Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA863726
`12/11/2017
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding.
`
`91233313
`
`Plaintiff
`Bned Loudcloud, LLC
`
`Defendant
`LoudCloud
`
`Yes
`
`Applicant
`
`Other Party
`
`Have the parties
`held their discov-
`ery conference
`as required under
`Trademark Rules
`2.120(a)(1) and
`(a)(2)?
`
`Motion for Suspension in View of Civil Proceeding With Consent
`
`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Bned
`Loudcloud, LLC hereby requests suspension of this proceeding pending a final determination of the civil ac-
`tion. Trademark Rule 2.117.
`Bned Loudcloud, LLC has secured the express consent of all other parties to this proceeding for the suspen-
`sion and resetting of dates requested herein.
`Bned Loudcloud, LLC has provided an email address herewith for itself and for the opposing party so that any
`order on this motion may be issued electronically by the Board.
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`of record by Email on this date.
`Respectfully submitted,
`/Jacqueline Lesser/
`Jacqueline Lesser
`jlesser@bakerlaw.com, gferguson@bakerlaw.com, kwallace@bakerlaw.com, ahsu@bakerlaw.com
`vivek@jayaramlaw.com, johanna@jayaramlaw.com, doni@jayaramlaw.com
`12/11/2017
`
`

`

`JS 44 (Rev. 06/17)
`
`Case 3:17-cv-10480 Document 1-1 Filed 11/01/17 Page 1 of 1 PageID: 17
` CIVIL COVER SHEET
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
`provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
`
`I. (a) PLAINTIFFS
`
`BNED LOUDCLOUD, LLC
`
`DEFENDANTS
`
`
`LOUDCLOUD CORPORATION
`
`(b) County of Residence of First Listed Plaintiff
`Somerset County, NJ
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`County of Residence of First Listed Defendant
`
`Los Angeles County, CA
`(IN U.S. PLAINTIFF CASES ONLY)
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`Gerald J. Ferguson, Lesley Grossberg and Nancy Frandsen
`Baker & Hostetler LLP- 45 Rockefeller Plaza, 11th Floor, New York, NY
`10111- (212) 589-4238
`
`NOTE:
`
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
` Attorneys (If Known)
`
`II. BASIS OF JURISDICTION (Place an “X” in One Box Only)
`
`’ 1 U.S. Government
`Plaintiff
`
`’ 3 Federal Question
`(U.S. Government Not a Party)
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
`(For Diversity Cases Only)
` and One Box for Defendant)
` PTF DEF
` PTF
` DEF
`’ 1
`’ 1
`’ 4
`’ 4
`
`Citizen of This State
`
`Incorporated or Principal Place
` of Business In This State
`
`’ 2 U.S. Government
`Defendant
`
`’ 4 Diversity
`(Indicate Citizenship of Parties in Item III)
`
`Citizen of Another State
`
`’ 2
`
`’ 2
`
`Incorporated and Principal Place
`of Business In Another State
`
`’ 5
`
`’ 5
`
`IV. NATURE OF SUIT (Place an “X” in One Box Only)
`CONTRACT
`TORTS
`
`FORFEITURE/PENALTY
`
`Click here for: Nature of Suit Code Descriptions.
