Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA1238869
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`Filing date:
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`09/29/2022
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
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`91273777
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`Party
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`Correspondence
`address
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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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`Attachments
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`Plaintiff
`PROCCOR Pharmaceuticals Inc
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`TIM BILLICK
`TBILLICK LAW PLLC
`600 1ST AVE
`SEATTLE, WA 98104
`UNITED STATES
`Primary email: tim@tbillicklaw.com
`206-494-0020
`
`Motion to Suspend for Civil Action
`
`Timothy Billick
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`tim@tbillicklaw.com, mary@tbillicklaw.com
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`/Timothy Billick/
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`09/29/2022
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`Proccor Opp Mot Compel ExA USDC compl.pdf(3249683 bytes )
`PROCCOR 91273777 MOTION TO SUSPEND PROCEEDINGS -
`09-29-22.pdf(78773 bytes )
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`
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`ESTTA Tracking number:
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`ESTTA1238869
`
`Filing date:
`
`09/29/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91273777
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`PROCCOR Pharmaceuticals Inc
`
`TIM BILLICK
`TBILLICK LAW PLLC
`600 1ST AVE
`SEATTLE, WA 98104
`UNITED STATES
`Primary email: tim@tbillicklaw.com
`206-494-0020
`
`Motion to Suspend for Civil Action
`
`Timothy Billick
`
`tim@tbillicklaw.com, mary@tbillicklaw.com
`
`/Timothy Billick/
`
`09/29/2022
`
`Proccor Opp Mot Compel ExA USDC compl.pdf(3249683 bytes )
`PROCCOR 91273777 MOTION TO SUSPEND PROCEEDINGS -
`09-29-22.pdf(78773 bytes )
`
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`Exhibit A
`Exhibit A
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.1 Page 1 of 27
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`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF WASHINGTON
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`No. 2:22-cv-210
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`COMPLAINT
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`JURY TRIAL DEMANDED
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`PROCCOR PHARMACEUTICALS, INC., a
`Florida corporation,
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` Plaintiff,
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` v.
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`THIN FIT LINE LLC, a Washington limited
`liability company; GRANT DUNN, an
`individual; and DAN MCBRIDE, an
`individual,
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` Defendants.
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`COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
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`Plaintiff PROCCOR Pharmaceuticals Inc. (“Plaintiff” or “PROCCOR”), a Florida
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`corporation, by and through its undersigned attorneys, files this Complaint for damages
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`COMPLAINT – 1
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.2 Page 2 of 27
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`and injunctive relief and sues Defendants Thin Fit Line LLC (“Thin Fit Line”), Grant
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`Dunn (“Dunn”) and Dan McBride (“McBride”) (collectively, “Defendants”) and alleges
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`as follows:
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`I.
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`INTRODUCTION
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`1.
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`Since 2017, Plaintiff has manufactured, advertised, marketed, promoted,
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`distributed, and sold a dietary supplement bearing its famous and distinctive
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`NIGHTSHIFT mark (the “Mark”). Plaintiff's product bearing the Mark assists users with
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`sleep and recovery after athletic training. Plaintiff has made its Nightshift supplement
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`available for purchase across the United States online since September 28, 2017; with open
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`and notorious commercial activity occurring before this date. True and accurate screen
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`captures showing images of the product and details from its Amazon.com storefront are
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`reproduced below:
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`COMPLAINT – 2
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.3 Page 3 of 27
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`2.
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`Despite Plaintiff's longstanding rights in the Mark, on November 21, 2019,
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`Defendants began offering for sale a dietary supplement also used for sleep and recovery,
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`used in connection with two confusingly similar imitations of Plaintiff's distinctive Mark.
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`Defendants' two infringing marks (together, the “Infringing Marks”) are NIGHT SHIFT
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`and THINLINE ANTHEM NIGHT SHIFT. Both Infringing Marks feature the words
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`NIGHT SHIFT in large type, thereby confusing consumers into believing Plaintiff is
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`associated with or endorses Defendant's competing product. True and accurate screen
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`captures of Defendant’s product listing page on Amazon.com and its own website (taken
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`by Plaintiff’s counsel on September 20, 2022) are reproduced below:
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`COMPLAINT – 3
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.4 Page 4 of 27
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`COMPLAINT – 4
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.5 Page 5 of 27
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`3.
