pending determination of the Civil Action pursuant to 37 C.F.R.
`
`/s/
`_______________________
`Jared Burden
`Jared Burden PLLC
`Attorney for Applicant
`
`§2.117(a).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing has been mailed, postage
`prepaid, and sent via electronic mail this 10th day of March 2017, upon:
`
`Michael J Feldman
`OlenderFeldman LLP
`422 Morris Ave
`Summit, NJ 07901
`rromanaux@olenderfeldman.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/
`Jared Burden
`Jared Burden PLLC
`Attorney for Applicant
`
`
`
`
`
`
`
`
`
`Case 3:17-cv-O0717—AET-LHG Document 1 Filed 02/02/17 Page 1 of 29 PagelD: 1
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`Mic11ae1J. Feldman, Esq. (MF 7889)
`Christian J. Jensen, Esq. (C1 6100)
`QLENDERFELDMAN LLP
`'
`422 Morris Avenue
`
`Summit, New Jersey 07901
`(908) 964-2485
`Attoineys for Plaintiff
`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF NEW JERSEY
`
`
`
`ECF
`
`VERIFIED COMPLAINT
`
`Civil Action No.
`
`
`
`WATCH ‘('0 MOUTH, LLC,
`
`Plaintiff,
`
`~against~
`
`y
`DENBIGH AND ASSOCIATES, LLC
`d/b/a SKYLER INNOVA‘TIONS, D
`and PETER DENBIGH
`
`
`
`Defendants
`
`Plaintiff Watch Yo Mouth, LLC (“Plaintiff’), by way of Verified Cfotnplaint against
`
`Defendants Denbigh and Associates, LLC d/b/a Skyler
`
`innovations and Peter Denbigh
`
`(“Defendants”), alleges as follows:
`
`NATURE OF ACTION
`
`1.
`
`Plaintiff and Defendants produce and market cotnpeting, yet very similar, board
`
`games; This is an action brought by Plaintiff under the Lanham Act, 15 U.S.C. § l125(a), and
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`the common and statutory law of the State of New Jersey, due to Defendants’ intentional
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`infringement of Plaintiff’ 5 traclelnark and goodwill as well as its unfair competition with Plaintiff
`
`which has ineparably damaged (and continues to irreparably damage) Plaintiff and its business.
`
`
`
`Case 3:17—cv-OO717—AET-LHG Document 1 Filed 02/02/17 Page 2 of 29 Page|D: 2
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. Ԥ l338(a), l5
`
`U.S.C. § ll2l, and 28 U.S.C,3. § 1367.
`
`3.
`
`Venue is appropriate in this District, the place where Plaintiff resides and where
`
`the cause of action arose pursuant to 28 U.S.C. § 1391. Notably, both Plaintiff and Defendants
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`sell their products which are at issue in this matter nationally and in the State of New Jersey;
`
`3.
`
`This action arises under 15 U.S.C. §l05l, gt s_t:1., and under common law.
`
`THE PARTIES
`
`4.
`
`Plaintiff is a Limited Liability Company organized and existing under the laws of
`
`the State of New Jersey, with its principal place of business at 81 Pension Rd, Unit 112,
`
`Englishtown, New Jersey. Plaintiff through its majority owner and CEO Joe Caiola, is the
`
`innovator and creator of the Watch Yo Moutl1TM board game (the “WYOM Game”) in which
`l)fll’tlGl1)a11tS use cheek retractors while stating words and phrases which their teammates attempt
`
`to understand and identify. Plaintiff sells the WYOM Game nationally and intematiotmlly under
`
`the trademark “Watch Yo Month” (the ‘‘Trademark’’), which was assigned to it by Joe Caiola
`
`effective May 19, 2016 (with all goodwill being transferred to Plaintiff). Plaintiff, directly and
`
`through Mr. Caiola prior to assignment, has marketed in interstate commerce and sold the
`
`WYOM Game using the Trademark since at least May 12, 2016. The Trademark has been used
`
`in commerce continuously to identify and promote the WYOM Game. The Trademark is used in
`
`text format as well as embodied in a logo that prominently features a check retractor as follows:
`
`
`
`Case 3:17-cv-00717-AET-LHG Document 1 Filed 02/02/17 Page 3 of 29 Page|D: 3
`
`
`
`5.