`BANKRUPTCY
`OTHER STATUTES
`
`Citizen or Subject of a
` Foreign Country
`
`’ 3
`
`’ 3
`
`Foreign Nation
`
`’ 6
`
`’ 6
`
`’ 110 Insurance
` PERSONAL INJURY
`’ 310 Airplane
`’ 120 Marine
`’ 315 Airplane Product
`’ 130 Miller Act
`’ 140 Negotiable Instrument
` Liability
`’ 150 Recovery of Overpayment ’ 320 Assault, Libel &
` & Enforcement of Judgment
` Slander
`’ 151 Medicare Act
`’ 330 Federal Employers’
`’ 152 Recovery of Defaulted
` Liability
`’ 340 Marine
` Student Loans
`’ 345 Marine Product
` (Excludes Veterans)
`’ 153 Recovery of Overpayment
`LABOR
` Liability
`’ 710 Fair Labor Standards
`’ 350 Motor Vehicle
` of Veteran’s Benefits
`’ 160 Stockholders’ Suits
`’ 355 Motor Vehicle
` Act
`’ 720 Labor/Management
`’ 190 Other Contract
` Product Liability
`’ 195 Contract Product Liability ’ 360 Other Personal
` Relations
`’ 740 Railway Labor Act
`’ 196 Franchise
` Injury
`’ 751 Family and Medical
`’ 362 Personal Injury -
` Leave Act
` Medical Malpractice
` PRISONER PETITIONS ’ 790 Other Labor Litigation
` CIVIL RIGHTS
`’ 791 Employee Retirement
`’ 440 Other Civil Rights
`Habeas Corpus:
`’ 463 Alien Detainee
`’ 441 Voting
` Income Security Act
`’ 510 Motions to Vacate
`’ 442 Employment
`’ 443 Housing/
` Sentence
`’ 530 General
` Accommodations
`’ 445 Amer. w/Disabilities - ’ 535 Death Penalty
`Other:
` Employment
`’ 446 Amer. w/Disabilities - ’ 540 Mandamus & Other
`’ 550 Civil Rights
` Other
`’ 448 Education
`’ 555 Prison Condition
`’ 560 Civil Detainee -
` Conditions of
` Confinement
`
` REAL PROPERTY
`’ 210 Land Condemnation
`’ 220 Foreclosure
`’ 230 Rent Lease & Ejectment
`’ 240 Torts to Land
`’ 245 Tort Product Liability
`’ 290 All Other Real Property
`
`IMMIGRATION
`’ 462 Naturalization Application
`’ 465 Other Immigration
` Actions
`
` PERSONAL INJURY
`’ 365 Personal Injury -
` Product Liability
`’ 367 Health Care/
` Pharmaceutical
` Personal Injury
` Product Liability
`’ 368 Asbestos Personal
` Injury Product
` Liability
` PERSONAL PROPERTY
`’ 370 Other Fraud
`’ 371 Truth in Lending
`’ 380 Other Personal
` Property Damage
`’ 385 Property Damage
` Product Liability
`
`’ 422 Appeal 28 USC 158
`’ 625 Drug Related Seizure
` of Property 21 USC 881 ’ 423 Withdrawal
`’ 690 Other
` 28 USC 157
`
`PROPERTY RIGHTS
`’ 820 Copyrights
`’ 830 Patent
`’ 835 Patent - Abbreviated
` New Drug Application
`’ 840 Trademark
`SOCIAL SECURITY
`’ 861 HIA (1395ff)
`’ 862 Black Lung (923)
`’ 863 DIWC/DIWW (405(g))
`’ 864 SSID Title XVI
`’ 865 RSI (405(g))
`
`FEDERAL TAX SUITS
`’ 870 Taxes (U.S. Plaintiff
` or Defendant)
`’ 871 IRS—Third Party
` 26 USC 7609
`
`’ 375 False Claims Act
`’ 376 Qui Tam (31 USC
` 3729(a))
`’ 400 State Reapportionment
`’ 410 Antitrust
`’ 430 Banks and Banking
`’ 450 Commerce
`’ 460 Deportation
`’ 470 Racketeer Influenced and
` Corrupt Organizations
`’ 480 Consumer Credit
`’ 490 Cable/Sat TV
`’ 850 Securities/Commodities/
` Exchange
`’ 890 Other Statutory Actions
`’ 891 Agricultural Acts
`’ 893 Environmental Matters
`’ 895 Freedom of Information
` Act
`’ 896 Arbitration
`’ 899 Administrative Procedure
` Act/Review or Appeal of
` Agency Decision
`’ 950 Constitutionality of
` State Statutes
`
`V. ORIGIN (Place an “X” in One Box Only)
`’ 1 Original
`’ 2 Removed from
`Proceeding
`State Court
`
`’ 3 Remanded from
`Appellate Court
`
`’ 4 Reinstated or
`Reopened
`
`’ 5 Transferred from
`Another District
`(specify)
`
`’ 6 Multidistrict
`Litigation -
`Transfer
`
`’ 8 Multidistrict
` Litigation -
` Direct File
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
` COMPLAINT:
`VIII. RELATED CASE(S)
` IF ANY
`
`DATE
`11/01/2017
`FOR OFFICE USE ONLY
`
`Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`Lanham Act, 15 U.S.C. § 1051 et seq
`
`Brief description of cause:
`trademark infringement, trademark dilution, unfair competition
`’ CHECK IF THIS IS A CLASS ACTION
`DEMAND $
`UNDER RULE 23, F.R.Cv.P.