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`Defendants' use of the Infringing Marks is a blatant attempt by Defendants
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`to trade on the goodwill and commercial magnetism Plaintiff has built up in the Mark. In
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`short, the Infringing Marks imitate Plaintiff's Mark in a manner that is likely to cause
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`consumer confusion and deceive the public regarding the source, sponsorship, and/or
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`affiliation of Defendant's competing dietary supplement. Defendants' sale of products
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`COMPLAINT – 5
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.6 Page 6 of 27
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`bearing the Infringing Marks is therefore unlawful and is causing irreparable harm to
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`Plaintiff's brand.
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`4.
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`Despite this notice, and somehow ignoring the obvious and widespread
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`goodwill associated with the NIGHTSHIFT mark, Defendants have attempted to register
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`the Infringing Marks with the U.S. Trademark Office (with Thin Fit Line as the named
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`applicant). Registration by Defendants of the Infringing Marks, for products nearly
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`identical to Plaintiff’s, would be certain to impair the distinctiveness, and cause dilution
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`by blurring and tarnishment, of Opposer’s famous Mark.
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`5.
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`Plaintiff brings this action at law and in equity for trademark infringement
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`and dilution, unfair competition, unfair business practices, and fraud on the Trademark
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`Office arising under the Trademark Act of 1946, 15 U.S.C. §§ 1051 et seq. (2009) (“Lanham
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`Act”); Washington’s anti-dilution law; Washington’s consumer protection act; and the
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`common law. Among other relief, Plaintiff asks this Court to: (a) preliminarily enjoin
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`Defendants from distributing, marketing or selling dietary supplements bearing either of
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`selling dietary supplements bearing either of the Infringing Marks; (c) award Plaintiff
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`monetary damages and to treble that award; (d) require Defendants to disgorge all profits
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`from sales of products bearing the Infringing Marks; (e) award Plaintiff punitive
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`damages, attorneys’ fees, and costs; and (f) order Defendants to withdraw all trademark
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`applications bearing phrases confusingly similar to NIGHTSHIFT.
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`COMPLAINT – 6
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.7 Page 7 of 27
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`II. THE PARTIES
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`6.
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`Plaintiff PROCCOR is a Florida corporation with its principal business
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`address at PO Box 46846, Tampa, FL 33647. PROCCOR is the owner of exclusive rights in
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`and to the trademark NIGHTSHIFT, used since at least July 25, 2017 in connection with
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`a dietary supplement for sleep and recovery.
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`7.
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`On information and belief, Defendant Thin Fit Line LLC is a Washington
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`limited liability company. On information and belief, Defendant’s principal place of
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`business is 906 N James Ave., East Wenatchee, WA 98802-4664.
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`8.
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`On information and belief, Defendant Grant Dunn is a Washington resident
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`and a principal of Defendant Thin Fit Line.
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`9.
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`On information and belief, Defendant Dan McBride is a Washington
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`resident and a principal of Defendant Thin Fit Line.
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`III.
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`JURISDICTION AND VENUE
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`10.
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`This Court has subject matter jurisdiction under section 39 of the Lanham
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`Act, 15 U.S.C. § 1121, and under 28 U.S.C. §§ 1331 and 1338. Subject matter jurisdiction
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`over Plaintiff's related state and common law claims is proper pursuant to 28 U.S.C. §§
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`1338 and 1367.
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`COMPLAINT – 7
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.8 Page 8 of 27
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`11.
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`This Court has personal
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`jurisdiction over Defendants because, on
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`information and belief, (a) Defendants are located in the Eastern District of Washington,
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`(b) Defendants have marketed, distributed, offered for sale, and/or sold products bearing
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`the Infringing Marks to persons within the State of Washington; (c) Defendants regularly
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`transact and conduct business within the State of Washington; and/or (d) Defendants
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`have otherwise made or established contacts within the State of Washington sufficient to
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`permit the exercise of personal jurisdiction.
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`12.
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`The Eastern District of Washington is a proper venue pursuant to 28 U.S.C.
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`§ 1391(b)(2) because a substantial part of the acts or omissions giving rise to Plaintiff's
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`claims occurred in this District, and because Defendants are residents of (or an entity
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`organized in) this District.
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`IV.
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`FACTUAL BACKGROUND
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`13.
