Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA373435
`ESTTA Tracking number:
`10/15/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92051115
`Plaintiff
`Playdom, Inc.
`Derek A. Eletich
`Law Office of Derek A. Eletich
`155 Forest Avenue
`Palo Alto, CA 94301
`UNITED STATES
`derek@eletichlaw.com
`Motion to Suspend for Civil Action
`Derek A. Eletich
`derek@eletichlaw.com
`/Derek A. Eletich/
`10/15/2010
`Motion.pdf ( 3 pages )(162579 bytes )
`Exhibit A.pdf ( 30 pages )(937777 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 3560701
`For the Mark PLAYDOM
`
`Issued on January 13, 2009
`
`PLAYDOM, INC.,
`
`VS.
`
`DAVID COUTURE,
`
`Petitioner,
`
`Registrant.
`
`\y\/\/\/\/\/g/g/xa
`
`Cancellation No. 92051115
`
`PETITIONER'S MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION
`
`Petitioner PLAYDOM, INC. (“Playdom”) respectfully requests that the Board suspend
`
`this cancellation proceeding pending final disposition of a civil action before the U.S. District
`
`Court for the District ofNew Hampshire, David Couture v. Playdom, Ina, Civil Action No. 10-
`
`CV-440 (the “Action”), which was filed by Registrant DAVID COUTURE (“Couture”) against
`
`Playdom on September 28, 2010. See Trademark Rule 2.l27(a) and 2.117(a), 37 C.F.R §§
`
`2.l27(a) and 2.1l7(a). A true and correct copy of Complaint and Civil Cover Sheet filed by
`
`Couture in the Action are attached as Exhibit A hereto.
`
`Both Playdom and Couture are parties to the Action, which involves common issues of
`law and fact that may have a bearing on this cancellation proceeding. In particular, the Action
`
`involves claims of; among other things, trademark infringement, false designation of origin, and
`
`common law trademark infringement concerning the marks and services at issue in this case.
`
`Further, in the Action, Couture has alleged rights in U.S. Registration No. 3560701, which is the
`
`subject of this cancellation proceeding. In View of the common issues of law and fact between
`
`

`
`Cancellation No. 92051115 — Page 2
`
`the Action and the pending cancellation proceeding, any decision of the district court may have a
`
`bearing on the outcome ofthis case. See TBMP § 510.
`
`Accordingly, Playdom respectfully requests that this cancellation proceeding be
`
`suspended pending final determination ofthe Action. Playdom respectfully requests that, upon
`
`resumption of this cancellation proceeding, Playdom’s testimony period be reset for a period of
`
`thirty (30) days from the mailing date of the Board’ s res
`
`
`
`EK A. ELETICH
`
`"D
`
`Dated: October 15, 2010
`
`Law Office of Derek A. Eletich
`155 Forest Avenue
`
`Palo Alto, CA 94301-1615
`
`Telephone:
`E-rnail:
`
`(650) 804-1484
`derek@eletichlaw.com
`
`Attorney for Petitioner
`PLAYDOM, INC.
`
`

`
`Cancellation No. 92051115 — Page 3
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PETITIONER'S
`
`MOTION TO SUSPEND PROCEEDINGS FOR CIVIL ACTION has been served upon the
`
`attorney for Registrant by depositing same with the United States Postal Service as first class
`
`mail in an envelope addressed as follows on October 15, 2010:
`
`Richard N. Foley
`55 Market Street, Suite 2B
`
`Portsmouth, NH 03 801
`
`U._.z.(L£-
`
`DEREK A. ELETICH
`
`

`
`«*JS 44 (Rev. 12/07)
`
`Case 1:10-cv-00440 Document 1-1 Filed 09/28/10 Page 1 of 1
`CIVIL COVER SHEET
`
`The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided
`by local rules of court. This form, approved by the Judicial Conference ofthe United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiating
`the civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM)
`
`I. (a) P L A I N T I F F S
`
`DEFENDANT U | M R ( m
`Oi:-: {iOTOFii.H.
`
`(b) County of Residence of First Listed Plaintiff
`/-.6'\
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`/f'/)/'£"f^LfeY
`
`r ^ Y y / T ^
`County of Residence of First Listed Defendant
`2010 '3®V.f^ApWl£A&$.Ok,Y)
`?flln
`'mJU.® fLAINWFB CASES.ONUf)
`NOTE: IN LAND CONDEMNATION CASES; USE THE LOCATION OF THE
`LAND INVOLVED.
`
`^/.AfCn
`
`(c) Attorney's (Finn Name, Address, and Telephone Number)
`
`-i
`
`/
`
`Attorneys (If Known)
`
`II.
