Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA817164
`
`Filing date:
`
`04/26/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92061600
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Club Cannon, LLC
`
`JEFFREY L VAN HOOSEAR
`KNOBBE MARTENS OLSON & BEAR LLP
`2040 MAIN ST 14TH FL
`IRVINE, CA 92614
`UNITED STATES
`efiling@knobbe.com
`
`Motion to Suspend for Civil Action
`
`JEFFREY L. VAN HOOSEAR
`
`efiling@knobbe.com
`
`/JVH/
`
`04/26/2017
`
`Registrants Motion to Suspend CCANN001N.PDF(531640 bytes )
`Registrants Motion to Suspend EXHIBIT A CCANN001N.PDF(4650585 bytes )
`
`

`

`CCANN.001N
`
`TTAB
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`CryoFX LLC,
`Petitioner,
`
`V.
`
`Club Cannon, LLC,
`Registrant.
`
`Cancellation No. 92061600
`
`Registration No.: 4,648,696
`
`Mark: CLUB CANNON
`
`
`
`REGISTRANT’S MOTION TO SUSPEND
`
`Commissioner for Trademarks
`PO. Box 1451
`
`Alexandria, VA 22313 -1451
`
`Dear Sir or Madam:
`
`Pursuant to 37 CFR §2.117 and Trademark Trial and Appeal Board Manual of Procedure
`
`(TBMP) Chapter 510.02(a), Registrant Club Cannon, LLC I(“Registrant” or “Club Cannon”)
`
`hereby moves for an Order suspending this Cancellation pending the disposition of Civil Action
`
`No. 3:17—CV—OS35—WQH—WVG, Club Cannon LLC v. CryoFX LLC, in the US. District Court
`
`for the Southern District of California.
`
`In the Federal Court action, Registrant filed-a complaint alleging that Petitioner’s use of
`CLUB CANNON for carbon dioxide special effects equipment and accessories constitutes
`
`trademark infringement of Registrant’s CLUB CANNON mark, Registration No. 4,648,696.
`
`A copy of Registrant’s Complaint, Civil Cover Sheet and Report on Filing of an Action
`
`re Trademark No. 4,648,696 are attached hereto as Exhibit A.-
`
`

`

`The Registrant’s rights in its CLUB CANNON mark is a central
`
`issue in both the
`
`cancellation proceeding and the civil litigation. As such, Registrant states that the pending civil
`
`litigation will have a direct bearing on the cancellation proceeding and as such, suspension
`
`should be granted. See 37 CFR §2.l l7(a); General Motors Corp. V. Cadillac Club Fashions Inc.,
`
`22 USPQ2d 1933 (TTAB 1992). Although an answer in the civil litigation has not been filed, as
`
`set forth in TBMP Chapter 510.02(a), the Board does not usually require that an answer be filed
`
`before the Board will consider suspending a Board proceeding pending the outcome of another
`
`proceeding.
`
`Registrant Club Cannon respectfully requests that
`
`the above-captioned cancellation
`
`proceeding be suspended pending final resolution of Civil Action No. 3:17—CV-O835—WQH-
`
`WVG.
`
`Respectfully submitted,
`
`Dated: April 26, 2017
`
`(949) 760—0404
`efiling@knobbe.com
`Attorneys for Registrant, Club Cannon, LLC
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that I served a copy of the foregoing REGISTRANT’S MOTION TO
`
`SUSPEND upon Petitioner’s counsel Via electronic mail on April 26, 2017, addressed as
`
`follows:
`
`JOSEPH A. MANDOUR
`
`BEN T. LILA
`
`MANDOUR & ASSOCIATES APC
`
`8605 SANTA MONICA BLVD SUITE 1500
`
`LOS ANGELES, CA 90069
`UNITED STATES
`
`jmandour@mandourlaw.com ‘
`blila@mandourlaw.com
`
`
`
`25791974
`042617
`
`
`
`

