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ESTTA Tracking number:
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`Filing date:
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`ESTTA1330008
`12/21/2023
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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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`91288657
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`Filing Party
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`Other Party
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`Plaintiff
`Clark Capital Management Group, Inc.
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`Defendant
`AVIOR WEALTH MANAGEMENT, LLC
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`Pending Motion
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`There is no motion currently pending and no other motion is being filed concur-
`rent with this consent motion.
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`Attachments
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`MOTION TO SUSPEND_FINAL.pdf(291704 bytes )
`exhibit a.pdf(3060094 bytes )
`exhibit a_2.pdf(4605180 bytes )
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`Consent Motion for Suspension in View of Civil Proceeding
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`The parties are engaged in a civil action which may have a bearing on this proceeding. Accordingly, Clark
`Capital Management Group, Inc. hereby requests suspension of this proceeding pending a final determina-
`tion of the civil action. Trademark Rule 2.117.
`Clark Capital Management Group, Inc. has secured the express consent of all other parties to this proceeding
`for the suspension requested herein.
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`Certificate of Service
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`The undersigned hereby certifies that a copy of this submission has been served upon all parties, at their ad-
`dress of record by Email on this date.
`Respectfully submitted,
`/Camille M. Miller/
`Camille M. Miller
`cmiller@cozen.com, mmiller@cozen.com, apedraza@cozen.com, lcosta@cozen.com, mmcn-
`ulty@cozen.com, phipdocketing@cozen.com
`12/21/2023
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In re Serial No.: 97/727,372
`Trademark: AVIOR WEALTH NAVIGATOR
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`Clark Capital Management Group, Inc.
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`v.
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`Opposer,
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`Avior Wealth Management, LLC
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`Applicant.
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`Opposition No. 91288657
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`MOTION ON CONSENT TO SUSPEND PROCEEDING PENDING
`DISPOSITION OF RELATED FEDERAL LAWSUIT
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`Opposer, Clark Capital Management Group, Inc. (“Clark Capital” or “Opposer”),
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`pursuant to 37 C.F.R. §2.117, by and through its undersigned counsel, hereby moves, with
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`Applicant’s consent, to suspend the above-referenced Opposition proceeding (this “Proceeding”)
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`pending the disposition of a pending federal lawsuit involving the same parties. The federal
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`lawsuit is currently being litigated in the United States District Court, Middle District of Florida,
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`under the caption Clark Capital Management Group, Inc. v. Avior Wealth Management, LLC
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`(Case No. 3:23-cv-1467-HES-JBT), before the Honorable Harvey E. Schlesinger, U.S. District
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`Judge for the Middle District of Florida (the “Federal Action”).
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`Counsel for Applicant, Chad W. Swantz of Suiter Swantz PC LLO, has consented to this
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`Motion in an email, dated December 20, 2023, to counsel for Opposer, Cozen O’Connor.
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`In the Federal Action filed on December 15, 2023, Opposer seeks a finding, among other
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`things, that Applicant’s THE AVIOR NAVIGATOR mark and AVIOR WEALTH
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`NAVIGATOR mark, Serial No. 97/727,372 (the “Challenged Application”), in connection with
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`financial services, namely, wealth management services is likely to cause confusion as to the
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`source or origin with Opposer’s NAVIGATOR® Marks. A true and correct copy of Opposer’s
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`Federal Complaint (“Complaint”) filed against Applicant is attached hereto and marked as
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`Exhibit A. Opposer believes that the Federal Action will have a substantial bearing, if not
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`dispositive impact, on this Proceeding. The proceedings in the Federal Action are underway.
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`The parties will suffer no prejudice if this matter is stayed. This Proceeding has only
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`recently been initiated as Opposer’s Notice of Opposition has just been filed on record. No
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`discovery has yet to be issued or sought in this Proceeding.
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`Opposer expects the relief sought in the Federal Action to be granted. A finding of
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`infringement by the Applicant in the Federal Action will establish and result in findings, as set
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`forth in the Opposer’s Complaint, that Applicant’s THE AVIOR NAVIGATOR and AVIOR
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`WEALTH MANAGEMENT marks are confusingly similar to Opposer’s NAVIGATOR®
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`Marks.
