Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1084305
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`Filing date:
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`09/24/2020
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91251046
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`Party
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`Correspondence
`Address
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`Plaintiff
`Scivation, Inc.
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`CRAIG M SPIERER
`HARRIS BEACH PLLC
`333 EARLE OVINGTON BLVD SUITE 901
`UNIONDALE, NY 11553
`UNITED STATES
`Primary Email: cspierer@harrisbeach.com
`Secondary Email(s): ktangney@harrisbeach.com, hlink@harrisbeach.com, bpal-
`freyman@harrisbeach.com
`516-880-8379
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`Submission
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`Filer's Name
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`Filer's email
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`Motion to Suspend for Civil Action
`
`Craig M. Spierer
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`cspierer@harrisbeach.com, bpalfreyman@harrisbeach.com, ktang-
`ney@harrisbeach.com, hlink@harrisbeach.com
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`Signature
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`Date
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`/Craig M. Spierer/
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`09/24/2020
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`Attachments
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`Xtend5 - Motion to Suspend - FINAL.pdf(1106399 bytes )
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`Opposition No. 91251046
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`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In the matter of Trademark Application Serial No. 88/269,896
`For the Mark: XTEND5
`Published in the Official Gazette: on May 21, 2019
`---------------------------------------------------------------X
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`SCIVATION, INC.
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`Opposer,
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`v.
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`XTEND5 LLC
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`Applicant,
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`---------------------------------------------------------------X
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`OPPOSER’S MOTION SUSPEND PROCEEDINGS PENDING
`DISPOSITION OF DISTRICT COURT ACTION
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`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Opposer Scivation, Inc.
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`(“Opposer”) hereby moves the Board to suspend the above-referenced proceedings (the
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`“Opposition”) pending final disposition of federal district court case No. 1:20-cv-00986, filed
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`September 24, 2020, in federal district court for the Western District of Texas (the “Lawsuit”).
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`Copies of the complaint and civil cover sheet are attached as Exhibit A.
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`The complaint seeks a judgment, inter alia, that Applicant Xtend5 LLC (“Applicant”) is
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`engaged in trademark infringement, unfair competition, and trademark dilution in violation of the
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`Lanham Act and common law based on Applicant’s use of the same trademark at issue in the
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`Opposition, i.e., XTEND. When the parties are involved in court proceedings concerning the
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`same marks and issues, the “standard procedure” of the Board is to suspend its administrative
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`proceedings pending outcome of the civil litigation. See New Orleans Louisiana Saints LLC v.
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`Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011) (quoting 6 MCCARTHY ON TRADEMARKS
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`AND UNFAIR COMPETITION §32:47 (5th ed. updated September 2017)). Put differently, “[u]nless
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`there are unusual circumstances, the Board will suspend proceedings in the case before it if the
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`final determination of the other proceeding may have a bearing on the issues before the Board.”
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`TBMP 510.02(a). The civil action need not even be dispositive of the Board proceeding to
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`warrant suspension. Rather, it is sufficient that the civil action have bearing on the issues before
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`the Board to justify a suspension. Id. Here, the parties are the same (Scivation, Inc. and Xtend5,
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`LLC), the marks are the same (Opposer’s XTEND family of marks and Applicant’s XTEND5
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`mark), and the goods are the same (Opposer’s dietary supplements and Applicant’s dietary
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`supplements).
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`In addition, the issues before the Board are also at issue in the Lawsuit. Opposer’s
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`trademark infringement, unfair competition, trademark dilution claims in the Lawsuit involve the
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`same issues the Board will be deciding in the Opposition. But, the civil proceeding will also
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`involve other matters and broader issues, such as Applicant’s unauthorized use in commerce of
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`Opposer’s trademarks and a state law claim for injury to business reputation. In the Lawsuit,
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`Opposer is seeking, among other remedies, damages, injunctive relief, and attorneys’ fees, none
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`of which are not available in the Opposition. Because the parties, marks, goods, and issues in the
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`Lawsuit are the same and because the outcome will be dispositive or at least impact the claims in
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`the Opposition, suspension of the Opposition pending the outcome of the Lawsuit is warranted.