`

`EXHIBITA #
`
`

`

`US. District Court
`
`Southern District of California
`
`' Notice of Electronic Filing
`
`The following transaction was entered on 4/25/2017 at 1:34 PM PDT and filed on 4/25/2017
`Case Name:
`Club Cannon, LLC V. CryoFX, LLC et al
`
`Case Number:
`
`3 : 17—cv-00835—WQH—WVG
`
`Filer:
`
`Club Cannon, LLC
`
`Document Number: 1
`
`Docket Text:
`
`COMPLAINT with Jury Demand against All Defendants (Filing fee $400 receipt number 0974-
`10020981.), filed by Club Cannon, LLC. (Attachments: # (1) Civil Cover Sheet)
`
`The new case number is 3:17-cv-835-WQH-WVG. Judge William Q. Hayes and Magistrate
`Judge William V. Gallo are assigned to the case. (Zelkind, Boris)(mxn)
`
`Notice of Electronic Filing
`
`The following transaction was entered on 4/25/2017 at 1:35 PM PDT and filed on 4/25/2017
`Case Name:
`Club Cannon, LLC V. CryoFX, LLC et a1
`
`Case Number:
`Filer:
`
`3: 17-cv—0083 5 —W§ zH-WVG
`
`Document Number: 2
`
`L Docket Text:
`
`REPORT on the filing or determination of an action regarding patent and/or trademark
`number(s) *4648696* cc:USPTO (mxn)
`
`Notice of Electronic Filing
`
`The following transaction was entered on 4/25/2017 at 1:39 PM PDT and filed on 4/25/2017
`Case Name:
`Club Cannon, LLC V. CryoFX, LLC et a1
`
`Case Number:
`
`3 : 17—cv—00835-WQH—WVG
`
`Filer:
`
`Club Cannon, LLC
`
`'
`
`Document Number: _3_
`
`Docket Text:
`
`NOTICE of Party With Financial Interest by Club Cannon, LLC. No Parties With Financial
`Interest. (mxn)
`
`Notice of Electronic Filing
`
`The following transaction was entered on 4/25/2017 at 1:42 PM PDT and filed on 4/25/2017
`
`Case Name:
`
`Case Number:
`
`Club Cannon, LLC V. CryoFX, LLC et al
`
`3 : 1.7—cv—00835—WQH—WVG
`
`

`

`Filer:
`
`Document Number: ii
`
`Docket Text:
`
`Summons Issued.
`
`Counsel receiving this notice electronically should print this summons and serve it in
`accordance with Rule 4, Fed.R.Civ.P and LR 4.1. (mxn)
`
`

`

`Case 3:17—cv«00835-WQH~WVG Documentl Filed 04/25/17 PagelD.l Page 10f46
`
`Boris Zellgind (SBN 214,014)
`boris.zelkind knobbecom
`KNOBBE
`_ RTENS, OLSON & BEAR, LLP
`12790.El Camino Real, Suite 100
`San Diego, CA 92130
`Telephone: $58) 707—4000
`Facs1mile: ( 58) 707-4001
`
`Attorne s for Plaintiff
`CLUB ANNON, LLC
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF CALIFORNIA
`
`'17CV0335 WQHWVG
`Civil Action No.
`CLUB CANNON, LLC a,
`California limited liability company, m
`COMPLAINT FOR TRADEMARK
`INFRINGEMENT, FALSE
`DESIGNATION OF ORIGIN
`ANTICYBERS UATTING, AND
`UNFAIR COMP TITION
`
`Plaintiff,
`
`‘
`
`V.
`
`.
`CRYOFX LLC, a Nevada limited
`liability compan _, C02 CANNON,
`LLC, a Nevada imited liability
`company, KRIS MULLINS, an
`individual, KENNY MULLINS, an
`individual, and CHRIS JOSLIN, an
`individual,
`
`Defendants.
`
`DEMAND FOR JURY TRIAL
`
`\oOoVOkaUoMN
`
`NMMMMNNNNNNNNNNNNNNOOVQMKUQNNQbOOVQMkWNNQ
`
`

`

`Case 3:17—cv-OO835-WQH—WVG Documentl Filed 04/25/17 PagelD.2 PageZof46
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`Plaintiff, Club Cannon, LLC hereby complains of Defendants CryoFX
`
`LLC, C02 Cannon, LLC, Kris Mullins, Kenny Mullins, and Chris Joslin
`
`(collectively, “Defendants”), and alleges as follows:
`JURISDICTION AND VENUE
`
`1.
`
`This is an action for: (a) trademark infringement arising under 15
`
`U.S.C. § 1114, (b) false designation of origin arising under 15 U.S.C. § 1125(a),
`
`(c) statutory trademark infringement under California Business & Professions
`
`Code § 14245,
`
`(d) unfair competition arising under California Business &
`
`Professions Code § 17200 et seq, (e) trademark infringement arising under the
`common law of the State of California, (f) anticybersquatting arising under 15
`
`U.S.C. § 1125(d)(1)(A), and (g) unfair competition arising under the common
`
`law of the State of California.
`
`2.
`
`This Court has subject matter jurisdiction pursuant to 15 U.S.C.
`
`§ 1121 and 28 U.S.C. §§ 1331, 1338(a) and (b), and 1367(a).
`3.
`Venue is proper in this Judicial District pursuant to 28 U.S.C.
`
`§ 1391(b), (c), and (d).
`I
`
`THE PARTIES
`
`4.
`
`Plaintiff Club Cannon, LLC (“Club Cannon” or “Plaintiff”) is a
`
`limited liability company organized and existing under the laws of the State of
`
`California having a principal place of business at 843 Via Esteban, Suite 1, San
`
`Luis Obispo, CA 93401.
`
`5.
`
`Upon information and belief, Defendant CryoFX, LLC (“CryoFx”)
`
`is a limited liability company organized and existing under the laws of the State
`
`of Nevada having a principal place of business at 4341 Twain Avenue, San
`
`Diego, CA 92120.
`
`i
`
`6.
`
`Upon information and belief, Defendant CO2 Cannon, LLC (“CO2
`
`Cannon”) is a limited liability company organized and existing under the laws
`
`of the State of Nevada having a place of business at 3245 University Ave Suite
`
`_ 1 _
`
`