`
`CHECK YES only if demanded in complaint:
`’ Yes
`’ No
`
`JURY DEMAND:
`
`(See instructions):
`
`JUDGE
`
`DOCKET NUMBER
`
`SIGNATURE OF ATTORNEY OF RECORD
`s/ Gerald J. Ferguson
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 1 of 16 PageID: 1
`
`Gerald J. Ferguson (N.J. Bar No. 052381996)
`Baker & Hostetler LLP
`45 Rockefeller Plaza, 11th Floor
`New York, NY 10111
`Telephone: 212.589.4238
`Fascimile: 212.589.4201
`gferguson@bakerlaw.com
`Attorneys for Plaintiff BNED Loudcloud, LLC
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
`TRENTON VICINAGE
`
`BNED LOUDCLOUD, LLC,
`
`
`Plaintiff,
`
`Civil Action No.: __________
`
` JURY TRIAL DEMANDED
`
`
`LOUDCLOUD CORPORATION,
`
`
`v.
`
`Defendant.
`
`
`
`
`
`
`
`
`COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND
`DILUTION BY TARNISHMENT
`
`Plaintiff, BNED LoudCloud, LLC, by its undersigned counsel, brings this action for
`
`trademark infringement, unfair competition, and dilution by tarnishment against Defendant,
`
`LoudCloud Corporation, by filing this complaint and alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff BNED LoudCloud, LLC (“Plaintiff”) is a Delaware limited liability
`
`company, with its principal place of business at 120 Mountain View Blvd., Basking Ridge, NJ
`
`07920.
`
`2.
`
`Defendant LoudCloud Corporation (“Defendant”) is a California corporation with
`
`its principal place of business at 5011 S. Normandie Ave, Los Angeles, CA 90037.
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 2 of 16 PageID: 2
`
`JURISDICTION AND VENUE
`
`3.
`
`This Court has subject matter jurisdiction over this action under 15 U.S.C. § 1121
`
`and pursuant to 28 U.S.C. §§ 1331 and 1338(a) because it involves claims arising under the
`
`Lanham Act, 15 U.S.C. § 1051 et seq. This Court has supplemental jurisdiction over Plaintiff’s
`
`state statutory and common law claims under 28 U.S.C. § 1367.
`
`4.
`
`Upon information and belief, Defendant has conducted and continues to conduct
`
`business within the State of New Jersey and is subject to the personal jurisdiction of this Court
`
`under New Jersey’s long-arm statute. Defendant offers information about its mobile app and
`
`links to download that mobile app on its website www.getloudcloud.com, and offers
`
`downloadable software applications through third party platforms such as Google Play and
`
`Apple’s App Store that can be downloaded in New Jersey. Furthermore, Defendant’s mobile app
`
`is aimed at New Jersey residents, in that it offers specific information about medical marijuana
`
`dispensaries located in New Jersey that may only be patronized by residents of New Jersey.
`
`Upon information and belief, Defendant’s mobile app has been downloaded and used in New
`
`Jersey by residents of New Jersey.
`
`5.
`
`Venue in this judicial district is appropriate pursuant to 28 U.S.C. § 1391(b)(2)
`
`because Defendant has committed acts of trademark infringement, unfair competition, and
`
`dilution by tarnishment in this District.
`
`BACKGROUND
`
`6.
`
`Founded in 2010, Plaintiff LoudCloud provides learning management system
`
`services and competency-based learning platform services to educational institutions and
`
`students that are highly adaptive, customizable, and offer cloud-based solutions to promote
`
`online classroom interactions at both the K-12 and higher education levels. Plaintiff is a well-
`
`
`
`2
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 3 of 16 PageID: 3
`
`known provider of educational services through innovative software solutions that provide a full
`
`range of educational services to college campuses, and other educational venues, including
`
`provision of educational content and behavioral analytic data to faculty and students.