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`The above findings will directly address Opposer’s claims in this Proceeding that the
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`Challenged Application in connection with financial services, namely, wealth management
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`services is confusingly similar to Opposer’s NAVIGATOR® Marks within the meaning of
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`Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). As a result, if Clark Capital is successful,
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`the Federal Action should render and establish that the mark in the Challenged Application, and
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`that is the subject of this Proceeding, should not be allowed to register due to a likelihood of
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`confusion with Opposer’s NAVIGATOR® Marks.
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`In accordance with Rule 510.02(a) of the Trademark Trial and Appeal Board rules, the
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`suspension of this Proceeding is proper. See 37 CFR § 2.117(a); Other Telephone Co. v.
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`2
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`Connecticut National Telephone Co., 181 USPQ 125 (TTAB 1974), petition denied, 181 UPSQ
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`779 (Comm’r 1974); Tokaido v. Honda Associates Inc., 179 USPQ 861 (TTAB 1973); Whopper-
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`Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB 1971).
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`WHEREFORE, good cause having been shown, Opposer, with Applicant’s consent,
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`requests that the above-captioned Proceeding be suspended.
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`Dated: December 21, 2023
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`Respectfully submitted by:
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`/s/ Melanie A. Miller
`Camille M. Miller – PA Bar ID No. 79670
`Melanie A. Miller – PA Bar ID No. 73499
`Anna Pedraza – PA Bar ID No. 332479
`COZEN O’CONNOR
`One Liberty Place
`1650 Market Street, Suite 2800
`Philadelphia, PA 19103
`(215) 665-7273
`cmiller@cozen.com
`mmiller@cozen.com
`apedraza@cozen.com
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`Attorneys for Opposer, Clark Capital
`Management Group, Inc.
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`3
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`CERTIFICATE OF SERVICE
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`It is hereby certified that on this 21st day of December 2023, a true and correct copy of
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`the foregoing Motion to Suspend Notice of Opposition was sent to counsel for Applicant at the
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`address set forth below, via email.
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`
`Chad W. Swantz
`Suiter Swantz PC LLO
`14301 FNB PKWY, STE 220
`Omaha, Nebraska 68154
`cws@suiter.com
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`/s/ Melanie A. Miller
`Melanie A. Miller
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`4
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` EXHIBIT A
`EXHIBIT A
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`5
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 1 of 22 PageID 1
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`
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`Plaintiff,
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`v.
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`
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`Civil Action No.: _________
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`JURY TRIAL DEMANDED
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`Clark Capital Management Group, Inc.,
`:
`:
`:
`:
`:
`:
`:
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`Avior Wealth Management, LLC
`:
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`Defendant. :
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`COMPLAINT
`Plaintiff, Clark Capital Management Group, Inc. (“Clark Capital” or
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`“Plaintiff”), by and through its undersigned attorneys, bring this Complaint against
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`Defendant, Avior Wealth Management, LLC (“Avior Wealth” or “Defendant”), and
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`alleges as follows:
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`INTRODUCTION
`This is an action for: (i) Trademark Infringement under the Lanham
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`1.
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`Act; and (ii) Unfair Competition, False Designation of Origin and False Association
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`under the Lanham Act.
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`2.
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`Clark Capital is an independent asset management firm that provides
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`financial counseling and planning services.
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`3.
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`Clark Capital uses and has used the term “NAVIGATOR®”, as well as
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`variations thereof, in connection with its financial counseling and planning services
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`

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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 2 of 22 PageID 2
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`since at least as early as March 10, 1987, and Clark Capital owns numerous U.S.
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`trademark registrations comprising of or incorporating “NAVIGATOR®” with
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`those services (collectively, the “NAVIGATOR® Marks”).
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`4.
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`Avior Wealth is a competitor of Clark Capital that provides financial
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`counseling and planning services identical to those that Clark Capital provides.
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`5.