`
`Defendants are, upon information and belief, (a) a Limited Liability Company
`
`with a principal place of business located at 103 E. Beverley St., Suite D, Staunton, Virginia and
`
`(b) an individualwho resides at 103 E. Beverley St., Suite D, Staunton, Virginia. Defendants
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`produce a copycat board game (the “infringing, Game”) using the infringing “mark” “Watch Ya
`
`Month” (the “Infi'inging Mark”). Defendants sell
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`the Infringing Game through eCo1nmerce
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`channels (including, but not
`
`limited to,
`
`through the domain www.wyamgamecmn (the
`
`“Infringing Website”) and brick and mortar retailers. The Infringing Mark also uses cheek
`
`rctractors and also requires players to state words and phrases which their teammates attempt to
`
`understand and identify. Defendants have imitated Plaintiff at eveiy turn and have improperly
`
`traded on Plaintiffs goodwill, unfairly competed with Plaintiff, and infringed upon the
`
`Trademark to Defendants’ benefit and Plaintiffs detriment. The Infringing Mark is embodied in
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`a logo also prominently featuring a check retractor as follows:
`
`
`
`
`
`Case 3:17-cv-00717-AET-LHG Document 1 Filed 02/02/17 Page 4 of 29 Page|D: 4
`
`FACTS COMMON TO ALL COUNTS
`
`Baclggiound Of WYOM
`
`6.
`
`WYOM in the brainchild of its CEO Joe Caiola. Mr. Caiola is a lifelong
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`entrepreneur, creating his first venture (an eilfoinmcree platform dedicated to the sale of auto
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`parts) at age l7.
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`'7.
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`Later, Mr; Caiola attended and graduatecl
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`from Rutgers University. While a
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`student at Rutgers, he formed two more businesses: (l) urbooxTM — a textbook n1a1'ket1)laCe and
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`(2) SyllabusGe11ic'”“ — an zipplication that assisted college students with course management.
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`8.
`
`After
`
`graduating
`
`from Rutgers with
`
`a
`
`degree
`
`in
`
`CO111I‘nL|11iGfli:l011S,
`
`Entrepreneursltip, and Psychology, Mr. Caiola continued his entrepreneunal endeavors while also
`
`Working full-time as a senior account executive with a marketing, firm. This passion resulted in
`
`the inspiration for the WYOM Game in 2016.
`
`9.
`
`First
`
`inspired by a Hollywood film and,
`
`later, by a YouTube video featuring
`
`people playing around with check retraotors, in May 2016, Mr. Caiola tried unsuccessfitlly to
`
`locate and quickly obtain the cheek retractors. Mr. Caiola also determined that there was no
`
`coimnercially available board game which used the cheek retractors in humorous word/game
`
`play.
`
`It was in that eureka moment that the WYOM Game was born.
`
`10.
`
`Setting the wheels in motion, Mr. Caioia immediately took the following actions
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`to commercialize the WYOM Game and secure rights to the Trademark:
`
`0 On May 12, 2016, he purchased the domain lg/xvxv.watehyomoutirconi
`“Website”).
`
`(the
`
`0 On May l2, 2016, he built and launched the Website, which included a sales
`portal which accepted all major credit cards.
`
`
`
`Case 3:17—cv-OO717~AET—LHG Document 1 Filed 02/02/17 Page 5 of 29 Page|D: 5
`
`On May 12, 2016, he began a global advertising campaign through Facebook.
`advertising the WYOM Game and directing traffic to the aforementioned Website
`to secure pre—preproduction sales of same.
`
`On May 13, 2016, the first orders for the WYOM Game were placed through the
`Website — 32 units‘ resulting in purchase orders of over {til ,O00. Notably, the first
`sale was t'rom 21 customer in Australia.
`
`Between May 13 and May 16, 2016, Mr. Caiola ordered the necessary pieces to
`produce the game as well as engaged in customer support regarding the purchases
`through the Website.
