`
`ESTTA Tracking number:
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`ESTTA1022566
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`Filing date:
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`12/13/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91252765
`
`Party
`
`Correspondence
`Address
`
`Plaintiff
`LiveRamp, Inc.
`
`MEREDITH LOWRY
`WRIGHT, LINDSEY & JENNINGS LLP
`3333 PINNACLE HILLS PARKWAY SUITE 510
`ROGERS, AR 72758
`UNITED STATES
`mlowry@wlj.com, jdougherty@wlj.com, aturnbaugh@wlj.com
`4796313282
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
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`Motion to Suspend for Civil Action
`
`Meredith Lowry
`
`mlowry@wlj.com, aturnbaugh@wlj.com
`
`/Meredith Lowry/
`
`12/13/2019
`
`Attachments
`
`MotionStay.pdf(2560648 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91252765
`
`Serial No. 88/578,434
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`) ) ) ) ) ) ) ) ) ) ) )
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`
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`LIVERAMP, INC.,
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`v.
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`KOCHAVA INC.,
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`Opposer,
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`Applicant.
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`MOTION FOR SUSPENSION
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`Opposer LiveRamp, Inc. (“Opposer”) moves for a suspension of the above-styled
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`opposition proceeding pursuant to Trademark Rule of Practice 2.117(a). See 37 C.F.R.
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`§ 2.117(a).
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`The parties to this proceeding are involved in an active litigation in the U.S. District
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`Court for the Northern District of California entitled LiveRamp, Inc. v. Kochava Inc., Civil
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`Action No. (3:19-cv-02158), in which Opposer seeks a judicial determination of whether
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`Opposer’s use of the mark IDENTITYLINK violates any trademark rights owned by Kochava
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`Inc. (“Kochava”) and seeks to settle the ownership of the mark IDENTITYLINK. (A copy of
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`the Opposer’s Complaint (Dkt. 1 in the civil action) is attached as Exhibit 1.) In light of this
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`pending federal court litigation, the TTAB has already stayed, Opposition No. 91239025, which
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`is Applicant’s opposition to Opposer’s application to register the IDENTITYLINK mark. (A
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`copy of the stay order is attached as Exhibit 2).
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`The Trademark Trial and Appeal Board’s well-settled policy is to suspend proceedings
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`when one or both parties are involved in a civil action that may have a bearing on the Board case.
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`
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`Trademark Rule 2.117(a); General Motors Corp. v. Cadillac Club Fashions Inc., 22 USPQ2d 1933,
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`1937 (TTAB 1992). The pending civil action in the Northern District of California involves the
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`same mark and the same parties as this proceeding and Opposer’s proceeding, Opposition No.
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`91239025. The outcome of the federal court action may be dispositive of or have a bearing on the
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`current Opposition proceeding. Accordingly, the Board’s policy calls for suspension of this
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`proceeding.
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`Therefore, Opposer respectfully requests that the Board suspend this Opposition
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`proceeding pending termination of the civil action.
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`This 13th day of December, 2019.
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`Respectfully submitted,
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`/Meredith K. Lowry/
`Meredith K. Lowry, Reg. No. 58,422
`WRIGHT LINDSEY & JENNINGS LLP
`3333 Pinnacle Hills Pkwy. Ste. 510
`Rogers, AR 72758
`(479) 631-3282
`
`Attorneys for Opposer
`LIVERAMP, INC.