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`Avior Wealth has recently adopted and used, and/or intends on adopting
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`and using the terms THE AVIOR NAVIGATOR and AVIOR WEALTH
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`NAVIGATOR (the “Infringing NAVIGATOR Marks”) in connection with the same
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`financial counseling and planning services that Clark Capital provides in connection
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`with the NAVIGATOR® Marks, infringing upon and negatively impacting Clark
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`Capital’s longstanding and incontestable rights in and to the NAVIGATOR® Marks.
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`6.
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`Clark Capital now seeks injunctive relief, compensatory damages,
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`willful damages, statutory damages, attorneys’ fees, and costs against Defendant for
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`trademark infringement, unfair competition, and false designation of origin.
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`PARTIES
`Plaintiff, Clark Capital Management Group, Inc., is a Pennsylvania
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`7.
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`corporation with a principal place of business located in Philadelphia, PA.
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`8.
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`Defendant, Avior Wealth Management, LLC is a Nebraska limited
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`liability company with an office in this District located at 1535 The Greens Way,
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`Jacksonville Beach, Florida 32250.
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`2
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`

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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 3 of 22 PageID 3
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`
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`JURISDICTION AND VENUE
`This action arises under the Acts of Congress under the Lanham Act,
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`9.
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`Title 15 U.S.C. § 1051, et seq., and common law. As such, this Court has subject
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`matter jurisdiction under the provisions of Title 28 U.S.C. §§ 1331 and 1338 because
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`this action involves federal questions of law.
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`10. This Court has personal jurisdiction over Avior Wealth pursuant to Fla.
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`Stat. §§ 48.193(1)(a)(1) because the causes of action arise from Defendant’s
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`operating, conducting, engaging in, and carrying on a business in Florida. Indeed,
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`Avior Wealth conducts business in Florida as it has a presence and operates an office
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`in Florida, located at 1535 The Greens Way, Jacksonville Beach, Florida 32250.
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`Additionally, Avior Wealth possesses and maintains a license to do business in
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`Florida, which it has possessed since August 2, 2013. Furthermore, Avior Wealth
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`specifically and directly targets, advertises, solicits and provides services to Florida
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`residents in the State of Florida.
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`11. This Court also has personal jurisdiction over Avior Wealth pursuant
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`to Fla. Stat. §§ 48.193(1)(a)(2) because Avior Wealth purposefully directed its
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`tortious activities toward Florida and toward residents of Florida, and committed
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`tortious acts within Florida. Indeed, Avior Wealth intentionally and purposefully
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`solicited Florida residents, including residents in this District, using the Infringing
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`NAVIGATOR Marks.
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`3
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 4 of 22 PageID 4
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`12. This Court has personal jurisdiction over Avior Wealth pursuant to Fla.
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`Stat. §§ 48.193(2) as it engages in “substantial and not isolated” activity within
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`Florida and it has continuous and systematic business contact with the State. Upon
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`information and belief, Avior Wealth does substantial business in this district, and it
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`regularly solicits business from, does business with, and derives significant revenue
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`from, services provided to customers in this district.
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`13. This Court has original jurisdiction over the claims brought under
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`federal law pursuant to 28 U.S.C. §§ 1331 and 1338(b) and 15 U.S.C. § 1121.
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`14. Venue is proper in this judicial district pursuant to 28 U.S.C. §
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`1391(b)(2), as a substantial part of the relevant events, including Defendant’s
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`tortious actions, particularly its trademark infringement, unfair competition and false
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`designation, occurred in this District.
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`FACTUAL BACKGROUND AS TO CLARK CAPITAL’S BUSINESS
`AND ITS INTELLECTUAL PROPERTY
`15. Clark Capital is an independent asset management firm that provides
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`financial counseling and planning services, including, but not limited to, investment
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`advisory services, investment counseling, wealth management, asset allocation, and
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`retirement planning services to its customers, such as individuals, corporations, and
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`institutions throughout the United States (the aforementioned products and services
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`shall collectively be referred as the “Clark Capital Financial Services”).
