Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1301116
`08/01/2023
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding no.
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`91285697
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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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`Defendant
`WE-DO-IT PTY LTD
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`ALEXIS CRAWFORD DOUGLAS
`K&L GATES LLP
`P.O. BOX 1135
`CHICAGO, IL 60690-1135
`UNITED STATES
`Primary email: citrademarks@klgates.com
`Secondary email(s): alexis.douglas@klgates.com, sammi.tucker@klgates.com
`312-345-9980
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`Motion to Suspend for Civil Action
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`Alexis Crawford Douglas
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`CITrademarks@klgates.com, TTABLitigationDocket@klgates.com, alex-
`is.douglas@klgates.com, sammi.tucker@klgates.com,
`melissa.mattio@klgates.com
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`/Alexis Crawford Douglas/
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`08/01/2023
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`Opposition No. 91285697 - Applicant_s Motion to Suspend.pdf(119799 bytes )
`Opposition No. 91285697 - Exhibit A.pdf(4521559 bytes )
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`WE-DO-IT, Inc.1,
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`Opposer,
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`v.
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`WE-DO-IT PTY LTD,
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`Applicant.
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`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`Opposition No. 91285697
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`APPLICANT’S MOTION TO SUSPEND
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`Applicant, WE-DO-IT PTY LTD, respectfully requests that this Trademark Trial and Appeal Board
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`(“Board”) proceeding be suspended because there is a civil action pending before the District Court for the
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`District of Delaware that will have a bearing on this proceeding. See Exhibit A, WE-DO-IT PTY LTD
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`Complaint. Both proceedings involve the same parties, relate to the same marks, and concern similar issues
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`of law and fact. In this parallel proceeding at the District Court, WE-DO-IT PTY LTD seeks a declaratory
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`judgment, referencing this very opposition proceeding, declaring that it is the owner of the WE-DO-IT
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`trademark, in addition to alleging trademark infringement, false association, and unfair competition under
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`15 U.S.C. § 1125(a) against Opposer. The district court’s decision would obviate the need for both parties to
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`spend time and money on this proceeding.
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`As a result, Applicant requests that this proceeding be suspended until the District Court for
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`the District of Delaware’s related proceeding is terminated.
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`1 On information and belief, Opposer’s correct entity name is WE-DO-IT INC. with no comma. Applicant left the
`entity name in the caption as it appears in the TTAB record and in Opposer’s application to avoid confusion, but it
`is the same party against whom the District Court action has been filed.
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`DATED this 1st day of August, 2023.
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`Respectfully submitted,
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`By: /s/Alexis Crawford Douglas
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`Attorney for Applicant
`Alexis Crawford Douglas, Esq.
`K&L Gates LLP
`P.O. BOX 1135
`Chicago, Illinois 60690-1135
`312-807-4346
`312-345-9980 (fax)
`TTABlitigationdocket@klgates.com
`alexis.douglas@klgates.com
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the foregoing Applicant’s Motion to Suspend has
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`been served on James F. Landrum Jr, counsel for Opposer, on August 1, 2023, via email at:
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`James F. Landrum Jr.
`Berliner Cohen LLP
`10 Almaden Blvd., 11th Floor
`San Jose, CA 95113
`jay.landrum@berliner.com; benjamin.wohlford@berliner.com
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`By: /s/Alexis Crawford Douglas
`Alexis Crawford Douglas
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`Opposition No. 91285697
` Motion for Suspension
`EXHIBIT A
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`WE-DO-IT PTY LTD.,
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`Plaintiff,
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`C.A. No. ___________
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`v.
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`WE-DO-IT INC.,
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`Defendant.
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`JURY TRIAL DEMANDED
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`Plaintiff we-do-IT Pty Ltd. (“Plaintiff”) files this complaint against Defendant we-do-IT
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`COMPLAINT
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`Inc., (“Defendant”), and in support thereof alleges as follows:
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`INTRODUCTION
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`1.
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`By this action, Plaintiff seeks declaratory, injunctive, and monetary relief arising
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`from Defendant’s willful infringement and unlawful exploitation of Plaintiff’s WE-DO-IT
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`trademark in connection with information technology (“IT”) services.
