Trademark Trial and Appeal Board Electronic Filing System. htfQJ/estta.usQto.gov
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`920 56631
`
`Defendant
`Blucora, Inc.
`JAMES L VANA
`PERKINS COIE LLP
`1201 3RD AVE, STE 4900
`SEATTLE, WA 98101
`UNITED STATES
`
`pctrademarks@perkinscoie.com, jvana@perkinscoie.com,
`jne|son@perkinscoie.com
`
`Motion to Suspend for Civil Action
`
`Jeffrey A. Nelson
`
`
`
`jne|son@perkinscoie.com, pctrademarks@perkinscoie.com
`
`/Jeffrey A. Nelsonl
`10/16/2013
`
`Blucora Motion to Suspend ZOO Cancellation for Civil Action.pdf(17424 bytes )
`Motion to Suspend Ex 1.pdf(1341004 bytes )
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA565431
`ESTTA Tracking number:
`10/16/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92056631
`Defendant
`Blucora, Inc.
`JAMES L VANA
`PERKINS COIE LLP
`1201 3RD AVE, STE 4900
`SEATTLE, WA 98101
`UNITED STATES
`pctrademarks@perkinscoie.com, jvana@perkinscoie.com,
`jnelson@perkinscoie.com
`Motion to Suspend for Civil Action
`Jeffrey A. Nelson
`jnelson@perkinscoie.com, pctrademarks@perkinscoie.com
`/Jeffrey A. Nelson/
`10/16/2013
`Blucora Motion to Suspend ZOO Cancellation for Civil Action.pdf(17424 bytes )
`Motion to Suspend Ex 1.pdf(1341004 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
`
`Mark Rice,
`
`v.
`
`Blucora, Inc.,
`
`
`
`Cancellation No. 92056631
`
`Petitioner,
`
`Registrant.
`
`
`
`REGISTRANT’S MOTION TO SUSPEND PROCEEDINGS PENDING DISPOSITION
`OF DISTRICT COURT ACTION
`
`Pursuant to 37 CFR 2.117(a), TBMP 510.02(a), Registrant Blucora, Inc. (“Registrant”)
`
`hereby moves the Board to suspend the above-referenced cancellation proceeding (the
`
`“Cancellation”) pending final disposition of federal district court case No2:13-cv-01857, filed
`
`October 15, 2013, in federal district court for the Western District of Washington. Copies of the
`
`complaint (the “Complaint”) and civil cover sheet are attached as Exhibit 1.
`
`The Complaint seeks a declaratory judgment that (a) Registrant’s ZOO mark, as used with
`
`Registrant’s computer services identified in Registration No. 3373136, is not confusingly similar
`
`to and does not infringe upon any of the trademarks owned by Mark Rice (“Petitioner”) that
`
`consist of or include the term ZOO, as used with those goods listed in the registrations pled by
`
`Petitioner in the Cancellation, and (2) that Registrant’s use and registration of the zoo.com domain
`
`name (the “Domain Name”) does not violate the provisions of the Anti-Cybersquatting Consumer
`
`Protection Act, 15 USC § 1125(d).
`
`When the parties are involved in court proceedings concerning the same marks and issues,
`
`the “standard procedure” of the Board is to suspend its administrative proceedings pending the
`
`outcome of the civil litigation. See New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99
`
`
`28096-7004/LEGAL28102898.2
`
`1
`
`

`
`USPQ2d 1550, 1552 (TTAB 2011). The Board has held that the civil action need not even be
`
`dispositive of the Board proceeding to warrant suspension. Rather, it is sufficient that the civil
`
`action have bearing on the issues before the Board to justify a suspension. New Orleans Louisiana
`
`Saints, 99 USPQ2d at 1552.
`
`Here, the Complaint involves the same parties, the same marks, and the same goods and
`
`services as those at issue in the Cancellation. Thus, the outcome of the Complaint will have
`
`significant bearing on the Cancellation (Registrant believes that such outcome will be dispositive
`
`of the Cancellation). Accordingly, suspension of the Cancellation pending the outcome of the civil
`
`litigation between the parties is warranted. See, e.g., Other Telephone Co. v. Connecticut National
`
`Telephone Co., 181 USPQ 125 (TTAB 1974) (decision in civil action for infringement and unfair
`
`competition would have bearing on outcome of Section 2(d) claim before Board), petition denied,
`
`181 USPQ 779 (Comm'r 1974).
`
`Petitioner has recently filed a Motion to Compel (the “Motion”) in the Cancellation, as a
`
`result of which the Cancellation is suspended except for papers associated with the Motion, and the
`
`next scheduled action is Registrant’s response to the Motion. At the time the Motion was filed,
`
`there remained nearly two months in the discovery period in the Cancellation, which would be
`
`reset and trial would not begin until at least 2014.
`
`For these reasons, Registrant submits that suspension of the Cancellation is appropriate.
`
`The same is respectfully requested.
`
`
`28096-7004/LEGAL28102898.2
`
`2
`
`