`
`On May 19, 2016, Mr. Caiola formed the entity Plaintiff Watch Yo Mouth, LLC.
`
`Effective May 19, 2016, Mr. Caiola assigned and transfened all rights, title and
`interest to the Tradeina'rk and the goodwill associated therewith (including, but
`not limited to, that outlined in this Verified Complaint) to Plaintiff Watch Yo
`Mouth, LLC.
`
`the Website was
`Advertising and production continued and by May 23, 2016,
`receiving 90,000+ iinpressions from Faoebook. The foregoing marketing resulted
`in total sales of $ 1 2,656 through May 23, 2016.
`
`11.
`
`The global
`
`reach and market penetration of the WYOM Géune using the
`
`Trademark was immediately apparent. As of May 23‘, 2016:
`
`WYOM received» orders from 44 out of the 50 states in the United States of
`America through the Website and otherwise.
`
`WYOM received orders from 2 regions of Australia through the Website and
`otherwise.
`
`WYOM received orders from 5 regions of Canada through the Website and
`otherwise.
`
`WYOM receive_d orders from Iceland and Norway through the Website and
`otherwise.
`
`As of May 25, 2016, Plaintiff shipped the first allotment of WYOM Games.
`
`In
`
`order to produce and ship the same, Plaintiff ordered custom game boxes, custom game cards,
`
`
`
`Case 3:17-cv~OO717-AET—LHG Document 1 Filed 02/02/17 Page 6 of 29 PageID: 6
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`custom instruction sheets, sand timers, and mouth pieces - all of which were tailored to the
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`WYOM Game and many ofwltich are embossed with the Trademark.
`
`13,
`
`Both prior to and since the first shipment of the WYOM Ciarne at the end of May
`
`120i 6, Plaintiff has expended significant sums totaling more than $45,000 to acquire, identify and
`
`promote its Trademark in commerce — including through global advertising through Facebook
`
`and Google.
`
`14.
`
`As a result of the foregoingtlie Trademark is highly associated with Plaintiff‘, the
`
`WYOM Game and the Website.
`
`15.
`
`As a result of the foregoing, the Trademark and Plaintiff have achieved significant
`
`aclcnowledgment as originator of the cheek retractor board game concept and properly advertised
`
`itself as such.
`
`16.
`
`As evidence of the strong association between Plaintiff, the WYOM Game and
`
`the Trademark, Plaintiff has been recognized as the originator of the concept in a variety of
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`media and television publications including but not limited to:
`
`- Appearances on Fox’s Good Day and Princeton TV television shows.
`
`0 Write ups in Asbury Park Press, The Art of the CEO, Courier News. Examples
`
`attached as Exhibit A.
`
`Defendants Im re erlv Games The S stem_And Infrin e The Trademark
`
`
`
`
`
`17. Without permission, but with explicit knowledge of the Trademark (due to notice
`
`provided by Plaintiff, Mr. Caiola and otherwise), Defendants market, promote and distribute the
`
`Infiinging» Game and operates the Infiinging Website. The Infringing Game and the Iniiinging
`
`Website both target a national audience using the Trademark ofP1aintif'f.
`
`
`
`Case 3:17—cv-00717-AET-LHG Document 1 Filed 02/02/17 Page 7 of 29 PagetD: 7
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`18.
`
`As set
`
`forth herein, Defendants and the Infiinging Website constantly and
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`consistently engage in mimicking and copying the WYOM Game, the Trademark and efforts to
`
`trade off of Plaintiff’ s marketing and goodwill. For example, the WYOM Game is marketed as
`
`the “original” game in this space ~ as indicated on much of its packaging and the Website. Being
`
`aware-of this marketing, Defendants also use the word “original” to market itself online to assure
`
`top Search results when someone searches for “Watch Yo Mouth” on Google, the text of the
`
`Search results includes results showing the Infringing Game, which is listed as the “original.”