`
`BASISOF jtMSDICT
`S D I C T I O N
`
`(Place an "X" in One Box Only)
`
`0 1 US Government
`Plaintiff
`
`Sl/3 Federal Question
`y ^
`(U.S. Government Not a Party)
`
`-r
`
`^ • T
`i f t . C l f I Z E ' N S H I P O F P R I N C I P A L PARTIES(Place an "X in One Box for Plaintiff
`(For Diversity Cases Only)
`and One Box for Defendant)
`PTF DEF
`PTF DEF
`• 1 O 1
`0 4 D 4
`
`Citizen of This State
`
`Incorporated or Principal Place
`of Business In This State
`
`O 2 U S. Government
`Defendant
`
`• 4 Diversity
`(Indicate Citizenship of Parties in Item ID)
`
`Citizen of Another State
`
`jqi-a 2
`
`Incorporated and Principal Place
`of Busmess In Another State
`
`• 5 5 / ^
`
`Citizen or Subject of a
`Foreign Country
`
`• 3
`
`0 3 Foreign Nation
`
`• 6 D 6
`
`I V . N A T U R E O F S U I T
`(Place an "X" in One Box Only)
`iv:-? ^H->mm>em.cr^e9-*m • .-•' ,.'s->!»'-it-.'."^''v^nsfflHcs-< - - • *• *.' V ' > v-.FOR»smsMMNMan» tW^iMdffiffiS&MESMii'iW'*-
`PERSONAL INJURY
`PERSONAL INJURY
`• 610 Agnculture
`O 422 Appeal 28 USC 158
`0 110 Insurance
`• 423 Withdrawal
`362 Personal Injury -
`O 620 Other Food & Drug
`0 120 Marine
`O 310 Airplane
`O 130 Miller Act
`O 315 Airplane Product
`Med Malpractice
`• 625 Drag Related Seizure
`28 USC 157
`Liability
`Liability
`Liability
`
`
`O 365 Personal Injury -O 365 Personal Injury -O 365 Personal Injury -
`
`
`ofProperty21USC881 ofProperty21USC881 ofProperty21USC881
`O 140 Negotiable Instrument
`
`
`O 320 Assault, Libel & O 320 Assault, Libel & O 320 Assault, Libel &
`
`
`Product Liability Product Liability Product Liability
`
`
`• 630 Liquor Laws • 630 Liquor Laws • 630 Liquor Laws
`O 150 Recovery of Overpayment
`
`
`• 640 R.R. & Truck • 640 R.R. & Truck • 640 R.R. & Truck
`
`
`Slander Slander Slander
`
`
`O 368 Asbestos Personal O 368 Asbestos Personal O 368 Asbestos Personal
`& Enforcement of Judgment
`• 650 Airline Regs
`O 330 Federal Employers'
`Injury Product
`O 151 Medicare Act
`O 152 Recovery of Defaulted
`Liability
`• 660 Occupational
`Liability
`PERSONAL PROPERTY
`O 340 Manne
`Safety/Health
`Student Loans
`• 690 Other
`O 345 Manne Product
`O 345 Manne Product
`O 345 Manne Product
`(Excl Veterans)
`
`
`
`
`• • •
`370 Other Fraud 370 Other Fraud 370 Other Fraud
`
`
`• • •
`
`
`371 Truth in Lending 371 Truth in Lending 371 Truth in Lending
`Liability
`Liability
`Liability
`• 153 Recovery of Overpayment
`mmmkmjskBm'..:-?.'.,-
`
`
`• • •
`
`
`380 Other Personal 380 Other Personal 380 Other Personal
`• 710 Fair Labor Standards
`O 350 Motor Vehicle
`O 350 Motor Vehicle
`O 350 Motor Vehicle
`of Veteran's Benefits
`Property Damage
`O 355 Motor Vehicle
`O 160 Stockholders' Suits
`Act
`385 Property Damage
`O 720 Labor/Mgmt Relations
`O 190 Other Contract
`Product Liability
`• 730 Labor/Mgmt Reporting
`O 195 Contract Product Liability D 360 Other Personal
`Product Liabdity
`& Disclosure Act
`& Disclosure Act
`& Disclosure Act
`O 196 Franchise
`Injury
`ll^liiMWMBfflMRIBiWIB
`
`
`• 740 Railway Labor Act • 740 Railway Labor Act • 740 Railway Labor Act
`O 510 Motions to Vacate
`441 Voting
`•
`
`
`• 790 Other Labor Legation • 790 Other Labor Legation • 790 Other Labor Legation
`O 210 Land Condemnation
`O 442 Employment
`Sentence
`O 220 Foreclosure
`• 791 Empl. Ret. Inc.