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`2.
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`The clear intent of Defendant’s activities is to misrepresent that Defendant is
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`associated with or connected to Plaintiff’s long-running and successful IT services business.
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`3.
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`Plaintiff provides various back-office IT services to sophisticated companies in the
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`electric, gas, water, and telecommunications utility space. Since 1995, Plaintiff has provided those
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`services to consumers under the WE-DO-IT trademark. Pertinent to this action, Plaintiff began
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`using the WE-DO-IT trademark in the United States in 2002 and has continued to use the mark in
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`the United States since then either by itself or through its authorized licensees.
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`4.
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`To continue Plaintiff’s prior work in the United States under the WE-DO-IT mark,
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`Plaintiff formed Defendant to serve Plaintiff’s existing U.S. customers and to grow the WE-DO-
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`IT brand in the United States.
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`5.
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`Defendant was formed as a majority-owned subsidiary of Plaintiff and was part of
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`a global we-do-IT family of companies for which we-do-IT Holding Pty Ltd. is the ultimate parent
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`company (the “we-do-IT Group”). Defendant operated in the United States under the WE-DO-IT
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`trademark and brand under express license from Plaintiff with all use of WE-DO-IT by Defendant
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`inuring to the benefit of Plaintiff. The we-do-IT Group, including Defendant, used the WE-DO-
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`IT trademark only under express permission and license from Plaintiff, shared resources, and
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`targeted particular markets.
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`6.
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`At no time was Defendant permitted to use or continue using the WE-DO-IT
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`trademark independently to further its own, separate business interests. To the contrary, Defendant
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`worked together with the we-do-IT Group to benefit the entire enterprise.
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`7.
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`After more than 10 years of operating within the we-do-IT Group and under license
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`from Plaintiff to use the WE-DO-IT trademark, Defendant began operating as an independent
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`entity, although Plaintiff continues to hold a minority stake in Defendant.
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`8.
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`As a consequence of Defendant’s shift to an independent company, Plaintiff
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`expressly informed Defendant that its license to use the WE-DO-IT trademark would be terminated
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`effective March 31, 2023.
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`9.
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`Rather than rebrand, Defendant has continued to use the WE-DO-IT trademark and
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`has even applied to register a trademark which incorporates the WE-DO-IT trademark with the
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`U.S. Patent and Trademark Office. To add further insult, Defendant has accused Plaintiff of
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`infringement and claimed that the WE-DO-IT trademark belongs to Defendant.
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`10.
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`As described herein, Defendant’s blatant and unlawful attempt to steal the goodwill
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`and name recognition that Plaintiff has built in its WE-DO-IT trademark over decades of use
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`2
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`constitutes willful trademark infringement and unfair competition in violation of the Lanham Act.
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`15 U.S.C. § 1051, et seq.
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`THE PARTIES
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`11.
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`Plaintiff is an Australian proprietary company limited by shares. Plaintiff is the
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`principal operating entity of a global group of companies operating under the WE-DO-IT brand
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`that provides various back-office information technology services to sophisticated companies in
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`the electric, gas, water, and telecommunications utility space.
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`12.
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`Defendant is a Delaware corporation and, until 2018, was a controlled subsidiary
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`of Plaintiff. Plaintiff continues to hold a minority stake in Defendant.
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`JURISDICTION AND VENUE
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`13.
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`This Court has personal jurisdiction over Defendant because it resides in the
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`District of Delaware.
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`14.
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`This Court has original jurisdiction over the subject matter of the claims brought
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`herein under the Lanham Act, pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338.
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`15.
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`Venue is proper in this District because Defendant is a Delaware corporation. 28
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`U.S.C. § 1391(b)(1).
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`FACTUAL BACKGROUND
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`Background of we-do-IT Pty Ltd. and Expansion into United States
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`16.
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`Plaintiff has been in business since 1995, when it was incorporated in Australia.
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`Dr. Walter Hesse was the founder and director of Plaintiff at its inception.
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`17.