`
`
`
`CERTIFICATE OF SERVICE
`
`This is to certify that, on December 13, 2019, the undersigned has served on this date
`a true and correct copy of the within and foregoing Motion for Suspension regarding
`Opposition No. 91252765, and the exhibits thereto, upon counsel for Applicant by emailing
`the same as follows:
`
`J. Christopher Lynch
`Joshua T. Grandinetti
`Lee & Hayes, PLLC
`601 W. Riverside Avenue, Suite 1400
`Spokane, Washington 99201
`chris@leehayes.com, jgrandinett@leehayes.com
`
`/Meredith K. Lowry/
`Meredith K. Lowry, AR Bar 2005232
`J. Charles Dougherty, AR Bar 96185
`WRIGHT LINDSEY & JENNINGS LLP
`3333 Pinnacle Hills Pkwy. Ste. 510
`Rogers, AR 72758
`(479) 631-3282
`Attorneys for Opposer
`
`
`
`EXHIBIT 1
`EXHIBIT 1
`
`
`
`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 1 of 15
`
`SHELBY PASARELL TSAI, SBN. 220408
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`One Market Plaza, Spear Tower, Suite 3300
`San Francisco, CA 94105-1126
`Telephone: (415) 947-2159
`Facsimile:
`(415) 947-2099
`Email:
`stsai@wsgr.com
`
`TONIA OUELLETTE KLAUSNER, pending
`pro hac vice
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`1301 Avenue of the Americas, 40th Floor
`New York, NY 10019-6022
`Telephone: (212) 999-5800
`Facsimile:
`(212) 999-5800
`Email:
`tklausner@wsgr.com
`
`MEREDITH K. LOWRY, pending pro hac
`vice
`WRIGHT LINDSEY JENNINGS
`333 Pinnacle Hills Parkway, Suite 510
`Rogers, AR 72758
`Telephone: (479) 631-3282
`Facsimile:
`(479) 986-8932
`Email:
`mlowry@wlj.com
`
`MARK M. HENRY, pending pro hac vice
`ROSE LAW FIRM
`120 E. Fourth Street
`Little Rock, AR 72201-2893
`Telephone: (501) 375-9131
`Facsimile:
`(501) 375-1309
`Email:
`mhenry@roselawfirm.com
`
`Attorneys for Plaintiff
`LIVERAMP, INC.
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`CASE NO.:
`3:19-cv-2158
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT
`
`)))))))))))
`
`LIVERAMP, INC.,
`
`Plaintiff,
`
`v.
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`KOCHAVA, INC.,
`
`Defendant.
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`Plaintiff LiveRamp, Inc. (“LiveRamp”) brings this Complaint against Defendant Kochava,
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`Inc. (“Kochava”) and alleges, on personal knowledge as to its own actions and on information and
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`belief as to the actions of others, as follows:
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 2 of 15
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`JURISDICTION AND VENUE
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`1.
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`This Court has original jurisdiction pursuant to 28 U.S.C. § 2201 and § 2202 (the
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`Declaratory Judgment Act), 15 U.S.C. § 1121 (the Trademark Act), and 28 U.S.C. §§ 1331 and
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`1338. LiveRamp brings this action to resolve an actual and palpable controversy between the
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`parties arising under the trademark laws of the United States.
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`2.
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`Venue is proper in this district pursuant to 28 U.S.C. § 1391(b). A substantial part
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`of the events giving rise to the claim occurred in this district, and Kochava resides in this district
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`within the meaning of 28 U.S.C. § 1391(c)(2).
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`THE PARTIES
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`3.
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`LiveRamp is a Delaware corporation with its principal place of business at
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`225 Bush Street, 17th Floor, San Francisco, California 94104. LiveRamp is a global technology
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`company with a vision to power a world where connected data makes every experience
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`exceptional. LiveRamp offers for sale in commerce an identity resolution service leveraged by
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`brands and their partners to deliver innovative marketing and exceptional experiences across
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`marketing channels.
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`4.
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`Kochava is a Delaware corporation with its principal place of business at
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`201 Church Street, Sandpoint, Idaho. Kochava is digital advertising analytics company that
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`primarily serves two particular markets: video gaming and fraud prevention.
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`5.
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`LiveRamp brings this action for declaratory relief to protect its valuable and well-
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`known INDENTITYLINK and LIVERAMP IDENTITYLINK marks against groundless
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`trademark threats by Kochava.