`
`Yet, when the lnfiinging Website itself is viewed, the term “original” does not appear (as it
`
`would be false), and instead, the term “authentic” is used to describe the Infringing Game. The
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`foregoing sleight of hand is accomplished by Defendants having the term “original” irnbtedded
`
`into its Infringing Website (typically by using a SEO (Search Engine Optimization) company) in
`
`21 manner which cannot be viewed by the consumer except in connection with search results, and
`
`in a manner which would also drive traffic to the Infiinging Website in the event anyone
`
`searched for the “original” game. That is, Defendants are using technology to blatantly trade off
`
`of Plaintiffis goodwill.
`
`Exhibit B.
`
`19.
`
`Upon information and belief, after seeing advertising for the WYOM Game,
`
`Defendants attempted to crowd fund the lnfiinging, Game through a Kickstarter campaign
`
`beginning on May 24, 2016 — weeks after Plaintiff had begun advertising and marketing the
`
`WYOM Game, and indeed, after Plaintitfhad sold many copies of the WYOM Game under the
`
`Trademark. Exhibit C.
`
`20.
`
`Upon information and belief, as further evidence that Defendants were inspired to
`
`create the Infringing Game, Infringing Mark, and Infringing Website after seeing the WYOM
`
`Game and Trademark, Defendants have told a number of inconsistent background stories as to
`
`
`
`Case 3:17—cv-00717-AET—LHG Document 1 Filed 02/02/17 Page 8 of 29 Page|D: 8
`
`the purported origins of the Inliinging Game. On Defendants’ Kickstarter campaign (intended to
`
`raise fimds to develop the Infring,ing Gamc)1 Defendants claimed that the origin of the Infriziging
`
`Game occurred when the founder was “watching. a family member get her teeth whitened."
`
`Later,
`
`in a January 18, 2017 news article, Defendants stated that the Infringing, Game was
`
`inspired by a scene in the movie “The Boss.” Exhibit Di
`
`Similarities Between The Infringing Genie/I11fri11gi11g Mark
`Andfl:l1e_WYC|M Gxirne/Trademark
`
`21.
`
`The
`
`following
`
`are
`
`examples
`
`of
`
`similznities
`
`between
`
`the
`
`Infringing
`
`Ganie/Iiifriitging, Mark and the WYQM Game/T1'adema1'k — all
`
`the result of Defendants”
`
`intentional acts at trading off of Plaintiff’ s goodwill and marketing success — which deliberately
`
`cause consumer confusion, mislead and deceive the consuming public, trade off of Plaintiff’ 5
`
`goodwill in the Trademark, and cause damages to Plaintiff and its business under the Trademark:
`
`a.
`
`The Infiinging Website targets the exact same audience ~ the board game
`
`playing public.
`
`b.
`
`The Infringing Game,
`
`Infringing Mark and Infringing Website are
`
`extremely similar in sound to the WYOM Gains/Trzldemark.
`
`Indeed, the only difference is the
`
`Defendants’ substitution of the letter “at” for the letter “o” in the second Word: “W21tch Ye
`
`Month” (the Trademark) versus “Watch Ya Month” (the: Infdnging Mark).
`
`c.
`
`The look and appearance of the Trademark and Website and Defendants’
`
`use of the same (including through focus on a check retractor in Defendants’ logo just as used in
`
`Plaintil‘t‘s logo).
`
`d.
`
`Defendants have copied Pl£1intiff’s game card themes by also releasing a
`
`f:-lmily friendly and an adult/NSFW version. Exhibit E.
`
`
`
`Case 3:17-cv—00717—AET~LHG Document 1 Filed 02/02/17 Page 9 of 29 PagelD: 9
`
`e.
`
`Defendants’ mouthpiece (bottom image) is nearly indistinguisliablc from
`
`P1aintiff’s mouthpiece (top image). Deféndaxits simply changed the colon‘, and appear to use
`
`cheaper materials which are indistinguishable to the eye.
`
`
`
`1’.
`
`All of Defendants’ game cards include the name and logo for “Watch Ya
`
`Mouth,” just as Plaintiffs game cards all include the 'I‘racle1‘nark and “Watch Yo Mouth” name
`
`and logo (which logo was copied by Defendants).
