Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA286529
`ESTTA Tracking number:
`05/28/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92050687
`Defendant
`Malava, LLC.
`Gary J. Nelson
`Christie, Parker & Hale, LLP
`P.O. Box 7068
`Pasadena, CA 91109-7068
`UNITED STATES
`gary.nelson@cph.com
`Motion to Suspend for Civil Action
`Gary J. Nelson
`pto@cph.com, gary.nelson@cph.com
`/Gary J. Nelson/
`05/28/2009
`M1068 110 2 1 Motion to Suspend.pdf ( 76 pages )(3731575 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Innovative Beverage Group, Inc.
`
`Cancellation No. 92050687
`
`Vs_
`
`Malava, LLC
`
`Petitioner,
`
`Mark: THE ANTI-ENERGY DRINK
`
`Reg. No.:
`Issued:
`
`3,502,206
`September 16, 2008
`
`
`
`Respondent.
`
`MOTION TO SUSPEND CANCELLATION PROCEEDING
`
`Respondent Malava, LLC ("Malava"
`
`or
`
`"Respondent") moves ‘to suspend the
`
`above-captioned cancellation proceeding pending disposition of Civil Action No.
`
`'09
`
`CV0173WQH NLS filed in the United States District Court for the Southern District of
`
`California ("Federal Civil Action"). The Complaint in the Federal Civil Action alleges (1)
`
`Trademark Infringement (Lanham Act), (2) Federal Unfair Competition, False Designation of
`
`Origin, Passing Off, and False Advertising (Lanham Act), (3) False Advertising (Cal. Bus. &
`
`Prof. Code §§l7500, et seq.), and (4) Unfair Business Practices (Cal. Bus. & Prof. Code
`
`§§17200, et seq.) against Innovative Beverage Group Holdings, Inc. ("IBGH").
`
`ISSUES IN BOTH PROCEEDINGS ARE RELATED.
`
`All four Counts of the Complaint involve the alleged unauthorized use of THE ANTI-
`
`ENERGY DRINK trademark by IBGH. This is the same designation as the subject mark of
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`United States Trademark Registration No. 3,502,206 which is the registration sought to be
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`cancelled by Petitioner in this pending proceeding. A copy of the Complaint filed in the Federal
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`Civil Action has been attached as Exhibit A.
`
`

`
`Cancellation No. 92050687
`
`At least some, if not all, of the issues presented in the Federal Civil Action and the issues
`
`presented in this Cancellation involve the same dispute (i.e., Ma1ava's claim of trademark rights
`
`in the subject mark of United States Trademark Registration No. 3,502,206 and IBGH/Petition's
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`unauthorized use of THE ANTI-ENERGY DRINK trademark.
`
`THE PARTIES IN BOTH PROCEEDINGS ARE IDENTICAL OR RELATED.
`
`The plaintiff in the related Federal Civil Action and the Respondent in this cancellation
`
`proceeding are identical.
`
`The defendant in the related Federal Civil Action (i.e., IBGH) and the Petitioner (i.e.,
`
`Innovative Beverage Group, Inc.) in this cancellation proceeding are related.
`
`IBGH is a Nevada
`
`corporation with its principal place of business in Houston, Texas.
`
`See Declaration of
`
`Declaration of Peter Bianchi in Support of Motion to Stay ("Bianchi Decl.") attached hereto as
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`Exhibit B‘. According to the Bianchi Decl., IBGH is a "holding company" created to be the
`
`parent company of its other business units. One of these business units is the Petitioner, a
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`subsidiary of IBGH. See Bianchi Decl.
`
`In the Bianchi Decl., Mr. Bianchi confirms that the same management team controls both
`
`IBGH and Petitioner, and further concedes that IBGH and Petitioner are related entities. See
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`Bianchi Decl.
`
`ARGUMENT.
`
`The Board will
`
`"ordinarily"
`
`suspend proceedings in the case before it
`
`if a final
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`determination of a court proceeding "will have a bearing on the issues before the Board."
`
`Trademark, Trial and Appeal Board ("TBMP") § 5l0.02(a). See General Motors Corporation v.
`
`The document attached as Exhibit B to this motion is the Declaration of Peter Bianchi in Support of Motion
`1
`to Stay. This document, along with a related motion, was filed in the Federal Civil Action by IBGH in an attempt to
`stay the Federal Civil Action until this cancellation action has been resolved.
`
`-2-
`
`