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`6.
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`On October 12, 2016, LiveRamp announced a major rebranding of its identity
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`resolution service as IdentityLink™. LiveRamp IdentityLink™ uses a proprietary method to
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`connect people, data, and applications across the digital and physical world to enable true people-
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`based, omnichannel marketing.
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`7.
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`Starting before October 12, 2016 and continuing through the present, LiveRamp
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`has made a substantial investment in marketing and branding its IDENTITYLINK and
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`LIVERAMP IDENTITYLINK products and services, and as a consequence, LiveRamp has
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`LIVERAMP, INC.’S COMPLAINT
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`2
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 3 of 15
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`developed strong and well-recognized rights
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`in
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`its IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks.
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`8.
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`Notwithstanding LiveRamp’s established rights in the IDENTITYLINK and
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`LIVERAMP IDENTITYLINK marks, Kochava has (1) asserted that Kochava has superior rights
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`to the IDENTITYLINK mark, (2) repeatedly accused LiveRamp of trademark infringement;
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`(3) opposed LiveRamp’s application to register the IDENTITYLINK mark in the U.S. Patent and
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`Trademark Office (“USPTO”); (4) declared Kochava’s rights to the exclusive use of the “identity
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`link” term; (5) substantially altered Kochava’s use of the “identity link” term in a bad faith effort
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`to manufacture artificial confusion in the marketplace; (6) threatened to seek to cancel
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`LiveRamp’s LIVERAMP IDENTITYLINK mark; and (7) threatened to file a federal action
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`against LiveRamp.
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`9.
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`LiveRamp therefore seeks a declaration that its use of the IDENTITYLINK mark
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`does not and will not infringe upon or otherwise violate any rights claimed by Kochava.
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`10.
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`LiveRamp also seeks a preliminary and permanent injunction to prevent Kochava
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`from continuing (a) to threaten LiveRamp’s valuable trademark rights and (b) to engage in bad
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`faith efforts to manufacture artificial confusion in the marketplace regarding LiveRamp’s
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`IDENTITYLINK and LIVERAMP IDENTITYLINK marks.
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`11.
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`The parties are not in competition with one another.
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`LIVERAMP’S IDENTITYLINK MARKS
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`12.
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`On October 12, 2016, LiveRamp announced a major rebranding of its identity
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`resolution service under the IDENTITYLINK and LIVERAMP IDENTITYLINK marks.
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`13.
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`Prior to LiveRamp’s announcement in October 2016, LiveRamp conducted
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`research to determine whether anyone else claimed rights in the IdentityLink term, or used
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`“IdentityLink” as a trademark for any product or service. LiveRamp discovered no conflicting
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`trademark-type usage of IDENTITYLINK or IDENTITY LINK in connection with any relevant
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`products or services. At the time of its rebranding LiveRamp had no knowledge of any trademark
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`claimants of IDENITYLINK as applied to any potentially competitive products or services.
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`LiveRamp adopted the IDENTITYLINK mark in good faith.
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`LIVERAMP, INC.’S COMPLAINT
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`3
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 4 of 15
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`14.
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`Concurrently with its rebranding announcement on October 12, 2016, LiveRamp
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`initiated a major branding rollout to build substantial market recognition of the IDENTITYLINK
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`and LIVERAMP IDENTITYLINK marks. The rollout included but was not limited to marketing
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`efforts on multimedia platforms, press releases through industry publications, and personalized
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`emails sent to tens of thousands of past, present, and potential business partners and vendors.
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`15.
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`On October 12, 2016, LiveRamp filed a U.S. Trademark Application for the
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`LIVERAMP IDENTITYLINK mark in connection with the following goods and services:
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`“Software as a Service (SaaS) services featuring software for resolution of the
`identity of individual consumers based on data pertaining to the consumers across
`multiple marketing channels, devices, and marketing platforms, and mapping
`identifiers for a known individual consumer to the channels, devices, and
`marketing platforms on which that individual consumer can be found, in order to
`execute and support multichannel marketing efforts, targeting specific consumers
`for marketing purposes, measurement of marketing campaign
`results,
`personalization of marketing messages to individual consumers, monetization of
`consumer marketing data, and consumer marketing data analytics”
`in
`International Class 042.
