Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA933007
`
`Filing date:
`
`11/05/2018
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91238235
`
`Defendant
`Zola Inc.
`
`ANITA B POLOTT
`MORGAN LEWIS & BOCKIUS LLP
`1111 PENNSYLVANIA AVE NW
`WASHINGTON, DC 20004
`UNITED STATES
`trademarks@morganlewis.com, anita.polott@morganlewis.com,
`peter.byrne@morganlewis.com, michelle.raynes@morganlewis.com
`202-739-5397
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Motion to Suspend for Civil Action
`
`Peter G. Byrne
`
`peter.byrne@morganlewis.com
`
`/Peter G. Byrne/
`
`11/05/2018
`
`Attachments
`
`Motion to Suspend.pdf(3883333 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL & APPEAL BOARD
`
`In re Application Serial No. 87/307,497
`Reg. No. 4573734
`
`Mark: ZOLA
`
`PREZOLA LIMITED,
`
`Petitioner/Opposer,
`
`v.
`
`ZOLA, INC.
`
`Applicant/Registrant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`) Opposition No. 91238235
`)
`(Parent Case)
`) Cancellation No. 92067549
`)
`)
`)
`)
`)
`
`MOTION TO SUSPEND FOR CIVIL ACTION
`
`In accordance with Rule 2.117 of the Trademark Rules of Practice, and by and through its
`
`undersigned counsel, Applicant/Registrant Zola, Inc. (“Zola”) respectfully requests suspension of
`
`the above-styled consolidated opposition and cancellation proceedings (“Proceeding”) because
`
`the claims asserted by Petitioner Prezola Limited (“Prezola”) are the subject of a pending civil
`
`action.
`
`The parties to this Proceeding are currently involved in a civil action, Zola, Inc. v.
`
`Prezola Ltd., Civil Action No. 1:18-cv-10213, which is pending in the United States District
`
`Court for the Southern District of New York. In the civil action, Zola has, inter alia, requested a
`
`declaratory judgment that its ZOLA mark does not infringe Prezola’s PREZOLA Mark on the
`
`grounds that (a) Prezola does not have priority in its PREZOLA Mark in the United States vis-à-
`
`

`

`vis the ZOLA Mark and/or (b) Zola’s ZOLA Mark has not caused, nor is it likely to cause,
`
`confusion with Prezola’s PREZOLA Mark. Moreover, Zola has requested an order directing the
`
`United States Patent and Trademark Office to dismiss the Proceeding on the same grounds. A
`
`copy of the Complaint is attached as Exhibit 1.
`
`The same issues raised in the above referenced pending civil litigation, including priority
`
`and likelihood of confusion, have also been raised by Prezola in the Proceeding. Moreover,
`
`Zola’s requested relief includes a request for the Board to dismiss the Proceeding. Thus, the
`
`outcome of the civil action will have a bearing on this Proceeding.
`
`WHEREFORE, Zola requests that this Proceeding be suspended until termination of the
`
`above referenced civil action.
`
`Respectfully submitted,
`
`/s/ Anita B. Polott
`Anita B. Polott
`MORGAN, LEWIS & BOCKIUS LLP
`1111 Pennsylvania Avenue, NW
`Washington, DC 20004-2541
`(202) 739-3000
`
`Peter G. Byrne
`MORGAN, LEWIS & BOCKIUS LLP
`One Market Street, Spear Street Tower
`San Francisco, CA 94610
`(415) 442-1335
`
`Dated: November 5, 2018
`
`Attorneys for Zola, Inc.
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL & APPEAL BOARD
`
`In re Application Serial No. 87/307,497
`Reg. No. 4573734
`
`Mark: ZOLA
`
`PREZOLA LIMITED,
`
`Petitioner/Opposer,
`
`v.
`
`ZOLA, INC.
`
`Applicant/Registrant.