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`No motions, dispositive or otherwise, are pending before the Board.
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`Moreover, judicial economy is served by immediately suspending all activity in the
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`Opposition. See Other Telephone Co. v. Connecticut National Telephone Co., 181 USPQ 125
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`(1974). While Opposer has a deadline to produce documents under the Board’s Order dated
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`August 28, 2020 and Applicant has served a notice of deposition, the discovery period is not
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`scheduled to close until October 30, 2020. Opposer respectfully requests that the deadline to
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`produce documents set in the Board’s August 28, 2020 order be suspended as well, retroactively
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`if necessary. Because the Lawsuit involves not only the issues currently before the Board, but
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`also issues of unfair competition and injury to business reputation, discovery in the Lawsuit will
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`involve documents, depositions, and other information that is not being and will not be gathered
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`or produced in the Opposition. Thus, suspending the Opposition would avoid wasted time and
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`expenses for both parties and the Board. See, e.g., Softbelly’s Inc v. Ty, Inc., 2002 WL 1844210,
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`*3 (citing Other Telephone, 181 USPQ 126-27) (“It would be a waste of the Board’s and the
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`parties’ time and resources to proceed to litigate this case at the Board when the same issues” are
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`pending in court.)
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`Given the foregoing, an immediate suspension of the proceedings, including all
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`outstanding and pending discovery, is warranted. Finally, the Board has reached this conclusion
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`in similar circumstances. In Other Telephone, the Board stated that “it is clear” that a civil action
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`alleging infringement and unfair competition would “directly affect the resolution” of a
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`proceeding before it involving a likelihood of confusion claim, which is the very claim at issue in
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`the Opposition. 181 USPQ 125, 126-27. In that proceeding, the Board granted the motion to
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`suspend despite the fact that the moving party had only 8 days left in the its testimony period.
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` For these reasons, Opposer respectfully requests an order from the Board immediately
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`suspending all activity related to the Opposition.
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`Date: September 24, 2020
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`By: /s/Craig M. Spierer
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`Craig M. Spierer, Esq.
`Brendan M. Palfreyman, Esq.
`HARRIS BEACH PLLC
`333 Earle Ovington Blvd. Suite 901
`Uniondale, NY 11553
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`Attorneys for Opposer Scivation, Inc.
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`CERTIFICATE OF MAILING
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`On September 24, 2020, I served a true and complete copy of the OPPOSER’S
`MOTION SUSPEND PROCEEDINGS PENDING DISPOSITION OF DISTRICT COURT
`ACTION on the persons listed below by electronic mail to:
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`blila@mandourlaw.com
`jmandour@mandourlaw.com
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`By: _/s/Kerri L. Tangney_________
` Kerri L. Tangney
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`Dated: September 24, 2020
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`EXHIBIT A
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`EXHIBIT A
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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 1 of 18
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`
`SCIVATION, INC.,
`
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`Plaintiff,
`
`
`v.
`
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`XTEND5 LLC,
`
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`Defendant.
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`
`
`
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`
`
`Civil Action No. 1:20-cv-00986
`
`JURY TRIAL DEMANDED
`
`
`PLAINTIFF’S ORIGINAL COMPLAINT
`
`Scivation, Inc. (“Scivation”) by and through its undersigned attorneys Dunham LLP and
`
`Harris Beach PLLC allege against Defendant Xtend5 LLC (“Xtend5”) as follows:
`
`JURISDICTION & VENUE
`
`1.
`
`This Complaint involves claims for trademark infringement arising under the
`
`trademark laws of the United States, Title 15, United States Code and related claims of unfair
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`competition in violation of the Lanham Act, 15 U.S.C. §1125, common law trademark
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`infringement, common law unfair competition, federal trademark dilution, state trademark
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`dilution, and injury to business reputation. This Court has subject matter jurisdiction over these
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`claims under 28 U.S.C. §§ 1331, 1367, and 1338.
`
`2.
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`This Court has personal jurisdiction because Scivation’s principal place of
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`business is in this District and because Xtend has purposefully availed itself of the benefits and
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`protections of this District including by, for example:
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`a. Xtend5 maintains a highly interactive website (www.xtend5.com) at which
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`customers in Texas and this District can purchase the infringing products;
`
`

`

`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 2 of 18
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`b.
