Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA840583
`
`Filing date:
`
`08/18/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91236200
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`A3 Mobility LLC
`
`KATHERINE M. BASILE & JASON E GARCIA
`REED SMITH LLP
`P.O. BOX 488 REED SMITH DOCKETING DEPT.
`PITTSBURGH, PA 15230
`Email: ptoipinbox@reedsmith.com, kbasile@reedsmith.com, jgar-
`cia@reedsmith.com, jlee@reedsmith.com, rlin@reedsmith.com
`
`Motion to Suspend for Civil Action
`
`Austin Padgett
`
`trademarks@troutmansanders.com, john.bowler@troutmansanders.com, mi-
`chael.heafey@troutmansanders.com, mark.mao@troutmansanders.com, mi-
`chael.hobbs@troutmansanders.com, puja.lea@troutmansanders.com, aus-
`tin.padgett@troutmansanders.com
`
`/Austin Padgett/
`
`08/18/2017
`
`Motion to Suspend.pdf(132571 bytes )
`Exhibit A.pdf(1455394 bytes )
`Exhibit B.pdf(3157033 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`A3 Mobility LLC
`87323570
`August 18, 2017
`GIG
`
`In re Application of:
`Serial No.:
`Filed:
`Mark:
`
`
`GENERAL MOTORS LLC
`
`Opposer,
`
`v.
`
`A3 MOBILITY LLC
`
`
`
`
`
`
`
`Applicant.
`
`)
`)
`)
`)
`) Opposition No. 91236200
`)
` )
`)
`)
`
`MOTION TO SUSPEND OPPOSITION PROCEEDING
`PENDING OUTCOME OF CIVIL ACTION
`
`Pursuant to 37 C.F.R § 2.117, Applicant A3 Mobility LLC (“A3 Mobility”) hereby
`
`requests that the above-captioned opposition proceeding be suspended pending disposition of a
`
`civil action in the United States District Court of the Northern District of California, namely,
`
`American Automobile Association of Northern California, Nevada & Utah and A3 Mobility LLC v.
`
`General Motors LLC and Maven Drive LLC., Case 3:17-cv-03874 (N.D. Cal.) (the “Civil
`
`Action.”).
`
`Statement of Facts and Procedural History
`
`1.
`
`On February 3, 2017, Applicant A3 Mobility filed an intent-to-use trademark
`
`application for the trademark GIG (Application No. 87/323570) (the “GIG Mark”) for the
`
`following goods and services:
`
`Class
`9
`
`
`
`Goods and Services
`Computer application software for computers, smartphones, mobile devices, wearable
`devices, tablets, and devices that have embedded computing functions, namely,
`software for collecting, editing, organizing, modifying, storing and sharing data in the
`field of transportation, vehicle sharing, transportation aggregation, transportation
`reservation, and trip planning and organizing; computer software that compares
`
`

`

`35
`
`
`39
`
`42
`
`
`prices and ratings for travel and transportation; software for operating autonomous
`vehicles
`Business management and business administration of transportation aggregation
`services, and vehicle rental and vehicle-sharing services for temporary use of vehicles
`for transportation
`Transport reservation services; transportation information; vehicle rental and vehicle
`sharing services; providing transportation reservation services online that facilitate
`vehicle sharing, trip planning and organizing transport for individuals; ride-hailing
`services; fleet rental services; vehicle operation services, namely, operating
`autonomous vehicles
`Providing software as a service for collecting, editing, organizing, modifying, storing
`and sharing data in the field of transportation, vehicle sharing, transportation
`aggregation, transportation reservation, and trip planning and organizing; providing
`software as a service that compare prices and ratings for travel and transportation;
`providing software as a service for autonomous vehicles
`
`
`2.
`
`On May 11, 2017, Opposer General Motors LLC (“GM”) filed a trademark
`
`application (Application No. 87-446290) for MAVEN GIG (the “MAVEN GIG Mark”).
`
`3.
`
`On July 7, 2017, Applicant A3 Mobility filed the Civil Action in the U.S. District
`
`Court for the Northern District of California against Opposer GM. A true and correct copy of the
`
`complaint filed in the Civil Action is attached as Exhibit A hereto (the “Complaint.”).
`
`4.
`
`On August 18, 2017, Opposer GM filed the instant Opposition No. 91236200
`
`against the GIG Mark, attached hereto as Exhibit B. GM’s Opposition No. 91236200 against the
`
`GIG Mark is based on a claimed priority and likelihood of confusion with the MAVEN GIG
`
`Mark.
`
`5.
`
`GM’s Opposition No. 91236200 against the GIG Mark cites the California Civil
`
`Action as a related proceeding. See Exhibit B at p. 2.
`
`Arguments
`
`6.
`
`A3 Mobility’s Complaint asserts the GIG Mark and alleges four claims against
`
`GM, including: (1) common law trademark infringement; (2) federal unfair competition and false
`
`2
`
`