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`Plaintiff PROCCOR is a preeminent vendor of high-quality dietary and
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`nutritional supplements.
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`14.
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`Since at least as early as July 25, 2017, PROCCOR has used the Mark
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`NIGHTSHIFT in connection with the sale of the dietary supplement bearing the Mark.
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`15.
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`Plaintiff’s product has been sold, and offered for sale, on Amazon.com and
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`other prominent internet sales channels since at least September 2017.
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`COMPLAINT – 8
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.9 Page 9 of 27
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`Since 2017, Plaintiff has widely promoted its product bearing the Mark on
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`its Instagram account, Google, Facebook, Stack3D.com and other news sites that are well-
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`known to Plaintiff’s target market. In the five years since Plaintiff began using the Mark,
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`Plaintiff has spent considerable amounts of money, time, and resources marketing,
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`advertising, and promoting the Mark, and has brought the Mark to widespread attention.
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`Accordingly the Mark has become distinctive and famous.
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`17. A true and accurate collection of exemplars of PROCCOR sales
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`confirmations for its Nightshift product are attached hereto as Exhibit 1.
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`18. Defendant Thin Fit Line was registered as a Washington State limited
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`liability company on May 9, 2018 – well after Plaintiff’s first use of the Mark.
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`19. On information and belief, Dunn and McBride are the principals of Thin Fit
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`Line and make all decisions for Defendant Thin Fit Line.
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`20. Defendants did not use their Infringing Marks until November 21, 2019 –
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`over two years after Plaintiff’s first use of the Mark. Defendants first sold products
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`bearing the Infringing Marks on that date. Defendants admitted this as their first-use date
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`in their filings to the U.S. Trademark Office (“PTO”) in support of their applications to
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`register the Infringing Marks (see below).
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`21.
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`In the month after Defendants’ first use of the Infringing Marks – December
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`2019 – Plaintiff sent an email to Defendant Thin Fit Line through the contact form on Thin
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`Fit Line’s website. In that email, Plaintiff informed Defendants that Plaintiff was the
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`COMPLAINT – 9
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.10 Page 10 of 27
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`senior user of the NIGHTSHIFT Mark in connection with dietary supplements, that
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`Defendants’ use of the Infringing Mark NIGHT SHIFT was trademark infringement, and
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`that Defendants must cease and desist from further use of the Infringing Marks. Plaintiffs
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`also delivered a copy of this notice to Defendants via certified mail. These notices were
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`sent via Thin Fit Line’s website, to its info@thinfitlineanthem.com email address, and via
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`certified mail on or about December 26, 2019. True and accurate copies the email,
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`confirmation receipt, and image of the mailing are reproduced below:
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`COMPLAINT – 10
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.11 Page 11 of 27
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`COMPLAINT – 11
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.12 Page 12 of 27
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`22. Although Defendants acknowledged receipt of Plaintiff’s cease-and-desist
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`notice, Defendants never responded to it, and they willfully and intentionally continued
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`to use their Infringing Marks.
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`23. On January 16, 2020 – despite their knowledge that Plaintiff had senior
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`rights in and to the NIGHTSHIFT Mark in connection with dietary supplements –
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`Defendants filed applications with the U.S. Patent and Trademark Office (“PTO”) to
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`register both Infringing Marks.
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`24. Defendants filed Application Serial No. 88761162 to register the Infringing
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`Mark NIGHT SHIFT – with Defendant Thin Fit Line as the named applicant –- in
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`connection with “dietary supplements; herbal supplements; mineral supplements;
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`nutritional supplements; protein supplements; vitamin supplements.”
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`25. Defendants filed Application Serial No. 88761168 to register the Infringing
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`Mark THINLINE ANTHEM NIGHT SHIFT – with Defendant Thin Fit Line as the named
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`applicant –- in connection with “dietary supplements; herbal supplements; mineral
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`supplements; nutritional supplements; protein supplements; vitamin supplements.”
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`26.
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`Since at least December 2019, all Defendants, including Defendants Dunn
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`and McBride, have known about Plaintiff’s first use of, and senior rights in and to, the
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`NIGHTSHIFT Mark used in connection with dietary supplements.