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`Individuals in Texas and this District are invited to interact with Xtend5 via an
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`email (shop@xtend5.com), phone number (844-3XTEND5), and Facebook
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`messenger (www.facebook.com/xtend5), all of which are provided or linked to
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`on Xtend5’s website;
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`c.
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`Individual(s) in Texas and this District have ordered infringing products and
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`Xtend5 has shipped infringing products into this District, including, but not
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`limited to, a resident in Austin, TX; these purchases arise from and are directly
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`related to the causes of action asserted because the products bear trademarks that
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`infringe upon Scivation’s asserted trademark; and
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`3.
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`Venue is proper in this district pursuant to 28 U.S.C. §1391(b).
`
`PARTIES
`
`4.
`
`Plaintiff Scivation, Inc. is a corporation duly organized under the laws of the State
`
`of North Carolina with its principal place of business at 4407 Monterey Oaks Boulevard, Suite
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`150, Austin, TX 78749.
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`5.
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`Defendant Xtend5 LLC is a limited liability company duly organized under the
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`laws of the State of California with a principal place of business at 1 Spectrum Pointe Drive,
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`Suite 320, Lake Forest, CA 92630.
`
`I.
`
`Scivation’s XTEND Marks and Products
`
`FACTS
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`6.
`
`Scivation is an award-winning sports nutrition company, which has been engaged
`
`in the manufacture, marketing, distribution, and sale of dietary and nutritional supplements and
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`related products since 2004.
`
`Plaintiff’s Original Complaint and Jury Demand
`
`Page 2
`
`

`

`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 3 of 18
`
`7.
`
`Scivation and its affiliated and related entities, licensees, and/or authorized
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`distributors have used the mark XTEND, alone or with other words, letters, and/or design
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`elements, including but not limited to SCIVATION XTEND, XTEND ENDURANCE, XTEND
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`GO, and XTEND RAW, XTEND PERFORM, XTEND RIPPED, XTEND HYDRASPORTS,
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`and SCIVATION XTEND ELITE (collectively the “XTEND Marks”), in connection with
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`dietary and nutritional supplement products, beverages and related products.
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`8.
`
`Scivation’s products bearing XTEND Marks (the “XTEND Products”) have been
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`continuously used in interstate commerce since at least as early as 2005 and are distributed by
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`leading food, drug, grocery, mass and specialty retailers throughout the world such as Walmart,
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`Target, GNC, The Vitamin Shoppe, Bodybuilding.com, HEB, Dicks Sporting Goods, through all
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`major ecommerce channels including Amazon and direct to consumer.
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`9.
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`The XTEND Products are available in many different variations and SKUs
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`including in dozens of different flavors as well as in powder, capsule, gummy, sparkling, flat,
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`and other ready to drink forms.
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`10.
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`The XTEND Products are advertised and promoted in the United States via social
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`media, other online media, traditional print publications, and through endorsed athletes and
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`influencers.
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`11.
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`The XTEND Products are widely acclaimed and have been given numerous
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`awards including, but not limited to, bodybuilding.com’s Intra-Workout Supplement of the Year
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`for 2011 and 2012 and Recovery Supplement of the Year for 2009, 2010, 2011 and 2012.
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`Additionally, the XTEND Products are cumulatively the #1 selling branded branched-chain
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`amino acid (“BCAA”) products from 2004 to the present based on global sales.
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`12.
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`The XTEND mark is famous within the meaning of 15 U.S.C. §1125(c).
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`Plaintiff’s Original Complaint and Jury Demand
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`Page 3
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 4 of 18
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`13.
