Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1301827
`08/04/2023
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91284592
`
`Party
`
`Correspondence
`address
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Sweet James, LLP
`
`WENDY C. LARSON
`PIRKEY BARBER PLLC
`1801 EAST 6TH STREET
`SUITE 300
`AUSTIN, TX 78702
`UNITED STATES
`Primary email: tmcentral@pirkeybarber.com
`Secondary email(s): wlarson@pirkeybarber.com, akuhn@pirkeybarber.com,
`drausa@pirkeybarber.com
`512-322-5200
`
`Motion to Suspend for Civil Action
`
`Brandon M. Ress
`
`tmcentral@pirkeybarber.com, wlarson@pirkeybarber.com, ak-
`uhn@pirkeybarber.com, drausa@pirkeybarber.com, bress@pirkeybarber.com
`
`/Brandon M. Ress/
`
`08/04/2023
`
`Applicants Motion to Suspend Pending Determination of a Related Civil Ac-
`tion.pdf(541671 bytes )
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In Re Serial No. 97/127,146
`Filed: November 16, 2021
`Mark: SWEET JUSTICE
`Published: April 4, 2023
`
`SWEET JUSTICE, P.C.,
`
`
`
`v.
`
`SWEET JAMES LLP,
`
`
`
`
`
`Applicant.
`
`
`
`Opposer,
`
`§
`§
`§
`§
`§
`§
`§ Opposition No. 91284592
`§
`§
`§
`§
`§
`§
`§
`§
`
`APPLICANT’S MOTION TO SUSPEND
`PENDING DETERMINATION OF A RELATED CIVIL ACTION
`
`
`
`Under Trademark Rule 2.117(a) and TBMP § 510.02(a), Applicant Sweet
`
`James LLP (“Applicant”) moves to suspend this proceeding pending final
`
`determination of a closely related civil action between Applicant and Opposer, Sweet
`
`Justice, P.C. (“Opposer”), Sweet James LLP v. Sweet James, P.C. and Rafael
`
`Contreras Sweet, Case No. 8:23-cv-1415, in the U.S. District Court for the Central
`
`District of California (the “California District Litigation”). As explained below, the
`
`claims and issues in the California District Lawsuit bear directly on this proceeding.
`
`I.
`
`Background
`
`Opposer opposed Applicant’s application to register the mark SWEET
`
`JUSTICE claiming priority and likelihood of confusion, which is the subject of this
`
`Opposition proceeding.
`
`
`
`1
`
`

`

`On August 4, 2023, Applicant filed a complaint initiating the California
`
`District Lawsuit. Exhibit A to this motion contains a copy of the as-filed complaint.
`
`In the litigation, Applicant alleges Opposer’s use of SWEET JUSTICE infringes
`
`Applicant’s prior rights in the marks SWEET JAMES, JUSTICE WITH SWEET
`
`JAMES, SWEET JUSTICE, and other SWEET-formative marks (the “SWEET
`
`Marks”) among other related claims. Applicant seeks a variety of remedies, including
`
`a determination by the Court that Opposer is not entitled to registration of the mark
`
`SWEET JUSTICE and order refusing registration of the mark SWEET JUSTICE by
`
`Opposer.
`
`II.
`
`The Board should suspend this proceeding until final resolution of the
`California District Litigation.
`
`The Board may suspend proceedings when “a party or parties to a case pending
`
`before it are involved in a civil action that may have a bearing on the Board case.”
`
`TBMP § 510.02(a); accord Trademark Rule 2.117(a) (allowing suspension whenever
`
`“a civil action . . . may have a bearing on a pending [Board] case”). “Unless there are
`
`unusual circumstances, the Board will suspend proceedings in the case before it if the
`
`final determination of the other proceeding may have a bearing on the issues before
`
`the Board.” TBMP 510.02(a). Because a civil action may consider broader issues
`
`beyond right to registration, “judicial economy is usually served by suspension.” Id.
`
`For that reason, the Board’s “policy [is] to suspend in favor of a civil action.” Id.; see
`
`also New Orleans La. Saints LLC v. Who Dat? Inc., 99 USPQ2d 1550, 1552 (TTAB
`
`2011) (noting this Board policy and granting suspension).
