Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1135689
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`Filing date:
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`05/21/2021
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
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`91266792
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`Party
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`Correspondence
`Address
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`Plaintiff
`Dennis M Hope
`
`STUART J. WEST
`WEST & ASSOCIATES, A PC
`3050 CITRUS CIRCLE, STE. 207
`WALNUT CREEK, CA 94598
`UNITED STATES
`Primary Email: trademark@westpatentlaw.com
`925-262-2220
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Motion to Suspend for Civil Action
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`Stuart J. West
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`trademark@westpatentlaw.com
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`/Stuart J. West/
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`05/21/2021
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`Attachments
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`20210521-TOFILE-MotionToSuspend-HOPED-41001O.pdf(541791 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application No. 88671419
`For the mark: Lunarland.com
`Filed: October 28, 2019
`Published in the Trademark Official Gazette: September 1, 2020
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`Opposition No. 91266792
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`Dennis M. Hope,
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`Opposer,
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`v.
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`Lunarlandowner.com, Inc.,
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` –
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`Applicant.
` – – – – – – – – – – – – – – – – – – – – – – – – – –X
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`MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION OF DISTRICT
`COURT ACTION
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`
`
`
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`Pursuant to 37 C.F.R. § 2.117(a) and TBMP § 510.02(a), Opposer, through his counsel,
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`hereby moves the Board to suspend the above-referenced proceeding (the “TTAB Proceeding”)
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`pending final disposition of Federal district court case No. 2:20-cv-01783-TLN-DB, (originally
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`given temporary case No. 2:20-at-00868) filed September 3, 2020, in the Eastern District Court
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`of California. Copies of the complaint and civil cover sheet are attached as Exhibit 1 to allow
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`the Board to determine if the outcome of the civil action will have a bearing on the issues before
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`the Board.
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`

`

`
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`The civil action involves issues in common with those in the above-referenced
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`proceeding before the Board and the decision in the Federal Court will be binding upon the
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`Board, while the Board’s decision may not be binding upon the Court. Opposer is a Plaintiff and
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`Applicant is the sole Defendant in the civil action. In the civil action, Opposer brought Federal
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`Trademark Infringement claims against Applicant under the Lanham Act in addition to passing
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`off, reverse passing off, false suggestion of connection, Federal Unfair Competition, Unfair
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`Business Practices, Declaratory Relief Based on Non-Infringement, Copyright Misuse, DMCA
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`Misuse/Abuse, Fraudulent Copyright Misrepresentation, Fraud, Intentional Interference with
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`Prospective Business Advantage, and Negligent Interference with Business Advantage. The
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`marks at issue in the civil action are the same marks at issue in this opposition. When parties are
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`involved in a civil action concerning the same marks and issues, the standard procedure of the
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`Board is to suspend its administrative proceedings pending the outcome of the civil action. New
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`Orleans Louisiana Saints LLC v. Who dat? Inc., 99 USPQ2d 1550, 1552 (TTAB 2011)(quoting
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`6 McCarthy on Trademarks and Unfair Competition § 32:47 (5th ed. Updated September 2017)).
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`
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`Opposer’s counsel consulted with Applicant’s counsel regarding this motion to suspend
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`pending the outcome of the civil action. Applicant’s counsel stated that he opposes the filing of
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`this motion.
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`For the reasons mentioned above, Opposer respectfully requests that the Board suspend
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`the above-referenced proceeding pending the outcome of the civil action referenced above.
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`Respectfully Submitted,
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`
`
`
`/Stuart J. West/
`By: Stuart J. West, Esq.
`West & Associates, A PC
`3050 Citrus Circle, Ste. 207
`Walnut Creek, CA 94598
`Attorney for Opposer
`
`

`

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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Motion to Suspend Proceedings
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`Pending Disposition of District Court Action has been served on Lorne E. Berkeley by
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`forwarding said copy on May 21, 2021, via email to lberkeley@drbdc-law.com.
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`/Dawn Callender/
`Dawn Callender
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`

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`Exhibit 1
`Exhibit 1
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`