`

`designation of origin; (3) unfair competition under California law; and (4) common law unfair
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`competition.
`
`7.
`
`A3 Mobility’s Complaint alleges first use of the GIG Mark in April 2017 and seeks
`
`a judgment against GM for all remedies the federal court finds just and equitable, including
`
`monetary and injunctive relief.
`
`8.
`
`GM’s instant Opposition against A3 Mobility’s GIG Mark is based on the
`
`grounds of priority and likelihood of confusion. These issues are subsumed in the claims made
`
`by A3 Mobility in the Civil Action. Therefore, disposition of the Civil Action will resolve the
`
`issues in this instant proceeding, in addition to other claims and remedies available in federal
`
`court. Thus, the claims in the Civil Action have great bearing on the instant opposition.
`
`9.
`
`However, the Civil Action will also decide issues outside the Board’s jurisdiction,
`
`including, for example monetary and injunctive relief. Thus, it serves judicial efficiency to stay
`
`this opposition proceeding pending final judgment in the Civil Action. See Trademark Trial and
`
`Appeal Board Manual of Procedure (“TBMP”) § 510.02 (“A civil action may involve other
`
`matters outside Board jurisdiction and may consider broader issues beyond right to registration
`
`and, therefore, judicial economy is usually served by suspension”).
`
`10.
`
`Per 37 C.F.R. § 2.117(a), A3 Mobility requests that the Board suspend the
`
`Opposition until a final judgment in the Civil Action. Pursuant to the regulations, the Board
`
`suspends such Board opposition proceedings to allow final determination of the issues being
`
`litigated in the federal district court if those issues will have a bearing on the issues before the
`
`Board. Id.; Other Telephone Co. v. Connecticut Nat’l Telephone Co., 181 U.S.P.Q. 125 (TTAB
`
`1974) (suspending opposition proceeding where federal court ruling on infringement and unfair
`
`competition claims have bearing on outcome of proceeding before Board).
`
`3
`
`

`

`11.
`
`Per 37 C.F.R. § 2.117(c) and TBMP § 510.02(a), A3 Mobility has correctly filed
`
`this motion to suspend by filing a copy of the pleadings from the Civil Action as shown in the
`
`attached Exhibit A.
`
`Conclusion
`
`12.
`
`As shown in the attached Exhibit A, the issues of priority and likelihood of
`
`confusion at issue in this Opposition will be resolved in the Civil Action. As such, the federal
`
`court’s resolution of the claims in the Civil Action will have a bearing on the above proceeding.
`
`Accordingly, A3 Mobility asks the Board to exercise its discretion and suspend the above matter
`
`pending resolution of the dispute in the Civil Action.
`
`WHEREFORE, for the foregoing reasons, A3 Mobility moves the Board to suspend the
`
`above proceeding.
`
`On this 18th day of August 2017.
`
`Respectfully submitted,
`
`TROUTMAN SANDERS LLP
`
`
`
`
`
`
`
`/ s / J o h n B o w l e r
`John Bowler
`600 Peachtree Street, N.E., Suite 5200
`Atlanta, Georgia 30308-2216
`Tel: (404) 885-3330
`trademarks@troutmansanders.com
`john.bowler@troutmansanders.com
`
`
`
`Counsel for A3 Mobility LLC
`
`
`
`4
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`A3 Mobility LLC
`87323570
`August 18, 2017
`GIG
`
`In re Application of:
`Serial No.:
`Filed:
`Mark:
`
`
`GENERAL MOTORS LLC
`
`Opposer,
`
`v.
`
`A3 MOBILITY LLC
`
`
`
`
`
`
`
`Applicant.
`
`)
`)
`)
`)
`) Opposition No. 91236200
`)
` )
`)
`)
`
`
`CERTIFICATE OF SERVICE
`
`On August 18, 2017, a copy of this MOTION TO SUSPEND OPPOSITION
`PROCEEDING PENDING OUTCOME OF CIVIL ACTION was sent via email to Opposer’s
`counsel of record at the following address:
`
`Cynthia Johnson Walden
`Fish & Richardson P.C.
`PO Box 1022
`Minneapolis, MN 55440-1022
`United States
`walden@fr.com, cheng@fr.com, tmdoctc@fr.com
`phone: (617) 956-5926
`
`
`
`This 18th day of August 2017.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`