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`) Opposition No. 91238235
`)
`(Parent Case)
`) Cancellation No. 92067549
`)
`)
`)
`)
`)
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on November 5, 2018, a true and accurate copy of the foregoing
`
`Motion to Suspend for Civil Action was served on counsel for Prezola Limited, by emailing a
`
`copy to:
`
`Charles P. Guarino
`MOSER TABOADA
`cguarino@mtiplaw.com
`
`/s/ Peter G. Byrne
`Peter G. Byrne
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 1 of 18
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF NEW YORK
`
`ZOLA, INC.
`
`PREZOLA LTD.
`
`Plaintiff,
`
`v.
`
` Civil Action No. 1:18-cv-10213
`
` JURY TRIAL DEMANDED
`
`Defendant.
`
`COMPLAINT
`
`Zola, Inc., by and through its undersigned counsel, brings this action against Prezola Ltd.
`
`for copyright infringement and breach of contract claims seeking relief in the form of
`
`injunctions, disgorgement of profits, actual damages, attorneys’ fees and/or costs, and for a
`
`declaration of trademark non-infringement and an order directing the United States Patent and
`
`Trademark Office to dismiss a consolidated opposition and cancellation proceeding and grant
`
`registration of a pending trademark application. In particular, Zola alleges as follows:
`
`PARTIES
`
`1.
`
`Plaintiff Zola, Inc. (“Zola”) is a corporation organized under the laws of the State
`
`of Delaware, with its principal place of business at 150 Broadway, 19th Floor, New York, New
`
`York 10038.
`
`2.
`
`Defendant Prezola Ltd. (“Prezola”) is a foreign company, with a registered
`
`address of Prezola House, Woodlands Industrial Estate Eden Vale Road, Westbury, Wiltshire,
`
`BA13 3QS, United Kingdom.
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 2 of 18
`
`JURISDICTION AND VENUE
`
`3.
`
`This is a declaratory action for trademark non-infringement, as well as an action
`
`for infringement of federally registered copyrights, for breach of contract under New York state
`
`law and for an order directing the United States Patent and Trademark Office to dismiss a
`
`consolidated opposition and cancellation proceeding and grant registration of a pending
`
`trademark application.
`
`4.
`
`This Court has the authority to issue a declaratory judgment pursuant to 28 U.S.C.
`
`§§ 2201 and 2202. This Court has subject matter jurisdiction over the claims that relate to
`
`trademark non-infringement and rights to registration under 15 U.S.C. § 1119, 15 U.S.C. § 1121,
`
`28 U.S.C. § 1338 and 28 U.S.C. § 1331. This Court has subject matter jurisdiction over the
`
`copyright infringement claims under 28 U.S.C. §§ 1331 and 1338(a). This Court also has
`
`supplemental jurisdiction over all pendent state law claims asserted herein, namely the claim for
`
`breach of contract under New York law, pursuant to 28 U.S.C. § 1367(a). This Court has subject
`
`matter jurisdiction to issue an order directing the United States Patent and Trademark Office to
`
`dismiss a consolidated opposition and cancellation proceeding and grant registration of a pending
`
`trademark application, pursuant to 15 U.S.C. § 1119.
`
`5.
`
`Venue in this district is proper pursuant to 28 U.S.C. § 1391(b) and 28 U.S.C. §
`
`1400.
`
`BACKGROUND
`
`6.
`
`In October of 2013, Zola launched its website at www.zola.com (the “Zola
`
`Website”). Since the launch of the Zola Website, Zola has continuously used the mark ZOLA
`
`(the “ZOLA Mark”) in connection with its online wedding gift registry services and related
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 3 of 18
`
`goods and services, including but not limited to wedding websites, wedding checklists, wedding
`
`guest lists, and wedding planning services.
`
`7.
`
`Following its launch, Zola experienced rapid and explosive growth, with hundreds
`
`of thousands of couples having registered for accounts on the Zola Website and tens of millions
`
`of distinct user sessions to date. Today, Zola is widely recognized as an industry leader in the
`
`online wedding registry space. For example, Brides.com listed Zola as its No. 3 overall wedding
`
`registry site and InStyle named Zola the “Best Registry Resource.” See Exhibit A.