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`From the beginning, Plaintiff, under the we-do-IT brand, has provided back-end
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`services, such as data engineering, analytics, conflation, process automation, and geographic
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`information services and consulting, to sophisticated companies in the public utility space.
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`3
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`18.
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`Since 1996, Plaintiff has owned, operated and advertised its IT services using the
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`domain name we-do-it.com. The screen shot below depicts Plaintiff’s website as it existed on
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`December 19, 1996.
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`19.
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`20.
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`Over time, Dr. Hesse expanded the geographic reach of Plaintiff’s business.
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`For example, in 2002, Plaintiff entered the U.S. market under the WE-DO-IT
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`trademark by entering into an agreement with TUI Consulting Inc., a company based in
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`Wyomissing, Pennsylvania, to provide IT services to U.S. customers, including the City of
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`Tacoma.
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`21.
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`Later, in 2004, Plaintiff formed we-do-IT Products Pty Ltd. in Australia, which also
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`provided products and services into the U.S. market under the WE-DO-IT mark.
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`22.
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`Justin Eldridge, a senior employee of Plaintiff, who later became a shareholder of
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`Defendant, presented at the GE Energy Smallworld 2005 Americas Users Conference, touting
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`Plaintiff’s work for the City of Tacoma and pitching Plaintiff’s services to other potential
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`customers.
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`4
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`23.
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`Plaintiff’s presence in North America continued to grow. As of 2008, a U.S.-based
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`company, Ubisense Inc., was the exclusive solutions provider on Plaintiff’s behalf of Plaintiff’s
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`proprietary adjust.IT software in North America. And as of 2009, Plaintiff also had added Duke
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`Energy and Piedmont Natural Gas to its roster of U.S. utility customers.
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`24.
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` All of this work, performed under the WE-DO-IT trademark, took place in the
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`United States, and North America generally, years before Defendant even existed as a company.
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`25.
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`In connection with growing the we-do-IT business outside of Australia, Dr. Hesse
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`formed subsidiary entities to service particular geographic markets. For example, in August 2000,
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`Dr. Hesse incorporated we-do-IT (NZ) Ltd. in New Zealand.
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`26.
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`In 2010, Dr. Hesse formed Defendant to serve U.S. customers. Collectively, the
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`related companies in the we-do-IT Group include entities in New Zealand, the UK, Europe, India,
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`Singapore, and the United States, for which Plaintiff serves as the principal operating entity.
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`Formation of we-do-IT Inc. and Collective Operation of the we-do-IT Group
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`27.
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`Dr. Hesse’s decision to form Defendant in 2010, served at least two purposes. First,
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`Mr. Eldridge had expressed a desire to move to the United States. Dr. Hesse, wanting to retain a
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`valued employee, formed Defendant to allow Mr. Eldridge to move to the United States while still
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`working for Plaintiff. Second, because Plaintiff already had established relationships with several
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`U.S. customers, Defendant would provide a “boots on the ground” presence to serve those
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`customers.
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`28.
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`On August 24, 2010, Defendant was incorporated, with Dr. Hesse and Mr. Eldridge
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`named as the initial directors, and with Plaintiff and Mr. Eldridge and his wife (the “Eldridges”)
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`as the initial shareholders. Originally, Plaintiff held a 51% share of Defendant, with the Eldridges
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`5
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`holding 49%. After a 2018 share buyback, however, the Eldridges’ ownership stake in Defendant
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`increased to 60.08%, with Plaintiff holding the remaining shares.
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`29.
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`Although neither Plaintiff nor its ultimate parent company we-do-IT Holding Pty
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`Ltd. wholly owned Defendant, as is the case with other we-do-IT Group entities, Defendant still
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`operated as part of the collective group of related companies and was a fully integrated member of
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`the we-do-IT Group, which includes we-do-IT (NZ) Limited in New Zealand, we-do-IT GmbH in
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`Germany, we-do-IT (Europe) Ltd. in the United Kingdom and Europe generally, we-do-IT (India)
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`Pvt Ltd. in India, and we-do-IT (Singapore) Pte Ltd. in Singapore. That remained true even after
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`the Eldridges acquired a majority stake in Defendant.
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`30.