`

`Case 2:20-at-0086§31Wu516‘§fifi SfiEfifilQ/OIBIZO Page 1 of 1
`1544 (Rm 02,19)
`The JS 44 civil cover sheet and the information contained herein neitherre lace nor supplement the filing and service of pleadings or other papers as required by law, except as
`Case 2:20-at-00868 Document 1-1 Filed 09/03/20 Page 1 of 1
`provided by local rules of court. This form, approved by the Judicial Con erence of the United States111 September 1974 13 required for the use of the Clerk of Court for the
`purpose of initiating the civil docket sheet
`(SEE INSTRUCTIONS ONNEt'T PAGE OF THIS FORM)
`
`DEFENDANTS Lunarlandownercom, Inc.
`
`Palm BeaCh
`County of Residence of First Listed Defendant
`(IN US. PMNTIFF CASES ONLY)
`IN LAND CONDEMNATION CASES, USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`NOTE:
`
`Attorneys (IfKrrmvnj
`
`III. CITIZENSHIP 0F PRINCIPAL PARTIES (Place on ”X"1'n()ne Boxfor I’lm'nlifl
`(1'’'01- orversi1y Cursor Only)
`and One Boxfor Deflation!)
`PTF
`PTF
`DEF
`Cl
`1
`Cl 4
`El é
`
`DEF
`D 1
`
`Incorporated or Frincipal Place
`ofBusiness In This State
`
`Citizen ofThis State
`
`1. (a) PLAINTIFFS Hope, Dennis M.
`Lamar, Christopher
`Lamar, Michelle
`
`SOIanO
`(I!) County ofResidencc of First Listed Plaintiff
`(EXCEPT 1N U.S. PLAINTIFF CASES}
`
`j
`
`5
`5
`
`(C) Attorneys (Firm Name. Address am! Telephone Numbed
`West & Associates, A PC
`Stuart .1, West
`3050 Citrus Circle, Ste. 207
`Walnut Creek, CA 94595
`925-262-2220
`
`H. BASIS OF JURISDICTION (Place an “X"in One Hot Only) 7
`
`El 1 U.S. Government
`Plaintiff
`
`5 3
`
`Federal Question
`(US. GrivernmenrNot a Porgy
`
`Cl 2 US. Government
`Defendant
`
`CI 4 Diversity
`Hna‘icare Citizenship ofParties in Item III)
`
`Citizen of Another State
`
`Cl 2
`
`D 2
`
`Incorporated and Principal Place
`ofBusiness In Another State
`
`Citizen or Subject ofa
`Forei _ Conn I
`
`CI 3
`
`CI
`
`3
`
`Foreign Nation
`
`13 S
`
`D 5
`
`13 6
`
`El 5
`
`
`
`
`
`Cl 891 Agricultulal Acts
`D 893 Environmental Matters
`El 895 Freedom oflnfonnation
`Act
`[3 396 Arbitration
`El 899 Administrative Procedure
`Act/Review or Appeal of
`Agency Decision
`13 950 Constitutionality of
`State Statutes
`
`
`
`Cl 8 Multidisnicr
`Litigation —
`Direct File
`
` Linw—
`IV NATURE OF UIT (Place an “X" in One BoxIOnl'y)
`
`Click here for Nature of Suit Code Descritions.
`PERSONAL INJURY
`ID 625 Drug Related Seizure
`Cl 422 Appeal 28 USC 158
`El 375 False Claims Act
`PERSONAL INJURY
`Cl 110 Insurance
`
`
`
`El 310 Airplane
`355 Personal Injury -
`ofPropcrty 21 USC 881
`CI 423 Withdrawal
`CI 376 Qai T311161 USC
`CI 120 Marine
`
`
`CI 315 Airplane Product
`Product Liability
`U 691} Other
`23 USC [57
`3729(3))
`D 130 Miller Act
`Liability
`367 Health Carerll
`Cl 140 Negotiable Instrument
`Cl 400 State Reapportionment
`
`CI 320 Assault, Libel 1311
`Pharmaceutical
`‘-
`'
`.
`'
`'
`,I '
`,
`',
`Cl 150 Recovery ovaerpaymcnt
`D 410 Antitrust
`& Enforcement ofJudgment
`Slander
`Personal Injury
`Cl 820 Copyrights
`CI 4311 Banks and Banking
`
`El 330 Federal Employers’
`Product Liability
`El 830 Patent
`El
`:51 Medicare Act
`D 450 Conunerce
`
`Liability