`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 1 of 14
`
`EXHIBIT A - PAGE 1
`
`OPP NO. 91236200
`
`MICHAEL F. HEAFEY, Bar No. 153499
`michael.heafey@troutmansanders.com
`MARK C. MAO, Bar No. 236165
`mark.mao@troutmansanders.com
`TROUTMAN SANDERS LLP
`580 California Street, Suite 1100
`San Francisco, CA 94104
`Telephone: (415) 477-5700
`Facsimile: (415) 477-5710
`
`MICHAEL D. HOBBS, JR. (pro hac vice
`forthcoming)
`michael.hobbs@troutmansanders.com
`TROUTMAN SANDERS LLP
`Bank of America Plaza
`600 Peachtree Street NE, Suite 5200
`Atlanta, GA 30308-2216
`Telephone: (404) 885-3000
`
`Attorneys for Plaintiffs
`American Automobile Association of Northern
`California, Nevada & Utah; and A3 Mobility LLC
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`AMERICAN AUTOMOBILE
`ASSOCIATION OF NORTHERN
`CALIFORNIA, NEVADA & UTAH, a
`California corporation, and
`A3 MOBILITY LLC, a California limited
`liability company,
`
`Case No.
`
`COMPLAINT
`
`Plaintiffs,
`
`v.
`
`GENERAL MOTORS LLC, a Delaware
`limited liability company, and
`MAVEN DRIVE LLC, a Delaware limited
`liability company,
`
`Defendants.
`
`DEMAND FOR JURY TRIAL
`
`COMPLAINT
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`IRVINE,CA92614-2545
`
`SUITE1400
`
`5PARKPLAZA
`
`TROUTMANSANDERSLLP
`
`

`

`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 2 of 14
`
`EXHIBIT A - PAGE 2
`
`OPP NO. 91236200
`
`COMPLAINT
`
`Plaintiffs American Automobile Association of Northern California, Nevada & Utah
`
`(“AAA NCNU”) and its affiliate A3 Mobility LLC (“Mobility” and together with AAA NCNU,
`
`“Plaintiffs”) for this Complaint against General Motors LLC (“General Motors”) and its affiliate
`
`Maven Drive LLC (“Maven” and together with General Motors, “Defendants”), state as follows:
`
`SUBSTANCE OF THE ACTION
`
`1.
`
`This is a civil action for common law trademark infringement, federal unfair
`
`competition and false designation of origin, violation of California’s unfair competition law and
`
`common law unfair competition arising out of Defendants’ misappropriation and infringement of
`
`the Plaintiffs’ trademark.
`
`2.
`
`AAA NCNU is a member club within the American Automobile Association that
`
`serves members within its territory states, which includes Northern California.
`
`3.
`
`Mobility is a wholly owned subsidiary of AAA NCNU that operates vehicle-
`
`sharing services.
`
`4.
`
`On February 3, 2017, Mobility filed an intent-to-use trademark application for the
`
`trademark GIG (“GIG Mark”) in the U.S. Patent and Trademark Office (“PTO”), Application No.
`
`87-323570, for the following services:
`
`Class
`Int’l Class: 009
`
`U.S.: 021, 023, 026, 036, 038
`
`Int’l Class: 035
`
`U.S.: 100, 101, 102
`
`COMPLAINT
`
`1
`
`Services
`Computer application software for computers,
`smartphones, mobile devices, wearable devices,
`tablets, and devices
`that have embedded
`computing functions, namely,
`software for
`collecting,
`editing,
`organizing, modifying,
`storing and sharing data in the field of
`transportation, vehicle sharing,
`transportation
`aggregation, transportation reservation, and trip
`planning and organizing; computer software
`that compares prices and ratings for travel and
`transportation;
`software
`for
`operating
`autonomous vehicles
`business
`and
`Business
`management
`administration of
`transportation aggregation
`services, and vehicle rental and vehicle-sharing
`services for
`temporary use of vehicles for
`
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`IRVINE,CA92614-2545
`
`SUITE1400
`
`5PARKPLAZA
`
`TROUTMANSANDERSLLP
`
`