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`The we-do-IT Group created business efficiencies by sharing resources among one
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`another. The relationships between and obligations among the we-do-IT Group are evidenced by,
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`among other things, a resource allocation agreement, dated February 1, 2022, and executed by
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`Justin Eldridge and Erik Potter on behalf of Defendant. In that agreement, the shared services
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`identified to be used by the we-do-IT Group included:
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` Administrative services, i.e., planning, accounting, auditing, and legal;
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` Financial—management of cash flows, working capital, deposits, interest and
`currency exposures;
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` Distribution and marketing;
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` Website, advertising;
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` HR, recruitment;
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` Policies—environmental, Covid-19 for use across the we-do-IT Group;
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` Specific training for senior management;
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` Market analyses; and
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` Administration of intangibles.
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`6
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`Resource Allocation and Recharge Agreement attached hereto as Exhibit “1”.
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`31.
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`Additionally, because the we-do-IT Group, including Defendant, operated under
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`Plaintiff’s WE-DO-IT trademark, each company was granted a nonexclusive license to use the
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`mark. This also included the ability to use the we-do-IT Group's integrated I.T. systems, the
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`we-do-it.com domain and @we-do-it.com email addresses. Indeed, up until as late as May 2022,
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`representatives of Defendant used Plaintiff's WE-DO-IT trademark, including in their email
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`signatures as shown below:
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`32.
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`Under the shared resources and licensing agreements, each entity in the we-do-IT
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`Group was equipped to serve and grow Plaintiff’s customer base in their respective geographic
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`markets. For Defendant, that market was North America, and the United States in particular.
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`33.
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`By virtue of these licensing agreements, all use of the WE-DO-IT trademark by
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`each entity within the we-do-IT Group in the jurisdictions in which they operate constitutes
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`authorized use of Plaintiff's trademark in those jurisdictions, and all reputation and goodwill
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`arising from that use in each relevant jurisdiction inures to the benefit of Plaintiff.
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`Plaintiff’s Ownership of the WE-DO-IT Trademark
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`34.
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`Plaintiff is the owner of Australia Trademark Registration No. 1567267 for WE-
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`DO-IT for “Compilation of information relating to information technology; Information services
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`relating to information technology; Information technology (IT) consultancy; Information
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`7
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`technology (IT) services (computer hardware, software and peripherals design and technical
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`consultancy); Provision of information relating to information technology” in International Class
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`42. The Australia registration was granted on February 13, 2014. Australian trademark
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`registration record attached hereto as Exhibit “2”.
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`35.
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`Plaintiff also owns International Trademark Registration No. 1674608 for its WE-
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`DO-IT trademark. International Trademark Registration Number 1674608 covers Class 35 for
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`“Compilation of information relating to information technology” and Class 42 for “Information
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`services relating to information technology; information technology (IT) consultancy; information
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`technology (IT) services (computer hardware, software and peripherals design and technical
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`consultancy); provision of information relating to information technology.” In connection with
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`filing its International Trademark Application for protection of its WE-DO-IT trademark on March
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`19, 2022, Plaintiff designated Canada, the European Union, the United Kingdom, New Zealand,
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`and the United States. International trademark registration record attached hereto as Exhibit “3”.
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`36.
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`The U.S. designation of Plaintiff's International Trademark Registration is U.S.
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`Trademark Application No. 79/346,062 for WE-DO-IT in Class 35 for “Compilation of
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`information relating to information technology” and Class 42 for “Information services relating to
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`information technology; information technology (IT) consultancy; information technology (IT)
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`services (computer hardware, software and peripherals design and technical consultancy);
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`provision of information relating to information technology.” Plaintiff’s application was approved
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`by the U.S. Trademark Office and published for opposition on May 16, 2023. U.S. trademark
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`application record attached hereto as Exhibit “4”.
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`8
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`37.
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`In addition to the foregoing trademark rights, Plaintiff owns common law
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`trademark rights in the WE-DO-IT trademark by virtue of its exclusive use of the mark in Australia
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`since 1995 and in the United States since 2002.
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`Plaintiff and Defendant Separate their Businesses
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`38.