`
`7.
`
` Since at least as early as 2010, years prior to Defendant filing an intent-to-use
`
`trademark application in 2016, Plaintiff and its predecessor in interest has offered its products
`
`and services under the trademark LOUDCLOUD to students, faculty, education administrators
`
`and educational institutions.
`
`8.
`
`Plaintiff owns all right, title and interest in and to U.S. Trademark Registration
`
`No. 4095476 for the trademark LOUDCLOUD for analyzing educational tests scores and data
`
`for others; analyzing of educational test scores and data for others; business education and
`
`training services, namely, developing, and facilitating customized in-company leadership and
`
`executive development programs, providing executive coaching services, and providing public
`
`and in-company keynote presentations to business leaders; computer education training;
`
`computer education training services; conducting after school tutoring programs; educating at
`
`university or colleges; education services in the nature of courses at the university level;
`
`educational course monitoring, namely, tracking student performance; educational examination
`
`services; educational services, namely, conducting distance learning instruction at the secondary,
`
`college and graduate levels; educational services, namely, conducting distance learning
`
`instruction at the university level; educational services, namely, developing and conducting
`
`training courses and distribution of training materials in connection therewith for subject matters
`
`as requested by customers; educational services, namely, the offering of web based and
`
`classroom training for certification of teachers and continuing education for teachers and
`
`principals; information on education; providing courses of instruction at the undergraduate and
`
`
`
`3
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 4 of 16 PageID: 4
`
`graduate level; provision of information relating to educational services; teaching, training,
`
`tutoring and courses of instruction at the undergraduate, graduate and post-graduate level, issued
`
`on the Principal Register of the United States Patent and Trademark Office on February 7, 2012.
`
`U.S. Reg. No. 4095476 is valid, subsisting, uncancelled, and unrevoked. A copy of this
`
`registration is attached hereto as Exhibit A.
`
`9.
`
`By virtue of Plaintiff’s continuous use of the mark LOUDCLOUD, which is the
`
`subject of U.S. Reg. No. 4095476, such mark has become incontestable pursuant to 15 U.S.C.
`
`§ 1065.
`
`10.
`
`Plaintiff owns all right, title and interest in and to U.S. Trademark Registration
`
`No. 4369706 for the trademark LOUDCLOUD for analyzing educational tests scores and data
`
`for others; business training in the field of developing and facilitating customized in-company
`
`leadership and executive development programs, providing executive coaching services, and
`
`providing public and in-company keynote presentations to business leaders; computer education
`
`training services; educating at university or colleges; education services in the nature of courses
`
`at the university level; education services, namely, providing on-line classroom training in the
`
`field of teacher certification and continuing education for teachers and principals; educational
`
`course monitoring, namely, tracking student performance; educational examination services;
`
`educational services, namely, conducting distance learning instruction at the secondary, college,
`
`university, and graduate level; educational services, namely, developing curriculum for
`
`educators; educational services, namely, providing courses of instruction at the secondary,
`
`college, university, and graduate level and distribution of course material in connection
`
`therewith; providing courses of instruction at the undergraduate and graduate level; providing
`
`information about education; providing information relating to education services for children;
`
`
`
`4
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 5 of 16 PageID: 5
`
`providing information relating to educational services, issued on the Principal Register of the
`
`United States Patent and Trademark Office on July 13, 2013. U.S. Reg. No. 4369706 is valid,
`
`subsisting, uncancelled, and unrevoked. A copy of this registration is attached hereto as Exhibit
`
`B. Plaintiff’s Trademark Registration Nos. 4095476 and 4369706 are hereinafter referred to as
`
`Plaintiff’s LOUDCLOUD marks.
`
`11.
`
`Defendant operates a website at www.getloudcloud.com and offers a mobile
`
`application called “LoudCloud” for download on the Apple App Store and on Google Play. The
`
`www.getloudcloud.com website provides download links for the LoudCloud app.
`
`12.