`

`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 3 of 14
`
`EXHIBIT A - PAGE 3
`
`OPP NO. 91236200
`
`Int’l Class: 039
`
`U.S.: 100, 105
`
`Int’l Class: 042
`
`U.S.: 100, 101
`
`transportation
`transportation
`Transport reservation services;
`information; vehicle rental and vehicle sharing
`services; providing transportation reservation
`services online that facilitate vehicle sharing,
`trip planning and organizing transport
`for
`individuals; ride-hailing services; fleet rental
`services; vehicle operation services, namely,
`operating autonomous vehicles
`Providing software as a service for collecting,
`editing, organizing, modifying, storing and
`sharing data in the field of
`transportation,
`vehicle sharing,
`transportation aggregation,
`transportation reservation, and trip planning
`and organizing; providing software as a service
`that compare prices and ratings for travel and
`transportation; providing software as a service
`for autonomous vehicles
`
`5.
`
`Plaintiffs launched their vehicle-sharing services on April 17, 2017, under the GIG
`
`Mark.
`
`6.
`
`The PTO approved, passed and published the application to register the GIG Mark
`
`on June 20, 2017. A true and correct page from the official website of the PTO showing the
`
`current status of the intent-to-use application for the GIG Mark is attached to this Complaint as
`
`Exhibit 1.
`
`7.
`
`Since at
`
`least as early as April 17, 2017, Plaintiffs have extensively and
`
`continuously used the GIG Mark to identify its vehicle-sharing services.
`
`8.
`
`Mobility has entered into a license agreement with AAA NCNU so that AAA
`
`NCNU may use and enforce, with Mobility, the GIG Mark. Except for Mobility and AAA
`
`NCNU, no one else has a right to enforce the GIG Mark.
`
`9.
`
`Three months after Mobility filed its intent-to use application, and subsequent to
`
`Mobility’s acquisition of prior trademark rights in the GIG Mark, Defendants made a public
`
`announcement of the adoption of its vehicle-sharing services using the mark MAVEN GIG
`
`(“MAVEN GIG Mark”).
`
`10.
`
`On May 11, 2017, less than a week after Plaintiffs notified the Defendants of their
`
`significant concern regarding the Defendants’ adoption of the MAVEN GIG Mark, Defendants
`
`COMPLAINT
`
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`IRVINE,CA92614-2545
`
`SUITE1400
`
`5PARKPLAZA
`
`TROUTMANSANDERSLLP
`
`