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`In 2022, Plaintiff and Defendant agreed that Defendant should operate as an
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`independent entity and no longer be part of the we-do-IT Group.
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`39.
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`In an email dated May 4, 2022, Dr. Hesse notified the Eldridges and others working
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`for Defendant that, to operate independently, Defendant would need to create a separate domain
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`name and website, as Plaintiff would be revoking Defendant’s license to use the WE-DO-IT
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`trademark. The email imposed a deadline of June 30, 2022 to make this change. Email dated May
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`4, 2022, attached hereto as Exhibit “5”.
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`40.
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`The next day, Defendant’s CEO, Erik Potter acknowledged Dr. Hesse’s email and
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`Defendant’s obligation to rebrand and refrain from using the WE-DO-IT trademark. Email dated
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`May 5, 2022, attached hereto as Exhibit “6”.
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`41.
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`Defendant subsequently changed its domain name to wdigis.com and commenced
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`using @wdigis.com email addresses.
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`42.
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`Defendant also subsequently commenced using the trademarks as shown in the
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`email signatures below:
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`43.
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`On November 18, 2022, without Plaintiff’s authorization or knowledge, Erik Potter,
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`using the name “John E. Potter d/b/a WDI Inc.” filed U.S. Trademark Application Number
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`97/684,180 for the trademark shown below in classes 35 and 42—the same classes as Plaintiff’s
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`trademark—and claiming that the mark was first used on May 16, 2022:
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`U.S. trademark application record attached hereto as Exhibit “7”.
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`44. Mr. Potter assigned the trademark application to we-do-IT, Inc.1 on May 25, 2023,
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`after Plaintiff discovered the trademark application. Trademark assignment attached hereto as
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`Exhibit “8”.
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`45.
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`Not only is Defendant unlawfully continuing to use Plaintiff’s WE-DO-IT
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`trademark without Plaintiff’s authorization and attempting to fraudulently obtain a U.S. Trademark
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`Registration which incorporates Plaintiff’s WE-DO-IT trademark, but Defendant also has
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`attempted to stop Plaintiff from using its own trademark.
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`1 Upon information and belief, we-do-IT, Inc. is the same entity as Defendant.
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`10
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`46.
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`On November 16, 2022, Defendant, through counsel, sent a letter to Plaintiff stating
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`that Defendant has priority of use of the WE-DO-IT trademark in the United States and that
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`Plaintiff was infringing on Defendant’s rights. November 16, 2022 letter attached hereto as
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`Exhibit “9”.
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`47.
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`In December 2022, through counsel, Plaintiff explicitly terminated the license
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`pursuant to which Defendant was permitted to use the WE-DO-IT trademark and demanded that
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`Defendant, by March 31, 2023, cease and refrain from using the WE-DO-IT trademark or any
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`mark that contains the WE-DO-IT trademark or is otherwise substantially identical or deceptively
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`similar to the WE-DO-IT trademark, and withdraw its U.S. Trademark Application No.
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`97/684,180.
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`48.
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`Rather than complying, Defendant, on March 10, 2023, filed an action in the
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`Delaware Court of Chancery, asserting numerous claims, including trademark infringement,
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`against Dr. Hesse, Plaintiff, we-do-IT Holding Pty Ltd. and U.S. entities formed to be part of the
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`we-do-IT Group – SMPP USA Inc., we-do-IT BETTER Inc., and we-do-IT Global Inc.
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`49.
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`Further, on June 13, 2023, Defendant filed a Notice of Opposition with the U.S.
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`Patent and Trademark Office's Trademark Trial and Appeal Board, opposing the registration of
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`Plaintiff's U.S. Trademark Application No. 79/346,062. The opposition was assigned proceeding
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`number 91285697.
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`50.
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`As of the date of filing this complaint, Defendant continues to use the WE-DO-IT
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`trademark, such use being unauthorized by Plaintiff and, in fact, in contravention of Plaintiff's
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`explicit demands.
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`COUNT I
`DECLARATORY JUDGMENT
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`Plaintiff incorporates paragraphs 1 through 50 as though fully set forth herein.