`
`Defendant’s LoudCloud app provides several marijuana-related services aimed at
`
`“enhancing the cannabis buying experience,” including:
`
`a. App users may upload their state ID and their marijuana prescription to
`
`Defendant’s “HIPAA Secure” servers. This allows marijuana patients to “pre-
`
`verify” their identification and prescription to dispensaries “for faster access to
`
`retailers.”
`
`b. The LoudCloud app provides map data showing the location of dispensaries
`
`nearby to the user. An app user may input search criteria such as type, quantity,
`
`and price of marijuana, as well as a maximum distance away from the user, to
`
`search for dispensaries that meet the user’s search criteria.
`
`c. Users may write and read reviews of marijuana dispensaries that are noted on the
`
`app.
`
`d. Users may sign up to receive “exclusive deals on [their] favorite products.”
`
`A copy of the www.getloudcloud.com website is attached hereto as Exhibit C.
`
`
`
`5
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 6 of 16 PageID: 6
`
`13.
`
`Defendant’s LoudCloud app lists several dispensaries that are located in New
`
`Jersey, including:
`
`a. Compassionate Sciences in Bellmawr, New Jersey;
`
`b. Compassionate Care Foundation in Egg Harbor Township, New Jersey;
`
`c. Breakwater Treatment & Wellness in Cranbury Township, New Jersey;
`
`d. Garden State Dispensary in Woodbridge, New Jersey; and
`
`e. Greenleaf Compassion Center in Montclair, New Jersey.
`
`14.
`
`Defendant also offers a “point of sales system” under the “LoudCloud”
`
`designation, as described at www.loudpos.com (the “LoudCloud POS service”). On information
`
`and belief, the LoudCloud POS service is an enterprise software system and mobile-based
`
`platform aimed at owners and managers of marijuana dispensaries as a means for managing
`
`patient intake, verifying patient information, tracking inventory, complying with government
`
`regulations, providing analytics and reports, and processing sales. A copy of the
`
`www.loudpos.com website is attached hereto as Exhibit D.
`
`15.
`
`Defendant filed an intent-to-use application for the mark “LOUDCLOUD” on
`
`June 15, 2016, which was assigned Application Serial No. 87073100. A copy of the Trademark
`
`Status and Document Retrieval status of this application is attached as Exhibit E. The goods
`
`identified in connection with Defendant’s Application Serial No. 87073100 are in class 9 for
`
`“Computer application software for mobile phones, namely, software for providing consumer
`
`information, namely, compilations, rankings, ratings, reviews, referrals and recommendations
`
`relating to businesses; Computer application software for mobile phones, namely, software for
`
`providing consumer information, namely, compilations, rankings, ratings, reviews, referrals and
`
`recommendations relating to cannabis businesses; Computer application software for mobile
`
`
`
`6
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 7 of 16 PageID: 7
`
`phones, namely, software for providing HIPPA compliant patient information, namely,
`
`recommendations or prescriptions to cannabis dispensaries; Computer application software for
`
`mobile phones, namely, software for providing patient information.”
`
`16.
`
`A proceeding before the Trademark Trial and Appeal Board, Opposition No.
`
`9123313, was instituted on March 8, 2017, concerning Plaintiff’s opposition to the registration of
`
`Defendant’s Application Serial No. 87073100 for LOUDCLOUD.
`
`17.
`
`Plaintiff’s LOUDCLOUD marks are of very substantial value to Plaintiff, and
`
`Plaintiff has spent money marketing and promoting the services it offers under its
`
`LOUDCLOUD marks. As a result, Plaintiff’s LOUDCLOUD marks have received substantial
`
`recognition and have come to signify Plaintiff and Plaintiff’s services.
`
`18.
`
`Defendant’s use of the LOUDCLOUD mark for marijuana dispensary location
`
`services; and a mobile application and network for users of marijuana to identify dispensaries
`
`near them, review dispensaries, and receive deals from dispensaries; and for the LoudCloud POS
`
`services, has and will continue to harm Plaintiff’s business and goodwill generated under the
`
`registered LOUDCLOUD marks for their services. Specifically, Defendant’s use of the
`
`LOUDCLOUD mark for services directly related to marijuana, which is an illegal substance
`
`under federal law, will harm Plaintiff’s goodwill and reputation in the educational services
`
`industry for providing learning management system services and competency-based learning
`
`platforms to K-12 and higher education students, faculty, administrators, and institutions –
`
`institutions of learning whose essential mission is inherently contrary to the promotion of illegal
`
`drug use.