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`4
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 5 of 22 PageID 5
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`16. Clark Capital has adopted and continuously and exclusively used
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`numerous trademarks comprising of or incorporating the term “NAVIGATOR”
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`since at least as early as March 10, 1987, and Clark Capital owns numerous U.S.
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`trademark registrations comprising of or incorporating “NAVIGATOR” in
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`connection with the Clark Capital Financial Services.
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`17. On September 21, 1990, Clark Capital filed an application for
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`registration of the trademark NAVIGATOR® with the United States Patent and
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`Trademark Office (“USPTO”) in connection with “investment advisory services in
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`the field of stocks and mutual funds” in Class 036, with a date of first use at least as
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`early as March 10, 1987. On October 29, 1991 the USPTO registered the
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`NAVIGATOR® Mark on the Principal Register (U.S. Reg. No. 1,662,756). See
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`Exhibit 1. By virtue of Clark Capital’s continuous use of the NAVIGATOR® Mark
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`over the last thirty plus (30+) years, the Mark has attained incontestable status.
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`18. On July 10, 1998, Clark Capital filed an application for registration of
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`the trademark NAVIGATOR FUND® with the USPTO in connection with
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`“investment advisory services in the field of stocks and mutual funds” in Class 036,
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`with a date of first use at least as early as April 1, 2002. On October 22, 2002 the
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`USPTO registered the NAVIGATOR FUND® Mark on the Principal Register (U.S.
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`Reg. No. 2,639,961). See Exhibit 2. By virtue of Clark Capital’s continuous use of
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`5
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 6 of 22 PageID 6
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`the NAVIGATOR FUND® Mark over the last twenty plus (20+) years, the Mark
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`has attained incontestable status.
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`19. On March 4, 2009, Clark Capital filed an application for registration of
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`the trademark NAVIGATOR® with the USPTO in connection with, inter alia,
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`“investment advisory services in the field of stocks, bonds, annuities and mutual
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`funds; investment consultation; asset allocation services; stock brokerage services”
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`in Class 036, with a date of first use at least as early as March 10, 1987. On October
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`20, 2009 the USPTO registered the NAVIGATOR ® Mark in connection with the
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`aforementioned services on the Principal Register (U.S. Reg. No. 3,698,185). See
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`Exhibit 3. By virtue of Clark Capital’s continuous use of the NAVIGATOR® Mark
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`since its registration, the Mark has attained incontestable status.
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`20. On September 12, 2008, Clark Capital filed an application for
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`registration of the design and word mark
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`® with the USPTO in
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`connection with, inter alia, “investment advisory services in the field of stocks,
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`bonds, annuities and mutual funds; investment consultation; asset allocation
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`services; stock brokerage services” in Class 036, with a date of first use at least as
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`early as January 2, 2006. On April 21, 2009 the USPTO registered the
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`® Mark on the Principal Register (U.S. Reg. No. 3,608,683). See
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`6
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 7 of 22 PageID 7
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`Exhibit 4. By virtue of Clark Capital’s continuous use of the
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`®
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`Mark since its registration, the Mark has attained incontestable status.
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`21. Clark Capital’s NAVIGATOR® Marks are distinctive and exclusive
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`source-identifiers for Clark Capital’s financial goods and services. Since 1987,
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`Clark Capital has expanded its use of the term “NAVIGATOR” and the
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`NAVIGATOR® Marks have acquired substantial and invaluable goodwill in
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`connection therewith.
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`22. Clark Capital owns all rights, titles and interests in and to the
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`NAVIGATOR® Marks, including the registrations for those Marks. Clark Capital
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`is the exclusive owner of any and all federal, state and common law rights and
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`goodwill associated with the NAVIGATOR® Marks.
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`23. Through its widespread, continuous, and exclusive use of the
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`NAVIGATOR® Marks to identify the Clark Capital Financial Services and Clark
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`Capital as their source, Clark Capital’s NAVIGATOR® Marks have become well-
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`known throughout the financial planning and wealth management industry.
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`24. Clark Capital has expended significant time, money, and resources
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`marketing, advertising, and promoting
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`its financial planning and wealth
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`management services under the NAVIGATOR® Marks.