`
`Scivation is the owner of over fifty pending and registered trademark applications
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`for the XTEND Marks throughout the world for dietary and nutritional supplements, including
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`the following in the United States alone:
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`Number Mark
`4,601,224
`SCIVATION XTEND
`4,561,696 XTEND ENDURANCE
`4,810,162 XTEND GO
`4,760,425 XTEND
`5,796,127 XTEND
`4,990,290 XTEND PERFORM
`5,455,255 XTEND RIPPED
`5,455,256
`SCIVATION XTEND ELITE
`5,504,952 XTEND HYDRASPORT
`5,922,393 XTEND PRO
`5,922,394 XTEND PRO
`5,915,956 XTEND SPORT
`88/041,503 XTEND SPORT
`87/665,299 XTEND HYDRASPORT
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`
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`14.
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`A copy of Scivation’s valid and subsisting U.S. federal registrations and
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`applications are attached hereto as Exhibit A.
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`15.
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`Scivation has spent considerable time, money, and effort developing, advertising,
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`and promoting the goods under the XTEND Marks since at least 2005. As a result of such
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`efforts and the sales and promotion of the XTEND Products, the XTEND Marks have come to
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`symbolize valuable goodwill belonging to Scivation. The XTEND Marks have become well-
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`known by the general public and, in the relevant industries, are recognized and relied upon as
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`identifying Scivation’s goods from the goods of others. As a result of Scivation’s efforts, the
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`XTEND Marks have become famous within the meaning of Section 43(c) of the Lanham Act.
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`Plaintiff’s Original Complaint and Jury Demand
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`Page 4
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 5 of 18
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`II.
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`Xtend5’s Infringing Products
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`16.
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`On January 21, 2019, Xtend5 filed an application for the mark XTEND5 in
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`International Class 005 for “dietary supplements” on an intent-to-use basis (the “XTEND5
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`Application”).
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`17.
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`On May 21, 2019, the XTEND5 Application was published for opposition.
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`18.
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`On July 2, 2019, Scivation delivered a letter to counsel for Xtend5 demanding
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`that they cease and desist from any further manufacture, importation, advertising, distribution or
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`offering for sale of dietary supplements utilizing the XTEND Marks including but not limited to
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`XTEND5 and demanding that Xtend5 abandon the XTEND5 Application.
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`19.
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`On September 18, 2019, Scivation timely filed a Notice of Opposition against the
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`XTEND5 Application.
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`20.
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`On March 17, 2020, Xtend5 filed an application for the mark BE REVIVED
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`XTEND5 in International Class 005 for “dietary supplements” on an intent-to-use basis (the “BE
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`REVIVED XTEND5 Application”).
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`21.
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`On June 9, 2020, the United State Patent and Trademark Office (“USPTO”)
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`issued an Office Action rejecting the BE REVIVED XTEND5 Application on the grounds of
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`likelihood of confusion with several of Scivation’s federally registered XTEND Marks. A copy
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`of this Office Action is attached hereto as Exhibit B.
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`22.
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`Upon information and belief, the earliest possible priority date upon which
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`Xtend5 could rely with regard to its use of an XTEND-formative mark, including, but not limited
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`to, the XTEND5 and BE REVIVED XTEND5 marks, is the January 19, 2019 filing date of the
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`XTEND5 Application.
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`Plaintiff’s Original Complaint and Jury Demand
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`Page 5
`
`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 6 of 18
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`23.
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`Scivation has priority because Scivation has continuously used the XTEND
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`Marks in commerce in connection with its goods prior to the date on which Xtend5 filed the
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`XTEND5 Application and prior to any date of actual use in commerce upon which Xtend5 could
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`rely.
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`24.
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`Additionally, the application dates of the registrations and applications referenced
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`in the table above precede the January 19, 2019 filing date of the XTEND5 Application.
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`25.
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`Xtend5 has begun use in commerce of the XTEND5 and XTEND5 BE REVIVED
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`marks in commerce.
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`26.
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`Xtend5 markets its XTEND5 and BE REVIVED XTEND5 marks via its website,
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`social media, and other marketing materials.
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`27.
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`Xtend5’s website URL – www.xtend5.com – infringes the XTEND Marks.
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`28.
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`Xtend5 is presently selling products purporting to be oils, topicals and/or dietary
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`supplements containing cannabidiol (“CBD”) under the XTEND5 brand.
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`29.
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`Xtend5 is presently selling products designed to be ingested by human beings
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`containing CBD under the XTEND5 brand.
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`30.