`
`8.
`
`Zola has spent tens of millions of dollars advertising the ZOLA Mark and Zola
`
`business. As a result of Zola’s substantial efforts to promote its business and the ZOLA Mark,
`
`Zola has acquired extremely valuable goodwill in the ZOLA Mark.
`
`9.
`
`Zola owns a federal trademark registration (Reg. No. 4,573,734) for the ZOLA
`
`Mark for use in connection with “providing an online gift registry service” in class 35 (the
`
`“ZOLA Registration”). The application that became the ZOLA Registration was filed on
`
`October 2, 2013 and matured to registration on July 22, 2014. A true and correct copy of the
`
`USPTO TESS printout and the certificate of registration for the ZOLA Registration are attached
`
`hereto as Exhibit B.
`
`10.
`
`Zola also owns a pending federal trademark application (Serial No. 87/307,497)
`
`for the ZOLA Mark for use in connection with “software for creating and managing gift
`
`registries; software for users to contribute money to fund gifts and travel for others; software for
`
`users to contribute money to fund honeymoons for married couples; software for users to give
`
`gifts of money to others; software for users to raise funds for any event, goal, and cause” in class
`
`9; “gift registry services; online gift registry services; online retail store services featuring a wide
`
`variety of consumer goods of others” in class 35 and “providing an interactive website for users
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 4 of 18
`
`to contribute money to fund gifts and travel for others; providing an interactive website for users
`
`to contribute money to fund honeymoons for married couples; providing an interactive website
`
`for users to give gifts of money to others; providing an interactive website that enables users to
`
`raise funds online for events, goals, and causes” in class 36 (the “ZOLA Application”). The Zola
`
`Application was filed on January 19, 2017. All of the services covered by the ZOLA
`
`Application were first used in U.S. commerce at least as early as October 2013. A true and
`
`correct copy of the USPTO TESS printout for the ZOLA Application is attached hereto as
`
`Exhibit C.
`
`11. According to Prezola’s website, www.prezola.com (the “Prezola Website”),
`
`Prezola is a “wedding gift list and wedding website provider” based in the United Kingdom that
`
`launched in 2011. Prezola bills itself as “The UK’s favourite Wedding Gift List & Honeymoon
`
`Fund.” See Exhibit D. As of the date of the filing of this Complaint, the Prezola Website stated
`
`that Prezola was unable to deliver products purchased on its site outside of the UK & Channel
`
`Islands, Northern & Republic of Ireland, and Mainland Europe without a prior arrangement. See
`
`Exhibit E.
`
`12.
`
`Upon information and belief, shortly after the Zola Website launched in October
`
`of 2013, Prezola began copying portions of the Zola Website for use on the Prezola Website.
`
`The result is that the Prezola Website has largely been a knockoff of the Zola Website since after
`
`the launch of the Zola Website. By way of example, but not limitation, at the time that the Zola
`
`Website launched, Prezola used the
`
`logo. In 2014, Zola began using the
`
`logo. Then, in 2017, after Zola had established itself as an industry leader, Prezola adopted the
`
` logo, in virtually the identical font and style as the above logo previously used by
`
`Zola.
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 5 of 18
`
`THE PRESENT DISPUTE
`
`13.
`
`The Zola Application was published for opposition on October 10, 2017. On
`
`October 30, 2017, Prezola obtained an extension of time to oppose the ZOLA Application. See
`
`Exhibit F. The order extended Prezola’s time to oppose the ZOLA Application until February 7,
`
`2018. Id.
`
`14.
`
`Notwithstanding Prezola’s copying of the Zola Website, on November 21, 2017,
`
`Prezola, through its counsel, wrote to Zola, expressing concern that Zola’s use of the ZOLA
`
`Mark could create confusion with Prezola’s PREZOLA mark (the “Prezola Mark”). See Exhibit
`
`G. Among other demands, Prezola demanded that Zola “[w]ithdraw or abandon all trademark
`
`applications and registrations incorporating the term ZOLA” and “[c]ease any and all use of
`
`marks incorporating the term ZOLA.” Id.