`
`Cancellation No. 92050687
`
`Cadillac Club Fashions, Inc., 22 U.S.P.Q.2d 1933, 1937 (TTAB 1992) (TTAB suspending the
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`proceeding when the decision by the district court in a related civil action would be dispositive of
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`the case before it). Here, just as in General Motors, the issues necessarily decided by the district
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`court in resolving Federal Civil Action will affect all pending trademark issues involved in this
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`cancellation proceeding.
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`The Federal Civil Action will clarify the rights of Malava in the
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`subject mark of United States Trademark Registration No. 3,502,206, and the right of Petitioner
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`to use THE ANTI-ENERGY DRINK designation.
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`Furthermore, the filing of this cancellation proceeding is nothing more than a transparent
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`effort by IBGH/Petitioner to avoid liability for infringement of Malava's THE ANTl—ENERGY
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`DRINK trademark. This cancellation was filed after the Federal Civil Action was initiated, and
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`for the sole purpose of seeking a stay of the Federal Civil Action.
`
`This maneuver by
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`IBGH/Petitioner should fail as an inappropriate attempt to interfere with Malava's right to
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`enforce its trademark against an overt infringer. Moreover, "[t]o the extent that a civil action in a
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`Federal District Court involves issues in common with those in a proceeding before the Board,
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`the decision of the Federal District Court is binding upon the Board while the decision of the
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`Board is not binding upon the Court." TBMP § 5l0.02(a) (citations omitted). Thus, suspension
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`of this pending cancellation proceeding will promote judicial economy and the conservation of
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`1'CSOUICCS.
`
`

`
`Cancellation No. 92050687
`
`Accordingly,
`
`it
`
`is respectfully requested that all
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`further proceedings in Cancellation
`
`No. 92050687 be suspended pending disposition of the Federal Civil Action.
`
`DATED: May 28, 2009
`
`Respectfully submitted by,
`
`c‘M
`Gary J. Nel on
`
`W
`
`‘
`
`CHRISTIE, PARKER & HALE, LLP
`350 W. Colorado Blvd., Suite 500
`P. O. Box 7068
`
`Pasadena, California 91109-7068
`Telephone: (626) 795-9900
`Attorneys for Respondent
`
`

`
`Cancellation No. 92050687
`
`CERTIFICATE OF SERVICE
`
`I
`
`certify that on May 28, 2009,
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`the
`
`foregoing MOTION TO SUSPEND
`
`CANCELLATION PROCEEDING is being served by mailing a copy thereof by first—class
`
`mail addressed to:
`
`Leon David Bass
`
`David Butler
`
`CHESTER, WILLCOX & SAXBE, LLP
`65 East State Street, Suite 1000
`Columbus, OH 43215
`
`Attorneys for Petitioner
`
`By: Q }
`Colleen Severino
`
`E
`
`Assistant to Gary J. Nelson, Esq.
`CHRISTIE, PARKER & HALE, LLP
`P.O. Box 7068
`
`Pasadena, CA 91109-7068
`
`CPS PAS850350.l-‘~05/28/09 4:42 PM
`
`

`
`EXHIBIT A
`
`

`
`Ca e 3:09-CV-OO‘l73—W8H-NLS Document 1
`
`Filed 01/@2009
`
`,
`
`.1‘
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`.‘l#'«4
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`Page 1 of 63
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`I.,,..- .
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`.
`
`MAZZARELLA I CALDARELLI LLP
`
`Mark C. Mazzarella (SBN 082494)
`Michael D. Fabiano (SBN 167058)
`550 West “C” Street, Suite 700
`San Diego, California 92101
`(619) 238-4900 Telephone
`(619)238-4959 Facsimile
`
`Attorneys for Plaintiff
`MALAVA, LLC, a California limited liability company
`
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`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRIgT
`
`CALIFORNIA
`
`MALAVA, LLC, aCalifornia limited liability)Case cv 0 1 73WQH N13 ‘
`
`company,
`
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`
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`Plaintiff,
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`
`VS.
`
`INNOVATIVE BEVERAGE GROUP
`
`HOLDINGS, INC., a Nevada corporation;
`and DOES 1 through 10,
`
`Defendants.
`
`TRADEMARK INFRINGEMENT
`
`(Lanham Act)
`FEDERAL UNFAIR COMPETITION,
`FALSE DESIGNATION OF ORIGIN,
`PASSING OFF, and FALSE
`ADVERTISING (Lanham Act)
`FALSE ADVERTISING
`
`(Cal. Bus. & Prof. Code §§ 17500, et seq.)
`UNFAIR BUSINESS PRACTICES
`
`(Cal. Bus. & Prof. Code §§ 17200, et seq.)
`
`DEMAND FOR JURY TRIAL
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`
`COMPLAINT
`
`