`Habeas Corpus:
`O 230 Rent Lease & Ejectment O 443 Housing/
`Security Act
`Accommodadons
`0 240 Torts to Land
`Accommodadons
`
`
`O 530 General O 530 General O 530 General
`Accommodadons
`mmwmMiemmmi'Pf-^
`
`
`444 Welfare 444 Welfare 444 Welfare
`
`
`
`
`• • •
`535 Death Penalty 535 Death Penalty 535 Death Penalty
`• 245 Tort Product Liability
`
`
`• • •
`
`
`540 Mandamus & Other 540 Mandamus & Other 540 Mandamus & Other O 462 Naturalization Apphcation
`
`
`445 Amer. w/Disabilities -445 Amer. w/Disabilities -445 Amer. w/Disabilities -
`0 290 All Other Real Property
`O 550 Civil Rights
`Employment
`• 463 Habeas Corpus -
`446 Amer w/Disabilities - O 555 Prison Condition
`Alien Detamee
`Other
`• 465 Other Immigration
`O 440 Other Civil Rights
`Actions
`
`? l * - S > R . § t * M S i R I « H l [ W ^ '
`O 820 Copyrights
`n 830 Patent
`hj 840 Trademark
`. r\
`
`^ ^ V;*SO«MIS»lPeMT¥• >'.: -X
`•
`861HIA(1395ff)
`• 862 Black Lung (923)
`• 863 DIWC/DIWW (405(g))
`• 864 SSID Title XVI
`• 865 RSI (405(g))
`• SWSftB^^^^SSSWES!^
`O 870 Taxes (U S. Plaintiff
`or Defendant)
`• 871 IRS—Third Party
`
`26 USC 7609 26 USC 7609
`26 USC 7609
`
`.\> 1
`
`maMmB^&ga&cmes
`• 400 State Reapportionment
`o 410 Antitrust
`a 430 Banks and Banking
`
`
`a a a
`450 Commerce
`
`
`a a a
`460 Deportation
`
`
`o o o 470 Racketeer Influenced and
`Corrupt Organizations
`o 480 Consumer Credit
`• 490 Cable/Sat TV
`
`
`• • •
`810 Selective Service
`
`
`• • 850 Securities/Commodities/ •
`Exchange
`• 875 Customer Challenge
`12 USC 3410
`• 890 Other Statutory Actions
`
`
`• • •
`891 Agricultural Acts
`
`
`o o o
`892 Economic Stabilization Act
`
`
`o o o 893 Environmental Matters
`• 894 Energy Allocation Act
`• 895 Freedom of Information
`Act
`
`
`• • 900Appeal of Fee Determination •
`Under Equal Access
`to Justice
`• 950 Constitutionality of
`State Statutes
`
`•
`
`•
`
`
`
`• • •
`
`
`• • •
`
`•
`
`\r\ O R I G I N
`Original
`Proceeding
`
`•
`
`(Place an "X" in One Box Only)
`2 Removed
`from
`•
`State Court
`
`t £ . 0
`5 I ^ h ? ^ d
`^ ^ S A
`(specify)
`Cite,the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
`ite-me U.S. Uivil statute under which you are tiling (Do no
`
`from
`3 Remanded
`Appellate Court
`
`• 4 Reinstated or
`Reopened
`
`•
`.
`
`m
`
`t
`
`• 6 Multidistrict
`Litigation
`
`•
`
`Appeal to District
`7 M ^ ^ T
`Magistrate
`Judgment
`
`VI. CAUSE OF ACTION
`
`;rieT description of cause:
`
`VII. REQUESTED IN
`C O M P L A I N T :
`
`O CHECK IF THIS IS A CLASS ACTION
`UNDER F.R.C.P. 23
`
`DEMANDS
`
`VIII. RELATED CASE(S)
`IF ANY
`
`(See instructions).
`
`JUDGE
`
`DATE
`
`<*j>//f
`
`FCflfOFFiae USE ONLY
`
`SIGNATURE OF ATTORNEY OF RECORD
`
`CHECK YES only if demanded in complaint'
`JURY DEMAND:
`
`• Yes
`
`O No
`
`DOCKET NUMBER
`
`RECEIPT*
`
`AMOUNT
`
`APPLYING IFP
`
`JUDGE
`
`MAG. JUDGE
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 1 of 29
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE DISTRICT OF NEW HAMPSHIRE
`
`U S OtSTPiCT rOURT
`
`, IL L J
`
`DAVID COUTURE
`
`Plaintiff
`
`v.