`
`
`
`2
`
`

`

`Here, the California District Lawsuit involves the same parties and there is
`
`substantial overlap in the operative facts at issue in this proceeding, with very closely
`
`related legal claims as they relate to Applicant’s prior rights in the SWEET Marks,
`
`and Opposer’s infringement of Applicant’s SWEET Marks through use of the mark
`
`SWEET JUSTICE, and Opposer’s lack of entitlement to registration of the mark
`
`SWEET JUSTICE.
`
`At the same time, the California District Lawsuit will also involve related
`
`issues beyond simply the right to registration that is the subject of this Opposition.
`
`See TBMP 510.02(a). Specifically, in the District Court action Applicant has asked
`
`the District Court to enjoin Opposer’s use of the mark SWEET JUSTICE, award an
`
`accounting of profits and actual damages as a result of Opposer’s use of the mark
`
`SWEET JUSTICE, among other remedies.
`
`Because Applicant has raised issues in the litigation beyond just the right to
`
`registration, judicial economy is best served by suspension. See TBMP 510.02(a).
`
`CONCLUSION
`
`
`
`The California District Lawsuit is closely related to this proceeding and will be
`
`potentially dispositive of the claims and issues here. Thus, this proceeding should be
`
`suspended until final determination of the California District Lawsuit.
`
`
`
`
`
`3
`
`

`

`DATED: August 4, 2023
`
`
`
`Respectfully submitted,
`
`/Brandon M. Ress/
`Wendy C. Larson
`Brandon M. Ress
`PIRKEY BARBER PLLC
`1801 East 6th Street, Suite 300
`Austin, TX 78702
`(512) 322-5200
`(512) 322-5201 (fax)
`wlarson@pirkeybarber.com
`
`Counsel for Applicant
`
`
`
`4
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Applicant’s Motion
`
`to Suspend Pending Determination of a Related Civil Action has been served on
`
`Opposer’s counsel of record by sending it via e-mail at the addresses below, today,
`
`August 4, 2023, as follows:
`
`Erik Ceja, Esq.
`THE CEJA FIRM
`13536 Lakewood Blvd., No. 158
`Bellflower, CA 90706
`erik@cejafirm.com
`wsp@njpls.com
`
`
`
`
`
`
`
`
`/Brandon M. Ress/
`
`
`
`
`5
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 1 of 27 Page ID #:1
`
`Ronald P. Oines (State Bar No. 145016)
`roines@rutan.com
`RUTAN & TUCKER, LLP
`18575 Jamboree Road, 9th Floor
`Irvine, California 92612
`Telephone: 714.641.5100
`Facsimile: 714.546.9035
`
`Wendy C. Larson
`California Bar No. 235037
`E-mail: wlarson@pirkeybarber.com
`Brandon M. Ress (Pro Hac Vice application
`forthcoming)
`E-mail: bress@pirkeybarber.com
`PIRKEY BARBER PLLC
`1801 East 6th Street, Suite 300
`Austin, Texas 78702
`Telephone: 512.322.5200
`Facsimile: 512.322-5201
`
`Attorneys for Plaintiff,
`Sweet James, LLP
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
`
`SWEET JAMES LLP,
`
`Plaintiff,
`
`vs.
`
`SWEET JUSTICE, P.C., and RAFAEL
`CONTRERAS SWEET,
`
`Defendants.
`
`Case No.
`
`8:23-cv-1415
`
`COMPLAINT FOR FEDERAL
`TRADEMARK INFRINGEMENT,
`UNFAIR COMPETITION,
`REFUSAL OF REGISTRATION,
`AND RELATED STATE LAW
`CLAIMS
`
`DEMAND FOR JURY TRIAL
`
`1
`
`COMPLAINT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 2 of 27 Page ID #:2
`
`
`
`Plaintiff SWEET JAMES LLP (“Plaintiff”), for its Complaint against
`
`Defendants SWEET JUSTICE, P.C. and RAFAEL CONTRERAS SWEET
`(collectively, “Defendant”), alleges as follows:
`
`JURISDICTION AND VENUE
`
`1.