`
`2
`
`Ca e 3:09-cv-00173-W8H-NLS Document 1
`
`Filed 01/
`
`/2009
`
`Page 2 of 63
`
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`Plaintiff MALAVA, LLC, a California limited liability company, (“Plaintiff”), hereby
`
`complains and alleges as follows:
`
`1.
`
`This is an action for trademark infiingement under the Lanham Act, 15 U.S.C.
`
`§§ 1051 et seq.; false advertising; unfair competition; and unfair business practices, all arising
`
`from Defendant’s wrongful and unauthorized use of Plaintiffs trademark and trade name,
`
`seeking preliminary and permanent injunctive relief, equitable relief, compensatory damages,
`
`treble damages, disgorgement of profits, costs, and attorneys’ fees.
`
`JURISDICTION AND VENUE
`
`2.
`
`This Court has subject matter jurisdiction herein under 28 U.S.C. §§ 1331 and
`
`1367.
`
`Personal jurisdiction‘
`
`in this district exists because Defendant has solicited and
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`conducted business within the State of California, thereby purposely availing itself of the
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`privilege of acting in the State of California, and because Defendant’s conduct has caused '
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`damage to Plaintiff in California, and because personal jurisdiction is also proper under
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`Califomia’s long—arm statute, California Code of Civil Procedure § 410.10.
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`3.
`
`Venue is proper in the United States District Court for the Southern District of
`
`California under 28 U.S.C. § l39l(b).
`
`PARTIES
`
`4.
`
`Plaintiff MALAVA, LLC, a California limited liability company, (‘Plaintiff’)
`
`is a California corporation with its principal place of business in Poway, San Diego County,
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`California. Plaintiffs flagship product, Malava Relax,
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`is a unique natural juice drink
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`enhanced with the natural herb Kava as well as a full complement of essential vitamins, and
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`designed to provide a sense of calm and clarity without loss of focus.
`
`5.
`
`Defendant
`
`INNOVATIVE BEVERAGE GROUP HOLDINGS,
`
`INC.,
`
`a
`
`(“Defendant”) is, on information and belief, a Nevada corporation with its principal place of
`
`business in Houston, Texas. Defendant, on information and belief, markets products that are
`
`similar to Plaintiff's products, to customers and potential customers, including those in the
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`State of California, via methods including but not limited to advertising _in trade-industry
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`publications of nationwide circulation and on the Internet.
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`1
`COMPLAINT
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`
`
`

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`Ca e 3:O9—c4v-00173-Wfil-NLS Document 1
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`Filed 01/32009
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`Page 3 of 63
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`6.
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`The true names and capacities of the defendants named as DOES 1 through 10,
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`inclusive, are unknown to Plaintiff, who therefore sues said defendants under such fictitious
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`names. Plaintiff is informed and believes that each of the fictitiously named defendants is
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`liable to Plaintiff on the causes of action alleged herein. Plaintiff will amend this complaint to
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`set forth the true identities of the DOE defendants when their identities have been ascertained.
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`7.
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`Plaintiff is informed and believes, and on that basis alleges, that at all times
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`relevant, defendants were the agents, alter-egos, employees, and/or co-conspirators of their
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`fellow defendants, and in doing the things alleged herein were acting within the course and
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`scope of such agency, employment, and/or conspiracy.
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`FACTS
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`8.
`
`Plaintifi‘ has been doing business since 2006, and since that time has been
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`engaged in the marketing and selling of Malava Relax, and other natural juice drinks
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`marketed using Plaintiffs trademark, The Anti-Energy Drink“.
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`9.
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`Plaintiff is the owner of the common-law trademark, and the United States
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`Trademark registration thereof, and the goodwill
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`represented by the trademark and
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`registration thereof, for the mark “The Anti-Energy Drink”.
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`(Hereinafter, the “Anti Energy
`
`Mark.”)
`
`The U.S. Trademark registration number‘ is Reg. No. 3,502,206,
`
`registered
`
`September 16, 2008, for “soft drinks, namely, juice based relaxation drinks”. A copy of this
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`United States Trademark registration is attached hereto as Exhibit A, and a certified copy
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`thereof will be filed with this Court forthwith.
`
`‘
`
`10.
`The certificate of registration attached hereto is valid and subsisting and
`records title in Plaintiff; the certificate of registration is prima facie evidence of the validity
`
`of the registration, Plaintiffs ownership of the mark, and Plaintiffs exclusive right to use the
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`mark in commerce in connection with the goods and services specified in the certificate of
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`registration .under 15 U.S.C. § 1057, and provides constructive notice of Plaintiffs claim of
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`ownership under 15 U.S.C. § 1072.
`
`11.
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`Plaintiff advertises and sells its products in interstate commerce with the Anti
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`Energy Mark and has done so continuously since February‘ 2006.
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`Plaintiff has spent
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`2
`COMPLAINT
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`