`El 363 Mbostos Personal
`El 835 Patent — Abbreviated
`CI I52 Recovery of' Defaulted
`CI 460 Deportation
`
`l3 340 Marine
`Injury Product
`New Dnig Application
`Student Loans
`El 470 Racketeer lnfluenced and
`
`El 345 Marine Product
`Lisblily
`B 840 Trademark
`(Excludes Veterans)
`Corrupt Organizations
`Liability
`PERSON LPROPERTY '
`w
`a
`..
`. El 480 Consumer nth-edit
`Cl 153 Recovery ovaerpay-ment
`El 350 Motor Vehicle
`CI 370 Otltel Fraud
`Cl Til) Fair Labor Standards
`CI 861 HIA(13955)
`ofVeteran‘s Benefits
`El 485 Telephone Consumer
`
`
`
`Cl 355 Motor Vehicle
`El 371 'I'rutli in Lending
`Act
`El 862 Black Lung (923)
`El 160 Stockholders‘ Suits
`Protection Act
`
`
`Product Liability
`330 Other Personal
`13 720 LaborrManagement
`1:1 863 oiwcroiww (405(g))
`:1 190 Other Contract
`in 4911 CablefSat or
`
`
`
`360 Other Personal
`Property Damage
`El 864 SSID Title XVI
`Cl 195 Contract Product Liability
`Relations
`CI 850 Securifiestonnnoditiesr‘
`
`El 396 Franchise
`Injury
`3135 Prophrty Damage
`C1 740 Railway Labor Act
`III 865 R51 (405(g))
`Exchange
`
`
`362 Personal Injury -
`Product Liability
`Cl 751 Family and Medical
`El 890 Other Statutory Actions
`
`
`
`Medical Mal-rectice
`Leave Act
`
`"
`"
`"-
`'
`-
`3425 D 790 Other Labor Litigation
`“
`“
`.
`
`
`El 210 Land Condemnation
`D 4:10 Other Civil Rights
`Cl 870 Taxes (U.S. Plaintiff
`El 791 Employee Retirement
`CI 220 Foreclosure
`
`
`
`
`El 4!“ Voting
`463 Alien Detainee
`or Defendant)
`Income Security Act
`
`
`O 442 Employment
`El 230 Rent Lease 8r. Ejectment
`D 871 IRSiThird Party
`510 Moti‘ons to Vacate
`CI 240 Torts to Land
`26 USC 7609
`Sentence
`
`:1 443 Housing!
`
`
`530 Gen ral
`Accoirunodaticns
`CI 245 Tort Product Liability
`
`D 445 Amer. waisabilities -
`535 Dear Penalty WWW“
`Cl 290 All Other Real Property
`
`
`Other:
`D 462 Naturalization Application
`Employment
`
`
`540 Mandamus & Other
`13 465 Other Immigration
`El 446 Amer. waisabilities _
`550 Civil Rights
`Actions
`Other
`
`13 448 Education
`555 Prison Condition
`560 Civil Detainee -
`Conditions of
`Confinement
`1
`3 Remandedmm
`Appellate dourt
`
`DOUGCIDDC!
`
`V. ORIGIN {Place an "X“ in One Box Only)
`M1 Original
`El 2 Removed from
`Proceeding
`State Court
`
`El
`
`RECEIPT #
`
`
`
`
`D 4 Reinstated or
`Reogened
`
`l3 6 Multidisniet
`Litigation -
`Transfer
`
`Cl 5 Transferred from
`Another District
`(specifid
`Cite the U. S. Civil Statute under which you are filing (Do not cirejurisdt'cn'onm‘statutes unless diversigr)‘
`
`
`’15U.S.C §1114
`
`
`VI. CAUSE OF ACTION
`Brief description of cause.
`=
`
`Trademark infringementi
`
`S ACTION
`DEMAND $
`CHECK YES only if demanded in complaint:
`Cl CHECK IF THIS IS A CEA
`VII. REQUESTED IN
`
`
`JURY DEMAND:
`
`
`COMPLAINT:
`UNDER RULE 23, F.R.Cy.P
`
`VIII. RELATED CASE(S)
`:
`.
`r‘
`1
`'
`(S
`'
`DOCKET NUMBER
`IF ANY
`W m" ”C ”W JUDGE
`DATE
`RNEY OF RECORD
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`
`
`09/03/2020
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`_ FOR OFFICE USE ONLY
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`
`AMOUNT
`APPLYING [FP
`JUDGE
`MAG, JUDGE
`
`