`This is an action for Trademark Infringement and Unfair Competition
`under the Trademark Act of 1946, as amended, 15 U.S.C. 1051 et seq. (“Lanham
`Act”), for Refusal of Registration pursuant to 15 U.S.C. §1119 and 28 U.S.C. §2201,
`
`and for Unfair Competition, Trademark Dilution, and Unjust Enrichment under
`
`California law.
`
`2.
`
`This Court has jurisdiction over the subject matter of this action
`
`pursuant to Section 39 of the Lanham Act, 15 U.S.C. § 1121, and Chapter 85 of the
`
`Judiciary and Judicial Procedure Code, 28 U.S.C. §§ 1331 and 1338, and has
`
`supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367(a).
`
`3.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C.
`
`§1391(b)(1) and (2) because the Defendants reside in this judicial district, a
`
`substantial part of the events or omissions giving rise to the claims herein occurred
`
`within this judicial district, and a substantial part of the property that is the subject of
`
`the action is located in this judicial district.
`
`THE PARTIES
`
`4.
`
`Plaintiff Sweet James LLP is a California limited liability partnership
`
`licensed to do business in the State of California with its principal place of business
`
`in Newport Beach, California.
`
`5.
`
`On information and belief, Defendant Sweet Justice, P.C. is a
`
`professional corporation licensed to do business in the State of California with its
`
`principal place of business located at 10153 ½ Riverside Dr., Suite 358, Toluca
`
`Lake, California.
`
`6.
`
`On information and belief, Defendant Rafael Contreras Sweet is an
`
`individual residing in Los Angeles County, California who is a director and
`2
`
`
`
`
`
`
`
`COMPLAINT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 3 of 27 Page ID #:3
`
`
`
`shareholder of Sweet Justice, P.C. Sweet Justice, P.C. and Mr. Sweet are collectively
`referenced herein as “Defendant.”
`
`I.
`
`Plaintiff and its SWEET Marks
`
`FACTS
`
`7.
`
`Plaintiff is one of the leading personal injury law firms in Southern
`
`California.
`
`8.
`Through its founder and managing partner, James Bergener
`(“Bergener”), Plaintiff has branded and promoted itself with the SWEET JAMES
`
`trademark since as early as 2011, and with other SWEET formative marks since as
`
`early as 2014.
`
`9.
`
`Plaintiff owns the registered trademarks SWEET JAMES and JUSTICE
`
`WITH SWEET JAMES, as well as common law rights in these and other SWEET-
`formative marks, including SWEET JUSTICE (collectively, the “SWEET Marks”),
`
`and uses these marks in connection with its legal services.
`
`10. Plaintiff actively promotes the SWEET Marks. For several years,
`
`Bergener has appeared on Southern California radio stations promoting the SWEET
`
`Marks, including a segment on KIIS, KLOS, KROQ, KFYI, KCAL, KLAC. Plaintiff
`
`advertises with the SWEET Marks on radio, television, sports teams, and on
`
`billboards in California, Nevada, and Arizona. Plaintiff advertises with the SWEET
`
`Marks through social media. Plaintiff engages in sponsorship deals, such that it has
`been designated as an official partner of The Phoenix Suns, as well as a the “official
`attorney” of the Los Angeles Clippers. Since 2012, Plaintiff has spent millions of
`
`dollars promoting its SWEET Marks.
`
`11. While other personal injury firm advertising may use aggressive
`messaging and trademarks, Plaintiff’s SWEET Marks are highly distinctive and
`
`stand out due to the unique, incongruous nature of the meaning of the word
`“SWEET” in this context.
`
`
`
`
`
`3
`
`COMPLAINT
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 4 of 27 Page ID #:4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`12. Plaintiff’s promotion of its SWEET Marks has been highly successful.
`
`Since Plaintiff began using its SWEET Marks, its revenues have substantially
`
`increased. The SWEET Marks have been so successful they have allowed Plaintiff
`
`to enter into lucrative referral agreements with prominent personal injury attorneys
`
`throughout the United States who recognize the value and strength of the SWEET
`
`Marks and brand.
`
`13. Based on the foregoing, consumers associate the SWEET Marks
`
`uniquely with Plaintiff in connection with legal services.
`
`14.