`
`As to Objections:
`
`PERKINS COIE LLP
`
`
`
`
`
`Dated this 16th day of October 2013.
`
`
`
`
`
`
`
`By
`Jim Vana
`Jeff Nelson
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, Washington 98101-3099
`(206) 359-8000
`
`Attorneys for Registrant
`
`
`
`CERTIFICATE OF SERVICE
`
` I
`
`
`
` hereby certify that a true and correct copy of this document has been served upon Mark
`Rice via email as agreed between the parties on this 16th day of October, 2013.
`
`
`
`Jeffrey A. Nelson
`
`
`
`
`
`
`
`
`28096-7004/LEGAL28102898.2
`
`3
`
`

`
`EXHIBIT 1
`
`
`
`
`
`EXHIBIT 1
`
`

`
`Case 2:13-cv-01857 Document 1-6 Filed 10/15/13 Page 1 of 1
`
`JS 44 (Rev. 12/12)
`
`C I V I L C O V E R S H E E T
`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 of the 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 NEXT PAGE OF THIS FORM.]
`
`DEFENDANT MARK RICE
`
`
`
`I.
`
`
`
`(a) PLAINTIFF BLUCORA, INC.
`
`
`(b) County of Residence of First Listed Plaintiff KING COUNTY, WASHINGTON
` (EXCEPT IN U.S. PLAINTIFF CASES)
`
`County of Residence of First Listed Defendant____________________________________
` (IN U.S. PLAINTIFF CASES ONLY)
`NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF
`LAND INVOLVED
`Attorneys (If Known)
`
`
`
`
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an "X" in One Box for Plaintiff
`(For Diversity Cases Only) and One Box for Defendant)
`PTF DEF
`
`PTF DEF
`Incorporated or Principal Place
`1  1
` 4  4
`
`
` of Business in This State
`Incorporated and Principal Place
` 2  2
`
`
` of Business in Another State
` 3  3 Foreign Nation
`
`
`Citizen of This State
`
`Citizen of Another State
`
`Citizen or Subject of a
` Foreign Country
`
`
` 5  5
`
` 6  6
`
` 
`
`
`
` 
`
`(c) Attorneys (Firm Name, Address, and Telephone Number)
`William C. Rava, James L. Vana, Catherine S. Simonsen
` PERKINS COIE LLP
`1201 Third Avenue, Suite 4900, Seattle, WA 98101-3099
` 206.359.8000
`
`II. BASIS OF JURISDICTION
`(Place an "X" in One Box Only)
` 1 U.S Government
` 3 Federal Question
`Plaintiff
` (U.S. Government Not a Party)
`
` 
`
` 4 Diversity
` (Indicate Citizenship of Parties in
` Item III)
`
` 
`
` 2 U.S. Government
`Defendant
`
`IV. NATURE OF SUIT (Place an "X" in One Box Only)
`CONTRACT
` 110 Insurance
` 120 Marine
` 130 Miller Act
` 140 Negotiable Instrument
` 150 Recovery of Overpayment &
` Enforcement of Judgment
` 151 Medicare Act
` 152 Recovery of Defaulted Student
` Loans (Excludes Veterans)
` 153 Recovery of Overpayment of
` Veteran's Benefits
` 160 Stockholders' Suits
` 190 Other Contract
` 195 Contract Product Liability
` 196 Franchise
`
`
`PERSONAL INJURY
` 310 Airplane
` 315 Airplane Product Liability
` 320 Assault, Libel & Slander
` 330 Federal Employers'
` Liability
` 340 Marine
` 345 Marine Product Liability
` 350 Motor Vehicle
` 355 Motor Vehicle Product
` Liability
` 360 Other Personal Injury
` 362 Personal Injury—Medical
` Malpractice
`
`REAL PROPERTY
` 210 Land Condemnation
` 220 Foreclosure
` 230 Rent Lease & Ejectment
` 240 Torts to Land
` 245 Tort Product Liability
` 290 All Other Real Property
`
`CIVIL RIGHTS
` 440 Other Civil Rights
` 441 Voting
` 442 Employment
` 443 Housing/
` Accommodations
`445 Amer. w/Disabilities—
` Employment
`446 Amer. w/Disabilities—
` Other
` 448 Education
`
`