`
`15.
`
`On November 28, 2017, Zola, through its attorney, responded to Prezola’s
`
`attorney, setting forth Zola’s position that it was not infringing Prezola’s alleged rights in the
`
`PREZOLA Mark in the United States. See Exhibit H.
`
`16.
`
`On December 6, 2017, Prezola initiated two separate administrative proceedings
`
`before the Trademark and Trial and Appeal Board (“TTAB”), opposing the ZOLA Application
`
`and seeking to cancel the ZOLA Registration. See Exhibit I. In June of 2018, the two
`
`proceedings were consolidated in Proceeding No. 91238235 (the “TTAB Proceeding”). See
`
`Exhibit J. In its TTAB filings, Prezola claimed that there exists a likelihood of confusion
`
`between Prezola’s PREZOLA Mark and Zola’s ZOLA mark and that Prezola has prior common
`
`law rights in the United States. See Exhibit I.
`
`17.
`
`On January 29, 2018, Prezola filed its first U.S. trademark application (Serial No.
`
`87/774,221) for the mark PREZOLA for use in connection with “Online gift registry services;
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 6 of 18
`
`online retail store services featuring a wide variety of consumer goods of others” in class 35 and
`
`“Providing an interactive website for users to contribute money to fund gifts and travel for
`
`others; providing an interactive website for users to give monetary gifts to others; providing an
`
`interactive website for users to raise funds for events” in class 36 (the “PREZOLA
`
`Application”). Prezola claimed May 26, 2012 as its first use in commerce date. A true and
`
`correct copy of the USPTO TESS printout for the PREZOLA Application is attached hereto as
`
`Exhibit K.
`
`18.
`
`At the time this Complaint is being filed, the TTAB Proceeding is in the early
`
`stages of the discovery period.
`
`DECLARATION OF NON-INFRINGEMENT
`
`19.
`
`A reasonable apprehension of litigation is reasonably derived from Prezola’s
`
`serious allegations, including its demands that Zola immediately cease use of the ZOLA Mark
`
`and its filing of the TTAB Proceeding to oppose the ZOLA Application and petition to cancel the
`
`ZOLA Registration.
`
`20.
`
`Prezola’s assertions are wholly without merit, and Zola’s actions do not constitute
`
`trademark infringement of the PREZOLA Mark.
`
`21.
`
`First, Prezola does not have priority over Zola in the United States with respect to
`
`the parties’ respective marks. Zola’s U.S. rights in the ZOLA Mark date at least as far back as
`
`the filing date of the ZOLA Registration, i.e. October 2, 2013. Upon information and belief,
`
`Prezola cannot carry its burden of proving that it used the PREZOLA Mark in United States
`
`commerce prior to October 2, 2013 in a manner that would entitle it to claim common law
`
`trademark priority. Moreover, Prezola did not file a trademark application in the United States
`
`until 2018.
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 7 of 18
`
`22.
`
`Even assuming, arguendo, that Prezola does have valid trademark rights in its
`
`PREZOLA Mark in the United States that predate Zola’s trademark rights in its ZOLA Mark,
`
`there is still no likelihood of confusion in violation of 15 U.S.C. § 1141(1). A likelihood of
`
`confusion does not exist because, inter alia, the ZOLA and PREZOLA marks are distinct in
`
`appearance, sound and meaning. Moreover, the PREZOLA mark is not commercially strong in
`
`the United States and Zola’s selection of the ZOLA Mark was made in good faith. And
`
`crucially, according to Prezola’s allegations, the parties’ marks have co-existed in the wedding
`
`registry space for over five years without evidence of actual confusion. This lack of confusion is
`
`highlighted by the fact that, despite Zola’s enormous success, Prezola did not contact Zola to
`
`complain about a likelihood of confusion for approximately four years after the launch of the
`
`Zola Website and the filing of Zola’s first trademark application for the ZOLA Mark.