`

`
`
`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 1 of 24
`
`Stuart J. West
`SBN 202041
`West & Associates, A PC
`3050 Citrus Circle, Ste. 207
`Walnut Creek, CA 94598
`Attorney for Plaintiffs
`
`
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`UNITED STATES DISTRICT COURT
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`EASTERN DISTRICT OF CALIFORNIA
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`1
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`Dennis M. Hope, Michelle Lamar,
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`Christopher Lamar
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`12
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`Plaintiffs,
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`vs.
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`13
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`Lunarlandowner.com, Inc.,
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`14
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` Defendant
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`)
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`Case No.:
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`
`Complaint for Federal Trademark
`Infringement, Passing Off, Reverse Passing
`Off, False Suggestion of Connection,
`Federal Unfair Competition, Unfair
`Business Practices, Declaratory Relief
`Based on Non-Infringement, Copyright
`Misuse, DMCA Misuse/Abuse, Fraudulent
`Copyright Misrepresentation, Fraud,
`Intentional Interference with Prospective
`Business Advantage, and Negligent
`Interference with Business Advantage
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`Plaintiffs Dennis M. Hope (“Hope”), Michelle Lamar (“Michelle”), and Christopher
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`Lamar (“Christopher”) (collectively “Plaintiffs”) by and through their attorneys, West &
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`Associates, A PC, for their Complaint against defendant Lunarlandowner.com, Inc.
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`("Defendant"), allege, on knowledge as to their own actions, and otherwise upon information
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`and belief, as follows:
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`
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`1.
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`PRELIMINARY STATEMENT
`
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`This is an action for infringement of Hope’s federally-registered service mark Lunar
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`Embassy under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), for unfair competition
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`and false designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),
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`False suggestion of connection, Declaratory judgement of non-infringement of copyright,
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`Complaint - 1
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`

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`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 2 of 24
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`1
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`2
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`3
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`4
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`Copyright misuse, Fraudulent copyright misrepresentation, Passing off, Reverse passing off,
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`False DMCA claims, Unfair business practices, Fraud, Intentional Interference of Prospective
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`Business Advantage, and Negligent interference with business advantage, all arising from the
`Defendant's unauthorized use of the marks Lunar Land and lunarland.com (“Infringing
`Marks”) in connection with the manufacture, distribution, marketing, advertising, promotion,
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`offering for sale, and/or sale of Defendant's on-line retail store services featuring fantasy lunar
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`packages purporting to sell acreage of land on the moon, for novelty purposes services.
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`8
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`2.
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`Plaintiff seeks injunctive and monetary relief.
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`9
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`10
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`JURISDICTION
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`11
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`3.
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`This court has jurisdiction over this action pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§
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`12
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`1331, 1332(a) and 1338(a) and (b), and pursuant to the principles of supplemental jurisdiction
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`13
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`under 28 U.S.C. § 1367.
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`14
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`4.
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`This Court has subject matter jurisdiction over these claims pursuant to the Declaratory
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`15
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`Judgment Act, 28 U.S.C. §2201.
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`16
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`VENUE
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`17
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`5.
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`Venue is proper in this district under 28 U.S.C. § 1391(b)(2), in that a substantial part
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`18
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`of the events or omissions giving rise to the claim occurred in this district and/or 28 U.S.C. §
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`19
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`1391(b)(3), in that Defendant is subject to personal jurisdiction in this district with respect to
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`20
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`this action, and there is no other district in which the action may otherwise be brought.
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`21
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`6.
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`Plaintiffs are informed, believe, and thereon allege that Defendant has sufficient contact
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`22
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`with this district generally and, in particular, with the events here alleged, including, but not
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`23
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`limited to its business activities involving the advertising and sale of its goods over the Internet
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`24
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`to the citizens of California, so as to subject it to both personal jurisdiction in this court and to
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`25
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`make this court a proper venue pursuant to 28 U.S.C. §1391.
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`28
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`Complaint - 2
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`1
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`2
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`7.
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`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 3 of 24
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`Plaintiff Dennis M. Hope is an individual with a business address at 140 Sacramento St.
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`PARTIES
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`3
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`4
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`5
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`Suite 1095, Rio Vista, CA 94571. Plaintiff has been providing services relating to online
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`retail store services in the field of novel gift items with outer space, celestial body, and non-
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`Earthly themes since at least as early as December 31, 1996 using the mark Lunar Embassy.
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`6
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`8.
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`Plaintiff Michelle Lamar is an individual with an address at 225 Boston Post Rd. #72,
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`7
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`East Lyme, CT 06333.
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`8
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`9.
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`Plaintiff Christopher Lamar is an individual with an address at 225 Boston Post Rd.
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`9
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`#72, East Lyme, CT 06333.
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`10
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`10.
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`Upon information and belief, Defendant, lunarlandowner.com, Inc., is a corporation
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`11
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`incorporated in the state of Florida with a principal place of business at 9770 S. Military Trail,
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`12
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`Suite B-4 #357, Boynton Beach, FL 33436. Upon information and belief, Defendant has been
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`13
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`using the mark lunarlandowner.com in connection with on-line retail store services featuring
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`14
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`fantasy lunar packages purporting to sell acreage of land on the moon, for novelty purposes.
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`17
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`A. Facts related to Plaintiffs
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`FACTS
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`11.
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`Plaintiffs are providers of online retail store services in the field of novel gift items with
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`20
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`outer space, celestial body, and non-Earthly themes.
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`21
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`12.
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`Plaintiff Hope is the owner of valid and subsisting United States Trademark
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`22
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`Registration No. 5935517 on the Principal Register in the United States Patent and Trademark
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`23
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`Office for the trademark Lunar Embassy (hereinafter "Lunar Embassy Mark") for online retail
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`24
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`store services in the field of novel gift items with outer space, celestial body, and non-Earthly
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`25
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`themes. Attached as Exhibit 1 is a true and correct copy of the registration certificate for
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`26
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`Plaintiff's United States Trademark Registration No. 5935517, which was issued by the United
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`27
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`States Patent and Trademark Office on December 17, 2019.
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`28
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`13.
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`Plaintiff Hope has used the Lunar Embassy Mark in commerce throughout the United
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`States continuously since December 31, 1996 in connection with the distribution, provision,
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`Complaint - 3
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`