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`The date of first use was identified as not later than October 12, 2016, and the application was
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`assigned Serial No. 87835607. The application listed California as the address for LiveRamp.
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`The application was approved and later published on August 8, 2018. Having received no public
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`opposition from any interested party claiming prior use, the registration issued on November 13,
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`2018. A true and correct copy of the Certificate of Registration for Reg. No. 5,605,763 (the
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`“LIVERAMP IDENTITYLINK Registration”) is attached hereto as Exhibit A and incorporated by
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`reference.
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`16.
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`The LIVERAMP IDENTITYLINK Registration remains in full force and never has
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`been formally challenged by any entity or person.
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`17.
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`Also on October 12, 2016, LiveRamp filed a U.S. Trademark Application for the
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`IDENTITYLINK mark in connection with the following goods and services:
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`“Software as a Service (SaaS) services featuring software for resolution of the
`identity of individual consumers based on data pertaining to the consumers across
`multiple marketing channels, devices, and marketing platforms, and mapping
`identifiers for a known individual consumer to the channels, devices, and
`marketing platforms on which that individual consumer can be found, in order to
`execute and support multichannel marketing efforts, targeting specific consumers
`for marketing purposes, measurement of marketing campaign
`results,
`personalization of marketing messages to individual consumers, monetization of
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 5 of 15
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`consumer marketing data, and consumer marketing data analytics”
`International Class 042.
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`in
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`The date of first use was identified as not later than October 12, 2016, and the application was
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`assigned Serial No. 87200487 (the “IDENTITYLINK Application”). The application listed
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`California as the address for LiveRamp. The Trademark Examiner ultimately agreed the
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`IDENTITYLINK Application met all statutory requirements to serve as a trademark and approved
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`the application for publication. The USPTO published the IDENTITYLINK Application for
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`opposition on September 19, 2017, and the application stood ready to be granted to the Principal
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`Register.
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`18.
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`19.
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`LiveRamp owns common-law trademark rights in the IDENTITYLINK mark.
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`Since at least October 12, 2016, LiveRamp has consistently and properly marked
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`IDENTITYLINK™ and LIVERAMP IDENTITYLINK® with the public trademark notices.
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`20.
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`LiveRamp’s advertising investment across the national audience of likely
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`customers and clients has resulted in the IDENTITYLINK mark being recognized as the leading
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`identity resolution platform leveraged by both brands and their partners. Today, the top results of
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`a search for “Identitylink” return information specifically about LiveRamp’s services.
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`21.
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`LiveRamp’s IDENTITYLINK and LIVERAMP IDENTITYLINK marks also are
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`linked to LiveRamp’s substantial commercial success. For the fiscal year ending March 31, 2018,
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`LiveRamp reported $211 million in revenue attributed to its Connectivity segment attributed in
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`large part to subscription revenue for services sold under the IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks. LiveRamp has more than 650 partners utilizing its IdentityLink™
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`platform.
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`LiveRamp continues to invest substantial sums in the promotion of the
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`IDENTITYLINK and LIVERAMP IDENTITYLINK marks and development of services sold
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`under the IDENTITYLINK and LIVERAMP IDENTITYLINK marks.
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 6 of 15
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`LIVERAMP’S IDENTITYLINK SERVICE
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`23.
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`A key feature of LiveRamp’s IdentityLink™ service allows subscribers to reconcile
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`and relate client data from many sources.