`
`23.
`
`Notwithstanding the fact that Prezola does not have priority in its PREZOLA
`
`Mark vis-à-vis Zola’s ZOLA Mark in the United States and that no likelihood of confusion exists
`
`between the marks, Prezola demanded in writing that Zola immediately cease and desist from
`
`using the ZOLA Mark and initiated the TTAB Proceeding, seeking to cancel the ZOLA
`
`Registration and opposing the ZOLA Application. Prezola’s actions create an actual case and
`
`existing controversy between the parties, as the essential facts establishing the right to
`
`declaratory relief have already occurred and Prezola’s conduct leading up to the filing of this
`
`Complaint has created in Zola a reasonable apprehension of an infringement suit.
`
`24.
`
`Zola seeks the Court’s assistance in resolving the relative legal rights of the
`
`parties as described in this Complaint, so that Zola may continue its business and obtain relief
`
`from the uncertainty created by defendant Prezola’s unwarranted allegations.
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 8 of 18
`
`PREZOLA’S INFRINGEMENT OF ZOLA’S COPYRIGHTED MATERIALS
`
`25.
`
`Upon information and belief, Prezola has copied numerous portions of the Zola
`
`Website, entitling Zola to, inter alia, actual damages and/or profits realized by Prezola.
`
`26.
`
`On October 9, 2013, Zola launched the Zola Website, which has continuously
`
`presented wedding gift registry and related goods and services in creative and appealing ways to
`
`consumers and potential consumers. Among other creative attributes, the Zola Website features
`
`the compilation, i.e., selection, coordination, and arrangement of thousands of gifts (chosen from
`
`millions of options) in creative categories and subcategories (such as its numerous “Starter
`
`Collections” that range from “French Country” to “Scandinavian” and “Bedroom Upgrades for
`
`Under $100”). In addition to the compilation authorship throughout the Zola Website, it has at
`
`all times included original text and photographs owned by Zola. All copyrightable authorship
`
`apparent in the Zola Website as of its launch in October 2013 and its current content as of
`
`October 2018 is referred to herein as the “Zola Copyrighted Materials.”
`
`27.
`
`Zola owns U.S. copyright registrations for the October 9, 2013 and October 10,
`
`2018 versions of the Zola Website. The October 9, 2013 version of the Zola Website was
`
`granted copyright registration number VA 2-124-739 with a November 1, 2018 effective date of
`
`registration (the “2013 Registration”) and the October 10, 2018 version of the Zola Website was
`
`granted copyright registration number VA 2-124-740 with an October 21, 2018 effective date of
`
`registration (the “2018 Registration”) (the 2013 Registration and the 2018 Registration,
`
`collectively, the “Zola Copyright Registrations”).
`
`28.
`
`The deposit materials for the Zola Copyright Registrations depict the Zola
`
`Copyrighted Materials that have been infringed by Prezola.
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 9 of 18
`
`29.
`
`The Zola Website includes copyright notices that indicate Zola owns the
`
`copyrights in the Zola Copyrighted Materials. See Exhibit L.
`
`30.
`
`Since shortly after the October 2013 launch of the Zola Website, and subsequent
`
`updates to the Zola Website, the Prezola Website has repeatedly displayed unauthorized copies
`
`and/or adaptations of Zola’s copyright protected authorship featured throughout the Zola
`
`Copyrighted Materials, including Zola’s selection and arrangement of registry content and
`
`services, as well as its groupings of gifts into creative collections (the “Infringing Material”).
`
`31.
`
`Prezola employees had access to the Zola Website prior to Prezola’s copying of
`
`the Zola Copyrighted Materials.
`
`32.
`
`Upon information and belief, employees of Prezola accessed the Zola Website
`
`prior to Prezola’s copying of the Zola Copyrighted Materials. By way of example, at least eight
`
`“@prezola.com” email accounts have been used to register accounts on the Zola Website. In
`
`addition, several other individuals who, upon information and belief, are Prezola employees
`
`registered for accounts on the Zola Website using their personal email addresses and the same
`
`static IP address that was used in connection with the aforementioned registration of the
`
`@prezola.com addresses.