`
`
`
`
`
`
`
`7
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 8 of 16 PageID: 8
`
`COUNT I: FEDERAL TRADEMARK INFRINGEMENT
`
`19.
`
`20.
`
`Plaintiff incorporates Paragraphs 1-18 by reference as if fully set forth herein.
`
`This is a cause of action for federal trademark infringement arising under Section
`
`32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
`
`21.
`
`Plaintiff’s federally registered LOUDCLOUD marks, U.S. Reg. Nos. 4095476
`
`and 4369706, attached hereto as Exhibits A and B, are valid, subsisting, uncancelled, and
`
`unrevoked. Reg. No. 4095476 is incontestable.
`
`22.
`
`Plaintiff has continuously used its LOUDCLOUD mark covered by Reg. No.
`
`4095476 in connection with analyzing educational tests scores and data for others; analyzing of
`
`educational test scores and data for others; business education and training services, namely,
`
`developing, and facilitating customized in-company leadership and executive development
`
`programs, providing executive coaching services, and providing public and in-company keynote
`
`presentations to business leaders; computer education training; computer education training
`
`services; conducting after school tutoring programs; educating at university or colleges;
`
`education services in the nature of courses at the university level; educational course monitoring,
`
`namely, tracking student performance; educational examination services; educational services,
`
`namely, conducting distance learning instruction at the secondary, college and graduate levels;
`
`educational services, namely, conducting distance learning instruction at the university level;
`
`educational services, namely, developing and conducting training courses and distribution of
`
`training materials in connection therewith for subject matters as requested by customers;
`
`educational services, namely, the offering of web based and classroom training for certification
`
`of teachers and continuing education for teachers and principals; information on education;
`
`providing courses of instruction at the undergraduate and graduate level; provision of
`
`
`
`8
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 9 of 16 PageID: 9
`
`information relating to educational services; teaching, training, tutoring and courses of
`
`instruction at the undergraduate, graduate and post-graduate level since at least as early as
`
`February 2, 2010.
`
`23.
`
`Plaintiff has continuously used its LOUDCLOUD (Stylized) mark covered by
`
`Reg. No. 4369706 for Plaintiff’s services since at least as early as December 1, 2011.
`
`24.
`
`Plaintiff’s continuous use and promotion of its federally registered
`
`LOUDCLOUD marks in interstate commerce have been prior to the acts of Defendant
`
`complained of herein.
`
`25.
`
`Plaintiff has given notice of its registration pursuant to Section 29 of the Lanham
`
`Act, 15 U.S.C. § 1111.
`
`26.
`
`Defendant’s use of the trademark LOUDCLOUD is unauthorized by Plaintiff and
`
`constitutes an infringement of Plaintiff’s registered LOUDCLOUD marks and is likely to cause
`
`confusion, mistake, and deception of the public as to the identity and origin of Plaintiff’s goods.
`
`27.
`
`Plaintiff’s and Defendant’s marks are identical and upon information and belief,
`
`both advertised and promoted to the general public.
`
`28.
`
`Unless enjoined by the Court, Defendant will continue to use the infringing mark,
`
`causing irreparable injury to Plaintiff, for which it has no adequate remedy at law.
`
`29.
`
`As a result of Defendant’s acts alleged as above, Plaintiff has incurred damages in
`
`an amount to be proven at trial.
`
`30.
`
`By reason of the foregoing acts, Defendant is liable to Plaintiff for trademark
`
`infringement under 15 U.S.C. § 1114.
`
`
`
`
`
`
`
`9
`
`

`

`Case 3:17-cv-10480 Document 1 Filed 11/01/17 Page 10 of 16 PageID: 10
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`COUNT II: COMMON LAW TRADEMARK INFRINGEMENT
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`Plaintiff incorporates Paragraphs 1-30 by reference as if fully set forth herein.