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`25. The market success of the Clark Capital Financial Services offered
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`under the NAVIGATOR® Marks has been extraordinary, and the relevant public
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`7
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 8 of 22 PageID 8
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`has come to rely upon and recognize the Clark Capital Financial Services in
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`connection with Clark Capital’s NAVIGATOR® Marks.
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`26. Clark Capital has vigorously policed and defended its NAVIGATOR®
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`Marks against infringers and potential infringers. Clark Capital has filed numerous
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`Opposition proceedings with the Trademark Trial and Appeal Board (“TTAB”) to
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`prevent the registration of conflicting marks and/or marks that would lead to a
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`likelihood of confusion with the NAVIGATOR® Marks. Clark Capital has also
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`filed suit in federal district court on numerous occasions in order to protect its
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`NAVIGATOR® Marks.
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`FACTUAL BACKGROUND AS TO AVIOR WEALTH’S UNLAWFUL
`CONDUCT
`27. Avior Wealth is a competitor of Clark Capital in the financial
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`counseling and planning services industry.
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`28. Upon information and belief, Avior Wealth has engaged in substantial
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`and not isolated activity for pecuniary benefit in the State of Florida, including
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`within this District, for the last ten plus (10+) years. Upon information and belief,
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`Avior Wealth has and has had a significant number of clients in the State of Florida
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`and it generates a significant amount of revenue in Florida.
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`29. Avior Wealth has an office located in this District and purposely and
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`intentionally solicits, customers, potential customers and the general public in the
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`State of Florida, including in this District, as well as provides services to customers
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`8
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 9 of 22 PageID 9
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`in this District. See Exhibit 5. In fact, Avior Wealth touts how “[Avior Wealth is]
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`able to construct personalized plans that help Florida residents reach their highest
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`goals for themselves and their loved ones” and how “[y]ou won’t find a more
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`diligent, more thoughtful collection of fiduciary advisors in Jacksonville, FL.” Id.
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`(emphasis added). Furthermore, Avior Wealth has a Florida-specific email address
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`–
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`jacksonvillebeach.fl@aviorwealth.com – where customers and potential
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`customers located in Florida can contact Avior Wealth regarding its services. Id.
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`30. Clark Capital recently became aware that Avior Wealth is using, and/or
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`is planning to use, the terms THE AVIOR NAVIGATOR and AVIOR WEALTH
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`NAVIGATOR (the “Infringing NAVIGATOR Marks”) in connection with services
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`that are identical to the Clark Capital Financial Services, including but not limited
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`to, financial planning, investment advisory and wealth management services.
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`31. On December 21, 2022, Avior Wealth filed an application for
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`registration of the trademark AVIOR WEALTH NAVIGATOR with the USPTO in
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`connection with “financial services, namely, wealth management services” in Class
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`036 (U.S. App. No. 97/727,372) (the “Infringing NAVIGATOR Application”). See
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`Exhibit 6. The Infringing NAVIGATOR Application was filed on an intent-to-use
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`basis pursuant to Section 1(b). Id. In furtherance of Avior Wealth’s filing of the
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`Infringing NAVIGATOR Application, Avior Wealth submitted a sworn statement
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`9
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 10 of 22 PageID 10
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`in the Application that it has a good faith, bona fide intention to use the Infringing
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`AVIOR WEALTH NAVIGATOR Mark in commerce.
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`32.
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`In or about the fall of 2023, Avior Wealth modified its website and
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`prominently added a link consisting of the Infringing Mark for THE AVIATOR
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`NAVIGATOR and established a specific webpage for its website with the domain
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`https://aviorwealth.com/the-avior-navigator/
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`(the
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`“Infringing NAVIGATOR
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`Domain”), through which it advertises its financial wealth management services in
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`connection with the Infringing NAVIGATOR Marks. See Exhibit 7.
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`33. Avior Wealth’s Infringing NAVIGATOR Domain is accessible by
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`customers, potential customers and the general public in the State of Florida,
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`including in this District, and Avior Wealth purposely and intentionally solicits
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`customers and potential customers in the State of Florida and in this District,
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`including through the use of the Infringing NAVIGATOR Marks. See Exhibits 6 &
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`7.