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`Xtend5 markets the Xtend5 products containing CBD as having benefits intended
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`to affect the structure or function of the body or to be used in the diagnosis, cure, mitigation,
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`treatment or prevention of diseases.
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`31.
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`Upon information and belief, the Xtend5 products have not been approved as new
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`drugs pursuant to the Food Drug and Cosmetic Act, as amended (“FDCA”).
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`32.
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`Per the current guidance of the U.S. Food and Drug Administration (“FDA”)
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`under the FDCA, it is unlawful to sell or market dietary supplements containing CBD because
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`they do not meet the definition of dietary supplements under the FDCA.
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`Plaintiff’s Original Complaint and Jury Demand
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`Page 6
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 7 of 18
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`33.
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`Per the current guidance of the FDA, if a topical product, including those that
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`contain CBD are intended to affect the structure or any function of the body, or to be used in the
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`diagnosis, cure, mitigation, treatment or prevention of disease, it is a drug, which must be
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`approved pursuant to the Food Drug and Cosmetic Act.
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`34.
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`The FDA has sent numerous warning letters to companies selling products
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`containing CBD as dietary supplements and topicals as unapproved new drugs or misbranded
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`drugs in violation of the FDCA
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`35.
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`The marketing, sale and distribution of products containing CBD are prohibited
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`by law in many States or local counties.
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`36.
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`Upon information and belief, the Xtend5 products are additionally not labeled in
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`compliance with the FDCA.
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`37.
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`Xtend5’s practices, as described above, call into question the compliance, quality,
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`and safety of its products, which could have an adverse effect on Scivation’s reputation. If
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`Xtend5 were to subject to an investigation or other adverse action by a regulatory authority such
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`as the receipt of a warning letter from the FDA calling into question the compliance, safety,
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`efficacy, or legality of their product or significant consumer complaints, that would also likely
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`have an adverse effect on Scivation’s reputation.
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`III.
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`Likelihood of Confusion and Dilution
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`38.
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`Xtend5’s XTEND5 mark is nearly identical to the XTEND Marks in sight, sound,
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`meaning, and commercial impression, including in particular U.S. Registration No. 4,760,425,
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`which covers the mark XTEND in International Class 005 for “ Dietary and nutritional
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`supplements, namely, branch chained amino acid intra-workout supplements (the “XTEND
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`Registration”).
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`Plaintiff’s Original Complaint and Jury Demand
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`Page 7
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 8 of 18
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`39.
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`The only difference between the marks claimed in the XTEND Registration and
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`the XTEND5 Application is the addition of the number 5.
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`40.
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`The only difference between the marks claimed in the XTEND Registration and
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`the XTEND5 BE REVIVED Application is the addition of the phrase BE REVIVED.
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`41.
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`The XTEND5 and BE REVIVED XTEND marks are being used in connection
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`with goods that are marketed as being identical and/or similar to the XTEND Products.
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`42.
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`The XTEND5 and BE REVIVED XTEND marks are being used by Xtend5 in
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`connection with products which are purported to be dietary supplements.
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`43.
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`The XTEND Marks are being used by Scivation in connection with dietary
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`supplements.
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`44.
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`The XTEND5 and BE REVIVED XTEND Applications claim “Dietary
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`supplements” in Class 005.
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`45.
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`The XTEND Registration claims “Dietary and nutritional supplements, namely,
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`branch chained amino acid intra-workout supplements” in Class 005.
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`46.
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`The XTEND5 and BE REVIVED XTEND Applications on the one hand and the
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`XTEND Registration on the other hand claim dietary supplements in Class 005.
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`47.
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`The goods claimed in the XTEND5 and BE REVIVED XTEND Applications are
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`broader than and include the goods claimed in the XTEND Registration.
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`48.
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`The XTEND5 and BE REVIVED XTEND Applications are not limited with
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`respect to channels of trade.
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`COUNT I
`FEDERAL TRADEMARK INFRINGEMENT
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`49.
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`The allegations set forth in the paragraphs above are incorporated by reference as
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`if fully set forth herein.
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`Plaintiff’s Original Complaint and Jury Demand
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`Page 8
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 9 of 18
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`50.