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`As illustrated by the Figure A, an IdentityLink™ subscriber can receive
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`information about consumers from many disparate inputs, such as gaming consoles, wearable
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`technology (Apple watches), offline (food and retail) purchases, email, streaming music, television
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`(e.g., set top boxes, Roku, Google connected sticks), and mobile telephones.
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`Figure A
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`The IdentityLink™ service uses proprietary technologies to resolve this fragmented
`data back to a single anonymous identifier representing a consumer. This allows IdentityLink™
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`subscribers to create a measureable understanding of consumer behavior.
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`KOCHAVA’S SHAM TRADEMARK CLAIMS
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`26.
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`In September 2016, one month prior to LiveRamp’s public launch of its rebranded
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`IdentityLink™ service, executives and employees from LiveRamp (and LiveRamp’s then-parent
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`company Acxiom Corporation1) met with Kochava’s President and Chief Executive Officer
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`Charles Manning. At the meeting, LiveRamp and Kochava’s executives discussed LiveRamp’s
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`1 Acxiom acquired LiveRamp in May 2014. In October 2018, LiveRamp became a stand-alone public company.
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`LIVERAMP, INC.’S COMPLAINT
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`plan to rebrand its technology under the IDENTITYLINK and LIVERAMP IDENTITYLINK
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`marks and discussed potential business partnerships tied to LiveRamp’s IdentityLink™ service.
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`27.
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`Thereafter, on October 2, 2016, Acxiom’s Vice President of Strategy and Corporate
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`Development Neil Fried sent a follow-up email to Kochava’s President and CEO Charles Manning
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`to confirm the substance of their New York meeting. Mr. Fried’s email specifically discussed and
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`named LiveRamp’s IdentityLink™ service.
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`28.
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`Ten days later, on October 12, 2016, Kochava’s Charles Manning received an
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`email announcing the launch of LiveRamp’s IdentityLink™ service at his Kochava work email
`address. The email both announced LiveRamp’s IdentityLink™ service and explained the
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`functionality and features of the service. The email also contained a link to LiveRamp’s full press
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`release announcing LiveRamp’s IdentityLink™ service and invited recipients to attend a webinar
`scheduled for October 20, 2016 that further explained the LiveRamp’s IdentityLink™ platform.
`Manning read and forwarded the LiveRamp’s IdentityLink™ launch email to another Kochava
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`employee, commenting on LiveRamp’s use of the IDENTITYLINK mark.
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`29.
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`Neither Manning nor anyone else at Kochava notified LiveRamp that Kochava had
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`any objection to LiveRamp’s use of the IDENTITYLINK or LIVERAMP IDENTITYLINK marks
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`at the September 2016 meeting, after Mr. Fried’s October 2 email, or after the October 12 product
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`launch email.
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`30.
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`Kochava instead chose to lay in wait while LiveRamp spread the word of the new
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`name for its identity resolution service and invested significantly to promote and build brand
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`recognition for the INDENTITYLINK and LIVERAMP IDENTITYLINK marks.
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`31.
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`On September 28, 2017, more than a year after learning of LiveRamp’s intention to
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`rebrand its technology under the IDENTITYLINK and LIVERAMP IDENTITYLINK marks and
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`almost one year after LiveRamp launched its IdentityLink™ service, Kochava sent a letter
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`demanding that LiveRamp withdraw the IDENTITYLINK Application. On October 19, 2017,
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`LiveRamp responded and denied that Kochava had used “IdentityLink” or “IDENTITY LINK” as
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`a trademark because Kochava never offered any product or service under the name “IdentityLink”
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`but instead inconsistently used the term to describe a feature of a separately branded service.
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`LIVERAMP, INC.’S COMPLAINT
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`Then on January 17, 2018 – more than a year and three months after learning of
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`LiveRamp’s re-branding and the last day to file an opposition to the IDENTITYLINK Application
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`– Kochava instituted an opposition proceeding with the USPTO’s Trademark Trial and Appeal
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`Board (“TTAB”). In its TTAB filing, Kochava claimed there was a likelihood of trademark injury
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`arising from LiveRamp’s use of the IDENTITYLINK mark. Kochava claimed a first use date of
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`at least as early as August 12, 2012 on “software with audience attribution capability.” A true and
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`correct copy of Kochava’s Notice of Opposition is attached hereto as Exhibit B and incorporated
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`by reference.