`

`Case 3:17-cv-00835—WQH-WVG Documentl Filed 04/25/17 PagelD.3 Page3 of 46
`
`1-327, San Diego, CA 92104 and another place of business at 6029 Fairmount
`
`Avenue, San Diego, California 92120.
`
`7.
`
`Upon information and belief, Defendant Kris Mullins is an
`
`individual residing in San Diego, California.
`
`8.
`
`Upon information and belief, Defendant Kenny Mullins is an
`
`individual residing in San Diego, California.
`
`9.
`
`Upon information and belief, Defendant Chris
`
`Joslin is an
`
`individual residing in San Diego, California.
`
`10. Defendants are subject to the general and specific jurisdiction of
`this Court by virtue of its continuous, systematic, and substantial presence
`
`Within this Judicial District, and by committing acts of trademark infringement,
`
`false designation of origin, cybersquatting and unfair competition in this
`
`Judicial District, which acts form a substantial part of the events or omissions
`
`giving rise to Plaintiffs claims.
`
`ALLEGATIONS FOR ALL CLAIMS OF RELIEF
`
`11.
`
`V Plaintiff designs, produces and markets carbon dioxide special
`
`effects equipment and accessories, including, but, not limited to, handheld CO2
`
`guns, stationary jets, electronic control systems, and lighting attachments. This
`
`special effects equipment is used at live performances, concerts, sportng events
`
`and private parties.
`
`12.
`
`Plaintiffs special effects CO2 guns, jets and lighting systems are
`
`used by entertainers to generate energy and excitement in the audience. The
`
`devices can be found at night clubs, arenas, and theaters. Famous performers
`
`such as the Chainsmokers, Kaskade, David Guetta, Lil Jon, and Maki, to name a
`
`few, use Plaintiff s Club Cannon brand special effects CO2 equipment.
`
`Plaintiff’s Club Cannon brand products are also used at LA Clippers basketball
`
`
`
`games.
`
`\OOOVQMAWNN
`
`NNNNNNNNNNNNNNNNNNNOOVQMKWNNQQOOVQMKWNNQ
`
`

`

`Case 3:17—cv-OO835-WQH-WVG Documentl Filed 04/25/17 PageID.4 Page4of46
`
`13.
`
`Since at
`
`least as early as December 2012, Plaintiff has been
`
`continuously using the trademark CLUB CANNON in connection with special
`
`effects C02 equipment and accessories.
`
`14.
`
`Initially Plaintiff only offered one handheld C02 gun and certain
`
`accessories. As the company grew, Club Cannon eXpanded its product offerings
`
`to include stationary jets, LED attachments, single and multi—zone controllers,
`
`fittings, tools, hoses, C02 tank covers and apparel.
`
`15.
`
`On or about April 14, 2014, Plaintiff filed a trademark application
`
`with the Secretary of State for the State of California for the mark “CLUB
`
`CANNON” in connection with “Special effects apparatus for producing carbon
`
`dioxide mist; Protective carrying cases and packs specially adapted for used in
`
`connection with special effects apparatus; Accessories for special effects
`
`apparatus.” On May 8, 2014, the State of California issued a Certificate of
`
`Registration No. 115,431 (“CA Registration”)
`
`for the trademark “CLUB
`
`CANNON.” A true and correct copy of the CA Registration is attached to this
`
`Complaint as Exhibit 1 and incorporated herein by reference.
`
`'
`
`16.
`
`On April 16, 2014, Plaintiff filed a trademark application in the
`
`United States Patent and Trademark Office (the “Trademark Office”) for the _
`
`trademark “CLUB CANNON” for use in connection with “special effects
`
`apparatus, namely, a hand held nozzle and hose dispenser for producing carbon
`dioxide mist; protective carrying cases and packs specially adapted for use in
`
`connection with a special effects hand held nozzle and hose dispenser.” On
`
`December 2, 2014,
`
`the' Trademark Office granted Plaintiffs Trademark
`
`Registration No. 4,648,696 (“the ‘696 Registration”). A true and correct copy of
`
`the ‘696 Registration is attached to this Complaint as Exhibit 2 and incorporated
`
`herein by reference.
`
`17.
`
`Since at
`
`least as early as 2012, Plaintiff’s use of the CLUB
`
`CANNON mark has been continuous and exclusive.
`
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`-3-
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`
`