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`This cause of action arises under the common law of New Jersey.
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`By the acts and activities complained of herein, Defendant is in a position to pass
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`31.
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`32.
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`33.
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`off its goods as goods produced by, or under license from, or with the approval of, Plaintiff.
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`34.
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`Defendant’s acts and activities are also likely to cause consumers to mistakenly
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`believe that Plaintiff’s goods are produced by, or under license from, or with the approval of,
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`Defendant.
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`35.
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`Plaintiff has no control over the infringing goods and services advertised, offered
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`for sale, and/or sold by Defendant, with the result that Plaintiff’s brand recognition and goodwill
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`are irreparably injured by the acts complained of herein.
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`36.
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`Defendant’s acts and conduct constitute trademark infringement under the
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`common law.
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`37.
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`Defendant’s trademark infringement has caused and will continue to cause
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`damage to Plaintiff, and is causing irreparable harm to Plaintiff for which there is no adequate
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`remedy at law.
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`38.
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`As a result of Defendant’s acts alleged as above, Plaintiff has incurred damages in
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`an amount to be proven at trial.
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`COUNT III: UNFAIR COMPETITION UNDER LANHAM ACT § 43
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`Plaintiff incorporates Paragraphs 1-38 by reference as if fully set forth herein.
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`This cause of action arises under Section 43(a) of the Lanham Act, 15 U.S.C.
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`39.
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`40.
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`§ 1125(a).
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`41.
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`Defendant’s use of the mark LOUDCLOUD to promote, market, or render its
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`services in interstate commerce in competition with Plaintiff’s products constitutes unfair
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`competition pursuant to 15 U.S.C. § 1125(a).
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`42.
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`Defendant’s use of the LOUDCLOUD mark is likely to cause confusion, mistake,
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`and deception among consumers as to the origin, source, sponsorship, or approval of Defendant’s
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`goods and services, in that purchasers or others are possibly and likely to believe that
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`Defendant’s goods are associated with Plaintiff, or that Plaintiff’s services are associated with
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`Defendant. Defendant’s unfair competition has caused and will continue to cause damage to
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`Plaintiff, and is causing irreparable harm to Plaintiff for which there is no adequate remedy at
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`law.
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`43.
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`As a result of Defendant’s acts alleged as above, Plaintiff has incurred damages in
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`an amount to be proven at trial.
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`COUNT IV: COMMON LAW UNFAIR COMPETITION
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`44.
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`45.
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`Plaintiff incorporates Paragraphs 1-43 by reference as if fully set forth herein.
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`Defendant’s marketing and sale of a mobile app under the LOUDCLOUD mark is
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`likely to cause confusion, mistake, or deception as to Defendant’s affiliation, connection, or
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`association with Plaintiff, or as to the origin, sponsorship, or approval of Defendant’s products
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`and commercial activities.
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`46.
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`Defendant’s actions alleged herein constitute unfair competition in violation of
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`the common law of New Jersey.
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`47.
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`Defendant’s unfair competition has caused and will continue to cause damage to
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`Plaintiff, and is causing irreparable harm to Plaintiff for which there is no adequate remedy at
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`law.
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`48.
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`As a result of Defendant’s acts alleged as above, Plaintiff has incurred damages in
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`an amount to be proven at trial.
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`COUNT VI: VIOLATION OF NEW JERSEY’S UNFAIR COMPETITION ACT, N.J.S.A.
`§ 56:4-1
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`Plaintiff incorporates Paragraphs 1-48 by reference as if fully set forth herein.
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`49.
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`50.
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`This cause of action arises under New Jersey’s Unfair Competition Act, N.J.S.A.
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`§ 56:4-1.
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`51.
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`By the acts and activities complained of herein, Defendant has engaged in unfair
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`methods of competition and unfair or deceptive acts or practices by causing a likelihood of
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`confusion or misunderstanding as to the source, sponsorship, approval, or certification of goods
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`or services, as well as to the affiliation, connection, or association with goods or services by
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`adopting and using a mark which is identical to Plaintiff’s LOUDCLOUD marks.
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`52.