`
`In addition to its extensive common law rights, Plaintiff has obtained
`
`federal trademark registrations for certain of its SWEET Marks, including: (i) U.S.
`Trademark Reg. No. 4,723,659 for the mark SWEET JAMES for “Legal services”;
`
`and (ii) U.S. Trademark Reg. No. 5,517,761 for the mark JUSTICE WITH SWEET
`JAMES for “Entertainment services, namely, providing an ongoing radio program in
`the field of law and current events.” True and correct print-outs of Plaintiff’s
`
`registration certificates for the aforementioned marks are attached hereto as Exhibits
`
`1 and 2. Each of the foregoing registrations is valid, in effect, and registered on the
`
`Principal Trademark Register of the United States Patent & Trademark Office
`(“USPTO”). Additionally, Plaintiff has a pending application for SWEET JUSTICE
`for legal services (Application Ser. No. 97127146) (“Plaintiff’s Application”),
`
`attached as Exhibit 3.
`II. Defendant’s Activities
`15.
`
` On information and belief, Defendant offers personal injury law firm
`
`services in Southern California.
`
`16. On information and belief, Defendant Rafael Contreras Sweet directs,
`
`controls, ratifies, participates in, and/or is the moving force behind the activities
`
`complained of herein.
`
`17. On information and belief, Defendant commenced using SWEET
`
`JUSTICE almost ten years after Plaintiff adopted the SWEET JAMES trademark,
`4
`
`
`
`
`
`
`
`COMPLAINT
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 5 of 27 Page ID #:5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`and after Plaintiff commenced use of all of its SWEET Marks, including Plaintiff’s
`
`identical mark, SWEET JUSTICE.
`
`18. On information and belief, Defendant was well aware of Plaintiff and
`
`its famous SWEET Marks in the Southern California region when it adopted its
`
`SWEET JUSTICE mark.
`
`19. On information and belief, Defendant knowingly adopted a name
`confusingly similar to Plaintiff’s SWEET Marks for its legal practice.
`20. Defendant Sweet Justice, P.C. filed a trademark application with the
`USPTO to register SWEET JUSTICE for “legal services; litigation services”
`(“Defendant’s Application”). When Defendant’s Application was refused by the
`USPTO based on Plaintiff’s pending Application, Defendant Sweet Justice P.C.
`opposed Plaintiff’s Application at the Trademark Trial and Appeal Board at the
`
`USPTO (Opposition No. 91284592). That opposition is currently pending.
`III. Effect of Defendant’s Activities
`21. Defendant’s unauthorized use of the mark SWEET JUSTICE is likely
`
`to cause confusion, to cause mistake, and/or to deceive consumers and potential
`
`consumers of the parties, at least as to some affiliation, connection, or association of
`Defendant with Plaintiff, or as to the approval of Defendant’s services by Plaintiff.
`22. Defendant’s unauthorized use of SWEET JUSTICE removes from
`
`Plaintiff the ability to control the nature and quality of the services provided under
`
`the mark, and places the valuable reputation and goodwill of Plaintiff in the hands of
`
`Defendant, over whom Plaintiff has no control. The potential harm is heightened
`
`here, given that the parties are in overlapping geographic regions, offering the same
`
`type of legal representation (personal injury representation), and attorneys practicing
`
`personal injury law often work across law firms in a referral network context.
`23. Defendant’s unauthorized use of SWEET JUSTICE falsely designates
`
`the origin of its services, and falsely and misleadingly describes and represents facts
`
`with respect to Defendant and its services.
`5
`
`
`
`
`
`
`
`COMPLAINT
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 6 of 27 Page ID #:6
`
`
`
`24. Defendant’s unauthorized use of SWEET JUSTICE enables Defendant
`
`to trade on and receive the benefit of goodwill build up at great labor and expense by
`
`Plaintiff over many years, and to gain acceptance for its services not solely on its
`
`own merits, but on the reputation and goodwill of Plaintiff, its SWEET Marks, and
`
`its services.
`25. Defendant’s unauthorized use of SWEET JUSTICE is likely to dilute
`Plaintiff’s famous SWEET JAMES mark in California.