`

`Case 3:17-cv-00835—WQH-WVG Document 1 Filed 04/25/17 PagelD.5 Page 5 of 46
`
`18.
`
`Over the years, Plaintiff has spent a considerable amount of time
`
`and money in establishing the CLUB CANNON trademark in the minds of
`
`consumers as a source of high quality special effects entertainment products. As
`
`a result of Plaintiffs substantial use and promotion of its CLUB CANNON
`
`trademark in connection with its products, the mark has acquired great value as
`
`a specific identifier of Plaintiffs products and serves to distinguish Plaintiffs
`
`products from that of others. Customers in this Judicial District and elsewhere
`
`readily recognize Plaintiffs CLUB CANNON trademark as a distinctive
`
`designation of origin 'of Plaintiffs products.
`
`Plaintiffs CLUB CANNON
`
`trademark is an intellectual property asset of great value as a symbol of
`
`Plaintiffs quality products and goodwill.
`19.
`By virtue of Plaintiffs widespread and continuous use of its CLUB
`
`CANNON mark, Plaintiff has established extensive common law rights in its
`
`CLUB CANNON mark.
`
`'
`
`20,
`marketing,
`
`Defendants are engaged in the business of producing, distributing,
`and/or
`selling carbon dioxide
`special
`effects products
`and
`
`accessories in this Judicial District and elsewhere.
`
`21. At no time has Plaintiff ever given Defendants a license,
`
`permission or authority to use or display Plaintiffs CLUB CANNON mark in
`
`connection with any of Defendants’ products.
`
`22. Without permission or consent from Plaintiff, Defendants started
`
`marketing, advertising and selling special effects C02 guns using the name
`
`“CLUB CANNON.”
`
`23.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants made their infringing “CLUB CANNON” branded special effects
`
`C02 guns on their cryocannoncom website, as well as Amazoncom, eBay, and
`
`other online marketplaces.
`
`\OOOVQMKWNN
`
`NMNNNNNNNNNNNNNNNNNOomoxM—AWNNQQOOVQMAWNNQ
`
`

`

`Case 3:17-cv—OO835—WQH—WVG Documentl Filed 04/25/17 PagelD.6 Page6 of 46
`
`24.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants used the CLUB CANNON mark in paid keyword Search advertising
`
`as a keyword and in ad text on Google.com and Bingcom search engines.
`
`25. Additionally, Plaintiff is informed and believes, and on that basis
`
`alleges, that Defendants acquired several domains containing the name CLUB
`
`CANNON without authorization from Plaintiff,
`including clubcannonco,
`clubcannonpromocode.com,
`and
`clubcannonco2.com.
`Defendants have.
`
`maintained an active website at www.clubcannon.co domain, which redirects
`
`traffic to its www.co2cannon.com website.
`
`26.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants copied and continue to copy the look and feel of Plaintiff’s
`www.clubcannon.com website on numerous websites operated by Defendants.
`Defendants have copied images and text from Plaintiff’s website,
`including
`certain product descriptions.
`-
`
`27.
`
`On April 23, 2014, after learning of Defendants’ unauthorized use
`
`of Plaintiff’s “CLUB CANNON” mark, Plaintiff sent Defendants Kris Mullins,
`
`Kenny Mullins, and CryoFX a cease and desist letter.
`
`In the letter Plaintiff
`
`described its
`
`rights in the “CLUB CANNON” mark and demanded that
`
`Defendants cease “all uses of the CLUB CANNONTM in its advertising in all
`
`forms of media,” A true and correct copy of the April 23, 2014 cease and desist
`
`letter is attached to this Complaint as Exhibit 3 and incorporated herein by
`
`reference.
`
`28.
`
`The April 23, 2014 cease and desist letter seemed to have the
`
`desired effect. Within a week, by April 29th, Plaintiff noticed changes in
`
`Defendants’ advertising that appeared to demonstrate Defendants’ efforts to
`
`comply with Plaintiff’s cease and desist demand.
`
`Plaintiff noticed that
`
`Defendants’ website removed numerous references to the “CLUB CANNON”
`
`\O%VO\M~RWNN
`
`NMNMNMNMNNNNNNNNNNNComma-kwmxgboowoxknkwmkig
`
`name.
`
`_5_
`
`