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`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 4 of 24
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`1
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`2
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`offering for sale, sale, marketing, advertising and promotion of online retail store services in
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`the field of novel gift items with outer space, celestial body, and non-Earthly themes.
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`3
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`14.
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`Plaintiff Hope has licensed the Lunar Embassy mark to Plaintiffs Christopher and
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`Michelle.
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`15.
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`As a result of its widespread, continuous, and exclusive use of the Lunar Embassy
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`Mark to identify its services and Plaintiffs as their source, Plaintiff Hope owns valid and
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`subsisting federal statutory and common law rights to the Lunar Embassy Mark.
`Plaintiff Hope’s Lunar Embassy Mark is distinctive to both the consuming public and
`16.
`Plaintiffs’ trade.
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`17.
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`Plaintiffs have expended substantial time, money, and resources marketing, advertising,
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`and promoting the goods/services sold under the Lunar Embassy Mark.
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`18.
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`Plaintiffs provide and sell the goods and services under the Lunar Embassy Mark over
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`the internet.
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`19.
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`15
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`20.
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`The services Plaintiffs offer under the Lunar Embassy Mark are of high quality.
`As a result of Plaintiffs’ expenditures and efforts, the Lunar Embassy Mark has come to
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`16
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`signify the high quality of the services designated by the Lunar Embassy Mark, and acquired
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`17
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`18
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`incalculable distinction, reputation, and goodwill belonging exclusively to Plaintiffs.
`Plaintiff Hope’s Lunar Embassy Mark and the goods and services offered thereunder
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`21.
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`19
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`have received significant unsolicited coverage in various media including national media
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`20
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`coverage.
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`22.
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`Plaintiff Hope and Plaintiff Christopher are co-owners of any business conducted on
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`22
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`behalf of the Lunar Embassy.
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`23
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`23.
`
`Plaintiff Michelle performs work on behalf of the Lunar Embassy.
`
`24
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`24.
`
`Plaintiffs own the domain lunarembassy.com.
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`25
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`25.
`
`Plaintiffs own the domain lunarlandgift.com.
`
`26
`
`26.
`
`Plaintiffs own the domain lunarlandgifts.com.
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`27
`
`27.
`
`Plaintiffs are not currently licensing or otherwise authorizing the use of any of their
`
`28
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`trademarks or other intellectual property rights to Defendant.
`
`
`
`Complaint - 4
`
`