`
`PLAYDOM, INC.
`a Delaware corporation
`
`Defendant
`
`/ 0
`
`-cu-yyo
`
`COMPLAINT
`
`Plaintiff David Couture ("David Couture" or "Plaintiff) hereby files this
`
`Complaint on personal knowledge as to his activities and on information and belief as to
`
`the activities of others:
`
`INTRODUCTION
`
`David Couture is an individual who has been working in the entertainment
`
`industry since 2003. He has been advertising and actively offering entertainment services
`
`for television, film, and new media (digital media transmitted over multiple platforms)
`
`using the PLAYDOM mark since May 30, 2008. Mr. Couture chose "Playdom" as a
`
`combination of "play dumb" and the word "kingdom." In addition, he uses the slogan
`
`"Where Comedy is King" to drive home the connection and uses one cohesive logo that
`
`consists of a court jester hat and a king's crown (below).
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 2 of 29
`
`The defendant named here adopted the corporate name "Playdom, Inc." and the
`
`website www.Playdom.com with complete disregard for Plaintiff's trademark rights. In
`
`addition, the defendant applied for the identical MARK with the United States Patent and
`
`Trademark Office under the identical International and/or U.S. codes as the one legally
`
`registered and maintained by Plaintiff (below).
`
`PLAYDOM
`
`PLAYDOM
`
`The U.S.P.T.O. DENIED the defendant's application
`
`When a cease and desist letter by the plaintiff was sent in a timely manner,
`
`Plaintiff was rebuffed.
`
`Since then, Defendant has attempted to bully Plaintiff with false accusations of
`
`fraud, threats of legal action and lies in an attempt to force Plaintiff to abandon his
`
`rightful claim to the PLAYDOM mark. Since the adoption of the Infringing Trademark,
`
`Defendant has buried Plaintiff's legally registered and maintained trademark in a sea of
`
`infringement.
`
`While the defendant has tried to dismiss Plaintiff's use of the PLAYDOM mark
`
`as fraud, the U.S.P.T.O. has thus far their claims in ruling against Defendant's Motion for
`
`Summary Judgment in association with the defendant's Petition for Cancellation of
`
`Plaintiff's PLAYDOM mark.
`
`More recently, the defendant has announced the sale of their company along with
`
`their website www.Plavdom.com and all the assets marketed under the Infringing Mark
`
`2
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 3 of 29
`
`and all products and services offered and sold under the Infringing Mark. Accordingly,
`
`David Couture has no choice but to commence this action to prevent the unjust
`
`enrichment of a willful infringer, and to protect his PLAYDOM® brand and trademark
`
`from increased consumer confusion.
`
`PARTIES
`
`1. Plaintiff has maintained a website available on the World Wide Web with an
`
`Internet address resolving at the Uniform Resource Locater ("URL")
`
`www.PlaydomInc.com since May 30, 2008. After the willful infringement by Defendant,
`
`Plaintiff was forced to adopt an Internet address resolving at the Uniform Resource
`
`Locator ("URL") www.PlaydomEntertainment.com (while still actively using
`
`www.PlaydomInc.coml to differentiate his services from Defendant's.
`
`2. Defendant Playdom, Inc., formally doing business as YouPlus, is a corporation
`
`organized in Delaware and California and having a principal place of business at 100 W.
`
`Evelyn Ave., Suite 110 Mountain View, California 94041. Playdom, Inc. also maintains
`
`a website on the World Wide Web with an Internet address resolving at the Uniform
`
`Resource Locator ("URL") www.Playdom.com.
`
`JURISDICTION AND VENUE
`
`3. This Court has original subject matter jurisdiction over Plaintiff's claims
`
`pursuant to 28 U.S.C. §§ 1331 and 1338 and 15 U.S.C. §§ 1116 and 1121. This Court
`
`has supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367.
`
`4. This Court has personal jurisdiction over Defendant in that they do business
`
`3
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 4 of 29
`
`and in this District.
`
`5. Venue is appropriate in this judicial district under 28 U.S.C. § 1391 in that
`
`Defendant is subject to personal jurisdiction by reason of their pervasive Internet
`
`presence.
`
`BACKGROUND FACTS
`
`6. David Couture, and at times his Agent, has been offering his services in the
`
`entertainment industry since 2003. His services have been advertised and offered in
`
`conjunction with the PLAYDOM mark since May 30, 2008. Plaintiff currently has
`
`projects in consideration at 20tb Centry Fox Television, ABC Studios, and FX Network.