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`33.
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`At the time Kochava filed its Opposition, Kochava had not used the term
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`“IdentityLink” or any substantially similar term as the brand name for any product or service.
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`Kochava had not used the IDENTITYLINK mark in commerce, and Kochava had made no effort
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`to establish any public recognition of “IdentityLink” or any substantially similar term as
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`associated with Kochava. At most, Kochava used the terms “Identity link” or “IdentityLink” in
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`sporadic, casual or transitory fashion and not in a deliberate or continuous fashion.
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`34.
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`Prior to October 2016, to the extent that Kochava used the terms “Identity link” or
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`“IdentityLink,” Kochava inconsistently used those terms to the public as descriptors and did not
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`associate those terms to any known and developed Kochava product or service offered in
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`commerce.
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`35.
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`Kochava has no sales or revenues linked to products or services branded as
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`“IDENTITYLINK” or “IDENTITY LINK.”
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`36.
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`Kochava has not advertised any product or service bearing an “IDENTITYLINK”
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`or “IDENTITY LINK” mark; Kochava has had no positive growth trend across any defined
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`customer or market for any products or services bearing an “IDENTITYLINK” or “IDENTITY
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`LINK” mark; and Kochava does not have any mechanism by which a customer can purchase any
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`product or service sold under an “IDENTITYLINK” or “IDENTITY LINK” brand.
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`37.
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`Prior to 2018, Kochava did not spend any money or time promoting an
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`“IDENTITYLINK” or “IDENTITY LINK” brand.
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 9 of 15
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`KOCHAVA’S RECENT BAD FAITH USE OF THE IDENTITYLINK BRAND
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`38.
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`Long after LiveRamp’s successful rebranding of its identity resolution service
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`under the IDENTITYLINK and LIVERAMP IDENTITYLINK marks and registration of its
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`LIVERAMP IDENTITYLINK mark, and following Kochava’s opposing LiveRamp’s application
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`to register IDENTITY LINK, Kochava changed its use of the “IdentityLink” term in a bad faith
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`effort to manufacture the appearance of trademark rights, concoct evidence for legal proceedings,
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`and attempt to extract a windfall payment from LiveRamp.
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`39.
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`In particular, in mid-2018, Kochava made changes to its website and substantially
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`and materially altered its use of the IdentityLink “feature.” Kochava has changed its description
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`of its Identity Link feature to make it appear similar to the services that LiveRamp has offered
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`under the IDENTITYLINK and LIVERAMP IDENTITYLINK marks since at least October of
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`2016.
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`40.
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`Not only has Kochava purposefully changed the manner and frequency of its use of
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`the term “IdentityLink” to attempt to improve its position as a late-comer to the IDENTITYLINK
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`mark, Kochava has deliberately sought to create artificial evidence of confusion in the
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`marketplace.
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`41.
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`For example, Kochava’s newly reworked webpage includes a new graphic
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`depicting a centralized collection of consumer data from multiple data sources including gaming
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`consoles, Apple watches, email, television set top boxes, and smartphones, mimicking the figure
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`used by LiveRamp. See Figure B.
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 10 of 15
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`Figure B
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`42.
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`Kochava intentionally and willfully changed the manner and frequency of its use of
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`the term “IdentityLink” in 2018 with the express purpose of targeting LiveRamp’s customers and
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`creating artificial evidence it could rely on to extort LiveRamp. LiveRamp has been using the
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`IDENTITYLINK and LIVERAMP IDENTITYLINK marks for two years concurrent with
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`Kochava’s use of the term “Identity Link” without evidence of any customer confusion.