`

`
`
`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 5 of 24
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`1
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`B. Facts related to Defendant
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`2
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`28.
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` Upon information and belief, James Demestre is the President of Defendant,
`
`3
`
`lunarlandowner.com, Inc.
`
`4
`
`29.
`
`James Demestre has performed work for Plaintiff Hope in the past.
`
`5
`
`6
`
`30. When Defendant first began working for Plaintiffs, he was a reseller in the United
`
`States that had taken over from a previous reseller.
`
`7
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`31.
`
`Defendant began to do business as an agent of Plaintiffs through the already established
`
`8
`
`9
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`business name of Lunar Land and platform Lunarland.com, which already had a solid and
`trusted reputation and was recognized as an officially authorized reseller of Plaintiffs’
`
`10
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`products.
`
`11
`
`32.
`
`The website Lunarland.com was the creation of the reseller that Defendant took over
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`12
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`for and was created while under a Reseller agreement with Plaintiffs for the sole purpose of
`
`13
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`acting as an authorized agent of Plaintiffs.
`
`14
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`33. The domain lunarland.com was handed over to Defendant, years after its establishment as
`
`15
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`an authorized source of exclusive products offered by Plaintiffs, with an association and
`
`16
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`reputation for association to Plaintiffs already embedded in the public knowledge.
`
`17
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`34.
`
` Any business generated through lunarland.com was, and remains, built on the reputation
`
`18
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`of Plaintiffs.
`
`19
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`35. Any continued use of lunarland.com, not associated directly with Plaintiffs, is done with
`
`20
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`strategic intent to confuse and mislead consumers as to that association still existing.
`
`21
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`36. Defendant also operates
`
`lunarland.org,
`
`lunarlandowner.com,
`
`lunarland.ca, and
`
`22
`
`23
`
`buymars.com.
` Defendant requested to graduate from a reseller to an Ambassador of Plaintiffs’
`
`37.
`
`24
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`goods/services in the United States and Canada.
`
`25
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`38.
`
` Defendant acted as US and Canadian Ambassador for a short time, before the authorized
`
`26
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`territory was reduced to Canada only.
`
`27
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`28
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`
`
`39. Defendant sold, outside of the assigned and agreed upon territory, confusing consumers.
`40. As a result of Defendant’s unauthorized sales outside of the agreed upon territory,
`Plaintiffs’ agreement with Defendant was terminated.
`
`Complaint - 5
`
`

`

`
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`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 6 of 24
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`1
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`2
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`3
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`4
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`5
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`6
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`41. There has been actual confusion between Plaintiffs’ products and Defendant’s products.
`
`42.
`Lunarlandowner.com,
`Inc.
`has
`falsely
`suggested
`a
`connection
`between
`lunarlandowner.com, Inc. and Plaintiffs by stating that lunarlandowner.com, Inc.’s products are
`
`IAOHPE Authorized.
`
`43.
`Upon information and belief, the use of the acronym IAOHPE by Defendant is used
`to intentionally appear to read as Plaintiff Hope’s last name.
`
`7
`
`44.
`
`Upon information and belief, Defendant has stated that land sold by Lunar Land is
`
`8
`
`registered with Lunar Embassy.
`
`9
`
`45.
`
`Upon information and belief, Defendant intended to deceive and confuse the public
`
`10
`
`11
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`by suggesting a connection to Plaintiffs.
`Upon information and belief, Defendant’s intent to deceive and confuse the public
`
`46.
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`12
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`caused actual confusion.
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`13
`
`47.
`
`Upon information and belief, Defendant is engaged in the sale of on-line retail store
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`14
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`services featuring fantasy lunar packages purporting to sell acreage of land on the moon, for
`
`15
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`novelty purposes.
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`16
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`48.
`
`Defendant actively sells to consumers within the Northern and Eastern Districts of
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`17
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`California.
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`18
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`49.
`
`Without Plaintiff's authorization, and upon information and belief, Defendant
`
`19
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`adopted and began using marks similar to Plaintiff's Lunar Embassy Mark.
`
`20
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`50.
`
`Defendant began using the marks lunarland.com and Lunar land (hereinafter, the
`
`21
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`"Infringing Marks") in US commerce.
`
`22
`
`51.
`
`The Infringing Marks adopted and used by Defendant are confusingly similar to
`
`23
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`Plaintiff's Lunar Embassy Mark.
`
`24
`
`52.
`
`Upon information and belief, Defendant has been engaged in the advertising,
`
`25
`
`promotion, offering for sale, and sale of goods and services using the Infringing Marks
`
`26
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`throughout the United States.
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`27
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`28
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`
`
`Complaint - 6
`
`