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`27. On information and belief, all Defendants deliberately misrepresented
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`material facts to the PTO by affirming that Thin Fit Line had exclusive rights to use the
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`COMPLAINT – 12
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.13 Page 13 of 27
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`Infringing Marks – both of which include Plaintiff’s identical NIGHTSHIFT Mark (with
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`the addition of an insignificant space). At minimum, Defendants Dunn and McBride
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`operated with reckless disregard and willful blindness to the multiple notices of Proccor’s
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`prior rights in the mark.
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`28.
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`In
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`contravention
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`to
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`37
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`C.F.R.
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`§§2.2(n), 2.20, 2.33, 2.76(b)(1), 2.88(b)(1), 2.193(e)(1) and TMEP
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`§§
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`804.01, 1104.08, 1109.06., Defendants falsely represented that they had sole rights to the
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`Infringing Marks. Yet they did not, and they do not. Despite being placed on notice of
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`Proccor’s prior rights, all Defendants intentionally attempted to deceive the PTO into
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`finding that Thin Fit Line has superior rights to the Infringing Marks.
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`29.
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`Because of Defendants’ misrepresentations to the PTO, Plaintiff has been
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`harmed due to the PTO’s suspension of Plaintiff’s own application to register the Mark.
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`Plaintiff has been harmed because it has incurred additional expense and attorney’s fees
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`in its ongoing attempts to get Defendants to cease their illegal activities.
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`30. On April 25, 2021, Plaintiff filed an application with the PTO to register the
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`Mark NIGHTSHIFT in connection with “dietary supplements” (U.S. Serial No. 90669991).
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`31. On November 16, 2021, PROCCOR sent another cease-and-desist letter to
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`Thin Fit Line’s trademark counsel seeking to resolve the dispute before full-blown
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`litigation ensued. See Exhibit 2 (Cease and Desist Letter with attachments A through I).
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`COMPLAINT – 13
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.14 Page 14 of 27
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`32. A summary of the pertinent TTAB opposition proceedings initiated by
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`PROCCOR against THIN FIT LINE is reproduced in the chart below:
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`Proceeding No. Mark
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`App. Ser. No. Date Filed
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`91273777
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`THINLINE
`ANTHEM
`NIGHT SHIFT
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`88761168
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`01/03/2022
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`91273775
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`NIGHT SHIFT
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`88761162
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`01/03/2022
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`88761168
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`THINLINE
`ANTHEM
`NIGHT SHIFT
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`88761168
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`11/16/2021
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`88761162
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`NIGHT SHIFT
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`88761162
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`11/16/2021
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`33. On December 22, 2021, the PTO sent Plaintiff a letter suspending Plaintiff’s
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`application to register the NIGHTSHIFT Mark. The stated reason was that Defendants
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`had previously filed their application to register the Infringing NIGHT SHIFT Mark. This
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`suspension has also harmed PROCCOR in its efforts to protect its own brand.
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`34.
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`Since August 2021, Defendants have offered their competing products
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`bearing the Infringing Marks on Amazon.com, on the THIN FIT LINE website, and on
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`information and belief, other online channels and brick and mortar stores.
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`35. Defendants’ actions have caused Defendants’ competing products bearing
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`the Infringing Marks to appear alongside Plaintiff’s product on Amazon.com.
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`COMPLAINT – 14
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.15 Page 15 of 27
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`Accordingly, consumers – who see several products prominently featuring the words
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`NIGHT SHIFT – are confused into believing that Defendants’ competing products are
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`sold, endorsed by, or otherwise affiliated with Plaintiff.
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`36. On information and belief, Defendants have also purchased advertisements
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`on Google that cause Defendant’s competing products bearing the Infringing Marks to
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`appear when consumers search for Plaintiff’s products. This also wrongfully and
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`misleadingly diverts sales away from Plaintiff to Defendants.
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`37. Defendants’ products bearing their Infringing Marks are not manufactured
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`by Plaintiff. Nor are Defendants’ products associated, affiliated, or connected with
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`Plaintiff, or licensed, authorized, sponsored, endorsed, or approved by Plaintiff in any
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`way.
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`38.
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`PROCCOR initiated TTAB Opposition proceedings against Thin Fit Line in
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`connection with the Infringing Marks (NIGHT SHIFT, Proceeding No. 91273775, filed on
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`January 3, 2022; and
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`39. On or about May 20, 2022, PROCCOR propounded discovery requests to
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`Thin Fit Line in connection with the TTAB Opp. No. 91273775. On or about June 21, 2022,
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`Thin Fit Line served responses and objections to these interrogatories.