`V. ORIGIN (Place an "X" in One Box Only)
` 1 Original
` 2 Removed from
` Proceeding
` State Court
`
`
`VI. CAUSE OF ACTION
`
`
`
`OTHER STATUTES
`375 False Claims Act
` 400 State Reapportionment
` 410 Antitrust
` 430 Banks and Banking
` 450 Commerce
` 460 Deportation
` 470 Racketeer Influenced and
` Corrupt Organizations
` 480 Consumer Credit
` 470 Cable/Sat TV
` 810 Selective Service
` 850 Securities/Commodities/
` Exchange
` 890 Other Statutory Actions
` 891 Agricultural Acts
` 893 Environmental Matters
` 895 Freedom of Information Act
`896 Arbitration
`899 Administrative Procedure Act/
` Review or Appeal of Agency
` Decision
` 950 Constitutionality of State
` Statutes
`
`
`
` BANKRUPTCY
` 422 Appeal 28 U.S.C. 158
` 423 Withdrawal
` 28 U.S.C. 157
`
`PROPERTY RIGHTS
` 820 Copyrights
` 830 Patent
` 840 Trademark
`
`
`
`SOCIAL SECURITY
` 861 HIA (1395ff)
` 862 Black Lung (923)
` 863 DIWC/DIWW
` (405(g))
` 864 SSID Title XVI
` 865 RSI (405(g))
`
`
`FEDERAL TAX SUITS
` 870 Taxes (U.S. Plaintiff
` or Defendant)
` 871 IRS--Third Party
` 26 U.S.C. 7609
`
`FORFEITURE/PENALTY
`625 Drug Related Seizure of
` Property, 21 U.S.C. 881
` 690 Other
`
`
`
`LABOR
` 710 Fair Labor Standards
` Act
` 720 Labor/Management
` Relations
` 740 Railway Labor Act
`751 Family and Medical Leave
` Act
` 790 Other Labor Litigation
` 791 Empl. Retirement Income
` Security Act
`
`
`
`IMMIGRATION
`462 Naturalization Application
`465 Other Immigration Actions
`
`
`
`
`
`
`PERSONAL PROPERTY
` 370 Other Fraud
` 371 Truth in Lending
` 380 Other Personal Property
` Damage
` 385 Property Damage
` Product Liability
`PRISONER PETITIONS
` Habeas Corpus:
`463 Alien Detainee
` 510 Motions to Vacate
` Sentence
`530 General
` 535 Death Penalty
` Other:
` 540 Mandamus & Other
` 550 Civil Rights
` 555 Prison Condition
`560 Civil Detainee—
` Conditions of
` Confinement
`
`
`TORTS
`PERSONAL INJURY
` 365 Personal Injury—
` Product Liability
` 367 Health Care/
` Pharmaceutical Personal
` Injury Product Liability
` Med. Malpractice
` 368 Asbestos Personal
` Injury Product Liability
`
`
`
`
`
`
` 6 Multidistrict
` 5 Transferred from
` 4 Reinstated or
` 3 Remanded from
` Litigation
` another district
` Reopened
` Appellate Court
`
` (specify)
`
`
`Cite the U.S. Civil Statute under which you are filing. (Do not cite jurisdictional statutes unless diversity.)
`15 U.S.C. §§ 1114, 1125(a), (c), (d); 28 U.S.C. §§ 2201, 2202
`Brief description of cause:
`Action for declaratory judgment of non-infringement and non-dilution of trademark rights, no false designation of origin, no
`cybersquatting, no unfair competition, and no unfair or deceptive trade practice.
`
`
`
`
`VII.
`
`REQUESTED IN
` CHECK IF THIS IS A CLASS
`ACTION UNDER F.R.C.P. 23
`COMPLAINT:
`VIII. RELATED CASE(S) (See Instructions)
`IF ANY: JUDGE_________________________________ DOCKET NUMBER__________________________________________
`DATE October 15, 2013
`SIGNATURE OF ATTORNEY OF RECORD
`
`/s/ William C. Rava
`FOR OFFICE USE ONLY
`
`DEMAND
`Declaratory Judgment
`
`Check "YES" only if demanded in complaint:
`JURY DEMAND:  YES  NO
`
`
`
`RECEIPT #__________ _____ AMOUNT ____________________ APPLYING IFP __________________ JUDGE ___________________________ MAG. JUDGE ____________________________
`
`LEGAL28101923.1
`
`