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`51.
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`11
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`52.
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`Plaintiff is the owner of registered and common law rights in the WE-DO-IT
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`trademark, as described herein.
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`53.
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`Plaintiff is the senior user of the WE-DO-IT trademark as it and/or related
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`companies began use of the mark in interstate commerce prior to Defendant’s claimed first use of
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`the mark in interstate commerce.
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`54. Without authorization, Defendant is continuing to use Plaintiff’s WE-DO-IT
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`trademark to deliberately create confusion in the marketplace.
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`55.
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`Further, Defendant has filed U.S. trademark application No. 97/684,180 for a
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`design mark that incorporates the WE-DO-IT trademark.
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`56.
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`Additionally, Defendant has filed a notice of opposition with the U.S. Patent and
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`Trademark Office’s Trademark Trial and Appeal Board opposing the registration of Plaintiff’s
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`U.S. Trademark Application No. 79/346,062 for the WE-DO-IT trademark.
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`57.
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`There is a present and substantial controversy, therefore, between Plaintiff and
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`Defendant regarding the senior use and ownership of the WE-DO-IT trademark.
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`58.
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`59.
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`Plaintiff and Defendant have adverse legal interests.
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`Defendant’s actions to register a WE-DO-IT trademark, and to oppose Plaintiff’s
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`WE-DO-IT trademark application, sufficiently demonstrates a real and immediate need for the
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`issuance of a judgment declaring that Plaintiff is the owner of the WE-DO-IT trademark.
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`COUNT II
`TRADEMARK INFRINGEMENT / FALSE ASSOCIATION / UNFAIR COMPETITION
`15 U.S.C. § 1125(a)
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`Plaintiff incorporates paragraphs 1 through 59 as though fully set forth herein.
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`60.
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`61.
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`Plaintiff is the owner of registered and common law rights in the WE-DO-IT
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`trademark, as described herein.
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`62.
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`Plaintiff is the senior user of its WE-DO-IT trademark as it and/or related
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`companies began use of the mark in interstate commerce prior to Defendant’s claimed first use of
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`WE-DO-IT in interstate commerce.
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`63.
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`Defendant does not have authorization, license or permission from Plaintiff to
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`advertise, market or offer its IT services under the WE-DO-IT name, which is identical to
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`Plaintiff’s WE-DO-IT trademark.
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`64.
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`Defendant has been aware of Plaintiff’s WE-DO-IT trademark since Defendant’s
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`formation in 2010 by virtue of its acceptance of a license from Plaintiff to use the WE-DO-IT
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`trademark. Thus, Defendant knowingly, intentionally and willfully used Plaintiff’s WE-DO-IT
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`trademark without Plaintiff’s authorization after Plaintiff terminated the license effective March
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`31, 2023, and Defendant did so to deliberately confuse customers.
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`65. Moreover, by accepting a license to Plaintiff’s WE-DO-IT trademark and operating
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`as Plaintiff’s trademark licensee for over 10 years, Defendant is estopped from challenging the
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`validity of Plaintiff’s ownership of and exclusive right to use the WE-DO-IT trademark.
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`66.
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`Defendant has made use of Plaintiff’s WE-DO-IT trademark and/or other words,
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`terms, names, symbols or devices, or any combination thereof, false designations of origin, false
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`or misleading descriptions of fact, or false or misleading representations in connection with
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`Defendant’s business activities which are likely to cause confusion and mistake among consumers
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`that (a) Defendant and/or its services originate with Plaintiff, (b) there is some affiliation,
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`connection or association between Defendant and/or its services and Plaintiff, and/or (c) Defendant
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`and/or its services are being offered to consumers with the sponsorship and/or approval of Plaintiff
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`in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiff has been
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`substantially injured as a result of Defendant’s actions.
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`67.
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`Defendant’s unauthorized use of Plaintiff’s WE-DO-IT trademark in connection
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`with Defendant’s business activities was willful, intentional, and undertaken in a deliberate effort
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`to cause confusion and mistake among the consuming public as to the source, affiliation and/or
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`sponsorship of such business activities, and to gain for Defendant the benefit of the enormous
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`goodwill associated with Plaintiff’s WE-DO-IT trademark.