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`40. Despite being placed on notice long before PROCCOR filed any of the
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`opposition proceedings listed above, Defendants falsely stated the first time they heard
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`of PROCCOR’s NIGHTSHIFT mark was when PROCCOR first filed the oppositions. See
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`COMPLAINT – 15
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.16 Page 16 of 27
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`THIN FIT LINE’s Responses and Objections to PROCCOR’S First Set of Interrogatories
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`included as Exhibit 3. See Response to Interrogatory No. 6 reproduced below:
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`41.
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`PROCCOR also served Requests for Document Production, but Thin Fit
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`Line lodged halfhearted wholesale rejections, thereby unfairly inhibiting PROCCOR
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`from attaining relief. See Exhibit 4.
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`42. On information and belief, Defendants’ actions were deliberate and
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`intended to divert Plaintiff’s sales from Plaintiff to Defendants.
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`43. On information and belief, Defendants’ actions have diverted Plaintiff’s
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`sales from Plaintiff to Defendants and caused considerable economic damage to Plaintiff.
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`44.
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`The likelihood of confusion, mistake, and deception engendered by
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`Defendants’ infringement of Plaintiff’s Mark is causing irreparable harm to the goodwill
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`symbolized by the mark and the reputation for quality that it embodies.
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`COMPLAINT – 16
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.17 Page 17 of 27
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`45. Defendants’ activities are likely to cause confusion before, during, and after
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`the time of purchase because purchasers, prospective purchasers, and others viewing
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`Defendants’ products bearing the Infringing Marks are likely — due to Defendants’ use
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`of identical or confusingly marks containing Plaintiff’s senior NIGHTSHIFT Mark in its
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`entirety — to mistakenly believe Plaintiff is the course of Defendants’ competing
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`products. By causing a likelihood of confusion, mistake, and deception, Defendants are
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`inflicting irreparable harm on the goodwill symbolized by Plaintiff’s Mark and the
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`reputation for quality that it embodies.
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`46. Given Defendants’ pattern of obstreperous conduct before the TTAB, and
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`the extent of the damage done to PROCCOR, Plaintiff has been left little choice but to
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`seek relief in federal court, where it can fully protect its brand and seek complete relief.
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`Among other forms of relief, PROCCOR is seeking Defendants’ revenues in at least the
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`amount of $250,000.
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`V. CAUSES OF ACTION
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`FIRST CAUSE OF ACTION
`FEDERAL UNFAIR COMPETITION UNDER 15 U.S.C. § 1125(a)
`(AGAINST ALL DEFENDANTS)
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`47.
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`Plaintiff repeats and incorporates by reference the allegations in the
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`preceding paragraphs 1 – 46.
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`48. Defendants' use of confusingly similar imitations of Plaintiff's Mark has
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`caused and is likely to cause confusion, deception, and mistake by creating the false
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`COMPLAINT – 17
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.18 Page 18 of 27
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`and misleading impression that Defendants' goods are manufactured or distributed
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`by Plaintiff, or are affiliated, connected, or associated with Plaintiff, or have the
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`sponsorship, endorsement, or approval of Plaintiff.
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`49. Defendants have made false representations, false descriptions, and
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`false designations of, on, or in connection with their goods in violation of 15 U.S.C. §
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`1125(a). Defendants' activities have caused and, unless enjoined by this Court, will
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`continue to cause a likelihood of confusion and deception of members of the trade
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`and public, and, additionally, injury to Plaintiff's goodwill and reputation as
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`symbolized by Plaintiff's Mark, for which Plaintiff has no adequate remedy at law.
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`50. Defendants' actions demonstrate an intentional, willful, and malicious
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`intent to trade on the goodwill associated with Plaintiff's Mark to the great and
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`irreparable injury of Plaintiff.
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`51. Defendants' conduct has caused, and is likely to continue causing,
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`substantial injury to the public and to Plaintiff. Plaintiff is entitled to injunctive relief
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`and to recover Defendants' profits, actual damages, enhanced profits and damages,
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`costs, and reasonable attorneys’ fees under 15 U.S.C. §§ 1125(a), 1116, and 1117.