`
`33.
`
`Thus, Prezola had access to and actually accessed the Zola Website prior to
`
`Prezola’s posting of the Infringing Material, which is substantially similar to the Zola
`
`Copyrighted Materials.
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 10 of 18
`
`PREZOLA’S BREACH OF THE ZOLA TERMS OF USE
`
`34. Upon information and belief, Prezola has breached the terms of use of the Zola
`
`Website, entitling Zola to, inter alia, compensatory damages.
`
`35.
`
`The use and access of the Zola Website is conditioned upon the user’s acceptance
`
`of the terms of use. The current Zola terms of use and all prior versions of the Zola terms of use
`
`(collectively, the “Terms of Use”), read in relevant part, “Your use of the Website is conditioned
`
`upon your acceptance of these Terms of Use.” A true and correct copy of the Terms of Use in
`
`effect on September 19, 2018 is attached hereto as Exhibit M.
`
`36.
`
`The Terms of Use provide that “Zola grants to you a limited license to access and
`
`make personal use of this Website.” Id.
`
`37.
`
`The Terms of Use provide, “Zola strictly prohibits any use of the Content available
`
`through the Website (unless you own or have rights to the content), including but not limited to:
`
`(i) any downloading, copying or other use of the Content or the Website for purposes competitive
`
`to Zola or for the benefit of another vendor or any third party; (ii) any caching, unauthorized linking
`
`to the Website or the framing of any Content available on the Website; (iii) any modification,
`
`distribution, transmission, performance, broadcast, publication, uploading, licensing, reverse
`
`engineering, transfer or sale of, or the creation of derivative works from, any Content, products or
`
`services obtained from the Website that you do not have a right to make available (such as the
`
`intellectual property of another party)….” Id.
`
`38.
`
`The Terms of Use provide, “All Content included on this Website, such as text,
`
`graphics, logos, button icons, images, audio clips and software, is the property of Zola or its
`
`Content suppliers and protected by U.S. and international copyright laws. The compilation
`
`(meaning the collection, arrangement and assembly) of all Content on this Website is the exclusive
`
`DB1/ 100131204.5
`
`

`

`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 11 of 18
`
`property of Zola and protected by U.S. and international copyright laws. All software used on this
`
`website is the property of Zola or its software suppliers and protected by U.S. and international
`
`copyright laws. The reproduction, modification, distribution, transmission, republication, display
`
`or performance, of the Content on this Website is strictly prohibited.” Id.
`
`39. As described above, employees of Prezola registered for accounts on the Zola
`
`Website. When registering for accounts, employees of Prezola were required to accept the Terms
`
`of Use then in effect. Thus, upon information and belief, Prezola had actual notice of the Terms
`
`of Use. In the alternative, upon information and belief, Prezola had constructive knowledge of the
`
`Terms of Use because the pages of the Zola Website generally feature a link to the Terms of Use,
`
`and because the Prezola Website utilizes similar links to website terms of use that Prezola claims
`
`are binding on visitors to its website. A true and correct copy of Prezola’s current Terms &
`
`Conditions for Website Use is attached hereto as Exhibit N. The first paragraph of Prezola’s terms
`
`provides, “By continuing to browse and use this website (Our Site) you are agreeing to comply
`
`with and be bound by the following terms and conditions of use, which together with our other
`
`policies govern Prezola Limited's relationship with you in relation to Our Site. If you do not agree
`
`with these terms you must not use Our Site.” Id.
`
`40. Upon information and belief, Prezola employees have accessed webpages on the
`
`Zola Website. Upon information and belief, Prezola accessed the Zola Website before changing
`
`its website.
`
`41. At all times prior to September 20, 2018, the Terms of Use included a provision
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`that “[a]ny legal action or proceeding relating to your access to, or use of, this website or our
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`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 12 of 18
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`Content will be instituted in a state or federal court in New York County, New York, and you
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`hereby agree to submit to the personal jurisdiction of such courts.” Id.