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`Ca e 3:09-cv-00173-W6l—NLS Document 1
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`Filed O1/@2009
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`Page 4 of 63
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`considerable time, money, and effort extensively promoting and using the Anti Energy Mark
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`in connection with its products. Copies of various logos and advertising materials for Malava
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`Relax and Plaintiff’ s other products are attached hereto as Exhibit B.
`
`12.
`
`As a result of Plaintiff‘ s extensive use of the Anti Energy Mark, and Plaintiffs
`
`advertising and marketing efforts, Plaintiff has successfully sold large quantities of its
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`products, which are now sold in many Whole Foods and Sam’s Club stores and other
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`prominent retail outlets in California and other states, and the Anti Energy Mark has gained
`
`widespread recognition in the marketplace.
`13.
`The Anti Energy Mark has acquired secondary meaning in the minds of the
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`relevant purchasing public, such that purchasers of sofl drinks and juice based relaxation
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`drinks, identify such goods advertised in conjunction with or marked with the Anti Energy
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`Mark as originating from a single source.
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`14.
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`Further, Plaintiffs federally-registered Anti Energy Mark is
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`inherently
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`distinctive within the market for soft drinks and juice based relaxation drinks.
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`DEFENDANT’S WRONGFUL ACTIONS
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`15.
`
`Defendant, on information and belief, has been in business since 2007, and
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`markets, distributes, and wholesales beverage products including “drank”, which Defendant
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`markets and advertises, in product labeling and in advertising, as (among other slogans), “anti
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`energy”, “the anti energy drink”, and “the world's first anti energy drink”. Copies of various
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`advertisements and press materials for “drank”, including photos of cans and logos for the
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`product, are attached hereto as Exhibit C.
`
`16.
`Defendant has deliberately chosen to misappropriate and to continue to misuse
`the Anti Energy Mark in its business. ‘Defendant is aware of Plaintiffs ownership of the Anti
`
`Energy Mark. Defendant is and has been advertising, marketing, and selling its “drank”
`
`beverage within the United States, as Plaintiff is marketing its beverages, including within this
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`judicial district, and doing so through the same channels of interstate commerce used by
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`Plaintiff,
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`including but not
`
`limited to the use of an Internet web site for advertising,
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`3
`COMPLAINT
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`
`
`

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`Ca e 3:09—cv—0O173-W8i—NLS Document 1
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`Filed O1/@2009
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`Page 5 of 63
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`marketing, and sales. Accordingly, Defendant is a competitor of Plaintiff within the market
`for soft drinks and juice based relaxation drinks.
`
`17.
`
`On information‘ and belief,
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`since approximately 2007, Defendant has
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`advertised and marketed “drank” with the slogans (among other slogans), “anti energy", “the
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`antienergy drink”, and “the world’s first anti energy drink” in interstate commerce, including
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`California and this judicial district. Defendant’s infringing advertising, product labeling, and
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`slogans infringe upon and are confusingly similar to the Anti Energy Mark.
`
`18.
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`On information and belief, there is no legitimate business reason for Defendant
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`to use the Anti Energy Mark or anything confusingly similar to it. Plaintiff sent written
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`notification to Defendant’ that Defendant’s use of the Anti Energy Mark or anything
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`confusingly similar to it violated Plaintiffs rights, and Defendant was asked to cease and
`desist its use of the Anti Energy Mark. Though Defendant initially said it would cease and
`
`desist its use of the Anti Energy Mark, Defendant failed to do so even after numerous
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`additional requests. Therefore, it is obvious that Defendant is using the Anti Energy Mark
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`with the intent to confuse and mislead customers and to unfairly capitalize on the goodwill
`
`and market recognition associated with the Anti Energy Mark.
`
`19. Widespread,
`actual
`confusion
`has
`been
`caused
`by Defendant’s
`misappropriation and Defendant’s wrongful activities. Many. customers and potential
`
`customers have made purchasing decisions in the mistaken belief that Defendant’s product
`
`“drank” was associated with Malava Relax or Plaintiffs other products.
`20.
`Defendant’s ongoing use in commerce of the Anti Energy Mark is very likely
`
`to continue to cause confusion, to cause mistake, and/or to deceive members of the public into
`
`believing that Plaintiff has sponsored or authorized Defendant’s use of the Anti Energy Mark.
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`Even worse, there has been substantial negative attention in the media to the reported bad
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`effects of consuming “drank,” and therefore the Defendant’s wrongful and willful use ofthe
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`Anti Energy Mark causes, members of the public to mistakenly associate these reported
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`harmful effects with Plaintiffs products, ‘further damaging the sales, goodwill, and
`marketability ofPlaintiffs products.
`
`4
`COMPLAINT
`
`
`
`