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`SECOND CAUSE OF ACTION
`FEDERAL TRADEMARK DILUTION UNDER 15 U.S.C. § 1125(c)
`(AGAINST ALL DEFENDANTS)
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`52.
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`Plaintiff repeats and incorporates by reference the allegations in the
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`preceding paragraphs 1 – 51.
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`COMPLAINT – 18
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.19 Page 19 of 27
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`53.
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`For years, Plaintiff has exclusively and continuously promoted and
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`used the Mark, both in the United States and throughout the world. The Mark
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`became a famous and well-known symbol of Plaintiff and Plaintiff's products well
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`before Defendants began using the Infringing Marks.
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`54. Defendants are making use in commerce of the Infringing Marks, which
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`dilutes and are likely to dilute the distinctiveness of Plaintiff's Mark by eroding the
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`public’s exclusive identification of this famous mark with Plaintiff, tarnishing and
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`degrading the positive associations and prestigious connotations of the mark, and
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`otherwise lessening the capacity of the mark to identify and distinguish Plaintiff's
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`goods.
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`55. Defendant's actions demonstrate an intentional, willful, and malicious
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`intent to trade on the goodwill associated with Plaintiff's Mark or to cause dilution
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`of the mark to the great and irreparable injury of Plaintiff.
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`56. Defendants have caused and will continue to cause irreparable injury to
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`Plaintiff's goodwill and business reputation, and dilution of the distinctiveness and
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`value of Plaintiff's famous and distinctive Mark in violation of 15 U.S.C. § 1125(c).
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`Plaintiff therefore is entitled to injunctive relief and to Defendants' profits, actual
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`damages, enhanced profits and damages, and reasonable attorneys’ fees under 15
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`U.S.C. §§ 1125(c), 1116, and 1117.
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`COMPLAINT – 19
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.20 Page 20 of 27
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`THIRD CAUSE OF ACTION
`UNFAIR AND DECEPTIVE TRADE PRACTICES
`(AGAINST ALL DEFENDANTS)
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`57.
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`Plaintiff repeats and incorporates by reference the allegations in the
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`preceding paragraphs 1 – 56.
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`58. Defendants have been and are passing off their goods as those of
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`Plaintiff, causing a likelihood of confusion or misunderstanding as to the source,
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`sponsorship, or approval of Defendants' goods, causing a likelihood of confusion as
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`to Defendants' affiliation, connection, or association with Plaintiff, and otherwise
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`damaging the public.
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`59. Defendants' conduct constitutes unfair and deceptive acts or practices
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`in the course of trade or commerce in violation of Washington’s Consumer Protection
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`Act, Wash. Rev. Code Ann. § 19.86.010 et seq.
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`60. Defendants’ unauthorized use of confusingly similar imitations of
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`Plaintiff's Mark has caused and is likely to cause substantial injury to the public and
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`to Plaintiff. Plaintiff, therefore, is entitled to injunctive relief and to recover damages
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`and, if appropriate, punitive damages, costs, and reasonable attorneys’ fees.
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`FOURTH CAUSE OF ACTION
`COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`(AGAINST ALL DEFENDANTS)
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`COMPLAINT – 20
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.21 Page 21 of 27
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`61.
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`Plaintiff repeats and incorporates by reference the allegations in the
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`preceding paragraphs 1 – 60.
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`62. Defendants' acts constitute common law trademark infringement and
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`unfair competition, and have created and will continue to create, unless restrained
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`by this Court, a likelihood of confusion to the irreparable injury of Plaintiff. Plaintiff
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`has no adequate remedy at law for this injury.
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`63. On information and belief, Defendants acted with full knowledge of
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`Plaintiff's use of, and statutory and common law rights to, Plaintiff's Mark and
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`without regard to the likelihood of confusion of the public created by Defendants'
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`activities.
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`64. Defendants' actions demonstrate an intentional, willful, and malicious
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`intent to trade on the goodwill associated with Plaintiff's Mark to the great and
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`irreparable injury of Plaintiff.
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`65. As a result of Defendants' acts, Plaintiff has been damaged in an amount
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`not yet determined or ascertainable. At a minimum, however, Plaintiff is entitled to
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`injunctive relief, and to an accounting of Defendants' profits, damages, and costs.