`26. Defendant’s unauthorized use of SWEET JUSTICE unjustly enriches
`Defendant at Plaintiff’s expense. Defendant has been and continues to be unjustly
`
`enriched by obtaining a benefit from Plaintiff by taking undue advantage of Plaintiff
`
`and its goodwill. Specifically, Defendant has traded and profited from the goodwill
`
`in the SWEET Marks developed and owned by Plaintiff, resulting in Defendant
`
`wrongfully obtaining a monetary and reputational benefit for its own services.
`
`27. Unless these acts of Defendant are restrained by this Court, they will
`
`continue, and will continue to cause irreparable injury to Plaintiff and to the public
`
`for which there is no adequate remedy at law.
`
`CLAIMS FOR RELIEF
`
`FIRST CLAIM FOR RELIEF
`
`(Trademark Infringement Under the Lanham Act, 15 U.S.C. §§ 1114, 1117)
`
`28. Plaintiff repeats and incorporates by reference the foregoing statements
`
`and allegations as though set forth fully herein.
`
`29. The acts of Defendant complained of herein constitute service mark
`infringement of Plaintiff’s federally registered marks SWEET JAMES and JUSTICE
`WITH SWEET JAMES in violation of 15 U.S.C. §1114(1). Defendant’s use of
`
`SWEET JUSTICE is likely to cause confusion, or to cause mistake, or to deceive. In
`
`particular, actual or potential clients and others are likely to be confused as to
`
`whether Defendant is affiliated with, connected to, or associated with Plaintiff, or
`whether Plaintiff sponsors or approves Defendant’s services.
`6
`
`
`
`
`
`
`
`COMPLAINT
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 7 of 27 Page ID #:7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`30. Defendant’s acts have caused and will cause significant damages,
`including Plaintiff’s lost sales and Defendant’s wrongful profits in an amount to be
`determined, and irreparable harm to Plaintiff. Moreover, Defendant’s conduct has
`
`caused and unless enjoined by this Court will continue to cause significant harm to
`Plaintiff’s reputation and goodwill which Plaintiff has established through years of
`
`effort and expense, for which irreparable injury Plaintiff has no adequate remedy at
`
`law.
`
`31. Defendant’s conduct has been willful with full knowledge of Plaintiff’s
`
`trademark rights. Defendant will continue such willful and intentional conduct
`unless enjoined by this Court. In light of the willful nature of Defendant’s conduct,
`this is an “exceptional” case under the Lanham Act, which entitles Plaintiff to its
`attorneys’ fees in this action and enhanced damages.
`
`SECOND CLAIM FOR RELIEF
`
`(Unfair Competition, False Designation of Origin - 15 U.S.C. § 1125(a))
`
`32. Plaintiff repeats and incorporates by reference the foregoing statements
`
`and allegations as though set forth fully herein.
`33. Upon information and belief, Defendant’s acts and conduct complained
`
`of herein constitute unfair competition, false endorsement, false association, and/or
`false designation of origin in violation of 15 U.S.C. § 1125(a). Defendant’s use of
`
`SWEET JUSTICE is likely to cause confusion, or to cause mistake, or to deceive as to
`
`the affiliation, connection, or association between Plaintiff and Defendant, and as to
`the origin, sponsorship or approval of Defendant’s goods or services. In particular,
`
`actual or potential clients and others are likely to be confused as to whether Defendant
`
`is affiliated with, connected to, or associated with Plaintiff, or whether Plaintiff
`sponsors or approves Defendant’s services.
`34. Defendant’s acts have caused and will cause significant damages,
`including Plaintiff’s lost sales and Defendant’s wrongful profits in an amount to be
`determined, and irreparable harm to Plaintiff. Moreover, Defendant’s conduct has
`7
`
`
`
`
`
`
`
`COMPLAINT
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 8 of 27 Page ID #:8
`
`
`
`caused and unless enjoined by this Court will continue to cause significant harm to
`Plaintiff’s reputation and goodwill which Plaintiff has established through years of
`
`effort and expense, for which irreparable injury Plaintiff has no adequate remedy at
`
`law.