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`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 1 of 10
`
`THE HONORABLE ___________________
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
`
`BLUCORA, INC., a corporation,
`
`No. 13-1857
`
`Plaintiff,
`
`v.
`
`MARK RICE, an individual, d/b/a
`ZOOMANIA GAMES,
`
`
`
`Defendant.
`
`COMPLAINT FOR DECLARATORY
`JUDGMENT OF NON-INFRINGEMENT
`OF TRADEMARK RIGHTS AND
`OTHER RELIEF
`
`
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for a declaratory judgment pursuant to 28 U.S.C. §§ 2201 and
`
`2202. This action arises under the trademark and anticybersquatting laws of the United States,
`
`including 15 U.S.C. §§ 1114 and 1125(a), (c), and (d).
`
`
`
`PARTIES
`
`2.
`
`Plaintiff Blucora, Inc. (“Blucora”) is a Delaware corporation with its principal
`
`place of business located at 10900 NE 8th Street, Suite 800, Bellevue, WA 98004.
`3.
`
`On information and belief, Defendant Mark Rice, d/b/a ZooMania Games, is an
`
`individual residing and having his principal place of business at 114 Rockingham Way, Unit
`
`5786, Ellijay, GA, 30540.
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 1
`
`LEGAL28078035.7
`
`
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

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`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 2 of 10
`
`
`
`JURISDICTION AND VENUE
`
`4.
`
`This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C.
`
`§§ 1331, 1332, 1338, 1367, and 2201. Blucora seeks a declaratory judgment under the
`
`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, that its use and operation of its Zoo
`
`website, its registration and use of the zoo.com domain name, and its use and federal registration
`
`of the ZOO mark do not infringe or dilute any trademark rights that Defendant might own,
`
`constitute cybersquatting under the Anticybersquatting Consumer Protection Act, or constitute
`
`false designation of origin, unfair competition, or an unfair or deceptive trade practice under state
`
`or federal law, including the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a), (c), and (d), or
`
`otherwise violate any rights Defendant might own. The amount in controversy exceeds $75,000.
`5.
`
`This Court has personal jurisdiction over Defendant because Defendant has
`
`purposefully availed himself of the benefits and protections offered by the state of Washington
`
`by conducting business in Washington, including marketing, holding out for sale, and selling
`
`goods within Washington; Blucora’s claims arise out of (1) Defendant’s use and asserted
`
`exclusive right to use certain marks in so conducting business in the state of Washington and (2)
`
`Defendant’s efforts to have forfeited, cancelled, or transferred to him a domain name registered
`
`to, managed by, and used by Blucora to do business in the state of Washington; the existence of
`
`this dispute over trademark and related rights is impacting Blucora and its business in the state of
`
`Washington; and exercise of jurisdiction over Defendant comports with traditional notions of fair
`
`play and substantial justice.
`6.
`
`Venue is proper in this Court under 28 U.S.C. § 1391(b), as this District is the
`
`district in which a substantial part of the events giving rise to the claims occurred and in which a
`
`substantial part of the property that is the subject of the action is situated. Defendant has asserted
`
`that Blucora, a corporation based in this District, has infringed Defendant’s marks, which he uses
`
`in marketing, holding out for sale, and selling goods within, and otherwise doing business in, this
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 2
`
`LEGAL28078035.7
`
`
`