`

`Case 3:17-CV-OO835-WQH-WVG Document 1 Filed 04/25/17 PagelD.7 Page 7 Of 46
`
`29.
`
`However, rather than continuing to remove all references to CLUB
`
`CANNON, about a year later, Plaintiff noticed that Defendants reverted to using
`
`the “CLUB CANNON” mark in its online advertising of its special effects C02
`
`guns. On May 21, 2015, Plaintiff sent a follow up cease and desist letter to
`
`Defendants, notifying them that Plaintiff was aware “that CryoFX is once again
`
`infringing the CLUB CANNON trademark...” Plaintiff emphasized that “Club
`
`Cannon does r_1__ot consent to any use of the its trademark by CryoFX, and Club
`
`Cannon considers that any and all use of CLUB CANNON by CryoFX in the
`
`manners described above is a blatant and willful infringement of its federal and
`
`state trademark rights.” A true and correct copy of the May 21, 2015 cease and
`
`desist letter is attached to this Complaint as Exhibit 4 and incorporated herein
`
`by reference.
`
`30.
`
`On June 2, 2015, rather than comply with Club Cannon’s renewed
`
`cease and desist demand, Defendant CryoFX filed a Petition to Cancel the ‘696
`
`Registration in the United States Patent and Trademark Office before the
`
`Trademark Trial and Appeal. Board (“Cancellation Proceeding”).
`
`In the
`
`Cancellation Proceeding, CryoFX alleged, for the first time, that it actually
`
`started using the CLUB CANNON name prior to Plaintiff. A true and correct
`copy of the Petition to Cancel is attached to this Complaint as Exhibit 5 and
`
`incorporated herein by reference.
`
`31. During the course of the Cancellation Proceeding, CryoFX could
`
`not produce any evidence of prior use of the CLUB CANNON name other that
`
`two self-serving invoices of dubious origin.
`
`32.
`
`' Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants’ unauthorized use of the name “CLUB CANNON” is intended to
`
`trade upon the goodwill and substantial recognition associated with Plaintiff s
`
`trademark.
`
`\OOOVQM‘KUQN’N
`
`NMNMNNNMNNNNNNNNNNNOoVOxMAUoNN-QQOOVQMAWNNQ
`
`

`

`Case 3:17-cv-00835-WQH-WVG Documentl Filed 04/25/17 PageID.8 Page8of 46
`
`33.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants are using the “CLUB CANNON” name in an attempt to associate
`
`their products with Plaintiff and Plaintiff s CLUB CANNON mark, to cause
`
`mistake or deception as to the scurce of Defendants’ products and/or to
`otherwise trade upon Plaintiffs valuable reputation and customer goodwill in-its
`
`mark.
`
`34.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants’ use of the “CLUB CANNON” name is designed to cause
`
`confusion, mistake, or deception.
`
`'35.
`
`By virtue of the acts complained of herein, Defendants have
`
`created a likelihood of injury to Plaintiffs business reputation, caused a strong
`
`likelihood of consumer confusion, mistake, and deception as to the source of or
`
`origin or relationship of Plaintiffs and Defendants’ goods, has caused actual
`
`confusion, and has otherwise competed unfairly with Plaintiff by unlawfully
`
`trading on and using Plaintiff’s CLUB CANNON mark without Plaintiff s
`
`permission or consent.
`
`36.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants’ acts complained of herein are willful and deliberate.
`37. Defendants’ acts complained of herein have caused damage to
`
`Plaintiff in an amount to be determined at trial, and such damages will continue
`
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`infringement.
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`38. Defendants’ acts complained of herein have caused Plaintiff to
`
`suffer irreparable injury to its business. Plaintiff will suffer substantial loss of
`
`goodwill and reputation unless and until Defendants are preliminarily and
`
`permanently enjoined from its wrongful actions complained of herein.
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`27
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`/ / /
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`28
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`/ / /
`
`