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`42. Upon information and belief, prior to September 20, 2018, Prezola has violated the
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`Terms of Use by using and copying content from the Zola Website for the Prezola Website.
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`Specifically, Prezola has violated its agreements to only make personal, non-commercial use of
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`the Zola Website and to not copy or create derivative works from content on the Zola Website.
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`DECLARATION OF NON-INFRINGEMENT OF THE PREZOLA MARK
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`COUNT I
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`43.
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`Zola realleges and incorporates herein by reference Paragraphs 1 through 42 of the
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`Complaint as if fully set forth herein.
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`44. An actual controversy has arisen and currently exists between Zola on the one hand
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`and Prezola on the other hand with regard to their respective rights related to Zola’s ZOLA Mark
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`and Prezola’s PREZOLA Mark.
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`45.
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`There is no legal or factual basis for Prezola’s claim that Prezola’s PREZOLA Mark
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`has priority in the United States vis-à-vis Zola’s ZOLA Mark and/or there is no legal or factual
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`basis for Prezola’s claim that Zola’s ZOLA Mark has caused, or is likely to cause, confusion with
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`Prezola’s PREZOLA Mark. Zola’s ZOLA Mark does not infringe or violate any rights Prezola
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`may have in the PREZOLA Mark or violate any federal, state or common law, and its use of its
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`ZOLA Mark, either directly or through a licensee, does not constitute unfair competition or violate
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`any federal, state or common law.
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`46.
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`Zola desires a judicial determination of its rights in the ZOLA Mark, and a judicial
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`declaration that use of its ZOLA Mark does not violate any federal, state or common law right of
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`Prezola, including but not limited to any rights under the Lanham Act, 15 U.S.C. § 1125(a).
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`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 13 of 18
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`47. A judicial declaration is necessary and appropriate at this time under the
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`circumstances and to resolve fully Prezola’s allegations regarding Zola’s rights to use and register
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`the ZOLA Mark.
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`COUNT II
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`COPYRIGHT INFRINGEMENT
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`48.
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`Zola realleges and incorporates herein by reference Paragraphs 1 through 47 of
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`the Complaint as if fully set forth herein.
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`49.
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`Zola owns the following registered copyrights for the Zola Copyrighted Materials:
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`VA 2-124-739 and VA 2-124-740.
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`50.
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`The Zola Copyrighted Materials contain content that is copyrightable subject
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`matter under the laws of the United States.
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`51.
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`Zola’s copyright registration, VA 2-124-740, protecting the October 2018 version
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`of the Zola Website, is entitled to a presumption of validity under 17 U.S.C. § 410(c).
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`52.
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`Prezola had access to each of the Zola Copyrighted Materials.
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`53.
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`Notwithstanding Zola’s ownership of the copyright in the Zola Copyrighted
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`Materials, Prezola copied and created derivative works based upon the Zola Copyrighted
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`Materials and displayed and distributed copies of the Infringing Material through the Prezola
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`Website without Zola’s consent.
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`54.
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`The Infringing Material is substantially similar to the Zola Copyrighted Materials.
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`55.
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`By copying and creating derivative works based upon the Zola Copyrighted
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`Materials and displaying and distributing the Infringing Material through the Prezola Website,
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`Prezola has infringed Zola’s copyright in the Zola Copyrighted Materials. Specifically, Prezola
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`has violated the exclusive right of Zola to reproduce, distribute, display, and make derivative
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`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 14 of 18
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`works of its copyrighted works under 17 U.S.C. § 106. The infringement of each of Zola’s
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`copyrighted works constitutes a separate act of copyright infringement.
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`56.
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`Prezola’s copyright infringement has been knowing, willful and/or intentional.
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`57.
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`Prezola’s copyright infringement has caused and will continue to cause monetary
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`damage to Zola and Zola is entitled to and seeks, inter alia, actual damages and/or profits
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`realized by Prezola.
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`58.