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`34. Avior Wealth’s Infringing NAVIGATOR Marks are confusingly
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`similar in sound, appearance, and overall commercial impression to Clark Capital’s
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`NAVIGATOR® Marks.
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`35. Avior Wealth offers identical financial planning, wealth management
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`and investment advisory services to those Clark Capital offers in connection with its
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`NAVIGATOR® Marks, and in the same or similar channels of trade.
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`10
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 11 of 22 PageID 11
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`36.
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`In light of Clark Capital’s continued use of NAVIGATOR® dating
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`back to at least as early as 1987 and its numerous federal registrations for the
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`NAVIGATOR® Marks, the NAVIGATOR® Marks have priority over Avior
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`Wealth’s Infringing NAVIGATOR Marks. In fact, Clark Capital’s date of first use
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`for each of the NAVIGATOR® Marks in interstate commerce predates Avior
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`Wealth’s formation and incorporation in 2008.
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`37. Upon information and belief, given Clark Capital’s significant,
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`longstanding, continuous and exclusive use of the NAVIGATOR® Marks, Avior
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`Wealth had knowledge of the existence of and Clark Capital’s use and ownership of,
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`the NAVIGATOR® Marks in connection with the Clark Capital Financial Services,
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`prior to Avior Wealth’s adoption of the Infringing NAVIGATOR Marks and the
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`filing of the Infringing NAVIGATOR Application.
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`38. On November 14, 2023, Clark Capital sent a letter to Avior Wealth that
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`advised Avior Wealth of Clark Capital’s rights in, and ownership of, the
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`NAVIGATOR® Marks (the “Letter”). See Exhibit 8. In the Letter, Clark Capital
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`informed Avior Wealth that consumers are likely to confuse Avior Wealth’s use
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`and/or potential use of the Infringing NAVIGATOR Marks with Clark Capital’s use
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`of its NAVIGATOR® Marks, and requested that Avior Wealth cease all use of the
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`term NAVIGATOR in connection with the Clark Capital Financial Services,
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`11
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 12 of 22 PageID 12
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`including the Infringing THE AVIOR NAVIGATOR and AVIOR WEALTH
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`NAVIGATOR Marks and any similar variations thereof. Id.
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`39. On November 21, 2023, Avior Wealth responded to the Letter, wherein
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`it disingenuously claimed
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`that any
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`likelihood of confusion between
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`the
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`NAVIGATOR® Marks and the Infringing NAVIGATOR Marks was improbable
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`and that it would be “unnecessary and burdensome for [it] [] to cease or restrict use
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`of its [Infringing] marks.” See Exhibit 9.
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`40. Despite Avior Wealth’s actual knowledge of its infringement of the
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`NAVIGATOR® Marks, Avior Wealth has failed to cease its infringing activities and
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`continues to use the Infringing NAVIGATOR Marks in connection with the Clark
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`Capital Financial Services.
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`41. On December 7, 2023, Clark Capital instituted opposition proceedings
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`with
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`the TTAB opposing
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`the registration of Avior Wealth’s Infringing
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`NAVIGATOR Application (Opp. No. 91,288,657). Those proceedings remain
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`pending, although Clark Capital intends upon filing a motion to stay those
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`proceedings pending the resolution of this litigation.
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`42. Clark Capital’s NAVIGATOR® Marks, as well as the Registrations for
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`those Marks, are valid and Clark Capital has the exclusive right to use those Marks.
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`Avior Wealth is not affiliated with Clark Capital nor its NAVIGATOR® Marks in
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`any way. Avior Wealth is not a licensee of, nor is otherwise authorized to use, the
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`12
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`

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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 13 of 22 PageID 13
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`NAVIGATOR® Marks nor the confusingly similar Infringing NAVIGATOR
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`Marks.