`
`7. David Couture is the owner of the entire right, title and interest in and to, inter
`
`alia, the following federally-registered trademark:
`
`Registration Number
`3,560,701
`
`Trademark
`PLAYDOM
`
`Goods and Services
`Entertainment and educational services,
`namely, providing advice and information
`for music, video and film concept and
`script development; Entertainment
`services, namely, a multimedia program
`series featuring comedy, action and
`adventure distributed via various
`platforms across multiple forms of
`transmission media; Motion picture film
`production; Production of television
`programs; Script writing services;
`Scriptwriting services.
`
`8. Attached to this complaint as Exhibit A is a true copy of printouts from the
`
`United States Patent and Trademark Office ("USPTO") website evidencing Plaintiff's
`
`ownership of this trademark. The registration in Exhibit A is valid, subsisting,
`
`4
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 5 of 29
`
`unrevoked, uncancelled, and incontestable.
`
`9. This registered trademark is referred to as "PLAYDOM Trademark" or
`
`"PLAYDOM mark."
`
`10. The PLAYDOM Trademark has been promoted both in the United States and
`
`throughout the world via the World Wide Web.
`
`11. The PLAYDOM mark has also been advertised with business cards that
`
`reference Plaintiff's website and distributed for the purpose of offering his entertainment
`
`services associated with the PLAYDOM trademark.
`
`12. Plaintiff has used the email address playdonKSmac.com, utilizing the
`
`PLAYDOM Trademark, in association with entertainment services.
`
`Defendant's Conduct
`
`13. On February 9, 2009, Defendant filed for Trademark Application, (Serial
`
`Number 77666627), under IB filing status despite prior "use in commerce" of Plaintiff's
`
`Trademark (the "Infringing Trademark") and despite Plaintiff's identical federally-
`
`registered trademark for identical services and services in a closely related industry,
`
`namely online interactive entertainment. In addition, Plaintiff's website,
`
`"www.Playdominc.com." appeared at or near the top position of the search engine results
`
`through a simple search for Plaintiff's mark "PLAYDOM" using major search engines
`
`including but not limited to Google and Yahoo.
`
`14. As shown below, Defendant has advertised and offered for sale and or sold
`
`their "virtual goods" and services using the Infringing Trademark. They utilized a
`
`confusingly similar slogan "Where players rule," which has similar sentence structure
`
`and evokes the same theme of "kingdom" as Plaintiff's slogan "Where Comedy is King."
`
`5
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 6 of 29
`
`Defendant also incorporates a crown into their logo.
`
`15. On April 28, 2010, Defendant's Attorney responded to Plaintiff's cease and
`
`desist letter. They disagreed that there was any potential for consumer confusion or
`
`infringement and claimed that Defendant and Plaintiff's services were clearly different.
`
`Defendant's Attorney attempted to get permission for the use of Defendant's Infringing
`
`Trademark and attempted to intimidate Plaintiff with accusations of fraud on the
`
`Trademark Office.
`
`16. On April 30, 2010, Defendant's application for the Infringing Trademark
`
`was refused by the United States Patent and Trademark Office because of a likelihood of
`
`confusion with the mark in U.S. Registration No. 3560701. Trademark Act Section 2(d),
`
`15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
`
`17. Undeterred, on June 15, 2009, Defendant filed for Cancellation of
`
`Registrant's registered, legal, and maintained trademark.
`
`6
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 7 of 29
`
`18. On February 18, 2010, Defendant filed a motion for Summary Judgment.
`
`19. On June 23, 2010, The United States Patent and Trademark Office denied
`
`Defendant's motion for Summary Judgment.
`
`FIRST CLAIM FOR RELIEF
`
`(Trademark Infringement - 1 5 U.S.C. § 1114)
`
`20. Plaintiff hereby realleges and incorporates by reference the preceding
`
`allegations of this Complaint as if full set forth herein.
`
`21. The PLAYDOM Trademark has been used to advertise and offer Plaintiff's
`
`entertainment services since May 30, 2008 through www.PlaydomInc.com and more
`
`recently through www.Play domEntertainment. com. A keyword search for "playdom" in
`
`the major Internet search engines produced Plaintiff's website address,
`
`www.PlaydomInc.com, in first position prior to Defendant's use of the Infringing
`
`Trademark.