`
`
`
`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 3 of 10
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`District; seeks to prevent Blucora, a corporation based in this District, from using and operating
`
`its Zoo website, registering and using the zoo.com domain name, and/or using or maintaining its
`
`federal registration of the ZOO mark; and seeks to have forfeited, cancelled, or transferred to
`
`him the zoo.com domain name, the rights to which are held in this District by Blucora, a
`
`corporation based in this District.
`
`
`
`PERTINENT FACTS
`
`Blucora’s Zoo Website, zoo.com Domain Name, and ZOO Mark
`
`7.
`
`Since the late 1990s, Blucora has owned and operated the Zoo website at the
`
`domain name zoo.com, from which it offers search engine and other related computer services.
`8.
`
`Blucora is the registrant for, and controls the registration and use of, the domain
`
`name zoo.com, which it uses in connection with the Zoo website.
`9.
`
`In connection with the Zoo website and zoo.com domain name, Blucora does not
`
`and has never offered any services specifically relating to animals or zoological gardens or the
`
`keeping or display of animals. In connection with the Zoo website and zoo.com domain name,
`
`Blucora does not offer and has never offered any computer services relating to the business of
`
`creating, selling, marketing, and distributing games, including zoological garden-themed games
`
`for children and adults.
`10.
`
`In connection with the Zoo website and zoo.com domain name, Blucora owns
`
`USPTO Registration Number 3,373,136 for the ZOO mark for use in connection with “computer
`
`services, namely, providing search engines for obtaining data on a global computer network,
`
`creating indexes of information, sites, and other resources available on computer networks for
`
`others; searching and retrieving information, sites, and other resources available on computer
`
`networks by way of search engines, all of the above not including any services specifically
`
`relating to animals or zoos or the keeping or display of animals,” issued to Blucora on January
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 3
`
`LEGAL28078035.7
`
`
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

`
`
`
`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 4 of 10
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`22, 2008. A true and correct copy of this USPTO registration is attached hereto as Exhibit A and
`
`fully incorporated herein.
`
`
`Defendant’s Zoological Garden-Themed Games, Business, and Marks
`
`11.
`
`Defendant does business as ZooMania Games. According to Defendant’s
`
`ZooMania Games website, posted to the domain names zoomania.com and zoomaniagames.com,
`
`ZooMania Games is in the business of creating and selling illustrated, zoological garden-themed
`
`“children’s games incorporat[ing] learning development opportunities including social skills,
`
`numbers, counting, animal recognition, colors and letters.” ZooMania Games’ children’s game
`
`and/or toy offerings include Zoo Party, Zoo Playing Cards, Top Banana, Dawgs, Space Dogs,
`
`Under the Sea, The Great Bug Hunt, DOS Twice the Fun, The Game Of ZOO, Zoofari, Funky
`
`Monkeys, and The Great Bug Hunt. ZooMania Games also sells adult party games, including
`
`Elephonkey and iPresident.
`12.
`
`Defendant purports to own various trademark rights, including federal
`
`registrations, for the marks ZOO (for use in connection with “card games”), ZOO MANIA (for
`
`use in connection with “equipment sold as a unit for playing card games”), ZOOFARI (for use in
`
`connection with “parlor games”), ZOO PALS (for use in connection with “parlor games”), ZOO
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`PARTY (for use in connection with “parlor games”), ZOO MANIACS (for use in connection
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`with “parlor games”), and ZOO GAMES (for use in connection with “parlor games”)
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`(collectively, “Defendant’s Marks”).
`13.
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`Blucora’s services offered in connection with its ZOO mark do not compete with
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`Defendant’s goods and services offered in connection with Defendant’s Marks.
`14.
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`Since Blucora began operating the Zoo website at the zoo.com domain name and
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`offering its services under the ZOO mark, it has never been made aware of a single incidence of
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`confusion on the part of the public between Blucora, its services, and its marks and Defendant,
`
`his goods and services, and Defendant’s marks.
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 4
`
`LEGAL28078035.7
`
`
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

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`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 5 of 10
`
`
`Defendant’s Allegations of Infringement and Cybersquatting
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`15.
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`On July 25, 2012, Defendant sent an infringement and cybersquatting notice to
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`Blucora asserting that Blucora’s use of the ZOO mark, its registration and use of the zoo.com
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`domain name, and its operation of the Zoo website at that domain name infringed Defendant’s
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`rights under Defendant’s Marks and constituted cybersquatting. The notice states:
`
`I understand that you have registered and use a ZOO domain name.
`Absent an agreement with me, the use, marketing, and promotion
`of a ZOO trade name would constitute unfair competition and
`trademark infringement in violation of Section 43(a) of the
`Lanham Act, 15 U.S.C. 1125(a) et. seq. as well as various common
`law causes of action.
`. . . . .
`
`Although you use a domain name, it is nonetheless identical to my
`product’s name for purposes of the likelihood of confusion
`analysis . . . .
`
`It is apparent that your use of the domain name ZOO is nothing
`more than a typical cyber squatting situation that is fully addressed
`by the [Anticybersquatting Consumer Protection Act] . . . .
`A true and correct copy of the infringement and cybersquatting notice Defendant sent Blucora is
`
`attached hereto as Exhibit B and fully incorporated herein.
`16.
`
`On December 27, 2012, Defendant filed a Petition to Cancel Blucora’s USPTO
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`registration for the ZOO mark with the Trademark Trial and Appeal Board (“TTAB”). A true
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`and correct copy of the Petition to Cancel is attached hereto as Exhibit C and fully incorporated
`
`herein.
`
`17.
`
`On March 13, 2013, Blucora and Defendant participated in a discovery
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`conference. At that conference, Defendant (1) expressed his belief that Blucora’s use of the
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`ZOO mark, its registration and use of the zoo.com domain name, and its operation of the Zoo
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`website at that domain name infringed Defendant’s rights under Defendant’s Marks, (2)
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`represented that the only acceptable outcome of the dispute he initiated in the TTAB was for
`
`Blucora to abandon its registration for the ZOO mark and to transfer registration of the zoo.com
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 5
`
`LEGAL28078035.7
`
`
`