`
`35. Defendant’s conduct has been willful with full knowledge of Plaintiff’s
`
`trademark rights. Defendant will continue such willful and intentional conduct unless
`enjoined by this Court. In light of the willful nature of Defendant’s conduct, this is an
`“exceptional” case under the Lanham Act, which entitles Plaintiff to its attorneys’ fees
`
`in this action and enhanced damages.
`
`THIRD CLAIM FOR RELIEF
`
`(Trademark Dilution Under Cal. Bus. & Prof. Code § 14247)
`
`36. Plaintiff repeats and incorporates by reference the foregoing statements
`
`and allegations as though set forth fully herein.
`
`37. The SWEET JAMES trademark is famous and widely recognized by the
`
`general consuming public of California, or a geographic area of California. The
`
`SWEET JAMES trademark was famous before and at the time Defendant began using
`
`the SWEET JUSTICE name and trademark in connection with legal services.
`38. Defendant’s use of the SWEET JUSTICE name and mark in connection
`
`with legal services is likely to dilute the distinctive quality of the famous SWEET
`
`JAMES trademark, such that the value of the famous SWEET JAMES trademark will
`
`be whittled away.
`39. Defendant’s acts and conduct complained of herein demonstrate willful
`
`intent to dilute the famous SWEET JAMES trademark.
`40. Defendant’s acts and conduct complained of herein constitute trademark
`
`dilution in violation of Cal. Bus. & Prof. Code § 14247.
`
`
`
`
`
`
`
`
`
`
`
`8
`
`COMPLAINT
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 9 of 27 Page ID #:9
`
`
`
`FOURTH CLAIM FOR RELIEF
`
`(Unfair Competition Under Cal. Bus. & Prof. Code § 17200 et seq.)
`
`41. Plaintiff repeats and incorporates by reference the foregoing statements
`
`and allegations as though set forth fully herein.
`42. Defendant’s acts alleged herein constitute unfair, unlawful, and
`
`fraudulent business acts and practices under California Business & Professions Code §
`
`17200, et seq., because such acts are forbidden by various state and federal laws and
`are unscrupulous, unfair, and injurious to Plaintiff. Defendant’s acts have irreparably
`
`damaged Plaintiff and the consuming public and will continue to do so unless
`restrained by this Court. Defendant’s acts have caused damage to Plaintiff, including
`
`incidental and general damages, lost profits, and out-of-pocket expenses. Defendant
`
`should therefore be required to disgorge and restore to Plaintiff all profits and other
`
`expenses as may be incurred by Plaintiffs.
`
`FIFTH CLAIM FOR RELIEF
`
`(Common Law Unfair Competition)
`
`43.
`
` Plaintiff repeats and incorporates by reference the statements and
`
`allegations in the preceding paragraphs of the Complaint as though set forth fully
`
`herein.
`
` Defendant’s acts and conduct complained of herein constitute unfair
`44.
`competition in violation of California common law. Defendant’s acts have caused and
`will cause significant damages, including Plaintiff’s lost sales and Defendant’s
`
`wrongful profits in an amount to be determined, and irreparable harm to Plaintiff.
`Moreover, Defendant’s conduct has caused and unless enjoined by this Court will
`continue to cause significant harm to Plaintiff’s reputation and goodwill which
`
`Plaintiff has established through years of effort and expense, for which irreparable
`
`injury Plaintiff has no adequate remedy at law.
`45. Defendant’s conduct was done with a conscious disregard of the rights
`
`
`
`
`
`9
`
`COMPLAINT
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 10 of 27 Page ID #:10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`of Plaintiff and with the intent to vex, injure, or annoy such as to constitute
`
`oppression, fraud, or malice under California Civil Code section 3294 and/or the
`
`common law of California, entitling Plaintiff to punitive damages in an amount
`
`appropriate to punish or set an example of Defendant.
`
`SIXTH CLAIM FOR RELIEF
`
`(Refusal of Registration)
`
`46. Plaintiff repeats and incorporates by reference the statements and
`
`allegations in the preceding paragraphs of the Complaint as though set forth fully
`
`herein.
`
`47. This Court has the power under 15 U.S.C. §1119 and 28 U.S.C. §2201 to
`determine Defendant’s right to registration of the mark SWEET JUSTICE.