`
`22. Without Plaintiff's authorization or consent, and presumed knowledge of
`
`Plaintiff's federally registered trademark and website address mentioned therein, and the
`
`fact that Defendant's Infringing Website, www.Playdom.com, is identical to the
`
`PLAYDOM Trademark, Defendant has intentionally and knowingly advertised and
`
`offered for sale and sold "virtual goods," services and software using the Infringing
`
`Trademark in direct and indirect competition with Plaintiff's genuine offering of services,
`
`in or affecting interstate commerce.
`
`23. Defendant's use of the Infringing Trademark is likely to cause and is causing
`
`confusion, mistake and deception among the general purchasing public and purchasing
`
`business entities as to the connection between Plaintiff and Defendant and their services.
`
`7
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 8 of 29
`
`Since Plaintiff has received inquiries regarding Defendant's business practices, it is fair
`
`to say that Plaintiff easily could have lost potential business due to consumer confusion.
`
`24. Defendant's use of Infringing Trademark is likely to cause and is causing
`
`confusion because Defendant has and continues to operate in the same channels of
`
`business, selling services and or goods to companies including but not limited to NBC
`
`Universal and Disney/ABC/ESPN.
`
`25. As a result of Defendant's activities, Plaintiff has been damaged in an amount
`
`to be ascertained at trial.
`
`SECOND CLAIM FOR RELIEF
`
`(False Designation of Origin; false description or representation - 15 U.S.C. § 1125(d))
`
`28. Plaintiff hereby realleges and incorporates by reference the preceding
`
`allegations of this Complaint as if full set forth herein.
`
`29. Defendant, doing business as YouPlus, or an Agent of Defendant registered
`
`the website www.Playdom.com on December 6, 2008 despite the fact that Plaintiff's
`
`PLAYDOM Trademark was published for opposition on October 28, 2008 and clearly
`
`states and provides proof in his application that said mark was first in use in commerce in
`
`association with identical and confusingly similar services as Defendant on May 30,
`
`2008.
`
`30. Defendant, formerly known as YouPlus, actively offered Infringing Products
`
`and Services via the website www.Playdom.com beginning on or around March 11, 2009,
`
`despite Plaintiff's official and uncontested registration of his PLAYDOM mark on
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`January 13, 2009 (Registration No. 3560701).
`
`31. As a result of Defendant's actions, Plaintiff has been damaged in an amount
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`8
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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 9 of 29
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`to be ascertained at trial.
`
`THIRD CLAIM FOR RELIEF
`
`(Common Law Trademark Infringement)
`
`32. Plaintiff hereby realleges and incorporates by reference the preceding
`
`allegations of this Complaint as if full set forth herein.
`
`33. Plaintiff has used the PLAYDOM mark within and beyond the borders of
`
`California in the advertising and offering of entertainment services.
`
`34. Defendant's acts constitute willful infringement of Plaintiff's exclusive rights
`
`in the PLAYDOM Trademark, in violation of state common law.
`
`35. Defendant knowingly infringed the Plaintiff's Trademark to cause confusion,
`
`mistake, and deceive to the damage of the Plaintiff.
`
`36. Defendant's Infringing Trademark has and continues to cause consumer
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`confusion with Plaintiff's legally registered PLAYDOM trademark (See EXHIBIT B).
`
`Defendant's pending sale to Disney threatens to do irreparable harm to Plaintiff's
`
`PLAYDOM mark and cause increased consumer confusion.
`
`37. As a result of Defendant's actions, Plaintiff has been damaged in an amount
`
`to be ascertained at trial.
`
`9
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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 10 of 29
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`PRAYER FOR RELIEF
`
`WHEREFORE, David Couture respectfully requests entry of judgment in his
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`favor and against Defendant on all of the above causes of action as follows:
`
`1. That this Court preliminarily and permanently enjoin Defendant, their officers,
`
`agents, servants, employees, attorneys and all persons in active concert or participation
`
`with any of them:
`
`a. From using in any manner the PLAYDOM Trademark, or any other
`
`designation that is confusingly similar to the PLAYDOM Mark.
`
`b. From any form of defamation regarding the Plaintiff or the
`
`PLAYDOM Mark.
`
`c. From the destruction, deletion or concealment of financial records or
`
`other documents associated with YouPlus or Playdom, Inc.
`
`d. From transferring Playdom, Inc.'s assets, intellectual property, or cash
`
`to any individual or business entity without approval from the Court.
`
`e. From otherwise competing unfairly with Plaintiff in any manner; and
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`f. From conspiring with, aiding, assisting or abetting any other person or
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`business entity in engaging in or performing any of the activities
`
`referred to above;
`
`2. That this Court enter a judgment finding that Defendant has infringed, and
`
`willfully infringed, the PLAYDOM Trademark.