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`Prezola’s copyright infringement has caused and will continue to cause
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`irreparable harm to Zola for which there is no adequate remedy at law. Zola is entitled to, and
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`seeks, injunctive relief as a result thereof pursuant to 17 U.S.C. § 502.
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`COUNT III
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`BREACH OF CONTRACT
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`59.
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` Zola realleges and incorporates herein by reference Paragraphs 1 through 58 of
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`the Complaint as if fully set forth herein.
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`60.
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`Use of the Zola Website and access to and use of content on it is governed by and
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`subject to the Terms of Use.
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`61.
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`At all relevant times, the webpages on the Zola Website generally provided a link
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`titled “Terms of Use” to the terms of use that govern the use of the site.
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`62.
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`Upon information and belief, Prezola was on notice and/or had actual knowledge
`
`of the Terms of Use and affirmatively accepted the Terms of Use by their continuous and regular
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`use of the Zola Website, which conspicuously presents the Terms of Use link.
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`63.
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`Despite its knowledge of the Terms of Use and its prohibitions, in violation of
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`said agreement, Prezola willfully, repeatedly, and systematically used the Zola Website and the
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`content therein for commercial purposes.
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`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 15 of 18
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`64.
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`Zola has performed all conditions and promises required of it in accordance with
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`the Terms of Use.
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`65.
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`Prezola’s conduct has damaged Zola, and caused and continues to cause
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`irreparable and incalculable harm and injury to Zola.
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`66.
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`Zola is entitled to compensatory damages, injunctive relief and/or other equitable
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`relief to remedy Prezola’s willful, repeated, and systematic violation of Zola’s Terms of Use.
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`DISMISSAL OF TTAB PROCEEDING AND GRANT OF REGISTRATION FOR ZOLA
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`APPLICATION
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`COUNT IV
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`67.
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`Zola realleges and incorporates herein by reference Paragraphs 1 through 66 of
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`the Complaint as if fully set forth herein.
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`68.
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`Prezola opposed the ZOLA Application and petitioned to cancel the ZOLA
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`Registration. Those two separate proceedings were consolidated in the TTAB Proceeding.
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`69.
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`Zola seeks an order from this Court, pursuant to 15 U.S.C. § 1119, that the United
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`States Patent and Trademark Office dismiss the TTAB Proceeding on the grounds that (a)
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`Prezola does not have priority in its PREZOLA Mark in the United States vis-à-vis the ZOLA
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`Mark and/or (b) Zola’s ZOLA Mark has not caused, nor is it likely to cause, confusion with
`
`Prezola’s PREZOLA Mark.
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`70.
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`Zola seeks an order from this Court, pursuant to 15 U.S.C. § 1119, that the United
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`States Patent and Trademark Office allow the ZOLA Application to proceed to registration on
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`the grounds that (a) the Zola Application was published for opposition; (b) Prezola is the only
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`entity that opposed the Zola Application during the opposition period; and (c) Prezola does not
`
`have priority in the PREZOLA Mark in the United States vis-à-vis the ZOLA Mark and/or
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`Case 1:18-cv-10213 Document 1 Filed 11/02/18 Page 16 of 18
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`Zola’s ZOLA Mark has not caused, nor is it likely to cause, confusion with Prezola’s PREZOLA
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`Mark.
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`PRAYER FOR RELIEF
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`Wherefore, Plaintiff prays for judgment against Defendant as follows:
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`1) Declaratory judgment establishing that use of the ZOLA Mark by Zola or its
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`licensees does not infringe upon Prezola’s PREZOLA Mark or any other PREZOLA designation
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`to which Prezola may claim rights.
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`2) That the Court issue an Order directing the United States Patent and Trademark
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`Office to dismiss the TTAB Proceeding brought by Prezola and allow the ZOLA Application to
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`proceed to registration.
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`3) That Prezola and its officers, agents, servants, employees and attorneys, and all
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`those in active concert with it or in participation with them, be preliminarily and permanently
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`enjoined from all further unauthorized reprodu