`

`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 4 of 14
`
`EXHIBIT A - PAGE 4
`
`OPP NO. 91236200
`
`filed a federal trademark application (Application No. 87-446290) with the PTO for MAVEN
`
`GIG.
`
`11.
`
`On June 21, 2017, the PTO suspended prosecution on the MAVEN GIG Mark
`
`pending registration or abandonment of three earlier filed marks. Among these three marks is
`
`Mobility’s 87-323570 application. Exhibit 2 is a true and correct copy of the PTO record
`
`showing suspension of prosecution of the MAVEN GIG Mark.
`
`12.
`
`This Complaint asserts claims for common law trademark infringement (Count
`
`One); for federal unfair competition and false designation of origin in violation of Section 43(a)
`
`of the Trademark Act of 1946, 15 U.S.C. § 1125(a) (Count Two); for violation of California
`
`Business and Professions Code, § 17200, et seq. (Count Three); and for violation of common law
`
`unfair competition (Count Four). Plaintiffs bring this action to obtain injunctive relief to stop
`
`Defendants’ ongoing illegal
`
`trademark use,
`
`infringement and unfair competition of AAA
`
`NCNU’s GIG Mark and to seek damages sustained by Plaintiffs as a result of Defendants’
`
`unlawful actions, plus attorney’s fees, costs and other relief.
`
`PARTIES, JURISDICTION AND VENUE
`
`13.
`
`AAA NCNU is a California corporation with its principle place of business in
`
`Walnut Creek, California, 94597-8863. Mobility is a California limited liability company with its
`
`principle place of business in Walnut Creek, California, 94597-8863.
`
`14.
`
`Defendants General Motors and Maven are Delaware limited liability companies,
`
`both with a principal place of business at 300 Renaissance Center, Detroit, Michigan 48265-3000.
`
`15.
`
`Service may be made upon Defendants’ registered address, 251 Little Falls Drive,
`
`Wilmington, DE 19808, which is the registered address associated with the Defendants in the
`
`Delaware Department of State records. Delaware allows service of process to be made to the
`
`registered address of the entity that appears on Delaware Department of State records.
`
`16.
`
`This Court has original jurisdiction over this action under 28 U.S.C. §§ 1331 and
`
`1338(a) and (b) as it involves claims presenting federal questions under 15 U.S.C. § 1121(a)
`
`(actions arising under the Lanham Act have original jurisdiction in federal courts). This Court
`
`also has supplemental jurisdiction over the California statutory claims for unfair competition
`
`COMPLAINT
`
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`IRVINE,CA92614-2545
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`SUITE1400
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`5PARKPLAZA
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`TROUTMANSANDERSLLP
`
`

`

`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 5 of 14
`
`EXHIBIT A - PAGE 5
`
`OPP NO. 91236200
`
`under 28 U.S.C. §§ 1338(b) and 1367(a) because these claims are so related to the claims under
`
`which the Court has original jurisdiction that it forms part of the same case or controversy under
`
`Article III of the United States Constitution.
`
`17.
`
`This Court has personal jurisdiction over Defendants because Defendants are
`
`qualified to do business in the State of California as per the California Secretary of State website;
`
`Defendants regularly conduct and solicit business within the State of California and in the
`
`Northern District of California (this
`
`“District”); Defendants, directly and/or
`
`through
`
`intermediaries, ship, distribute, offer for sale, sell, and/or advertise their products and services to
`
`consumers and retailers in the State of California and this District; and Defendants committed
`
`acts of infringement and unfair competition in the State of California and in this District.
`
`18.
`
`Confirming Defendants’ pattern of regularly conducted business in the State of
`
`California and in this District, Defendants are offering their vehicle-sharing services using their
`
`infringing MAVEN GIG Mark in this District as confirmed in a press release on Maven’s website
`
`dated June 20, 2017, that the Maven Gig vehicle-sharing services were going to be offered in San
`
`Francisco, California.
`
`19.
`
`Venue is proper in this District under 28 U.S.C. §1391 (b)(1), (b)(2) and (c)(2)
`
`because this Court has personal jurisdiction over Defendants in this District, and a substantial part
`
`of the events or acts giving rise to the claims occurred in this District in that Defendants have
`
`transacted business in this District and have committed acts of trademark infringement and unfair
`
`competition in this District.
`
`INTRA-DISTRICT VENUE
`
`20.
`
`Pursuant to Local Rule 3-2 (c), intellectual property actions are assigned on a
`
`district-wide basis.
`
`FACTS COMMON TO ALL COUNTS
`The GIG Mark
`
`21.
`
`In early 2017, Plaintiffs started using the GIG Mark in U.S. interstate commerce
`
`for their GIG vehicle-sharing services.
`
`//
`
`COMPLAINT
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`IRVINE,CA92614-2545
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`SUITE1400
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`5PARKPLAZA
`
`TROUTMANSANDERSLLP
`
`