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`Xtend5’s use of the marks XTEND5 and BE REVIVED XTEND5 in connection
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`with products purporting to be dietary supplements and/or the oils, tinctures, sold by Xtend5 is
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`likely to cause confusion or mistake or deception to purchasers as to the source of the goods and
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`constitutes trademark infringement in violation of the Lanham Act, 15 U.S.C. §1114.
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`51.
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`Scivation has no control over the nature and quality of the products offered by
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`Xtend5 under the XTEND5 and BE REVIVED XTEND5 marks, and because of the confusion as
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`to the source of Xtend5’s goods, Scivation’s goodwill with respect to the XTEND Marks will
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`suffer.
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`52.
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`The goodwill of Scivation under the XTEND Marks is of substantial value to
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`Scivation and Scivation has suffered and will continue to suffer irreparable harm should the
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`infringement by Xtend5 be allowed to continue.
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`53.
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`Upon information and belief, the trademark infringement by Xtend5 will continue
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`unless enjoined by this Court. Pursuant to 15 U.S.C. § 1116, Scivation seeks a preliminary and
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`permanent injunction against further trademark infringement by Xtend5.
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`54.
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`Xtend5’s acts of trademark infringement have caused great harm and damage to
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`Scivation. The amount of these damages is not yet determined. Pursuant to 15 U.S.C. §1117,
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`Scivation is entitled to and seeks Xtend5’s profits, actual damages, and costs of this action and
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`such additional relief as may be deemed appropriate and awarded by this Court.
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`55.
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`On information and belief, Xtend5’s acts of trademark infringement have been
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`and continue to be deliberate and willful and warrant an award of enhanced damages. In
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`addition, Scivation is entitled to and seeks a finding that this case is exceptional and warrants an
`
`award of attorneys’ fees pursuant to 15 U.S.C. §1117(a).
`
`
`
`
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`Plaintiff’s Original Complaint and Jury Demand
`
`Page 9
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 10 of 18
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`COUNT II
`FEDERAL FALSE DESIGNATION OF ORIGIN AND
`UNFAIR COMPETITION
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`The allegations set forth in the paragraphs above are incorporated by reference as
`
`56.
`
`if fully set forth herein.
`
`57.
`
`Scivation sells and markets the XTEND Products under the XTEND Marks.
`
`58.
`
`Xtend5’s acts described herein constitute false or misleading descriptions and/or
`
`representations of fact which are likely to cause confusion, mistake, or deception as to the
`
`affiliation, connection, or association of Xtend5’s products with Scivation in violation of the
`
`Lanham Act, 15 U.S.C. §1125(a) and constitute unfair competition.
`
`59.
`
`Xtend5’s acts described herein further constitute false or misleading descriptions
`
`and/or representations of fact which, in commercial advertising or promotion, misrepresent the
`
`nature, characteristics, and qualities of its goods in violation of the Lanham Act, 15 U.S.C.
`
`§1125(a) and constitute unfair competition.
`
`60.
`
`Based upon information and belief, Defendant will continue its acts of unfair
`
`competition unless enjoined by this Court. Pursuant to 15 U.S.C. §1116, Scivation seeks a
`
`preliminary and permanent injunction against further acts of unfair competition by Xtend5.
`
`61.
`
`Xtend5’s acts of unfair competition and false designation of origin have caused
`
`great harm and damage to Scivation. The amount of these damages is not yet determined.
`
`Pursuant to 15 U.S.C. §1117(a), Scivation is entitled to and seeks Xtend5’s profits, actual
`
`damages, and costs of this action and such additional relief as may be deemed appropriate and
`
`awarded by this Court.
`
`62.
`
`On information and belief, Xtend5’s acts of unfair competition and false
`
`designation of origin have been and continue to be deliberate and willful and warrant an award of
`
`Plaintiff’s Original Complaint and Jury Demand
`
`Page 10
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 11 of 18
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`enhanced damages. In addition, Scivation is entitled to and seeks a finding that this case is
`
`exceptional and warrants an award of attorneys' fees pursuant to 15 U.S.C. §1117(a).