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`68.
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`The threat of the loss of Plaintiff’s right to control and exploit the use of its WE-
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`DO-IT trademark and the substantial reputation, goodwill, and indelible association with Plaintiff
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`is real and substantial.
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`69.
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`As a direct and proximate result of Defendant’s infringement and pursuant to 15
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`U.S.C. § 1117, Plaintiff is entitled to recover Defendant’s profits, actual damages, enhanced profits
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`and damages, costs and reasonable attorneys’ fees in an amount to be proven at trial.
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`70.
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`Defendant’s misconduct also has caused and will cause irreparable injury to
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`Plaintiff, for which Plaintiff has no adequate remedy at law. Plaintiff is informed and believes and
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`on that basis alleges that unless enjoined and restrained by this Court, Defendant will continue to
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`infringe Plaintiff’s rights in its WE-DO-IT trademark. Accordingly, Plaintiff is entitled to
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`injunctive relief pursuant to 15 U.S.C. § 1116(a).
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`PRAYER FOR RELIEF
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`WHEREFORE, we-do-IT Pty Ltd. respectfully requests that the Court enter an order:
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`A.
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`B.
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`Declaring Plaintiff as the owner and senior user of the WE-DO-IT trademark;
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`Permanently enjoining Defendant, and
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`its managers, associates, agents,
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`representatives, servants, employees, successors and assigns, and all others acting
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`in concert therewith, or having knowledge thereof, from using, exploiting or trading
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`on Plaintiff’s WE-DO-IT trademark or any derivations or colorable imitations
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`thereof;
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`C.
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`Permanently enjoining Defendant, and
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`its managers, associates, agents,
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`representatives, servants, employees, successors and assigns, and all others acting
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`in concert therewith, or having knowledge thereof, from engaging in any other
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`activity constituting unfair competition with Plaintiff, or constituting infringement
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`of Plaintiff’s WE-DO-IT trademark;
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`D.
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`E.
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`Ordering Defendant to withdraw U.S. Trademark Application No. 97/684,180;
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`Ordering Defendant to withdraw its opposition to U.S. Trademark Application No.
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`79/346,062;
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`F.
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`Awarding actual damages and Defendant’s profits pursuant to 15 U.S.C. § 1117(a),
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`trebled pursuant to 15 U.S.C. § 1117(b);
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`G.
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`Awarding Plaintiff’s costs and attorneys’ fees and expenses, together with
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`prejudgment interest; and
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`H.
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`Awarding any other such relief as the Court may deem just.
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`DEMAND FOR JURY TRIAL
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`Plaintiff demands a jury trial.
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`Dated: July 28, 2023
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`
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`K&L GATES LLP
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`
`
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`/s/ Steven L. Caponi
`Steven L. Caponi (No. 3484)
`Megan E. O’Connor (No. 6569)
`600 N. King St., Suite 901
`Wilmington, DE 19801
`Telephone: (302) 416-7000
`steven.caponi@klgates.com
`megan.oconnor@klgates.com
`
`Attorneys for Plaintiff
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`15
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`

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`Exhibit 1
`Exhibit 1
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`

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`This RESOURCE ALLOCATION AND RECHARGE AGREEMENT is dated1 February 2022
`
`PARTIES
`
`we-do-IT Pty Ltd, ACN 071 972 891
`
`of Unit 404, 167 Queen Street Melbourne Victoria 3000 Australia
`
`-and-
`
`we-do-IT Inc, 390 Interlocken Crescent, Suite 350, Broomfield CO 80021 USA,
`
`(a Company incorporated in Delaware United States of America)
`
`(the Company)
`
`(the Related Entity)
`
`RECITALS
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
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`The Company is the operating company for the we-do-IT Group of Companies
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`.
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`The holding company for the Group is we-do-IT Holding Pty Ltd ACN 150 653 383 ("Holding").
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`All the subsidiaries within the Group are corporate entities wholly owned by Holding, save for we-
`
`do-IT Inc, which is owned by the we-do-IT Pty Ltd and Justin Eldridge and Sandra Eldridge resident
`
`in Broomfield, Colorado USA.