`
`
`
`Case 3:17—cv—OO717-AET-LHG Document 1 Filed 02/02/17 Page 10 of 29 PageID: 10
`
`g.
`
`Defendants (bottom image) copied Plaintiff (top image) in also using a
`
`sand timer to limitthe amount of time players have to say and guess the phrases.
`
`IO
`
`
`
`Case 3:17—cv—OO717-AET-LHG Document 1 Filed 02/02/17 Page 11 of 29 PagelD: 11
`
`I1.
`
`Both the WYOM Game and the Infringing Game are sold at similar,
`
`relatively inexpensive price points: roughly $10.00 (expansion packs) to roughly $25.00 (full
`
`games).
`
`i.
`
`Defendants misappropriated the general “themes” contained in Plaintifl’s
`
`marketing to heighten customer confusion including through the January 24, 2017 Facebook
`
`posting of a picture with 21 cat and the Infringing Game after Plaintiff had posted a similar picture
`
`on December 14, 2016.
`
`5
`
`.
`
`.
`
`'-‘tlctlch ‘./0 Mouth
`
`,,.t,sl
`
`== 5‘!
`
`3
`
`l «.
`
`‘Magi’ ., i/"iii
`
`ta
`
`Kltlnn snys, “Buy this game right Imm'.v.' ?:rr‘()rtiavs before 11:59 will be
`nrrlvn tor Xmas) Eve:
`rag. ‘v
`.‘Iv.-mtchynmoinn
`G0 in {ii w'm'a.'.'.2nciwtmtunrt1.z;i5m
`
`i3~”:’i' 7"""’>”
`7”‘
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`, ,,
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`E3:-:1~.:-.<.r»r.t
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`..i€I,'f—vM“ii1‘-élvfa mix: 5&8 4:1: an-.
`
`f,:lIiLul‘.‘i\D$_}ll‘."Ii ‘
`
`ll
`
`
`
`Case 3:17—CV-OO717—AET—LHG Document 1 Filed 02/02/17 Page 12 of 29 Page|D: 12
`
`.
`
`at
`l‘\
`
`watt,-Ii V.-r Month
`Could usu some laughter after work! 3! »_,’
`
`,
`
`r’.-‘iiltl’.-,tl.l§'*.*il.*|.’:~' Jfgrlttlulilgjlll
`
`
`
`Plaintiff Learns Of And Immediately Obiccts To
`Defendants’ Infringement And Unfair Competition
`
`22.
`
`Upon learning the existence of Defendants and their
`
`infringement of the
`
`Trademark, in late May/early June 2016, Plaintiff (though Mr. Caiola) reached out to Defendant
`
`Peter Denbigh and objected to the infringement and demanded that Defendants cease and desist.
`
`Plaintiff, through counsel, also considered whether a practical resolution could be reached in lieu
`
`of litigation.
`
`23.
`
`At no time during these discussions or otherwise were Defendants granted any
`
`right or license to use the Trademark, to trade off of the WYOM Game and the Trademark, or to
`
`copy and incorporate Plaintiff’s intellectual propeity into Defendants’ product.
`
`24.
`
`It appears that Defendants used those discussions to stall for time, during which
`
`Defendants could continue to infringe the Trademark and obtain a free ride on Plaintift’s
`
`advertising and efforts,
`
`well as the goodwill of Plaintiff and the Trademark.
`
`12
`
`
`
`Case 3:17—cv~OO717-AET~LHG Document 1 Filed 02/02/17 Page 13 of 29 Page|D: 13
`
`
`
`Proceedin s Before The US. Patent And Tradenrark Office
`
`25.
`
`Taking its misz1pprop1‘iation a step further, Defendant Peter Denbigh filed an
`
`application with the U3. Patent and Trademark Office (“USPTO”) to register the Infringing
`
`Mark on May 20,2016. Exhibit F.
`
`26;
`
`Defendants’
`
`trademark registration application with the USPTO was without
`
`meiit, misleading, and contained knowingly false information.
`
`27.
`
`Defendants’ application for trademarlc registration was tiled as “intent to Lise.”