`

`Case 3:17-cv-OO835-WQH-WVG Documentl Filed 04/25/17 PagelD.9 Pagerf 46
`
`\OOOVQM‘KWNN
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`
`_ FIRST CLAIM FOR RELIEF
`
`(Trademark Infringement Under 15 U.S.C. § 1114)
`
`Plaintiff realleges Paragraphs 1—3 8, as if fully set forth herein.
`
`This is a claim for trademark infringement arising under 15 U.S.C.
`
`39.
`
`40.
`
`§ 1114.
`
`41.
`
`Plaintiff is the owner of Federal Trademark Registration No.
`
`4,648,696 for the trademark “CLUB CANNON” for use in connection with
`
`“special effects apparatus, namely, a hand held nozzle and hose dispenser for
`
`producing carbon dioxide mist; protective carrying cases and packs specially
`
`adapted for use in connection with a special effects hand held nozzle and hose
`
`dispenser.”
`
`42. Defendants have used in commerce, without permission of
`
`Plaintiff, reproductions, copies or colorable imitations of Plaintiffs CLUB
`
`CANNON mark in connection with distributing, selling, offering for sale,
`
`advertising, and/or promoting Defendants’
`
`special effects CO2 guns and
`
`accessories.
`
`43. Without permission of Plaintiff, Defendants are reproducing,
`
`copying, or colorably imitating Plaintiff’s CLUB CANNON mark and applying
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`such reproductions, copies or colorable imitations to merchandise, labels, signs,
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`packages, receptacle or advertisements intended to be used in commerce upon
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`or in connection withrthe distributing, selling, offering for sale, advertising
`
`and/or promoting of goods or services on or in connection with which such use
`
`is likely to cause confusion, or to cause mistake, or to deceive.
`
`44.
`
`Plaintiff is informed and believes, and on that basis alleges, that the
`
`activities of Defendants complained of herein constitute willful and intentional
`
`infringements of Plaintiffs CLUB CANNON mark, and that Defendants did so
`
`with the intent to unfairly compete against Plaintiff, to trade upon Plaintiffs
`
`reputation and goodwill by causing confusion and mistake among customers
`
`-8-
`
`

`

`
`
`Case :17—CV—00835-WQH-WVG Documentl Filed 04/25/17 PagelD.lO Page 10 Of46
`
`and the public, and to "deceive the public into believing that Defendants’
`
`products are associated with, sponsored by, originated from, or are approved by
`
`Plaintiff, when in truth and fact they are not.
`
`45.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants had actual knowledge of Plaintiffs ownership and prior use of
`
`Plaintiff’s CLUB CANNON mark and without the consent of Plaintiff has
`
`willfully violated 15 U.S.C. § 1114.
`
`46. Defendant’s actions have injured Plaintiff and damaged Plaintiff in
`
`an amount to be determined at trial.
`
`47.
`
`By its actions, Defendants have irreparably injured Plaintiff. Such
`
`irreparable injury will continue unless Defendants are preliminarily and
`
`permanently enjoined by this Court from further violation of Plaintiffs rights,
`
`for which Plaintiff has no adequate remedy at law.
`
`SECOND CLAIM FOR RELIEF
`
`(False Designation of Origin Under 15 U.S.C. § 1125(a))
`
`48.
`
`Plaintiff hereby realleges Paragraphs 1-47, as if fully set forth
`
`I 2 3 4 5 6 7 8 9
`
`10
`
`I]
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`12
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`13
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`14
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`15
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`16
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`17
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`herein.
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`26
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`27
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`28
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`49.
`
`This is a claim for false designation of origin arising under 15
`
`U.S.C. § 1125(a).
`
`I
`
`50. Without Plaintiff’s consent, Defendants have created and will
`
`create a false designation of origin by using in commerce the “CLUB
`
`CANNON” mark and/or other marks confusingly similar to Plaintiff’s CLUB
`
`CANNON mark in connection with the distribution, sale, offering for sale,
`
`advertising, and/or promotion of Defendants’ special effects C02 guns and
`
`accessories, thereby causing a likelihood of confusion, mistake or deception as
`
`to an affiliation, connection or association with Plaintiff or to suggest Plaintiff
`
`as the origin of the goods and/or services, or that Plaintiff has sponsored or
`
`approved Defendants’ commercial activities.
`
`-9-
`
`

`

`Case :17-cv~00835—WQH—WVG Documentl Filed 04/25/17 PageID.11 Page 11 of46
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`\OOOVQMAUQNN
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`NMNMNMNMNNNNNNNNNNNOoVOxMAWNNQQOoVQMAWNNQ
`
`51.
`
`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants acted with the intent to unfairly compete against Plaintiff, to trade
`
`upon Plaintiff’s reputation and goodwill by causing confusion and mistake
`
`among customers and the public, and to deceive the public into believing that
`
`Defendants’ products are associated with, sponsored by or approved by
`
`Plaintiff, when they are not.
`
`52.
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`Plaintiff is informed and believes, and on that basis alleges, that
`
`Defendants have knowledge of Plaintiff’s ownership and prior use of the CLUB
`
`CANNON trademark, and without the consent of Plaintiff, has willfully violated
`
`15 U.S.C. § 1125(a).
`
`53.
`
`Defendants’ actions have injured and damaged Plaintiff in an
`
`amount to be determined at trial.
`
`54.
`
`By its actions, Defendants have irreparably injured Plaintiff. Such
`
`irreparable injury will continue unless Defendants are preliminarily and
`
`permanently enjoined by this Court from further violation of Plaintiff’ s rights,
`
`for which Plaintiff has no adequate remedy at law. V
`
`THIRD CLAIM FOR RELIEF
`
`(Anticybersquatting)
`
`55.
`
`Plaintiff hereby realleges Paragraphs 1-54, as if fully set forth
`
`herein.
`
`56.
`
`This is a federal anticybersquatting claim arising under 15 U.S.C.
`
`§ 1125(d)(l)(A).
`57. Defendants have acted with a bad faith intent
`
`to profit from
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`Plaintiff’s CLUB CANNON trademark which is registered with the Trademark
`
`Office as Registration No. 4,648,696.
`
`58. Defendants
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`have
`
`registered
`
`and
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`used
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`the
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`domain
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`name
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`“www.clubcannon.co” which is essentially identical
`
`to Plaintiff’s CLUB
`
`CANNON trademark which was distinctive at the time of Defendant’s domain
`
`_10_
`
`