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`43.
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`On February 15, 2019, nearly two and a half years after LiveRamp announced the
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`rebranding of its identity resolution service under the IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks, Kochava issued a press release entitled: “Kochava Announces Latest
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`Enhancements to IdentityLink, Giving Marketers a Clearer View of Their User Journeys.” In the
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`press release, Kochava targets mobile marketers that overlap with LiveRamp’s customer base. A
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`true and correct copy of Kochava’s February 15, 2019 press release is attached hereto as Exhibit C
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`and incorporated by reference.
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`44.
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`Kochava’s new use of term “IdentityLink” was expressly designed to damage
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`LiveRamp. Because LiveRamp’s principal place of business is in San Francisco, California, the
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`effect of Kochava’s bad faith conduct is felt by LiveRamp in San Francisco, California.
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`45.
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`In addition, Kochava has deliberately targeted California purchasers and potential
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`purchasers. Among other things, Kochava has sales personnel who live and work in the San
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`Francisco Bay Area and who are now promoting IDENTITYLINK as a Kochava offering.
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 11 of 15
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`Kochava has other personnel who travel to the San Francisco Bay Area to promote and market
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`Kochava’s services, including promoting IDENTITYLINK as a Kochava offering. And Kochava
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`is planning to market IDENTITYLINK as a Kochava offering at a trade show in San Francisco on
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`April 29-30, 2019.
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`46.
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`On March 27, 2019, Kochava sent a demand letter and proposed Memorandum of
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`Understanding (“MOU”) to LiveRamp offering to cease all use of the IDENTITYLINK mark and
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`refrain from challenging LiveRamp’s right to use such mark in exchange for a multi-million dollar
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`monetary payment. The MOU was addressed to LiveRamp at its San Francisco address of 667
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`Mission Street, 4th Floor, San Francisco, California. The demand letter set forth a variety of
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`threatened actions if LiveRamp did not agree to Kochava’s terms. Among other things, Kochava
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`threatened to a file “a TTAB Cancellation of LIVERAMP IDENTITYLINK.” Kochava also stated
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`that “Kochava would initiate USDC litigation, if LiveRamp did not voluntarily cease use of the
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`[IDENTITYLINK] mark” and would seek “an injunction” to bar LiveRamp from using either the
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`IDENTITYLINK or LIVERAMP IDENTITYLINK marks.
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`47.
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`Kochava has engaged in a deliberate effort to create the illusion of rights to the
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`IDENTITYLINK mark while issuing repeated threats and attacks against LiveRamp’s increasingly
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`valuable IDENTITYLINK and LIVERAMP IDENTITYLINK marks. Accordingly, LiveRamp
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`files this complaint to affirm its superior rights to the IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks and to enjoin Kochava from continuing (a) to threaten LiveRamp’s
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`valuable trademark rights and (b) to engage in bad faith conduct in connection with its marketing.
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`COUNT I
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`(Declaratory Judgment)
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`48.
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`LiveRamp realleges and incorporates by reference the allegations of all prior
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`paragraphs as though fully set forth herein.
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`49.
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`As a result of the actions and statements of Kochava, which include allegations of
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`trademark infringement and threats to commence litigation and cancellation proceedings before
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`the TTAB concerning LiveRamp’s right to continued commercial use of the IDENTITYLINK and
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`LIVERAMP IDENTITYLINK marks, there is an actual controversy between LiveRamp and
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 12 of 15
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`Kochava as to LiveRamp’s rights and legal relations associated with its use of the
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`IDENTITYLINK and LIVERAMP IDENTITYLINK marks. Under all of the circumstances, an
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`immediate, real and substantial controversy exists between the parties, who have adverse legal
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`interests.
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`50.
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`LiveRamp has used and intends to keep using the IDENTITYLINK and
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`LIVERAMP IDENTITYLINK marks in interstate commerce.
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`51.