`
`Thus, Defendants were acknowledging under oath that as of May 20, 2016, Defendants were not
`
`even using the Infringing Marla; in commerce.
`
`28.
`
`As of the time Defendants submitted their application to registerithe Infringing
`
`Mark, Defendants were explicitly aware of the existence of the Trademmk, and that Defendants’
`
`Infringing Mark copied and infringed upon the Trademark, and that the use of the Tradeniark in
`
`eomrneree pre-existed not only Defendants’ intent to use the Infringing Mark, but the ectttal use
`
`of the Infringing Mark in commerce.
`
`29.
`
`Plaintiff has obtained an e_xtension of time to oppose Defendants’ trademark
`
`registration application with the USPTO. Pursuant to this extension, Plaintiff has until February
`
`8, 2017,
`
`to oppose Defendaiits’ application.
`
`Plaintiff intends on opposing Defendants’
`
`application and seeking a stay of the USPTO’s consideration of Defendatits’ application until
`
`such time as this Court rules on the issue.
`
`Defe11IIa1rtjs_’_Actions Caused And, Continue To Cause‘
`
`
`Actual Confusion In The Market};lace
`
`30.
`
`Defendants’ use of the Infringing Cmme, Infringing Mark and Infringing Website
`
`has resulted in, and will continue to result in, significant consumer confusion amongst the
`
`13
`
`
`
`Case 3:17—cv—OO717-AET—LHG Document 1 Filed 02/02/17 Page 14 of 29 Page|D: 14
`
`Consuming public as tn the source of goods and services being offered, and has tarnished
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`Plaintiff's business, reputation and the goodwill established in the Tradeinark.
`
`31.
`
`Specifically, both before and after the Infringing Game was first shipped,
`
`Defendants have, without permission, ccpied Plaintiff’ 5 tone, eftbrts, trade dress, appearance and
`
`mutant in trying to intentionally confuse the consurning public about the origin of the Infringing
`
`Game —— a goal of which Defendants have unfrntnnately succeeded.
`
`32.
`
`By way of example, as
`
`recently as January 17, 2017, Defendants have
`
`misappropriated Plaintiff’s content on its Website including but not limited tn copy, tone and
`
`themes used by Plaintiff in an effort to convince the consuming public that WYAM and the
`
`Infringing Ciarne and Infringing Website are from the same commercial source. Exhibit G.
`
`33.
`
`As further example of Defendants’ improper exploitaticn and trade on the good
`
`will,
`
`trade dress and image of Plaintiff including the Trademark,
`
`in or about July 2016,
`
`Defendants shared a video on Twitter wherein they advertised to the public that individuals were
`
`playing the Infringing Game when in fact they were playing Plaintiffs WYOM Game —— explicitly
`
`and intentionally confusing the public to trade on the back of Plaintiff without permission or
`
`authority. At the time the video was posted, Defendants had not yet shipped any units of the
`
`Infringing Game. Exhibit H.
`
`34. When Plaintiff -= through Mr. Caiola — advised Defendants of this infringetnent,
`
`the video was taken down — an admission that they were damaging Plaintiff.
`
`In addition to
`
`copyright infiingeinent, this additional action is further indisputable evidence of Defendants’
`
`effort to improperly trade on the goodwill and temporal and financial
`
`investments made by
`
`Plaintiff in its brand and business including but not limited to the Trademark.
`
`14
`
`
`
`Case 3:17—cv—OO717—AET-LHG Document 1 Filed 02/02/17 Page 15 of 29 PagelD: 15
`
`35.
`
`There is even a spoof/fraudulent website — iyww.walchymnouthslioosggin =- that
`
`siphons web traffic from the Website and directs customers to the Twitter and Facebook pages
`
`for WYAM — fitrther confusing the public and causingdamage to Plaintiff. Exhibit 1.
`
`36.
`
`The most shocking example of confusion in the marketplace flows from the fact
`
`that a consumer of Defendants’ inferior Infringing Game was injured by same and has reached
`
`out to WYOM threatening legal action as 51 result of the alleged injuries. The consumer provided
`
`proof that they purchased the Infringing Game — NOT THE WYOM GAME — but the damage
`
`to Plaintiffin the rnarlcetplace is ongoing and material. Exhibit J.