`
`3. That this Court enter a judgment finding that Defendant's use of the Infringing
`
`Trademark has caused and or is likely to cause confusion among the general purchasing
`
`public as to the source of origin of the Infringing Products and Services.
`
`10
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`

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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 11 of 29
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`4. That this Court enter a judgment finding that Defendant's use of the Infringing
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`Trademark has caused and/or is likely to cause initial interest and post-sale confusion
`
`among the general purchasing public as to the source of origin of the Infringing
`
`Products/Services.
`
`5. That this Court enter a judgment that the use or proposed use of the Suspended
`
`Playdom Trademark Application (Trademark Application Serial No. 77666627) causes
`
`confusion or is likely to cause confusion with the PLAYDOM Trademark.
`
`6. That this Court order the withdrawal and abandonment of the Defendant's
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`Suspended Playdom Trademark Application;
`
`7. That this Court certify the above orders to the Director of the United States
`
`Patent and Trademark Office so the Director may make the appropriate entry upon the
`
`records of the Patent and Trademark Office pursuant to the Lanham Act, 15 U.S.C. §
`
`1119.
`
`9. That this Court order the transfer of the domain name www.Playdom.com to
`
`Plaintiff, the rightful owner of the PLAYDOM Trademark.
`
`10. That this Court order Defendant to deliver up for destruction or show proof of
`
`destruction of any and all products, advertisements, publications, labels and any other
`
`materials in their possession, custody, or control that depict or reference the trademark(s)
`
`covered by this Court's judgment;
`
`11. That this Court order Defendant to file with this Court and to serve upon
`
`Plaintiff a report in writing and under oath setting forth in detail the manner and form in
`
`which Defendant has complied with any injunction resulting from this matter within
`
`thirty days after service of such injunction.
`
`11
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`

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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 12 of 29
`Case 1:10—cv—00440 Document 1
`Filed 09/28/10 Page 12 of 29
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`

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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 13 of 29
`Case 1:10—cv—00440 Document 1
`Filed 09/28/10 Page 13 of 29
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`

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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 14 of 29
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`12. That this Court award David Couture such damages,
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`compensatory and otherwise, as the proof may show.
`
`13. That this Court award David Couture reasonable attorneys'
`
`fees and costs incurred in connection with this action.
`
`14. That this Court grant such other and further relief as may
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`be deemed just, proper and equitable under the circumstances.
`
`Date: September 28, 2010
`
`Respectfully submitted,
`DAVID COUTURE
`By his attorney,
`
`Richarh^N^ Foley
`55 Market Street, 2B
`Portsmouth, NH 03801
`Tel: (603) 433-1303
`Bar No. 10520
`
`CERTIFICATE OF SERVICE
`
`I, Richard N. Foley, Esq., hereby certify that the within
`MOTION was served on Attorney Derek Eletich by FAX 650.963.8094
`
`Date: September 28, 2009
`
`Richard_N."Foley
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 15 of 29
`Case 1:10—cv-00440 Document 1
`Filed 09/28/10 Page 15 of 29
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`EXHIBIT A
`EXHIBIT A
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 16 of 29
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`Latest Status Info
`
`Thank you for your request. Here are the latest results from the TARR web server.
`
`This page was generated by the TARR system on 2010-09-27 04:32:34 ET
`
`Serial Number: 77487907 Assignment Informatipn
`
`Trademark Document Retrieval
`
`Registration Number: 3560701
`
`Mark
`
`PLAYDOM
`
`(words only): PLAYDOM
`
`Standard Character claim: Yes
`
`Current Status: A cancellation proceeding has been l'*ilccl at the Trademark Trial and Appeal Board and is
`now pending.
`
`Date of Status: 2009-06-17
`
`Piling Date: 2008-05-30
`
`Filed as TEAS Plus Application: Yes
`
`Currently TEAS Plus Application: Yes
`
`Transformed into a National Application: No
`
`Registration Date: 2009-0 J -13
`
`Register: Principal
`
`Law Office Assigned: LAW OFFICE 103
`
`If you are the applicant or applicant's attorney and have questions about this file, please contact the
`Trademark Assistance Center at TrademaikAssi.stanccCentcr@uspto.yov
`
`Current Location: 650 -Publication And Issue Section
`
`mp:/A,vr.uspt(>.gov/seivlei/t»rr?tt<|Mr>=serlalaentry« 77487907
`
`Pige J of 3
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`

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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 17 of 29
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`Latest Status Info
`
`Date In Location: 2009-OJ -13
`
`LAST APPLICANT(S)/OWNER(S) OF RECORD
`
`I. David Couture
`
`Address:
`David Couture
`9846 West Olympic Blvd.