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`f-
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`Ca e 3:09—cv-00173-W8-l-NLS Document 1
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`Filed O1/@2009
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`Page 6 of 63
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`~.o'oo\xox:.n-tswco
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`17
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`21
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`22
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`23
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`25
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`26
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`27
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`28
`
`21.
`
`Defendant’s willful actions have the likelihood of affecting interstate
`
`commerce by deceiving or confusing the public; constitute a false designation of Defendant’s
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`goods or services by passing them off as being associated with Plaintiff; suggest that Plaintiff
`
`has sponsored, licensed, or approved of Defendant’s goods, services, or business; could cause
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`consumers to believe that the Anti Energy Mark is generic; and/or destroy or severely hann
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`the origin-identifying .function of the Anti Energy Mark.
`22.
`Plaintiff will
`likely prevail on the merits of this action due to, inter alia,
`
`Defendant’s willful, intentional, and ongoing acts of infringement, false advertising, false
`designation, passing off, and unfair competition against Plaintiff:
`In light of the federal
`
`registration of the Anti Energy Mark and Defendant’s obvious intent to confuse and mislead
`
`the public and to misappropriate the goodwill and reputation associated with the Anti Energy
`
`Mark, there is no legitimate reason or excuse for Defendant’s wrongful conduct.
`
`23.
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`The balance of the hardships and the public interest weigh heavily in favor of
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`Plaintiff, and require that Defendant immediately cease using the Anti Energy Mark, or any
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`other mark, product name, or domain name that is confusingly similar to the Anti Energy
`
`Mark, and to be enjoined from hereafier using the Anti Energy Mark, or any other mark,
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`product name, or domain name that is confusingly similar to the Anti Energy Mark, because
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`Defendant possesses the immediate ability to cease such use, and because Defendant’s
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`continued wrongful use is intended to, and will likely, confuse and mislead the public.
`
`24.
`
`Plaintiff has retained the law firm of Mazzarclla Caldarelli LLP to represent
`
`Plaintiff and to vindicate Plaintiffs rights against Defendant, and Plaintiff is obligated to pay
`
`costs incurred and to pay said firm a reasonable attorneys‘ fee for its services.
`
`2
`
`25.
`
`All conditions precedent to the maintenance of this action, if any exist, have
`
`occurred, been performed, or been excused or waived.
`
`FIRST CLAIM FOR RELIEF
`
`Federal Trademark Infringement
`
`26.
`
`Plaintiff realleges and incorporates by reference the allegations of paragraphs 1
`
`through 25 of this Complaint as if fully ‘set forth herein.
`
`5
`COMPLAINT
`
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`