`
`37.
`
`Further examples of co1'1sun1er and retailer confusion have occurred as follows
`
`(through January 15, 2017):
`
`- Defendants’ customers emailing Plaintitt‘ for support: 53
`
`0 Defendants-" customers emailing Plaintiff relative to defects with the Infringing
`Game: 12
`
`a Defendants’ ettston1e1's playing the Infringing Game, but liaslitagging/tagging thc
`WYOM Game or WYOM in photos: 45
`
`0 News Outlets contacting Plaintiff mistakenly thinking they produce the infringing
`Game: 2
`
`0 Retailers contacting, Plaintiff mistakenly thinking they produce the Infringing
`Game: 2.
`
`they
`The Retailer confusion is particularly notewoithy as not only are
`sopliisticated, but one retailer was mistaken even afi‘er exchanging Purchase
`Orders and Invoices with Plaintiff;
`
`Plaintiff Has Made Si nificant Investmentswln The Trademark And Goodwill
`
`
`
`
`
`38.
`
`Since inception, Plaintiff has made significant temporal and financial investments
`
`in growing the business and the Trademark. Additionally, Mr. Caiola resigned from his full time
`
`job to direct all resources and effort to WYOM.
`
`
`
`Case 3:17-cv—OO717—AET~LHG Document 1 Filed 02/02/17 Page 16 of 29 Page|D: 16
`
`39.
`
`From inception to present, Plaintiff has employed as many as nine (9) employees
`
`whose employment depends on the protection of the Trademark and Plaintiff’s brand.
`
`40.
`
`From May 2016 to date, Plaintiff has invested approximatel)/ ii?-45,000 in global
`
`marketing campaigns through Google; Faccbook; Instagram; Amazon Marketing; PR Agencies;
`
`Viral marketing campaigns; and through travel to trade and game shows throughout the nation.
`
`41.
`
`These efforts have resulted in sales to date of approximately $1.3 million which is
`
`cornprised of approximately 50,000 units of the WYQM Game, Of note, the WYOM Game. was
`
`the #1 product in over 100 Showcase stores in Canada during Christmas 2016.
`
`42.
`
`Defendants’ use of the Infringi_ng Mark, Infringing Website, and Infringing Game
`
`(which, per customer complaints to Plaintiff, is an inferior product that is often littered with
`
`misspellings and duplicate cards) constitutes an infringelnent upon Plaintiff’s Trademark and
`
`rights therein (including goodwill) and Defendants’ attempt to profit from the unauthorized use
`
`of P1aintift‘s Trademark and the rights therein is a direct violation of United States Trademarlc
`
`Law and State Common Law, including, unfair competition.
`
`43.
`
`Defendants’ continued use of the Infringing Game, Infringing Mark and Infringing
`
`Website have damaged Plaintiffs interest in the Trademark, and will continue to do so, by,
`
`among other things:
`
`A.
`
`Continuing to cause consumer confusion as to the source of the products
`
`provided under the Tradeinark;
`
`B.
`
`Continuing to cause retailer confusion as to the source of the products
`
`provided under the Trademark;
`
`C.
`
`Continuing to damage the valuable and significant goodwill that Plaintiff
`
`has established in its Trademark;
`
`16
`
`
`
`Case 3:l7—CV—OO717~AET-LHG Document 1 Filed 02/02/17 Page 17 of 29 Page|D: 17
`
`D.
`
`Continuing to unfairly compete with Plaintiffs business by engaging in all
`
`of the foregoing activities as set forth herein; and
`
`E.
`
`Threatening to finther trade upon the Trademark and Plaintiff’ s goodwill,
`
`tliereby causing ltlrther damage to the valuable and significant goodwill Plaintiff has in the
`
`Trademark and its business.
`
`44.
`
`The wrongful activities of Defendants are causing and will continue to cause
`
`severe and irrevocable injury to Plaintiff, including but not liinited to, Plaintift”s rights in and to
`
`its Trademark and business.
`
`45.