`

`Case :l7—cv—00835—WQH—WVG Documentl Filed 04/25/17 PagelD.12 Page 12 of46
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`\O%VO\M~KWNN
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`NMNMNMNMNNNNNNNNNNNOOVQM‘KUQNNQQOOVQM‘KWNNQ
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`name registration and use. Defendants have also acquired the domain names
`
`“www.clubcannonpromocode.com”
`
`and “www.clubcannoncoZ.com” which
`
`contain Plaintiffs CLUB CANNON trademark.
`
`59.
`
`Plaintiffs use of Plaintiffs CLUB CANNON trademark began
`
`long before any acquisition or use by Defendants of the domain names
`
`“clubcannonco,” "clubcannonpromo'codecom,” and “clubcannon002.com.”
`
`intellectual
`
`60. Defendants have no legitimate trademark or other
`property
`the
`
`rights
`
`in
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`domain
`
`names
`
`“clubcannonco,”
`
`“clubcannonpromocode.com," and “clubcannon002.com.”
`
`61.
`
`CLUB CANNON is not the legal name of, or a name commonly
`
`used to identify, Defendants.
`
`62. Upon information and belief, Defendants intend for purposes of
`
`commercial gain, to divert customers from Plaintiff’s website to Defendants”
`
`“www.clubcannonco” website, and such diversion of customers will harm the
`
`goodwill represented by Plaintiffs CLUB CANNON trademark by creating a
`
`likelihood of confusion as to the source, sponsorship, affiliation, or endorsement
`
`of Defendants’ “www.clubcannon.co” website.
`
`63. Defendants did not and do not have reasonable grounds to believe,
`
`and upon information and belief, did not believe, that their use or ownership of
`77
`(6
`
`the “clubcannon.co,
`clubcannonpromocode.com,” and “clubcannoncchom”
`domain names was fair use or otherwise lawful.
`_
`FOURTH CLAIM FOR RELIEF
`
`(Statutory Trademark Infringement Under California Business &
`Professions Code § 14245)
`
`64.
`
`Plaintiff hereby realleges Paragraphs 1-63 of this Complaint, as if
`
`fully set forth herein.
`
`65.
`
`This is an action for statutory trademark infringement under
`
`California Business & Professions Code § 14245.
`
`-11-
`
`

`

`Case :17—cv-OO835—WQH—WVG Documentl Filed 04/25/17 PagelD.13 Page 13 of46
`
`66.
`
`Plaintiff registered the CLUB CANNON mark in connection with
`
`special effects apparatus for producing carbon dioxide mist; protective carrying
`
`cases and packs specially adapted for used in connection with special effects
`
`apparatus; accessories for special effects apparatus, and owns California
`
`Trademark Registration No. 1 15,431.
`
`67. Defendants have used and are using in commerce reproductions,
`
`counterfeits, copies, or .colorable imitations of Plaintiffs CLUB CANNON
`
`trademark in connection with the advertisement, display, promotion, marketing,
`
`distribution, sale and/or offer for sale of Defendants’ products, including special
`
`effects C02 guns and accessories.
`
`68.
`
`Club Cannon has not authorized or consented to Defendants' use of I
`
`its trademarks.
`
`‘
`
`69.
`
`Defendants’ unauthorized use of the CLUB CANNON mark is
`
`likely to cause confusion, or to cause mistake, or to deceive as to the source of
`
`origin of Defendants’ products,
`
`in violation ' of California Business and
`
`Professions Code § 14245.
`
`70. Defendants acted willfully, with the intent to harm Plaintiff, and to
`
`trade on Plaintiff’s reputation and goodwill.
`
`'
`
`71.
`
`On information and belief, Defendants profited from their
`
`infringing conduct.
`
`\ooomoxms'wmx.
`
`10
`
`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21’
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`72. Defendants, by their actions, have damaged Plaintiff in an amount
`
`22
`
`23
`
`24
`
`25
`
`26
`
`to be determined at trial.
`
`73. Defendants, by their actions, have irreparably injured Plaintiff.
`
`Such irreparable injury will continue unless Defendants are preliminarily and
`
`permanently enjoined by this Court from further violation of Plaintiff’s rights,
`
`for which Plaintiff has no adequate remedy at law.
`
`27
`
`/ / /
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`28
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`/ / /
`
`-12-
`
`