`48. The mark SWEET JUSTICE so resembles Plaintiffs SWEET Marks,
`including Plaintiff’s SWEET JUSTICE mark, as to be likely to cause confusion, or to
`cause mistake, or to deceive. Defendant’s Application should therefore be refused for
`
`registration under 15 U.S.C. §1052(d).
`
`49. Plaintiff petitions the Court to order the USPTO to refuse registration of
`Defendant’s Application pursuant to 15 U.S.C. §1119 and 28 U.S.C. §2201.
`
`PRAYER FOR RELIEF
`WHEREFORE, based on Defendant’s conduct complained of herein, Plaintiff
`
`asks this Court for the following relief against Defendant:
`
`A. Defendant, its officers, agents, servants, employees, and attorneys,
`
`and other persons who are in active participation with any of them, be permanently
`
`enjoined and restrained from using the mark SWEET JUSTICE, the domain name
`
`sweetjustice.com, and any other mark, name, domain name, social media handle,
`or design that is confusingly similar or likely to cause dilution of Plaintiff’s
`
`SWEET Marks, and from any attempt to retain any part of the goodwill
`
`misappropriated from Plaintiff;
`
`
`
`
`
`10
`
`COMPLAINT
`
`
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 11 of 27 Page ID #:11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`B. Defendant, its officers, agents, servants, employees, and attorneys,
`
`and other persons who are in active participation with any of them, be required to
`
`deliver up and destroy all signage, letterhead, business cards, advertisements,
`
`commercials, internet postings and advertisements, and any other material bearing
`
`or using the SWEET JUSTICE mark, and/or any other mark, name or design that is
`
`confusingly similar or likely to cause dilution of the SWEET Marks;
`
`C. Defendant be ordered to file with this Court and to serve upon
`
`Plaintiff, within thirty days after the entry and service on Defendant of an
`
`injunction, a report in writing and under oath setting forth in detail the manner and
`
`form in which Defendant has complied with the injunction;
`
`D.
`Plaintiff recover all damages it has sustained as a result of
`Defendant’s activities;
`E. An accounting be directed to determine Defendant’s profits resulting
`
`from its activities and such profits be paid over to Plaintiff, increases as the Court
`
`finds to be just under the circumstances of this case;
`
`F.
`The Court determine that Defendant is not entitled to registration of
`Defendant’s Application, and certify and Order pursuant to 15 USC §1119 refusing
`registration of Defendant’s Application to the USPTO Director, who shall make
`
`appropriate entry upon the records of the USPTO and shall be controlled thereby;
`That this case be deemed “exceptional” under the Lanham Act and
`
`G.
`
`that any monetary award be trebled;
`
`H.
`
`I.
`
`J.
`
`Plaintiff recover punitive damages;
`Plaintiff recover its reasonable attorneys’ fees;
`
`Plaintiff recover its costs of the action and prejudgment and post-
`
`judgment interest; and
`
`K.
`
`Plaintiff recover any and all relief the court may deem just and proper.
`
`
`
`
`
`
`
`
`
`
`11
`
`COMPLAINT
`
`
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 12 of 27 Page ID #:12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`
`
`
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff hereby requests a trial by jury for all issues so triable, pursuant to Fed.
`
`R. Civ. P. 38.
`
`
`
`
`Dated: August 4, 2023
`
`RUTAN & TUCKER, LLP
`RONALD P. OINES
`
`
`By:
`
`Ronald P. Oines
`
`
`
`
`PIRKEY BARBER PLLC
`Wendy C. Larson (Bar No. 235037)
`Brandon M. Ress (Pro Hac Vice application
`forthcoming)
`
`Attorneys for Plaintiff Sweet James, LLP
`
`
`
`
`
`
`12
`
`COMPLAINT
`
`
`
`

`

`Case 8:23-cv-01415 Document1 Filed 08/04/23 Page 13o0f 27 Page ID#:13
`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 13 of 27 Page ID #:13
`
`EXHIBIT 1
`EXHIBIT 1
`
`

`

`Case 8:23-cv-01415 Document1 Filed 08/04/23 Page 14o0f27 Page ID#:14
`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 14 of 27 Page ID #:14
`
`qauited States of Amp,
`Antted States Patent and Trademark Office
`
`lly
`
`SWEET JAMES
`
`Reg. No. 4,723,659
`Registered Apr. 21, 2015
`
`Int. Cl.: 45
`
`BERGENER & ASSOCIATES, A PROTESSIONAL CORPORATION (CALIFORNIA
`CORPORATION)
`SUITE 1400
`4675 MACARTHUR COURT
`NEWPORT BEACH, CA 92660
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`FOR: LEGAL SERVICES, IN CLASS 45 (U.S. CLS. 100 AND 101).