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`43. Avior Wealth’s use of the Infringing NAVIGATOR Marks, including
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`but not limited to its prominent and conspicuous use of the Infringing NAVIGATOR
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`Marks on its website, in connection with financial planning, wealth management and
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`investment advisory services, has infringed upon, and continues to infringe upon,
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`Clark Capital’s NAVIGATOR® Marks.
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`44. Avior Wealth’s use of the Infringing NAVIGATOR Marks is likely to
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`cause confusion with Clark Capital’s NAVIGATOR® Marks in the industry and
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`amongst the consuming public, if it has not done so already.
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`45. As of the filing of this action, Avior Wealth has made no attempts to
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`discontinue its use of the Infringing NAVIGATOR Marks, nor its infringement of
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`the NAVIGATOR® Marks.
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`46. Unless restrained, Avior Wealth’s unauthorized and unlawful use of the
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`Infringing NAVIGATOR Marks will continue to cause Clark Capital harm,
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`including, but not limited to, irreparable harm for which there is no adequate remedy
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`at law.
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`COUNT 1 - FEDERAL TRADEMARK INFRINGEMENT
`47. Clark Capital repeats and re-alleges, and incorporates by reference, the
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`allegations in paragraphs 1 to 46 as though they were fully set forth herein.
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`13
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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 14 of 22 PageID 14
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`48. Clark Capital is the owner of the NAVIGATOR® Marks, as well as the
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`federal trademark registrations for the NAVIGATOR® Marks. See Exhibits 1-4.
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`These federal trademark registrations are evidence of Clark Capital’s exclusive right
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`to use the NAVIGATOR® Marks in connection with the Clark Capital Financial
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`Services. Id.
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`49. Clark Capital’s NAVIGATOR® Marks have acquired incontestable
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`status. Thus, the registrations for these marks shall be conclusive evidence of the
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`validity of the registered marks, of Clark Capital’s ownership of the marks, and of
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`Clark Capital’s exclusive right to use the registered marks in commerce in
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`connection with the Clark Capital Financial Services. See 15 U.S.C. §1115.
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`50. The NAVIGATOR® Marks are distinctive in connection with the Clark
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`Capital Financial Services for both the consuming public, as well as those within the
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`financial planning and wealth management industry.
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`51. Clark Capital’s well-known NAVIGATOR® Marks and Infringing
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`NAVIGATOR Marks are similar in sound, appearance, and meaning. The marks
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`create the same commercial impression and are confusingly similar.
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`52. Avior Wealth’s Infringing NAVIGATOR Marks wholly encompass
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`Clark Capital’s NAVIGATOR® Mark and are thus similar in appearance, sound,
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`and meaning.
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`
`
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`14
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`

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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 15 of 22 PageID 15
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`53. Avior Wealth provides and/or will provide financial planning and
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`wealth management services in connection with the Infringing NAVIGATOR
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`Marks. These services directly overlap with the Clark Capital Financial Services,
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`which include financial planning, wealth management and investment advisory
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`services.
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`54. Avior Wealth’s use of the Infringing NAVIGATOR Marks for such
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`identical services will likely lead to confusion, mistake, or deception of the public
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`and will otherwise cause injury and damage to Clark Capital and its NAVIGATOR®
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`Marks, as well as its goodwill and reputation, and may have done so already.
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`55. Avior Wealth has infringed upon Clark Capital’s NAVIGATOR®
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`Marks in interstate commerce by various acts, including its use of the Infringing
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`NAVIGATOR Marks in connection with identical and/or closely related services.
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`56. The activities of Avior Wealth complained of herein constitute willful
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`and intentional infringement of Clark Capital’s federally registered NAVIGATOR®
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`Marks, in derogation of Clark Capital’s rights. Acts of infringement commenced
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`and have continued despite Avior Wealth’s knowledge that its use of the Infringing
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`NAVIGATOR Marks was and is in contravention of Clark Capital’s trademark
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`rights.
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`57. Clark Capital has not given consent directly or indirectly to Avior
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`Wealth to use the NAVIGATOR® Marks, nor any mark similar thereto.