`

`Case :17—cv-00835—WQH—WVG Documentl Filed 04/25/17 PageID.14 Page 14 0f46
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`\O%VO\M~KWNN
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`NNNNNNIQNNNNNNNNNNNNOOVQMKUQNNQKDOOVQM-KWNNQ
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`FIFTH CLAIM FOR RELIEF
`
`(California Statutory Unfair Competition Under
`
`Cal. Bus. & Prof. Code § 17200)
`
`74.
`
`Plaintiff hereby realleges Paragraphs 1-73, as if fully set forth
`
`herein.
`
`‘
`
`75.
`
`This is a claim for unfair competition arising under Cal. Bus. &
`
`Prof. Code § 17200, et seq.
`
`76.
`
`By Virtue of the acts complained of herein, Defendants have
`
`intentionally caused a likelihood of confusion among the consumers and public
`
`and has unfairly competed in Violation of Cal. Bus. & Prof. Code § 17200, et
`
`seq.
`
`77.
`
`Defendants’ acts complained of herein constitute unlawful, unfair,
`
`malicious or fraudulent business practices, which have injured andldamaged
`Plaintiff.
`’
`
`78.
`
`As a direct and proximate result of Defendants’ acts complained of
`
`herein, Plaintiff has and will continue to suffer great harm. Plaintiff will
`
`continue to be irreparably harmed unless Defendants are enjoined from further
`
`committing unfair and unlawful business practices against Plaintiff.
`
`SIXTH CLAIM FOR RELIEF
`
`(Trademark Infringement Under the Common Law of the State of
`
`79.
`
`Plaintiff hereby realleges Paragraphs 1—78, as if fully set forth
`
`California)
`
`herein.
`
`80.
`
`This is an action for trademark infringement under the common
`
`law of the State of California.
`
`81.
`
`Defendants’
`
`acts complained of herein constitute trademark
`
`infringement under the common law of the state of California. Defendants’
`
`aforementioned acts are willful and deliberate and committed with knowledge
`
`-13-
`
`

`

`
`
`Case :17-cv—OO835-WQH-WVG Documentl Filed 04/25/17 PageID.15 Page 15 0M6
`
`that Defendants’ unauthorized use of the CLUB CANNON mark will cause a
`
`likelihood of confusion.
`
`82.
`
`Defendants’
`
`aforementioned acts have
`
`injured Plaintiff and
`
`damaged Plaintiff in an amount to be determined at trial.
`
`83.
`
`By its actions, Defendants have irreparably injured Plaintiff. Such
`
`irreparable injury will continue unless Defendants are preliminarily and
`
`permanently enjoined by this Court from further Violation of Plaintiffs rights,
`
`for which Plaintiff has no adequate remedy at law.
`
`84.
`Defendants’ willful
`acts of
`trademark
`infringement under
`California common law constitute-fraud, oppression and malice. Accordingly,
`
`Plaintiff is entitled to exemplary damages.
`
`SEVENTH CLAIM FOR RELIEF
`
`(California Common Law Unfair Competition)
`
`Plaintiff hereby realleges Paragraphs 1-84, as if fully set forth
`
`85.
`herein. 1
`
`86.
`
`This is a claim for common law unfair competition arising under
`
`the common law of the State of California.
`
`87.
`
`By Virtue of the acts complained of herein, Defendants have
`
`intentionally caused a likelihood of confusion among the. purchasing public in
`
`this Judicial District and elsewhere, thereby unfairly competing with Plaintiff in
`
`Violation of the common law of the State of California.
`
`88.
`
`By its actions, Defendants have injured and violated the rights of
`
`Plaintiff in an amount to be determined at trial.
`
`89.
`
`By its actions, Defendants have irreparably injured Plaintiff. Such
`
`irreparable injury will continue unless Defendants are preliminarily and
`
`permanently enjoined by this Court from further Violation of Plaintiffs rights,
`
`for which Plaintiff has no adequate remedy at law.
`
`1 2 3 4 5 6 7 8 9
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`10
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`11
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`12
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`13
`
`14
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`15
`
`16
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`I7
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`18
`
`19
`
`20
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`2]
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`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`
`-14-
`
`

`

`Case
`
`:17-cv-OO835-WQH—WVG Documentl Filed 04/25/17 PagelD.16 Page 16 M46
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`\OOOVQU‘I‘KWNN
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`NMNNMNMNNNNNNNNNNNNOoVOkamNNQQOOVQMkwNNQ
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`90. Defendants’ willful acts of unfair competition under California
`