`
`FIRST USE 6-0-2011; IN COMMERCE6-0-2011.
`
`THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIMTO ANY PAR-
`TICULAR FONT, STYLE, SIZE, OR COLOR.
`
`SER. NO. 86-393,386, FILED 9-12-2014.
`
`LEIGH CAROLINE CASE, EXAMINING ATTORNEY
`
`
`
`Witvretutt, Ke Lo
`Director of the United States
`Patent and Trademark Office
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 15 of 27 Page ID #:15
`
`Generated on: This page was generated by TSDR on 2023-08-01 15:58:16 EDT
`
`Mark: SWEET JAMES
`
`US Serial Number: 86393386
`
`US Registration
`Number:
`
`4723659
`
`Filed as TEAS
`Plus:
`
`Yes
`
`Register: Principal
`
`Mark Type: Service Mark
`
`TM5 Common Status
`Descriptor:
`
`Application Filing
`Date:
`
`Sep. 12, 2014
`
`Registration Date: Apr. 21, 2015
`
`Currently TEAS
`Plus:
`
`Yes
`
`LIVE/REGISTRATION/Issued and Active
`
`The trademark application has been registered with the Office.
`
`Status: A Section 8 declaration has been accepted.
`
`Status Date: Aug. 14, 2020
`
`Publication Date:Feb. 03, 2015
` 
`
`Mark Information
`
`Mark Literal
`Elements:
`
`SWEET JAMES
`
`Standard Character
`Claim:
`
`Mark Drawing
`Type:
`
`Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`4 - STANDARD CHARACTER MARK
`
`Goods and Services
`
`Note:
`The following symbols indicate that the registrant/owner has amended the goods/services:
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Legal services
`
`International
`Class(es):
`
`045 - Primary Class
`
`Class Status: ACTIVE
`
`Basis: 1(a)
`
`First Use: Jun. 2011
`
`Filed Use: Yes
`
`Filed ITU: No
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`U.S Class(es): 100, 101
`
`Use in Commerce: Jun. 2011
`
`Basis Information (Case Level)
`
`Currently Use: Yes
`
`Currently ITU: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Currently No Basis: No
`
`

`

`Case 8:23-cv-01415 Document 1 Filed 08/04/23 Page 16 of 27 Page ID #:16
`
`Current Owner(s) Information
`
`Owner Name: SWEET JAMES LLP
`
`Owner Address: SUITE 200
`4220 VON KARMAN, SUITE 200
`NEWPORT BEACH, CALIFORNIA UNITED STATES 92660
`
`Legal Entity Type: LIMITED LIABILITY PARTNERSHIP
`
`State or Country
`Where Organized:
`
`CALIFORNIA
`
`Attorney/Correspondence Information
`
`Attorney Name: Anna Kuhn
`
`Docket Number: BERG007US
`
`Attorney of Record
`
`Attorney Primary
`Email Address:
`
`tmcentral@pirkeybarber.com
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Correspondent
`Name/Address:
`
`Anna Kuhn
`Pirkey Barber PLLC
`1801 East 6th Street, Suite 300
`Austin, TEXAS UNITED STATES 78702
`
`Phone: 512-322-5200
`
`Fax: 512-322-5201
`
`Correspondent e-
`mail:
`
`tmcentral@pirkeybarber.com akuhn@pirkeybarbe
`r.com dhund@pirkeybarber.com
`
`Correspondent e-
`mail Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Jul. 20, 2023
`
`TEAS SECTION 15 RECEIVED
`
`May 24, 2021
`
`NOTICE OF SUIT
`
`Apr. 15, 2021
`
`NOTICE OF SUIT
`
`Aug. 14, 2