`

`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 6 of 14
`
`EXHIBIT A - PAGE 6
`
`OPP NO. 91236200
`
`22.
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`Plaintiffs have made bona fide use and continuously and extensively used the GIG
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`Mark in U.S. commerce and in the ordinary course of trade.
`
`23. Mobility filed an intent-to-use trademark application for the GIG Mark in the PTO
`
`on February 3, 2017 (Application No. 87-323570). Mobility’s application was approved by the
`
`PTO and published on June 20, 2017.
`
`24.
`
`Plaintiffs have invested a substantial amount of time, money and other resources in
`
`promoting the GIG Mark in U.S. commerce.
`
`25.
`
`Plaintiffs have continuously and extensively advertised and promoted their
`
`vehicle-sharing services under the GIG Mark in a large number of online, print, social media and
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`other communications media in the United States.
`
`26.
`
`The public and trade have come to rely on Plaintiffs’ GIG Mark to distinguish
`
`Plaintiffs’ services from those of others.
`
`27.
`
`The GIG Mark represents a valuable asset owned by Plaintiffs.
`
`Defendants Unlawful Activities
`
`28.
`
`General Motors designs, manufactures, markets, and distributes vehicles and
`
`vehicle parts, and sells financial services throughout the United States including in the State of
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`California and this District.
`
`29. Maven is an affiliate of General Motors. It provides vehicle-sharing services under
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`the MAVEN mark including in the State of California and this District.
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`30. Months after Mobility filed its federal intent-to-use application for their GIG
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`Mark, on May 3, 2017, Defendants publicly announced their vehicle-sharing services under the
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`MAVEN GIG Mark in U.S. commerce and in the ordinary course of Defendants’ trade, including
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`on Internet websites. After Plaintiffs notified the Defendants of their significant concern
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`regarding the adoption of MAVEN GIG for vehicle-sharing services, on May 11, 2017,
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`Defendants filed a trademark application (Application No. 87-446290) for the MAVEN GIG
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`Mark with the PTO.
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`//
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`COMPLAINT
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`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 7 of 14
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`EXHIBIT A - PAGE 7
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`OPP NO. 91236200
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`31.
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`Defendants did not begin using the MAVEN GIG Mark in U.S. commerce as a
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`service mark until after Plaintiffs first commenced continuous use in commerce of, and Mobility
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`applied to federally register the GIG Mark for, vehicle-sharing services.
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`32.
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`Plaintiffs are thus the prior users and the prior federal applicant of the GIG Mark
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`as against the junior subsequent date of Defendants’ adoption and use of the MAVEN GIG Mark
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`in U.S. commerce as a service mark, and Plaintiffs have priority of rights to use and enforce the
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`GIG Mark as against Defendants’ use of the MAVEN GIG Mark.
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`33.
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`Defendants’ services, which are offered using the MAVEN GIG Mark in U.S.
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`commerce, is used to identify vehicle leasing services to vehicle-sharing drivers, and therefore is
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`closely related to the services used and advertised by Plaintiffs under their GIG Mark.
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`34.
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`On May 3, 2017, Defendants announced the launch of Defendants’ services
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`bearing the infringing and unauthorized MAVEN GIG Mark. Exhibit 3
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`35.
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`On June 20, 2017, Defendants announced their services using the MAVEN GIG
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`Mark would be expanding to San Francisco, California. Exhibit 4
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`36.
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`Defendants are using an overall confusingly similar mark to Plaintiffs’ in their
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`visual and conceptual elements. The MAVEN GIG Mark has a strong visual similarity to the GIG
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`Mark because there is only one word that is different between the two marks and the MAVEN
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`GIG Mark uses the GIG Mark in its entirety.
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`37.
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`The parties’ marks have a strong conceptual similarity because the relevant marks
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`are for, or are closely associated with, vehicle-sharing services.
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`38.
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`A number of factors confirm that there is a likelihood that the consuming public
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`will find Defendants’ use of the MAVEN GIG Mark is confusingly similar to Plaintiffs’ GIG
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`Mark, including, for example, that the parties are using almost identical marks; the services that
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`the parties’ marks represent are almost identical; and similar advertising media, including Internet
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`websites, are used to promote the services of both Plaintiffs and Defendants.
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`39.
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`Upon information and belief, Defendants intentionally, willfully and knowingly
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`adopted the MAVEN GIG Mark, which is confusingly similar to the GIG Mark and did so with