`Beverly Hills, CA 90212
`United States
`Legal Entity Type: Individual
`Country of Citizenship: United States
`Phone Number: 310-210-0222
`
`GOODS AND/OR SERVICES
`
`International Class: 041
`Class Status: Active
`Entenainment. and educational services, namely, providing advice and information for music, video and film
`concept and script development; Entertainment services, namely, a multimedia program series featuring
`comedy, action and adventure distributed via various platforms across multiple forms of transmission.
`media; Motion picture film production; Production of television programs; Script writing services;
`Scriptwriting services
`Basis: 1(a)
`First Use Date: 2008-05-30
`First Use in Commerce Date: 2008-05-30
`
`ADDITIONAL INFORMATION
`
`MADRID PROTOCOL INFORMATION
`
`(NOT AVAILABLE)
`
`(NOT AVAILABLE)
`
`PROSECUTION HISTORY
`
`NOTE: To view any document referenced below, click on the link to "Trademark Document
`Retrieval" shown near the top of this page.
`
`2009-07-27 - Attorney Revoked And/Or Appointed
`
`hHp://Mrr.u«pto.gov/servlc!/iarr?r«gs«r=serlal4cmry-77<f87907
`
`Page 2 of ?
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`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 18 of 29
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`Utest Sl.itus Info
`
`2009-07-27 - TEAS Revoke/Appoint Attorney Received
`
`2009-06-17 - Cancelation Instituted No. 999999
`
`2009-01-13 • Registered - Principal Register
`
`2008-10-28 - Published for opposition
`
`2008-10-08 - Notice of publication
`
`2008-09-25 - Law Office Publication Review Completed
`
`2008-09-25 - Assigned To LIE
`
`2008-09-16 - Approved for Pub - Principal Register (Initial exam)
`
`2008-09-1J - Assigned To Examiner
`
`2008-06-04 - Notice Of Pseudo Mark Mailed
`
`2008-06-03 - New Application Entered In Tram
`
`ATTORNEY/CORRESPONDENT INFORMATION
`
`Attorney of Record
`Richard N. Foley
`
`Correspondent
`Richard N. Foley
`55 Market Street Suite 2B
`Portsmouth. NH 0380J
`
`h«tp://tnrr.iispto.3ov/5crwlcl/t»rr)re<jser=iiBrl«l*BntfY=77487907
`
`Papt 3 of 3
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`

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`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 19 of 29
`Case 1 :10—cv—OO44O Document 1
`Filed 09/28/10 Page 19 of 29
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`EXHIBIT B
`EXHIBIT B
`
`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 20 of 29
`
`GmiUl - Mt View office space
`
`• I
`pQ ^ | 11
`
`Mt View office space
`1 message
`
`Francois Cornll <fcornil@gvakm.com>
`To: playdomlnc@gmail.com
`
`Playdom Inc <playdomlnc@gmail.com>
`
`Thu, Apr 30, 2009 at 1:47 PM
`
`Hello: should Playdom have any office space needs in the near future, please don't hesitate to contact me directly
`at 408.588.2303
`
`Best,
`
`Francois CorniI || Associate
`
`GVA Kidder Mathews
`
`3945 Freedom Circle, Suite 900
`
`Santa Clara, CA 95054
`
`T 408.970,9400 Ext 303 M 650.619.5036
`
`F 408.970.0648
`
`www.avakm.com
`
`JjJTTJfeesa wvwicfer Urn owimnmint befors printing fft'.f onml!
`
`hHpS://mAH.9oo!,|e.com/W,l|/?W|=2«()<=«68od4Z4I64vlcW-pt4$carch-.nbo,&,h-,l2OfBcB07d823eb3
`
`Page 1 of j
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`

`
`Case 1:10-cv-00440 Document 1 Filed 09/28/10 Page 21 of 29
`Gmall - Chtailng being allowed on Mobsters!
`
`i^i'.m^jjf
`
`Cheating being allowed on Mobsters!
`Reed Nescher <Reed@nescher.com>
`To: Playdomlnc@gmail.com
`
`Playdon
`
`ic <plai c'o»n»nc@gmail.com>
`
`"Ion, M.
`
`t t ,
`
`-19 at 3:21 PIV
`
`I have contacted support for over a week; I have documentation that your compa.iy cu ^donei- cheating
`'...• .• SL'it %.
`-«..
`by high paying players by the use of BOTSII have the docurr * *=»tion and am startin^
`if my concerns over cheating are not addressed! You have a ret
`*•' to keep the g