`
`
`
`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 6 of 10
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`domain name to Defendant; and (3) indicated that, if the TTAB were to grant his Petition to
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`Cancel, he would file a lawsuit against Blucora in federal district court alleging cybersquatting
`
`and seeking an order requiring Blucora to transfer registration of the zoo.com domain name to
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`Defendant. Defendant made similar threats, implicitly and explicitly, in other communications
`
`with Blucora in connection with this dispute.
`18.
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`On April 29, 2013, Blucora moved for partial summary judgment on Defendant’s
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`claims in the TTAB. In opposition, Defendant filed a declaration in which he declared, inter
`
`alia:
`
`In 2011, I had become aware of a domain web site which was
`accessed via the address www.zoo.com. . . . On said site, . . .
`[t]here was no information nor trademark notations, no R or TM
`found anywhere on the site. I had determined that said domain
`was a site that would cause likelihood of confusion with my ZOO
`theme and the multitude of [my] products that were promoted and
`advertised with the ZOO theme.
`A true and correct copy of this declaration is attached hereto as Exhibit D and fully incorporated
`
`herein.
`19.
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`On September 30, 2013, Blucora, in an attempt to resolve the TTAB dispute with
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`Defendant, sent to Defendant for his signature a signed voluntary surrender of its federal
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`registration for the ZOO mark with consent.
`20.
`
`Defendant did not consent but instead responded in part as follows:
`
`I will review and get back to you this week. Should we discuss
`options relating to how best to resolve the domain issue? If your
`client takes a position that there exists no claims, then I can
`proceed with taking this to the next level.
`21. When asked by Blucora to clarify the meaning of “taking this to the next level,”
`
`Defendant responded in part as follows:
`
`The Petition to the USPTO was what I would consider the first step
`in evaluating those options. . . . If Blucora is assuming that our
`dispute ends with the Petition, I cannot assure you of that
`assumption being correct. . . . I do not think this matter is over.
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 6
`
`LEGAL28078035.7
`
`
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

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`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 7 of 10
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`A true and correct copy of this exchange is attached hereto as Exhibit E and fully incorporated
`
`herein.
`22.
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`Blucora refuses to cease operating the Zoo website, refuses to transfer registration
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`of the zoo.com domain name to Defendant, and now refuses to abandon its federal registration
`
`for the ZOO mark.
`23.
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`There is an actual controversy between Blucora and Defendant, and Blucora has a
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`reasonable apprehension that Defendant will sue Blucora for trademark infringement, trademark
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`dilution, cybersquatting, and/or related claims under state and federal laws.
`
`
`
`24.
`25.
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`REQUEST FOR DECLARATORY JUDGMENT
`
`Blucora incorporates and re-alleges the matters set forth above.
`
`There is a justiciable dispute between the parties as to whether Blucora’s use and
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`operation of its Zoo website, registration and use of the zoo.com domain name, and federal
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`registration and use of the ZOO mark infringe or dilute any trademark rights that Defendant
`
`might own, constitute cybersquatting under the Anticybersquatting Consumer Protection Act, 15
`
`U.S.C. § 1125(d), constitute false designation of origin, unfair competition, or an unfair or
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`deceptive trade practice under state or federal law, including the Lanham Act, 15 U.S.C. §§ 1114
`
`and 1125(a) and (c), or otherwise violate any rights Defendant might own.
`26.
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`Defendant’s Marks, including the ZOO mark, are not inherently distinctive, have
`
`not acquired a high degree of distinctiveness, and are not famous. The term “zoo” is a common,
`
`inherently descriptive English language term used by numerous third parties for a variety of
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`branding and fair use purposes.
`27.
`
`Blucora used and uses the Zoo website, the zoo.com domain name, and the ZOO
`
`mark in connection with and to further legitimate business purposes.
`28.
`
`Blucora’s use and operation of its Zoo website, registration and use of the
`
`zoo.com domain name, and federal registration and use of the ZOO mark do not and will not:
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 7
`
`LEGAL28078035.7
`
`
`