`
`Defendants continue to use the infringing and confusingly similar Infringing Mark
`
`in connection with the Infringing Game and the Infringing Website and, as stated at length above,
`
`that usage is causing actual and likely confusion amongst the consuming public and r<:t;=tilers.
`
`46.
`
`The use by Deténdants of Plaintiffs Trad<::nf1ark has been willful and dczliboratc,
`
`designed specifically to improperly trade upon the goodwill associated with Plaintiff’s name and
`
`the Tracloinark.
`
`47.
`
`Plaintiffs goodwill
`
`is of enormous value and Plaintiff will Suffer irreparable
`
`harm, should this use and infiingeinent be allowed to continue to the detriment of l’1aintiff’s
`
`reputation and goodwill.
`
`48.
`
`Given past efforts, Defendants’ unfair competition and use of the Trademarlc will
`
`continue unless enjoined by this Court.
`
`17
`
`
`
`Case 3:17~cv-00717-AET-LHG Document 1 Filed 02/02/17 Page 18 of 29 Page|D: 18
`
`COUNT ONE
`
`Federal Unfair Competition and
`False Description/Designation of Origin — 15 U.S.C. §112S(n)
`
`49.
`
`This cause of action azises under 15 U.S.C, § 1 l25(a) for uiifair competition and
`
`false designation of the origin ofscrvices and false description and x‘epresentation.
`
`50.
`
`By reason of the foregoing acts of Defendenits stated in the preceding, parsgrnplts
`
`(inclucling, but not limited to,
`
`through the Infringing Game, Infringing Mark and infringing
`
`Website), Defendants have falsely designated the origin of their services and goods in their
`
`marketing and have othenvisc made false descriptions and repmsentations of the origin of such
`
`services and goods.
`
`51.
`
`Defendants’
`
`l.1l'lEll.1ll10l'lZ€Cl
`
`activities are likely to create (and have created)
`
`confusion among the consuming public, are likely to deceive purchasers ofPlaintifl’s products,
`
`as well as its adve1'tisers, concerning the source or sponsorship of such goods and services, and
`
`will othexwise mislead the consuming public as to the origin of the goods and sewices sold by or
`
`on behalf of Defendants.
`
`52.
`
`Defendants’ iiiteiitional, willful and bad faitli intent to trade on Plaintiffs good
`
`will and create the false and misleading impression that Defendants are affiliated, czonncctecl 01'
`
`associated with Plaintiff — througli Tmdemarlc and othelwise — is in violation of‘ l5 Ll.S.C3. §
`
`ll25(a).
`
`53.
`
`By reason of the foregoing, Plaintiff has suffered and will continue to suffer
`
`Substantial and irreparable damage, including darnage to its valuable Traclemark 11'ghts.
`
`18
`
`
`
`Case 3:17—cv—OO717-AET—LHG Document 1 Filed 02/02/17 Page 19 of 29 Page|D: 19
`
`SECOND COUNT
`
`Connnon Law Unfair Competition
`
`54.
`
`Plaintiff repeats and reallcgcs each and every allegation contained in the prior
`
`paragraphs of this Complaint as if fully set forth at length herein.
`
`55.
`
`This cause of action arises under the Common Law of Unfair Competition over
`
`which this Court has jurisdiction by virtue of 28 U.S.C. § 1338 and § 1367 and by the principles
`
`of supplemental jtiiisdiction.
`
`56,
`
`Plaintiff has common law rights in its Trademark which is uniquely associated
`
`with Plaintiff as to the source of the goods offered in connection with the Trademark.
`
`57.
`
`Defendants have made false and inisleadiiig represeiitations, including those set
`
`forth above, to Plaiiitiffs current and prospective customers. Defendants’ conduct as aforesaid
`
`(including, but not limited to, through the Infringing Game, Infringing Mark and Infringing
`
`Website) constitutes unfair methods of competition and unfair and deceptive acts and practices in
`
`the conduct of its trade in violation of the New Jersey common law of unfair competition.
`
`58.
`
`By reason of the foregoing, Plaintiff‘ has been caused to suffer and will continue to
`
`suffer substanti
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