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`The Company provides Head Office services to the Group including management and financial
`
`services, administrative and other support functions, operations; delivery; and accounting
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`services
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`The Services can be sub-divided into two categories with respect to cost, namely:
`
`
`
`
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`Non-chargeable: Services in this category may include, but not be limited to
`
`such as assistance with a specific borrowing/funding proposal, such as for an
`
`acquisition; undertaking investment analyses; performing certain accounting
`
`functions such as compliance with tax laws; and providing guarantees
`
`Chargeable: Services centralised within we-do-IT Pty Ltd- meeting the
`
`specific needs of a Related Entity (for which a charge would normally be
`
`
`
`
`
`administrative services i.e., planning, accounting, auditing, and
`
`), such as
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`legal;
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`financial - management of cash flows, working capital, deposits,
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`interest and currency exposures;
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`Page 1
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`distribution and marketing;
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`website, advertising;
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`HR; recruitment;
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`Policies- environmental, Covid-19 for use across the Group;
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`Specific training for senior management;
`
`Market analyses
`
`Administration of intangibles
`
`
`
`
`
`
`
`
`
`
`
`
`
`(ii)
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`Chargeable Services intended to benefit the Group as a whole, or a particular group of
`
`related subsidiaries and therefore to be pro-rated between them as per Schedule B.
`
`F.
`
`The business of the Group is delivered within Australia through we-do-IT Field Recording Pty
`
`Ltd, ACN 625 275 845; we-do-IT Right Shoring Pty Ltd, ACN 151 631 337 and we-do-IT
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`Products Pty Ltd, ACN 108 040 277, all wholly owned by Holding.
`
`G.
`
`Internationally the Group operates through:
`
`(i)
`
`(ii)
`
`(iii)
`
`(iv)
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`The Related Entity;
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`we-do-IT (NZ) Limited, 1061907 NZBN: 9429037156091, New Zealand;
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`we-do-IT GmbH, HRB 167229 B, Germany;
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`we-do-IT (Europe) Ltd, United Kingdom and Europe
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`(v) we-do-IT (India) Pvt Ltd, 083853, India
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`(vi) we-do-IT (Singapore) Pte Ltd
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`OPERATIVE PART
`
`In consideration of mutual promises and payments contemplated herein the parties agree as follows:
`
`1.
`
`The objective of this Agreement is to target a fixed EBITDA of 10% on the Resource provided by
`
`the Company to the Related Entity.
`
`2.
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`In this Agreement, and in the calculation of any amount to be invoiced, the following definitions
`
`and principles apply (See also the 10% EBITDA calculations in the Schedule B, below):
`
`3.
`
`Where, including in relation to any transaction between the Related Entity and a third party, a
`
`benefit is received by the Related Entity as the result of costs incurred or Services provided by
`
`the Company either by way of the allocation of resources on a part-time or full-time basis, the
`
`Company shall invoice the Related Entity for the cost of providing that benefit as per Full-Time
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`Resource Invoice Calculation or the Part-Time Resource Invoice Calculation definitions in
`
`the Schedule B, below.
`
`4.
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`The Invoice shall also include, as required:
`
`a. The name and address of the third party;
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`b.
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`the
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`Products concerned and / or the services provided
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`; and
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`c. any other information relevant to the transaction.
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`5.
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`THE RELATED ENTITY'S DUTIES UPON RECEIPT. Upon receipt of the relevant Invoice
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`the Related Entity shall do the following:
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`a. acknowledge receipt in writing; (email is sufficient) and, if any amounts are disputed, state
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`the reasons for such disputes;
`
`b.
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`the Related Entity may request, and the Company shall provide, any and all information,
`
`records and Resource information used to calculate the amounts due on the invoice, and
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`the Related Entity shall have 30 days to review the invoice and must by that time:
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`i. present any final objection by that time in writing to the Company;
`
`ii. pay the undisputed amounts of the invoiced amount in accordance with the
`
`Company's usual trading terms; and
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`c.
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` the parties shall work together to mutually resolve any dis