`
`
`
`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 8 of 10
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`a.
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`Infringe any of Defendant’s trademark rights under 15 U.S.C.
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`§§ 1114 or 1125(a) or any other state or federal law;
`b.
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`Cause dilution of Defendant’s Marks under 15 U.S.C. § 1125(c) or
`
`any other state or federal law;
`c.
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`Constitute false designation of origin under 15 U.S.C. § 1125(a) or
`
`any other state or federal law;
`d.
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`Constitute cybersquatting under 15 U.S.C. § 1125(d) or any other
`
`state or federal law;
`e.
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`Constitute unfair competition under 15 U.S.C. § 1125(a) or any
`
`other state or federal law;
`f.
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`Constitute an unfair or deceptive trade practice under 15 U.S.C.
`
`§ 1125(a) or any other state or federal law; or
`g.
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`Otherwise violate any rights Defendant might own.
`
`29.
`
`Blucora is entitled to a declaratory judgment that Defendant’s Marks are not
`
`famous and that Blucora’s use and operation of its Zoo website, registration and use of the
`
`zoo.com domain name, and federal registration and use of the ZOO mark do not and will not:
`a.
`
`Infringe any of Defendant’s trademark rights under 15 U.S.C.
`
`§§ 1114 or 1125(a) or any other state or federal law;
`b.
`
`Cause dilution of Defendant’s Marks under 15 U.S.C. § 1125(c) or
`
`any other state or federal law;
`c.
`
`Constitute false designation of origin under 15 U.S.C. § 1125(a) or
`
`any other state or federal law;
`d.
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`Constitute cybersquatting under 15 U.S.C. § 1125(d) or any other
`
`state or federal law;
`e.
`
`Constitute unfair competition under 15 U.S.C. § 1125(a) or any
`
`other state or federal law;
`
`Complaint for Declaratory Judgment (No. 13-1857)
`– 8
`
`LEGAL28078035.7
`
`
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206.359.8000
`Fax: 206.359.9000
`
`

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`Case 2:13-cv-01857 Document 1 Filed 10/15/13 Page 9 of 10
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`f.
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`Constitute an unfair or deceptive trade practice under 15 U.S.C.
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`§ 1125(a) or any other state or federal law; or
`g.
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`Otherwise violate any rights Defendant might own.
`
`
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Blucora prays for the following relief:
`A.
`
`A declaratory judgment that Blucora’s use and operation of its Zoo website,
`
`registration and use of the zoo.com domain name, and federal registration and use of the ZOO
`
`mark do not and will not:
`1.
`
`Infringe any of Defendant’s trademark rights under 15 U.S.C. §§ 1114 or
`
`1125(a) or any other state or federal law;
`
`Cause dilution of Defendant’s Marks under 15 U.S.C. § 1125(c) or any
`
`other state or federal law;
`
`Constitute false designation of origin under 15 U.S.C. § 1125(a) or any
`
`other state or federal law;
`
`Constitute cybersquatting under 15 U.S.C. § 1125(d) or any other state or
`
`federal law;
`
`Constitute unfair competition under 15 U.S.C. § 1125(a) or any other state
`
`or federal law;
`
`Constitute an unfair or deceptive trade practice under 15 U.S.C. § 1125(a)
`
`or any other state or federal law; or
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`Otherwise violate any rights Defendant might own.
`
`2.
`
`3.
`
`4.
`
`5.
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`6.
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`7.
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`B.
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`A preliminary and permanent injunction prohibiting Defendant, his affiliates,
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`agents, servants, employees, and attorneys, and any and all other persons in active concert or
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`participation with them, from improperly interfering with Blucora’s business, including from
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`asserting that Blucora’s use and operation of its Zoo website, its registration and use of the
`Perkins Coie LLP
`1201 Third Avenue, Suite 49