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`Defendant’s trademark infringement and unfair competition have caused and will
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`continue to cause damage to Plaintiff, and is causing irreparable harm to Plaintiff for which there
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`is no adequate remedy at law.
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`53.
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`As a result of Defendant’s acts alleged as above, Plaintiff has incurred damages in
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`an amount to be proven at trial.
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`COUNT VII: FEDERAL DILUTION BY TARNISHMENT
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`54.
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`Plaintiff incorporates Paragraphs 1-53 by reference as though fully set forth
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`herein.
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`55.
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`Plaintiff's LOUDCLOUD marks are distinctive and a "famous mark" within the
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`meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
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`56.
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`Plaintiff's LOUDCLOUD marks became distinctive and famous prior to the
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`Defendant's acts as alleged herein.
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`57.
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`Defendant's acts as alleged herein have tarnished and will, unless enjoined,
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`continue to tarnish, and are likely to tarnish Plaintiff's LOUDCLOUD marks by undermining and
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`damaging the valuable goodwill associated therewith by creating an association between
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`Plaintiff’s LOUDCLOUD marks and marijuana, which is an illegal drug under federal law.
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`58.
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`Defendant's dilution by tarnishment as alleged herein is intentional and willful in
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`violation of Section 43(c)(1) of the Lanham Act, and has already caused Plaintiff irreparable
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`damage and will, unless enjoined, continue to so damage Plaintiff, which has no adequate
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`remedy at law.
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`59.
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`As a result of Defendant’s acts alleged as above, Plaintiff has incurred damages in
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`an amount to be proven at trial.
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`COUNT VIII: DILUTION BY TARNISHMENT UNDER NEW JERSEY’S DILUTION
`LAW, N.J.S.A. § 56:3-20
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`60.
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`61.
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`Plaintiff incorporates Paragraphs 1-59 by reference as though fully set forth herein.
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`This cause of action for dilution by tarnishment arises under New Jersey’s dilution
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`law, N.J.S.A. § 56:3-20.
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`62.
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`63.
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`Plaintiff's LOUDCLOUD marks are distinctive and famous.
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`Defendant is using the LOUDCLOUD mark in commerce for a mobile application
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`related to marijuana, which is an illegal drug under federal law.
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`64.
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`65.
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`Defendant’s LOUDCLOUD mark is identical to Plaintiff’s LOUDCLOUD marks.
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`Plaintiff's LOUDCLOUD marks became distinctive and famous prior to the
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`Defendant's acts as alleged herein.
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`66.
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`Defendant's acts as alleged herein have tarnished and will, unless enjoined,
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`continue to tarnish, Plaintiff's LOUDCLOUD marks by undermining and damaging the valuable
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`goodwill associated therewith, by creating an instinctive mental association between Plaintiff’s
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`LOUDCLOUD marks and marijuana.
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`67.
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`Defendant’s dilution by tarnishment has caused and will continue to cause damage
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`to Plaintiff, and is causing irreparable harm to Plaintiff for which there is no adequate remedy at
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`law.
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`68.
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`As a result of Defendant’s acts alleged as above, Plaintiff has incurred damages in
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`an amount to be proven at trial.
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`COUNT IX: UNJUST ENRICHMENT
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`Plaintiff incorporates Paragraphs 1-68 by reference as if fully set forth herein.
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`This cause of action arises under the common law.
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`By the acts and activities complained of herein, Defendant has been unjustly
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`69.
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`70.
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`71.
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`enriched.
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`WHEREFORE, Plaintiff respectfully requests the Court enter an Order and Judgment granting it
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`REQUEST FOR RELIEF
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`the following relief:
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`1. Permanently enjoining the Defendant and each of its agents, employees, officers,
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`attorneys, successors, assigns, affiliates, and any persons in privity or active concert or
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`participation with any of them from:
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`(a) using the LOUDCLOUD mark or any mark containing the term
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`“LOUDCLOUD”;
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`(b) using any trademark that imitates or is confusingly similar to or in any way
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`similar to Plaintiff’s trademark LOUDCLOUD, or that is likely to cause confusion, mistake,
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`deception, or public misunderstanding as to the or