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`blatant disregard for Plaintiffs’ trademark rights.
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`COMPLAINT
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`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 8 of 14
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`EXHIBIT A - PAGE 8
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`OPP NO. 91236200
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`40.
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`For each of the above reasons, Defendants’ advertising and sale of their services in
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`U.S. commerce and under the MAVEN GIG Mark are likely to cause confusion, or to cause
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`mistake, or to deceive and mislead as to the source, origin, sponsorship or approval of
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`Defendants’ services and suggest that Defendants have, or their services have, an affiliation,
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`sponsorship with or approval by Plaintiffs, which they do not have.
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`41.
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`Prior to filing this Complaint, counsel for Plaintiffs sent a notice to Defendant
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`notifying it of Plaintiffs’ rights and services and significant concern regarding confusion resulting
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`from the use of the MAVEN GIG Mark. Defendants have nevertheless persisted in their use of
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`the MAVEN GIG Mark. Based on Defendants’ disregard of Plaintiffs’ notice, their refusal to
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`acknowledge their infringement of the GIG Mark and their continued and expanding use of the
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`infringing MAVEN GIG Mark as shown in Exhibits 3 and 4, Plaintiffs have been and will
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`continue to be damaged by the Defendants’ use of the MAVEN GIG Mark.
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`COUNT ONE
`Common Law Trademark Infringement
`(Only Mobility As Plaintiff)
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`42. Mobility incorporates herein and realleges Paragraphs 1-41 of this Complaint.
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`43.
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`As a result of Mobility’s continuous use and promotion of the GIG Mark, as well
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`as the distinctiveness of this mark, consumers associate and recognize the mark as representing a
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`single source or sponsor of services, and therefore the trademark is protectable at common law.
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`44. Mobility owns and enjoys trademark rights in the GIG Mark, which rights are
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`superior to any rights that Defendants may claim in and to the MAVEN GIG Mark with respect to
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`Defendants’ services. Mobility’s GIG Mark is strong and inherently distinctive.
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`45.
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`Defendants’ adoption, distribution, marketing, promotion, offering for sale, and
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`sale of their services that use the MAVEN GIG Mark, which is confusingly similar to Mobility’s
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`GIG Mark, constitutes an infringement of Mobility’s GIG Mark in violation of common law.
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`46.
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`As a result of Defendants’ unauthorized use of the MAVEN GIG Mark which is
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`confusingly similar to Mobility’s GIG Mark, the public is likely to believe that Defendants’
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`services have been created, approved by, or are affiliated with Mobility’s. Consequently,
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`COMPLAINT
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`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 9 of 14
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`EXHIBIT A - PAGE 9
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`OPP NO. 91236200
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`Mobility’s ability to gain revenue through the sale of their vehicle-sharing services is limited due
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`to Defendants’ improper use of the MAVEN GIG Mark.
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`47.
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`As a result of Defendants’ wrongful conduct, Mobility has suffered and will
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`continue to suffer damages, as well as the loss of control over the goodwill and reputation
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`established in their GIG Mark.
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`48.
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`As a result of Defendants’ wrongful conduct, Mobility has been damaged in an
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`amount not presently ascertained, and such damage will continue and increase unless and until
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`Defendants are enjoined from continuing their wrongful conduct. Unless Defendants’ unlawful
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`conduct is enjoined, Mobility has no adequate remedy at law for Defendants’ wrongful conduct,
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`because among other things, (a) Mobility’s GIG Mark is unique and valuable property which has
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`no readily determinable market value; (b) Defendants’ infringement constitutes harm to Mobility
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`such that Mobility cannot be made whole by a monetary award; (c) if Defendants’ wrongful
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`conduct is allowed to continue, the public is likely to become further confused, mistaken or
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`deceived as to the source, origin or authenticity of the infringing vehicle-sharing services; and (d)
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`Defendants’ wrongful conduct, and the resulting damage to Mobility, are continuing and ongoing,
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`since Defendants currently sell their services under the MAVEN GIG Mark.
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`COUNT TWO
`Federal Unfair Competition
`and False Designation of Origin
`15 U.S.C. § 1125(a)
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`49.
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`50.