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`Further, in light of the deliberate and malicious use of confusingly similar imitations
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`of Plaintiff's Mark, and the need to deter Defendants from engaging in similar
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`conduct in the future, Plaintiff additionally is entitled to punitive damages.
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`COMPLAINT – 21
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.22 Page 22 of 27
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`FIFTH CAUSE OF ACTION
`STATE TRADEMARK DILUTION AND INJURY TO BUSINESS REPUTATION
`(AGAINST ALL DEFENDANTS)
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`66.
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`Plaintiff repeats and incorporates by reference the allegations in the
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`preceding paragraphs 1 – 65.
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`67.
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`Plaintiff has extensively and continuously promoted and used the
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`throughout the United States, and the Mark became a distinctive, famous, and well-
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`known symbol of Plaintiff's goods well before Defendants began using the Infringing
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`Marks.
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`68. Defendants’ conduct dilutes and is likely to dilute the distinctiveness of
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`Plaintiff's Mark by eroding the public’s exclusive identification of this mark with
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`Plaintiff, and tarnishing and degrading the positive associations and prestigious
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`connotations of the mark, and otherwise lessening the capacity of the mark to identify
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`and distinguish Plaintiff’s goods.
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`69. Defendants are causing and will continue to cause irreparable injury to
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`Plaintiff's goodwill and business reputation and dilution of the distinctiveness and
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`value of Plaintiff's famous and distinctive mark in violation of the Washington anti-
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`dilution statute, Wash. Rev. Code Ann. § 19.77.160.
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`70.
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`Plaintiff, therefore, is entitled to injunctive relief, damages, and costs, as
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`well as, if appropriate, enhanced damages, punitive damages, and reasonable
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`attorneys’ fees.
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`COMPLAINT – 22
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.23 Page 23 of 27
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`SIXTH CAUSE OF ACTION
`FRAUDULENT TRADEMARK REGISTRATION UNDER 15 U.S.C. § 1120
`(AGAINST DEFENDANTS DUNN AND MCBRIDE)
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`71.
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`Plaintiff repeats and incorporates by reference the allegations in the
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`preceding paragraphs 1 – 70.
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`72. Defendants Dunn
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`and McBride,
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`through
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`their
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`fraudulent
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`misrepresentations to the PTO as described above, convinced the PTO to approve the
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`Infringing Marks NIGHT SHIFT and THINLINE ANTHEM NIGHT SHIFT for
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`registration on October 27, 2021, by issuing Notices of Publication for both Infringing
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`Mark, despite Plaintiff’s senior rights in and to the NIGHTSHIFT Mark.
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`73. Defendants’ fraudulent misrepresentations to the PTO caused harm to
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`Plaintiff by convincing the PTO to suspend action on Plaintiff’s application to register
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`its senior Mark.
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`74. Defendant's actions demonstrate an intentional, willful, and malicious
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`intent to trade on the goodwill associated with Plaintiff's Mark or to cause dilution
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`of the mark to the great and irreparable injury of Plaintiff.
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`75. Defendants have caused and will continue to cause irreparable injury to
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`Plaintiff's goodwill and business reputation, and dilution of the distinctiveness and
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`value of Plaintiff's famous and distinctive Mark in violation of 15 U.S.C. § 1125(c).
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`Plaintiff therefore is entitled to injunctive relief and to Defendants' profits, actual
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`COMPLAINT – 23
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`Case 2:22-cv-00210 ECF No. 1 filed 09/21/22 PageID.24 Page 24 of 27
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`damages, enhanced profits and damages, and reasonable attorneys’ fees under 15
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`U.S.C. §§ 1125(c), 1116, and 1117.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays that:
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`A. Defendants and all of their agents, officers, employees, representatives,
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`successors, assigns, attorneys, and all other persons acting for, with, by, through
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`or under authority from Defendants, or in concert or participation with
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`Defendants, and each of them, be enjoined from:
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`a. advertising, marketing, promoting, offering for sale, distributing, or
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`selling products bearing the Infringing Marks;
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`b. using the Infringing Marks on or in connection with any of Defendants'
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`products;
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`c. using the Mark or any other copy, reproduction, colorable imitation, or
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`simulation of Plaintiff's Mark on or in connection with Defendants' goods;
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`d. using any trademark, name, logo, design, or source designation of any
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`kind on or in connection with Defendants' goods or services that is a copy,
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`repr
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