`
`COUNT III
`COMMON LAW TRADEMARK INFRINGEMENT
`
`63.
`
`The allegations set forth in the paragraphs above are incorporated by reference as
`
`if fully set forth herein.
`
`64.
`
`Scivation enjoys common law trademark rights under the common law of the
`
`State of Texas in connection with its service marks and trademarks to identify, in the State of
`
`Texas and throughout the United States, its goods and services.
`
`65.
`
`Scivation’s past and current use of the XTEND Marks constitutes trademark
`
`infringement under the laws of the State of Texas.
`
`66.
`
`Xtend5’s acts constitute a malicious, fraudulent, or grossly negligent attempt to
`
`profit from Scivation’s XTEND Marks in violation of its trademark rights.
`
`67.
`
`The offering by Xtend5 of goods using confusingly similar marks is likely to
`
`cause and/or has caused confusion as to the source of origin of the services in that purchasers of
`
`Scivation’s goods are likely to associate or have associated such services as originating with
`
`Xtend5, all to the detriment of and resulting in damages to Scivation.
`
`68.
`
`Xtend5’s acts of common law trademark infringement have caused great harm
`
`and damage to Scivation. The amount of these damages is not yet determined. Scivation seeks
`
`actual damages, exemplary damages, and such additional relief as may be deemed appropriate
`
`and awarded by this Court.
`
`69.
`
`Based upon information and belief, Xtend5 will continue its willful acts of
`
`trademark infringement unless enjoined by this Court. Scivation seeks a preliminary and
`
`permanent injunction against further acts of unfair competition by Xtend5.
`
`Plaintiff’s Original Complaint and Jury Demand
`
`Page 11
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 12 of 18
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`COUNT IV
`COMMON LAW UNFAIR COMPETITION
`
`70.
`
`The allegations set forth in the paragraphs above are incorporated by reference as
`
`if fully set forth herein.
`
`71.
`
`Xtend5’s conduct has and is likely to confuse, mislead, or deceive purchasers or
`
`potential purchasers and constitutes unfair competition under the laws of the State of Texas.
`
`72.
`
`Xtend5’s acts of common law unfair competition have caused great harm and
`
`damage to Scivation. The amount of these damages is not yet determined. Scivation seeks actual
`
`damages, exemplary damages, and such additional relief as may be deemed appropriate and
`
`awarded by this Court.
`
`73.
`
`Based upon information and belief, Xtend5 will continue its willful acts of unfair
`
`competition unless enjoined by this Court. Scivation seeks a preliminary and permanent
`
`injunction against further acts of unfair competition by Xtend5.
`
`COUNT V
`FEDERAL TRADEMARK DILUTION
`
`74.
`
`The allegations set forth in the paragraphs above are incorporated by reference as
`
`if fully set forth herein.
`
`75.
`
`Scivation is the owner of the famous XTEND mark. The XTEND mark has been
`
`in continual use since at least 2004, has acquired distinctiveness, has been highly publicized
`
`throughout the United States and in many parts of the world, and has acquired a high degree of
`
`recognition. The XTEND mark and the related XTEND Marks have been registered extensively
`
`on the Principal Registry of the USPTO.
`
`Plaintiff’s Original Complaint and Jury Demand
`
`Page 12
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`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 13 of 18
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`76.
`
`Xtend5’s continued use and reference to Scivation’s marks in the transaction of
`
`Xtend5’s business has been for the willful purpose of trading upon the Scivation’s reputation or
`
`to cause dilution by blurring of Scivation’s marks pursuant to 15 U.S.C. § 1125(c).
`
`77.
`
`Xtend5’s continued use and reference to Scivation’s marks in the transaction of
`
`Xtend5’s business has been for the willful purpose of trading upon the Scivation’s reputation or
`
`to cause dilution by tarnishment of Scivation’s marks pursuant to 15 U.S.C. § 1125(c) because
`
`Xtend5’s XTEND-branded CBD products are illegal pursuant to the FDCA. Xtend5 could be
`
`subject to action by the FDA, Federal Trade Commission, State Attorneys General or other
`
`government agencies in violation of the law and thus cause damage to Scivation’s reputation and
`
`goodwill due to the similarity of the marks at issue.