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`
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`15
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`

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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 16 of 22 PageID 16
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`
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`58. Avior Wealth’s conduct has caused and, if not enjoined, will continue
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`to cause irreparable damage to the rights of Clark Capital in its NAVIGATOR®
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`Marks and in its business, reputation, and goodwill.
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`59. Avior Wealth’s actions constitute knowing, deliberate and willful
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`infringement of Clark Capital’s federally registered NAVIGATOR® Marks. The
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`knowing and intentional nature of the acts set forth herein renders this an exceptional
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`case under 15 U.S.C § 1117(a)-(b). As such, Clark Capital is entitled to its attorneys’
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`fees and the costs of this action, as well as treble damages for Avior Wealth’s use of
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`an infringing mark.
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`60. As a direct and proximate result of Avior Wealth’s infringement, Clark
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`Capital has suffered substantial damages, as well as the continuing loss of the
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`goodwill and reputation established by Clark Capital in its NAVIGATOR® Marks.
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`This continuing loss of goodwill cannot be properly calculated and thus constitutes
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`irreparable harm and an injury for which Clark Capital has no adequate remedy at
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`law. Clark Capital will continue to suffer irreparable harm unless this Court enjoins
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`Defendants’ conduct.
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`COUNT 2 - FEDERAL UNFAIR COMPETITION PER SECTION 43(a) OF
`THE LANHAM ACT SECTION 15 U.S.C. § 1125(a)
`61. Clark Capital repeats and re-alleges, and incorporates by reference, the
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`allegations in paragraphs 1 to 46 as though they were fully set forth herein.
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`
`
`
`16
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`

`

`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 17 of 22 PageID 17
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`
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`62. Clark Capital is the owner of the NAVIGATOR® Marks, including all
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`common law rights and interests thereto. Clark Capital’s rights and interests in and
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`to
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`the NAVIGATOR® Marks have priority over Defendant’s Infringing
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`NAVIGATOR Marks.
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`63. Clark Capital’s incontestable NAVIGATOR® Marks are distinctive
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`and have meaning and significance in the minds of the relevant public.
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`64. Clark Capital and Avior Wealth are competitors, and both offer the
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`same financial services, namely financial planning, wealth management and
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`investment advisory services.
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`65. Avior Wealth adopted and used, and/or plans to use, the Infringing
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`NAVIGATOR Marks in connection with identical services, including use in
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`association with financial planning, wealth management, and investment advisory
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`services, long after Clark Capital’s adoption and use of its NAVIGATOR® Marks
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`in connection with the Clark Capital Financial Services.
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`66. Avior Wealth’s use of
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`the confusingly
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`similar
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`Infringing
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`NAVIGATOR Marks in connection with its services, is misleading to consumers,
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`and is likely to cause confusion or mistake, or to deceive, as to: (1) the affiliation,
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`connection, or association of Avior Wealth with Clark Capital; (2) the origin,
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`sponsorship, or approval of the services or products Clark Capital sells under the
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`NAVIGATOR® Marks; and/or (3) the origin, sponsorship or approval of services or
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`
`
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`17
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`

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`Case 3:23-cv-01467 Document 1 Filed 12/14/23 Page 18 of 22 PageID 18
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`
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`products Avior Wealth sells and/or will sell in connection with the Infringing
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`NAVIGATOR Marks.
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`67. Avior Wealth’s activities are likely to cause great harm to Clark
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`Capital’s reputation and goodwill, if they have not done so already.
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`68. Avior Wealth has unfairly competed with Clark Capital’s
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`NAVIGATOR® Marks in interstate commerce by various acts, including using and
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`adopting and/or intending upon using the Infringing NAVIGATOR Marks in
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`connection with services identical to the Clark Capital Financial Services. This
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`unauthorized use by Avior Wealth constitutes unfair competition and false
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`designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
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`1125(a).
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`69. The activities of Avior Wealth complained of herein constitute a willful
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`and intentional tort, in derogation of Clark Capital’s rights. Acts of unfair
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`competition commenced and have continued despite Avior Wealth’s knowledge that
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`the use of the Infringing NAVIGATOR Marks in connection with its financial
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`pl

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