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`C e 3:09-cv-00173-W6-I-NLS Document 1
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`Filed O1/@2009
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`Page 7 of 63
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`27.
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`Defendant's wrongful use and misappropriation of the Anti Energy Mark is
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`likely to cause confusion as to sponsorship or authorization by Plaintiff, or alternatively,
`
`destroy the origin-identifying function of the Anti Energy Mark. Defendant's aforementioned
`
`acts constitute trademark infringement in violation of the Lanham Act, 15 U.S.C. §§ 1114, et
`
`seq-
`
`I
`
`28.
`
`Plaintiff has suffered, and continues to suffer, actual and consequential
`
`damages as a proximate result of Defendant‘s wrongful acts, as set forth herein. Plaintiffs
`
`damages include loss of customer sales, loss of goodwill and reputation, and profits earned by
`
`Defendant in connection with Defendant's wrongful conduct.
`
`29.
`
`As a proximate result of Defendant’s actions, Plaintiff has suffered and will
`
`continue to suffer great damage to its business, goodwill, reputation, profits, and the strength
`
`of its trademark. The injury to Plaintiff is ongoing and irreparable. An award of monetary
`
`damages alone cannot fully compensate Plaintiff for its injuries, and Plaintiff lacks a fully
`
`adequate remedy at law.
`
`A
`
`30.
`
`The acts of infringement set forth herein have been and continue to be
`
`\OOO~JO\UI-Sh-U-VIN.)
`
`10
`
`ll
`
`12
`
`13
`
`14
`
`15
`
`-16
`
`deliberate, willful, and wanton, making this an “exceptional case” within the meaning of 15
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22.
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28'
`
`U.S.C. § 1117..
`31.
`Plaintiff
`
`is entitled to preliminary and permanent
`
`injunctions against
`
`Defendant, as well as all other remedies available under the Lanham Act, including but not
`
`limited to compensatory damages, treble damages, disgorgement of profits, and costs and
`
`attorneys’ fees.
`
`SECOND CLAIM FOR RELIEF
`
`Federal Unfair Competition, False Designation of Origin, Passing Off
`
`and False Advertising
`
`32.
`
`Plaintiff realleges and incorporates by reference the allegations of paragraphs 1
`
`through 31 of this Complaint as if fully set forth herein.‘
`
`33.
`
`The Anti Energy Mark, as used by Plaintiff in connection with providing
`
`goods and services relating to soft drinks and juice based relaxation drinks, is a distinctive
`
`6
`COMPLAINT
`
`
`
`

`
`Ca e 3:09-cv-00173-W8-I-NLS Document 1
`
`Filed 01/#2009
`
`Page 8 of 63
`
`y...
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`mark and has become associated with Plaintiff, and thus exclusively identifies Plaintiffs
`
`business, products, and services.
`
`34.
`
`Because of Defendant’s wrongful use of the Anti Energy Mark, consumers are
`
`deceptively led to believe that Defendantfs goods and services originate with or are sponsored
`
`or otherwise approved by Plaintiff, in violation of section 43(a) of the Lanham Act, 15 U.S.C.
`
`§ 1125(a), or alternatively, will cause consumers to believe that the Anti Energy Mark is
`
`generic, thus destroying the goodwill, reputation, and value Plaintiff has built with the Anti
`
`Energy Mark.
`
`35.
`
`The foregoing acts and conduct by Defendant constitute false designation of
`
`origin, passing off, and false advertising in connection with products and services distributed
`
`in interstate commerce, in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`36.,
`
`Plaintiff has suffered, and continues to suffer, actual and consequential
`
`damages as a proximate result of Defendant’s wrongful acts, as set forth herein. Plaintiffs
`
`damages include loss of customer sales, loss of goodwill and reputation, and profits earned by
`
`Defendant in connection with Defendant’s wrongful conduct.
`
`37.
`
`Defendant’s acts, as set
`
`forth herein, have caused irreparable injury to
`
`Plaintiffs goodwill and reputation. The injury to Plaintiff is ongoing and irreparable. An
`
`award of monetary damages alone cannot fully compensate Plaintiff for its injuries, and
`
`Plaintiff lacks a fully adequate remedy at law.
`
`38.
`
`Plaintiff
`
`is entitled to preliminary and permanent
`
`injunctions against
`
`Defendant, as well as all other remedies available under the Lanham Act, including but not
`limited to compensatory damages, treble damages, disgorgement of profits, and costs and
`
`attorneys’ fees.
`
`THIRD CLAIM FOR RELIEF
`
`False Advertising
`
`(Cal. Bus. & Prof. Code §§ 17500 et seq.)
`
`39.
`
`Plaintiff realleges and incorporates by reference the allegations of paragraphs 1
`
`through 38 of this Complaint as if fully set forth herein.
`
`7
`COMPLAINT
`
`
`
`