`
`78.
`
`Based upon information and belief, Xtend5 will continue its acts of trademark
`
`dilution unless enjoined by this Court. Pursuant to 15 U.S.C. §1116, Scivation seeks a
`
`preliminary and permanent injunction against further acts of trademark dilution by Xtend5.
`
`79.
`
`Xtend5’s willful acts of trademark dilution origin have caused great harm and
`
`damage to Scivation. The amount of these damages is not yet determined. Pursuant to 15 U.S.C.
`
`§1117, Scivation is entitled to and seeks Xtend5’s profits, actual damages, and costs of this
`
`action and such additional relief as may be deemed appropriate and awarded by this Court.
`
`80.
`
`On information and belief, Xtend5’s acts of trademark dilution have been and
`
`continue to be deliberate and willful and warrant an award of enhanced damages. In addition,
`
`Scivation is entitled to and seeks a finding that this case is exceptional and warrants an award of
`
`attorneys’ fees pursuant to 15 U.S.C. §1117(a).
`
`
`
`
`
`Plaintiff’s Original Complaint and Jury Demand
`
`Page 13
`
`

`

`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 14 of 18
`
`COUNT VI
`STATE TRADEMARK DILUTION
`
`81.
`
`The allegations set forth in the paragraphs above are incorporated by reference as
`
`if fully set forth herein.
`
`82.
`
`The actions by Xtend5 complained of herein are a violation of the Scivation’s
`
`trademark and service mark rights and constitute dilution under Section 16.103 of the Texas
`
`Business & Commerce Code.
`
`83.
`
`Such trade name and trademark dilution by Xtend5 will continue unless enjoined
`
`by this Court.
`
`84.
`
`Based upon information and belief, Xtend5 will continue its acts of trademark
`
`dilution unless enjoined by this Court. Pursuant to Texas Business & Commerce Code §16.29
`
`and Rule 680 of the Texas Rules Civil Procedure, Scivation seeks a preliminary and permanent
`
`injunction against further acts of trademark dilution by Xtend5.
`
`COUNT VII
`INJURY TO BUSINESS REPUTATION AND DILUTION
`
`85.
`
`The allegations set forth in the paragraphs above are incorporated by reference as
`
`if fully set forth herein.
`
`86.
`
`Scivation owns the XTEND Marks and the XTEND Marks are valid and
`
`enforceable.
`
`87.
`
`Xtend5, without authorization, is using the XTEND Marks and/or highly similar
`
`marks to promote and sell its own products.
`
`88.
`
`Xtend5’s conduct is likely to injure Scivation’s business reputation and to dilute
`
`the distinctive quality of Scivation’s trademarks and trade dress, in violation of § 16.29 of the
`
`Texas Business & Commerce Code. For example, Xtend5’s XTEND-branded CBD products are
`
`Plaintiff’s Original Complaint and Jury Demand
`
`Page 14
`
`

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`Case 1:20-cv-00986 Document 1 Filed 09/24/20 Page 15 of 18
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`illegal pursuant to the FDCA. Xtend5 could be subject to investigation or action by various
`
`governmental agencies or found in violation of the law and thus cause damage to Scivation’s
`
`reputation and goodwill due to the similarity of the marks at issue.
`
`89.
`
`Upon information and belief, Xtend5’s conduct is knowing, intentional, and
`
`willful.
`
`90.
`
`As a result of Xtend5’s conduct, Scivation is suffering irreparable harm, for which
`
`it has no adequate legal remedy. Scivation seeks a preliminary and permanent injunction against
`
`such further acts by Xtend5.
`
`COUNT VIII
`CYBERPIRACY
`
`The allegations set forth in the paragraphs above are incorporated by reference as
`
`91.
`
`if fully set forth herein.
`
`92.
`
`Upon information and belief, Xtend5 is the domain name registrant for the
`
`domain name www.xtend5.com.
`
`93.
`
`Xtend5 has
`
`registered,
`
`trafficked
`
`in, and/or used
`
`the domain name
`
`www.xtend5.com.
`
`94.
`
`Xtend5’s acts