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`Plaintiffs incorporate herein and reallege Paragraphs 1-41 of this Complaint.
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`Plaintiffs are the common law owners of all rights and title to, and have valid and
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`protectable prior rights to the GIG Mark.
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`51.
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`Defendants’ actions described above and specifically, without limitation,
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`Defendants’ use in U.S. commerce of the confusingly similar MAVEN GIG Mark in the
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`distribution, marketing, promotion, offering for sale and sale of their services constitute unfair
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`competition, false designations of origin and false descriptions or representations. Such conduct
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`wrongfully trades on Plaintiffs’ goodwill in their GIG Mark and the reputation established by
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`Plaintiffs in connection with their services, passes off Defendants’ services in commerce as that
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`COMPLAINT
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`OPP NO. 91236200
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`of Plaintiffs’ and limits Plaintiffs’ ability to interact with end user consumers and gain revenue
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`through the sale of services using the GIG Mark.
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`52.
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`As a result of Defendants’ current unlawful use in commerce of the MAVEN GIG
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`Mark, which is confusingly similar to the GIG Mark, consumers are likely to be misled, deceived
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`and confused as to the origin, sponsorship, or affiliation of Defendants’ services.
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`53.
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`Defendants’ unauthorized and tortious conduct also has deprived and will continue
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`to deprive Plaintiffs of the ability to control the consumer perception of their services offered for
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`sale and sold under their GIG Mark, placing the valuable reputation and goodwill of Plaintiffs in
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`the hands of Defendants.
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`54.
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`By engaging in the aforesaid acts, Defendants are unfairly competing with
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`Plaintiffs.
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`55.
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`Defendants’ conduct in adopting and using the MAVEN GIG Mark is likely to
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`cause confusion, mistake or deception as to the affiliation, connection and association of
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`Defendants and their services with Plaintiffs and their services, and as to the sponsorship, origin
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`or approval of Defendants and their services, in violation of Section 43(a) of the Lanham Act, 15
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`U.S.C. § 1125(a).
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`COUNT THREE
`Unfair Competition
`Cal. Bus. & Prof. Code § 17200, et seq.
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`56.
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`57.
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`Plaintiffs incorporate herein and reallege Paragraphs 1-41 of this Complaint.
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`By reason of the foregoing wrongful conduct, Defendants have engaged in
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`unlawful and/or fraudulent business acts or practices, constituting unfair competition in violation
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`of California Business and Professions Code § 17200, et seq.
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`58.
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`By reason of the foregoing wrongful conduct, Defendants have engaged in
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`unlawful acts relating to their unauthorized adoption and use in U.S. commerce of the confusingly
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`similar MAVEN GIG Mark in connection with the distribution, marketing, promotion, offering
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`for sale and sale of their services, which have caused, and which will continue to cause, a
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`likelihood of confusion or misunderstanding as to the source and sponsorship of Defendants’
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`services in violation of California Business and Professions Code § 17200, et seq.
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`COMPLAINT
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`Case 3:17-cv-03874 Document 1 Filed 07/07/17 Page 11 of 14 EXHIBIT A - PAGE 11
`OPP NO. 91236200
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`59.
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`By reason of the foregoing wrongful conduct, Defendants have engaged in acts
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`relating to their unauthorized adoption and use of the confusingly similar MAVEN GIG Mark in
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`the distribution, marketing, promotion, offering for sale and sale of their services, which have
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`caused and which will continue to cause, a likelihood of confusion or misunderstanding as to the
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`affiliation, connection or association with or certification by Plaintiffs in violation of California
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`Business and Professions Code § 17200, et seq.
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`60.
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`Defendants’ conduct constitutes unfair competition in violation of California law,
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`including California Business and Professions Code § 17200, et seq.
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`61.
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`Defendants’ actions complained of herein have caused and, unless permanently
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`enjoined by the Court under California Business and Professions Code § 17200, et seq., will
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`continue to cause irreparable harm to Plaintiffs and to their services inclu