`

`
`
`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 7 of 24
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`1
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`2
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`3
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`4
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`5
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`6
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`7
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`8
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`53.
`
` Upon information and belief, the goods and services Defendant has marketed,
`
`advertised, promoted, offered for sale, and sold under the Infringing Marks are identical to those
`
`offered by Plaintiffs under the Lunar Embassy mark.
`Defendant’s infringing acts as alleged herein have caused and are likely to cause
`
`54.
`
`confusion, mistake, and deception among the relevant consuming public as to the source or
`
`origin of the Defendant's goods and services and have and are likely to deceive the relevant
`
`consuming public into believing, mistakenly, that Defendant's goods and services originate
`
`from, are associated or affiliated with, or otherwise authorized by Plaintiffs.
`
`9
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`55.
`
`Upon information and belief, Defendant's acts are willful with the deliberate intent to
`
`10
`
`11
`
`12
`
`trade on the goodwill of Plaintiff's Lunar Embassy Mark, cause confusion and deception in the
`marketplace, and divert potential sales of Plaintiffs’ goods and services to the Defendant.
`Defendant’s acts are causing, and unless restrained, will continue to cause damage
`
`56.
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`13
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`and immediate irreparable harm to Plaintiffs and to their valuable reputation and goodwill with
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`14
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`the consuming public for which Plaintiffs have no adequate remedy at law.
`
`15
`
`57.
`
`Defendant filed a US trademark application for lunarland.com on or around October
`
`16
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`28, 2019.
`
`17
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`58.
`
`Defendant’s US trademark application for lunarland.com was assigned serial number
`
`18
`
`19
`
`88671419.
`Defendant misrepresented to prospective customers that Plaintiff’s products were
`
`59.
`
`20
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`their own or that Plaintiffs were somehow connected to Defendant by suggesting that
`
`21
`
`Defendant was affiliated with Plaintiffs.
`
`22
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`60.
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`23
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`61.
`
`Defendant is in a similar trade as Plaintiffs.
`
`Defendant made this misrepresentation to injure the business or goodwill of
`
`24
`
`25
`
`Plaintiffs.
`As a result of Defendant’s misrepresentation to prospective customers, Plaintiffs
`
`62.
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`26
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`suffered damages.
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`27
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`28
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`
`
`Complaint - 7
`
`

`

`
`
`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 8 of 24
`
`1
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`2
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`3
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`63.
`
`Defendant misrepresented to prospective customers that Plaintiff’s products were
`
`their own or that Plaintiffs were somehow connected to Defendant by claiming to register
`
`purchased lunar land with Lunar Embassy.
`
`4
`
`64.
`
`Defendant made this misrepresentation to injure the business or good will of
`
`5
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`6
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`7
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`8
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`9
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`10
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`Plaintiffs by taking business away from Plaintiffs.
`Defendant misrepresented to prospective customers that Plaintiff’s products were their
`
`65.
`
`own or that Plaintiffs were somehow connected to Defendant by claiming to register purchased
`
`lunar land with Lunar Embassy.
`Defendant’s activities of using nearly identical marks of Plaintiff’s mark in
`
`66.
`
`association with the same goods and services, alleged herein constitute unfair and deceptive
`
`acts and practices in the conduct of its trade and business in violation of the Business &
`
`Professions Code § 17220.
`Upon information and belief, Defendants’ infringing activities have caused
`67.
`irreparable injury and other damage to Plaintiffs’ business, reputation and good will in its
`
`federally registered Lunar Embassy trademark. Plaintiffs have no adequate remedy at law.
`Upon information and belief, unless enjoined by this Court, Defendant’s’ infringing
`68.
`activities will continue to cause irreparable injury and other damage to Plaintiffs’ business,
`
`reputation and good will in its federally registered Lunar Embassy trademark.
`Defendant’s assertion of copyright infringement is false, misleading, deceitful and
`
`69.
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`20
`
`constitutes inequitable conduct.
`
`21
`
`70.
`
`Upon information and belief, Defendant does not own a registered copyright for the
`
`22
`
`information it asserts was infringed in its takedown request pertaining to lunarlandgifts.com
`
`23
`
`and is therefore unenforceable.
`
`24
`
`71.
`
` Upon information and belief, Defendant does not own the copyright for the
`
`25
`
`information it asserted was infringed in its takedown request pertaining to lunarlandgifts.com
`
`26
`
`27
`
`and is therefore unenforceable.
`Therefore, Defendants are not infringing Defendant’s copyright as the copyright is
`
`72.
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`28
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`unenforceable.
`
`
`
`Complaint - 8
`
`