`
`
`
`Ca e 3:09-CV-00173-W6-l-NLS Document 1
`
`Filed O1/@2009
`
`Page 9 of 63
`
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`40.
`
`On infonnation and belief, Defendant has committed, continues to commit, and
`
`will in the future commit, acts of false and misleading advertising, as defined by California
`
`Business and Professions Code (“Cal. Bus. & Prof. Code”) sections 17500, et seq., by
`
`engaging in the acts and practices described herein with intent to induce members of the
`
`public to purchase‘Defendant’s goods and services.
`
`41.
`
`' Defendants knew, or in the exercise of reasonable care should have known,
`
`that their advertisements were false and misleading as described herein.
`
`42.
`
`Said false and misleading advertisements were directed, continue to be
`
`directed, and will
`
`in the future be directed, by Defendants at consumers in the State of
`
`California, as well as other markets.
`43.
`Plaintiff is informed and believes that the acts of Defendant described herein
`
`are ongoing and that Defendant will continue to engage in false and misleading advertising in
`
`violation of Cal. Bus. & Prof. Code §§ 17500, e! seq., unless and until restrained. These acts
`
`of false and misleading advertising present a continuing harm to Plaintiff and members of the
`
`public. Accordingly, Plaintiff, on its own behalf and that of the public, seeks an injunction
`
`preventing Defendant from continuing to engage in the false advertising described herein.
`
`FOURTH CLAIM FOR RELIEF
`
`Unfair Business Practices
`
`(Cal. Bus. & Prof. Code §§ 17200 et seq.)
`
`44.
`
`Plaintiff realleges and incorporates by reference the allegations of paragraphs 1
`
`through 43 of this Complaint as if fully set forth herein.
`
`45.
`
`The conduct of Defendant described herein constitutes unlawful, unfair, and
`
`fraudulent business practices within the meaning of Cal. Bus. & Prof. Code §§ 17200, et seq.
`
`46.
`
`The acts of Defendant described herein are unlawful because they violate
`
`numerous state and federal statutes and regulations, including but not limited to the Lanham
`
`Act, 15 U.S.C. §§ 1051, et seq., and Cal. Bus. & Prof. Code §§ 17500, et seq.
`47.
`Plaintiff is informed and believes that the acts of Defendant described herein
`
`are ongoing and that Defendant will continue to engage in unfair business practices in
`
`8
`COMPLAINT
`
`
`
`

`
`Ca
`
`3:O9—cv-00173-WW-NLS Document1
`
`Filed O1/28009
`
`Page10 of 63
`
`.-I
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`©\D0O\lO\UI-bl)->l\)
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`violation of Cal. Bus. & Prof. Code §§ 17200, et seq. unless and until restrained. These unfair
`
`business practices present a continuing harm to Plaintiff and members of the public.
`
`Accordingly, Plaintiff, on its own behalf and that of the public, seeks an injunction preventing
`
`Defendant from continuing to engage in the unfair business practices described herein.
`
`PRAYER FOR RELIEF
`
`Wherefore, Plaintiff prays for relief as follows:
`
`1.
`
`For an order that Defendant, its officers, directors, agents, servants, employees,
`
`and all
`
`those in active concert or participation with Defendant, be preliminarily and
`
`permanently enjoined from:
`
`(a) using the Anti Energy Mark, or any other mark, product name, or domain
`
`name that
`
`is confusingly similar to the Anti Energy Mark,
`
`in any way whatsoever in
`
`connection with the promotion, marketing, advertising, selling, public relations and/or
`
`operation of Defendant’s businesses, or any of them, or any other such business promoting,
`
`marketing, advertising and/or selling soft drinks including but not limited to juice based
`
`relaxation drinks;
`(b) diluting, blurring, passing off, or falsely designating the origin of the Anti
`
`Energy Mark, and from injuring Plaintiffs goodwill and reputation;
`
`(c) engaging in any other act or conduct
`
`likely to induce the belief that
`
`Defendant’s businesses, products, or services are in’ any way connected with, sponsored,
`
`affiliated, licensed, or endorsed by Plaintiff, or vice versa;
`
`(d) using the Anti Energy Mark, or any other mark, product name, or domain
`
`name that is confusingly similar to the Anti Energy Mark, for goods or services, or on the
`
`Internet, or as domain names, e-mail addresses, meta tags,
`
`invisible data, or otherwise
`
`engaging in acts or conduct that would cause confusion as to the source, sponsorship,
`
`affiliation, licensing, or endorsement of Defendant with that of Plaintiff;
`
`(e) any acts of false or misleading advertising or any unfair business practices
`
`that use or refer to the Anti Energy Mark, or any other mark, product name, or domain name
`
`9
`COMPLAINT
`
`