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`Kochava’s position is that LiveRamp’s use of the IDENTITYLINK and
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`LIVERAMP IDENTITYLINK marks violates Kochava’s trademark rights.
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`52.
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`LiveRamp’s federally registered LIVERAMP IDENTITYLINK mark does not
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`infringe upon, dilute, or violate any federal or state trademark, trade name, or related rights of
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`Kochava.
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`53.
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`LiveRamp’s common law IDENTITYLINK mark does not infringe upon, dilute, or
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`violate any federal or state trademark, trade name, or related rights of Kochava.
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`54.
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`LiveRamp’s rights to the IDENTITYLINK and LIVERAMP IDENTITYLINK
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`marks are superior to the rights that Kochava now alleges.
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`55.
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`LiveRamp acted in good faith and did not act willfully against the interests of
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`Kochava, but Kochava has acted in bad faith and has unclean hands.
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`56.
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`Kochava is equitably estopped from enforcing any common law trademark rights,
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`if any, by virtue of its unclean hands, bad faith, or other inequitable conduct such that were there
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`any common law trademark rights available to Kochava, it is estopped from enforcing them
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`relative to LiveRamp.
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`57.
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`Kochava is barred by the doctrine of laches from enforcing any common law
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`trademark rights it has in the IDENTITYLINK mark or any substantially equivalent mark because
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`Kochava unreasonably delayed in enforcing its rights, if any, and such delay caused prejudice to
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`LiveRamp.
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`58.
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`An actual justiciable controversy within the meaning of 18 U.S.C. § 2201 exists
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`between LiveRamp and Kochava concerning the use of the IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks and the respective trademark rights of the parties. A judicial
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`LIVERAMP, INC.’S COMPLAINT
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 13 of 15
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`determination is necessary and appropriate at this time in order to resolve the issues of the
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`trademark rights of LiveRamp and the conflicting claims of Kochava, and in order that the parties
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`may ascertain their respective rights and obligations.
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`59.
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`LiveRamp does not engage in any activities that violate any lawful rights of
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`Kochava and is entitled to a declaration to that effect in this action.
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`PRAYER FOR RELIEF
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`LiveRamp prays for judgment as follows:
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`1.
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`Declaring that LiveRamp’s use and registration of the IDENTITYLINK and
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`LIVERAMP IDENTITYLINK marks do not infringe upon, dilute, or otherwise violate any valid
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`right of Kochava under applicable federal or state law;
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`2.
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`Declaring that LiveRamp’s rights in the IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks are superior to any rights of Kochava to such marks;
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`3.
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`Granting a preliminary and permanent injunction enjoining and restraining
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`Kochava and its officers, directors, agents, servants, employees, and attorneys, and those in active
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`concert or participation with them, from
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`(i)
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`directly or indirectly charging infringement, dilution, or other legal
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`violation, or instituting any action for infringement, dilution, or other
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`violation of alleged rights of Kochava in the term “identity link” or
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`“IdentityLink” against LiveRamp or any of LiveRamp’s agents,
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`direct or indirect customers, or any person, by reason of the use or
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`registration of LiveRamp’s IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks; and
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`(ii)
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`using or displaying
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`the
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`IDENTITYLINK and LIVERAMP
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`IDENTITYLINK marks or any substantially similar marks in a bad
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`faith effort to confuse LiveRamp’s IDENTITYLINK customers and
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`prospective customers;
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`Case 3:19-cv-02158 Document 1 Filed 04/22/19 Page 14 of 15
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`4.
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`Awarding to LiveRamp its reasonable costs, disbursements, and attorneys’ fees
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`incurred in defending its rights to the IDENTITYLINK and LIVERAMP IDENTITYLINK marks
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`against the claims and conduct of Kochava; and
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`5.
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`Granting such other and further relief as this Court may deem just and proper.
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`Dated: April 22, 2019
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`WILSON SONSINI GOODRICH & R