`

`
`
`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 9 of 24
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`1
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`2
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`3
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`4
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`73.
`
`Defendant
`
`filed DMCA
`
`takedown
`
`requests of
`
`lunarlandgifts.com
`
`and
`
`lunarlandgift.com citing copyright infringement.
`Defendant’s assertions of copyright infringement are false, misleading, deceitful and
`
`74.
`
`constitute inequitable conduct.
`
`5
`
`75.
`
`Upon information and belief, Defendant does not own a registered copyright for the
`
`6
`
`7
`
`information it asserts was infringed in its takedown request pertaining to lunarlandgifts.com
`
`and lunarlandgift.com.
`
`8
`
`76.
`
`Upon information and belief, Defendant does not own the copyright for the
`
`9
`
`information it asserted was infringed in its takedown request pertaining to lunarlandgifts.com
`
`10
`
`and lunarlandgift.com and is therefore unenforceable.
`
`11
`
`77.
`
`The DMCA takedown requests interfered with the business associated with
`
`12
`
`13
`
`lunarlandgifts.com and lunarlandgift.com.
`Plaintiffs were harmed by Defendant’s copyright misuse.
`
`78.
`
`14
`
`79.
`
`Upon information and belief, in the DMCA takedown requests Defendant
`
`15
`
`16
`
`17
`
`18
`
`represented to the hosting provider that it was the owner of certain copyrighted works.
`Upon information and belief, Defendant’s representations that it was the owner of
`
`80.
`
`the copyrighted works was false at the time it was made.
`Upon information and belief, Defendant’s representations continue to be false.
`
`81.
`
`19
`
`82.
`
`Upon information and belief, Defendant knew the representations were false at the
`
`20
`
`time they were made.
`
`21
`
`83.
`
`The only reasonable inference from the foregoing is that Defendant made the
`
`22
`
`representations to mislead the hosting provider and to cause the lunarlandgifts.com and
`
`23
`
`lunarlandgift.com websites to be taken down.
`
`24
`
`84.
`
`The false representations were material because, but for the false representations, the
`
`25
`
`hosting provider would not have taken the lunarlandgifts.com and lunarlandgift.com websites
`
`26
`
`down. However, in reliance on the false representation, the hosting provider took the
`
`27
`
`lunarlandgifts.com and lunarlandgift.com websites down.
`
`28
`
`85.
`
`Plaintiffs have been and will continue to be harmed by the takedowns of the
`
`
`
`lunarlandgifts.com and lunarlandgift.com websites because they cannot conduct business.
`
`Complaint - 9
`
`

`

`
`
`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 10 of 24
`
`1
`
`2
`
`3
`
`86.
`
`Defendant uses the acronym IAOHPE on its lunarland.com website.
`
`87.
`Upon information and belief, the acronym IAOHPE is intentionally meant to
`resemble Plaintiff Hope’s last name.
`
`4
`
`88.
`
`Upon information and belief, the use of the acronym IAHOPE represented to
`
`5
`
`6
`
`7
`
`8
`
`consumers that Mr. Hope is associated with Defendant.
`Defendant’s representation that Plaintiff Hope is associated with Defendant was
`
`89.
`
`false at the time it was made.
`Defendant’s representation continues to be false.
`
`90.
`
`9
`
`91.
`
`10
`
`92.
`
`Defendant knew the representation was false at the time it was made.
`
`The only reasonable inference from the foregoing is that Defendant made the
`
`11
`
`representation to mislead consumers and to suggest a connection between Defendant and
`
`12
`
`Plaintiff Hope.
`
`13
`
`93.
`
`The false representation was material because, but for the false representation, the
`
`14
`
`consumers would not have purchased products from Defendant. However, in reliance on the
`
`15
`
`false representation, consumers purchased products from Defendant.
`
`16
`
`94.
`
`Plaintiffs have been and will continue to be harmed because they have lost business
`
`17
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`18
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`19
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`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`to Defendant.
`Defendant stated in communications with a customer, and on Defendant’s website
`95.
`that Defendant would automatically register purchases of lunar property with Plaintiff Hope’s
`
`Lunar Embassy.
`Upon information and belief, Defendant’s statement represented to consumers that
`96.
`Defendant would automatically register purchases of lunar property with Plaintiff Hope’s
`
`97.
`
`Lunar Embassy
`Defendant’s representation was false at the time it was made.
`Defendant’s representation continues to be false.
`
`98.
`
`26
`
`99.
`
`The only reasonable inference from the foregoing is that Defendant made the
`
`27
`
`representation to mislead consumers and to suggest a connection between Defendant and
`
`28
`
`Plaintiff Hope.
`
`
`
`Complaint - 10
`
`

`

`
`
`Case 2:20-at-00868 Document 1 Filed 09/03/20 Page 11 of 24
`
`100.
`
`The false representation was material because, but for the false representation, the
`
`consumers would not have purchased products from Defendant. However, in reliance on the
`
`false representation, consumers purchased products from Defendant.
`
`101.
`Plaintiffs have been and will continue to be harmed because of the business lost to
`Defendant based on Defendant’s false representation.
`Plaintiffs’ goods and services are of a significant commercial value.
`Defendant knew that Plaintiffs’ goods and services were of significant commercial
`
`102.
`
`103.
`
`value and intended to disrupt that financial relationship.
`Defendant’s actions were to take advantage of Plaintiffs’ significant financial gain
`
`104.
`
`by the selling