`
`Ca
`
`3:09-cv—OO173_-WW-NLS Document 1
`
`Filed 01/W009
`
`Page 11 of 63
`
`that is confusingly similar to the Anti Energy Mark, or Plaintiffs products and services, or
`
`that are likely to induce the belief that Defendant’s businesses, products, or services are in any
`
`way connected with, sponsored, affiliated, licensed, or endorsed by Plaintiff, or vice versa.
`
`2.
`
`For an order that Defendant,
`
`in accordance with 15 U.S.C. § 11l6(a), be
`
`._n
`
`2 3
`
`4
`
`S
`directed to file with this Court and serve upon Plaintiff, within thirty (30) days after service of
`6 2 the permanent injunction, a report in writing and under oath, setting forth the manner and
`
`7
`
`8
`
`9
`
`form in which Defendant has complied with the permanent injunction.
`
`3.
`
`4.
`
`For actual damages sustained as a result of Defendant’s wrongful actions.
`
`For recovery of Defendant’s profits made as a result of Defendant’s wrongful
`
`10
`
`conduct.
`
`11
`
`5.
`
`For recovery of three times Defendant’s profits made as a result of Defendant’s
`
`12 wrongful actions or three times Plaintiff's actual damages, whichever is greater.
`
`13
`
`14
`
`6.
`
`That this case be deemed an “exceptional case” under 15 U.S.C. §§ l1l7(a)
`
`and (b), and that Defendant be deemed liable for and ordered to reimburse Plaintiff for its
`
`15
`
`reasonable attorneys’ fees.
`
`16
`17
`2 18
`19
`20
`
`7.
`That Plaintiff recover its costs of suit and its attorneys’ fees to the fullest extent
`allowed by law.
`4
`8.
`For such other and further relief as the Court may deem just and proper.
`.
`. DEMAND FOR JURY TRIAI:
`Plaintiff hereby demands a trial by jury on all issues in this action that are so triable.
`
`21
`22 Dated: January 29, 2009
`
`2
`
`«
`
`p
`MAZZARELLA I CALDARELLI LLP
`
`23
`
`24
`25
`
`25
`27 ‘.
`
`28
`
`
`
`By;
`
`MICHAEL . FABIANO
`Attorneys for Plaintiff MALAVA, LLC, a
`California limited liability company
`l
`
`
`
`10
`
`COMPLAINT
`
`

`
`Case 3:09-cv-00173-‘WW-NLS Documefit 1
`
`Filed O1/%OO9
`
`Page 12 of 63
`
`I
`
`TABLE OF CONTENTS OF EXHIBITS
`TO COMPLAINT
`
`
`
`
`
`EXHIBIT NUMBER
`
`PAGE NUIVIBER
`
`

`
`F
`
`.
`
`Case 3:09-cv-00173-W81—NLS Document‘!
`
`Filed 01/
`
`’2009
`
`Page13 of63
`
`EXHIBIT A
`
`

`
`Case 3:O9—cv—OO173—Ww—NLS Document 1
`
`4.’
`
`Filed O1/W009
`
`Page 14 of 63
`
`‘V
`
`Int. Cl.:32
`
`Pfior U.S. Cls.: 45, 46, and 48
`United States Patent and Trademark Office;
`
`Reg. No. 3,502,106
`Registered Sep; 15, zoos
`
`PRINCIPALAREGISIER
`
`—
`
`{he anti-energy drink
`
`MALAVA. LLC. (OAUFORNIA LIMITED LlABI-
`LITY COMPANY)
`15725 POMERADO RD. #212
`rowm. CA 92o§4
`
`FOR: SOFI‘ DRINKS; SOFT DR.tNKS, NAMELY,
`JUICE BASED RELAXATION DRINKS, IN CLASS 32
`(U3. .CLS. 45. 46 AND 48).
`'
`
`‘
`
`CONSISTS OF STANDARD CHAR-
`THE
`ACFERS wrmour CLAIM TO ANY PARITCULAR
`FONT. STYLE, sxza, on COLOR.
`‘
`
`NO CLAIM IS MADE TO THE EXCLUSIVE .
`RIGHT TO USE "DRINK". APART FROM THE >
`MARK. AS SHOWN.
`
`SN 77-027.600, FILED I0-23-2006.
`
`FIRST USE 1-0-2007: IN ®MMERCE 1-0-2007.
`
`Roszmz HERRERA. EXAMINING Arfonnizv
`
`.
`
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`
`
`
`
`
`Exhibit A — 001
`
`

`
`Case g3:09—cv—0O173-W8-NLS Document 1
`.‘
`
`Filed 01/%OO9
`X
`’l
`
`Page 15 of 63
`.
`
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`
`REQUIREMENTS To MAINTAIN Y